Use - a useful concept in trade mark law – comparing vietnamese, eu and us law

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Joint Swedish-Vietnamese Master’s Programme MASTER’S THESIS “Use”- A Useful Concept in Trade Mark Law Comparing Vietnamese, EU and US law. SUPERVISORS: Han Henrik Lidgard Pham Van Tuyet Preface and Acknowledgements A trade mark is not a concrete product as such but it is important to an undertaking wishing to enter the market and improve his reputation there. In fact, a trade mark is a type of intellectual property right and one which is infringed more easily than others; the protection of trade marks has both a national and global scope. In order to be protected, trade marks must satisfy certain requirements. In general, distinctiveness is the most essential of these requirements and is normally inherent in a good trademark, but distinctiveness can also be acquired through use. Use is a complicated but very useful concept in trade mark law. This issue is treated in many countries but remains vague in Vietnamese legislation. I think the topic is very interesting and I decided to choose it for my master thesis. I would like to express my heartfelt gratitude to my supervisors, Pro. Han Henrik Lidgard and Dr. Pham Van Tuyet who supported me, made valuable comments and gave me precious advices to improve my paper. I am grateful to Dr. Christoffer Wong for his guidance and help during my course. I would also express my special thanks to the professors in the Law faculty of Lund University and the professors of Ha Noi Law University for sharing their knowledge with me. I would like to express my sincere thankfulness to my friends and my colleagues for their warm support, help and love. Finally, I am grateful to my parents, husband and children who encouraged me throughout my studies and my work on this paper. Even if I tried my best, my thesis contains many shortcomings. I would be grateful for any further comments and suggestions regarding my thesis. 1 Table of Contents Preface and Acknowledgements .................................................................................. 1 Table of Contents ......................................................................................................... 2 Abbreviations ............................................................................................................... 4 Executive Summary ..................................................................................................... 5 1. Introduction.................................................................................................... 7 1.1 1.2 1.3 1.4 1.5 1.6 Rationale ........................................................................................................ 7 Purpose and Research Questions ................................................................... 7 Method ........................................................................................................... 8 Delimitation ................................................................................................... 8 Research Sources ........................................................................................... 8 Main Content ................................................................................................. 8 2. Some Issues Relating to Trade Marks and Distinctiveness ........................... 9 2.1 2.1.1 2.1.2 2.1.3 2.1.4 2.1.5 Definition of Trade Mark under International and National Law.................. 9 International Law ...................................................................................... 9 Vietnamese Law ...................................................................................... 10 EU Law ................................................................................................... 10 US Trademarks Law ............................................................................... 13 Brief Conclusion ..................................................................................... 14 2.2 2.2.1 2.2.2 2.2.3 International Agreements Regulating Trade Marks..................................... 15 The Paris Convention .............................................................................. 15 The Madrid System ................................................................................. 16 TRIPs ...................................................................................................... 17 2.3 2.3.1 2.3.2 2.3.3 Distinctiveness as a Requirement for Registration ...................................... 19 The Notion of Distinctiveness in Trade Mark Law................................. 19 Determining Distinctiveness ................................................................... 19 Distinctiveness under National Trade Mark Law ................................... 20 3. Acquiring Distinctiveness through Use ....................................................... 29 3.1 3.1.1 3.1.2 The Notion of Use in Trade Mark Law and the Importance of Use. ........... 29 The Notion of Use in Trade Mark Law................................................... 29 The Importance of Trade Mark Use ........................................................ 