UNIVERSITY OF PETROLEUM & ENERGY STUDIES

COLLEGE OF LEGAL STUDIES

B.Tech [E.T] +LL.B (Hons.) IPR

SEMESTER 8

ACADEMIC YEAR: 2015-16 SESSIONS: JAN-MAY

PROJECT
FOR
Law of Trademarks Project
Under the Supervision of: Miss. Charu Srivastava

Submitted By: Ishan Tiwari

R840212012
500023684
INTERNATIONAL TREATIES
AND CONVENTIONS FOR
TRADEMARK LAW.
 I. INTRODUCTION

“An image is not simply a trademark, a design, a slogan or an easily remembered picture. It is a
studiously crafted personality profile of an individual, institution, corporation, product or
service”.
Daniel J. Boorstin

The most widely used definition of trademarks, as given in Wikipedia encyclopedia is

“A trademark, trade mark, or trade-mark is a recognizable sign, design, or unique expression

related to products or services of a particular source from those of others, although trademarks
used to identify services are usually called service marks. The trademark owner can be an
individual, business organization, or any legal entity. A trademark may be located on a package, a
label, a voucher, or on the product itself. For the sake of corporate identity, trademarks are being
displayed on company buildings.”
In simpler terms Trademarks are signs that identify goods or services offered on a market.
Trademarks are not a recent invention. The origin of trademarks can be traced back as far as the
beginning of the circulation of goods. The history of marks is nearly as old as the histories of
mankind and religion. Scientists have come across excavated artifacts from places such as ancient
Egypt with various symbols carved thereon for religious and superstitious reasons. "Potters
marks" appeared in relics left from the Greek and Roman periods and were used to identify the
maker (potter) of a particular vessel). Among those who specialize in researching the cultural
heritage of marks, the studies surrounding "potters marks" are famous.1
However, blacksmiths who made swords in the Roman Empire are thought of as being the first
users of trademarks.2
The first trademark legislation was passed by the Parliament of England under the reign of King
Henry III in 1266, which required all bakers to use a distinctive mark for the bread they sold.3
In Great Britain the law on registration of trademarks was enacted on August 13, 1875 and it
granted to trademark holder a monopolistic right for his mark, and also the right to sue the
infringers in court on the basis of certificate. The Department of Registration of Trademarks
opened in London on January 1, 1876. The first registered trademark was the red triangle of the
company «Bass & Co.», which they put on the bottles with ale.4

1
‘THE HISTORY AND DEVELOPMENT OF TRADEMARK LAW’, www.iip.or.jp/translation/ono/ch2.pdf.
Accessed on 3rd April 2016.
2
Gary Richardson, Brand Names Before the Industrial Revolution, National Bureau of Economic Research available
at National Bureau of Economic Research
3
http://www.tmprotect.idknet.com/eng/history.html. Accessed on 3rd April 2016.
Thus, a trademark or service mark is nothing but a distinctive mark, word or wording, figure or
logo, a sign or signature, or any other indication, which can unambiguously and scintillatingly
distinguish a product or service of a company in the specified national or international
jurisdiction.

The most common, prominent, and popular trademarks and service marks in countries of the
world over, are comprised of any one or more (a unique combination) of the following things --- a
letter or word, numeral, sign or symbol, design or graphic image, phrase or phrasing, 2D or 3D
shape, a unique combination of certain colors, label, a distinctive packaging, or a distinct sound or
smell. The utmost vital thing here is, that any trademark must be clearly different and unique,
from the trademarks of other companies, and should to be capable of being denoted explicitly and
graphically. Even the part resemblances, phonetic likeness, or resemblance in appearances
between the trademarks of two different people or companies, can give rise to the cases of
trademark opposition or trademark infringement litigation.
To distinguish trademarks in one commercial field from the trademarks in other fields, there is
available an internationally recognized and adopted Trademark Classification List. This trademark
classification list contains 45 different classes, which represent trademarks and service marks
pertaining to various fields of the broad economic sectors of businesses and industries,
professions, and services.
To safeguard any particular trademark or service mark, it is essential that said mark must be
properly registered with any national or international trademarks office, Trademark Symbols are
used. The trademark symbols used for goods and products of companies, for this purpose, are ®
[an encircled capital R] and TM; while for the services of the service-providing companies, the
trademark symbols utilized are ® and SM. The universal trademark symbol ® can never be used
for representing an unregistered trademark or service mark.5

