International Intellectual Property
Summer 2009: Class 11
• International
Trademark Protection
Prior to TRIPS: The
Paris Convention And
Other Multilateral and
Regional Agreements
Class Today
• Today we will discuss the international system for
the protection of trademarks prior to TRIPS.
• We will learn about an important multilateral
agreement that concerns (among other things)
international protection for trademarks, the Paris
Convention for the Protection of Industrial
Property of 1883, as well as several other
multilateral and regional agreements for the
protection and registration of trademarks.
• In a forthcoming class, we’ll discuss how the
TRIPS Agreement has affected international
trademark protection.
Class Today
• The other multilateral/regional agreements
that we will consider today are:
• Nice Agreement of 1957
• The Madrid Agreement of 1891
• The Madrid Protocol of 1989
• The Trade Mark Law Treaty of 1994
• Singapore Treaty of 2006
To Think About
• How do these treaties deal with the
differences between the civil law and
common law approach to trademark law?
• Are there many developing country
members of any or all of these agreements?
Are they fair to developing countries?
To Think About
• To what extent do any or all of these treaties
provide for national treatment?
• To what extent do any or all of these
agreements harmonize substantive
trademark law or procedures for trademark
registration?
• Do they provide for centralized filing
systems or unitary supranational protection?
Challenges for Trademark
Holders Who Seek International
Protection
• What difficulties may exist for a trademark
holder who seeks global protection for his
or her trademark?
International Challenges for
Trademark Holders Include
• 1. Since trademarks are geographical, the
trademark may be already registered in a foreign
jurisdiction by the time the trademark owner
decides to register there.
• 2. To raise money, many countries charge
frequent renewal fees for trademarks.
• 3. Some jurisdictions impose quality control
licensing requirements
• 4. The trademark may be used in an Internet
domain name. The domain name system does not
respect territorial boundaries.
International Protection:
Trademarks Versus Patents
• Historically, businesses have more often
sought international trademark protection
than patent protection. Why?
Trademarks Versus Patents
• 1. It is easier to create a trademark than a
patentable invention. Trademarks must generally
only be distinct from other marks used on
comparable goods, whereas patentable inventions
must be new, useful, and non-obvious. There is
generally no requirement that a trademark be
associated with an innovative product.
• 2. The process of securing international patent
protection is expensive and time consuming
compared to international trademark registrations.
• 3. More often, there is a greater risk that
trademarks may be misappropriated and misused
in foreign countries than patentable inventions.
• 4. Trademarks are the main way of establishing
the identity of a corporation or its products.
The Paris Convention for the
Protection of Industrial Property
• Adopted multilateral rules for trademarks in
1883
• Also governed patents and industrial designs.
History of the Paris Convention
• Reasons for the convention?
History of Paris Convention
• Before 1883, very limited international protection
for TMs (only bilateral treaties)
• Impetus for Paris Convention was a result of
pressure for an international agreement covering
industrial property more generally, particularly
patents but also industrial designs and models.
• Need for an international agreement became acute
as a result of International Exhibition of
Inventions in Vienna in 1873 at which many
inventors feared exhibiting their inventions
• Strong natural law arguments were made by
promoters of an international industrial property
agreement.
Members of the Paris Convention
• Who were the original signatories?
• There are currently 173 members of the the
Paris Convention, including the U.S. and
Poland (as of April 15, 2009)
• Click on
http://www.wipo.int/treaties/en/ShowR
esults.jsp?lang=en&treaty_id=2 for a
list of members of the Paris Convention
Developing Countries
• 37 LDC members of Paris
• What concerns do you think developing
countries have about trademark rights?
What is a “Trademark” protected
under Paris?
• Does the Paris Convention define what is a
trademark?
• What other aspects of the Paris Convention
have been seen as weaknesses?
Weaknesses of Paris Convention
• No definition of a trademark
• Relatively few substantive requirements
(same problem exists for patents)
• No standard factors for determining when
use of a mark infringes the rights of a third
party
• No enforcement provisions, so many
countries never implemented Paris
Convention into their national law
Basic Principles of the Paris
Convention
•
•
•
•
1.
2.
3.
4.
National Treatment
Independence of Trademarks
Priority
Minimum Standards of Protection
Paris Convention: Basic Principle
(1): National Treatment (art. 2)
• Art. 6(1): The conditions for the filing and
registration of trademarks shall be determined in
each country of the Union by its domestic
legislation.