30 3.2 3.2.1 3.2.2 Acquiring Distinctiveness Through Use in Vietnam ................................... 31 Elements Making a Trade Mark Distinctive Through Use ..................... 31 Certain Trade Marks can Never Acquire Distinctiveness through Use .. 33 3.3 3.3.1 3.3.2 Acquiring Distinctiveness in the EU............................................................ 34 Elements Making a Trade Mark Distinctive Through Use ..................... 34 Certain Trade Marks Can Never Acquire Distinctiveness through Use . 39 3.4 3.4.1 3.4.2 Acquiring Distinctiveness in US.................................................................. 42 Secondary Meaning and Descriptiveness................................................ 42 Elements Making a Trade Mark Distinctive Through Use ..................... 44 2 3.4.3 4. 4.1 4.2 4.3 4.4 5. Certain Trade Marks can Never Acquire Distinctiveness Through Use . 46 Comparative Analysis and some Guidance for Vietnamese IP Law ........... 47 The Definition of Trade Mark...................................................................... 47 Signs can Acquired Distinctiveness Through Use....................................... 47 Elements Making Trade Mark Distinctive Through Use and Examining Distinctiveness ............................................................................................. 49 Certain Trade Mark Can Never Acquired Distinctiveness Through Use .... 50 Conclusion ................................................................................................... 51 Table of Statutes and other Legal Instruments........................................................... 52 International Treaties and Conventions ..................................................................... 52 National Legislations ................................................................................................. 52 Vietnam 52 European Union ......................................................................................................... 52 United State of America............................................................................................. 53 Table of Cases ............................................................................................................ 53 Bibliography............................................................................................................... 55 Monographs ............................................................................................................... 55 Articles in Journals, Anthologies etc. ........................................................................ 55 Internet Resources ...................................................................................................... 55 Official Reports and other Documents....................................................................... 56 Abbreviations Art. BoA CFI ECJ EU Ibid. IP IR No. NOIP OHIM TMEP US Article Boad of Apeal The Court of First Instance The European Court of Justice European Union Ibiden Intellectual property Commission Regulation (EC)No.40/94 No. 2868/95 Number Nation Office of Intellectual Property of Vietnam The Office for Harmonisation in the Internal Market Trademark Manual of Examining Procedure United States of America 4 Executive Summary The essential function of a trade mark is to distinguish one undertaking and/or its products from the products of another. Distinctiveness is a central criterion during the registration process. Distinctiveness may arise in two ways: inherent distinctiveness or distinctiveness through use. The thesis investigates how trademarks acquire distinctiveness through use. The concept of “use” is fundamental to trade mark law in many countries. Is the concept always understood in the same way? In my country, Vietnam, this issue is regulated by Intellectual property law but the notion of “use” remains vague and unexplained. Therefore, I want to compare Vietnamese, EU and US law on how trade marks may become distinctive through use and draw conclusions as to how Vietnam can improve its legislation. I chose EU and US law because they are developed regions with a long tradition of trade mark law and development. In this thesis, I use various methods to deal with my subject. A descriptive, traditional legal method will be used to analyse regulations, doctrines and cases in Vietnamese, EU and US trade mark law with the focus always on how trademarks may become distinctive through use. An analytical and comparative method is used to compare Vietnamese law, EU law and US law. I also use the synthetic method to give opinions and brief conclusions on each issue. The thesis will only investigate how trade marks may become distinctive through use and what elements make trade marks without any inherent distinctive character gain such distinctiveness. In addition, the thesis only deals with Vietnamese, European Community and US trade mark legislation The thesis is divided into 5 parts: In the first part, there are some general remarks concerning the rationale for the choice of topic and the methods used for researching and delimiting it. In the second part, certain general trade mark issues are reviewed. I refer to international agreements in order to underline that trade marks are important not only in each nation but also throughout the world. In this part, a definition of trade mark is given and distinctive character is emphasized as a requirement for registration. 