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Trademarks: International Treaties

    While there are systems in place that facilitate the registration of a mark internationally with a single filing, there is no global trademark law. Trademarks are protected by the national laws of treaty signatories, although the TRIPS agreement (see below) does provide an attempt of at least minimalist harmonization. The two principal treaties regarding international trademarks are the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Madrid Protocol. Both are discussed briefly below and links are provided for further reading.

    Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

    TRIPS is administered by the World Trade Organization (WTO). The WTO maintains a significant amount of relevant information regarding this agreement on its website and the "gateway" to additional TRIPS information can be found here. TRIPS contains content that is much broader than trademarks, including copyright, patents, industrial design and trade secrets. The following excerpt from the WTO TRIPS website is informative.

    Ideas and knowledge are an increasingly important part of trade. Most of the value of new medicines and other high technology products lies in the amount of invention, innovation, research, design and testing involved. Films, music recordings, books, computer software and on-line services are bought and sold because of the information and creativity they contain, not usually because of the plastic, metal or paper used to make them. Many products that used to be traded as low-technology goods or commodities now contain a higher proportion of invention and design in their value — for example brandnamed clothing or new varieties of plants.

    Creators can be given the right to prevent others from using their inventions, designs or other creations — and to use that right to negotiate payment in return for others using them. These are “intellectual property rights”. They take a number of forms. For example books, paintings and films come under copyright; inventions can be patented; brandnames and product logos can be registered as trademarks; and so on. Governments and parliaments have given creators these rights as an incentive to produce ideas that will benefit society as a whole.

    The extent of protection and enforcement of these rights varied widely around the world; and as intellectual property became more important in trade, these differences became a source of tension in international economic relations. New internationally-agreed trade rules for intellectual property rights were seen as a way to introduce more order and predictability, and for disputes to be settled more systematically.

    A foundational part of the TRIPS agreement is the concept of National Treatment. Essentially this requires that foreign nationals be treated the same as "locals" once goods have entered the country (i.e. national laws apply to foreigners in a manner analogous to how a nation's laws applies to its own citizens). This does not mean that the same laws apply everywhere. That said, TRIPS does make an attempt to provide a minimal set of "common ground rules" by incorporating minimum standards from the Paris Convention and the Berne Convention. The full text of the agreement can be found here in outline format.

    The trademark related aspects of TRIPS are contained in Articles 15-24 (which includes the language related to "geographical indications). These Articles can be found in their entirety starting here. The subject matter that is protected is found in Article 15 and contains the following language:

    Article 15
    Protectable Subject Matter

    1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.

    2. Paragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967).

    3. Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application.

    4. The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark.

    5. Members shall publish each trademark either before it is registered or promptly after it is registered and shall afford a reasonable opportunity for petitions to cancel the registration. In addition, Members may afford an opportunity for the registration of a trademark to be opposed.

    The TRIPS agreement is arguably the most important international agreement dealing with intellectual property (IP) law among the largest nations (and many smaller ones) and is a cornerstone agreement that underpins the global economy. It will likely continue to maintain its prominence as IP represents more and more of the GDP of both the developed and the developing world. Trademark protection outside of the  holder's national borders will an remain an important issue on the world economic stage as the Internet increasingly drives the creation of additional global brands.

    Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol)

    This is an international treaty that allows a trademark holder to seek registration in any of the signatory countries by filing a single application. The "international registration" that results provides protection in member countries but each signatory determines how the mark will be protected (i.e. via its own national laws) within the jurisdiction. This treaty is administered by the World Intellectual Property Organization (WIPO). A current list of signatories can be found here.

    The U.S. became a signatory on November 2, 2003 which provides nationals to submit an international application to the USPTO which it then forwards to  to the International Bureau in Geneva, Switzerland. The Lanham Act was amended to implement the Madrid Protocol. This amendment is known as the Madrid     Protocol Implementation Act (MPIA). The USPTO summarizes the requirements for filing an international application as follows:

    What are the requirements for submitting an international application through the USPTO?

    To file an international application through the USPTO, an applicant must have a U.S. application, called a "basic application" or a U.S. registration, called a "basic registration." The mark and the owner of the international application must be the same as the mark and the owner of the basic application or registration. The international application may be based on more than one USPTO application or registration provided the mark and the owner are the same for each basic application and/or registration.

    The international application must include a list of goods and services that is identical to or narrower than the list of goods or services in the basic application or registration. The international applicant must pay the U.S. certification fee(s) at the time of submission and identify at least one Contracting Party in which an extension of protection (that is, registration in a Contracting Party) is sought.

    A list of the minimum requirements for obtaining a date of receipt of an international application in the USPTO is set forth in 37 C.F.R. §7.11(a). See notice of final rules published in the Federal Register, 68 FR 55748 (Sept. 26, 2003), and posted on the USPTO web site at: http://www.uspto.gov/web/offices/com/sol/notices/68fr55748.pdf.

    The requirements for a complete international application are set forth in Article 3 of the Protocol and Rule 9 of the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (Common Regulations). The Common Regulations are currently available on the WIPO website at http://www.wipo.int/madrid/en/.

    The entire USPTO FAQ regarding the Madrid Protocol can be found here. Prior to the systematic adoption of this protocol it simply was not possible to obtain an "international trademark" with a single filing. The increased pressure for a single filing system was apparently driven by international players insisting on a more uniform approach. In any case, the protocol is indicative of the fact that the world is indeed becoming "flat" and the trend toward globalization shows an increasing ability to overcome any friction that stands in its way.

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