• Art. 6(2): However, an application for the
registration of a mark filed by a national of a
country of the Union in any country of the Union
may not be refused, nor may a registration be
invalidated, on the ground that filing, registration,
or renewal, has not been effected in the country of
origin.[basically independence of trademarks]
Paris Convention: Basic Principle
(2): Independence of TMs
• Art. 6(3): A mark duly registered in a country of
the Union shall be regarded as independent of
marks registered in other countries of the Union,
including the country of origin. [see also art. 6(1),
6(2))
Hypo on Independence of
Trademarks
• Anne successfully convinces the U.S.
Trademark Trial and Appeal Board (a
division of the USPTO) to cancel Stefan’s
U.S. registered trademark for THERMOS.
If Stefan also has registered an identical
trademark in Poland, will Anne’s
cancellation of the U.S. trademark affect the
Polish mark for THERMOS under Art. 6 of
the Paris Convention?
Are there any exceptions to the rule
of independence of TMs?
Exception to Independence of
Trademarks: Art. 6quinquies –
the telle quelle principle
• If mark is registered in its country of origin (where
applicant has commercial establishment or is domiciled or
has nationality) and that country is a Union country,the
TM must be accepted for registration and protected in
other member countries as is (provided that that kind of
trademark, e.g. 3D trademark or sound mark is registrable
in that other country)
• Some listed exceptions to this: where TM infringes rights
of third parties acquired in that third country, is generic or
not distinctive, is contrary to morality, would constitute
unfair competition, or is used in a different form than that
registered in the country of origin.
Paris Convention: Basic Principle
(3): Priority
• If a person files for the registration of a TM
in any Union Country, the Paris Convention
provides for a right of priority of six
months (art. 4(C))
• What if the registration in the first country
(e.g. U.S.) is ultimately rejected?
Paris Convention: Basic Principle
(4): Minimum Standards
• See Arts. 5-10ter which establish minimum
substantive standards for national trademark
laws of Paris members.
• Note that there are relatively few such
substantive standards
• The Paris Convention does not mandate
complete harmonization of its members’
substantive trademark laws.
Paris Convention: Service Marks
• Does not require service marks to be
registrable. Must service marks be
protected?
Paris Convention art. 6sexies
• The countries of the Union undertake to
protect service marks. They shall not be
required to provide for the registration of
such marks
Paris Convention: collective marks
• Must collective marks be protected? (see
art. 7bis)
Paris Convention art. 7bis
1) The countries of the Union undertake to accept for filing
and to protect collective marks belonging to associations
the existence of which is not contrary to the law of the
country of origin, even if such associations do not possess
an industrial or commercial establishment.
(2) Each country shall be the judge of the particular
conditions under which a collective mark shall be
protected and may refuse protection if the mark is contrary
to the public interest.
(3) Nevertheless, the protection of these marks shall not be
refused to any association the existence of which is not
contrary to the law of the country of origin, on the ground
that such association is not established in the country
where protection is sought or is not constituted according
to the law of the latter country.
To what extent does the Paris
Convention require protection for
trade names?
To what extent does the Paris
Convention require protection for
trade names?
• Art. 8: A trade name shall be
protected in all the countries of the
Union without the obligation of filing
or registration, whether or not it forms
part of a trademark.
Paris Convention: Assignment of
Trademarks
• Some countries require transfer of the
business for the validity of an assignment.
• Art. 6quater provides that Union members
shall recognize the validity of an
assignment of a TM in a Union country
where the relevant portion of the business or
goodwill be transferred with the TM unless
the assignee’s use of that TM would
mislead the public.
Well-Known Marks
• What does Article 6bis of the Paris
Convention provide for “well-known”
marks?
• Does this Article define what a “wellknown mark” is?
Example of Well-Known Marks:
The South African McDonald’s
Controversy
• Example: McDonald’s
registered various South
African trademarks but
did not use them between
1975 and 1993 (due to
apartheid)
• Appellate Division: found
in 1996 McDonald’s
protected as a famous
mark
Empresa Cubana del Tabaco v.
