International Intellectual Property Law

WTO TRIPS: Protection for Trademarks; the Global Problem of

Geographical Indications

Today’s Class

• Today we will explore some of the substantive protection provisions of TRIPS for trademarks

BIG RISE IN TRADEMARK REGISTRATIONS GLOBALLY• 400,000 in 1967 to 1,300,000 in 1996 (over 3

times in 30 years)• In 1996, about 36% of trademark registrations

were granted to residents in developing countries and countries in transition

• 80% of resident to total applications in developed countries – this was equaled in 1996 in many developing countries such as Korea, China, Brazil, Argentina, India

Developing Countries and Trademarks

• Because of the relatively high number of trademark filings in developing countries (as compared to patent filings), by the mid 1990s, developing countries had an interest in ensuring that trademark protection is sufficient.

• What level of protection does TRIPS provide to trademarks?

TRIPS: Minimum Standards of Protection for Trademarks

• There was protection of trademarks under the law of virtually all developed and developing countries. Due to this pre-existing level of protection, TRIPS only slightly raises the standard of protection in both developed and developing countries.

• However, TRIPS does address the problem of lack of enforcement of trademarks in some developing countries and in pre-TRIPS international law.

• TRIPS also has made considerable progress toward a uniform definition of a trademark

Trademarks Under the Paris Convention

• We have already discussed how the Paris Convention laid down minimum substantive requirements of trademark protection, but did not effectively provide for enforcement.

• Many developing countries were members of the Paris Convention or followed its principles in national law. But even Paris Convention members had considerable freedom in determining conditions for trademark protection. One common requirement was to require foreign marks to be used in conjunction with domestic marks.

Review: Weaknesses of Paris Convention

• No definition of a trademark• Relatively few substantive requirements (as for

patents)• Did not require service marks to be protected• No standard factors for determining when use of a

mark infringes the rights of a third party• No effective enforcement provisions, so many

countries never implemented Paris Convention into their national law

TRIPS on Trademarks

• Strengthens some of the weaknesses of Paris Convention. In particular,TRIPS provides a definition of a protectable trademark and provides greater protection to service marks. TRIPS also provides for a minimum term of trademark protection and provides clarification as to the extent of protection of famous marks. Also of course provides for stronger enforcement mechanisms.

• But leaves other open questions, as we will see. . .

We’ll Consider• 1. Some basic TRIPS principles for trademarks

(national treatment & priority)• 2. The extent to which TRIPS has defined

trademarks that must be protected • 3. How TRIPS has provided answers and left open

questions regarding grounds to refuse registrations.

• 4. TRIPS and requirements to maintain a registration

We’ll Consider• 5. How TRIPS has provided a provision for a

minimum trademark term• 6. The extent to which TRIPS has defined the

exclusive rights of the TM owner.• 7. How TRIPS clarifies Art.6bis for famous

marks but leaves open questions• 8. Exceptions to TM protection under TRIPS• 9. TRIPS provisions regarding

licensing/assignments of trademarks

Some Basic Principles Under TRIPS For Trademarks

• National Treatment• Priority

TRIPS: National Treatment Requirement

• This requirement (giving foreign owners of trademarks the same treatment as nationals) was a requirement under the Paris Convention, but TRIPS strengthened it in Art. 3 by limiting the exceptions set out in Art. 2 of Paris – they had to be strictly necessary under TRIPS compatible law and could not amount to a disguised restriction on trade.

Priority Requirement under TRIPS

• TRIPS incorporates Art. 4 of the Paris Convention, which provided for a right of priority (6 month grace period to someone filing in one member state to file in other member states)

• TRIPS extends the priority requirement to service marks. See TRIPS Art. 62.3

Definition of a Trademark

• The Paris Convention did not define what a trademark was.

• Art. 6quinquies provided some guidance through its telle quelle requirement, but the boundaries of this were not clear

• For the first time in international IP law, the TRIPS Agreement defines what a TM is in Art. 15.1

Definition of TM: TRIPS Art. 15.1

• A trademark is “any sign or any combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertakings. . . “For the first time, registration requirements extended to service marks.

• Illustrative list only is provided for signs that are eligible for protection. Are members required to register single colors? Shapes? Smells? 3-D marks?

• TRIPS members can make registrability depend on secondary acquired meaning through use.

• Can use be a condition for filing a TM application for registration?

TRIPS and Grounds to Refuse Registration: Use

• Art. 15(3) permits members to condition registration on use, such as under current U.S. trademark law. However, there are restrictions on this right in Art. 15(3)

• Use cannot be a condition for filing application for TM registration

• Art. 15(3): can’t refuse applications on ground that intended use has not taken place before 3 years have elapsed since application.

