International Law Practicum a Publication of the International Law and Practice Section of the New York State Bar Association
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NYSBA SPRING 2003 | VOL. 16 | NO. 1 International Law Practicum A publication of the International Law and Practice Section of the New York State Bar Association Practicing the Law of the World from New York ARTICLES: International Trademark Protection in the United States and the European Community............................................................................. 3 L. Donald Prutzman International Title Insurance................................................................................... 11 John E. Blyth Products Liability Prevention: What Every International Business Should Know About Selling Products in the United States.............................. 43 John F. Zulack and Jennifer K. King Jurisdiction and Choice of Law in Cyberspace in Europe..................................... 48 Marco Berliri Ten Important Points to Remember About International Estate Planning......... 53 Michael W. Galligan Doing Business in China After Its Accession to the World Trade Organization ........................................................................ 63 George A. Ribeiro Liability Online: Choice of Law and Jurisdiction on the Internet, or Who’s in Charge Here? .................................................................................... 66 Andre R. Jaglom Harmonization of Rules of Origin and Developments in Antidumping ............. 74 Jon R. Johnson Section Executive Committee—Officers, Section Committee Chairs and Co-Chairs and International Division Chapter Chairs and Co-Chairs................................. 83 PRACTICUM: FORM AND POLICY The International Law Practicum is a semi-annual publication of the International Law and Practice Section of the New York State Bar Association. The Practicum welcomes the submission of articles prepared by practicing attorneys. The length of an article, as a general rule, should not exceed 3,500 words, footnotes included. Shorter pieces, notes, reports on current or regional developments, and bibliographies are also welcomed. All manuscripts must be sent in laser printed triplicate accompanied by a 3 1/2" disk formated in Microsoft Word or WordPerfect to: The Practicum, c/o Daniel J. McMahon, Esq., New York State Bar Association, One Elk Street, Albany, N.Y. 12207-1096. Both text and endnotes must be double-spaced. Endnotes must appear at the end of the manuscript and should conform to A Uniform System of Citation (the Harvard Blue- book). Authors are responsible for the correctness of all citations and quotations. Manuscripts that have been accepted or published elsewhere will not be considered. The Practicum is primarily interested in practical issues facing lawyers engaged in international practice in New York. Topics such as international trade, licensing, direct investment, finance, tax- ation, and litigation and dispute resolution are preferred. Public international topics will be considered to the extent that they involve private international transactions or are of general interest to our readership. Manuscripts are submitted at the sender’s risk, and the New York State Bar Association, International Law and Prac- tice Section, assumes no responsibility for the return of material. Material accepted for publication becomes the property of the New York State Bar Association, International Law and Practice Section. No compensation is paid for any manu- script. The Practicum reserves the right (for space, budgetary, or other reasons) to move an accepted manuscript from an earlier issue to a later issue. Articles, reports and other materials reflect the views of the authors or committees that pre- pared them and do not necessarily represent the position of the New York State Bar Association, International Law and Practice Section, or the Editorial Board of the Practicum. Deadlines Manuscripts intended for publication in the Spring and Autumn issues must be received by the Editor-in-Chief by the preceding December 1 and June 1, respectively. Reprints Each author will receive three complimentary copies of the Practicum issue in which the author’s material is published. Additional copies may be ordered at cost before an issue goes to press by communicating with Daniel J. McMahon, Esq., at the New York State Bar Association, One Elk Street, Albany, N.Y. 12207-1096 (telephone (518) 487-5582). Back Issues and Advertising Requests for back issues, advertising and subscription information and general correspondence should be sent to the Newsletter Dept., New York State Bar Association, One Elk Street, Albany, N.Y. 12207-1096. Back issues (2000 to present) of the International Law Practicum are available online to Section members on the New York State Bar Association’s Web site at www.nysba.org/ilp. A searchable index is also available. 2 NYSBA International Law Practicum | Spring 2003 | Vol. 16 | No. 1 International Trademark Protection in the United States and the European Community By L. Donald Prutzman I. Introduction To understand how to plan for international trade- mark protection most efficiently and cost-effectively, it Despite rapidly increasing globalization in most is important to have a basic understanding of the aspects of trade and commerce today, the international framework of international agreements that regulate the protection of trademarks remains primarily a local process of trademark protection throughout most of the country-by-country process. There are a few excep- world. Over the last one hundred years, there has been tions—most notably the CTM trademark registration a continuing, if somewhat punctuated, effort to estab- that covers the entire European Community. United lish international standards for trademark protection. States businesses that want to protect their trademarks We do not yet, however, have anything approaching a in other countries have historically had to file individu- centralized or truly international method of trademark ally in each country where protection is desired. In con- protection. Numerous individual or country group reg- trast, most European countries are signatories to at least istrations are still required. This is similar to patent pro- one of a pair of multilateral treaties that permit multi- tection, but in marked contrast to copyright protection, country trademark applications. The United States has which is secured throughout most of the world, includ- recently ratified one of those treaties, which will give ing the United States and European countries, merely U.S. trademark owners new options for international by fixing the work in a tangible medium of expression. protection of their marks. Hopefully, there will be increasing recognition that Under current law, international protection of modern commerce occurs in a “global village” and trademarks can quickly become very expensive for a would be greatly facilitated by truly international trade- United States business. Each registration in a foreign mark protection. But that is not the world we live in country costs at least $1,500 to $1,800, including the for- today. eign filing fee, attorney’s fees, or fees of a trademark agent, in the country involved, and usually fees of a II. Overview of International Agreements for United States law firm (or the cost of resources of an in- the Protection of Trademarks house legal department) to coordinate and supervise A. The Paris Convention for the Protection of the international protection program. European busi- Industrial Property nesses fare somewhat better because of the availability of international applications. However, these still The first broad-based international agreement con- involve substantial filing fees, and are in effect merely a cerning recognition of the trademark rights of foreign- method of applying for registration in multiple coun- ers in signatory countries was the Paris Convention of tries with one document. Thus, businesses on both sides 1883. It has been revisited and reconsidered six times of the Atlantic need to think through carefully and plan since then, most recently at Stockholm in 1967, and exactly what international protection they need and can amended most recently in 1979. One hundred sixty-four afford. countries, including virtually all those of commercial significance, are contracting states under the Paris Con- An American or a European business that plans to vention, or members of the “Paris Union.” sell goods or provide services in other countries should take steps to protect its trademarks in each of those The basic tenets of the Paris Convention have con- countries in advance of shipment of goods or provision tinued to this day as the fundamental principles of all of services. Businesses also need to understand that, as international trademark recognition and protection. their brands become popular in their home countries, They are as follows. even before they are ready to expand internationally, 1. National Treatment enterprising individuals in other countries will seek to get whatever rights they can in emerging brands in The principle of “national treatment” is basically hopes of being able to capitalize when the brands reach that each member country will afford the same intellec- those countries. Thus, ideally, businesses should begin tual property rights to foreigners that it affords to its to obtain international protection as early as possible in citizens. Article 2(1) of the Convention provides that: the countries of greatest interest. Which countries these Nationals of any country of the Union are will, of course, depend on the nature of the goods or shall,