5
“Registration And Protection Of Trademarks- In India And Abroad”, Article by Ashwin D. Rajan and Mohit Porwal,
12 June 2014.
 II. PURPOSE OF TRADEMARK LAW6
The general purpose of trademark law is to prevent unfair competition by protecting the use of a
symbol, word, logo, slogan, design, domain name, etc. that uniquely distinguishes the goods or
services of a firm. This body of common-law principles ultimately protects consumers by
prohibiting companies from using trademarks substantially similar to those of other companies
that may have more "brand equity" and customer loyalty. Trademark law is intended to avoid
consumer confusion and preventing companies from diluting the marks of other firms. Dilution
occurs when a similar mark adversely affects the reputation of a distinctive trademark regardless if
it leads to consumer confusion or not.
Given the increased importance of branding and the tangible economic value of the brand (brand
equity) in today's experience economy, trademark law is more important than ever before. As
consumers become loyal to a particular brand and make purchasing decisions based on their
ability to identify a product of service by use of a logo, slogan, etc (i.e. trademark), these marks
serve as a point of differentiation and competitive advantage. Consequently, trademark law is
important to enable the trademark proprietor to develop goodwill for the product or service and
prevent other parties from exploiting the brand.

III. TRADEMARK REGISTRATION

The law considers a trademark to be a form of property. Proprietary rights in relation to a
trademark may be established through actual use in the marketplace, or through registration of the
mark with the trademarks office (or "trademarks registry") of a particular jurisdiction. In some
jurisdictions, trademark rights can be established through either or both means. Certain
jurisdictions generally do not recognize trademarks rights arising through use. If trademark
owners do not hold registrations for their marks in such jurisdictions, the extent to which they will
be able to enforce their rights through trademark infringement proceedings will therefore be
limited. In cases of dispute, this disparity of rights is often referred to as "first to file" as opposed
to "first to use."
A registered trademark confers a bundle of exclusive rights upon the registered owner, including
the right to exclusive use of the mark in relation to the products or services for which it is
registered. The law in most jurisdictions also allows the owner of a registered trademark to
prevent unauthorized use of the mark in relation to products or services which are identical or
"colourfully" similar to the "registered" products or services, and in certain cases, prevent use in
relation to entirely dissimilar products or services. The test is always whether a consumer of the
goods or services will be confused as to the identity of the source or origin. 7

