Trademark Rights; Overview of Provisions in the Paris Convention and the TRIPS Agreement

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1 Trademark Rights; Overview of Provisions in the Paris Convention and the TRIPS Agreement Geneva, 15 March 2012 Octavio Espinosa WIPO

2 Nature of IP Rights Intellectual property (IP) confers a right to exclude others from performing specified acts of commerce in respect of a protected object (e.g. an invention, a design, a trademark) IP does not confer a right to perform any act of commerce in respect of the protected object Consequently: If, for example, a person obtains registration of a mark in Country A, that registration can be used to prevent other persons from using the mark in Country A However, that registration will not confer on said person a right to use himself the mark in Country A

3 Commerce & Industry Right to undertake commercial or industrial activities Intellectual Property Right to exclude others from performing specified acts of commerce or industry in respect of a protected object Constitutional provisions may guarantee freedom of trade & industry Exercise of trade and industry is subject to restrictions imposed by law: e.g. competition & antitrust; consumer protection; unfair competition; industry & safety standards; labor; environment; public health; etc. Constitutional provisions may recognize intellectual property Always regulated under special IP laws: patents, industrial designs, trademarks, copyright, etc.

4 Is intellectual property (IP) different from property in tangible objects? Can intellectual property be expropriated? If so, how and with what effects? To be considered: Property and Expropriation Expropriation means depriving someone of property or possession. A person can only be deprived of something he owns or possesses Expropriation of IP means depriving someone of what IP gives, i.e. depriving someone from the right to exclude Banning or limiting the commercial exploitation or use of an IP object is not expropriation of IP to the extent that IP does not comprise a right to exploit or use the object in trade

5 Paris Convention provisions Article 6(1): The conditions for the filing and registration of trademarks shall be determined in each country by its domestic legislation Article 7: The nature of the goods to which a trademark is to be applied shall in no case form an obstacle to the registration of the mark Article 10bis: Countries are bound to assure effective protection against unfair competition. Any act of competition contrary to honest practices in industrial or commercial matters is an act of unfair competition. E.g.: creating confusion, discrediting, misleading

6 TRIPS Agreement provisions Article 1.1: Members are free to determine the appropriate method of implementing the provisions of the Agreement within their own legal system and practice Article 7: Intellectual property should contribute to technological innovation and transfer of technology to the mutual advantage of producers and users and in a manner conducive to social and economic welfare Article 8.1: Members may in their laws adopt measures to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their development, provided such measures are consistent with the Agreement

7 TRIPS Agreement provisions (cont.) Article 15.4: The nature of the goods or services to which a trademark is applied shall in no case form an obstacle to registration of the trademark [see Paris Conv., Article 7] Article 16.1: 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 identical or similar signs Article 20: The use of a trademark in the course of trade shall not be unjustifiably encumbered by special requirements, such as use in a special form or use in a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings

8 Concluding remarks