5 In part 3, the thesis will investigate how trade marks acquire distinctiveness through use in Vietnam, the EU and the US. Based on statutes, doctrine and cases, I will focus on how signs can acquire distinctiveness through use and while certain trade marks can never acquire distinctiveness in this way. Part 4 is a comparative analysis of the issues mentioned in chapter 2, contrasting separately Vietnam - EU, Vietnam - US and EU – US. I will investigate similarities and differences between each of these pairs and give some suggestions for improving Vietnamese legislation In part 5, I will draw some brief general conclusions. 6 1. 1.1 Introduction Rationale Intellectual property plays an important role in the industrial development process. Director General Arpad Bogsch introduced the World Intellectual Property Organization Conference at the Louvre, Paris on June 1-3, 19941 and said that: Intellectual Property’s prime aim is the recognition of the moral and economic value of intellectual creation in the cultural, social and economic development of nations. Trade mark is one of area of intellectual property. As we know, a trade mark is not a product but it has great significance in commerce. The essential function of the mark is to distinguish one undertaking and/or its products from the products of another. It can give the consumer a guarantee of the identity and quality of a product. This distinctive function is the main condition for registration. It is impossible to accept all signs that undertakings register as trademarks. There are many grounds for refusal, including a lack of distinctiveness. However, a trade mark may become distinctive through use. What is “use”? What elements make unregistered trade marks, which do not otherwise meet distinctiveness requirements, become distinctive through use? The notion of “use” in trade mark law is regulated in many countries but often in different ways. Vietnamese law does attempt to regulate it, but the notion remains vague and unexplained. Investigating Vietnamese law by comparing it to EU and US law is interesting. My master thesis thus deals with “Use”- A useful concept in trade mark law – Comparing Vietnamese, EU and US law” 1.2 Purpose and Research Questions The purpose of the thesis is to compare Vietnamese, EU and US law on how trade marks may become distinctive through use and to draw conclusions as to how Vietnam can improve its legislation. The research questions are: - How do trade marks acquire distinctiveness through use? - Which trade marks can never acquire distinctiveness through use? - How to improve Vietnamese law on this issue? Trittion. G (2002), p.3. 7 1.3 Method A descriptive, traditional legal method will be used to analyse regulations, doctrines and cases in Vietnamese and the EU and US trade mark law with the focus always on how trademarks may become distinctive through use. Source for my work will be trade mark legislation case law and legal theories, opinions and commentaries Because this is a work which refers to the relevant position in several countries, an analytical and comparative method is used to compare Vietnamese law, EU law and US law regarding how trade marks may acquire distinctiveness through use. Based on the factual presentation and the analytical comparison, the author will use a synthetic method to give her opinions and brief conclusions on each issue. 1.4 Delimitation Distinctiveness may arise in two ways: “inherent distinctiveness” or “acquiring distinctiveness through use”. The thesis only investigates how trade marks acquire distinctiveness through use. The thesis also only deals with Vietnamese, European Community and US trade mark law. The reason for my selection of the two areas of comparison is that they are two distinct legal systems with different approaches while both of them have a long tradition in and experience of trade mark law. 1.5 Research Sources - 1.6 Trade mark legislation in Viet Nam, EU, US Cases Legal theories, articles, opinions, commentaries… Main Content Part 1: Introduction Part 2: Some issues relating to trade marks and distinctiveness Part 3: Acquiring distinctiveness through use Part 4: Comparative analysis and some guidance for Vietnamese IP law Part 5: Conclusion 8 2. 2.1 Some Issues Relating to Trade Marks and Distinctiveness Definition of Trade Mark under International and National Law 2.1.1 International Law Owing to the importance of trade marks, there are many international agreements in the trade mark field. They include the Paris Convention, the Madrid system and TRIPs which all have members from all over the world. None of these Agreements have however defined the concept “trade mark” except for TRIPs. Art. 15 of TRIPs stated: 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. From this, it seems that three points are relevant and will need to be considered: Firstly, a trademark consists of any sign, or any combination of signs. Such signs which can be trade marks are words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs; Secondly, such signs may be visually perceptible or any signs which shall be eligible for registration as trademarks; Thirdly, such signs which are capable of distinguishing the goods or services of one undertaking from those of other undertakings. In brief, the basic notion of the trade mark under international law is general and flexible. Members can provide their own definition based on their social and economic needs. References to trade marks include service marks unless otherwise stated. 