>Trademarks can not be usurped, in law, even if they are not registered.
This statement is true only in jurisdictions which recognize use as a basis
for protection. The US, Canada, a few "british law" jurisdictions and a
few civil law jurisdictions will recognize and protect prior rights, but
they are a distinct minority. The majority of the world's TM jurisdictions
are "Registration Only" jurisdictions - only a TM reg. creates protectable
TM rights.
This brings me to a point that is a little off topic from this thread, and
off topic from even the debate regarding dispute resolution in dn/tm
conflicts.
The issue is that there is a wave of US web site operators who will be
upset to learn that their having sold goods into Japan or France, for
example, will not be a source of protectable rights against a third party
which files a TM application, even if that TM app'n is filed way after the
US company began sales in that country.
So, for example, lots of Europeans can be buying and selling on ebay.com.
If ebay has not filed for TM protection in Germany, I can go to Germany,
file for ebay.com covering electronic auction services, get a registration,
and, theoretically, enjoin ebay.com from doing business in Germany under
that mark.
Many countries have flexible enough unfair competition laws so that, after
expensive litigation, I would ultimately lose, but not in every country.
My point is that as the number of US-based exporters rises courtesy of the
Web, the potential for TM conflict with "registration only" jurisdictions
(as stated above, that's most of the world) rises - and that creates the
need for harmonizing TM law to recognize this type of usage.
I can't predict whether this means that more countries will recognize prior
use as giving rise to protectable rights or whether the DN registration
process will link up in certain instances with TM registries, so the act of
filing for certain (read commercial) DNs will also be the act of filing for
TM protection. Buy a domain name, get a TM registration free.
In the meanwhile, we are stuck with the irony that a major source of
protection for the US web site owner will be Articles 6bis and Article 8 of
the Paris Convention, trade mark and trading name protection respectively
for unregistered names. Owners of famous TMs will tell you that those
articles are no panaceas. Whittling down protection for famous marks at
this time (i.e. adopting a list approach) may have the effect of harming
nascent US web-based companies at a later time.
ebay.com, for example, would not make a famous mark list, but if someone
filed for ebay.com as a TM in Brazil today, for example, wouldn't you
assume that such a filing was in bad faith?
>
>At 11:50 AM 2/2/99 -0500, [EMAIL PROTECTED] wrote:
>>I would say yes. Cybersquating restricted to trademarked
>>names only? I think not. There are some very desirable
>>names that are too generic to trademark but they could still
>>have high value. Maybe my definition of cybersquating is
>>broader than most.
>>
>>Chuck
>>
>>-----Original Message-----
>>From: Mikki Barry [mailto:[EMAIL PROTECTED]]
>>Sent: Tuesday, February 02, 1999 10:50 AM
>>To: IFWP Discussion List
>>Subject: RE: [ifwp] NSI Domain Name Dispute Stats
>>
>>
>>>Mikki,
>>>
>>>Another observation might be that the much maligned and
>>>disliked NSI dispute policy might actually discourage
>>>cybersqatters from going after trademarked names because
>>>they know the mark holders can invoke the policy. If this
>>>is true, it could possibly be concluded that cybersquatters
>>>are focusing more on non-trademarked names.
>>
>>Possible, yes, but can one truly "cybersquat" if the name
>>isn't trademarked?
>>
>>
>>
>
>
>___________________________________________________
>Roeland M.J. Meyer -
>e-mail: mailto:[EMAIL PROTECTED]
>Internet phone: hawk.lvrmr.mhsc.com
>Personal web pages: http://staff.mhsc.com/~rmeyer
>Company web-site: http://www.mhsc.com
>___________________________________________________
> KISS ... gotta love it!
>
>
>
>
>
