INTERNATIONAL PROTECTION OF TRADEMARKS

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INTERNATIONAL

PROTECTION

OF

TRADEMARKS

I. INTRODUCTION

Trademarks Trademarks are signs that identify goods or services offered on a market. Trademarks are nothing new. For example, ancient Greeks and Romans stamped or  inscripted on various goods an identifying symbol or name. Today the trademark is a way to attract the public.Consumers look at trademarks to choose goods and services, which increases the role of trademarks in global marketing. The economic value of trademarks in attracting customers reuires that that firms manage and protect them comparably comparably to other  assets. Trademark Trademark laws protect an owner!s pecuniary interests in his goods. Trademarks Trademarks are used by particular manufacturers or merchants to distinguish their goods from all others. Through either use, registration, or both, a trademark owner gains the exclusive right to use that mark on his goods. The world is generally divided between the use and registration theories. Countries such as the "nited #tates reuire a trademark!s actual use  before granting the mark to an applicant. $ost other countries follow the registration rationale and grant a trademark to the first applicant regardless of that mark!s prior  use. %ny unauthori&ed use of this exclusive right by a third party constitutes trademark  infringement.% 'trademark' is generally de(fined to include any word, symbol, name, or  devi device ce or a comb combin inat atio ion n ther thereo eoff to dist distin ingu guis ish h one one set set of good goodss from from all all othe others rs.. trademarks are granted nationally by statute The industrial property system offers a legal means for such protection. )ndustrial  property rights are comparable to ownership rights. *wnership rights are exclusive rights that preclude third parties from using an ob+ect without permission industrial property rights are viewed in the same way.-owever way.-owever,, the ob+ect of industrial propertyrights is not a

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material material good. good. )nstead, )nstead, the ob+ect ob+ect can be an industria industriall model or design, design, a technical technical invention covered by a patent, a distinctive sign such as a trademark, or an indication of  geographic origin. The ownership of immaterial goods, such as those listed above, does not stem from the nature of the ob+ects. *wnership is not acuired automatically, but may  be granted by state authorities on reuest. The resulting right is governed by the principle of territoriality, territoriality, which is effective only in the country that created the right. The principle of territoriality complicates the protection of an industrial property right in international commerce. *ne who seeks protection will have to follow several filing filing proce procedur dures es and pay severa severall fees fees in each each countr country y where where protec protectio tion n is sought sought.. Furthermore, the chances of success will vary in each country. #ome regional industrial  property systems cover the territory of several independent states. For example, the uropean Community /C0 trademark, which can be applied for at the C office in %licante, #pain, provides an exclusive right that uniformly covers the territory of all fiftee fifteen n urope uropean an "nion "nion member member states states.. -oweve -owever, r, this this system system merel merely y extend extendss the  principle of territoriality territoriality in a national national context to a regional regional territory. territory. #everal international agreements have been signed to facilitate the international  protection of industrial industrial property rights. The oldestis oldestis the 1aris 1aris Convention, signed in 2334. The most recent is the %greement on Trade(Related %spects of )ntellectual 1roperty Rights /TR)1#0, included in the 2556 $arrakesh Convention that created the 7orld Trade *rgani&ation and entered into force in 2558. TR)1# is the most complete international treaty treaty in intell intellect ectua uall proper property ty.. )t provid provides es the minima minimall rules rules of prote protecti ction on for all intellectual property rights including patents, unpatented know(how, know(how, trademarks, industrial designs and models, semi(conductor chips, geographical names, copyrights, and other related rights. TR)1# is the first international treaty to introduce a system of  sanctions against members who do not enforce the minimum protection of intellectual  property rights. #everal other global and regional agreements, signed between the 1aris Convention and TR)1#, remain in force today. %ll of these conventions are interrelated