6
“What is the purpose of trademark law?” , Mateo Aboy, Blog,
www.mateoaboy.com/f6/blog_files/9975bff2077d8f58d340539a3c68b02b-23.html, Accessed on 3rd April 2016.
7
https://en.wikipedia.org/wiki/Trademark#Registration. Accessed on 3rd April 2016.
Trademark Registration in India8
Trademarks and service marks are registered as per the federal registration system, with support of
five regional trademarks offices, which are well-established in Mumbai, New Delhi, Kolkata,
Ahmedabad, and Chennai. These zonal trademark registry offices register, regulate, and protect
trademarks and service marks as per the rules, regulations, and provisions given in the Trade
Marks Act of 1999, and the Trade Marks Rules of 2002, taking into accounts all amendments
made to these so far. Flawless registration of any newly created trademark or service mark with
any of these zonal trademarks offices, gives complete protection to all the trademark rights of the
trademark owner in places all across India.
For getting one's newly-invented trademark registered in India, application is to be sent to the
immediately concerned zonal trademarks office, based on the location of the applicant company.
The major and main tasks or activities connected with registration of a trademark [or service
mark] are --- Creation of Trademark; Trademark Search and Infringement Analysis; Filing of
Trademark Application [Form TM-1]; Official Examination and Verification; and Trademark
Prosecution for registration.
Generally, any divisional trademark registry office of India completes the process of registration
well within one year. However, based on the condition and status of the originality and uniqueness
of the forwarded trademark and situations of opposition or infringement allegations by other
companies, the process of registration of the trademark may take longer time. The governmentally
prescribed fee for getting a trademark registered in India is INR-3,500/- at present [this fee does
not cover the consultation fee, lawyer's charge for preparing and filing the application for
registration, fee for tackling opposition cases, and the service charge for trademark prosecution].
Such initial registration of a trademark stands valid and effective for a period of ten years, counted
from the date of its registration. The application for Trademark Renewal is filed well within the
expiration of this period in Form TM-12 with the concerned regional trademark office, together
with a prescribed renewal fee of INR-5,000/-, for securing trademark rights for next ten years.
The new Indian Trade Marks of 1999, and the Trade Marks Rules of 2002, now include provisions
for the following tasks and facilities:
 The Classes for Service Marks have been increased to eleven classes, ranging from class
35 to class 45, as per an amendment in the Trade Marks Rules of 2002, made in year 2010.
 Multi-Class Application --- A Single application can now be filed for registering
trademarks belonging to different classes.
 Registration of the Collective Marks is possible
 The Shape of Goods, Designing of Packaging, and a certain unique Combination of
Colors, have been included in the purview of definition of a trademark, under the Section
2(1) (zb) of the Trade Marks Act of 1999.

8
“Registration And Protection Of Trademarks- In India And Abroad”, Article by Ashwin D. Rajan and Mohit Porwal,
12 June 2014.
IV. TRADEMARK REGISTRATION AND PROTECTION WORLDWIDE
A trademark is in principle a purely national affair. Separate trademark registrations must be made
in all the countries in which trademark protection is desired. To ease this situation somewhat,
various international treaties have been established with which multiple trademark registrations
can be obtained through a single procedure.
For extending one's businesses to universal horizons, proper registrations of the concerned
trademarks under one or more international trademark treaties are pre-requisite. Today, for
protecting the due rights of the owners of trademarks in international arenas, there are four most
significant and influential international trademark conventions or treaties in the entire world.
These treaties are:

Paris Convention

Madrid System

The TRIPS Agreement (Agreement on Trade Related Aspects of Intellectual

Property Rights)

Nice Agreement

Vienna Agreement

Trademark Law Treaty

Madrid Agreement on Indications of Origin

Singapore Treaty

Nairobi Treaty

Regional Agreements Established by African Nations

Regional Agreements Established by American Nations

Agreements Concluded by European Countries

 A. PARIS CONVENTION9

The Paris Convention for the Protection of Industrial Property (1883) contains various important
provisions for trademarks. The most important one is a priority right. This means that one can
apply for a trademark in one country that is a member to the Paris Convention, and then within six
months file subsequent applications in other member countries and claim the priority date. The
later registrations will then receive the registration date of the first registration. This can be a great
benefit if in the mean time someone else had filed for the same trademark in those other countries.

Further, trademarks duly registered in the country of origin shall be accepted for filing and
protected as is in the other countries of the Union. The only reasons under which the trademark
offices of those other countries may refuse the registration is when the trademark infringes rights
acquired by third parties in those countries, where the trademark is devoid of any distinctive
character, or when the trademark is contrary to morality or public order or may deceive the public.

Special protection is given to so-called well-known marks. The registration or use of a trademark
which constitutes a reproduction, an imitation, or a translation liable to create confusion, of a mark
considered to be well known in a country is prohibited. If the holder of the well-known mark finds
that such an other mark has been registered, he can request a cancellation of that registration
within 5 years. If the registration of the other mark was done in bad faith, there is no restriction on
the time in which the holder of the famous mark can request cancellation.

