TRADEMARK PROTECTION: AN INTERNATIONAL PERSPECTIVE

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ABSTRACT Trademarks are signs and combinations that identify goods and services of a particular individual offered in a market. Today the trademark is a way to attract the public. Consumers look at trademarks to choose goods and services, which increases the role of trademarks in global marketing. Trademarks are important in the sense that most of the consumers rely on the symbols, letters, or labels that the company attached with its products in order to buy them. Often, consumers are deceived by selling local quality products under the brand name. This not only break the trust of the consumers but it also hamper the reputation and goodwill of the brand name and its business. Hence, trademark needs to be protected from such fraudulent activities not only nationally but internationally too. Sometimes, trademark is infringed in a foreign country and due to territorial restrictions; the trademark owner is not able to protect his mark in that country. Our intellectual property system offers a legal means for such protection. There exists a complete international system for trademark protection. Several international agreements have been signed to facilitate the international protection of intellectual property rights. The oldest is the Paris Convention of 1883 and the most recent is TRIPS in 1994. There are several other global and regional agreements, signed between the Paris Convention and TRIPS, which are still in force today such as the 1891 Madrid Agreement on the International Registration of Trademarks, the 1989 Madrid Protocol on the International Registration of Trademarks, and the 1994 Trademark Law Treaty. This article examines various treaties, convention and agreements made internationally for the protection of trademark in the global market.
  1. INTERNATIONAL AGREEMENTS –
The Paris Convention and TRIPS both provides many general principles and rules for the protection of intellectual property rights.
  • PARIS CONVENTION
The Paris Convention for the Protection of Intellectual Property is one of the oldest and important treaties for the protection of intellectual property rights signed in 1883 in Paris. It also established a union named Paris Union for protecting intellectual property rights. It applies to all intellectual properties such as trademarks, utility models, patents, geographical indications. The Paris Convention provides three principles for protection of intellectual properties[1]: -
  1. National Treatment – The Paris Convention provides that each member country of the convention must provide equal and same protection of intellectual property which it grants to its own citizens, to the nationals of other member countries. For example, if a citizen of India wishes to obtain a Trademark Protection in United States, he will get same protection and rights under the same conditions which United States will provide to its own nationals as both India and United States are the signatories of Paris Convention. Also, the citizens of non-member countries are also entitled to national treatment under the Convention but with some limitations. This principle also applies to all TRIPS member states.
  1. Right of Priority – It means that the applicant who is already protected in one of the member states can apply within a certain period of time for the protection in other member states. The subsequent applications filed will be treated as if they had been filed on the same day as the first application. In simple words, they will have priority over the applications filed by others during that period for the same invention. The advantage of this provision is that the applicants have the option to file the application later in the countries in which they wish to protect their mark and are not required to present all of their applications at the same time.
  1. Common Rules – All the signatories of the convention are governed by their own domestic law for registration of intellectual property rights. Therefore, the annulment or nullification of the registration of a mark in one Member State will not affect the validity of the registration in other Member States. This means that the trademark owner is subject exclusively to the national laws of each country. But often, some national laws prohibit registration of numbers or letters, whereas others allow such trademarks. In that case it becomes very difficult for the trademark owner to use a mark in the same form in all the countries. But, the Paris Convention provides that the trademark that has been registered in its country of origin in compliance with domestic law is to be registered in other member states as it is.
