RE: Generics [Was RE: [ga] Interesting WIPO ruling re: NewZealand.biz]

["Rodrigo Orenday Serrato" <rorenday@banxico.org.mx>]

Professor, your comment on generics as trademarks in the US is very similar
to the way it works in Mexico. My explanation on it was not complete, for
which I apologize. Your explanation shall come in handy for a test I'm about
to take.

On the other hand, it is funny that you should mention the interest of
Mexico on what a Norwegian does through a Brazilian registry, because the
last time I checked, a Norwegian holds TEQUILA.COM, and uses it for a mobile
phone website. As you know, TEQUILA is not only our foremost national
liquor, but it is also an apellation controlle, which may not be used for
anything else but for the identification of the aforesaid beverage.

Atentamente, Regards
Rodrigo Orenday Serratos



-----Mensaje original-----
De: Michael Froomkin - U.Miami School of Law
[mailto:froomkin@law.miami.edu]
Enviado el: Jueves, 10 de Octubre de 2002 05:14 PM
Para: Rodrigo Orenday Serrato
CC: 'John Berryhill Ph.D. J.D.'; ppoblete@nic.cl; 'Andy Gardner';
ga@dnso.org
Asunto: Generics [Was RE: [ga] Interesting WIPO ruling re:
NewZealand.biz]


[Note change in subject line]

Let's assume you are correct about Mexican law.  Mexico can of course have
any public policy rule it chooses.  That's its sovereign right.  And that
may well control how the .mx registry acts, as it should.  But why should
that have any influence on what a Norwegian does in .com via a Brazilian
registrar?  Indeed why *should* it influence the rules of any registry not
located in Mexico or in a jurisdiction with a similar rule?

I should note that in the US, by the way, you cannot register a 'generic'
term as a trademark for the good or service for which it is generic, but
you can register it for things for which it is fanciful.  So I can't
register "apple" for red crunchy fruits of apple trees, but I can register
a trademark on "apple" for records, computers, or cleaning services.  Are
you saying that the rule in Mexico is that no one can register "manzana"
for anything?

[I believe I am now at the posting limit, so this is my last comment of
the day.]


On Thu, 10 Oct 2002, Rodrigo  Orenday Serrato wrote:

> Generics per se cannot be registered as trademarks, at least not under
> Mexican, French nor German trademark law, in their present state. There is
> an IP specialist here who declared to the press that he beleives that we
> should forget about domain names altogether and go back to IP addresses,
but
> I don't agree with that.
>
> However, an argument I sustained in my professional thesis on the
regulation
> of domain names in Mexico is the following:
>
> 1. Mexican trade & service mark and copyright laws are of public interest,
> and they forbid the appropriation of generic terms, amongst others.
> 2. The Federal Civil Code sets forth that acts which contravene public
> interest laws shall be null.
> 3. The registration of generics as domain names consists in an
appropriation
> of said terms, thus it contravenes the aforesaid laws.
> 4. Consequently, said registrations are null.
>
> IP specialists here seem to agree. Constructive and reasonable comments on
> the foregoing are wellcome.
>
> Atentamente, Regards
> Rodrigo Orenday Serratos
>
>
>
> -----Mensaje original-----
> De: John Berryhill Ph.D. J.D. [mailto:john@johnberryhill.com]
> Enviado el: Jueves, 10 de Octubre de 2002 03:00 PM
> Para: rorenday@banxico.org.mx; ppoblete@nic.cl
> CC: 'Andy Gardner'; ga@dnso.org
> Asunto: Re: [ga] Interesting WIPO ruling re: NewZealand.biz
>
>
> >
> > One of the biggest problems that I find in domain names is that the
> > registration of those which include generic names and terms commonly
used,
> > like the name of a country, is not banned, unlike trade and service
marks.
>
> This is the first time I've seen someone arguing that there should be a
ban
> on generic and common terms AND trademarks.
>
> That leaves few other choices, but maybe we should just ban registering
> domain names entirely.
>
>
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