In general, protectable trademark rights arise in two ways – obtaining registrations, and, in a couple of oddball countries such as the U.S., through use.  There is a third way a trademark can be protected, and it arises under Article 6bis of the Paris Convention, which provides, in part, that Treaty members have the right to:

“. . . refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods.”

This Article is the source of special protection for famous trademarks.  During the domain name wars this doctrine was attacked on, in my view, misplaced populist grounds, but it has two sound bases in trademark law.  The first is that famous mark doctrine is a logical expansion of and gives flexibility to ‘related goods doctrine.’  Another way of putting it is that a famous mark’s ‘zone of expansion’ is larger than that of a non-famous mark.    I associate NIKE with a wider range of goods than the marks of other sneaker brands.

The second basis is the policy against unfair competition.  Some marks are so famous and so unique (COCA COLA, SONY, AMAZON.COM) that it becomes fair to impute bad faith to a trademark applicant by the mere adoption of that mark.  What is the intent of anyone other than Pfizer who files for VIAGRA on any goods in any country?

One of the wrinkles in 6bis jurisprudence is the expression “well known in that country” (the country where the unauthorized use takes place).  Unaided brand awareness of certain luxury brands may approach 100% in certain zip codes in Manhattan but, outside of duty free stores, awareness may hover around zero in some countries.  If I find a country where the trademark owner has neither used nor filed, can I file in good faith there?  If the jurisprudence is that goodwill can ONLY arise from use, does the trademark owner have protectable rights? This is the “reputation without use” conundrum.

Courts find ways to deal with this.   They may play with the determination as to what part of the populace is relevant.  In the Czech Republic in the late 80’s, someone filed for TIFFANY for jewelry.  I participated in the representation of Tiffany & Co. in a cancellation proceeding.  The reality was that after decades of communism, very few Czech consumers were aware that there was a TIFFANY & CO. (and Tiffany had not sold into the country prior to the filing).

 However, we were able to show that anyone employed in jewelry field would likely have known about the New York company.  For example we produced a Czech jewelry textbook which indicated that a four prong setting was called a TIFFANY setting, named for the NY company.  A Czech book on gems depicted the Tiffany Diamond (which is the largest cut yellow diamond in the world).  We also produced affidavits from Czech jewelers attesting to Tiffany’s fame.

This evidence allowed the Court to rely on Tiffany’s reputation without use, in order to find that the applicant had filed in bad faith.

Other countries simply change their minds.  Singapore had strongly believed that there can be no reputation without use.  In a case that also involved the TIFFANY mark, the High Court acknowledged that in the modern era, knowledge of a mark can arrive in a country before use (the Court used VIAGRA as an example) such that it would be bad faith for third parties to adopt it).

It has been my view that on the whole, the U.S. has not protected non-U.S. marks to the same degree.  To be fair, the fact pattern is less common here, because the U.S. is a desirable high-priority export market.  Nevertheless, the fact pattern is not impossible, particularly in the case of geographically oriented services.  For example the trademark of a famous resort, restaurant or sporting event, may have a reputation here, but no technical trademark use (and the owner may not have gotten around to filing here)

The most notorious case of the U.S. not relying upon reputation without use was the PERSON’S case, 900 F.2d 1565 (Fed Cir 1990).  The applicant freely admitted to visiting Japan, seeing the PERSON’S logo, and filing for an identical version in the U.S.  The U.S. court held that, applicant’s knowledge of Person’s aside, there was no use and no protectable reputation here.

The reluctance to find applicant’s behavior to constitute bad faith. put the U.S. squarely in the camp of such countries as Malaysia.  For example, an applicant had filed for HUMMEL for figurines.  Applicant obviously was aware of the famous HUMMEL mark but had searched and determined in its estimation that there was no use in Malaysia – thus no protectable rights.  Despite prior knowledge of the famous mark, there was no bad faith (note that this was pre-GATT and a Malaysian court might likely hold differently today).

Certain U.S. cases over the  decades do however suggest a U.S. willingness to protect the famous mark.  Recently, the Fourth Circuit gave protection to the mark CASINO DU MONTE CARLO.  It did so however, by creating in my view, a tortured definition of use in commerce, stating in effect that if an American walks into a casino in Monte Carlo, that that is commerce that can be regulated by Congress.  I do not believe that that rationale will be widely followed.  See McCarthy’s, Sections 27.47 and 29.2 for a critique of the case.

Much more plausible is yesterday’s Southern District Of NY decision in Empresa Cubana de Tabaca (Cubatabaco) v. Culbro, (Sweet, J.) (you must choose Southern District of NY and then Judge Sweet to access the decision). A U.S. cigar company adopted the COHIBA trademark, aware of its reputation as a highly regarded Cuban cigar.   Because of the embargo, the Cuban trademark owner obviously had no trademark use in the U.S.  Cubatabaco was able to show significant reputation in the U.S.  In fact, Cigar Aficionado magazine had suggested that COHIBA was the most desired cigar brand in the world.  There was also evidence to suggest that the U.S. defendant had contemplated referring to the Cuban trade dress and planned to invoke Cuban imagery in advertising, even though its cigars were sourced from the Dominican Republic.

The 142 page decision cannot be adequately summarized here.  In short, the Court held that the famous mark doctrine of Article 6bis is ‘subsumed’ by Section 43(a) of the Lanham Act.  COHIBA was held to be a famous mark at the time defendant adopted it.  Importantly, the standard for protection under famous mark doctrine is a different (lower) standard than that under the Federal Trademark Dilution Act.  In my view, this is a clear instance of the U.S. protecting ‘reputation without use.’  Owners of famous foreign restaurants, resorts and events, take note.

For the first and last word on the protection of famous marks, see Mostert, “Famous and Well-Known Marks.” (although at this point, wait for the second edition to come out from INTA soon).