• Is US Intent to Use System in violation of TRIPS?

TRIPS and Grounds to Refuse Registration: Registration Can’t Depend

on Nature of Goods or Services• See Art. 15(4), which basically repeats Art.

7 of the Paris Convention, but extends it to service marks.

• Art. 20: can’t require unjustified special requirements to use trademark including compulsory use with another trademark (like Indian requirements of hybrid brands like Hero-Honda for motorcycles)

HYPO

• Brazil enacts a regulation that requires the generic name of a pharmaceutical to be placed on the package above the name of the trademark and in letters at least three times the size of the trademark’s font.

• Make the most convincing policy argument you can as to why Brazil needs this regulation

• Make the most convincing argument you can that the regulation violates TRIPS

TRIPS: Grounds for Denying TM Registration

• Art.15(2) of TRIPS: reasons for refusal other than those stated in 15(1) and 15(3) are possible, but only if they don’t conflict with Paris Convention

• Under Art. 6quinquies of Paris provides for right of refusal where the mark’s registration would conflict with prior third party rights; when the mark is not distinctive or has become generic; when the mark is purely descriptive; when the mark is contrary to morality or public order; and where the mark is deceptive

• Does TRIPS set out a standard for determining when a mark is generic?

Obligation to Publish, Opposition Proceedings

• Art. 15(5) requires publication of the trademark either before or immediately after registration and to allow suitable opportunities for applications for cancellation of the registration.

• The opportunity to file an opposition may be but need not be granted.

Can use be required to maintain a registration?

• Many national laws impose use as a condition to keep a TM in force

• Paris Convention Art. 5C(1) legitimized such a requirement subject to some general conditions

• Art. 19 of TRIPS further develops these conditions

• There can be no cancellation of a mark for non-use without non-use for at least 3 years from application or registration unless valid reasons based on the existence of obstacles to such use are shown by the TM owner. See Art. 19

TRIPS: Term of Protection for TMs

• TRIPS is the first international agreement to specify a minimum term of protection for trademarks

• What is the minimum term? Art. 18

TRIPS: Term of Protection for TMs

• What is the minimum term? Art. 18: 7 years, renewable indefinitely.

• This provision was a compromise between industrialized countries (who wanted 10 years) and developing countries (who wanted to leave the length of the minimum term to national legislation)

TRIPS: Trademark Rights• Art. 16(1) provides that the owner of a registered TM

shall have the right to prevent unauthorized third parties from using the mark or similar marks in commerce for goods or services identical or similar to those for which the mark is registered where such use would result in the likelihood of confusion.

• Likelihood of confusion is presumed where identical signs are used for identical goods/services

• Does this give any protection to unregistered marks?

Well-Known Marks under Paris Convention (review)

• An issue between developed and developing countries was the extent to which well-known marks should be protected in countries where they were not registered.

• Art. 6bis of Paris only obliges protection of marks that are well known in the country of registration or use where they are used on identical or similar goods.

• Art. 6 bis often treated as requiring a very high degree of notoriety within the country, not internationally

Well-Known Marks: Extension in TRIPS

• Protection for well-known marks was extended in 16.2 and 16.3 of TRIPS to service marks and in some circumstances even dissimilar goods and services.

• Some restrictions on national law determination of what is a well-known TM – knowledge of the mark should be knowledge of the “relevant sector of the public, including knowledge in that Member concerned which has been obtained as a result of promotion of the trademark.”

Extension of Protection for Well Known Marks Beyond Similar

Goods or Services• Art. 16(3): all that is required is that use of mark

can be interpreted as an indication of the existence of a connection between the TM owner and the goods or services at issue, together with likelihood that TM holder’s interest could suffer damage.

• Registration is a requirement for TM protection beyond area of similarity (though possibly this is a mistake; it clearly goes beyond Art. 6bis).

• Other requirements: connection, likelihood of damage

Famous Trademarks

• Famous marks get protected even without registration so fall outside general territorial limit of trademark protection.

• Neither TRIPS nor the Paris Convention established a complete list of factors to be considered in determining whether a mark is well-known or famous. It’s unclear how much use and reputation is required to pass the fame threshold.

Exceptions under TRIPS

• Art. 17 of TRIPS: includes exception for fair use of descriptive terms, also probably honest use of one’s own name as company name, names that indicate purpose of products

TRIPS and Licenses and Assignment of trademark rights

• What two limits on licenses and assignments does art. 21 mandate?

TRIPS: restrictions on licensing and assignment

• Members cannot require the owner of a registered TM to transfer the business along with the TM

• Art. 21 of TRIPS: prohibition of compulsory licenses ; this was unopposed. It’s the only bar on compulsory licenses in TRIPS. Why do you think this was unopposed?

