5 Chi.-Kent J. Intell. Prop. 1 (2005-2006)

handle is hein.journals/jointpro5 and id is 1 raw text is: Copyright  2005, Chicago-Kent Journal of Intellectual Property

THE WIPO JOINT RECOMMENDATION PROTECTING WELL-
KNOWN MARKS AND THE FORGOTTEN GOODWILL
Maxim Grinberg*
The pirate flies the flag of the one he would loot. The free and honorable non-pirate
flies the colors of his own distinctive ensign.I
Introduction
In many countries, trademark registration is the only mechanism to obtain enforceable
trademark rights.2 As a prerequisite to registration, some countries require a trademark owner to
use or demonstrate its intent to use the trademark within their borders.3 Often, due to business
reasons, embargoes, or other economic and political restrictions, trademark owners cannot sell
their products in foreign markets, and consequently, cannot use or demonstrate a bona fide intent
to use their trademarks therein.4
The inability to obtain registration exposes businesses that seek global protection of their
trademarks to a number of potential harms.5 Local producers (inadvertently) or trademark pirates
(intentionally) are not deterred from using, registering and profiting from unregistered
trademarks of foreign businesses.6 In addition to hurting a legitimate trademark owner's
reputation and goodwill, such unauthorized use allows local trademark pirates to acquire superior
rights in a trademark, preventing a legitimate owner from ever selling products bearing its brand
name in that country.7
Consumers are also adversely affected when they rely on a trademark to identify and
purchase a legitimate owner's product, but mistakenly purchase products from an infringing
local producer instead.8 Such confusion undermines consumer expectation in the quality of the
 Maxim Grinberg is an Executive Editor of the Boston College International & Comparative Law Review Journal.
The author would like to thank Professor Assaf Jacob for his valuable comments and Eliza Kamenetsky for her
contribution in helping to edit this article.
'Quaker Oats Corp. v. General Mills, Inc., 134 F.2d 429, 432 (7th Cir. 1943).
2 4 Thomas J. McCarthy, McCarthy on Trademarks and Unfair Competition  29:61 (4th ed. 2004).
3 See Jana Sigars-Malina, Basic Trademark and Brand Name Creation, Maintenance & Protection (PLI Commercial
Law & Prac. Course Handbook Series No. AO-002V, 1999).
4 See generally Empresa Cubana del Tabaco v. Culbro Corp., 2004 U.S. Dist. LEXIS 4935 (S.D.N.Y. Mar. 29,
2004) (Cuban plaintiff precluded from selling cigars in the United States due to embargo); Charles E. Webster,
The McDonald's Case: South Africa Joins the Global Village, 86 Trademark Rep. 576, 577, 580 (1996)
(discussing reasons behind McDonald's failure to enter South African market).
5 See Paul F. Kilmer & Michael J. Mlotkowski, U.S. Economic Sanctions andAnti-Boycott Legislation 2 (2003), at
http://www.inta.org/downloads/tapsanctions2003.pdf(last visited Sept. 12, 2005).
6 See id.; Frederick W. Mostert, Well-Known and Famous Marks: Is Harmony Possible in the Global Village, 86
Trademark Rep. 103, 105 (1996).
7 See Mostert, supra note 6, at 104-05.
8 See I McCarthy, supra note 2, at  2:33.

5 Chi.-Kent J. Intell. Prop 1

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