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

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

"Beresford, Lynne" wrote:

> Thanks to "measday" for the pertinent questions. First and foremost, I am
> not representing the USPTO with the statements that I have made.  They are
> my personal views only. To represent the USPTO, I would need to clear every
> message and I have not done that.   I really resisted the impulse to make
> comments on this list because I did not want to have anyone think that the
> PTO was participating but I thought that some of the background information
> I could supply might help further the debate.
>
> As to the protection of well-known marks under 6bis of Paris and Article 16
> of the TRIPs Agreement, the U.S. has met it requirements under Paris and
> TRIPs e.g. the Trademark Trial and Appeal Board protected the mark "Cognac"
> as a well-known unregistered common-law certification mark.  In general, the
> obligation to protect well-known marks is an obligation to protect
> unregistered  marks that are well-known in the country where protection is
> sought  There is no obligation, for example, for the U.S. to protect a mark
> that is well known in Japan if it is not well known in the United States.
>
> Most industrialized countries belong to the Paris Convention and provide
> protection to well-known marks.  They do so on the same basis as the U.S.
> That is, each country protects a mark that is well-known within the country
> even if it is not registered.
>
> > -----Original Message-----
> > From: measday@josmarian.ch [SMTP:measday@josmarian.ch]
> > Sent: Saturday, November 27, 1999 3:25 AM
> > To:   Lynne.Beresford@uspto.gov
> > Subject:      Re: [wg-b] US Statutorily Protected Marks
> >
> >
> > "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.
> >
> >
> >
> >
> >
> >  << File: Card for Mark R Measday >>
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