Mr
Kimbley L Muller, President of the International Trademark Association, explains
the existing international agreements which attempt to harmonize trademark
protection around the world and highlights the importance and advantages of
doing so.
Harmonization
of trademark law and practice is no longer, if it ever was, merely a convenience
for trademark owners. As trade, traditional and in cyberspace, spreads rapidly throughout the world, harmonization is increasingly becoming a requirement.
A slow-paced, strictly national trademark registration system is no longer
adequate, as the various regional and multi-country agreements that include
sections on intellectual property make clear.
There
are five basic international agreements attempting to harmonize the protection
of trademarks and to simplify registration internationally — the Paris
Convention, the Madrid System, the Trademark Law Treaty (TLT), the Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Community
Trade Mark System (CTM).
The
Paris Convention
Consideration
was first given to the desirability of creating an international system of
trademark law in the late 19th century.
The
Paris Convention of March 1883, which became effective in March 1884,
represented an important step towards a unified treatment of trademark law and
trademark owners on an international basis. The Convention gives persons in
contracting states the same rights as nationals in other contracting states. It
also stipulates that applications filed in other contracting states will be
entitled to a filing date dating back up to six months when the original
application was filed.
The
Madrid System
The
Madrid System for international registration of trademarks consists of two
treaties. The Madrid Agreement, concluded in 1891, is an arrangement under
article 19 of the Paris Convention and only signatories of the Paris Convention
may join. The Agreement provides for registration of trademarks in several
countries through the filing of one international trademark registration with
the World Intellectual Property Organization (WIPO) in Geneva. Since the Madrid
Agreement came into force, more than 600,000 international registrations have
been issued. On average, each registration covers ten countries, thus making
those 600,000 registrations equivalent to six million national registrations. At
present, more than 280,000 international registrations under the Agreement are
in force. Although very popular with its 46 member countries, the Agreement
contains certain perceived shortcomings, which have prevented many of the major
economic powers (including the USA, the UK, Japan and the Nordic countries) from
joining.
The
second treaty within the Madrid System is the Madrid Protocol, which came into
force on 1 December 1995 and began operation on 1 April 1996. The number of
countries ratifying the Protocol has accelerated rapidly since the requisite
number of countries needed to ratify the treaty in order to bring it into force
was achieved in September 1995. Currently, 46 countries have become party to the
Madrid Protocol.
The
Protocol differs from the Agreement in five significant respects:
1
National application as a basis for international registration
Whereas
under the Madrid Agreement, an international application must be based on a
national registration for a trademark, under the Protocol an international
application may also be based on an application for registration within a member
country.
This
will allow applicants under the Protocol to take advantage of the six-month
priority period under the Paris Convention in relation to international
applications. Under the Madrid Agreement, where the original national
registration took more than six months to obtain, the opportunity to take
advantage of the Paris Convention priority period was lost.
2
Extended time limits for refusal
Under
the Madrid Agreement, there is a twelve-month deadline for a national trademark
office (TMO) to notify WIPO of a refusal of protection for an international
registration. If there is no refusal in that time, the mark is automatically
registered. The Protocol, however, provides for ratifying countries to make a
declaration that this period will be extended to 18 months. The Protocol also
provides for a further declaration, which permits the communication of a refusal
of an application for trademark registration even after that 18-month period
when the refusal is due to an opposition in that national TMO.
3
Fees
Under
the Protocol, any contracting party may choose one of two fee systems: (1) apply
the Madrid Agreement approach of a fixed fee for any contracting party
designated; or (2) set its own ‘individual fee system’ in which the national
TMO may charge the same fee for any extension of an international registration
into its territory as i t would have charged for a national ten-year
registration (minus any savings resulting from the international procedure).
4
Language
The
official language of the Madrid Agreement is French. Under the Madrid Protocol,
both English and French are designated official languages.
5
Central attack
Arguably
the most serious obstacle to signature of the Madrid Agreement has been the
system of ‘central attack’ under which for the first five years an
international registration would be cancelled if the national registration upon
which it was based is cancelled or lost for any reason.