B. MADRID SYSTEM

The Madrid Agreement together with Madrid Protocol together constitutes what is known as the
Madrid System.

This system aims to provide means that can secure trademarks in large number of countries
simultaneously.

An application for international registration (international application) may be filed only by a

natural person or legal entity having a connection—through establishment, domicile or
nationality—with a party to the Agreement or a contracting party the Protocol.

The Madrid System is administered by the International Bureau of WIPO, which maintains the
International Register and publishes the WIPO Gazette of International Marks.

9
“International Trademark Association- Fact sheets Cross Border Topics”, http://www.inta.org/.
  MADRID AGREEMENT10

The Madrid Agreement concerning the International Registration of Marks (1891) is a special
treaty designed to ease the acquisition of trademark rights in various countries. After an initial
registration in his own country, an applicant for a trademark can make a so-called international
registration at the International Bureau (IB) of the WIPO in Geneva, indicating the member
countries in which he would like to have trademark protection. The IB then makes the registration
and passes it on to all the designated member countries of the Madrid Agreement. These then have
one year in which to refuse the registration in their country.

The registrations that are a result of the international registration can be annulled if the original
national registration is refused, annulled or dropped in the first five year after the first registration
date. An annulment resulting from a legal action started after the original registration is more than
5 years old cannot affect the international registration. So, if you want to get rid of an international
mark established under the Madrid Agreement, you should try to get the original national
registration annulled by starting a legal procedure to that end within five years after the first
registration. This is known as a central attack on the international registration.

 MADRID PROTOCOL11

The Protocol relating to the Madrid Agreement concerning the International Registration of Marks
(1989) contains basically the same provisions as the Madrid Agreement itself. There are some
important differences. The first difference is that not only countries, but also regions, such as the
European Community, can be a member. This way, for example a Community Trademark (see
below) can act as a first registration.

Second, under the Protocol one can ask for the international registration based on only the
application of a trademark, rather than the registration. Registration often means that the
trademark office has to accept the application. If this takes more than six months, it is no longer
possible to use the Madrid agreement to get an international registration for the trademark.

Third, if the so-called central attack results in the annulment of the original trademark (or
application) the holder of the international registration under the Protocol can in all of the
countries ask for a conversion. The trademarks in question are then converted to national
trademarks and treated as if they were applications filed on the filing date of the (rejected)
national application. This way, the holder of the international registration still has a chance to get
national trademark rights in at least some of these countries.

If the country of origin is a member of both the Agreement and the Protocol, and the countries in
which the international registration should have a fact is also a member of the Agreement and the

10
“Trademark Related Treaties- IUS Mentis”, http://www.iusmentis.com, Accessed on 3rd April 2016.
11
“Trademark Related Treaties- IUS Mentis”, http://www.iusmentis.com, Accessed on 3rd April 2016.
Protocol, then the provisions of the Agreement take precedence over the provisions of the
Protocol in these countries.

C. TRIPS AGREEMENT12

The Agreement on Trade-Related Aspects of Intellectual Property Rights TRIPS Agreement)

introduced intellectual property rules into the multilateral trading system for country members of
the World Trade Organization (WTO). The TRIPS Agreement came into force on January 1,
1995.

With regard to trademarks, the Agreement:

 Defines what types of signs are eligible for protection;

 Provides for the protection of service marks;
 Establishes the minimum rights of trademark owners;
 Confers additional protection for marks that are well known in a particular country;
 Defines the standards concerning availability, scope and use of marks; and
 Specifies enforcement procedures.

TRIPS Agreement members are free to determine the appropriate method of implementing the
provisions of the Agreement within their own legal system and practice, and may implement more
extensive protection than is required provided such additional protection does not contravene
other provisions of the Agreement.

