Protection to Foreign Trademarks

In the case of ITC Ltd. v. Punchgini, Inc, it was claimed that the trademark of Bukhara restaurant in New Delhi was being infringed by a restaurant name Bukhara Grill which had been opened in New York. [1] Sheppard Mullin says, "The New York State Court of Appeals concluded that while the "famous marks doctrine" itself is not recognized by New York law, New York law does provide protection to the owner of a famous mark by virtue of the owner's prior use of the mark in a foreign country under a theory of unfair competition through misappropriation." [2]

However, Thomas Zuber points out that 'according to the Second Circuit’s recent ruling in ITC Ltd. v. Punchgini, Inc., No. 05-0933-cv, 2007 WL 914742 (2d Cir. March 28, 2007), there is no federal “famous marks” exception to the basic territoriality rule that the United States does not enforce trademark rights that exist only under foreign law'.
(The Ninth Circuit's decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004) had earlier recognized the famous foreign trademark exception to territoriality).

Links:
[1] www.nycourts.gov/courts/appeals/decisions/dec07/165opn07.pdf
[2] www.intellectualpropertylawblog.com/archives/trademarks-and-trade-dress-court-finds-famous-foreign-trademarks-protectible.html
[3]www.ca2.uscourts.gov:8080/isysnative/RDpcT3BpbnNcT1BOXDA1LTA5MzMtY3Zfb3BuLnBkZg==/05-0933-cv_opn.pdf ; www.aipla.org/Content/ContentGroups/Issues_and_Advocacy/Amicus_Briefs1/20079/ITCbrief_Final_Revised2.pdf
[4] www.lawupdates.com/commentary/itc_ltd_v_punchgini_inc
[5] www.law.cornell.edu/nyctap/I07_0164.htm

MySpace.com v. MySpace.co.uk

MySpace.co.uk was registered six years before MySpace.com was founded. Nonetheless, arbitrator Antony Gold has ruled that the domain name should pass to MySpace.com:
"The Complainant [MySpace, Inc.; MySpace.com] has Rights in a name or mark which is identical to the Domain Name and the Domain Name in the hands of the Respondent [Total Web Solutions Ltd; MySpace.co.uk] is an Abusive Registration. The Domain Name is to be transferred to the Complainant."
The ruling: http://www.nic.uk/digitalAssets/27270_myspace.pdf