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Re: [wg-b] Pay who for it?
>Paying for the privilege (it cannot be considered a right, for there is no
universally applicable law) reduces greatly the chances of abuse.
Applicants for exclusions will have a much more rational economic
calculation to make. The right of exclusion, if it is to exist at all (and
I am not convinced that it should) must be rationed by price.
If someone files for PERRIER-JOUET or TEENAGE MUTANT NINJA TURTLES or
THENEWYORKTIMES as a trademark application in a country which has signed
GATT-TRIPS, the owners of these AUFMs potentially have rights, not
privileges. We are not going to find too many registrars or DN registrants
for that matter in a country where GATT-TRIPS will not be applicable.
If someone files a DN for such marks, if the owner of the AUFM should pay a
registrar for the "privilege" that the registrar not sell the name to a
third party first, then you are describing the sort of privilege selling
racket that the Corelone Family specializes in.
Some people have never heard of PERRIER-JOUET. Some people may never have
heard of KODAK or EXXON. But we are talking about the fact that,
regardless of country, the person who files for perrier-jouet.firm or
kodak.firm or exxon.firm has.
>> As my first contribution to this stimulating debate, let me say that
defining what constitutes a famous trademark is neither the easiest nor the
most difficult task in the world. I believe with Fred Mostert that "a
common set of principles, in effect a ius gentium, has developed around
famous and well-known marks, which can serve as a basis for a harmonized
global approach in conformity
>> with the needs of contemporary commerce." Anyone wanting to know what
that common set of principles is needs only to do a quick run through the
700 pages of Fred's encyclopaedic work. (Mostert, Famous and Well-Known
Marks, Butterworths, 1997).
>> I am not particularly intrigued by the difference between famous and
well-known marks or, for that matter, marks of high repute, but I suggest
that, for our purposes, we might look at a fourth category, i.e. absolutely
unique famous marks (AUFMs). Here's a quick and totally non-exhaustive
list: COCA-COLA, PEPSI-COLA, MERCEDES BENZ, CHANEL, PERRIER-JOUET, KODAK,
EXXON, TEXACO, THENEWYORKTIMES. All of you will instantly have recognized
what these marks have
>> in common: The fact that no one could possible have a valid good faith
claim against any of them. Oh sure, somebody could legitimately claim COLA
>> (a woman's surname and a town in Uruguay) or PERRIER (a different
product), but not COCA-COLA, PEPSI-COLA, MERCEDES BENZ or PERRIER JOUET. So
a WIPO type exclusionary policy does not seem to me to be either unfair or
unworkable with respect to AUFMs. Individual Registrars, of course, should
not be saddled with the problem of deciding what is and what isn't an AUFM;
that could be done by a group of experts appointed by WIPO, who shouldn't
have to spend more than a day and half coming up with a preliminary list,
including one reception and two lunches.
>> This, of course, does not mean that other famous marks which lack the
>> absolute uniqueness should not be entitled to protection. We all know
about MCDONALDS, TIME, FORD, WARNER, MOBIL and other famous marks with
multiple meanings. Those, I would suggest, should benefit from UDR,
notification and whatever else we or the ultimate decision makers may come
up with. In the meantime, the lives of present and future Registrars could
be made a little easier by the adoption of an AUFM approach.
>> Do I have any thoughts on how to reach consensus? Not today, thank you.
>> really difficult problem. Peter Weiss
>> ______________________________ Reply Separator
>> Subject: [wg-b] Famous Trademarks Author: firstname.lastname@example.org at
>> Date: 9/24/99 2:40 PM
>> I will be the first to admit that defining what constitutes a famous
>> trademark is not an easy task. But I do not believe that it is impossible.
>> I encourage people to look at Section 1205 of the Trademark Manual of
>> Examining Procedure -Refusal on Basis of Matter Protected by Statute or
>> Convention (available at http://www.uspto.gov). This sections contains a
>> list of marks that have been protected under US Federal Statutes and those
>> already the subject of international agreements in force, (e.g., "Red
>> and emblems protected by the Geneva Convention of August 12, 1949).
>> In addition, the Japanese government has recently enacted legislation
>> recognizing "famous marks." If you go to the Japanese web site they provide
>> a web enabled search engine to look through all 700+ famous trademarks. Yes
>> I was surprised that there were this many famous marks in Japan. And yes
>> there were several marks in the first few that I paged through that I did
>> not recognize. But then again I have only been to Japan once.
>> I just thought that this was some additional useful information to be
>> considered by all participants involved.
>> Has anyone been able to follow up with the Brazilian NIC concerning their
>> policy on protecting famous marks. I believe the information provided by
>> Judith on the 800 number was beneficial, and I would like to continue the
>> investigative process to make sure that we leave no stone unturned.
>> Thanks again,
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