|
World Trade Organization |
|
|
|
|
|
2 January 2002 |
|
|
|
(02-0001) |
|
|
|
|
|
--- Edited ---
UNITED STATES – SECTION 211 OMNIBUS
APPROPRIATIONS ACT OF 1998
AB-2001-7
1.
The European Communities and
the United States appeal from certain issues of law and legal interpretations
in the Panel Report, United States
– Section 211 Omnibus Appropriations Act of 1998 (the "Panel
Report"). [1] The Panel was established
on 26 September 2000 to consider a complaint by the European Communities with
respect to Section 211 of the United States Omnibus Appropriations Act of 1998
("Section 211"). [2] The European Communities alleged that
Section 211 is inconsistent with certain obligations of the United States under
the Agreement on Trade-Related Aspects of
Intellectual Property Rights (the "TRIPS
Agreement"), as read with the relevant provisions of the Paris Convention for the Protection of
Industrial Property, as amended by the Stockholm Act of 1967
(the "Paris Convention (1967)"), which are incorporated by reference
into the TRIPS Agreement.
2.
The background to this dispute
and the measure at issue are described in detail in the Panel Report. [3] Here, we set out those aspects of the
measure that are relevant to this appeal.
3.
The complaint by the European
Communities relates to Section 211, which was signed into law on
21 October 1998. Section 211 states as follows:
(a) (1) Notwithstanding any other provision of law, no
transaction or payment shall be authorized or approved pursuant to
section 515.527 of title 31, Code of Federal Regulations, as in effect on
September 9, 1998, with respect to a mark, trade name, or commercial name that
is the same as or substantially similar to a mark, trade name, or commercial
name that was used in connection with a business or assets that were confiscated
unless the original owner of the mark, trade name, or commercial name, or the
bona fide successor-in-interest has expressly consented.
[a] (2) No U.S. court shall recognize, enforce or
otherwise validate any assertion of rights by a designated national
based on common law rights or registration obtained under such section 515.527
of such a confiscated mark, trade name, or commercial name.
(b) No
U.S. court shall recognize, enforce or otherwise validate any assertion of
treaty rights by a designated national or its successor-in-interest under
sections 44 (b) or (e) of the Trademark
Act of 1946 (15 U.S.C. 1126 (b) or (e)) for a mark, trade name, or commercial
name that is the same as or substantially similar to a mark, trade name, or
commercial name that was used in connection with a business or assets that were
confiscated unless the original owner of such mark, trade name, or commercial
name, or the bona fide successor-in-interest has expressly consented.
(c) The
Secretary of the Treasury shall promulgate such rules and regulations as
are necessary to carry out the provisions of this section.
(d) In
this section:
(1) The term "designated national" has the
meaning given such term in section 515.305 of title 31, Code of
Federal Regulations, as in effect on September 9, 1998, and includes a national
of any foreign country who is a successor-in-interest to a designated national.
(2) The
term "confiscated" has the meaning given such term in
section 515.336 of title 31, Code of Federal Regulations, as in effect on
September 9, 1998.
4.
Section 211 applies to a
defined category of trademarks, trade names and commercial names, specifically
to those trademarks, trade names and commercial names that are "the same
as or substantially similar to a mark, trade name, or commercial name that was
used in connection with a business or assets that were confiscated" by the
Cuban Government on or after 1 January 1959. [4] Section 211(d) states that
the term "designated national" as used in Section 211 has the meaning
given to that term in Section 515.305 of Title 31, Code of Federal
Regulations ("CFR"), and that it includes "a national of any
foreign country who is a successor-in-interest to a designated
national." The term
"confiscated" is defined as having the meaning given that term in
Section 515.336 of Title 31 CFR.
Part 515 of Title 31 CFR sets out the Cuban Assets Control Regulations
(the "CACR"), which were enacted on 8 July 1963 under the
Trading with the Enemy Act of 1917. [5] Under these regulations, "designated national" is defined as Cuba, a national of Cuba or
a specially designated national.[6]
"Confiscated" is defined as nationalized or expropriated by
the Cuban Government on or after 1 January 1959 without payment of adequate and
effective compensation. [7]
5.
