Author: Mahammad Jafarov, Legal Consultant, LLB at Baku State University (2018-2022), MA in Diplomacy and International Affairs at ADA University (2022-2024), e-mail: [email protected]
Editor: Elnur Karimov, LLD (Doctoral Program in Law) at Kyushu University, 2021-2024, e-mail: [email protected]
Abstract
The emergence and development of a competitive market environment led to the need for the actors who are participants in this environment to differentiate their goods and services with appropriate signs and means to deliver their goods and services to their target consumers. Especially since the 20th century, the increase in the level of integration in the world has led to the expansion of the competitive environment across country borders, which has also led to the increase in the importance of expanding the geographical sphere of differentiation of goods and services. The purpose of this article is to present an overview of the forms and mechanism of recognition of trademarks, the legal basis and features of their international registration, and their advantages.
Introduction
It is observed that there is a consensus in the legal definition of trademarks in various normative acts at the national, regional and international levels. Trademarks may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or the packaging of goods, or sounds, provided that such signs are capable of:
- a) distinguishing the goods or services of one undertaking from those of other undertakings; and
- b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
The terminology of the legislation deals with the terms ‘’marks’’ and ‘’sign’’ as follows. The term ‘’mark’’ usually indicates the trademark as registered or filed. The term ‘’sign’’ is a broader concept than the term ‘’mark’’. In other words, every mark is a sign, but not every sign is or may be a mark. In addition, the term ‘’sign’’ also refers to the sign at issue in proceedings initiated, because the trademark proprietor may believe in the existence of similarity with their mark in the meaning of trademark law. The trademark provides its holder with the right to prevent others from using the protected sign on identical or similar goods where such use is likely to cause consumer confusion.
Functions of Trademarks
Legal and marketing literature has much debate about the functions of trademarks. According to the Adam Opel v. Autec, case of the European Court of Justice, the function of the origin or the guarantee of origins is emphasized as the first, most important and essential function of a trademark. The European Court of Justice also recognizes that trademarks fulfil several functions. K.H. Fazer distinguished 17 functions of the trademark in trademark law: coding; guarantee; origin; guarantee of origin; identification; individualization; information; communication; monopolization; name; quality; type; distinguishing; consumer protection; trust; sales; and advertising functions. Today’s legal approaches to the functions of trademarks are more or less similar (Cohen Jehoram, T. (2010), page 9).
Recognition of Trademark Rights at the Local Level
Regarding the registration of trademarks at the local level, trademark law protection can be based on either the first use of the trademark or on the first registration of the trademark in the trademark register. These systems are also called declarative systems or attributive systems, respectively. Both systems have drawbacks. The major drawback of declarative systems is the lack of clarity from the perspective of third parties about the trademarks that can enjoy trademark protection. The major drawbacks of attributive systems are the contamination of registries, the registrations in bad faith, and the suspension of the protection from non-registered trademarks, even when the use of the trademark is apparent to everyone (Cohen Jehoram, T. (2010), page 15). However, common law countries also have trademark registration practices that provide significant litigation advantages, and trademarks are ordinarily can be registered in these countries for legal security too.
Trademark protection is less an instrument of national and regional industrial policy than patent protection, and the harmonization of rules on trademark registration has been less controversial than the harmonization regarding patents. Trade and service mark registrations are generally undertaken concerning specific classes of goods and services. In 1957, an international agreement was reached on a standard system for classifying goods and services concerning the registration of marks. The 1957 Nice Agreement Concerning the International Classification for the Registration of Marks provides a generic format for designating the classes of goods and services and is in wide use around the world. Currently, the classes between 1-34 of the Nice Classification are used in the process of codification of trademarks related to goods and their production, and other classes between 35-45 are related to services. The Nice Classification is of exceptional importance as a single coding system in the registration of trademarks in the process of local, regional and international registration.
Recently, the advantages of trademark registration in terms of securing rights lead to an increasing tendency towards an attributive approach by medium and large business actors in common law countries as well.