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such that an entire international system of trademark protection exists today. %greements that pre(date TR)1#, based on the 2334 1aris Convention, coexist with the reuirements of TR)1#. % few of these older agreements include9 the 2352 $adrid %greement on the )nternatio )nternational nal Registrati Registration on of Tradema Trademarks rks the 258: ;ice %greement %greement Concerning Concerning the )nternational Classification of Goods and #ervices For the 1urposes of the Registrationof  $arks the 25:4 /20 of TR)1# covers the relationship between TR)1# and the 1aris Convention.>: )t obliges all member states to comply with %rticles 2(2> and %rticle 25 of  the 1aris 1aris Conve Conventi ntion? on?ss 25@: 25@: #tockh #tockholm olm versio version. n. These These articl articles es includ includee all of the subs substa tant ntiv ivee rule ruless of the the 1ari 1ariss Conv Conven enti tion on,, with with the the exce except ptio ion n of budg budget et and and admi admini nist stra rati tive ve prov provis isio ions ns.. Ther Theref efor ore, e, TR)1 TR)1# # sign signat ator orie iess are are boun bound d by the the 1ari 1ariss Convention?s substantive provisions even if they have not ratified the 1aris Convention itself. This binding effect is described as the A1aris(plus approach.B

GENERAL PRINCIPLES

The 1aris Convention and TR)1# both include general principles for the protection of  intellectual property rights and provide specific trademark rules. The general principles deal with the substance and procedure of protection and apply to all industrial property rights. A. Principles Relating To The Substance O Protection !. The Paris Convention of 1883. The 1aris Convention Convention on the 1rotection 1rotection of )ndustrial )ndustrial

1roperty is the oldest and most important treaty with respect to industrial property rights. )t contains two basic principles of international law that members must enforce in their  reciprocal relations. The first is the national treatment principle, discussed generally in

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%rticle > and specifically as it relates to trademarks in %rticle @, sections 2 and >. The second is the principle of independence of rights, as embodied in %rticle @, section 4. a. National Treat"ent Treat"ent Principle.  The principle of national treatment is applicable to all

industrial property rights. The principle generally states that a member state may not sub+ect foreigners benefiting from the 1aris Convention to higher industrial property  protection standards than those applicable to its own citi&ens. )n addition, it is not necessary to +ustify that a trademark has been registered in the country of origin prior to regist registeri ering ng it in anothe anotherr member member state. state. For example example,, if a citi&e citi&en n or corpor corporati ation on of  #ingapore wishes to obtain an industrial property right in France, where both countries are 1aris Convention member states, the #ingapore national will obtain the right under  the same conditions as a French citi&en or corporation. The same outcome results at a multilateral level. To understand fully the practical impact of the national treatment principle, it is necess necessary ary to unders understan tand d that that a member member state state may refuse refuse indus industri trial al proper property ty rights rights  protection to citi&ens or corporations of states that are not members of the 1aris Conven Conventio tion. n. % member member state state may may also also sub+ec sub+ectt non(me non(membe mberr protec protectio tions ns to stric stricter  ter  conditions than those applicable to its own nationals. For instance, because Thailand has not ratified the 1aris Convention, a member state of the Convention could refuse to  protect industrial property rights claimed by Thai citi&ens or corporations. % member  state could also sub+ect protection for these non(members to a condition of reciprocity, residence, the payment of a supplementary fee, or anything else. The national treatment principle was the first elementary and efficient rule aimed at facilitating the international protection of industrial property rights. This principle, asserted in 2334, has now been introduced into TR)1# and applies between all TR)1# member states. b. The Principle o In#epen#ence o Rights.  "nder the principle of independence of 

rights, a trademark granted in a member state is independent from those that already exist in other member states for the same ob+ect, including in the country where it was first

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 protected. Conseuently, Conseuently, trademarks consisting of the same sign designating the same goods and belonging to the same owner in several 1aris Convention member states are independent from one another. This rule extends the national treatment principle to an extreme because the trademark owner is sub+ect exclusively to the national law of each countr country. y.The The nullif nullifica icatio tion, n, refusa refusal, l, or transf transfer er,, for exampl example, e, of the tradem trademark ark in one member state has no influence on the rights protected in another member state. The exceptions to the principle of independence include the priority right and the protection of the trademark Aas such.B The priority right in %rticle 6 is designed to facilitate the international protection of industrial property rights. 7ithin six months from the first application in a member state, the applicant may file for registration of the same trademark in other member states using the date of the first application. %s a result, disclo disclosur sures es or uses uses of the tradem trademark ark withi within n the the priori priority ty period period are not ground groundss for  nullification of the mark. This priority right exception does not apply to service marks under the 1aris Convention. The second exception is the protection of the trademark Aas suchB in %rticle %rticle quinquies. quinquies. This exception aims to solve the difficulties that arise from the existence of  different prereuisites for trademark protection in different countries. For instance, some nation national al laws laws prohib prohibit it regist registrat ration ion of number numberss or letter letters, s, where whereas as others others allow allow such such trademarks."nder such a system it would be impossible for a trademark holder to use a mark in the same form in several countries. The 1aris Convention resolves this problem  by providing that a trademark that has been registered in its country of origin in compliance with local law is to be registered in other contracting states Aas it is,B or in French, Atelle Atelle quelle.B quelle.B $. TRIP TR IPS S. TR)1# incorporates more precisely the principle of national treatment already

