The Recommendation is the first implementation of WIPO's policy to adapt to the pace of change in the field of industrial property by considering new options for accelerating the development of international harmonized common principles. It provides a set of guidelines for the protection of well-known marks that are recommended to States.
The Recommendation is the first implementation of WIPO's policy to adapt to the pace of change in the field of industrial property by considering new options for accelerating the development of international harmonized common principles. It provides a set of guidelines for the protection of well-known marks that are recommended to States.
The provisions aim at providing a clear legal framework for trademark owners who wish to use their marks on the Internet and to participate in the development of electronic commerce. They are intended to facilitate the application of existing laws relating to marks, and other industrial property rights in signs on the Internet.
A recent Joint Recommendation from the World Intellectual Property Organization dealing with protection of well-known trademarks is in stark contrast with U.S. trademark law and its underlying policies. While U.S. trademark law protects foreign trademarks in the territory where the trademark has established its goodwill among consumers, the Joint Recommendation extends protection of such foreign trademarks to the entire territory of the United States even if the trademark has not established its reputation in the entire United States. My Article argues that the overbroad territorial protection proposed by the Joint Recommendation undermines important policies of U.S. trademark law: it allows the attainment of enforceable trademark rights without investment in the trademark's goodwill and diminishes the quantity of available trademarks to U.S. entrepreneurs, raising their cost of entry into the market. Although the Joint Recommendation is non-binding, some countries, including the United States, have incorporated its provisions into their bilateral agreements. A recent U.S. District Court decision involving a famous Cuban cigar company that sued a U.S. corporation for infringement of its COHIBA trademark referenced the Joint Recommendation as well. This Article attempts to stimulate discussion about the implications of adopting the broad territorial protection of trademarks as advocated by the Joint Recommendation.
This Guide is primarily intended for applicants and holders of international registrations of marks, as well as officials of the competent administrations of the Member States of the Madrid Union. It leads them through the various steps of the international registration procedure and explains the essential provisions of the Madrid Agreement, the Madrid Protocol and the Common Regulations.
Trade in goods and services has historically resisted territorial confinement, but trademark protection remains territorial, albeit within an increasingly important framework of multilateral treaties. Trademark law therefore demands that practitioners, policy-makers and academics understand principles of international and comparative law. This handbook assists in that endeavour, with chapters describing and critically analyzing international and regional frameworks, and providing comparative perspectives on the substantive issues in trademark law and related fields, such as geographic indications, advertising law, and domain names. Chapters contrast common law and civil law approaches while focusing on the US and EU trademark systems in light of the role these systems have played in the development of trademark laws. Additionally, this handbook covers other jurisdictions, both common law and civil law, on the Asia-Pacific, African, and South American continents. This work should be read by anyone seeking a better understanding of trademark law around the world.
The Joint Recommendation aims at harmonizing and simplifying the formal requirements for the records of trademark licenses and therefore supplements the Trademark Law Treaty (TLT) of October 27, 1994, which is designed to streamline and harmonize formal requirements set by national or regional offices for the filing of national or regional trademark applications, the records of changes, and the renewal of trademark registrations.
Co-published by WIPO and the Hague Conference on Private International Law, this guide is a pragmatic tool, written by judges, for judges, examining how private international law operates in intellectual property (IP) matters. Using illustrative references to selected international and regional instruments and national laws, the guide aims to help judges apply the laws of their own jurisdiction, supported by an awareness of key issues concerning jurisdiction of the courts, applicable law, the recognition and enforcement of judgments, and judicial cooperation in cross-border IP disputes.