Regional Trademark Registration Mechanisms
Some regional treaties or collective decisions allowed private parties to apply for multiple national trademarks with a single application. There are several such regional mechanisms.
European Union Intellectual Property Office – Just like some states have created regional organizations to ameliorate the problems of multinational registration of patents, so have many states adopted regional treaties or collective decisions allowing private parties to apply for multiple national trademarks with a single application. There are several such regional treaties. In 1988, the European Community (EC) Council adopted a Community Trade Mark Regulation to partially harmonize the trademark laws of what are now the European Union (EU) member states. In 1993, the Council went further and adopted a Community Trade Mark Regulation providing for the grant of a single Community Trade Mark (CTM) that is valid in all EU members. The CTM Regulation provided for the creation of a central EC trademark office in Alicante, Spain, called the Office for Harmonization in the Internal Market (OHIM). OHIM is charged with executing registration procedures for CTMs, maintaining a public register of CTMs, and deciding on challenges to the validity of registered CTMs. The CTM itself does not replace national trademarks within the EU; rather, it adds the CTM as an alternative or complementary option. The CTM lasts for an initial period of 10 years but may be renewed indefinitely (Fellmeth, A. X. (2009), pages 67-68).
On 23 March 2016, the Regulation (EU) 2015/2424 of the European Parliament and the Council amending the Community trademark regulation (the Amending Regulation) entered into force. Among other things, the Amending Regulation changed the name of the Office to the European Union Intellectual Property Office, the name of the trademark administered by the Office to the European Union trademark, and the fee system for trademarks. There were also changes to examination proceedings, absolute grounds, opposition and cancellation, relative grounds and appeals. Since March 2016, the OHIM has been known by the European Union Intellectual Property Office (EUIPO) and is responsible for managing the EU trademark and the registered Community design. On 23 March 2016, the Regulation (EU) 2015/2424 of the European Parliament and the Council amending the Community trademark regulation (the Amending Regulation) entered into force (Seville, C. (2009), page 94). Among other things, the Amending Regulation changed the name of the Office to the European Union Intellectual Property Office, the name of the trademark administered by the Office to the European Union trademark, and the fee system for trademarks. There were also changes to examination proceedings, absolute grounds, opposition and cancellation, relative grounds and appeals.
African Regional Intellectual Property Organization (ARIPO) – There are several treaties to harmonize trademark laws between and among states, but there are few regional trademark registration systems like the EC’s system. The closest cognates have been adopted by African states. Membership to the African Regional Intellectual Property Organization (ARIPO) is open to Member States of the Economic Commission for Africa (UNECA) or the African Union (AU). As of 14 July 2022, the ARIPO was comprised of 22 Member States. The ARIPO is an intergovernmental organization that grants and administers Intellectual Property (IP) titles on behalf of its Member States and provides IP information to its clientele in the form of search services, publications and awareness creation. Membership in the organization is open to all Member States of the African Union (AU) or the United Nations Economic Commission for Africa (ECA).
The ARIPO is mandated to register marks and the administration of such registered marks on behalf of the Banjul Protocol Contracting States by the provisions of the Banjul Protocol on Marks. The Banjul Protocol on Marks was adopted on November 19, 1993, in Banjul, The Gambia. The Banjul Protocol establishes a trademark application filing system like the Harare Protocol. An applicant may file a single application either at one of the Banjul Protocol Contracting States or directly with the ARIPO Office. Since 1997, the protocol has been extensively revised to make it compatible with the TRIPs Agreement and the Trademark Law Treaty as well as make it more user-friendly (Fellmeth, A. X. (2009), page 69).
Regional mechanisms are still maintaining their functionality. Currently, the cooperation of the regional organizations listed above with WIPO is intensifying. From my point of view, the result of the acceleration and development of the formation of the international registration system of trademarks, I think, will make the existence of regional mechanisms insignificant in the future.