Section 211(a)(1) relates
to licensing regulations contained in the CACR. The CACR are administered by the Office of Foreign Assets Control
("OFAC"), an agency of the United States Department of the Treasury. Under United States law, all transactions
involving property under United States jurisdiction, in which a Cuban national
has an interest, require a licence from OFAC. [8] OFAC has the authority to
grant either of two categories of licences, namely general licences and
specific licences. A general licence is
a general authorization for certain types of transactions set out in OFAC
regulations. [9] Such a licence is, in
effect, a standing authorization for the types of transactions that are
specified in the CACR. A specific
licence, by contrast, is one whose precise terms are not set out in the
regulations, so that a person wishing to engage in a transaction for which a
general licence is not available must apply to OFAC for a specific licence. [10]
Section 515.527 Certain transactions with respect to United States intellectual
property.
(a) Transactions related to the registration
and renewal in the United States Patent and Trademark Office or the United
States Copyright Office of patents, trademarks, and copyrights in which the
Government of Cuba or a Cuban national has an interest are authorized.
(a) (2) No transaction or payment is authorized or
approved pursuant to paragraph (a)(1) of this section with respect to
a mark, trade name, or commercial name that is the same as or substantially
similar to a mark, trade name, or commercial name that was used in connection
with a business or assets that were confiscated, as that term is defined in
section 515.336, unless the original owner of the mark, trade name, or
commercial name, or the bona fide successor-in-interest has expressly consented.
8.
The effect of Section 211, as
read with the relevant provisions of the CACR, is to make inapplicable to a
defined category of trademarks and trade names certain aspects of trademark and
trade name protection that are otherwise guaranteed in the trademark and trade
name law of the United States. In the
United States, trademark and trade name protection is effected through the
common law as well as through statutes.
The common law provides for trademark and trade name creation through
use. The Trademark Act of 1946 (the
"Lanham Act") [11] stipulates substantive and procedural rights
in trademarks as well as trade names and governs unfair competition. Section 211(b) refers to Sections 44(b)
and (e) of the Lanham Act. [12]
9.
Before the Panel, the European
Communities argued that:
Section 211(a)(1) is inconsistent with Article 2.1 of the TRIPS Agreement in conjunction
with Article 6quinquies A(1) of
the Paris Convention (1967) and Article 15.1 of the TRIPS Agreement; Section 211(a)(2)
is inconsistent with Article 2.1 of the TRIPS Agreement in conjunction with Articles 2(1), 6bis (1) and 8 of the Paris
Convention (1967), and Articles 3.1, 4, 16.1 and 42 of the TRIPS Agreement; and Section 211(b) is inconsistent with
Article 2.1 of the TRIPS Agreement
in conjunction with Articles 2(1), 6bis (1)
and 8 of the Paris Convention (1967), and Articles 3.1, 4, 16.1 and 42 of
the TRIPS Agreement.
10.
In the Panel Report circulated
on 6 August 2001, the Panel found that:
(a)
Section 211(a)(1) is not
inconsistent with Article 15.1 of the TRIPS Agreement;
(b)
Section 211(a)(1) is not
inconsistent with Article 2.1 of the TRIPS Agreement in conjunction with
Article 6quinquiesA(1) of the Paris
Convention (1967);
(c)
it has not been proved that
Section 211(a)(2) is inconsistent with Article 16.1 of the TRIPS
Agreement;
(d)
Section 211(a)(2) is
inconsistent with Article 42 of the TRIPS Agreement;
(e)
Section 211(a)(2) is not
inconsistent with Article 2.1 of the TRIPS Agreement in conjunction with
Article 6bis of the Paris Convention
(1967);
(f)
Section 211(a)(2) is not
inconsistent with Article 2.1 of the TRIPS Agreement in conjunction with
Article 8 of the Paris Convention (1967);
(g)
Section 211(a)(2) is not
inconsistent with Article 3.1 of the TRIPS Agreement and Article 2.1 of the
TRIPS Agreement in conjunction with Article 2(1) of the Paris Convention
(1967);
(h)
Section 211(a)(2) is not
inconsistent with Article 4 of the TRIPS Agreement;
(i)
it has not been proved that
Section 211(b) is inconsistent with Article 16.1 of the TRIPS Agreement;
(j)
it has not been proved that
Section 211(b) is inconsistent with Article 42 of the TRIPS Agreement;
(k)
it has not been proved that
Section 211(b) is inconsistent with Article 2.1 of the TRIPS Agreement in
conjunction with Article 6bis of the
Paris Convention (1967);
(l)
Section 211(b) is not
inconsistent with Article 2.1 of the TRIPS Agreement in conjunction with
Article 8 of the Paris Convention (1967);
(m)
Section 211(b) is not
inconsistent with Article 3.1 of the TRIPS Agreement and Article 2.1 of the
TRIPS Agreement in conjunction with Article 2(1) of the Paris Convention
(1967); and
(n)
Section 211(b) is not
inconsistent with Article 4 of the TRIPS Agreement. [13]
11.
