1 international agreements: madrid protocol, trademark law treaty, and singapore treaty on the law...

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International Agreements: Madrid Protocol, Trademark Law Treaty, and Singapore Treaty on the

Law of Trademarks

Global Intellectual Property AcademyAmman, Jordan

November 5 - 8, 2007

Nancy Omelko—Attorney-Advisor (Trademarks)Office of Intellectual Property Policy and Enforcement

United States Patent and Trademark Office

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Rationale for Joining International Trademark Treaties

Trademark rights are territorial.But—commerce is international.Need to protect the marks of your nationals both at home and abroad.Treaties provide the means to standardize ways to protect marks.Standardization can reduce uncertainties and streamline process.

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Paris Convention

Article 2—National TreatmentArticle 4—Right of PriorityArticle 6—Well-known MarksArticle 6ter—State Emblems, Official HallmarksArticle 6quinquies—Refusal Limitations

infringing; non-distinctive; contrary to morality.

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Paris Convention (continued)

Article 7bis—Collective Marks

Article 8—Trade Names

Article 9—Seizure

Article 10—Prohibition against false indication of source

Article 10bis—Unfair Competition

Article 10ter—Remedies

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TRIPs

Article 1—Categories of IP

Article 2—Compliance with Paris Convention

Article 3—National Treatment

Article 4—Most-Favored-Nation Treatment

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TRIPs—Trademarks

Article 15—Defines protectable subject matterMember countries:

May require that signs be visually perceptibleMay require useMust publish before or promptly after registrationMust afford an opportunity for petitions to cancel.May afford opportunity to oppose registration.

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TRIPs—Trademarks(continued)

Article 16—Describes rights conferredRegistered trademark owners have the exclusive right to prevent third parties from using identical or similar signs.Article 6bis of Paris shall apply to service marksIn determining whether a mark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member which has been obtained as a result of the promotion of the trademark.

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TRIPs—Trademarks(continued)

Article 17—Exceptions—such as fair useArticle 18—Term of Protection and Renewal—no less than 7 yearsArticle 19—Requirement of Use—may be cancelled only after an uninterrupted period of 3 years. Excusable Non-use permitted.Article 21—Licensing and Assignment

Compulsory licensing prohibitedRight to assign with or without transfer of business

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TRIPs—Geographical Indications(GIs)

Article 22—Defines GIs—Provides legal means of protection for rightholdersArticle23—Additional Protection for GIs for wines and spiritsArticle 24—International Negotiations; Exceptions

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Madrid ProtocolA Filing Treaty

International Application (IA) filed through national trademark officeThe IA must have a basis at the national office:

Pending applicationRegistration

The national office must certify that the IA is the same as the basis

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Extensions of ProtectionThe applicant for IA designates the countries where it want its protection to be extended.This can be done at the time the IA is filed—or later, as a subsequent designation.

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Examination

If the IA meets all the formalities of WIPO, including payment of the fees in Swiss Francs, each requested extension of protection is sent to the national office for consideration.The national office will evaluate the request on the basis of its own laws.

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BenefitsProvides for the centralized acquisition, maintenance and management of trademark rights around the world by filing a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated.Appoint a representative before the WIPO Change name or address of holder or representativeCancel some or all goods/services in IR, and thus for all DCPsRecord a license Restrict holder’s right of disposal

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Considerations

National office only has 12 months—or 18 months at most to refuse registration.

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Trademark Law Treaty: Procedural Treaty

Article 2: (1) Applies to visible signs;

- does not apply to holograms; - does not apply to sound and olfactory marks.

(2) Applies to marks relating to goods and services.

- does not apply to collective marks, certification marks and guarantee marks.

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Application

Article 3: What countries can require in an application

Declaration of use or intent to use.FeesLanguageSignatureMultiple-class applicationActual use

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What Countries Cannot Require

The furnishing of any certificate of, or extract from, a register of commerce;An indication of the applicant’s carrying on of any industrial or commercial activity, as well as the furnishing of evidence to that effect;An indication of the applicant’s carrying on of an activity corresponding to the goods and/or services listed in the application as well as the furnishing of evidence to that effect;The furnishing of evidence to the effect that the mark has been registered—except for Paris priority.

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Filing Date—Article 5

Can require:Request to register

Identity of applicant

Mailing address

Clear reproduction of the mark

List of goods/services

Declaration of use or intent to use

Fees

Cannot require: Anything else

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Signature—Article 8Must accept a handwritten signatureIf country accepts faxed documents, must consider communication signed if signature appears on facsimile—may require original be submitted within timeIf country accepts electronic filing, must consider signed if sender identified properly.May not require authentication—except for surrender of registration.

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Classification of Goods/Services

Goods/services may not be considered as being similar to each other simply because they are in the same class of Nice.

Goods/services may not be considered as being dissimilar to each other simply because they are not in the same class of Nice.

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Change of Address/Ownership

Article 10—Country may not request a certificate reflecting the change in name or address.Article 11—Country may not require the following proof of ownership:

Certificate from register of commerce;Indication of new owner’s commercial activity—with or without its corresponding to goods/services;Indication of transfer of good will.

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Duration and Renewal of Registration

Duration of initial and subsequent renewal—10 yearsCountry may not require:

Reproduction of the markProof of registration or renewal in another country;A declaration or proof concerning use of the mark.

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Singapore TreatyThe Diplomatic Conference for the negotiation and adoption of the Revised Trademark Law Treaty was held in Singapore, March 13-28, 2006, under the auspices of the World Intellectual Property Organization (WIPO).The treaty is the product of 7 working sessions of the WIPO Standing Committee on the Law of Trademarks, Geographical Indications and Industrial Designs (SCT).This treaty updates the 1994 Trademark Law Treaty to which the U.S. is a party.

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Electronic Communication Provisions

The Singapore Treaty allows for Offices to take advantage of electronic communication systems as an efficient and cost saving alternative to paper communications, at such time that the Office is ready to embrace the technology.

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License Recordal ProvisionsThe license recordal provisions will reduce the formalities that trademark owners must face when doing business in a country that is a Party to the Singapore Treaty that requires recordal and will reduce the damaging effects that can result from failure to record a license in those jurisdictions.For companies with significant licensing practices, this will represent an immense cost savings.

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AssemblyThe Assembly provisions create a more attractive treaty for WIPO Member States to join since the built-in review mechanism allows for adapting the treaty to changing times.

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Relief Measures when Time Limits are Missed:

in cases in which a time limit has been missed for an action in a procedure relating to an application or registration.

(i) extension of the time limit; (ii) continued processing; and (iii) reinstatement of rights if the trademark office finds that the failure to meet the time limit occurred despite due care taken, or if the failure was unintentional.

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Non-Traditional Marks

Now can applied to all signs registrable under the national law of any Contracting Party, including non-visible signs such as sounds and smells, in addition to nontraditional marks such as three-dimensional marks and holograms.

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Entry into Force

The Treaty shall enter into force three months after ten States or intergovernmental organizations having a regional trademark office have deposited their instruments of ratification or accession.

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Membership

Paris Convention—172

TRIPS—151

Madrid Protocol—74

Trademark Law Treaty—39

Singapore Treaty—2 ratifications

Nice Agreement (Classification)—81

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Thank you

Nancy OmelkoOffice of Intellectual Property Policy

and Enforcementnancy.omelko@uspto.gov

571-272-9300