The Necessity of the International Registration Mechanism
The evolution of the multilateral system for the protection of trademarks has been substantially less controversial than the evolution of the system concerning patents. Virtually, all countries have recognized the basic economic and social value of allowing procedures and suppliers of services to identify their output with distinctive markings. Trademarks enable consumers to make efficient and informed decisions about what they are buying. They encourage producers to invest in quality as repeated purchasing is facilitated. This is not to suggest the absence of economic and social issues as trademark holders seek to extend the scope of exclusive rights embodied in marks. It is only to suggest that there are good reasons why trademarks are not the subject of the same level of policy concerns as patents, and why the evolution of multilateral protection has run more smoothly. Two contemporary trends in the evolution of multilateral trademark rules include:
1) increased attention to protection for well-known trademarks; and
2) more permissive rules concerning the licensing and transfer of marks (as the trademark itself has turned into a marketable commodity).
Of course, the spreading of the Internet and e-commerce has raised a host of new questions regarding the role of distinctive marks in this fluid environment. I consider it appropriate to evaluate the history of normative development to better understand the current international registration mechanism.
Formation of International Registration Mechanism
Initially, the first multilateral rules for the protection of trademarks were adopted in the Paris Convention of 1883 along with rules for the protection of patents and industrial designs. As newspapers, magazines, and the word of mouth of travellers made consumers aware of the reputation of foreign products, it became increasingly important to consumers and producers that trademarks associated with products be genuine. This objective could be achieved by granting producers the opportunity to locally register and protect their trademarks. The Paris Convention incorporated provisions on national treatment, right of priority, and independence of trademarks similar to the provisions about patents. This international agreement was the first major step taken to help creators ensure that their intellectual works were protected in other countries (Abbott, F. M., Cottier, T., & Gurry, F (2011), page 353-354). The Convention applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models (a kind of “small-scale patent” provided for by the laws of some countries), service marks, trade names (designations under which industrial or commercial activity is carried out), geographical indications (indications of source and appellations of origin) and the repression of unfair competition. The substantive provisions of the Convention fall into three main categories: national treatment, right of priority, and common rules.
Where a mark has been duly registered in the country of origin, it must, on request, be accepted for filing and protected in its original form in the other Contracting States. Nevertheless, registration may be refused in well-defined cases, such as where the mark would infringe the acquired rights of third parties; where it is devoid of distinctive character; where it is contrary to morality or public order; or where it is of such a nature as to be liable to deceive the public.
If in any Contracting State, the use of a registered mark is compulsory, the registration cannot be cancelled for non-use until after a reasonable period, and then only if the owner cannot justify this inaction. Each Contracting State must refuse registration and prohibit the use of marks that constitute a reproduction, imitation or translation, liable to create confusion, of a mark used for identical and similar goods and considered by the competent authority of that State to be well known in that State and to already belong to a person entitled to the benefits of the Convention.
Each Contracting State must likewise refuse registration and prohibit the use of marks that consist of or contain, without authorization, armorial bearings, State emblems, and official signs and hallmarks of Contracting States, provided they have been communicated through the International Bureau of WIPO. The same provisions apply to armorial bearings, flags, other emblems, abbreviations, and names of certain intergovernmental organizations like WIPO.
In September 2006, a new Singapore Treaty on the Law of Trademarks was adopted by WIPO members. The Singapore Treaty was signed by over 60 countries when it was adopted. The Treaty entered into force in 2009. The Treaty was intended to remedy certain perceived limitations in the TLT and to create a modern and dynamic international framework for the harmonization of administrative trademark registration procedures. An excerpt from a summary of the treaty prepared by WIPO follows (Abbott, F. M., Cottier, T., & Gurry, F (2011), pages 434-435). Unlike the TLT, the Singapore Treaty applies generally to all marks that can be registered under the law of a Contracting Party. Most significantly, it is the first international instrument dealing with trademark law to explicitly recognize non-traditional marks. The Treaty applies to all types of marks, including non-traditional visible marks, such as holograms, three-dimensional marks, colour, position and movement marks, as well as non-visible marks such as sound, olfactory, or taste and feel marks. Although this agreement did not become an international agreement on a serious level, the innovations showed themselves in the process of updating the Madrid protocol, and the new approaches were reflected in the Madrid System.