in force for the 1aris Convention member states. %s with the 1aris Convention, %rticle 4 of TR)1# provides for reciprocity between member states9 each member state must grant the citi&ens of fellow member states intellectual property rights protection at least as favorable as that granted to its own citi&ens. %rticle 4 also includes the exceptions contained in the 1aris Convention.

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7hile TR)1# reasserts the 1aris Convention?s principles, it goes beyond the 1aris 1aris convention convention by introducing introducing the most favored favored nation clause clause /$F;C0 for the first time in the realm realm of intellec intellectual tual property. property. %ccordi %ccording ng to %rticl %rticlee 6, AaDll AaDll advantage advantages, s, favors, privileges or immunities granted by a mDember to citi&ens of any other country will be, immediately and without further conditions extended to all other members.B -oweve -owever, r, this this provis provision ion does does not apply apply to advant advantage agess grante granted d under under intern internati ationa onall agreements entered into force prior to TR)1#, if the TR)1# Council is notified about the agreements and the advantages do not constitute an arbitrary or un+ustified discrimination against other member states. ;ational treatment and $F;C apply from the date TR)1# entered into force and extend to members benefiting from a delayed application of the agreement. -owever, these two principles Ado not apply to procedures provided for in multilateral agreements con(cluded under the auspices of the 7orld )ntellectual 1roperty *rgani&ation /7)1*0 relating to the acuisition or maintenance of intellectual property rights.B The agreements referred to are those that organi&e various systems of international or regional registration of industrial property rights, such as the $adrid %greement and $adrid 1rotocol for  trademarks, and agreements that might be concluded on this basis in the future.

%. Principles Relating to the Proce#ure o Protection

!. Th Thee Par Paris is Con& Con&en enti tion. on.

%rticle 2> of the 1aris Convention provides provides the relevant procedural provisions, provisions, stating that each member state must Aestablish a special industrial property service, and a central office for the communication to the public of patents, utility models, industrial designs, and tradem trademark arks.B s.B Furthe Furthermo rmore, re, under under %rticle rticle 2>, each each member member state? state?ss servic servicee must must  publish an official official periodical sheet. sheet. $. TRIPS (part III and part IV). IV).

TR)1# states general principles of procedure for the acuisition and sanction of industrial  property rights that must be enforced by its members. "nder parts ))) and )< of TR)1#,

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member states must introduce procedures into their national legislation that will allow an efficient action against any infringement of intellectual property rights.$ember states also must introduce means designed to prevent any further infringement of the rights and are obligated to enforce both of the above measures Aso as to avoid the creation of   barriers to legitimate trade and to provide for safeguards against their abuse.B Furthermore, procedures and formalities reuired for the acuisition of rights must be reasonable and euitable and may not be Aunnecessarily complicated and costly,B nor  include unreasonable or un+ustified vdelays. TR)1# reuires decisions about any infringement of intellectualproperty intellectualproperty rights to  be written, reasoned, and communicated to the parties without undue delay. % member  state?s decision should be grounded on evidence only where the parties have had the opportunity to be heard.7hile member states are not reuired to organi&e a separate  +udicial system, they must provide a procedure for +udicial review of all final administrative decisions. 1art ))), sections >(8 of TR)1# provide a more detailed list of procedures and crimin criminal, al, civil, civil, and admini administr strati ative ve correc correctiv tivee measu measures res..

)n cases cases of infrin infringem gement ent,,

righ rights tsho hold lder erss may may seek seek enfo enforc rcem emen entt from from +udi +udici cial al,, admi admini nist stra rati tive ve,, and and cust custom omss authorities, through measures such as in+unctions and penal sanctions, or through the confiscation or destruction of counterfeit goods.)f infringement is threatening, the owner  may demand provisional measures such as suspension of the goods from circulation. ach member state or group of states must organi&e protection of trademarks to be in compliance not only with these general principles but also with the rules specific to trademarks.

