International Intellectual PropertySummer 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/ShowResults.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. National Treatment

• 2. Independence of Trademarks

• 3. Priority

• 4. 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 “well-known 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 Agreement Country

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)