Changes to the Laws of Developing Countries

• Generally, developing countries have had to implement new obligations in registration of service marks, in not allowing special conditions, and in protecting well known marks

• Many developed countries did not have to change their laws

Examples of Some TM Issues Post-TRIPS

• Extent of protection for well-known marks may come up again in a future review of TRIPS – still no clear definition of what is a well-known or famous mark

• Rise in electronic commerce makes this issue more significance

Some Open Questions

• TRIPS does not provide international standards for when a mark will be descriptive or generic.

• TRIPS doesn’t resolve all issues relating to the protection of famous marks in particular a complete list of factors to determine when a mark is famous (is use required? Or just fame?),

• TRIPS doesn’t clarify the protection for famous marks used on dissimilar goods/services

Geographical Terms Used on Products

Geographical terms can be used on products in commerce

Can you think of some examples?

Ways Geographical Terms Can Be Used on Products

• 1. Generic term• 2. Geographical indication• 3. Trademark

Geographical Terms used on Products: e.g. Swiss Cheese

• SWISS CHEESE – how is the word SWISS used? (as a generic term, a geographical indication, or a trademark?)

• What about DIJON MUSTARD?

Another Geographical Term Used on Products: FLORIDA

ORANGES

• How is the term FLORIDA ORANGES used on products?

Another Term Used on Products: PHILADELPHIA CREAM CHEESE

• How is the term PHILADELPHIA CREAM CHEESE used on products?

Importance of Geographical Indications

• Why are GIs important in the context of international trade?

Importance of Geographical Indications

• Why are GIs important in the context of international trade?

• GIs are important as source identifiers• Also may be indicators of quality – which

depends on the place of production• Also may be important business interests• Also important as intellectual property

under TRIPS

Geographical Indications are not limited to agricultural products

• BOHEMIA crystal

National Law on GIs• Substantial variety of legal protection for GIs in different

jurisdictions• Some jurisdictions have specific geographical indications

law or laws for the protection of appellations of origin; others use trademark law, consumer protection law, unfair competition laws, marketing law, and/or common law.

• Some have formal lists of registered geographical indications, such as Poland Others do not.

• Some legal systems only recognize place names like Eger wine from Eger region of Hungary while others recognize names associated with a place e.g. Tequila

US Law on GIs• Protects through trademark system• Historically treats GIs as descriptive (or misdescriptive) and

unprotectable as trademarks without secondary meaning/lack of deception

• Protection is principally through certification marks or collective marks

• Certification marks – e.g. ROQUEFORT, DARJEELING, PARMA HAM, STILTON,

• Collective marks e.g. AFL-CIO permits a group or association to enjoin use of collective mark by non members

• There could be protection as common law certification marks (e.g. COGNAC)

U.S. Law: Protection Against Misleading Use of GI

• § 43(a) of the Lanham Act (15 U.S.C. § 1125(1)) prohibits the misleading use of geographic terms

• § 42 of the Lanham Act (15 U.S.C. § 1124) prohibits the importation of goods bearing a false indication that the good is “manufactured in any foreign country or locality other than the country or locality in which it is in fact manufactured.”

U.S. COLA SYSTEM

• This is another type of GI protection• System for approving labels on wines and

spirits (Certificate of Labelling Approval “COLA”)

• Administered by Alcohol and Tobacco Tax and Trade Bureau of the Department of the Treasury (TTB) pursuant to federal law

Polish law on GIsArticle 131• 1. Rights of protection shall not be granted for signs . . .

(iii) which, as for their nature, may mislead the public, in particular as to the nature, properties of the goods or, with regard to paragraph (3), as to the geographic origin thereof.

• 4. A right of protection shall not be granted for a trademark that contains geographical elements which, although literally true as to the territory, region or locality, in which the goods originate, are of such a nature as to mislead the public by false representing that the goods originate in another territory famous of given goods

Polish law on GIs

Article 1313. 3. In the case of wines and spirits, any

trademark, which incorporates geographical elements discordant with the true origin of the good, shall be considered as a trademark misleading the public.

Polish law: protections for geographical indications

• Special regime for protection in arts. 174 et seq.• “Geographical indication”: “word indications

which in an explicit or implicit manner designate the name of a place, locality, region or country which identify a good as originating in that territory, where a give quality, reputation, or other characteristic of the good is essentially attributable to the geographical origin of that good.” art. 174

Example

• REDYKOŁKA cheese

Another example

• OSCYPEK cheese

Example

• TRUSKAWKA KASZUBSKA or KASZËBSKÔ MALËNA for Polish strawberries

• Poland has sought to register with the EU

Appellations of Origin (AO)• An AO indicates not only

geographical origin of a product but also special qualities of the product that are attributable to some factor prevailing in that region – like environment or manufacturing process

• An examples is CHAMPAGNE, a protected term

• Can U.S. vintners outside France use the term CHAMPAGNE on sparkling wine?