  • TRIPS (The Agreement on Trade-Related Aspects of Intellectual Property Rights)
TRIPS is an international agreement administered by the World Trade Organization (WTO) which provides minimum standards for regulation of intellectual property rights. It was negotiated in 1994. It covers almost all intellectual property rights such as copyright, trademarks including service marks, geographical indications, industrial designs, patents including the protection of new varieties of plants, the layout-designs of integrated circuits and trade secrets.[2] It incorporates some of the provisions of Paris Convention (1967) also which includes national treatment principle. Article 3 of TRIPS provides for reciprocity between member states. It restricts the discrimination between a Member countries own nationals and the nationals of other Member countries. It means that each member state must grant the citizens of other member states the same intellectual property rights protection which it grants to its own citizens. TRIPS have also introduced the most favoured nation principle which forbids the discrimination between nationals of other member countries. Article 4 of TRIPS provides that all advantages, favours, privileges or immunities granted by a member to its own citizens will be extended to all other members in the same way and without any further conditions. However, the national treatment and most favoured nation principle do not apply to agreements such as Madrid Agreement and Madrid Protocol which are mainly introduced for the international or regional registration of intellectual property rights.[3] It is mandatory for all member states of TRIPS to introduce procedures into their national legislation for the actions to be taken against any infringement of intellectual property rights. Any victim can go to any judicial or administrative authority for seeking remedies in respect of the infringement. Remedies can be in the form of injunction, seizure or compensation for the loss of reputation or goodwill. Articles 15-21 of TRIPS lay down the rules for protection of trademarks. Article 15(1) provides that all signs and combinations of signs that are capable of distinguishing the goods and services of one undertaking from another are capable of acquiring trademark protection. Distinctiveness is thus the sole condition for protection of a trademark. If a mark is not able to distinguish between the goods of two persons, it will not be allowed to be registered. Article 15(4) extends the protection to service marks also so that the nature of a product or a service may not be an obstacle to registration of the mark. Article 15(5) of TRIPS only provides for the obligation to publish the trademark either before or immediately after registration and to allow suitable opportunity for an opposing party to apply for cancellation of the registration. Under Article 16, TRIPS recognizes the exclusive right of the trademark holder. During the term of protection, the owner of a trademark enjoys the exclusive right to prevent third parties from using either his own mark or a similar mark for same or similar goods or services in the course of trade where such a use would result in a likelihood of confusion among the consumers. TRIPS also extends the protection to well known marks. Thus, Pepsi Company has the right to forbid a shoe manufacturer from using the sign “Pepsi” to designate its shoes if consumers would be likely to believe that the shoes were manufactured or endorsed by the Pepsi Company, thereby diluting the “Pepsi” trademark.
  1. SPECIAL AGREEMENTS –
Article 19 of the Paris Convention permits the countries of the Union the right to make separately between themselves special agreements for the protection of intellectual property. Presently, there are four such special agreements existing relating to trademarks: the Madrid Agreement, the Trademark Registration Treaty, the Madrid Protocol, and the Trademark Law Treaty. The Madrid Agreement, Trademark Registration Treaty, and the Madrid Protocol are completely different from TRIPS as these provides for international registration of trademarks but TRIPS does not deal with registration of intellectual property rights.
  1. The Madrid Agreement: - The Madrid System for the International Registration of Marks is governed by two treaties: The Madrid Agreement and the Madrid Protocol. The Madrid Agreement was incorporated in 1891. It is administered by the International Bureau of the World Intellectual Property Organization (WIPO). Most of the countries have ratified the Madrid Agreement including India, but with the exception of the United States, Japan, the United Kingdom, Ireland, and the Scandinavian countries.
The Madrid Agreement provides simple international registration procedures for acquiring trademark protection by providing single international application upon payment of a single fee. The procedure for registration under the Madrid Agreement may be summarized as follows[4]:
  • a citizen of a member state owns a registered trademark in its own country
  • on the basis of this initial registration, the national trademark owner applies for international trademark registration with the International Bureau of the WIPO;
  • in the international application, the applicant lists the member states in which protection is sought;
  • the WIPO distributes the international application to each of the listed states;
  • in each of these states, the international application is treated as a national application
Under the Madrid Agreement, if the trademark registered in the country of origin, on which the international registration is based, is nullified, then all the trademarks issued from the international registration also becomes void within five years from the date of international registration. Madrid Agreement has been criticized by many countries on this point.[5]
  1. Trademark Registration Treaty
The WIPO created the Trademark Registration Treaty in 1973. The United States and thirteen other countries were signatories to it. But till now, many countries including United States have not ratified it. It is now signed only by the Soviet Union and four African countries. This treaty was made with an objective to establish an international trademark ¬ling system through which citizens residing in one of the member States can easily register trademarks in all other member states just by filing one single application and securing single international registration. The main advantage of this treaty is the simplified procedure to get the trademark registration secured internationally. But it is still not in force.[6]
  1. The Madrid Protocol
The Madrid Protocol was signed on June 27, 1989, and entered into force on April 1, 1996. There are total 86 countries who are signatories to this protocol including India. It provides a cost-effective and a very efficient way for trademark holders to ensure protection in multiple countries through the filing of one single application with a single office and single fee in one language. Once any member country grants the trademark protection to any applicant, his trademark will be protected in that country as if that country has registered it. Similar to Madrid agreement, here the international application is treated as a national one.[7] The procedure for filing the application under Madrid protocol is that the applicant files an International Application from the national office of his country which will then pass the International Application to WIPO. He can then list those countries in his application in which he sought protection.[8] The duration of protection following an international registration is ten years, renewable under payment of a fee to the International Bureau of the WIPO. The Protocol is a new treaty independent from the Madrid Agreement and introduces new procedures for international registration which entered into force on April 1, 1996. For example, if the applicant selects the European Community Office, the office of harmonization in the internal market (OHIP), the application is treated as an EC trademark application.