The Panel ruled that trade
names are not a category of intellectual property covered by the TRIPS Agreement. Consequently,
the Panel limited its review to an examination of Section 211 as it
relates to trademarks. [14] The Panel recommended that
the Dispute Settlement Body (the "DSB") request the United States to
bring its measures into conformity with its obligations under the TRIPS Agreement. [15]
12.
On 4 October 2001, the European
Communities notified the DSB of its intention to appeal certain issues of law
covered in the Panel Report and certain legal interpretations developed by the
Panel, pursuant to paragraph 4 of Article 16 of the Understanding on Rules and Procedures
Governing the Settlement of Disputes (the "DSU"), and filed
a Notice of Appeal pursuant to Rule 20 of the Working Procedures for Appellate Review (the "Working Procedures"). On 15 October 2001, the European
Communities filed its appellant's submission. [16] On 19 October 2001, the
United States filed an other appellant's submission. [17] On 26 October 2001, the
European Communities and the United States each filed an appellee's submission. [18]
13.
On 2 November 2001, pursuant to
Rule 28(1) of the Working Procedures,
the Division hearing the appeal requested that the participants submit
additional written memoranda on the interpretation by domestic courts of Article 6quinquies of the Paris Convention
(1967), or the interpretation by domestic courts of legislation incorporating
Article 6quinquies. Both participants filed the additional
written memoranda on 6 November 2001, and served these memoranda on each other. Pursuant to Rule 28(2) of the Working Procedures, the Division gave
the participants an opportunity to respond to these memoranda at the oral
hearing in this appeal.
14.
The oral hearing in this appeal
was held on 7, 8 and 9 November 2001.
The participants presented oral arguments and responded to questions put
to them by the Members of the Division.
15.
The measure at issue in this
dispute is Section 211 of the United States Omnibus Appropriations Act, 1999,
("Section 211") [19], which became law in the United States on
21 October 1998. Section 211 consists
of four subsections. In its request for
the establishment of a panel, the European Communities indicated that it was
challenging only subsections (a)(1), (a)(2) and (b). [20] At the oral hearing in this
appeal, the European Communities confirmed this by stating that the measure
"includes 211(a)(1), 211(a)(2), and 211(b)" and that "[t]he
other provisions are definitions and are auxiliary". [21] The United States agreed. [22]
16.
With this in mind, we confine
our rulings in this appeal to subsections (a)(1), (a)(2) and (b) of
Section 211. We address subsections (c)
and (d) only to the extent that the definitions they contain are relevant to our
examination of the consistency of subsections (a) and (b) with the provisions
of the TRIPS Agreement and of the Paris Convention (1967)
that have been invoked by the European Communities.
17.
Section 211 makes reference to
Section 515.527 of the Cuban Assets Control Regulations (the
"CACR"). [23] The CACR were enacted on 8
July 1963 pursuant to the Trading with the Enemy Act, a statute enacted by the
United States Congress on 6 October 1917. [24] After the entry into force
of Section 211, the CACR were amended by adding a new subparagraph (a)(2) to Section 515.527
of Title 31 CFR. [25] Both parties to this
dispute agree that neither the CACR nor the Trading with the Enemy Act is part
of the measure at issue in this appeal.
Thus, we refer to the CACR and to the Trading with the Enemy Act only to
the extent that they are relevant for the interpretation of Section 211
and have been addressed by the participants in their arguments in this dispute.
18.
