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International trade mark laws

2004-12-12
 

It is important to note that although there are systems which facilitate the filing, registration or enforcement of trade mark rights in more than one jurisdiction on a regional or global basis (eg. the Madrid and CTM systems, see further below), it is currently not possible to file and obtain a single trade mark registration which will automatically apply around the world. Trade mark laws are territorial in nature and generally apply only in the applicable country or jurisdiction, a quality which is sometimes referred to as ‘territoriality’.

The inherent limitations of the territorial application of trade mark laws have been mitigated by various intellectual property treaties. One such treaty is the WTO (formerly GATT) Agreement on Trade-Related Aspects of Intellectual Property Rights ('TRIPs'). Amongst other things, TRIPs generally requires that the trade mark laws of member jurisdictions are compatible with each other, a quality which is known as ‘harmonisation’. For example, Article 15(1) of TRIPs provides a definition for ‘sign’ which is used as or forms part of the definition of a 'trade mark' contained in the trade mark legislation of many jurisdictions around the world.

Foremost amongst the systems which facilitate registration of trade marks in multiple jurisdictions is the Madrid system, which provides a centrally administered system of obtaining a bundle of single jurisdiction trade mark registrations based on an ‘international registration’. The Madrid system was established by the Madrid Agreement Concerning the International Registration of Marks (which entered into force in 1892) and the Protocol relating to the Madrid Agreement (which came into operation on 1 April 1996). These international treaties are commonly known, respectively, as the ‘Madrid Agreement’ or ‘the Agreement’, and ‘the Madrid Protocol’ or ‘the Protocol’. Similarly, the Madrid system itself is often simply termed ‘Madrid’.

The Madrid system provides a mechanism whereby a trademark owner who has an existing trademark application or registration (known as the 'basic application' or 'basic registration') in a member jurisdiction may obtain an ‘international registration’ for their trademark from the World Intellectual Property Organization. The trademark owner may then extend the protection afforded to the international registration to one or more member jurisdictions, a process known as ‘designation’. A useful feature of the Madrid system is that this protection may generally be extended to additional jurisdictions at any time, such that international trade mark protection can be extended to new jurisdictions which subsequently join Madrid, or to such other jurisdictions as the trade mark owner may choose.

As of 24 September 2004, there are 77 members comprising the Madrid Union of jurisdictions which have become party to the Agreement or the Protocol or both. The primary reason why the Protocol - which in 2004 has been in operation for less than 10 years and has 66 members - is more popular than the Agreement - which has been in operation for more than 110 years and has 55 members - is that the Protocol introduced a number of changes to the Madrid system which significantly enhanced its usefulness to trademark owners. For example, under the Protocol it is possible to obtain an international registration based on a pending trade mark application, so that a trade mark owner can effectively apply for international registration concurrently with or immediately after filing an application in a member jurisdiction. By comparison, the Agreement requires that the trade mark owner already holds an existing registration in a member jurisdiction, which may often take many months and sometimes years to obtain in the first place. In addition, the Agreement does not provide the option to ‘convert’ international registrations which have been ‘centrally attacked’ (see below).

One disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of the basic application or basic registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent as the basic application or basic registration. The protection of the international registration in each designated member jurisdiction will therefore be limited to this extent. The process of attacking the basic application or basic registration for this purpose is generally known as ‘central attack’. Under the Madrid Protocol the effects of a successful central attack can be mitigated by transforming the international registration into a series of applications in each jurisdictions designated by the international registration, a process known as ‘conversion’. Although conversion is an expensive option of last resort, the resulting applications will receive the registration date of the international registration as their filing date.

In 1997, less than half of a percent of international registrations were canceled as a result of central attack. (Source: World Intellectual Property Organisation, www.wipo.int/madrid/en/)

Two significant recent developments in international trade mark law were the accession of the United States and the European Union to the Madrid Protocol on 2 November 2003 and 1 October 2004, respectively. With the addition of these jurisdictions to the Protocol most major trading jurisdictions have joined the Madrid system.

The Community Trade Mark system is the supranational trade mark system which applies in the European Union, whereby registration of a trade mark with the Office of Harmonisation in the Internal Market (Trade Marks and Designs) 'OHIM' (ie. the EU trade mark office), leads to a registration which is effective throughout the EU as a whole members. The CTM system is therefore said to be unitary in character, in that a CTM registration applies indivisibly across the entire EU. However, the CTM system exists in parallel to the existing national trade mark registration systems of EU member states and does not replace these systems. See also European Union trade mark law.

Other supranational trade mark systems include the system in operation in Belgium, the Netherlands and Luxembourg, ie. Benelux.



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