The Pan-American Trademark Convention of 1929: A Bold Vision of Extraterritoriality Meets Current Realities

Abstract

This chapter argues that the 1929 General Inter-American Convention for Trade Mark and Commercial Protection ("Pan-American Convention") should be remembered, and will explain why it has been forgotten. The chapter recounts the history of the convention and shows how that history fits into the development of a practice in the U.S. of requiring implementing legislation in order for treaty provisions to become directly operative. Foreign caselaw demonstrates that the convention has not been forgotten in member states (Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay and Peru) and therefore has played a very different role abroad. Finally, the chapter reveals how the convention makes at least two important contributions to international trademark law. First, it provides a novel approach to the protection of well-known marks by limiting their availability in cases where the mark was known to have been previously used in the region. Second, the convention goes well beyond the Paris Convention to provide a detailed set of protections against unfair competition. Given these substantive provisions, the fact that the convention is still in force in the U.S., and that is self-executing, it is a wonder that there have been so few U.S. cases to date that have invoked this convention.

Keywords: trademark law, intellectual property law, Pan-Americanism, international law, comparative law, territoriality, Latin America, legal history, Lanham Act, well-known marks, geographical indications, self-executing, unfair competition