This dispute focuses on the
protection of trademarks.[26] In the legal regimes of most WTO Members,
the ownership of a trademark is established exclusively through
registration. The Panel established
that this is not so under United States law.[27] Before the Panel, the United States
submitted that, under United States law, "'use' in connection with a
business or assets may create ownership rights in the trademark".[28] The Panel established, further, that, in the
United States, "the registration of a trademark confers a prima facie presumption of the
registrant's ownership of the registered trademark."[29] The European Communities agreed with the
submission of the United States that "if the person registering a
trademark in the United States is not the true owner of the trademark under
[United States] law, the registration may be cancelled." [30]
19.
Both the European Communities
and the United States agree that, in the United States, the principal
federal statute on trademark and trade name protection is the Trademark Act of
1946 (which is commonly referred to as the "Lanham Act"). [31] Both parties to this
dispute have also agreed that the Lanham Act also is not part of the measure at
issue in this appeal. Thus, we refer to
the Lanham Act only to the extent that it is relevant for the interpretation of
Section 211.
20.
On appeal, the United States
submits that the European Communities has not challenged the application of Section 211. [32] At the oral hearing in this
appeal, the European Communities confirmed that it has not challenged the
application of the statute, and clarified that, instead, it is challenging the
statute on its face. [33] The European Communities
confirmed as well that, in this dispute, the
European Communities is not challenging the WTO-consistency of the decisions in
Havana Club Holding, S.A. v. Galleon S.A.
(the "Havana Club Holding
decisions"). [34] Like the Panel, the only
applications of Section 211 we are aware of are the two United States court
decisions relating to Section 211(b) in 1999 and in 2000 in Havana Club Holding, S.A. v. Galleon
S.A. The request by the European
Communities for the establishment of a panel does not contain any reference to
the Havana Club Holding decisions. Thus, in this appeal, we examine the WTO-consistency of Section
211 on its face. The question of the
WTO-consistency of the Havana Club
Holding decisions is not before us.
However, as the European Communities has argued and as the
United States has agreed, the Havana
Club Holding decisions are relevant as evidence of how
Section 211(b), as the European Communities has put it, "operates in
practice". [35] We agree.
21.
Therefore, the measure at issue
in this dispute consists of subsections (a)(1), (a)(2) and (b) of
Section 211. With respect to this
measure, the following issues are raised in this appeal:
(a) whether the Panel
erred in finding that Section 211(a)(1) is not inconsistent with
Article 2.1 of the TRIPS
Agreement in conjunction with Article 6quinquies A(1) of the Paris Convention (1967);
(b) whether the Panel
erred in finding that Section 211(a)(1) is not inconsistent with Article 15.1
of the TRIPS Agreement;
(c) whether the Panel
erred in finding that the European Communities has not proved that Sections
211(a)(2) and (b) are inconsistent with Article 16.1 of the TRIPS Agreement;
(d) whether the Panel
erred in finding that:
(i) Section 211(a)(2)
is inconsistent with Article 42 of the TRIPS Agreement with respect to the protection of
trademarks; and
(ii) the
European Communities has not proved that Section 211(b) is inconsistent with
Article 42 of the TRIPS Agreement
with respect to the protection of trademarks;
(e) whether the Panel
erred in finding that Sections 211(a)(2) and (b) are not inconsistent with
Article 2.1 of the TRIPS Agreement
in conjunction with Article 2(1) of the Paris Convention (1967) and Article 3.1
of the TRIPS Agreement in
respect of the protection of trademarks;
(f) whether the Panel
erred in finding that Sections 211(a)(2) and (b) are not inconsistent with
Article 4 of the TRIPS Agreement
in respect of the protection of trademarks;
and
(g) whether the Panel
erred in finding that trade names are not covered by the TRIPS Agreement and, consequently:
(i) erred in not
finding that Sections 211(a)(2) and (b) are inconsistent with Article 2.1 of
the TRIPS Agreement in
conjunction with Article 2(1) of the Paris Convention (1967) and Article 3.1 of
the TRIPS Agreement in
respect of the protection of trade names;
(ii) erred in not
finding that Sections 211(a)(2) and (b) are inconsistent with Article 4 of the
TRIPS Agreement in
respect of the protection of trade names;
(iii) erred in not
finding that Sections 211(a)(2) and (b) are inconsistent with Article 42
of the TRIPS Agreement in
respect of the protection of trade names;
and
(iv)
erred in finding that Sections
211(a)(2) and (b) are not inconsistent with Article 2.1 of the TRIPS Agreement in conjunction
with Article 8 of the Paris Convention (1967).
