Paris Article 2 National Treatment

Transcription

1 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 respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with. (2) However, no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights.....

2 Paris Article 3 Same Treatment for Certain Categories of Persons as for Nationals of Countries of the Union Nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union shall be treated in the same manner as nationals of the countries of the Union.

3 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.

4 TRIPS Article 2 Intellectual Property Conventions 1. In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967). 2. Nothing in Parts I to IV of this Agreement shall derogate from existing obligations that Members may have to each other under the Paris Convention, the Berne Convention, the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits.

5 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. Paragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967). 3. Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application....

6 TRIPS Article 19 Requirement of Use 1. If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognized as valid reasons for non-use. 2. When subject to the control of its owner, use of a trademark by another person shall be recognized as use of the trademark for the purpose of maintaining the registration.

7 15 U.S.C 1051 (b)(1)a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director. (2) The application shall include specification of the applicant s domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark. (3) The statement shall be verified by the applicant and specify [certain matters that are not relevant for our purposes] Except for applications filed pursuant to section 1126 of this title [which governs applications filed after registration in the country of origin], no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.... (c) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements [for regular, trademark-in-use applications].

8 (d)(1)within six months after the date on which the notice of allowance with respect to a mark is issued... to an applicant under subsection (b) of this section, the applicant shall file in the [USPTO], together with such number of specimens or facsimiles of the mark as used in commerce..., a verified statement that the mark is in use in commerce.... Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office,.... (2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee (4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.

9 TRIPS Article 15 Protectable Subject Matter Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application....

10 Paris Article 4 Right of Priority A.1 Any person who has duly filed an application for... a trademark, in one of the countries of the Union,... shall enjoy, for the purpose of filing in the other countries, a right of priority.... A.2 Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.... B. Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union C.1 The periods of priority referred to above shall be... six months for industrial designs and trademarks.

11 15 U.S.C. 1126(d) An application for registration of a mark... filed by a person... who has previously duly filed an application for registration of the same mark in one of the [Paris or other treaty] countries... shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country: Provided, That (1) the application in the United States is filed within 6 months from the date on which the application was first filed in the foreign country; (2) the application conforms as nearly as practicable to the requirements of this chapter... ; (3) the rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained on an application filed under this subsection; (4) nothing in this subsection shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country unless the registration is based on use in commerce.

12 15 U.S.C No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (d) Consists of or comprises a mark which so resembles a... mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive...

13 Paris Article 6quinquies Protection of Marks Registered in One Country of the Union in the Other Countries of the Union A.1 Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article. Such countries may, before proceeding to final registration, require the production of a certificate of registration in the country of origin, issued by the competent authority. No authentication shall be required for this certificate. A.2...[T]he country of origin [shall be] [1] the country of the Union where the applicant has a real and effective industrial or commercial establishment, or, [2] if he has no such establishment within the Union, the country of the Union where he has his domicile, or, [3] if he has no domicile within the Union but is a national of a country of the Union, the country of which he is a national.

14 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. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order....

15 C.1 In determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration, particularly the length of time the mark has been in use. C.2 No trademark shall be refused in the other countries of the Union for the sole reason that it differs from the mark protected in the country of origin only in respect of elements that do not alter its distinctive character and do not affect its identity in the form in which it has been registered in the said country of origin. D. No person may benefit from the provisions of this Article if the mark for which he claims protection is not registered in the country of origin. E. However, in no case shall the renewal of the registration of the mark in the country of origin involve an obligation to renew the registration in the other countries of the Union in which the mark has been registered. F. The benefit of priority shall remain unaffected for applications for the registration of marks filed within the period fixed by Article 4, even if registration in the country of origin is effected after the expiration of such period.

16 Section 211 (a)(1)notwithstanding any other provision of law, no transaction or payment shall be authorized or approved... with respect to a mark... that is the same as or substantially similar to a mark... that was used in connection with a business or assets that were confiscated unless the original owner of the mark... or the bona fide successor-in-interest has expressly consented. (2) No U.S. court shall recognize, enforce or otherwise validate any assertion of rights by a designated national based on common law rights or registration obtained... of such a confiscated mark.... (b) No U.S. court shall recognize, enforce or otherwise validate any assertion of treaty rights by a designated national or its successor-in-interest under sections 44 (b) or (e) of the Trademark Act of 1946 for a mark... that is the same as or substantially similar to a mark... that was used in connection with a business or assets that were confiscated unless the original owner of such mark... or the bona fide successor-in-interest has expressly consented. (d)(1)... designated national [means Cuban national]... and includes a national of any foreign country who is a successor-in-interest to a designated national.

17 Problem 4-3 Countries A and B are both members of the Paris Convention and the WTO. Sweet Spa Corp, which is based in Country A, obtains a TM registration for the smell of a certain kind of incense popular at their health spas. Within 6 months, Sweet Spa files an application to register the same incense as a TM in Country B. Country B, however, denies registration because smells are not eligible for TM protection under Country B s laws. (1) Is Country B s law consistent with Article 6quinquies of the Paris Convention? (2) Would your answer be the same if Country B s law expressly stated: TMs cannot be granted to any subject matter in the form of smells? (3) What if the law said: Smells cannot be granted TM registration because they lack sufficient distinctiveness? (4) How, if at all, does TRIPS Art s recognition that [m]embers may require, as a condition of registration, that signs be visually perceptible bear on the issue?