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

[Leah G <ldg@wecn.net>]

On Thursday 10 October 2002 06:51 pm, Rodrigo Orenday Serrato wrote:
> 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.
>
That may be true in Mexico.  However, "Tequila Sunrise" is a really cool movie 
and a great mixed drink to boot.  I believe there is a US trademark on the 
name for the movie as well, but am not certain.  There are numerous bars and 
restaurants with that name in the US.  It would be quite interesting to see 
what might happen if there were a myriad of lawsuits based on the use of the 
name for things other than the beverage.  Also, if I am not mistaken, there 
are brands of liquor calling themsevles tequila that are not the Mexican 
version, but have the same taste and basic ingredients.  IOW, it has become 
generic by use over time.
Leah
> 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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