 TRADE'AR( PROTECTION IN I N T)E PARIS UNION

The A1aris "nionB consists of the 2334 1aris Convention and a series of agreements subseuently signed within the 1aris Convention?s Convention?s framework. A. The Paris Con&ention o !**+

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7hile 7hile the 1aris 1aris Conven Conventio tion n provid provides es some some rules rules specif specific ic to certai certain n catego categorie riess of  industrial property rights, such as patents, trade(marks, and industrial designs, in general, the Convention leaves further implementation of its directives to be applied through the member states? national laws. To this extent, it achieves a limited harmoni&ation of  international trademark law. The few trademark rules provided by the 1aris Convention relate to the acuisition and content of a trademark right. !. Rules !. Rules on the Acquisition Acquisition of Rihts a. Prohibite# Signs. %ccording to the 1aris Convention, member states must prohibit

trademark protection of certain official signs such as emblems of states, signs of control and guaranty, and emblems of international intergovernmental intergovernmental organi&ations. b. Protection o ,e ,ell-no/n ll-no/n 'ars . ven if they have not been registered, well(known

marks benefit from an extended protection based on notoriety. #uch marks are protected against all unauthori&ed use, even if they appear on goods different from those for which the mark was originally registered or used. vidence of a well(known mark?s notoriety must be found in the country where the protection of the mark is sought. c. Ser Ser&ic &icee 'ars 'ars. 7hile they do not have to provide for the registration of such

marks,member states have an obligation to protect service marks under %rticle @ sexies @ sexies.. -owever, the marks may be protected by other rules such as unfair competition. #. Collecti&e 'ars . $ember states have an obligation to protect collective marks under 

%rti %rticl clee :bis. bis. Thes Thesee mark markss belo belong ng toa toa so(c so(cal alle led d asso associ ciat atio ion. n. -owe -oweve verr, such such an association?s association?s existence cannot be contrary contrary to the law of the country of origin. e. Nature o the Goo#s to /hich the 'ar is Applie# . The nature of the product to

which a trademark is applied may not impede the registration of the mark. For example, even if the marketing of certain goods is prohibited, the trademark applied to the goods may still be registered. . Te"porar0 "porar0 Protecti Protection on. $emb $ember er stat states es have have an obli obliga gati tion on to gran grantt temp tempor orar ary y

 protection for trademarks trademarks during official official international exhibitions. g. Speciic 'ention. $ember states may not reuire as a condition of protection that the

 product bear a specific specific mention of the trademark registration. registration.

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$. Rules $. Rules on the Content of Rihts a. Use. $emb $ember er stat states es may may reu reuir iree that that the the righ rights tsho hold lder er effe effect ctiv ivel ely y uses uses the the

trademark.7hen an owner fails to use the trademark within a reasonable period of time, and does not have a valid reason for the disuse, the owner may be deprived of the trademark right. b. Co-O/ners. #imultaneous use of the trademark by coowners to designate identical or 

similar products will not limit the trademark?s protection, so long as the use does not deceive the public and is not contrary to public interest. c. Grace Perio#s . % grace period of at least six months must be granted for payment of 

fees due for maintenance or renewal of the trademark right. #. Agents or Representati&es. )f a firm?s agent or representative fraudulently registers a

trademark belonging to the firm that he represents, the rightsholder may, according to nation national al law law, reues reuestt eithe eitherr the nullif nullifica icatio tion n of the mark mark or transf transfer er of the mark? mark?ss ownership. e. Illegal 'ars.  % product bearing an illegal trade or service mark will be sei&ed upon

import into the member state where the mark is entitled to legal protection. Today, the rules of the 1aris Convention must be applied under TR)1#, as discussed  below.  below. %. Con&entions %ase# on Paris

%rticle 25 of the 1aris Convention permits the conclusion of special agreements between member states. 1resently, four such special agreements exist relating to trademarks9 the $adrid %greement, the Trademark Registration Treaty, the $adrid 1rotocol, and the Trademark =aw Treaty. The $adrid %greement, Trademark Registration Treaty, and the $adrid 1rotocol are completely independent and distinct in aim and content from TR)1#. 7hereas these three agreements organi&e an international registration of trademarks, TR)1# does not deal with procedural aspects of industrial property rights. %n example of the independence of  these agreements is evident through an examination of %rticle 8 of TR)1#. %rticle 8