Culbro (2d Cir. 2005) [C p. 301]
• Could Cubatabaco succeed in
its claim that the Cuban
COHIBA mark deserved
protection under the “famous
marks doctrine” and thus
thus it should succeed on its
section 43(a) Lanham Act
claim? Did it have a right
under Article 6bis of the Paris
Convention to cancellation of
General Cigar’sCOHIBA
mark?
Paris: Nature of Goods to which
Trademark Is Applied
Does the Paris Convention allow member
countries to prohibit the registration of
trademarks for goods that may not be
legally sold?
Paris: Nature of Goods to which
Trademark Is Applied
• Art. 7 provides that the nature of goods to
which a trademark shall be applied shall in
no case be an obstacle to the registration of
the mark.
• Result: the protection of trademarks is
independent from the issue of whether the
goods may or may not be sold in the
country concerned under, e.g. the food and
drug laws.
Paris Convention: Geographical
Indications
• Paris Convention protects appellations of origin
and indications of source (art. 1(2))
• Articles 10 and 10bis provide for protection of
indications of source
• Requires countries to seize goods bearing false
indications, or stop their importation, or otherwise
apply other available measures to stop the use of
such indications art. 10, 8
• Actions can be taken by public prosecutor or other
interested party (art. 10(2))
Paris Convention: Use and
Cancellation
• To what extent can use be a
requirement for trademark
registration?
• When can member states cancel a
trademark registration for lack of use?
Paris Convention: Use and
Cancellation
• Art. 5(c)(1) provides that if use is a
requirement for registered trademarks, that
the registration may be cancelled or
expunged for failure to use only after a
reasonable period has elapsed and then
only if the owner does not justify such a
failure.
• The definition of “reasonable period” is left
to the national legislatures
Paris Convention: Grace Period
for Renewal Fees
• Art. 5bis requires for a grace period of at
least six months for the payment of
maintenance fees for industrial property,
which in the case of trademarks, are
generally renewal fees.
Paris Convention: Seizure Rules Art.
9 and 10
• These are provisions for seizure of goods
unlawfully bearing a trademark or trade
name on importation into Union countries
where those marks or names are entitled to
legal protection.
Paris Convention: Special
Agreements
• Article 19 of the Paris Convention allows
members to enter into “special agreements
for the protection of industrial property” as
long as they don’t derogate from the
provisions of the Convention
• Two main special agreements: Madrid
Agreement (1891); Madrid Protocol (1989)
International Rules for
Registering Trademarks
• International rules on trademark classes and
common registration procedure have been
widely adopted
• For Int’l Classes see Nice Agreement
(administered by WIPO)
• For Harmonization of Registration
Procedures see Trademark Law Treaty
(administered by WIPO)
Nice Agreement Concerning the International
Classification for the Purposes of the
Registratoin of Marks (1957)
• 83 members as of April 15 2009 (must be Paris
Members) including Poland and U.S
• 9h edition went into effect on 1/1/2007 –
frequently updated. You can purchase it from
WIPO.
• Nice provides for common international
classifications for 34 classes of goods and 11 of
services, such as Class 3 Bleaching
preparations and other substances for
laundry use; cleaning, polishing, scouring and
abrasive preparations; soaps; perfumery,
essential oils, cosmetics, hair lotions;
dentifrices.
Advantages of the Nice
International Classification
System
• What are the advantages of this system?
Trademark Law Treaty
• Adopted at WIPO in 1994
• Entered into force in 1996
• What do you think is the goal of this treaty?
Trademark Law Treaty (1994)
• The goal of the TLT is to simplify and streamline
national/regional trademark registration
procedures
• 42 states are contracting parties (as of May 15,
2009), including the U.S. Poland has signed but
not ratified.
• The U.S. has implemented this treaty: Trademark
Law Treaty Implementation Act (1998) – effective
Oct. 30, 1999
Trademark Law Treaty
•
•
•
•
•
Applies to:
Application for registration
Period after registration
Renewal
Requires contracting parties to comply with
Paris Convention
Trademark Law Treaty and
Registration
• TLT restricts parties to only asking about certain
matters in registration
• If the forms attached to TLT are used, they must
be accepted and no other formalities can be
required.
• 1 registration where registration is sought for
goods in different Nice Classification systems
• Parties can’t require notarization of signature
except for surrender of registration.