National Protection for AO• Some countries, beginning with Hungary in the 1790s

started to protect AO.• France began to protect AO for wines and spirits by

providing for their registration as Appellation d’origine contrôlée (AOC), which translates as "controlled term of origin“ under the auspices of the government bueau Institut National des Appellations d’Origine (INAO). Quality and production requirement controls are imposed on goods bearing the AOC

• Began with wines and spirits; later extended to other food products, including cheese, butter, and poultry

Regional Protection: 1992 European Regulation

• In July 1992, the European Union adopted a Regulation on the Protection of Geographical Indications and Designations of Origin for Agricultural Products and Foodstuffs

• Under this Regulation, the European Commission maintains a register of protected designations of origin (PDOs) and protected geographical indications.

International Protection for AO/GI

• What international agreements provide for the protection of AO/GI?

• Think about which provide the strongest protection? The weakest protection?

International Protection for AO/GI

• The following agreements provide for some level of AO/GI protection:

• Paris Convention (1883)• Madrid Agreement for the Prevention of

False or Misleading Indications of Source on Goods (1891)

• Lisbon Agreement (1958)• TRIPS Agreement (1994)

Paris Convention• Art. 1(2): “indications of source or appellations of

origin” are protected and subject to national treatment under Art. 2

• Art. 9 and Art. 10 – remedy of seizure applies to goods where direct or indirect use of a false indication of the source of the goods

• Art. 10bis – prohibits deceptive use of geographical indications as unfair competition

• Why might some find the Paris Convention’s protection inadequate for appellations of origin and/or geographical indications?

WTO

• Negotiations over GIs one of the big battlegrounds for TRIPS

• Was the battle mainly between developing and developed countries?

TRIPS Art. 22(1)

• Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member or a region or locality in that territory, where a given quality, reputation, or other characteristic of that good is essentially attributable to its geographical origin

Minimum Rights: TRIPS Art. 22(2)• Members must provide the legal means for interested

parties to prevent:• (1) the use of any means in the designation or

presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;

• (2) any use which constitutes an act of unfair competition within the meaning of Art. 10(b) of the Paris Convention.

TRIPS Art. 22(3)

• A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods is that the Member is of such a nature as to mislead the public as to the true place of origin.

Art. 22(2)

• Would this require the U.S. to bar a pork processor in Parma Ohio from labeling its product as Parma ham?

TRIPS protects GIS for alcohol products more strongly than

other products

Special Protection for Geographical Indications For Wines and Spirits

• Art. 23 of TRIPS provides that a means to prevent geographical indications of origin for wines and spirits that don’t originate from that place must be available even “where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as ‘kind’, ‘type’, ‘style’, ‘indication’ or the like.

• Does not require public deception/unfair competition

Exceptions to Art. 23 in Art. 24• (4) Where GI has been used in a continuous manner for 10

years before April 15 1994 or in good faith preceding that date• (5) Where a trademark already has been applied for or

registered in good faith, or where the rights to the trademark have been acquired through actual use in good faith, either (1) before the date of application of the TRIPS Agreement for a particular WTO member, or (2) before the GI was protected in its country of origin, the trademark maintains its legal presumption of superiority, based on the principle of "first-in-time, first-in-right."

• (6) If GI is the generic name for the goods in the Member state.

Change in U.S. Trademark Law to Implement TRIPS

• US changed its law by amending Lanham Act 15 U.S.C. § 1052(a), which now prohibits registration under certain conditions of “a geographical indication which, when used in connection with wines or spirits, identifies a place other than the origin of the goods.”

Built-in future negotiations over GIs• Article 23(4) requires the negotiation of “the

establishment of a multilateral system of notification and registration of GIs for wines.”

• Article 24(1) : obligates countries to “enter into negotiations aimed at increasing the protection of individual GIs indications under article 23.” Members may not use the exceptions in article 24(4)–(8) as a pretext for refusing to participate in negotiations.

• Article 24(2) calls for a continual review of the implementation of the TRIPS GI provisions

Is the debate over geographical indications really a developing world

vs. developed world battle?

• No, really a battle between Old World and New World

• Why does US oppose European proposal to extend GI registration of wines and spirits to agricultural products, even clawing back designations that might have been trademarked or become generic?