The TRIPS Agreement provides for different transitional periods for the application of its
provisions, depending on the level of development of the country in question. For developed
countries, the transitional period is one year from the date of entry into force of the Agreement;
for developing countries and any country undergoing structural reform in its intellectual property
system, the transitional period is five years; for the least-developed countries, the transitional
period is 11 years.

D. NICE AGREEMENT13

The Nice Agreement concerning the International Classification of Goods and Services for the
purpose of the Registration of Marks (1957) is not a trademark treaty like the other treaties
mentioned in this chapter. Rather, it provides an internationally accepted definition of the various
types of goods and services for which one might want to obtain trademarks. In a trademark
application the applicant must indicate for which goods or services protection is desired. By
referring to the class numbers as defined in the Nice agreement, it is clear to everybody what the
trademark protects.

The Nice Agreement defines 34 main classes for goods and 11 classes for services. They may be
accompanied by explanatory notes which describe in greater detail the type of product or service
for which protection is desired. There is also an alphabetical list of goods and services, which
comprises about 10,000 indications referring to goods and 1,000 indications referring to services

12
“International Trademark Association- Fact sheets Cross Border Topics”, http://www.inta.org/.
13
“Trademark Related Treaties- IUS Mentis”, http://www.iusmentis.com, Accessed on 3rd April 2016.
that can be used for this purpose. This way, an applicant can indicate for example that his
registration applies only to computer keyboards and not to mice or other peripherals.

E. VIENNA AGREEMENT

The Vienna Agreement Establishing an International Classification of the Figurative Elements of

Marks ("Vienna Agreement") was adopted in June 1973 and amended in October 1985.

The International Classification of the Figurative Elements of Marks (Vienna Classification),

established by the Vienna Agreement, comprises a list of categories, divisions and sections
classifying the figurative elements of trademarks (such as designs, pictures, drawings and logos).

Although only 32 states are contracting parties to the Vienna Agreement, the Vienna
Classification is used by the industrial property offices of at least 30 other states, as well as by the
International Bureau of WIPO, the OAPI, the BOIP and OHIM.

F. TRADEMARK LAW TREATY14

Adopted in Geneva on October 27, 1994, The Trademark Law Treaty (“TLT”) restricts the use of
formalistic administrative requirements of the national offices of contracting parties by
establishing standards for registration, changes after registration and the renewal of trademarks,
aiming to simplify and harmonize procedures.

The USP of TLT is it specifies that attestation, notarization, authentication, legalization or

certification of signatures is not required, except in the case of the surrender of a registration.

G. MADRID AGREEMENT ON INDICATION OF ORIGIN15

The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods
(Madrid Agreement on Indications of Origin) was adopted in 1891, revised in 1911, 1925, 1934
and 1958, and supplemented by the Additional Act of Stockholm in 1967. It provides for seizure
of goods bearing a false or deceptive indication of a product’s geographical place of origin.

According to the Agreement, all goods bearing a false or deceptive indication of source, by which
one of the contracting states or a place situated therein is directly or indirectly indicated as being
the country or place of origin, must be seized on importation, or such importation must be
prohibited, or other actions and sanctions must be applied in connection with such importation.

14
“Trademark Law Treaty, WIPO References, WIPO Administered Treaties”, http://www.wipo.int/treaties/en/ip/tlt/.
Accessed on 3rd April 2016.
15
“International Trademark Association- Fact sheets Cross Border Topics”, http://www.inta.org/.
 H. SINGAPORE TREATY

The Singapore Treaty on the Law of Trademarks (Singapore Treaty) was adopted in 2006. The
purpose of the Singapore Treaty is the adoption of a modernized framework for the harmonization
of administrative trademark registration procedures, including registration of nontraditional
marks.

