[OT] trademarks (was: Re: Bundling)

Mark Davis ☕ mark at macchiato.com
Fri Dec 11 23:16:54 CET 2009

I talked to her about this. We're leaving on an extended vacation tomorrow,
so she doesn't have a lot of time to deal with this. I'm recounting what I
heard, so she would probably not have phrased it like this:

You are right insofar that the key determination for whether trademarks
infringe is whether they are "likely to cause confusion". This is determined
under national law, not by WIPO. A strong factor is whether they sound the
same, but there are other factors (look the same, similarity of goods,
channels of trade, etc.). The ultimate decision is made by courts and
national trademark offices, so there are not absolute lines. But in
German-speaking countries, two phrases differing only by ß vs ss are
sufficiently similar as to cause confusion, and one would infringe on the
other if the goods provided under the marks were the same.

Domain names are orthogonal. Registering a domain name doesn't necessarily
establish any trademark rights.  It doesn’t necessarily infringe trademark
rights. A domain name may infringe on someone else's similar trademark.
There is no legal requirement that all characters used in trademarks be
represented in domain names.  And the fact that a domain name can infringe a
similar mark doesn’t create such a requirement, even as a practical matter.
 Lots of symbols used in trademarks are not used in the same trademark
owner’s domain name. (As as I said before many common ones cannot be even in
IDNA2003, and IDNA2008 reduces them further.)


On Fri, Dec 11, 2009 at 10:13, John C Klensin <klensin at jck.com> wrote:

> --On Friday, December 11, 2009 08:46 -0800 Mark Davis ☕
> <mark at macchiato.com> wrote:
> > Well, my authority for this information *is* an expert in
> > trademark law, a past president of the International Trademark
> > Association (INTA). Full disclosure: she's also my wife, so I
> > pretty much have to go by what she says ;-)
> Mark,
> Mostly out of curiosity, would you mind asking your wife if that
> equivalence is enshrined in a WIPO rule or convention or (at the
> other extreme) if it is mostly local to countries that don't use
> Sharp-S very much?  Could you also confirm my impression that,
> from a trademark perspective, two strings that sound alike can
> be considered infringing even if they are spelled/presented
> rather differently, e.g., that акуву or δισνη (I hope
> I've got those transliterations close enough to make the point)
> would be considered problematic in certain quarters even though
> there are even vaguely visually confusable with the
> sound-similar Latin character strings?
>    john
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