Steele v. Bulova Watch Co. One or the Other: Extraterritorial Application of the Lanham Act or Paris Convention Famous Mark

Abstract

This article includes two unrelated subjects that in one litigation merged, one of them is the extraterritorial application of a statute, and the second is the Paris Convention principle known as well known mark. In this litigation both of them joined and created an unprecedented protection in Mexico of foreign marks. This article analyzes the judgment in which the U.S. Supreme Court held that it is fine in certain cases, to apply the U.S. Lanham Act to acts occurred abroad. On the other hand, it analyzes a judgment in which the Mexican Supreme Court held protection for a foreign non registered trademark against registration obtained in bad faith by a third party that happened to be the defendant in the U.S. litigation. One litigation was about infringement, the other was upholding an administrative decree that nullified defendant’s trademark in Mexico. This article is about the same litigation in both legal systems, the two different approaches taken, their consequences and later developments. From the extraterritorial to the Paris Convention well known mark.

Note: Downloadable document is in Spanish.

Keywords: Paris Convention, Well Known Mark, Famous Mark, Comparative Law, Intellectual Property, Territoriality Trademark Law, Bulova, Judgment, Supreme Court