>At 02:16 PM 5/7/99 , Martin B. Schwimmer wrote:
>
>>The distinction is meaningless in this discussion, as the poster proposed
>>his personal standard which is lower than the standard for a well-known
>>mark in the most conservative jurisdiction. And the WIPO report uses the
>>term conjunctively - the title of the Section is "The problem of notoriety;
>>Famous and Well-known Marks."
>
>
Oppedahl wrote:
It would be most helpful if all participants were to read the documents
>that they are commenting upon. In this connection the pertinent document
>is ANNEX VI - Policy For Domain Name Exclusions, which may be seen at
>http://wipo2.wipo.int/process/eng/final/annex06.html. It says:
>
> 10. Exclusions. Applications may be submitted by the
> owner of a mark requesting the grant of an exclusion for
> the mark on the basis that it is famous or well-known
> across a widespread geographical area and across
> different classes of goods or services. The application
> may seek the exclusion in all or some of the TLDs to
> which this Policy applies.
>
>Note that it is the disjunctive, "or", not the conjunctive "and".
Oh brother.
And if the exclusions can be granted to both famous "or" well-known, then
the exclusion can be granted to famous AND well-known marks. In any event,
the phrases "famous and well known" and the "famous or well-known" are used
interchangeably. I invite the list to count the number of times each
phrase occurs in the chapter of the report. I read it as a deliberate
attempt to equate the two terms - if not, show me something in the chapter
where some procedure, standard or observation applies to one term but not
the other.
I find the intro in the above post to be pretty snide given the context.
The thread began with Mr. Oppedahl's ipse dixit assertion that most of the
world's trademark laws do not protect famous marks, to which I provided
eight immediate citations from statutes. Someone else wrote in, in
Oppedahl's defense, to distinguish those cites because the most common term
used is "well-known", not "famous" mark. I replied that that is not a
meaningful distinction in the context of protection of such marks, and
certainly not in the context of the original post, which was essentially an
assertion that protection of such marks is not found in most statutes
around the world.
Again - the majority of countries have adopted the protection of well-known
marks through adherence to the Paris Convention and GATT/TRIPS - if you
want to find a reason to WIPO-bash, pick something other than a
mis-statement of world law.
>
>>The very fact that the terms are not precise makes clear why the WIPO
>exclusion List criterion must be something other than those terms.
>Otherwise, we will see a sad replay of the old NSI problems where two
>like-named companies come into conflict that would not have existed but for
>the policy mistake. Prince sporting goods will argue that its name
>"prince" is famous and/or well-known, and thus that it is entitled to be on
>The List. The result will be that all other companies named Price (and
>there are dozens of others) suddenly cannot get domain names that are
>"prince.foo".
>
>Can you answer this point, please? Isn't it true that allowing non-unique
>marks onto The List will lead to conflicts?
>
Is this a serious question?
Yes, allowing a non-unique mark onto a list of unique marks is a bad thing,
which is why WIPO gave seven criteria for what is unique mark. Famous and
well-known is a description of the finding, not a description of the
criteria.
Prince Sporting Goods would likely fail on factors one (knowledge of Prince
Spaghetti and other third party Princes, etc.) and factor five (lost the
Prince Software case).
SO I maintain my position that "coined and unique" has no discernable
advantage to the a multi-factor test derived from the existing body of law
relating to famous and well-known marks (and we know from our personal
experience that famous marks such as CADILLAC, CHANEL, MARLBORO and JOHNNIE
WALKER (BLACK and RED LABEL) are famous and well-known marks, but are not
coined.
Incidentally, when he filed his meta-tagging suit, Oppedahl alleged that
the mark OPPEDAHL AND LARSEN was a famous mark. Coined?