To
address this problem, the Protocol permits the owner of an international
registration which has been cancelled as the result of the loss of protection of
the national trademark registration upon which it is based, to transform that
international registration into a series of national applications with the
priority date of the original international registration in each signatory
country to which the international registration was originally extended.
The
economic benefits to trademark owners in having access to the international
registration system under the Madrid Protocol are tremendous. With expanding
membership to the Protocol , companies will greatly reduce their administrative
costs and paperwork by only having to file one application in one place with one
set of documents in one language with one fee in one currency, resulting in one
registration with one number and one renewal date covering more than one
country. What an advantage to trademark owners!
Cost
savings to trademark owners under the Madrid Protocol are significant. For
example, without the Protocol, a trademark owner wishing to register a mark in
ten different countries would need to file ten separate applications. The cost
of these 10 applications, which include official and attorneys’ fees, would,
at a minimum, be over US$14,000. Under the Madrid Protocol, the fee, depending
on the amount that the national office has agreed with WIPO to charge, would be
preset and would be approximately US$4,700, resulting in savings of more than
67%. These savings can be plowed back into investment, research, new product
development and increased employment, or they can be passed along to consumers
through lower product prices.
An
even greater economic benefit would be realized after an international
registration has been obtained. For example, a company having 1,000 trademark
registrations in ten countries may need to make an amendment due to a simple
change in address. Without the Madrid Protocol, 1,000 separate amendment
applications would need to be prepared and filed. Under the Protocol , only one
amendment application needs to be filed with WIPO, resulting in huge savings in
time and fees.
Another
key benefit of the Madrid Protocol is that an application for a registration
must be examined and acted upon within 18 months. In many countries, a
registration through the national office can take up to 4 years, thus denying
trademark protection in this age of instantaneous global communication and
rapidly changing markets.
The
ease of applying for and maintaining trademark registrations under the Madrid
Protocol, along with the cost savings, will greatly help small to medium-size
businesses — the entrepreneurial businesses in the new economy which generate
the majority export growth. No longer will such businesses be forced to choose
between equally promising markets simply because protecting their trademarks is
too cost prohibitive.
Recently,
after a six-year impasse and due to intense lobbying by the International
Trademark Association (INTA) and others, the United States and the European
Union have reached an understanding on the voting arrangement within the
Assembly of the Madrid Union. This understanding clears the path for the United
States to join the Madrid Protocol. The US will most likely deposit its
instrument of accession with WIPO by early to late 2001. Hopefully, the
accession of the United States, following that of Japan, will encourage other
countries to join as well.
The
Trademark Law Treaty
The
other major treaty that will facilitate registration for trademarks through
harmonized national practice is the TLT. The wide diversity of trademark office
requirements and procedures throughout the world results in additional costs to
trademark owners. The TLT significantly streamlines trademark protection by
harmonizing requirements and simplifying administrative procedures. The TLT
accomplishes these objectives by:
setting
a maximum list of requirements for trademark applications and registrations
concerning such matters as filing dates, requests for name and address
changes, assignments and renewals;
standardizing
forms for applications, powers of attorney, and changes of name, address and
ownership;
prohibiting
requirements for notarization or other certification of any signature,
except in the case of surrendering a trademark registration;
prohibiting
any requirement for certificates or extracts from a register of commerce;
making
one request sufficient for changes of name, address or ownership for several
registrations or applications;
requiring
the acceptance of general powers of attorney; and
adopting
the International Classification of Goods and Services.
Once
again, the more countries that join the TLT, the easier the path to
registrations and, therefore, to improved trade and the growth of economies.
