INTERESTING CASE OF GEORGE WYTHE, THE FIRST LAW PROFESSOR OF THE USA

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WIPO: Email communication and our thoughts

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Recently, I had reached out to WIPO with regard to our international trademark filings to understand the trademark mediation process better. This is the email response that we received.

What do we think about the response from WIPO?

Is IP protection including trademarks totally territorial?

As per an interesting case, Yahoo, Inc. vs Akash Arora, the Indian court decided that domain name registration and trademarks are connected. This case also showcased that IP is beyond borders.
  • https://www.lawyersclubindia.com/judiciary/landmark-passing-off-case-on-trademarks-yahoo-inc-vs-akash-arora-4101.asp
  • https://www.legalserviceindia.com/legal/article-5645-yahoo-inc-v-s-akash-arora.html
  • https://www.bananaip.com/ip-news-center/yahoo-inc-akash-arora/
At the same time, it is also important to understand that these kinds of cases also present a unique situation where one party might have more financial prowess than the other one, which gives them the option to protect themselves at every stage, whereas the one without the financial prowess might not have the capability to understand the nuances of IP while conceptualizing the offering or afterwards. This statement is not being made to support one party over another or justify anyone's action. For that matter, we have no connection to the defendant in the above-mentioned case, which appears to have happened way back in 1999. The point being that we need to consider this aspect in genuine situations.

What is the primary objective of Intellectual Property protection?
  • The primary objective of intellectual property law is to protect genuine and first creator and/or inventor for their original invention or creative work. If that were the case, we need to really ask the question whether "first to file" should even exist as the whole idea of IP revolves a lot around existence of prior art. 
  • Please also note that there is more to it when it comes to IP as there are lots of nuances to it, which is why it is important to seek reliable legal counsel for this purpose. 
  • While looking into this topic, we also need to understand that financial prowess could put certain sections of population at a disadvantage to protect their creativity and inventions, while those with resources and power could prosper further.
Is the WIPO mediation process strictly for domain names?

Contrary to what was stated by WIPO representative in their emails, it appears to be more than that. Just the fact that there is an existence of prior cases as shared above clearly shows that IP is beyond borders, and need not be territorial. 

If the mediation process is strictly for domain name, may I know what is the role of these mediation centers?There is also a clear mention of common law on pg 11 in WIPO manual.

How about personal jurisdiction?

Here is an interesting case on this topic.

More soon.

Re: [Ticket#6022018814] WIPO Contact Form: General information about trademarks (01.03.2022 06:23:17) 

Dear Mr. Kidambi,
 
Thank you for this clarification.
 
I understand from your messages that you are concerned about the examination procedures of two trademark applications filed at the national level, and that you ask for assistance from WIPO/ WIPO Arbitration and Mediation Center. For your understanding, I would like to give you some more information about the role of WIPO. WIPO is an international intergovernmental organization, which mainly cooperates with its Member States and does not provide advice to private parties - except on questions related to WIPO's filing and registration systems. This is the Madrid System for the International Registration of Marks, the Hague Agreement for the International Registration of Industrial Designs, the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, and the Patent Cooperation Treaty.
 
However, the following considerations might be helpful: Trademarks are territorial rights. The conditions for registering marks and the requirements for registrability (including grounds for refusal), as well as the scope of the rights conferred and any possible action against infringement, are therefore determined by the national legislation and practice of each country. The application of these laws and practices is of the sole responsibility of the national IP Office concerned. Although Article 6quinquies(B) of the Paris Convention establishes grounds for refusal that are commonly accepted by most jurisdictions, such grounds, related examination procedures and possible options offered to applicants are determined by national trademark laws and practices.

Therefore, I would suggest that you contact an IP lawyer in the country concerned to know which options you might have.
 
Please also note that the WIPO Arbitration and Mediation Center exclusively deals with the resolution of international commercial disputes between private parties, in particular, with regard to domain names. The Arbitration and Mediation Center also offers ADR options for trademark cases, however, those cases concern disputes between private parties.
 
