[Fwd: [wg-b] US Statutorily Protected Marks]

[Mark R Measday <measday@josmarian.ch>]

Mark R Measday wrote:

> "Beresford, Lynne" wrote:
>
> > As to the marks protected as well-known marks by the Japanese:  One should
> > note that the only claim for these marks is that they are recognized as
> > well-known marks in Japan.  There is no implication, as far as I know, that
> > the marks are internationally well-known or even well-known regionally.
>
> Lynne,
>
> (i)  Should we assume that you are writing on behalf of the US PTO or giving a
> private opinion? Given your chairmanship of the original IAHC international
> process within the context of the WIPO debate at the time, it would be useful
> for wg-b to know (perhaps they do, in which case my apologies) whether they are
> engaging an official view or an off-hand opinion to aid Mike Palage in his
> sterling endeavours.
>
> (ii) Can we hope that you can provide not only the picture for Japan, but also
> on a multilateral basis for other advanced industrial economies such as Brazil,
> Korea etc.?
>
> (iii) I am a little confused as to the preamble in your statement. According to
> a naive reading of the Paris Convention for the Protection of Industrial
> Property (the Paris Convention), Article 6bis, section (1) of which provides as
> follows;
>
> "The countries of the Union undertake, ex officio if their legislation so
> permits, or at the request of an interested party, to refuse or to cancel the
> registration, and to prohibit the use, of a trademark which constitutes a
> reproduction, an imitation, or a translation, liable to create confusion, of a
> mark considered by the competent authority of the country of registration or use
> to be well known in that country as being already the mark of a person entitled
> to the benefits of this Convention and used for identical or similar goods.
> These provisions shall also apply when the essential part of the mark
> constitutes a reproduction of any such well-known mark or an imitation liable to
> create confusion therewith."
>
> there is an implication that, on the basis of reciprocity implied in the  6bis
> statement, US courts should in principle be bound by their international
> obligation to recognise famous marks from other countries. Insofar as the TRIPs
> extended the Paris Convention coverage to service marks, largely at the behest
> of the US Government unless I have been incorrectly informed, one would assume
> that the Paris Convention is alive and kicking.
>
> If, however, the pragmatic position is, 'the only famous marks are US marks
> because we have never heard of yours and you have heard of foreign ones', then
> it might be interesting if you could subtly indicate it through some reference
> to US Court decisions repudiating the Paris Convention.
>
> Whilst it has always been the interest of sovereign nations to pursue their own
> interests, it would be extremely relevant to the proceedings of wg-b if they
> were made aware that, for example, the Paris Convention has been extremely
> narrowly applied throughout its history by national (both in the US and outside)
> courts' interpretation of the reciprocity feature and the nature of a famous
> mark above.
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