Trademark Wars

Perhaps you haven't heard about New Delhi's Bukhara Restaurant. It's considered by many food critics to be one of the 50 best restaurants in the world, as well as the best restaurant in Asia. Since it opened its doors in 1977, it has garnered enthusiastic fans worldwide, including luminaries such as former President Bill Clinton and Russian President Vladimir Putin.

Then the Bukhara Grill opened in Manhattan in 1999. Customers who walked in the door saw the New Delhi restaurant's familiar logos, decor, staff uniforms, wood-slab menus and red-checkered customer bibs.

Starting in 1936, New York State courts and the PTO have repeatedly applied the doctrine to protect well-known foreign marks. For instance, a New York trial court ruled in 1959 that the doctrine protected the famous Paris restaurant Maxim's against a Manhattan restaurant that was copying Maxim's name, decor and distinctive script style. The court issued an injunction against the New York City restaurant.

In 2004 the U.S. 9th Circuit Court of Appeals held that the doctrine was part of federal trademark law.

If this happens, the major losers would be U.S. companies, which own a huge percentage of the world's famous marks and which have often used the doctrine to protect their interests in foreign lands.

"For a very long time ?? 1/2 the famous marks doctrine has allowed U.S. companies to get rights that have been usurped by others," Elings says.


Steven Seidenberg

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