[gnso-sti] Some BC correspondence excerpts on TMC

["Zahid Jamil" <zahid@xxxxxxxxx>]

Dear All,

 

Please find some correspondence excerpts of the BC with regard to what the
STI's developing IP/TM Clearinghouse looks like:

 

 

"The concern:

 

It doesn't address much/any of the pre-launch concerns of Trademark Mark
Holders (TM Holders) such as defensive registrations.  

 

But it is being presented as a great compromise for TM Holders.  

 

 

 

Who pays:

TM Holders have to PAY ANNULLAY to be in the TM Clearinghouse

 

 

What is included in it:

The IP Clearinghouse ONLY includes Nationally Registered Marks (NO common
law marks can be included nor any other types of protected names)

 

 

With what does my brand match:

One would expect that as in available TM services not only the brand name
but variants would be matched.  

 

 

The match is defined as ONLY IDENTICAL/EXACT match  i.e. If the brand is
"Yahoo", the only time a match for the services mentioned below would be
triggered is if someone tried to register the domain name "yahoo.TLD" - and
that's it.

 

However,  "yahoos.TLD", "yahoosearch.TLD" or "yahoosports.TLD" or
"searchyahoo.TLD" etc. would NOT be matched.

 

 

What is this database used for:

For only PRE-LAUNCH (so it serves no purpose to be in the Clearing house
POST-launch):

 

Sunrise - for which a TM Holder may have to PAY for dispute resolution in
case another TM holder's rights conflicts with theirs - AND - forcing TM
Holders to defensively PAY for registering domain names as abundant caution
to ensure that registrants don't get them once the gTLD is launched -
remember, however, the match is only for IDENTICAL

 

Or

 

IP Claims Notice- this is nothing more than a notice provision to people
attempting to register the IDENTICAL domain as the brand in PRE-LAUNCH ONLY.
In Pre-launch, if someone tries to register 'yahoo.TLD', then they get a
notice telling them that their application matches with a brand in the IP
Clearinghouse.  They are asked if they affirm that they will only use this
for legitimate purposes (paraphrase) - they accept by clinking 'affirm' and
they get the domain name.  The TM holder only gets a notice that such a
registration has been allowed once the new gTLD has launched to then decide
whether to file a UDS, UDRP or Court case.  No notices, however, in case
someone tries to register "yahoosearch.TLD".

 

 

How can this be gamed:

 

As a bad actor one would wait and not register any domains which are EXACT
matches in PRE-LAUNCH such as "yahoo.TLD" and wait for the first 30 seconds
of the new gTLD being launched and register then to CIRCUMVENT the entire
"WHITE ELEPHANT" for which as Brand holder we are being forced to PAY to
keep it running.

 

But a bad actor/infringer can register "yahoos.TLD", "yahoosearch.TLD" or
"yahoosports.TLD" or "searchyahoo.TLD" etc. in PRE-LAUNCH and POST-LAUNCH
and the Brandholder won't get a notice and the Brand holder won't get a
notice.

 

 

One advantage is that there will be one registration of TM (ANNUALLY PAID
FOR RENEWALS) for Sunrise and so all new Registry's won't have to spend
money on Consultancy/Admin etc. for Sunrise - so it's really a SUNRISE
CLEARING HOUSE for cutting Registry costs.

 

A thought:  would not being in the IP CLEARINGHOUSE be seen as not being
vigilant in protecting your brand name thus creating a legal imperative to
forcibly have to register and PAY to be in it?  I don't know.

 

Just as background.  This Clearing house was an adjunct and ancillary piece
of technology/database to facilitate the Globally Protected Marks List
(GPML).  Now that the GPML has been jettisoned,  this ancillary to GPML
(byproduct) is still being proposed by the Board & Staff as a solution for
Trademark protection in for new gTLDs.

 

A Solution looking for a TM problem to solve?"

 

 

 

 

 

 

 

Sincerely,

 

 

Zahid Jamil

Barrister-at-law

Jamil & Jamil

Barristers-at-law

219-221 Central Hotel Annexe

Merewether Road, Karachi. Pakistan

Cell: +923008238230

Tel: +92 21 5680760 / 5685276 / 5655025

Fax: +92 21 5655026

 <http://www.jamilandjamil.com/> www.jamilandjamil.com

 

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