2.1.2 Vietnamese Law Vietnam is a member of the major international trade mark treaties including the Paris Convention and the Madrid International Trade Mark Registration System (Madrid Agreement and Madrid Protocol). In the past, intellectual property rights in Vietnam were governed by various codes, decrees and circulars, as well as by internal regulations issued by the NOIP. The new IP law was promulgated in late 2005 and came into effect in July 20062. There is no provision of Vietnamese law which gives a definition of “trade mark”. In the IP law, some help is to be found in the section on the interpretation of terminologies (Art4 (16)). According to this, a trade mark is “any sign used to distinguish goods or services of different organizations and individuals”. However, not all signs can seek protection as trade marks. There are general requirements for marks to be eligible for protection under Art 72, which provides that: “A mark shall be eligible for protection if it meets the following conditions: To be a visible sign in the form of letters, words, pictures, figures, including threedimensional figures or a combination thereof, represented in one or more colours; To be capable of distinguishing goods or services of the mark owners from those of others” From this, a sign may only become a trade mark if it satisfies two conditions. The first is that it is a “visible sign”. This condition is narrower than the provision in TRIPs on “any signs”. This mean that, smell signs and sound signs cannot be registered as a trade mark under Vietnamese law. The second, “capable of distinguishing” is a compulsory condition for a trade mark. This also serves the main function of a trade mark. This character is to be found in international agreements on trade marks and in the laws of other countries. 2.1.3 EU Law A trade mark definition under EU law is to be found in Directive No.89/1043 and Regulation No 40/94.4 In order to be capable of registration, a mark must fall within the definition of a trade mark as set out in Art.2 of Directive 89/104 and Art.4 of the The Law on Intellectual property was approved by the Vietnamese Parliament in 29 November, 2005. Law No.50/2005/QH11, legislature XI, Session 8, came into force in 1 July 2006. First Council Directive 89/104/EEC of December 21st 1988 approximating the laws of the Member States relating to trade mark. Council Regulation (EC) No40/94 of 20 December 1993 on the Community trade mark. 10 Regulation No.40/94. The article is entitled “Signs of which a trade mark may consist” and provides: A community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertaking. This contains three basis requirements. To qualify a trade mark, the candidate must be (1) a sign which (2) is capable of being represented graphically and which (3) is capable of distinguishing the goods and services of one undertaking from those of other undertakings. The word “sign” in this context is understood to be very wide and makes the definition of trade mark “flexible and open-ended”5. Although Art.4 of the Regulation No.40/94 gives a list of signs, i.e., words including personal names, designs, letters, numerals, or the shape of goods or their packaging, they are not an exhaustive list. These signs are merely the ones most frequently used by undertakings to identify their goods or services. In fact, there are many unusual signs which do not fall within this list but are still registered by the competent authority. Although not specifically stated, “sign” in this broad definition could include slogans, sounds, smell and gestures. As the Board of Appeal at the OHIM said, the notion of a sign “is to be interpreted as a very broad, open and general term encompassing all conceivable types of marks (including, for example, sound marks and three-dimensional marks)”.6 Nonetheless, in order to be registered, the sign must be “capable of being represented graphically”. The purpose of its character is to show what the trade mark is. In other words, it must be possible to understand the sign and a trade mark must be perceivable by consumers through one, or even more, of the five senses. In recent years, the issue of graphical representation has become the focus of attention in relation to smell, sound and colour marks. For example, the smell of freshly cut grass for tennis balls, the sound of NOKIA,7 the sound mark of British Telecom’s beeps on the speaking clock, the three-dimensional form of the COCACOLA bottle8… Kitchin, D (2005) p.13 R122/98-3, Wm. Wrinley, para.17 Sandri. S (2003), Non-convention trade marks and community law, p.332, 333 Annard. R, et al (1998), Guide to Community trade mark, p.29. The requirement of graphic representation is necessary for the following