  1. The Trademark Law Treaty
The Trademark Law Treaty was adopted in Geneva on October 27, 1994, and entered into force August 1, 1996. It does not deal with the registration of trademarks but simplify national and regional trademark registration procedures. There are 49 countries which are signatories to it. It also eliminates the formal requirements that are considered to be unnecessary obstacles in the registration process. The treaty applies to trademarks for such as word marks, design marks, mixed marks and three-dimensional marks. The treaty does not apply to sound marks, olfactory marks, collective marks, certification marks or guarantee marks. The provisions of the treaty contain three phases of the registration procedure: (i) the application for registration; (ii) changes after registration; and (iii) renewal. The provisions of the Trademark Law Treaty are not incorporated into TRIPS. The duration of renewal of the registration under this treaty is 10 years.[9] CONCLUSION What conclusions may be drawn from this brief overview of the international trademark protection system? Clearly, the Paris Convention has stood the test of time. Its principles are now incorporated into TRIPS, defining the basic rules of protection of intellectual property rights in the international trade. The recognition and protection of intellectual property rights is one of the conditions for international peace. Apart from various international agreements like Paris Convention and TRIPS, there are various special agreements such as Madrid Agreement and Madrid protocol, trademark law treaty and trademark registration treaty for the protection of trademarks internationally. Madrid Agreement and Madrid protocol which are part of the Madrid system only deals with registration aspect of trademarks whereas all other treaties and convention deals with principles and rules for protecting trademarks and simplifying the trademark registration procedures at the international level. All these treaties and agreements are incorporated with sole objective to simplify the international procedures for protecting the trademark and to make them cost effective and more efficient so that any person can make his mark registered and enjoy the trademark protection not only in his home country but also internationally. 1
[1] “Summary of the Paris Convention for the Protection of Industrial Property” (1883), available at <http://www.wipo.int/treaties/en/ip/paris/summary_paris.html> (accessed on 15th Nov, 2014) [2] Wolf R. MEIER-EWERT, “A Business-oriented overview of Intellectual Property for Law Students” available at <http://www.wipo.int/edocs/mdocs/sme/en/wipo_smes_ge_2_06/wipo_smes_ge_2_06_www_63216.ppt> (accessed on 15th Nov, 2014) [3] Supra note 1 [4] “Guide To The International Registration Of Marks Under The Madrid Agreement And The Madrid Protocol” available at <http://www.wipo.int/export/sites/www/madrid/en/guide/pdf/guide.pdf> (accessed on 15th Nov, 2014) [5] Supra note 4 [6] DONALD W. BANNER, “Trademark Registration Treaty” available at <http://ipmall.info/hosted_resources/lipa/trademarks/PreLanhamAct_107_Trademark_Treaty.htm> (accessed on 15th Nov, 2014) [7] “Madrid Protocol” available at <http://www.uspto.gov/trademarks/law/madrid/> (accessed on 15th Nov, 2014) [8] “Madrid Protocol and Madrid Agreement” available at <http://www.elkfife.com/madrid-protocol-and-madrid-agreement> (accessed on 15th Nov, 2014) [9] “Summary of the Trademark Law Treaty (TLT)” (1994) available at <http://www.wipo.int/treaties/en/ip/tlt/summary_tlt.html> (accessed on 16th Nov, 2014)
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