22. For the reasons set out in this Report, the Appellate Body:
(a) upholds the Panel's
finding in paragraph 8.89 of the Panel Report that Section 211(a)(1) is
not inconsistent with Article 2.1 of the TRIPS Agreement in conjunction with Article 6quinquies A(1) of the Paris
Convention (1967);
(b) upholds the Panel's
finding in paragraph 8.70 of the Panel Report that Section 211(a)(1)
is not inconsistent with Article 15.1 of the TRIPS Agreement;
(c) upholds the Panel's
findings in paragraphs 8.112 and 8.159 of the Panel Report and finds that
Sections 211(a)(2) and (b) are not inconsistent with Article 16.1 of the TRIPS Agreement;
(d) with respect to
Article 42 of the TRIPS Agreement,
and in relation to trademarks:
(i) reverses the
Panel's finding in paragraph 8.102 of the Panel Report and finds that
Section 211(a)(2) is not inconsistent with this Article; and
(ii) upholds the Panel's
finding in paragraph 8.162 of the Panel Report and finds that
Section 211(b) is not inconsistent with this Article;
(e) with respect to
Article 2.1 of the TRIPS Agreement in conjunction with
Article 2(1) of the Paris Convention (1967) and Article 3.1 of the TRIPS Agreement, and in relation to
trademarks:
(i) regarding
successors-in-interest:
(a) reverses the Panel's
finding in paragraph 8.140 of the Panel Report and finds that
Section 211(a)(2) is inconsistent with these Articles;
(b) upholds the Panel's
finding in paragraph 8.173 of the Panel Report and finds that Section 211(b) is not inconsistent with these
Articles;
(ii) regarding original
owners, reverses the Panel's findings in paragraphs 8.140 and 8.173 of the
Panel Report and finds that Section 211(a)(2) and Section 211(b) are inconsistent
with these Articles;
(f) reverses the
Panel's findings in paragraphs 8.148 and 8.176 of the Panel Report regarding
original owners and finds that, in this respect, and in relation to trademarks,
Sections 211(a)(2) and (b) are inconsistent with Article 4 of the
TRIPS Agreement.
(g) reverses the
Panel's finding in paragraph 8.41 of the Panel Report that trade names are
not covered under the TRIPS
Agreement, and finds that WTO Members do have an obligation under the TRIPS Agreement to provide
protection to trade names, and accordingly:
(i) with respect to
Article 2.1 of the TRIPS Agreement in conjunction with
Article 2(1) of the Paris Convention (1967) and Article 3.1 of the TRIPS Agreement, and in relation to trade names:
(a) regarding
successors-in-interest, finds that Section 211(a)(2) is inconsistent
with these Articles;
(b) regarding
successors-in-interest, finds that Section
211(b) is not inconsistent with these Articles;
(c) regarding original
owners, finds that Section 211(a)(2) and Section 211(b) are inconsistent
with these Articles;
(ii) finds that, in
relation to trade names, Sections 211(a)(2) and (b) are inconsistent
with Article 4 of the TRIPS
Agreement;
(iii) finds that, in
relation to trade names, Sections 211(a)(2) and (b) are not inconsistent
with Article 42 of the TRIPS
Agreement; and
(iv) finds that Sections
211(a)(2) and (b) are not inconsistent with Article 2.1 of the TRIPS Agreement in conjunction
with Article 8 of the Paris Convention (1967).
23. The Appellate Body recommends
that the DSB request the United States to bring its measure, found in this
Report and in the Panel Report as modified by this Report to be inconsistent
with the TRIPS Agreement,
into conformity with its obligations under that Agreement.
