Re: [wg-b] RE: (wg-b) Issues to Consider

[Harald Tveit Alvestrand <Harald@alvestrand.no>]

At 15:25 22.09.99 -0400, DEUTSCH, SARAH B. wrote:
>      As one famous trademark holder, I want to weigh in on the debate.  I
>      think we are quite far from reaching any "consensus" on the point of
>      dismissing protections for famous marks.  In fact, most large
>      trademark holders, --including IP associations like INTA and PSWG--
>      strongly support protections for famous marks.
>
>      The starting point, to which we all should give the greatest
>      deference, is WIPO's Final Report.  The WIPO hearings (15+ conducted
>      by a panel of experts in public meetings all over the world) resulted
>      in the clear conclusion that most commentors favored the establishment
>      of a proactive exclusion for famous marks.  WIPO correctly concluded
>      based on their hearings and findings that it would be economically
>      wasteful to open up new gTLDs without safeguards for protecting famous
>      marks.

I beg to demur.
At the three meetings I attended (Brussels, first round; Singapore and 
Senegal, second round), NONE were in favour of famous marks.

In Brussels, the matter wasn't very clearly presented or decided.
In Senegal, the matter branched off into a discussion of protection for 
religiously famous marks (the example used was the city of Touba - how many 
people know that this is a famous place?)
In Singapore, the public meeting was unanimously (as far as I could tell) 
AGAINST famous marks.

The panel of Experts advising WIPO was also very much divided on the issue, 
with several members speaking out strongly against famous mark protection.

>
>      No, the exclusion process isn't a perfect remedy.  However, it does
>      help famous trademark holders protect their "essential" marks from
>      being preemptively grabbed up as new gTLDs open up.  WIPO made sound
>      recommendations for establishing a process for granting exclusions
>      using a panel of well-qualified decisionmakers. The determination of
>      what constitutes a famous mark is not one that this group needs to
>      recreate -- the WIPO experts, including Fred Mostert, the world's
>      leading authority on famous marks, assisted WIPO in developing factors
>      to be applied by qualified decisionmakers (See WIPO Report Section
>      284).  The 800 number example discussed on this list is a good real
>      world example of how this process can work to ultimately protect
>      consumers from confusion and fraud.
>

I welcome someone speaking out on this list in favour of famous marks; so 
far, it has been almost as if the strong advocates of such had left the WG 
to us who dislike the concept.

I would like you to tell me two things:

- How many famous marks do you think will be registered?
   This was a hotly debated topic in the Experts' group, and WIPO's
   unwillingness to write down any number, or attempt to manage that number,
   in the Final Report caused a great deal of unhappiness.
- If Bell Atlantic were to have all of its requests for marks being declared
   famous turned down, would it still think that famous marks are a good idea?

The last one may sound disingenious, but still - if the number of famous 
marks are in the hundreds, not millions, a LOT of companies who now think 
they will get protection under this statute may instead find their rights 
being attacked by famous mark holders in other business areas, just like 
"the rest of us".

For the record: If there existed a list of approved globally famous word 
marks, I think that exact-match exclusion (NOT embedding or misspelling 
exclusion) could work.

But it doesn't.

                           Harald

--
Harald Tveit Alvestrand, Maxware, Norway
Harald.Alvestrand@maxware.no