The Paris Convention for the Protection of Industrial Property outlines important international trademark principles for its signatory nations, including the United States. Specifically, article 6bis of the Paris Convention creates the well-known marks doctrine, a provision that allows foreign owners of well-known trademarks to bring infringement actions against citizens of other member nations using the same or similar trade names. Such foreign trademark holders can assert these rights regardless of whether their mark is directly used or registered in the native country of the alleged infringer. Although the Paris Convention provides a list of trademark rights within its articles, the convention itself is not self-executing and thus requires enacting legislation to give full legal effect to its principles. With the passage of the Lanham Act in 1946, Congress effectively codified federal trademark law and provided the sole statutory means by which trademark owners can assert their substantive rights in federal courts. The Lanham Act does not explicitly reference article 6bis, but it does strive to give full effect to the provisions of international conventions in order to afford foreign nationals protection from unfair competition. This Comment argues that a proper statutory construction of the Lanham Act requires that courts treat the well-known marks doctrine as an incorporated, codified piece of federal trademark law. The plain language of the Lanham Act, its legislative history, prior judicial considerations of relevant provisions of the Act, and the Charming Betsy canon support the conclusion that the Lanham Act integrates article 6bis and thus provides substantive rights for foreign well-known trademark owners.
Notes and Comments,
The Power of the Well-Known Trademark: Courts Should Consider Article 6BIS of the Paris Convention an Integrated Part of Section 44 of the Lanham Act,
81 Wash. L. Rev.
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