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 provides that national treatment treatment and $F;C do not apply to procedures procedures for the acuisition acuisition and maintenance of rights outlined in treaties concluded under auspices of the 7)1* . !. The !adrid !adrid Aree Aree"en "ent  t . The The $adrid $adrid %greeme greement nt Concer Concernin ning g the )ntern )nternati ationa onall

Registration of $arks was concluded in 2352. )t is part of the 1aris Convention, but only for ratifying countries. $ost of the industriali&ed countries have ratified the $adrid %greement, with the exception of the "nited #tates, Eapan, the "nited ingdom, )reland, and the #cand #candina inavia vian n countr countrie ies. s. The The $adrid $adrid %gree %greeme ment nt simpli simplifie fiess intern internati ationa onall registration procedures for the acuisition of trademark protection protection by providing for a single international application upon payment of a single fee. The system of the $adrid %greement may be summari&ed as follows9 a. a citi&en citi&en or an organi& organi&ation ation of a member member state state owns owns a registere registered d trademark trademark in the country of origin  b. on the basis of this initial registration, the national trademark owner applies for  international trademark registration with the )nternational ureau of the 7)1* c. in Geneva d. in the international international applicat application, ion, the applicant applicant lists lists the $adrid %greem %greement ent member  member  states in which protection is sought e. the 7)1* 7)1* distribute distributess the internationa internationall application application to each each of the listed states states f. in each each of thes thesee stat states es,, the the inte intern rnat atio iona nall appl applic icat atio ion n is treate treated d as a nati nation onal al application unless a national authority notifies the 7)1* within one year that it seek seekss to refu refuse se prot protec ecti tion on.. Ther Theref efor ore, e, the the $adr $adrid id %gree greeme ment nt unif unifie iess the the application procedure. -owever, it does not deal with the rules applicable to trademark protection that remain under the national law of each country of protection the principle of territoriality applies. applies. Huring the first five years, trademarks registered through the international procedure are dependent upon initial registration in the country of origin. This is the Acentral attack  system.B%ll trademarks issued from the international registration are void within five years from the date of international registration if the basic trademark, the trademark in the country of origin on which the international registration is based, is nullified.This

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system has been critici&ed and has motivated some countries to refuse to +oin the $adrid %greement. $. The Trade"a Trade"ar# r# Reistrati Reistration on Treat$ Treat$.. The The 7) 7)1* 1* guid guided ed the the conc conclu lusi sion on of the the

trademark Registration Treaty in 25:4. *ne of the goals of this agreement was to offer  soluti solutions ons to common commonly ly cited cited conce concerns rns with with the $adri $adrid d %greeme greement nt.. The Trade Trademar mark  k  Registration Treaty Treaty creates a new system of international trademark registration designed to gain the approval of those states that had refused to sign the $adrid %greement, including the "nited #tates. This attempt was unsuccessful with regard to the "nited #tates, which has not ratified it, diminishing much of the treaty?s force.The treaty, which entered into force in 253I, is now signed only by the #oviet "nion /now C)#0 and four  %frican countries. +. The !adrid Protocol . The $adrid 1rotocol /1rotocol0 was signed on Eune >:, 2535,

and entered into force on %pril 2, 255@ Contrary to initial hopes, the "nited #tates has not acceded to it. =ike the Trademark Registration Treaty, the 1rotocol tries to gain the appr approv oval al of thos thosee coun countr trie iess that that had had refu refuse sed d to sign sign the the $adr $adrid id %gree greeme ment nt by incorporat incorporating ing new approache approachess to internatio international nal trademar trademark k registrat registration. ion. To begin, begin, the 1rotocol expands the reach of international registration procedure by introducing nglish as a secondary procedural language. Former agreements had designated that only French  be used. *n a more substantive level, the 1rotocol permits international registration on the  basis of a national application instead of national registration. The applicant must be a citi&en, a resident, or be established in the state where the initial application was made. The national office receiving the initial national application must submit the international application.The conseuences of an international registration, according to the 1rotocol, are the same as those under the $adrid %greement in each of the countries selected by the applicant, the international application is treated as a national one. For example, if the applicant selects the uropean Community *ffice, the office of harmoni&ation in the internal market, the application is treated as an C trademark application.