The Madrid System
The first international system for the registration of trademarks in multiple countries was established in 1891 by the Madrid Agreement Concerning the International Registration of Marks. The Madrid Agreement provided a method of international registration of a trademark, allowing a single application to establish a priority date in multiple countries. However, it proved unpopular with the countries that are the most active in filing trademarks such as Europe, Japan, and the United States, and was consequently doomed to relative obscurity by the lack of support. The Madrid Agreement itself is not, then, a key instrument in multinational trademark registration practice. All member states of the Paris Convention for the Protection of Industrial Property may become a party to the Agreement or the Protocol or both. The Agreement and the Protocol are “independent, parallel treaties with separate, but overlapping, memberships”. The relationship between the two instruments is complex.
In 1996, however, a protocol to the Madrid Agreement came into force with much greater success. The 1989 Madrid Protocol allows a trademark applicant to file a single trademark application with their national or regional trademark office and to designate multiple countries in which the applicant seeks trademark protection. The international application under the Madrid Protocol does not result in a true “international trademark”. It does, however, make applying for a trademark in multiple countries much easier, and the international filing establishes a priority date for all countries designated in the application against a third party in one of the designated countries that try to register the same mark locally. The Protocol was created to bring more flexibility to the Madrid System and introduced certain new features to remove the difficulties that prevented certain countries and intergovernmental organizations from adhering to the Agreement. Not only does this international registration allow applicants to establish a single priority date for multiple countries, but it also creates a rule of default registration. In other words, if any specific country designated in the trademark application fails to refuse registration within a specific period, the mark is deemed registered and protected in that country. The Protocol also simplifies rights management by allowing a single procedure. The Madrid Protocol is administered by the WIPO. As of 2022, the members of the Madrid Protocol, known as the Madrid Union, is 112, covering 128 countries. The current figures already strengthen the Madrid System as an international registration and protection mechanism, and these numbers are forecasted to continue to grow.
To file an international trademark application under the Madrid Protocol, the applicant must be a national of or have a commercial establishment in, a member of the Madrid Union and must have first applied for or obtained the trademark in the Madrid Union country. The national registration office of this first application is known as the office of origin, and the application is known as the basic application or basic registration. The applicant is free to choose the entitlement and Office of origin, based on a real and effective industrial or commercial establishment, domicile or nationality. Post-registration procedures, such as the change of trademark owner’s name and address, trademark assignments and renewals, are completed extensively via the Madrid System. Under the Madrid System, entrepreneurs and businesses would not need to carry out each of these procedures individually in each designated country.
Madrid Protocol application has both international and national stages. When the office of origin receives an international application under the Madrid Protocol, it first verifies that the applicant is seeking to register the same mark for the same goods or services in each designated country and if so, it then forwards the application to the WIPO’s International Bureau. WIPO will check to ensure that the goods and services are correctly classified under the Nice Agreement and that the filing requirements are met. If so, it will record the mark in its International Trademark Register and notify the various trademark registration offices of the countries designated in the international application. This is the end of the international stage; WIPO does not examine the mark to determine whether it qualifies for registration in the various designated countries.
As convenient as the Madrid Protocol makes filing trademark applications in multiple countries there is a small risk to using the Madrid Protocol rather than filing separate trademark applications in each country. Specifically for the first five years after the multinational application is filed, WIPO will cancel the Madrid Protocol registration if the basic registration is denied by or withdrawn from the office of origin. This rarely used procedure is known as a central attack on the Madrid Protocol registration marketing and sales. To mitigate the risks of a central attack, the application can break the international application down into multiple national applications in the designated countries without sacrificing the priority date of the basic application. In any case, after five years, the international registration becomes immune to central attack and a cancellation of the registration by the office of origin will not affect trademark registrations in the other designated countries (Abbott, F. M., Cottier, T., & Gurry, F (2011), page 439).