24. We wish to emphasize that this ruling
is not a judgment on confiscation as that term is defined in Section 211. [36]
The validity of the expropriation of intellectual or any other property
rights without compensation by a WTO Member within its own territory is not
before us. Nor do we express any view,
nor are we required to express any view in this appeal, on whether a Member of
the WTO should, or should not, recognize in its own territory trademarks, trade
names, or any other rights relating to any intellectual or other property
rights that may have been expropriated or otherwise confiscated in other
territories.
25. However, where a WTO Member chooses
not to recognize intellectual property rights in its own territory relating to
a confiscation of rights in another territory, a measure resulting from and
implementing that choice must, if it affects other WTO Members, comply with the
TRIPS Agreement, by which
all WTO Members are voluntarily bound.
In such a measure, that WTO Member must accord "no less favourable
treatment" to the nationals of all other WTO Members than it accords to
its own nationals, and must grant to the nationals of all other WTO Members
"any advantage, favour, privilege or immunity" granted to any other
WTO Member. In such a measure, a
WTO Member may not discriminate in a way that does not respect the
obligations of national treatment and most-favoured-nation treatment that are
fundamental to the TRIPS Agreement.
[1]WT/DS176/R, 6 August 2001.
[2]Section 211 of the Department of Commerce Appropriations Act, 1999, as included in the Omnibus Consolidated and Emergency Supplemental Appropriations Act 1999, Public Law 105-277, 112 Stat. 2681, which became law in the United States on 21 October 1998, referred to in this dispute as "Section 211".
[3]Panel Report, paras. 1.1-2.13.
[4]Before the Panel, the United States submitted that "trade names" and "commercial names" are synonymous under its principal federal statute on trademark protection. As in the Panel Report, a reference in this Report to trade names should be read to include commercial names. See Panel Report, para. 8.21.
[5]50 U.S.C. App. 1 ff.
[6]See 31 CFR 515.305, which defines the term "designated national" as follows:
§515.305 Designated national.
For the purposes of this part, the term designated national shall mean Cuba and any national thereof including
any person who is a specially designated national.
See also, 31 CFR 515.306, which defines the term "specially designated national" as follows:
(a) The term specially designated national shall mean:
(1) Any person who is determined by the Secretary of Treasury to be a specially designated national,
(2) Any person who on or since the "effective date" has acted for or on behalf of the Government or authorities exercising control over a designated foreign country, or
(3) Any partnership, association, corporation or other organization which on or since the "effective date" has been owned or controlled directly or indirectly by the Government or authorities exercising control over a designated foreign country or by any specially designated national.
[7]See 31 CFR 515.336, which defines the term
"confiscated" as follows:
§515.336 Confiscated.
As used in §515.208, the term confiscated refers to:
(a) The nationalization, expropriation, or
other seizure by the Cuban Government of ownership or control of property, on
or after January 1, 1959:
(1) Without the property having been
returned or adequate and effective compensation provided; or
(2) Without the claim to the property
having been settled pursuant to an international claims settlement agreement or
other mutually accepted settlement procedure; and
(b) The repudiation by the Cuban
Government of, the default by the Cuban Government on, or the failure of the
Cuban Government to pay, on or after January 1, 1959:
(1) A debt of any enterprise which has
been nationalized, expropriated, or otherwise taken by the Cuban Government;
(2) A debt which is a charge on property
nationalized, expropriated, or otherwise taken by the Cuban Government; or
(3) A debt which was incurred by the Cuban Government in satisfaction or settlement of a confiscated property claim.
[8]See 31 CFR 515.201, which provides:
§515.201 Transactions involving designated foreign countries or their nationals; effective date.
(a) All of the following transactions are prohibited, except as specifically authorized by the Secretary of the Treasury (or any person, agency, or instrumentality designated by him) by means of regulations, rulings, instructions, licenses, or otherwise, if either such transactions are by, or on behalf of, or pursuant to the direction of a foreign country designated under this part, or any national thereof, or such transactions involve property in which a foreign country designated under this part, or any national thereof, has at any time on or since the effective date of this section had any interest of any nature whatsoever, direct or indirect:
…
(b) All of the following transactions are prohibited, except as specifically authorized by the Secretary of the Treasury (or any person, agency, or instrumentality designated by him) by means of regulations, rulings, instructions, licenses, or otherwise, if such transactions involve property in which any foreign country designated under this part, or any national thereof, has at any time on or since the effective date of this section had any interest of any nature whatsoever, direct or indirect:
…
(2) All transfers outside the United States with regard to any property or property interest subject to the jurisdiction of the United States.