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Furthermo Furthermore, re, the 1rotocol 1rotocol extends extends the deadline deadline to notify notify the applicant applicant that  protection has been denied to eighteen months. )f opposition to protection is raised by a third third party party,, the deadli deadline ne is extend extended ed an additi additiona onall seven seven months months.. The The durati duration on of   protection following an international registration is ten years, renewable under payment of a fee to the international ureau ureau of the 7)1*. 7)1*. The 1rotocol also operates to mitigate conseuences of the Acentral attack.B )f the  basic trademark is nullified, an application can be made to convert it into a national trademark with the same priority as that to which the international registration was entitl entitled ed.. This This preser preserves ves nation national al tradem trademark arks. s. %lthoug lthough h the 1rotoc 1rotocol ol is a new treaty treaty independent from the $adrid %greement and introduces new procedures for international registration, both are intended to be linked by means of a common implementation regulation, which entered into force on %pril 2, 255@. 1. The Trade"ar# %a& Treat$ Treat$.. The Trademark =aw Treaty was adopted in Geneva on

*ctober >:, 2556, and entered into force %ugust 2, 255@. )t is the result of initiatives undertaken by the 7)1* for the preparation of a new international trademark agreement. Huring the initial negotiations, started in 2535, the ambitious intent of this instrument was to span all aspects of trademark protection. %s no single acceptable solution could cover every difficulty regarding trademark protection, the Trademark =aw Treaty Treaty was finally limited to the goal of harmoni&ing and simplifying administrative procedures of  national registration by delineating registration procedure. )n addition, the Trademark  =aw Treat Treaty y elimin eliminate atess the reuir reuireme ement nt that that docume documents nts be legal legali&e i&ed d before before they they are accepted by certain national trademark officesJwhich is one of the greatest procedural difficulties. difficulties. The Trademark =aw Treaty also provides model forms that contracting states are encouraged toadopt for their national trademark offices. The provisions of the Trademark Trademark =aw Treaty are not incorporated into TR)1#, although there is partial overlap between the two. Through application of the Trademark  =aw Treaty, the procedures for national registration of trademarks are harmoni&ed with those those of other other signat signatori ories, es, which which not only only allows allows regis registra tratio tion n to take take effect effect on an international level, but also to do so rapidly. The The effect of %rticle @> of TR)1# reali&es the

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same aim, though in general terms and in relation to all types of intellectual property rights. TR)1# reuires Acompliance with reasonable procedures and formalitiesB and  provides for +udicial review of any final administrative administrative decision, thus generally allowing a unified procedure for international trademark registration. registration.

TRADE'AR( PROTECTION IN T)E TRIPS AGREE'ENT

%rti %rticl cles es 28(> 28(>2 2 of TR)1 TR)1# # lay lay down down the the rule ruless for for prot protec ecti tion on of trad tradem emar arks ks.. Thes Thesee  provisions deal with the conditions and content of the protection, but only in a general way, stating some principles that the member states must enforce. A. Rules Relating to the Ac2uisition o the Protection 3Article !45 !.  Protecta'le Sins. %rticle rticle 28/20 28/20 of TR)1# TR)1# estab establis lishes hes a unifor uniform m defini definitio tion n of a

trademark that had been absent from the 1aris Convention9 all signs and combinations of  signs that are capable of distinguishing the products or services of one undertaking from another are capable of acuiring trademark protection. Histinctiveness is thus the sole substantive condition of protection of a trademark. )n the case of signs that are not inherently capable of distinguishing the relevant goods or  services, registration may be made dependent on the condition that they have acuired distinctiveness distinctiveness through use. $ember states may exclude from protection signs that cannot be perceived visually, such as sound marks. ecause %rticle 28/20 does not specifically exclude threedimensional marks /such as bottles0 from protection, the only uestion is to determine whether such a form distinguishes the product or service it is supposed to identify. $. ther ther reason reasonss for refusa refusal  l . esides refusal on grounds of lack of distinctiveness

 provided in %rticle 28/20, refusal of protection is permissible only to the extent that the grounds do not conflict with the provisions of the 1aris Convention. "nder the latter, denial of protection is permissible if registration in the country in uestion would infringe on the prior rights of third parties,if the mark is devoid of any distinctive character or  consists exclusively exclusively of descriptive terms, or if the mark is contrary to accepted principles of morality or public orderJin particular if it were to deceive the public.