Singapore Treaty on the Law of
Trademarks
• Adopted by WIPO Diplomatic Conference in
March, 2006
• 11 contracting parties (US, not Poland)
• Entered into force 3/2009
• Contracting parties must comply with Paris
Convention and apply terms of PC to service
marks
• What is the objective of the Singapore Treaty?
Singapore Treaty on the Law of
Trademarks
• How does the Singapore Treaty differ from
the TLT?
Singapore Treaty on the Law of
Trademarks
• How does the Singapore Treaty differ from the
TLT?
• Wider application (to non-traditional, e.g.
smell, marks)
• Allows Contracting Parties to choose the
method of communication with their Offices
(can be electronic; if electronic, can decide to
implement system of authentication of
electronic (not paper) communication)
Singapore Treaty on the Law of
Trademarks
• How does the Singapore Treaty differ from the
TLT (cont’d?)
• Requires relief measure if applicant/holder has
missed a time limit
• Provisions for recording TM licenses/sets up
maximum requirements for requests for
recordal, amendment, cancellation of the
recordal of a license
• Creates an Assembly of Contracting Paties
Resolution Supplementary to the
Singapore Treaty
• Adopted by Diplomatic Conference
• Treaty doesn’t impose any obligations on
Contracting Parties to adopt new types of
marks or implement electronic filing
systems
• Special provisions for providing developing
and LDC countries with technical assistance
and technological support
Madrid Agreement/Madrid
Protocol
• What type of WIPO treaty are these?
• Both treaties together are known as “the
Madrid System”
Madrid Agreement Concerning the
International Registration of Marks
(1891)
• This was adopted shortly after Paris and Berne
Conventions
• Under Madrid Agreement, the owner of a
trademark registration in one contracting state can
file an international application for registration
with International Bureau of WIPO.
• This is then sent to the trademark offices of all
member countries designated in the application.
• If there is no objection within a stipulated period
of time, the international registration takes effect
in designated countries.
Madrid Agreement
• Widely used in Europe (Poland is a party),
but Japan, U.S. and major Latin American
states are not parties.
• 56 Contracting parties
• What are the advantages and disadvantages
of the Madrid Agreement?
Advantages and Disadvantages of
Madrid Agreement
• Advantages for applicant: – need to file only one
application for registration in one language and
pay fees to one office
• Advantages for TM Office: do not need to
examine, classify goods/services/publish mark
• Perceived Defect of the Madrid Agreement:
Cancellation of the trademark in the initial country
of registration within the first 5 years following
the international registration invalidates the mark
in all Madrid Agreement countries.
• Another perceived defect – need to have a
registration not just an application in a Madrid
Madrid Protocol
• Entered into force in 1996 and is designed to
address defects of Madrid Agreement.
• How did the Madrid Protocol attempt to fix the
perceived defects of the Madrid Agreement?
Madrid Protocol
• Entered into force in 1996 and is designed to
address defects of Madrid Agreement.
• International applications can be filed on basis of
application in Madrid Protocol country.
Registration is not required.
• Countries can elect longer period to object to
protecting mark in territory (18 months)
• On cancellation by initial country of application,
owner of international mark can transform mark
into national applications based on the original
filing date of the international application.
• Application for CTM can be the basis for an
international application under Madrid Protocol.
Overlapping Membership:
Safeguard Clause
• Some States are only party to Madrid Agreement,
others only party to Madrid Protocol, some party
to both (note: must be party to Paris Convention)
• Which treaty binds parties to both Agreement and
Protocol?
• See Art. 9sexies of Protocol “Safeguard clause” at
p. 181 (this can be repealed no earlier than Dec.
2005)
United States and Madrid
Protocol
• U.S. eventually joined the Madrid Protocol in
2003 (its adherence got stalled over a a continuing
controversy with the European Union over voting
rights in the Madrid Protocol governing structure).
EU has a separate vote to all member states. U.S.
wanted EU to just have one vote, or separate votes
for member states but not both). Should the U.S.
have joined?
• Japan also joined, but not many Latin American
countries (e.g. not Brazil, Venezuela, Peru, Chile)
• 78 contracting parties in total
Advantages of Madrid System
• For TM holder (after initial
registration/application in office of origin, only
need file one application in one language with one
office and pay fees to one office)
• For TM Office (don’t need to examine for
compliance with formal requirements or classify
goods/services, or publish the marks)