reasons. The first is to enable publicity to be given to the fact that applicant is seeking registration. The second reason is to determine the scope of existing trade mark rights and to allow the owner of earlier marks to check for similar marks in new applications. The third reason is to make bureaucratic handling, classification and comparison with other signs more manageable. How is the phrase “capable of being represented graphically” to be understood? The basic rules governing representation and the community trade mark are set out in Rule 3 of the IR.9 This states that if the applicant does not wish to claim any special graphic feature or colour the mark must be reproduced in normal script, for example by typing the letters, numerals and signs in the space provided in the application. The use of small and capital letters is permitted. Paragraph (2) and (3) of Rule 3 then go on to state that, in other cases the application must indicate this fact and the mark must be reproduced on a separate sheet of paper. The implication of Rule 3(1) of the IR is that non-stylised word, numeral and letter marks may simple be typed or written into the applicant form. However, this could be made clearer on the OHIM application form, which requires the applicant to represent anything other than a work mark on the separate sheet and to specify in the application the type of mark applied for. Rule 3(3) of IR state that where registration of a three dimensional mark is applied for the application must indicate this fact. The representation must consist of a photographic reproduction or a graphic representation of the mark. Up to six different perspectives may be supplied on the one sheet. Where registration in colour is applied for the application must indicate this and indicate the colours making up the mark. The applicant is free to use his own description of the colours. The reproduction supplied must consist of the colours applied for. Rule 3 of the IR gives no guidance on the representation of a sound mark other than that it must be on a separate sheet of paper. The OHIM Examination Guidelines10 state that musical notation may be an acceptable form of graphic representation. Commission Regulation (EC) No. 2868/95 Examination Guideline, 8.2. 12 There is no mention of the smell/ scent mark in either the IR or the Guidelines 3.7. Such marks are very difficult to represent, especially as they are not natural smells and they are often refused registration as trade marks. In Ralf Siekmann, the olfactory smell was not registered as a trade mark because “the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements”.11 A graphic representation was one which utilizes images, lines or characters. In order to render a sign registrable as a trade mark the graphic representation must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.12 There are many different techniques that applicants may use to represent their mark graphically. For example, “word marks” are written, device or “figurative” marks are represented by a picture.13 The basis requirement of a trade mark is that is “capable of distinguishing the goods and services of one undertaking from those of other undertaking”. This issue will be examined in part 2.3 of this Chapter. 2.1.4 US Trademarks Law US trade marks are governed by the provisions of the Lanham Act14. In contrast to Vietnamese and EU trade mark law, the Lanham Act lays down statutory boundaries for trademarks and service marks. According to Sec.1127 Lanham Act, the term “trademark” is explained as follows: The term "trademark" includes any word, name, symbol, or device, or any combination thereof (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured Case C-273/00 [2000] ECRI-11737, Ralf Sieckmann, para. 73 Case C-273/00 [2000] ECRI-11737, Ralf Sieckmann, para. 55 Commission Regulation (EC)No.2868/95, Rule 3(5) The current federal trademark statute is the Lanham Act of 1946, most recently amended in 1996, and codified in Title 15 of the United States Code. Its purpose is to eliminate unfair competition in marketing goods and services and to provide the owners of marks with protection against confusingly similar marks. It covers such areas as when owners of mark are entitled to federal protection for infringement, the types of protections available and the procedure for registering marks. It allows for registration of service marks. or sold by others and to indicate the source of the goods, even if that source is unknown. The definition conflates two very different functions of the trade mark: first, to indicate the source of goods, and second, to distinguish those goods from the goods of others. Traditionally, trademark protection in the United States was reserved for marks that are easily perceived as source identifiers, such as words, names, acronyms, logos, and graphic symbols. However, it has gradually extended trademark protection to other categories of marks that are not so easily perceived as source identifiers, such as product configurations, colors, sounds, scents, motions, and holograms. Sec.1052 Lanham Act established which marks may qualify for registration on the Principal Register. Provided that a mark distinguishes its goods from those of others, there is a presumption in favor of registration unless registration is barred by virtue of certain specific prohibitions: “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature…”. Thus, any sign which may be distinguished from the goods of others is potentially a trademark. 