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%rticle 28/40 states that registration may be made dependent on use, although actual use cannot constitute a condition for the filing of the application.This wording is intended to cover the declaration of an intent to use, as allowed under %rticle %rticle 2/b0 of the =anham %ct. %rticle 28/60 extends %rticle %rticle : of the 1aris Convention to service marks so that the nature of a product or a service may not be an obstacle to registration of the mark. +. or"al or"al require"ent require"entss. TR)1 TR)1# # memb member erss are are free free to arra arrang ngee the the deta detail ilss of the the

application, registration, and cancellation proceedings, taking into account the general  principles stated stated in %rticle %rticle @>/20 to /80 and %rticle %rticle 62.2:> %rticle %rticle 28/80 of TR)1# TR)1# only  provides for the obligation to publish the trademark either before or immediately after  regi regist stra rati tion on and and to allo allow w suit suitab able le oppo opport rtun unit ity y for for an oppo opposi sing ng part party y to appl apply y for  for  cancellation of the registration. 7hile an opposition procedure may be provided, it is not reuired. %. Rules Relating to the Content o the Protection 3Article !65

TR)1# recogni&es the classical nature of the right of the trademark holder. )t is an exclusive right to use the trademark for designation of the goods or services listed in the registration. %s %s a conseuence of this exclusivity, exclusivity, the rightholder may forbid third parties from using his trademark, but may also authori&e them to do so. )n both respects, TR)1#  provides for more detailed detailed rules than those those contained in the the 1aris Convention. !. The Riht to Prohi'it the *se of the Trade"ar# . Huring the term of protection /a

minimum of seven years that may be renewed indefinitely0, the owner of a trademark  en+oys the exclusive right to prevent third parties from using, in the course of trade, an identical or similar sign for identical or similar goods or services where such a use would result in a likelihood of confusion. The likelihood of confusion is presumed if identical signs are used for identical products or services. )n all other situations, the trademark owner must produce evidence to demonstrate the likelihood of confusion. xisting prior rights of any kind remain unaffected by the exercise of the trademark holder?s rights. For instance, a shop sign al( ready used prior to the registration may continue to be used by its owner.

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Two specific paragraphs deal with the protection of well(known marks. First, %rticle 2@/>0 extends @bis @bis of the 1aris Convention, which covers well(known marks, to service marks as well. #econd, %rticle 2@/40 specifies that Aaccount shall be takenD of the knowledge of the trademark in the relevant sector of the public.BThus, a mark may be  protectable even if it is not recogni&ed by the general public.This may be important for   products that are sold to specialists rather than to the general public. Third, a well(known mark is protected beyond the limits of similarity of goods and services. )ts owner may  prohibit the use of this mark by third parties even for goods or services that are different from those designated by the well(known mark. The owner may do so if such use would create in the mind of the public a connection between the well(known mark and the third  party?s goods or services, those diluting or damaging the reputation or value of the well( known trademark. For instance, the Coca(Cola everage Company has the right to forbid a shoe manufacturer from using the sign ACoca(ColaB to designate its shoes if  consumers would be likely to believe that the shoes were manufactured or endorsed by the Coca(Cola everage Company, thereby diluting the ACoca(ColaB trademark. $ember states are permitted to make certain limited exceptions to the rights of a trademark holder. For example, states may permit third parties to use the trademark in cases of fair use or for use as a descriptive term, provided that they take into account the legitimate interests of the trademark owner and of third parties. ;ational or regional laws determine to what extent a trademark owner?s rights have been exhausted after goods approved by the owner and bearing bearing the trademark are first first marketed. %rticle %rticle @ expressly states that AfDor the purposes of dispute settlement . . . nothing in this %greement shall be used to address the issue of the exhaustion of intellec(tual property rights.B The maintenance of the registration and the enforcement of rights against third  parties may be sub+ect to a reuirement of use of the trademark that must be made within a specified period. )ntroduction of such a reuirement is a matter of national law. )nsofar  as the latter contains an obligation to use, it must comply with %rticle 25 of TR)1#, which stipulates that a period of at least three years must be granted for the use of the trademark. "se of a trademark by another person shall be recogni&ed as a valid use on