I hope this clarifies the issue. Please get back to me in case you have further questions.

Best regards,
Nicole Drews

Madrid Legal Division | Madrid Registry | Brands and Designs Sector | WIPO | 34, chemin des Colombettes, 1211 Geneva 20, Switzerland | madridlegal@wipo.int

Division juridique du système de Madrid | Service d'enregistrement de Madrid | Secteur des marques et des dessins et modèles | OMPI | 34, chemin des Colombettes, 1211 Genève 20, Suisse | madridlegal@wipo.int

División Jurídica del Sistema de Madrid | Registro de Madrid | Sector de Marcas y Diseños | OMPI | 34, chemin des Colombettes, 1211 Ginebra 20, Suiza | madridlegal@wipo.int
 
Use Madrid Monitor to track the status of your mark. Need help? Get in touch through the Contact Madrid service.
Suivez le statut de votre marque avec Madrid Monitor. Besoin d'aide ? Le service Contact Madrid est à votre disposition.
Utilice Madrid Monitor para comprobar la situación de su marca. ¿Necesita ayuda? El servicio Contact Madrid está a su disposición
   

22/03/2022 02:50 - SRIKANTH KIDAMBI VAL-U-PRO CONSULTING GROUP wrote:
Team:
 
  I would like to be certain that you have received the below email. Please confirm.
 
Sincerely,
Srikanth.
 
 
On Mar 19, 2022 7:25 AM, "SRIKANTH KIDAMBI, VAL-U-PRO CONSULTING GROUP" <#######> wrote:
Ms ####:
 
  Yes, this pertains to trademark applications filed at two national IP offices. Though it does not directly pertain to International registration, based on WIPO guidelines on common law, we believe that the case would be within the WIPO jurisdiction as well.
 
Sincerely,
Srikanth Kidambi PhD, MBA
 
On Mar 17, 2022 1:33 PM, Madrid Legal <madridlegal@wipo.int> wrote:

Dear Mr. Kidambi,
Thank you for this clarification. Your messages have been forwarded to the Madrid Legal Division and I would like to ask whether this case is about a trademark application that has been filed before a national IP Office? Further, does it concern an international registration?
Best regards,
Nicole Drews


Madrid Legal Division | Madrid Registry | Brands and Designs Sector | WIPO | 34, chemin des Colombettes, 1211 Geneva 20, Switzerland | madridlegal@wipo.int

Division juridique du système de Madrid | Service d'enregistrement de Madrid | Secteur des marques et des dessins et modèles | OMPI | 34, chemin des Colombettes, 1211 Genève 20, Suisse | madridlegal@wipo.int

División Jurídica del Sistema de Madrid | Registro de Madrid | Sector de Marcas y Diseños | OMPI | 34, chemin des Colombettes, 1211 Ginebra 20, Suiza | madridlegal@wipo.int
 
Use Madrid Monitor to track the status of your mark. Need help? Get in touch through the Contact Madrid service.
Suivez le statut de votre marque avec Madrid Monitor. Besoin d'aide ? Le service Contact Madrid est à votre disposition.
Utilice Madrid Monitor para comprobar la situación de su marca. ¿Necesita ayuda? El servicio Contact Madrid está a su disposición
   

11/03/2022 05:10 - SRIKANTH KIDAMBI AMAZEBABA & ITS AFFILIATES wrote:
Team:
 
   I had sent the below email and would like to get your response. Please let me know how we could take the next step in this regard. Please also see the attached screenshot, which further supports the role of WIPO in the ADR process.
 
Sincerely,
Srikanth S Kidambi PhD, MBA, MS(EE), MS(BME), MSc(Chem), Dipl. CA and more
Founder & Partner of an Expanding Ecosystem
 
On Mar 4, 2022 5:34 PM, "VAL-U-PRO CONSULTING GROUP, LLC - SRIKANTH KIDAMBI" <########> wrote:
Hello #####:
 
Thanks for furthering this communication. I remember reading this section on ADR process available through WIPO that led me to reach out to you. Based on reading this article, it appeared to be more than domain names mediation and arbitration.
 