According to Article 4 (1) of the Madrid Protocol, from the date of the international registration, the protection of the mark in each of the designated members is the same as if the mark had been filed or deposited directly with the Office of that member. If no provisional refusal is notified to the International Bureau within the prescribed time limit, or such refusal so notified is not regarded as such or is subsequently withdrawn, the protection of the mark in the member concerned shall as from the date of the international registration, be the same as if the Office of that member had registered the mark. The international registration resulting from an international application will, as a rule, bear the date on which the Office of origin received the international application. Where, however, the international application is not received by the International Bureau within two months from the date on which it was received (or deemed to have been received) by the Office of origin, the international registration will instead bear the date on which the application was received by the International Bureau. Where the Office is excused for the failure to submit the international application to the International Bureau within these two months due to force majeure reasons, the international registration may still bear the date on which the international application was received or deemed to have been received by the Office of origin.
According to Article 6 (1) of the Madrid Protocol, the registration of a mark at the International Bureau is effected for ten years, with the possibility of renewal under the conditions specified in Article 7. Any international registration may be renewed for ten years from the expiry of the preceding period, by the mere payment of the basic fee and, subject to Article 8(7), of the supplementary and complementary fees provided for in Article 8(2). Renewal of International Registration is regulated by Article 7 of the Protocol. By sending an unofficial notice, 6 months before the expiration date, the International Bureau reminds the holder of the international registration and his representative, if any, of the exact date of expiry. Any international registration may be renewed for ten years from the expiry of the preceding period, by the mere payment of the basic fee and, subject to Article 8(7), of the supplementary and complementary fees provided for in Article 8(2). A grace period of six months can be granted for the renewal of international registration by paying an additional fee determined by the regulation.
The Madrid system is the only global registration system for marks, supporting activity in markets that account for over 80% of world trade and has been a tremendous success for both applicants and national IP offices of contracting parties. It plays a key role in supporting economic growth and encouraging innovation in the contracting parties. Whereas WIPO was initially created to serve primarily as the secretariat of intergovernmental treaties and treaty negotiations, its activities have increased enormously over the past four decades. The organization’s growing workload has been due in part to the rising use of its global protection system treaties. According to WIPO’s statistics, Madrid’s international applications totalled 73,762 in 2021 making it the highest number of international applications ever filed (WIPO).
The overall advantage of the Madrid System for trademark owners is that it simplifies the administrative aspect of seeking protection of a trademark in multiple territories, leading to financial savings when obtaining and maintaining the protection of their marks abroad. It offers a convenient and cost-effective way for trademark owners to obtain and maintain protection in multiple markets, by filing one application in one language (English, French or Spanish) and paying one set of fees in one currency (Swiss francs). Renewal takes place every 10 years with one simple procedure. This can be compared to filing multiple national or regional applications with different IP offices, where the trademark owner would need to file separate applications in several languages and pay fees in different currencies, as well as manage different registration numbers, renewal dates and procedures. Additional fees for translations and the use of local representatives would also be incurred when filing national or regional applications. It also offers a simple and efficient way to manage a global trademark portfolio. Any changes to be made to the international registration, such as a change in name and/or address of the holder, a change in ownership of the holder (total or partial), or a limitation of the list of goods and services in respect of all or some of the designated members, may be recorded and have effect in all the members concerned using a single procedure with the International Bureau and the payment of one fee.
Conclusion
To sum up, today, the actors in the market are determining at what level the trademarks will be registered in order to distinguish their products or services according to the target group and interests. Entrepreneurs who carry out their business activities at the local level, taking into account the frequency of getting results and costs in the international system, tend to register their trademarks in the relevant authorities of their countries and are interested in using their respective rights at the local level. The international registration system, on the other hand, has created a successful streamlined and cost-effective platform for actors who want to carry out their activities at the multinational level. The system allows companies and individuals to obtain and maintain protection for their marks in an ever-increasing number of countries employing a simple and economical procedure.