Agreement
on Trade-Related Aspects of Intellectual Property Rights
In
addition to advances in the registration of trademarks, the TRI PS Agreement
provides a minimum standard for enforcement that all countries should strive to
reach. While that effort to raise the bar for countries to improve their
enforcement efforts is laudable, it nevertheless remains the minimum. INTA has
been active in encouraging countries that consider implementing legislation to
comply with TRIPS to go beyond the minimum in a number of areas. For example:
judicial
decisions on the merits of an infringement case should be in writing and
should set forth the rationale for the decision;
every
party to a dispute should be required to produce all relevant and reasonably
available evidence that is in its control, subject, of course, to
confidentiality protection, which is needed to establish a prima facie case
for the party’s claims or defenses;
furthermore,
victims of infringement should have an absolute right to obtain information
regarding the identities of possible infringers;
importantly,
innocent infringers and/or government authorities should not be permitted to
dispose of or introduce infringing goods into the marketplace;
implementing
legislation should contain provisions for both imprisonment and fines as
available criminal sanctions for willful infringement; and finally
each
nation should include search and seizure provisions as additional
enforcement measures.
This
year, over 60 developing countries are required to notify the TRIPS Council as
to whether their laws are in compliance.
The
Community Trade Mark System
The
CTM is another means to protect a trademark in several countries through filing
a single application, specifically countries that are members of the European
Union (EU). The initial registration period is ten years from the date of filing
the application.
Applications
for a CTM are made either directly at the Office for Harmonization in the
Internal Market (OHIM) in Alicante, Spain, or at the Trademark Office of any of
the member states or at the Benelux Office, at the choice of the applicant. To
file a CTM application, two languages must be chosen. The CTM application must
be filed in one of the official languages of the EU (Danish, Dutch, English,
Finnish, French, German, Greek, Italian, Portuguese, Spanish or Swedish),
indicating a second language among one of five official languages of OHIM
(English, French, German, Italian or Spanish) for procedural purposes, including
oppositions. Applicants domiciled outside the EU must file through an agent in
any EU country. Applicants filing through an agent must provide a signed power
of attorney. General powers of attorney are accepted.
Like
most multi-country registration systems, the most attractive feature of CTM
registration is that it offers protection in all fifteen countries of the EU at
a cost which is much lower than filing separate applications in each member
state. Furthermore, use of the trademark is not required to secure registration
or renewal. Also, use in a single Member State is sufficient to maintain the
validity of the CTM registration throughout the EU and avoid it being vulnerable
to cancellation through non-use over a five-year period. Finally, a CTM
application, which is refused registration, may be converted into national
applications maintaining the priority of the original CTM application.
Trademark
Owner Support
Promoting
and protecting trademarks worldwide is the primary function of the International
Trademark Association. Its continued success in influencing the development of
trademark treaties and laws is made possible by the diversity and shared mission
of its membership. INTA is an organization of trademark owners and advisors with
more than 3,800 current members in 120 countries, including all ASEAN countries.
INTA’s members represent every major industry from aerospace to consumer
goods, alcoholic beverages to textiles, electronics to financial services. The
membership includes major multinational corporations and small companies,
manufacturers of consumer goods and service providers, not to mention law firms,
advertising agencies and design firms, all of whom are committed to the concept
that intellectual property rights are essential to the integrity of
international commerce. Through its structure of expert committees, its
professional staff and the individual effort of its members, INTA will continue
to work for harmonization and on other issues of law that protect the rights and
ease the administration of valuable trademark assets for trademark owners
worldwide.
The
trademark laws of the individual countries around the world run the gamut from
the rudimentary to the very sophisticated. This wide diversity makes all the
more important the current efforts that are under way by INTA, companies and
regional organizations to explore a single filing and registration system, which
could perhaps lead to greater harmonization of the laws. Making trademark law
and practice in various regions of the world more uniform and easier to
administer will promote a continuation of the impressive growth of the global
economy.
Kimbley
L Muller
President, International Trademark Association
[Editorial Note: Besides being the present President of the International Trademark Association, Mr Kimbley L Muller was Secretary of the Houston Intellectual Property Association from 1992 to 1993 and the Chair of the Patent, Trademark & Copyright Section of the State Bar of Texas from 1998 to 1999. He is currently Senior Counsel of Shell Oil Company in Houston, Texas.]