The Singapore Treaty is the first international instrument dealing with trademark law to explicitly
recognize nontraditional marks. It is applicable to all types of marks, including nontraditional
visible marks, such as holograms, three-dimensional marks, color, position and movement marks,
and nontraditional non-visible marks, such as sound, olfactory (smell) and taste and feel marks.
The regulations under the Singapore Treaty provide for the mode of representation of these marks
in applications, which may include non-graphic or photographic reproductions.16

I. NAIROBI TREATY17

The Nairobi Treaty on the Protection of the Olympic Symbol (Nairobi Treaty) was adopted on
September 26, 1981.

According to the Treaty, all contracting parties are obliged to refuse or to invalidate the
registration as a mark and to prohibit by appropriate measures the use, as a mark or other sign, for
commercial purposes, of any sign consisting of or containing the Olympic symbol (five interlaced
rings), except with the authorization of the International Olympic Committee.

J. REGIONAL AGREEMENTS ESTABLISHED BY AFRICAN NATIONS18

ARIPO

The African Regional Intellectual Property Organization (“ARIPO”) was formed in 1976 by
certain English-speaking African nations that entered into the Lusaka Agreement.

As the Lusaka Agreement merely created the Organization without elaborating its powers and
functions as an industrial property office, it was necessary to adopt additional legal instruments

16
“Singapore – Singapore Treaty on the Law of Trade Marks”; Wong, Kevin, Dharsan, Kiran; International
Association for the Protection of Intellectual Property.
17
“International Trademark Association- Fact sheets Cross Border Topics”, http://www.inta.org/.
18
“International Trademark Association- Fact sheets Cross Border Topics”, http://www.inta.org/.
that would give the Organization specific functions to perform on behalf of member states in the
field of intellectual property. Such is the case of the Banjul Protocol on Marks, adopted in 1993,
which establishes a trademark filing system. Under the Banjul Protocol an applicant may file a
single application either at one of the contracting states or directly with the ARIPO Office and
designate states in the application where the applicant wishes his or her mark to be protected.

OAPI

The Organisation Africaine de la Proprieté Intéllectuelle (OAPI), or African Intellectual Property

Organization, has its antecedents in the Libreville Agreement, signed in Libreville, Gabon, in
1962, by means of which certain French-speaking African nations established a regional office for
filing trademark applications.

OAPI was formed by the Bangui Agreement, which was adopted in Bangui, Central African
Republic, in 1977 and entered into force in 1982. The Bangui Agreement was last revised on
February 24, 1999, to bring it into compliance with the TRIPS Agreement.

According to the Agreement, an application may be filed in the Central Office in Yaoundé,
Republic of Cameroon, and covers the 17 OAPI countries.

K. REGIONAL AGREEMENTS ESTABLISHED BY AMERICAN NATIONS

ANDEAN PACT

This agreement binds certain South American countries to form a customs union between the
member states, now known as the Andean Community. The four member states of the Andean
Community are Bolivia, Colombia, Ecuador and Peru.

The Andean Pact contains trade regulations that are binding on its members. With respect to
intellectual property, it establishes one common system, through Decision 486 of the Commission
of the Andean Community (Common Intellectual Property Regime), in force since December 1,
2000.

MERCOSUR

Together with the Andean Pact, Mercosur (Mercado Común del Sur) is the other major trade
block in South America. Created in 1991 by the Treaty of Asunción, MERCOSUR was subscribed
by Argentina, Brazil, Paraguay and Uruguay. Venezuela adhered in 2012, and Bolivia has been in
the process of adhesion since 2012.

In particular, the scope and principles of protection of trademarks, indications of source and
denominations of origin within this union are contained in the Protocol of Harmonization of Rules
Regarding Intellectual Property (Mercosur Decision No. 008 of 1995).
For this Protocol to be applicable in the member states, the relevant ratification document needs to
be deposited. To date, the Protocol has been ratified only by Paraguay and Uruguay.

NAFTA

The North American Free Trade Agreement (“NAFTA”) was formed in 1992 by the United
States, Canada and Mexico.

NAFTA provides basic standards for the protection of trademarks and other intellectual property
rights by each member party, in Chapter 17.

