ICANN Dakar Meeting: what’s wrong with Trademark Clearing House?

ICANN 42th public meeting is going on from Sunday October 23, 2011 to Friday October 28, 2011 in Dakar, Senegal.  The trademark clearinghouse is going to take off despite many doubts and concerns.

The current plan has many flaws, particularly in the following aspects:

1. The trademark database that consists of the trademark registration information submitted from around the world is going to be confidential. This will definitely be detrimental to the people’s right to access public information and transparency and accountability of the services. All trademark registration information is publicly available. Why the database that put up the public information becomes confidential or restrictive accessible to pertinent registries or registrars, rather than public at large? The argument on database right or copyright of the database is not legally sound. Even if there could be such right generated under certain countries’ laws, it should not be used to claim against public access to the information included. The closure of the database is by all means a counteract to the global A2K movement.

2. The clearing house was designed primarily to protect the trademark in Latin scripts. It is poor design lack of diversity consideration. This is cultural arrogance showing the dominance of developed world at ICANN. Character variant issues are coming back to bite the process.

trademark clearinghouse and claim services would need to refer to the variant table for purpose of prevent cyber-squatting (variant squatting) against the Chinese-character trademarks. Otherwise, the service providers (without knowledge of Chinese language) would deem the domain names in simplified characters not visually similar to the trademark in traditional characters, vice verse.

“Variants” have never been an issue for China Trademark Office or Law Enforcement Agency when a trademark is applied for registration and/or seeking for legal protection. Any Chinese speakers know that simplified and traditional version of one character are equivalent. They don’t need the aid of the variant table. Someone who obviously knows neither Chinese language nor law attempted to argue that owner of a word mark in simplified form is entitle to claim the tradition form merely because the latter is “semantically” or “meaningfully” similar to the former. This is nonsense by all means. We should not mix the legal issue with the language variants issues. Character reform and evolution are the public knowledge of Chinese speakers, just like the upper case and lower case of Latin scripts. Is there any need for Latin script countries to enact a law to stipulate the trademark protection is not case sensitive? So, Chinese trademark protection is NOT variant sensitive!

The issue is only for the  Trademark Database and/or authentication & validation service providers who does not know Chinese and mechanically compare the virtual similarity of a word mark and a Domain Name string.

Although variants are “considered” in trademark examination or enforcement, they are not shown in trademark registration
certifications. If a word mark is applied for registration and approved by the trademark office, the certificate will merely show the
word (in either simplified or traditional characters) as it is, rather than listing all its variants. Then how to include the variants in TCH
database and how to verify those “non-registered” variants? Question is still there.



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