Re: Fw: AW: [ICANN-EU] AMM's "government statement"

[Marc Schneiders <marc@schneiders.org>]

On Wed, 18 Oct 2000, Andreas Fügner wrote:

> Below is a copy of my response to an earlier posting from AMM:

A very interesting reprint of what looks like a leaflet of a trademark
agency. I do not see this has any relevance (assuming that is the
reason you repost it) on the Madonna case I mentioned in my posting,
which posting you labelled as trying to mislead people.

(For the record, I had not read it before. I may have recieved it and
deleted it, as sometimes happens.)

The ARD/Kabel 1 case you were referring to, stating that "we had
discussed it" (pluralis majestatis, I presume), has nothing to do with
trademarks that are 'above' classes for being so famous. All three
parties involved are doing the same 'product'. So naturally ARD had
to defend its "1". However, if I start selling shoes (yes, I love
shoes) under the mark "1", ARD does not have to sue me to keep its
trademark, unless my shoes are also capable of radiating television
signals. If they are not that clever, ARD will not have a case.

The constant hammering on the (supposed) need of TM owners to defend
their TM by UDRPing domain name owners, does to me only proove that
specialists in TM law are looking for a job.

-- 
Marc Schneiders

"In re tam iusta nulla est deliberatio."
(Acta SS. Mart. Scillitanorum [AD 202]) 


 > > AF
> >
> >Dear Andy:
> >
> >>>Finally, Andy has very much promoted the idea of a "(trademark-)
> law-free"
> >>>TLD. If there are any lawyers or other law people on the list interested
> >in
> >>>discussing that idea and developing it in some more detail, please
> contact
> >>>me by PM.
> >
> >>I would appreciate this; one of my main question is, how much a policy
> >>is a legal question. ICANN´s missed to mention the public space at all
> >>in it´s policies. I guess some problems could already be avoided be
> >>naming clearly in what policies trade mark does apply and which are
> >>explicitly trade-mark free.
> >
> >
> >To the best of my knowledge there is no TM free zone in real life or
> >cyberspace. The reason being, that a trademark owner has to
> >protect/defend its right every time. Otherwise it is lost.
> >
> >Further below please find a short brief on why TM owners have to fight so
> >much.
> >
> >Andreas Fuegner
> >
> >
> >Reasons, why Trademark (TM) holders fight so hard for Domain Names.
> >
> >TMs are highly valuable properties.
> >Here are some estimated values of TMs:
> >
> >Coca Cola: up to 41.000.000.000 US $
> >Marlboro:    up to 21.000.000.000 US $
> >Microsoft:   up to 20.000.000.000 US $
> >
> >Source: ICON study
> >
> >These are by all means properties, worth protecting.
> >
> >
> >But why TMs at all?
> >
> >The average human being has a passive knowledge of
> >anything between 1.000 and 10.000 words. After the
> >deduction of basic words like you, me, when, why,
> >or, and, Mom, Dad, etc. there is a limit on how many
> >TMs a consumer can know.
> >
> >Thus, TM owners are competing for space in our
> >memory meaning preference on our shopping list.
> >
> >People today use an ever growing number of media
> >to inform themselves. There are more TV and radio
> >stations, more newspapers and magazines and new
> >media like the internet.
> >
> >This makes it more expensive for TM owners to reach
> >consumers to establish and maintain the memory of
> >their TM.
> >
> >Owners of famous TMs annually spend anything
> >between 500.000.000 and 2.000.000.000.000 US $
> >in communication to support and increase awareness
> >of their TM and sympathy and trust into the products
> >and services offered under the TM.
> >
> >There are companies, that own many valuable TMs.
> >Unilever holds some 1.600 trademarks. Philip Morris
> >owns amongst others Marlboro, Kraft, Jacobs, Suchard
> >and Milka.
> >Pharmaceutical companies for safety reasons
> >register TMs. Your doctor, your pharmacist and
> >you yourself want to distinguish the right medication
> >from the wrong. Pharma TMs run into thousands.
> >Just check a local pharmacy.
> >
> >Consumers want trademarks also for maybe less
> >important reasons. Consumers buy TM products
> >to increase their image. Just look up the amount
> >of UDPR cases of Louis Voutton Moet Hennessy,
> >owner of TMs like Christian Dior, Yves Saint Laurent,
> >Chloe, Loewe, Moet Chandon, Hennessy, Louis Voutton,
> >etc.
> >
> >So there is a need and a wish for TMs on all levels.
> >
> >
> >Why all the hustle all of a sudden?
> >
> >In the past intellectual properties like TMs and patents were
> >difficult to activate on a balance sheet.
> >Meanwhile legislation is on its way to establish procedures
> >how to activate intellectual property on a balance sheet.
> >Estimates about the portion of a company value intellectual
> >property might account for run from 56 % to 87 %!
> >This hopefully gives an idea of the amount
> >of money involved and at risk.
> >
> >
> >Why is this money at risk?
> >
> >Because TM owners have to protect their TM
> >in order to keep it. If a TM owner does not
> >object to a violation or watering down he looses
> >his TM, his property.
> >
> >An example.
> >
> >The German public broadcasting network ARD uses a
> >TM that consists of a special graphic design of the alpha
> >numeric number "1".
> >
> >A few years after private television was introduced in Germany,
> >a competitor of ARD, named Kabel 1, started to use a similar
> >logo consisting of another design of the number 1.
> >
> >ARD eventually filed a law suit. ARD provided an
> >independent representative study, proofing that over 20 %
> >of the German population were confusing the two logos.
> >The consumers assumed that productions from Kabel 1
> >were productions from ARD.
> >ARD won its law suit and Kabel 1 had to change
> >the logo.
> >
> >Kabel 1 filed for appeal.
> >During the appeal, Kabel 1 could prove, that
> >another private TV station, named SAT 1, had started
> >to use the number 1 earlier than Kabel 1 did.
> >And, ARD had missed to object against SAT 1.
> >
> >As a result, the first court decision was overruled,
> >ARD lost its TM protection. To the best of my knowledge
> >the case is not finally decided yet.
> >
> >The burden on TM owners is fairly big.
> >It is their responsibility, to check each and every new
> >TM application for similarities or violations. The
> >trademark offices are not liable and do not guarantee
> >protection.
> >
> >
> >In conclusion
> >Consumers benefit from TM in many ways.
> >A TM is difficult and expansive to establish and to maintain.
> >A TM is a valuable piece of property. It deserves protection,
> >sometimes in our own interest
> >
> >
> >
> >
>