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condition it is done under the control of the trademark owner. #uch would be the case when the trademark is used by a licensee or by several undertakings within the same company. ;on(use will not necessarily invalidate a trademark registration. %rticle 25/>0 excuses non(use when it is the result of special circumstances such as import restrictions or other government reuirements. %rticle %rticle >I of TR)1# deals with the uestion of whether use of a trademark may  be sub+ect to additional reuirements under national law. %s a matter of principle, such additional reuirements are permissible on condition they do not un+ustifiably encumber  the use.Therefore, TR)1# members are free to reuire that use of the trademark comply with additional conditions. #uch conditions might include an indication that the product has been manufactured by a licensee or a restriction of the use with certain products such as tobacco. $. The Riht to Authori+e the *se of the Trade"ar# . % third party may legally use a

 protected mark if he receives authori&ation from the owner through either licensing or  assignment. 7hile TR)1# addresses addresses these two procedures, it does not provide a complete set of rules on licensing and assignment of trademarks, thus leaving member states relatively unrestricted in determining the scope of licensing and assignment rules. 7ith 7ith regard to licensing, %rticle >2 states that trademarks may not be sub+ect to compulsory licenses. Thus, TR)1# members are free to regulate conditions and effects of  trademark trademark licenses. licenses. )n particula particular, r, members may specify specify in their their national national legislat legislation ion appropriate measures to prevent or control licensing practices that restrict competition, have adverse effects on trade, or impede the transfer or dissemination of technology. technology. $embers must, nevertheless, comply with the basic principles set forth under  TR)1# in %rticles 2(3. For instance, under the principle of national treatment, a member  cannot discriminate against foreign licensees by extracting stringent conditions that it does not reuire from domestic licensees. %rticle 3/>0 allows members to take measures to avoid an abusive exercise of rights and practices that unreasonably restrain commerce or damage international technology transfer. transfer.

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7ith 7ith regard to assignment, assignment, %rticle %rticle >2 provides that an owner is free to assign his trademark, with or without transferring the business to which the trademark belongs.>I@ %s for the rest, the members have a great deal of latitude in regulating the conditions and effects of an assignment, while remaining in compliance with the basic principles of  TR)1#. CONCLUSION

Commercial counterfeiting of both trademarked and copyrighted goods has reached staggering levels over over the last five years. commercial commercial counterfeiting counterfeiting is peculiarly international in scope and effect.Foreign products counterfeiters flourish because of the division of the world into independent nations. *ften, unless the counterfeiter is 'present' in either the operational or physical sense, the domestic law of the nation to which he is exporting cannot reach him. Furthermore, even if the counterfeiter has operations within the importing or exporting nation, domestic law only affects the part of the organi&ation which which is within within that that nation nation.. Conse Conseuen uently tly,, domes domestic tic law must must be suppl suppleme emente nted d by international law to effectively curb foreign counterfeiters. The victim of an international counterfeiter must look to international treaties or  arrangements to obtain maximum protection. *therwise, he is left with no redress or must  press suit in a foreign foreign country which extends extends him little or no protection. ven with with treaty  protection, the victim may still be compelled to bring suit under foreign law. -owever, the ma+or multilateral treaties ensure that a minimum level of protection is available within all signatory nations. The existing bilateral treaties may sometimes afford more specific protection to the individual than the multilateral treaties, but only if the victim is fortunate enough to have been in+ured by a counterfeiter operating out of a nation which maintains a strong treaty with his country 7hat conclusi conclusions ons may be drawn drawn from this brief brief overview overview of the internati international onal trademark protection systemK Clearly, the 1aris Convention has stood the test of time. )ts  principles are now incorporated into TR)1#, defining the basic rules of protection of  industrial property rights in international trade. *ne could ask whether this solution was even necessary, let alone adeuate. )nternational trade means competition, which in turn,

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means conflict. )n the past, wars were fought to conuer new markets. )n the future, a free and and well well(b (bal alan ance ced d deve develo lopm pmen entt of trad tradee may may help help to avoi avoid d such such conf confli lict cts. s. The The recognition and protection of industrial property rights is one element of this harmony, a condition for international peace.