GENERAL INTER-AMERICAN CONVENTION FOR TRADEMARK AND COMMERCIAL

PROTECTION19

The General Inter-American Convention for Trademark and Commercial Protection (previously
called the Pan-American Convention) was adopted in Washington, D.C., on February 20, 1929.

Most notably, the Convention defines standard procedures among the members for trademarks
registration, opposition, cancellation and abandonment.

Of particular note, the Convention provides that the owner of a mark protected in one of the
member states may oppose the use or registration of an interfering mark by a third person in
another one of the member states if the third party had knowledge of the existence and continuous
use of the senior mark.

CAFTA-DR

The Dominican Republic – Central America Free Trade Agreement (CAFTA-DR) was signed in
2004 by the United States, Costa Rica, El Salvador, Guatemala, Honduras, Nicaragua and the
Dominican Republic. CAFTA-DR is the first free trade agreement between the United States and
a group of smaller developing economies.

CAFTA-DR contains robust provisions for the protection of trademarks and other intellectual
property rights among the member states. In particular, CAFTA-DR implements the likelihood-of-
confusion test and makes it mandatory for all member states to allow for the registration of
collective marks, certification marks and sound marks.

19
“International Trademark Association- Fact sheets Cross Border Topics”, http://www.inta.org/.
 L. AGREEMENTS CONCLUDED BY EUROPEAN COUNTRIES

COMMUNITY TRADE MARK20

The Community Trade Mark (CTM) system was established in 1996 and initially covered the 15
member states of the European Union (EU): Austria, Belgium, Denmark, Finland, France,
Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden and the
United Kingdom. Since then, the CTM has been extended to the 13 countries that subsequently
joined the EU: Bulgaria, Croatia, Cyprus, the Czech Republic, Estonia, Hungary, Latvia,
Lithuania, Malta, Poland, Romania, Slovakia and Slovenia.

Before the introduction of the CTM registration system, it was necessary for an applicant to file a
trademark application in each individual EU member state and one application covering the
Benelux countries in order to obtain protection across the EU. Now it is possible to obtain a single
trademark registration covering the whole of the EU with a single application. The result is the
establishment of a self-contained legal system for trademarks within the EU and greater simplicity
and lower costs for applicants.

The CTM system is administered by the Office for Harmonization in the Internal Market (Trade
Marks & Designs) (OHIM), based in Alicante, Spain. Applications can be filed either directly at
OHIM or through the trademark registry of an EU member state.

BENELUX21

Benelux is an economic union of Belgium, the Netherlands and Luxembourg. In 1958, these three
states decided to create the Benelux alliance to be able to compete financially against more
powerful neighbor states, to protect each of their own interests and to enlarge their cross-border
cooperation.

The member states of Benelux entered into the Benelux Convention on Intellectual Property
(Trademarks and Designs) (BCIP), which fulfills the role of a joint legal framework in the fields
of trademarks and designs.

20
“Trademark Related Treaties- IUS Mentis”, http://www.iusmentis.com, Accessed on 3rd April 2016.
21
“International Trademark Association- Fact sheets Cross Border Topics”, http://www.inta.org/.
 V. GENERAL PRINCIPLES GOVERNING INTERNATIONAL TREATIES

There are certain fundamental guiding principles that form the framework for International
Treaties governing various aspects of Trademark Law.

These principles are provided for protection of intellectual property rights and provide specific
trademark rules.22

These General Principles can be expanded under following Heads :

1. NATIONAL TREATMENT PRINCIPLE.

The principle of national treatment is applicable to all industrial property rights. The principle
generally states that a member state may not subject foreigners benefiting from the Governing
Convention to higher industrial property protection standards than those applicable to its own
citizens. In addition, it is not necessary to justify that a trademark has been registered in the
country of origin prior to registering it in another member state.

A member state may also subject non-member protections to stricter conditions than those
applicable to its own nationals. A member state could also subject protection for these non-
members to a condition of reciprocity, residence, the payment of a supplementary fee, or
anything else.

