At 10:56 AM 5/7/99 -0600, you wrote:
>At 10:33 AM 5/7/99 , Martin B. Schwimmer wrote:
>
>>You hadn't made it clear that you were asking ICANN to adopt your own
>>personal proposal for criteria, rather than follow the world's famous mark
>>practice.
>
>Oppedahl: There is no "world's famous mark practice". The US has a vague
list of
>eight non-binding factors which is a judge is free to use or ignore as the
>judge sees fit in deciding whether to consider a mark "famous".
What is a "vague list of eight factors"? Are you merely using the term
vauge to criticize the concept of a multi-facotr fact-specific analysis?
>In a few other countries of the world are similarly vague laws that have
>only the slipperiest definition of "famous", and a mark owner who manages
>to qualify as "famous" might get any of a varieties of remedy depending on
>the country.
What is a vague law? That it allows fact-specific holdings? An element to
be proved is reputation, reputation can be composed of many elements -
sales figures, advertising figures, third-party recognition, awards.
slipperiest definition? You know who doesn't use slippery definitions-
NSI. That woud be an example of a non-vague policy. No discretion by the
tribunal - so people take advantage of the lack of discretion.
>
>But most of the countries of the world have only infringement-based
>remedies, not dilution-based or famousness-based remedies.
Did you research this point before posting? This is simply not true.
because, by way of example:
Article 124 from the Brazilian Industrial Property Law of 1996,
Section 5 of the Canadian Trade-Marks Act,
Rule 25 of the Implementing Regulations of the PRC's trademark law,
Article L13-5 of the Intellectual Porerty Code in France,
Article 35 of India's Act,
Article 17.1 of Italy's Act,
Article 4 of Japan's Act, and
Section 10 of the South African Act
would appear to be famous and well-known mark provisions in the first eight
statutes I looked at. I won't play the game that you have created some
kind of presumption by saying "most of the countries" so that I have to
come up with eighty more to rebut the presumption.
I will merely note that the GATT/TRIPS agreement provides that Article
6(bis) of the Paris Convention will apply. So I would say "virtually all
countries" provide for some type of famous mark protection.
And your statement about infringement will offend most of the countries of
the world which have passing off and unfair competition laws in addition to
infringement statutes.
>
>And the usual remedy for infringement or dilution, worldwide, is at most
>cease-and-desist relief, not a transfer-of-property relief.
Well, seizures provide transfer-of-property relief.
Cease-and-desist relief against a domain name would prevent the DN from
using the DN. Permanent cease and desist relief would prevent the DN owner
from using the DN ever. So permanent cease-and-desist releif agaisnt hte
use of a DN would have the same effect as transfer-of-property relief.
>The WIPO report recommends yet another intellectual property right, that of
>placement on the exclusionary List. There are two ways to get on the List,
>one is to be "famous" and the other is to be "well-known". In either case
>one is placed on the List, and the results are that (1) no other like-named
>company or trademark can ever be placed on the List (think about it), (2)
>the lucky company whose mark gets on the List gets to block anybody else,
>even a like-named company or a company with a like-named product or
>service, from obtaining a matching domain name,
and (3) the lucky company >gets to use the challenge procedure to harass
the similarly-named company
>or a company with a similarly-named product or service with extremely
>strong evidentiary and substantive presumptions in favor of the lucky company
These are arguments against a list-based approach - not an argument for
making a sleight of hand argument about the standard for trademark
protection. People on these lists have the erroneous notion that use of a
dictionary word is a defense against infringement, because practioners on
these lists misstate the law (and only when challenged do they admit that
it is their "personal" suggestion. I do not want them to get the erronoeus
notion that "coined and unique" is a legal standard for anything, it's just
a coined phrase unique to you (and the Old British statute of 1938, which
was rejected ultimately because it was out of touch with reality).
.
>
>And WIPO report recommends that the available relief include
>transfer-of-property relief, which goes far beyond any country's
>substantive law (nearly all of which are limited to cease-and-desist
>relief). This despite the fact that there might well be other like-named
>companies or companies with like-named products, that are no less deserving
>to own the sought-after domain name.
>
>What I am suggesting is that such a plum should be given only to the
>company that can establish that its mark is coined and unique. And that
>as a general matter the remedies available to WIPO's tribunals ought to be
>limited to cease-and-desist relief, with transfer-the-property relief
>limited to cases in which it is demonstrated that the mark is unique.
>
>>OK, let's not adopt Mr. Oppedahl's personal criteria of "coined and
>>unique", as it is a marked departure from the existing case law, and would
>>not grant protection to JOHNNIE WALKER, CADILLAC, NIKE, MARLBORO, CARTIER,
>>CHANEL, DISNEY or many other of the world's famous marks.
>>
>>I am cross-posting this to the WIPO list, as this is a proper discussion
>>for that list.
>>
>>At 09:31 AM 5/7/99 -0600, you wrote:
>>>At 09:03 AM 5/7/99 , Martin B. Schwimmer wrote:
>>>>
>>>>Without commenting on the proposed 'exclusionary" practice itself, I note
>>>>that Mr. Oppedahl impliedly misstates the standard for being a famous
mark.
>>>> It is not "coined and unique." Non-coined marks which are famous include
>>>>JOHNNIE WALKER, CADILLAC and NIKE.
>>>
>>>>Demonstrably unique (or more to the point, demonstrably famous) is a
>>>>different concept from "coined and unique" and should not be confused.
>>>
>>>No, I have misstated nothing. It seems you are conflating several quite
>>>distinct questions. One question is:
>>>
>>>A. What standard does WIPO propose as the criterion for the honor of being
>>>added to the exclusion List?
>>>
>>>B. What additional requirement does Carl Oppedahl propose limiting
>>>eligibility for addition to the exclusion List?
>>>
>>>C. What are the dictionary meanings of "famous" and "well-known"?
>>>
>>>D. What is the definition of "famous" under the US Federal Trademark
>>>Dilution Act?
>>>
>>>Mr. Schwimmer seems to be proposing discussions as to C, or D, or perhaps
>>>A. I was doing nothing more than expressing my view as to B. They are not
>>>the same questions at all.
>
>
>
