U.S. Recognition of Article 6bis of the Paris Convention?

Article 6bis . . . to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, . . . , 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.

Why Are 6bis Fact Patterns Rare in the U.S.?

- U.S. is a ‘high priority’ market - Common law rights - Related goods doctrine - Online filing - Madrid Protocol - Expansive definition of International Commerce

This Presentation:

� U.S. Statute – Section 44 of Lanham Act

� U.S. Circuit Split – BUKHARA, GIGANTE Decisions

� Potential New Circ. Ct Decision: Bayer v Belmora (FLANAX)

� Policy?

Section 44 of the Lanham Act

44(a) – U.S. shall keep a list 44(b) – 44(c) – limitation of 6quinquies 44(d) – Convention priority 44(e) – 6quinquies (foreign registrations) 44(f) – more about 6quinquies 44(g) – [Article 8] trading names 44(h) - 44(i) – Comity for U.S. nationals

Section 44(b)

. . . shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this Act.

Section 44(h) Protection of foreign nationals against unfair competition. Any [member country national] . . . entitled to the benefits and subject to the provisions of this Act shall be entitled to effective protection against unfair competition, and the remedies provided herein for infringement of marks shall be available so far as they may be appropriate in repressing acts of unfair competition.

The Argument in Favor of 6bis

“Section 44(h) entitles foreign trademark owners to “effective protection against unfair competition” Section 44(b) expands that protection “to the extent necessary to give effect to any provision of such convention.” Actionable “unfair competition” therefore includes whatever is barred by “any provision” of an international agreement, including the Paris Convention. Therefore a foreign trademark owner can sue under Section 44 of the Lanham Act for violations of Article 6bis of the Paris Convention”

The Argument Against 6bis

“Section 44(h) entitles member nationals “who are entitled to the benefits of this Act” to “effective protection against unfair competition” . . . “subject to the provisions of this Act” … “and the remedies provided herein” Furthermore, Section 44(b) also ‘cabins’ that protection within “the conditions expressed herein” Actionable “unfair competition” therefore includes whatever is barred by the Lanham Act (which must provide effective protective against unfair competition). Therefore, member nationals can sue, for example, under Section 43(a) of the Lanham Act for violations of Article 6bis of the Paris Convention”

In other words

� 44(b) provides for ‘national treatment’

� 44(h) provides for ‘national treatment’ with regard to ‘minimum standards’ aka ‘harmonization.’

Is 6bis U.S. Law?

Second Circuit (BUKHARA) – No Ninth Circuit (GIGANTE) – Yes Fourth Circuit - ????

Second Circuit - BUKHARA ITC v. Punchgini, 482 F.3d 135 (2d Cir 2007) Indian restaurant in NY founded by former staff of prior BUKHARA restaurant after it closed.

Ninth Circuit - GIGANTE

Grupo Gigante v Dallo, 391 F.3d 1088 (9th Cir 2004) Plaintiff was large Mexican grocery store chain. Defendant opens grocery in San Diego. Plaintiff opens Los Angeles store. Defendant sues. Without discussing 44(b) and 44(h): There should be a well-known marks exception to the territoriality principle to prevent confusion and fraud.

Bayer v Belmora - FLANAX

Late 1970’s: Bayer* uses and registers FLANAX for prescription drug naproxen sodium in Mexico

Bayer v Belmora

Late 1970’s: Bayer* uses and registers FLANAX for prescription drug naproxen sodium in Mexico 2001-2003: Bayer* launches OTC version of FLANAX in Mexico

Bayer v Belmora Late 1970’s: Bayer* uses and registers FLANAX for prescription drug naproxen sodium in Mexico 2001-2003: Bayer* launches OTC version of FLANAX in Mexico 2003: Belmora, a U.S. company, files for FLANAX for naproxen in the U.S.

Bayer v Belmora

Late 1970’s: Bayer* uses and registers FLANAX in Mexico 2001-2003: Bayer* launches OTC version of FLANAX in Mexico 2003: Belmora files for FLANAX in the U.S. 2004: Belmora begins use of FLANAX in the U.S.

Bayer v Belmora

Late 1970’s: Bayer* uses and registers FLANAX for prescription drug naproxen sodium in Mexico 2001-2003: Bayer* launches OTC version of FLANAX in Mexico 2003: Belmora files for FLANAX in the U.S. 2004: Belmora begins use of FLANAX in the U.S. 2004: Belmora receives its registration.

Belmora’s Packaging

Bayer’s Packaging

Bayer v Belmora

Bayer v Belmora: TTAB 2007: Bayer files cancellation proceeding at the TTAB Grounds: Section 2(d): prior rights Article 6bis: famous mark Section 14(3): misrepresentation of source

Bayer v Belmora: TTAB April ‘14 Section 2(d): no trademark use, no prior rights Article 6bis: not a cause of action Section 14(3): Belmora misrepresented itself as Bayer. ‘Bayer’s reputation did not stop at the Mexican border’

Bayer v Belmora: ED Virginia

De novo review to a District Court in June 2014 Belmora appeals cancellation of its reg’n Bayer adds infringement and false advertising causes Bayer appeals 6bis

Bayer v Belmora: ED Virginia

February 2015: There are no exceptions to the territoriality principle. Infringement, false advertising and mis-representation of source all require protectable rights recognized by the Lanham Act. Congress did not intend to incorporate 6bis without specifically stating as such. ‘Source’ means trademark source

Martin Schwimmer Leason Ellis LLP

One Barker Avenue, Fifth Floor White Plains, NY 10601

schwimmer@leasonellis.com @trademarkblog

Thank You