The Use Doctrine in Trademark Law: Issues from Trade and Transborder Reputation

Abstract

Mindful of the current trend within the United States to revive the focus on the use of trademark to determine a mark’s ability to act as a source indicator, in this paper I highlight how focusing on use can create disparate results by examining the role of use when dealing with well-known marks. Hence, this paper implicates the prescriptions from the harmonized trade regime, especially trademark law. In doing so, the paper outlines larger public policy concerns that will ensue especially considering the role of the use doctrine in the context of international harmonization of protection of well-known trademarks. In order to do so, this paper examines protection of foreign marks in two jurisdictions, India and the United States, to identify global public policy concerns which has national implications. The study debunks the myth that harmonization would result in trading partners extending reciprocal treatment. That is, inapposite to the touted position, this paper uses the well-known marks example to outline disparate outcomes that ensue when focusing on use as source indicator. In highlighting how harmonization has not resulted in uniformity or predictability internationally to identify and recognize well-known trademarks, this paper discusses how the lack of predictability under a harmonized system has raised strong public policy concerns as well as economic outcomes that may be detrimental to some markets but beneficial to others. Overall, this paper asserts that a coherent approach will have to necessarily involve some level of flexibilities in the trade regime to determine constituents of fame for a well-known trademark in each jurisdiction.