Re: Trademark.tmk and famous marks

["Martin B. Schwimmer" <martys@interport.net>]

{see previous postings under this thread}

Mr. Williams wrote:

>> >
>>
>> MBS: How about delta.airlines, delta.house, delta.med, delta.isp  but not
>> delta.tmk, delta.firm or delta.shop because that creates the same inability
>> ot have effective coexistence that the .com gTLD creates.
>
>  W: Why?  How?

see below.
>
>> W: But what about
>> the problem of two companies in differing countries using the same mark for
>> related goods?  perhaps that's where ccTLDs comes in.  delta.airlines.uk
>> and delta.airlines.de, but a delta.airlines.int which would be pre-empt a
>> ccTLD (but would require a higher showing quivalent to establishing famous
>> mark status).
>
>  How does delta.int preempt a ccTLD?  What constitutes a famous mark?Who and
>under what circumstances is "Famous Mark" determined?  Is
>"Famous Mark" status universally recognized in all countries where the
>Internet is used or present?  These are some additional questions you
>should first answer before one can accurately and authoritatively
>suggest a specific course of action towards creating a possible
>resolution or other type of solution in which there "May Be" an
>infringement or dilution on a mark that is recognized globally.
>
>>




Why - to accomodate multiple users of the DELTA mark in as many classes of
goods as possible in as many geopgraphic areas as possible, and to attempt
to allow them to use the simpler DELTA form rather than a longer form
(DELTA-FAUCETS) if the web site/trademark/dn owner wishes to.

How - Through the creation of industry specific TLDs, if feasible.

How does delta.airlines.int preempt a ccTLD such as delta.airlines.de?

Bear in mind I am tossing out one hypothetical scenario.  I am trying to
re-concile two policy points.  The first is that, all things being equal,
if someone wants to use DELTA AIRLINES in their geographic region, and
promote those services using a DN incorporating its house mark (as is a
common business practice these days), then it can obtain something like
delta.airlines.de, while a DELTA Faucets of the U.S. and use a DN
consisting primarily of DELTA to promote its goods and services. 

 The other policy point is that if there is a mark which is so well known
across country lines (and can prove that point), and it can prove that the
use of delta.airlines by any third party in any country is likely to cause
confusion in that country, then it will preempt delta.airlines in that
country.

That scenario should accomodate more people than having a single delta.com
in the world, while still protecting the owners of their respective DELTA
marks.

As to Mr. Williams' questions regarding the protection of famous marks I
will try my best to answer them:


Famus Marks are protected under the Paris Convention, of which
approximately 143 countries belong, therefore there is a huge overlap with
countries where the Internet can be accessed.  I don't think Nieu is a
member. Togo is a member but Tonga isn't.

The definition of famous mark will be up to the individual country.  The
two extreme definitions would be "famous means famous throughout a
significant portion of the world" to a narrow definition of "famous means
famous in our country."  Another variable is whether fame means knwon to
the consuming public or among the trade. Sometimes a country may have an
export-driven economy (or at least an anti-import policy) and may be
motivated to adopt a narrow definition.  Thus, conceivably, someone may
register ROLLS-ROYCE or CARTIER or ROLEX for the goods for which those
marks are known (in the U.S. and Europe) in a lesser-developed country and
the owners of those marks may be unable to show that the public is familiar
with those marks (Even though people in the car or jewelry or watch trade
may be very familiar with those marks).

By the way, the U.S. grants a lower degree of protection to a non-U.S.
mark, taking a "famous means famous in the U.S. approach).

If fame of a mark was part of a dispute resolution process, then it would
seem that the fame standard should correlate to the TLD in question, famous
in Germany for a German TLD, famous in a region if there a regional TLD,
worldwide fame for a gTLD.

If Rolex wanted to establish that the mark ROLEX was famous somewhere for
example, it would submit evidence in a proceeding such as the following:
(1) lists and copies of registrations for the ROLEX mark from other
countries; (2) worldwide sales figures; (3) worldwide promotional figures;
(4) third-party evidence of reputation (i.e. news articles) (4) affidavits
from people in the trade. If the application was for, say, ROLEX for
sunglasses, Rolex would also need to establish that watches and sunglasses
are related such taht someone encuntering one mark on watches would
anticipate that eyeglasses bearing that mark came from the same source. It
can be an expensive proof.

There are on-going processes at various times to harmonize the world's
trademark laws on these points.  The Community Trademark, for example,
attempts to make the standards more uniform throughout Europe.  Some marks
are subject to conflicting decisions, found to be famous in one country
where they don't do busienss, not famous where they do do business.  It
happens.

One thing is apparent, it takes more than merely stating "I am famous" to
achieve famous mark status.

mbs



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>
> Regards,
>
>--
>Jeffrey A. Williams
>DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
>Information Network Eng. Group. INEG. INC.
>E-Mail jwkckid1@ix.netcom.com
>
>
>
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