International Agreements Madrid Protocol, Trademark Law Treaty by jfp20412

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									   International Agreements: Madrid Protocol,
Trademark Law Treaty, and Singapore Treaty on the
               Law of Trademarks
             Global Intellectual Property Academy
                         Amman, Jordan
                     November 5 - 8, 2007


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




                                                           1
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 Treatment
Article 4—Right of Priority
Article 6—Well-known Marks
Article 6ter—State Emblems, Official
Hallmarks
Article 6quinquies—Refusal Limitations
  infringing; non-distinctive; contrary to
  morality.
                                             3
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
                                       4
           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 matter
Member countries:
  May require that signs be visually perceptible
  May require use
  Must publish before or promptly after registration
  Must afford an opportunity for petitions to cancel.
  May afford opportunity to oppose registration.




                                                        6
     TRIPs—Trademarks
         (continued)
Article 16—Describes rights conferred
Registered trademark owners have the exclusive
right to prevent third parties from using identical or
similar signs.
Article 6bis of Paris shall apply to service marks
In 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.

                                                     7
    TRIPs—Trademarks
        (continued)
Article 17—Exceptions—such as fair use
Article 18—Term of Protection and
Renewal—no less than 7 years
Article 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 prohibited
  Right to assign with or without transfer of
  business

                                                8
TRIPs—Geographical Indications
          (GIs)
  Article 22—Defines GIs—Provides legal
  means of protection for rightholders
  Article23—Additional Protection for GIs
  for wines and spirits
  Article 24—International Negotiations;
  Exceptions


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       Madrid Protocol
       A Filing Treaty
International Application (IA) filed
through national trademark office
The IA must have a basis at the national
office:
  Pending application
  Registration
The national office must certify that the
IA is the same as the basis

                                            10
Extensions of Protection
The 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.



                                        11
       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.

                                     12
               Benefits
Provides 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 representative
Cancel some or all goods/services in IR, and thus for
all DCPs
Record a license
Restrict holder’s right of disposal


                                                       13
      Considerations
National office only has 12 months—or
18 months at most to refuse
registration.




                                        14
    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.



                                                          15
          Application
Article 3: What countries can require in
an application
  Declaration of use or intent to use.
  Fees
  Language
  Signature
  Multiple-class application
  Actual use

                                         16
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.

                                                        17
  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
                                        18
   Signature—Article 8
Must accept a handwritten signature
If country accepts faxed documents, must
consider communication signed if signature
appears on facsimile—may require original
be submitted within time
If country accepts electronic filing, must
consider signed if sender identified properly.
May not require authentication—except for
surrender of registration.

                                                 19
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.
                                         20
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.

                                                    21
 Duration and Renewal of
       Registration
Duration of initial and subsequent
renewal—10 years
Country may not require:
  Reproduction of the mark
  Proof of registration or renewal in another
  country;
  A declaration or proof concerning use of
  the mark.
                                                22
      Singapore Treaty
The 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.

                                                    23
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.

                                      24
License Recordal Provisions
 The 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.
                                               25
             Assembly
The 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.




                                                    26
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.

                                                 27
    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.



                                      29
       Membership
Paris Convention—172
TRIPS—151
Madrid Protocol—74
Trademark Law Treaty—39
Singapore Treaty—2 ratifications
Nice Agreement (Classification)—81

                                     30
          Thank you

              Nancy Omelko
Office of Intellectual Property Policy and
                Enforcement
        nancy.omelko@uspto.gov
              571-272-9300


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