2.1.5 Brief Conclusion Notwithstanding what a trade mark is, that it is“capable of distinguishing” is always an essential characteristic. No sign will become a trade mark if it does not satisfy this. The trademark laws of Vietnam, the EU and the US do not provide full definitions of the term. The notion of trade mark is understood through other provisions which listed signs, in particular conventional ones, which may be registered as trade marks. Non-conventional signs (smell, sound, slogan…) were not well covered by existing law. Note that Vietnamese law only recognizes “visual signs” while the EU and the US both accept “any sign” as being capable of being trade marks. Although there are differences in the understanding of trade marks, in all three jurisdictions, they serve the same function or purpose. And having a distinctive feature is always a condition for registration. 14 2.2 Regulating Trade Marks The Paris Convention15 Internation al Agreements 2.2.1 The Paris Convention signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It can be seen, indeed, as the “ancestor” of later conventions in the field. The Convention applies to industrial property in the widest sense, including patents, marks, industrial designs, utility models (a kind of “small patent” provided for by the laws of some countries), trade names (designations under which an industrial or commercial activity is carried on), geographical indications (indications of source and appellations of origin) and the repression of unfair competition. (Copyright and unregistered designs are covered by the Bern Copyright Convention of 1886) The substantive provisions of the Convention fall into three main categories: national treatment, right of priority, common rules. Under the provisions on national treatment, each Convention country must grant the same protection to nationals of the other Convention countries as it grants to its own nationals. These provisions also protect nationals of non-convention countries if they are domiciled or have a real and effective industrial or commercial establishment in a Convention country. The second important element was establishment of a right of priority in the case of patents (and utility models, where they exist), marks and industrial designs. This right means that, the applicant who files the first application in one of the Convention countries may, within a certain period of time, apply for protection in any other Convention country. These later applications will be regarded as if they had been filed on the same day as the first application. The Convention lays down a few common rules which all the Convention countries must follow. As to trade marks, the most important common rule is the independence of the trade mark in different member states. But there is no regulation of the conditions for the filing and registration of marks. These issues are determined in each Convention country by domestic law. 15 The Paris Convention for the Protection of Industrial Property was signed on 20 March 1883. It came into effect on 7 March 1884 and has been revised in Brussels in 1900, in Washington in 1911, at the Hague in 1925, in London in 1934, in Lisbon in 1958 and in Stockholm in 1967; it was last amended in 1979. In relation to trade marks, the Convention obliges its signatories: (i) to protect well-known marks belonging to nationals of Convention countries (Art 6bis); (ii) to prevent the use and registration of “armorial bearing, flags and emblems” of Convention countries (Art 6ter); (iii) to provide effective protection against unfair competition (Art 10bis) and; (iv) to accept for registration any trade mark which has been duly registered in its countries of origin (Art 6quinquies – the so-called “telle-quelle” obligation) This Convention provides certain overriding principles with the aim of facilitating international trade and collaboration. Substantive provisions regarding protection of intellectual property rights are not covered and nor are the distinctive features of trade marks. 2.2.2 The Madrid System The “Madrid system” collectively refers to two separate treaties: (a) The Madrid Agreement concerning the International Registration of Marks, which was concluded in 1891, entered into force in 1892 and was last revised at Stockholm in 1967 (the Madrid Agreement); and (b) The Protocol Relating to the Madrid Agreement which was adopted in 1989, entered in force on 1 December 1995 and came to operation on April 1996 (The Madrid Protocol) Each treaty provides for the international registration of mark for goods and services and creates what is essentially a filing system. While the Paris Convention was of some assistance to transnational traders, it failed to create a mechanism for international applications for marks. However, the Madrid system provides just such a mechanism. Under these arrangements, after making a “home registration” or “home application”, an individual or company may apply to the Bureau of the WIPO for an international registration. The Bureau passes the application on to relevant national trade mark offices. If the Offices of the contracting parties do not refuse the application within the time limit given, it is treated as registered. The simplification of the process of international registration has obvious advantages for trade mark owners. The Madrid Agreement built upon the basis tenets of the Paris Convention, and indeed became part of it, but only for those countries that ratified the new treaty. 