The International System also supports the country’s exports to the extent that it simplifies protecting trademarks abroad. Furthermore, it allows individuals and companies established in other Contracting Parties of the Madrid System to have easier access to the protection of their marks in the country/regional territory, since they can seek the protection of the mark in any of the applicable Contracting Parties by merely designating these in the international application or a subsequent designation. This facility helps to strengthen the climate for foreign investment.
International registration is to the advantage of trademark Offices. The IP offices do not need to examine for compliance with formal requirements or to classify the goods or services or publish the marks, as such formalities will have already been undertaken by the International Bureau, and they can focus on their substantive examination. Moreover, they are compensated for the work that they perform; the individual fees collected by the International Bureau are transferred to the Contracting Parties in respect of which they have been paid, while the complementary and supplementary fees are distributed annually among the Contracting Parties not receiving individual fees, in proportion to the number of designations made of each of them.
Considering the growing integration, and the reflection of business activities on digital platforms, I think that the need for an international registration mechanism to protect rights related to trademarks at the international level will increase even more.
List of References
- Abbott, F. M., Cottier, T., & Gurry, F. (2011). International intellectual property in an integrated world economy (2nd ed., Ser. Aspen casebook series). Wolters Kluwer Law & Business.
- Cohen Jehoram, T. (2010). European trademark law: community trademark law and harmonized national trademark law. Wolters Kluwer Law.
- Hunter, D. (2012). The oxford introductions to u.s. law (Vol. , intellectual property /, Ser. The oxford introductions to u.s. law). Oxford University Press.
- Fellmeth, A. X. (2009). The law of international business transactions (Ser. American casebook series). West.
- Bently, L., & Sherman, B. (2014). Intellectual Property Law 4th Edition. Oxford: Oxford University Press.
- Seville, C. (2009). EU Intellectual Property Law and Policy. Cheltenham: Edward Elgar Publishing Limited.
- Michaels, A., & Norris, A. (2014). A Practical Guide To Trade Mark Law Fifth Edition. Oxford: Oxford University Press.
- European Union Intellectual Property Office – https://euipo.europa.eu/ohimportal/en/web/guest/about-euipo
- African Regional Intellectual Property Organization – https://www.aripo.org/
- Benelux Convention on Intellectual Property
- Madrid Protocol relating to the Madrid Agreement Concerning The International Registration Of Marks
- World Intellectual Property Organization (WIPO), WIPO Publication No. 455E/22;Guide to the Madrid System International Registration of Marks under the Madrid Protocol – https://www.wipo.int/edocs/pubdocs/en/wipo-pub-455-2022-en-guide-to-the-madrid-system-international-registration-of-marks-under-the-madrid-protocol.pdf
- World Intellectual Property Organization (WIPO), Summary of the Paris Convention for the Protection of Industrial Property – https://www.wipo.int/treaties/en/ip/paris/summary_paris.html
- World Intellectual Property Organization (WIPO), About the Nice Classification – https://www.wipo.int/classifications/nice/en/preface.html
- World Intellectual Property Organization (WIPO), Summary of the Singapore Treaty on the Law of Trademarks – https://www.wipo.int/treaties/en/ip/singapore/summary_singapore.html
- World Intellectual Property Organization (WIPO), Madrid System Statistics – https://www.wipo.int/madrid/statistics/
- World Intellectual Property Organization (WIPO), Guide To The Madrid System International Registration Of Marks Under The Madrid Protocol – https://www.wipo.int/publications/en/details.jsp?id=4600&plang=EN
- Adam Opel AG v Autec AG. 25 January 2007 – https://curia.europa.eu/juris/liste.jsf?num=C-48/05
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