[9]See 31 CFR 515.317, which provides:
A general license is any license or authorization the terms of which are set forth in this part.
[10]31 CFR 515.318.
[11]15 U.S.C. §1051 ff. The Lanham Act also defines the scope of a trademark, the process by which a federal registration for a trademark can be obtained from the United States Patent and Trademark Office (the "USPTO"), and prescribes penalties for trademark infringement. Under the law of the United States, trade names do not need to be registered.
[12]Section 44 of the Lanham Act (15 U.S.C. §1126) states, in relevant part:
(b) Any person whose country of origin is
a party to any convention or treaty relating to trademarks, trade or commercial
names, or the repression of unfair competition, to which the United States is
also a party, or extends reciprocal rights to nationals of the United States by
law, 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 chapter.
…
(e) A mark duly registered in the country
of origin of the foreign applicant may be registered on the principal register
if eligible, otherwise on the supplemental register in this chapter
provided. Such applicant shall submit,
within such time period as may be prescribed by the Director, a certification
or a certified copy of the registration in the country of origin of the
applicant. The application must state
the applicant's bona fide intention to use the mark in commerce, but use in
commerce shall not be required prior to registration.
[13]Panel Report, para. 9.1.
[14]Ibid., para. 8.41.
[15]Ibid., para. 9.3.
[16]Pursuant to Rule 21 of the Working Procedures.
[17]Pursuant to Rule 23(1) of the Working Procedures.
[18]Pursuant to Rules 22 and 23(3) of the Working Procedures.
[19]See supra, footnote 2.
[20]WT/DS176/2.
[21]European Communities' responses to questioning at the oral hearing.
[22]United States' responses to questioning at the oral hearing.
[23]31 CFR §§515.101 – 515.901 (1999).
[24]See supra, footnote 5.
[25]After this, paragraph (a) of Section 515.527 became subparagraph (a)(1). The amendment entered into force on 10 May 1999. The text of Sections 515.527(a)(1) and (a)(2) are set out in paragraphs 6 and 7 of this Report.
[26]Before the Panel, the European Communities also made claims in relation to trade names, and, on appeal, the European Communities challenges the Panel's finding that trade names are not covered in the TRIPS Agreement. In Sections V-X of this Report, we address the European Communities' appeal as it relates to trademarks. We address the issue of trade names, and the Panel's findings with respect to this issue, in Section XI below.
[27]See Panel Report, paras. 8.62-8.64, where the Panel stated that:
[W]e are obliged to examine first how the
United States determines trademark ownership under its laws.
…
According to the United States, trademark
ownership is generally established through use and thus the owner of a
trademark is generally the party who controls the nature and quality of the
goods sold or services rendered under the trademark.
We note that trademark ownership is
generally determined by use under US law.
[28]Ibid., para. 4.215.
[29]Panel Report, para. 8.99.
[30]Panel Report, para. 4.240. United States' other appellant's submission, para. 24. European Communities' responses to questioning at the oral hearing. See also McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition (West Publishing Group, 2000), Vol. I, p. 19-13.
[31]See supra, footnote 11.
[32]United States' other appellant's submission, para. 19.
[33]European Communities' responses to questioning at the oral hearing.
[34]Havana Club Holding, S.A. v. Galleon S.A., 203 F.3d 116 (2d Cir. 2000); Havana Club Holding, S.A. v. Galleon S.A., 62 F.Supp.2d 1085 (S.D.N.Y. 1999). These two decisions followed three decisions issued earlier in the same dispute, before Section 211was enacted: Havana Club Holding, S.A. v. Galleon, S.A., 961 F.Supp. 498 (S.D.N.Y. 1997); Havana Club Holding, S.A. v. Galleon S.A., 974 F.Supp. 302 (S.D.N.Y. 1997); Havana Club Holding, S.A. v. Galleon S.A., 1998 WL 150983 (S.D.N.Y.). Because they were issued before Section 211 was enacted, these three earlier decisions are not relevant.
[35]European Communities' appellant's submission, para. 145.
[36]See supra, footnote 7.