 
I would like to know the following:
 
1. We have a trademark application that we believe need to get fair consideration. We can provide additional information on this front, if WIPO could assist on this front.
 
2. Would WIPO be able to look into concerns raised on whether we were given a fair and due process with our trademark application?
 
3. If that is possible, and if it were found to be that we were not given due consideration, can we get fair monetary compensation from involved parties?
 
Your answers in this regard would be appreciated.
 
Sincerely,
Srikanth S Kidambi PhD, MBA, MS(EE), MS(BME), MSc(Chem), Dipl. CA and more
Founder & Partner of an Expanding Ecosystem
 
On Mar 4, 2022 2:08 PM, Madrid Infoline <madrid.infoline@wipo.int> wrote:
Dear Madam/Sir,

We refer to your communication below/attached.

1. Would you be so kind to be more specific regarding your claims?

2. The Madrid system for the international registration of marks has no mediation nor an arbitration system available for marks. Do not confuse with the Domain Names Mediation and Arbitration options.
 

Best regards,
#######

Madrid Infoline Unit | Madrid Information and Promotion Division | Madrid Registry | Brands and Designs Sector | WIPO |
34, chemin des Colombettes, 1211 Geneva 20, Switzerland | T +41 22 338 86 86 | www.wipo.int/contact/en/madrid

The Madrid Infoline Unit is pleased to answer your inquiries from Monday to Friday, 9 am to 6 pm (CET), at T +41 22 338 86 86.

Please consider the environment before printing this e-mail

03/04/2022 03:30 - VAL-U-PRO CONSULTING GROUP LLC - SRIKANTH KIDAMBI wrote:
Good Morning,
 
Thanks for your response.
 
Would it be possible to utilize the mediation and/or arbitration resources on this front to get further clarification on whether our claims would be in line with the provisions of Paris convention, and/or not prohibited by the Paris convention?
 
Sincerely,
 
Srikanth S Kidambi PhD, MBA, MS(EE), MS(BME), MSc(Chem), Dipl. CA and more
Founder & Partner of an Expanding Ecosystem
 
On Mar 3, 2022 5:30 PM, Madrid Infoline <madrid.infoline@wipo.int> wrote:
Dear Madam/Sir,

We refer to your communication below.

WIPO does not offer this type of service.
Each designated Contracting Party has the right to refuse the protection of the international registration in its territory.  Such refusal may be based on any grounds that are supported by a provision of the Paris Convention, or that are not prohibited by a provision of that Convention, and any such refusal will generally be subject to review or appeal, depending upon the laws and practice of the Contracting Party concerned.
 


Best regards,
######

Madrid Infoline Unit | Madrid Information and Promotion Division | Madrid Registry | Brands and Designs Sector | WIPO |
34, chemin des Colombettes, 1211 Geneva 20, Switzerland | T +41 22 338 86 86 | www.wipo.int/contact/en/madrid

The Madrid Infoline Unit is pleased to answer your inquiries from Monday to Friday, 9 am to 6 pm (CET), at T +41 22 338 86 86.

Please consider the environment before printing this e-mail

01/03/2022 06:30 - Dr Srikanth Kidambi wrote:

Topic: Trademarks
Sub-topic: General information about trademarks
Question: Can WIPO's trademark counsel team assist us in looking into the validity of our claims to determine whether our mark should be duly considered for approval for marks filed at a country level? Your response in this regard would be greatly appreciated.

First name: Dr Srikanth
Last name: Kidambi
Company/Organization: VAL-U-PRO CONSULTING GROUP & AMAZEBABA & ITS AFFILIATES PRIVATE LTD
Phone number: #######
E-mail address: #######

ID: 256839
Time Stamp: 01.03.2022 06:23:17
Recipient: contact.center@wipo.int