TRIPS Article 15 Protectable Subject Matter

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Reynold Boone
5 years ago
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1 TRIPS Article 15 Protectable Subject Matter 1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colors as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.

2 First Council Directive 89/104/EEC Article 2 A trade mark may consist of any sign [1] capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that [2] such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 3 1. The following shall not be registered or if registered shall be liable to be declared invalid: (a) signs which cannot constitute a trade mark; (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

3 (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; (e) signs which consist exclusively of: the shape which results from the nature of the goods themselves, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods; A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1 (b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.

4 Paris Article 6 Conditions of Registration; Independence of Protection of Same Mark in Different Countries (1) The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation. (2) However, an application for the registration of a mark filed by a national of a country of the Union in any country of the Union may not be refused, nor may a registration be invalidated, on the ground that filing, registration, or renewal, has not been effected in the country of origin. (3) A mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin.

5 Paris Article 6quinquies Protection of Marks Registered in One Country of the Union in the Other Countries of the Union B. Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases: (i) when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed; (ii) when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed; (iii) when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public....

6 Problem 4 10 MegaFoods has applied to register various TMs with the USPTO using words from the language of the Togu tribe, who live contentedly with few material possession on an obscure and insular island nation in the South Pacific. No member of the tribe has left the island in over 30 years, and there is no Internet access or modern telecommunications system. The Togu tribe speaks an ancient language that is based on pictograms and uses no alphabet. The pictograms that MegaFoods would like to register as marks are the Togu pictograms and their transliterations for water, mineral, and spring for a new line of spring mineral water to be marketed as a sports drink in the United States. MegaFoods maintains that no one in the United States has heard of the Togu tribe, so these pictograms are arbitrary in the English language. 1. Should the USPTO issue the TMs? 2. Would your answer change if Togu had adopted English as its standard language and the ancient Togu language had become essentially dead in Togu such that it was understood and studied only by a few linguistic professors at Togu University?

7 TRIPS Article 16 Rights Conferred 1. [a] The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner s consent from using in the course of trade [i.e. commercial activities] identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. [b] In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. [c] The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use [i.e., unregistered marks].

8 First Council Directive 89/104/EEC Article 5 Rights conferred by a trade mark 1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:.... (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.

9 First Council Directive 89/104/EEC Article 4 Further grounds for refusal or invalidity concerning conflicts with earlier rights 1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid: (a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected; (b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

Paris Article 2 National Treatment

Paris Article 2 National Treatment (1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their