The national treatment principle was the first elementary and efficient rule aimed at
facilitating the international protection of industrial property rights. This principle, asserted in
1883, has now been introduced into a number of International Treaties and applies between all
member states of such treaties.

2. THE PRINCIPLE OF INDEPENDENCE OF RIGHTS.

Under the principle of independence of rights, a trademark granted in a member state is

independent from those that already exist in other member states for the same object,
including in the country where it was first protected. Consequently, trademarks consisting of
the same sign designating the same goods and belonging to the same owner in several
International Convention member states are independent from one another.

This rule extends the national treatment principle to an extreme because the trademark owner
is subject exclusively to the national law of each country. The nullification, refusal, or transfer,

22
“The International Protection Of Trademarks After The Trips Agreement”; Joanna Schmidt-Szalewski; Duke
Journal Of Comparative & International Law [Vol 9:189].
 for example, of the trademark in one member state has no influence on the rights protected in
another member state.

The exceptions to the principle of independence include the priority right and the protection
of the trademark “as such.” The priority right in Article 4 is designed to facilitate the
international protection of industrial property rights. Within six months from the first
application in a member state, the applicant may file for registration of the same trademark in
other member states using the date of the first application. As a result, disclosures or uses of
the trademark within the priority period are not grounds for nullification of the mark. This
priority right exception does not apply to service marks under the Paris Convention. The
second exception is the protection of the trademark “as such” in Article 6quinquies. This
exception aims to solve the difficulties that arise from the existence of different prerequisites
for trademark protection in different countries. For instance, some national laws prohibit
registration of numbers or letters, whereas others allow such trademarks. Under such a system
it would be impossible for a trademark holder to use a mark in the same form in several
countries.

3. PRINCIPLES RELATING TO THE PROCEDURE OF PROTECTION

Most International Treaties contain relevant procedural provisions, stating that each member state
must “establish a special industrial property service, and a central office for the communication to
the public of patents, utility models, industrial designs, and trademarks.”

These Provisions Dictates member states must introduce procedures into their national legislation
that will allow an efficient action against any infringement of intellectual property rights. Member
states also must introduce means designed to prevent any further infringement of the rights and
are obligated to enforce both of the above measures “so as to avoid the creation of barriers to
legitimate trade and to provide for safeguards against their abuse.” Furthermore, procedures and
formalities required for the acquisition of rights must be reasonable and equitable and may not be
“unnecessarily complicated and costly,” nor include unreasonable or unjustified delays.23

A member state’s decision should be grounded on evidence only where the parties have had the
opportunity to be heard. While member states are not required to organize a separate judicial
system, they must provide a procedure for judicial review of all final administrative decisions.

In cases of infringement, rights holders may seek enforcement from judicial, administrative, and
customs authorities, through measures such as injunctions and penal sanctions, or through the
confiscation or destruction of counterfeit goods. If infringement is threatening, the owner may
demand provisional measures such as suspension of the goods from circulation.

“Trademark Law Treaty, WIPO References, WIPO Administered Treaties”, http://www.wipo.int/treaties/en/ip/tlt/.

23

Accessed on 3rd April 2016.

Though these provisions are stated expressly in TRIPS, yet they may be extended to majority, if
not all, to these International instruments.24

VI. CONCLUSION

What conclusions may be drawn from this brief overview of the international trademark
protection system? International trade means competition, which in turn, means conflict. In the
past, wars were fought to conquer new markets. In the future, a free and well-balanced
development of trade may help to avoid such conflicts. The recognition and protection of
industrial property rights is one element of this harmony, a condition for international peace and
these treaties may very well play a pivotal role in achieving such Utopia.

24
“The International Protection Of Trademarks After The Trips Agreement”; Joanna Schmidt-Szalewski; Duke
Journal Of Comparative & International Law [Vol 9:189].