16 The Madrid protocol makes the Madrid system more attractive to non members. Similar to the Madrid Agreement, the Madrid Protocol provide for trade mark registration in several countries through the filing of a single application. However the Protocol differs from the Agreement in a number of ways. The advantage for the trade mark owner is that by filing a single application at one office in one language with one international registration fee paid in one currency, he can obtain a single registration with one registration number and one renewal date covering a number of jurisdictions. The Madrid Protocol attempted to overcome the shortcomings of the Madrid Agreement by adopting provisions that addressed the concerns voiced against it. First, unlike the Madrid Agreement, the Madrid Protocol permits international registration to be based on a national application rather than an existing national registration. Second, it provides that if the national registration or application upon which the international application was based on is cancelled; the owner of the international registration may convert the international registration into distinct national applications, while retaining the effective filing date of the original international registration. Third, it allows filings in English as well as in French, whereas the Madrid Agreement, by requiting filing to be in French, presents greater procedural hurdles for non-francophone countries. Four, it enables countries to charge fees that cover filing costs under the international application procedures. Finally, the Protocol extends the deadlines within which countries have to notify applicants of the denial of their national applications. Of these innovations, the most important is that, the Protocol was the first system that provided for a truly international application system. In brief, the Madrid system consists of two treaties which only relate to trade marks and not to other industrial property rights. 2.2.3 TRIPs 16 TRIPs is an international agreement administered by the WTO) that sets down minimum standards for many forms of intellectual property regulation. It was 16 TRIPs is an abbreviation for “Agreement on Trade-Related Aspects of Intellectual Property Rights”. The TRIPS Agreement is Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco on 15 April 1994. negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994. The areas of intellectual property that it covers are: copyright and related rights ; trademarks including service marks; geographical indications; industrial designs; patents; the layout-designs of integrated circuits; and undisclosed information . The three main features of the Agreement are: Standards: This is the first international agreement that sets out the minimum standards of protection for many forms of intellectual property. Enforcement. The second main set of provisions deals with domestic procedures and remedies for the enforcement of intellectual property rights. This is the first international agreement which lays down certain general principles applicable to all intellectual property right enforcement procedures. In addition, it contains provisions on civil and administrative procedures and remedies, provisional measures, special requirements related to border measures and criminal procedures, which specify, in a certain amount of detail, the procedures and remedies that must be available so that right holders can effectively enforce their rights. Dispute settlement. This is also the first international intellectual property agreement covering disputes between WTO Members about whether they respect the TRIPS obligations which are subject to the WTO's dispute settlement procedures. The TRIPS Agreement is a minimum standards agreement, which allows Members to provide more extensive protection of intellectual property if they so wish. Members are left free to determine the appropriate method of implementing the provisions of the Agreement within their own legal system and practice. As to trade marks, TRIPs defines the protectable subject matter. For the first time, there is an international agreement stipulating that registration depends on distinctiveness acquired through use. “Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use” (Art15 (1)) In addition, Art 15(3) provides that: “Member may make registrability depend on use. However, actual use of a trade mark shall not be a condition for filling an application for registration.” Basing themselves on TRIPs, many countries adopted this provision in their domestic law. But the concept of “use” is not explained in the same way in each 18
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