International Trademark System and World Intellectual Property Organization - Essay Example

International Trademark System Introduction An invention or trademark of any trader ought to be sole property of the inventor and should be used only with each country in the world has a law that protects the intellectual property rights of their citizens. These intellectual property rights are protected using trademarks. The trademarks are meant to differentiate the product in the market to other products of usually the same category or otherwise. The dingle most goal of having a trademark is to give ownership rights to the inventor and exclude other people from using the same rights exclusively. These rights have been in recent times been set across borders and no longer restricted to a specific regional space. This is evident in the European Union where the European Union Trade Mark comes in to protect the intellectual property rights of trademarks in the European Union. However on the international scale, the United Nations came up with the world Intellectual Property Organization (WIPO) those administers an international trademark registration. The international Trademark Law was founded after the Madrid Protocol NA DTHE Madrid Agreement that sets out the rules on the registration, protection and enforcement off international trademarks. Tis paper will focus on the mandate of WIPO as outlined in the Madrid Protocol and the International Trademark system therein. The paper will also highlight the international treaties that have been declared under the organization and a sample case of such case in registration. The World Intellectual Property Organization WIPO was established in 1974 as a branch of the United Nations for the Basic reason of protecting industrial property and copyrighted works (Britannica n.d). The organization has its foundations on the Paris Convention, adopted in 1883 to protect intellectual property worldwide among the member states, and the Berne Convention, which made it mandatory for member countries to provide intellectual property protection for works produced outside the mender state territory. The Paris Convention and the Berne convention were merged in 1893 to form United International Bureau for the Protection of Intellectual Property (BIRPI). BIRPI would later dissolve to form WIPPO after it moved to Geneva. To date, WIPO has been in charge of the ratification of treaties among the member states specifically for the protection of intellectual property in each member country, create a global protection System and provide classification treaties on the trademarks and industrial designs (WIPO Administered Treaties). In total, these treaties add up to 26. WIPO intellectual property rights protection is divided into there: International Patent System, the International Trademark System and the International Design System. International Trademark System The international Trademark System is administered through the Madrid System that provides the registration platform and managing of marks all over the world. WIPO defines trademark as a sign that is capable of distinguishing the goods or service of one enterprise from those of other enterprises (WIPO Trademarks). Therefore the registration of this trademark confers upon the registering party the right to exclude other people from benefitting from use of the trademark or allow other persons to use the trademark in exchange for compensation. Within the Madrid System, a trademark for registration can include: words or a combination of words, letters and numbers; drawings, features of a product including but not limited to the shape or anything else that could be considered to meet the definition of a trademark under the organization (WIPO Trademarks). Subject to the exclusivity right obtained from registration, WIPO has in place a legal framework that guide the Intellectual Property Protection mandate of the organization. The legal Framework constitutes trademarks treaties that WIPO administered which include: Paris Convention, Madrid Agreement(Marks), Madrid Protocol, Nice Agreement, Vienna Agreement, Singapore Treaty, Trademark Law Treaty and the Nairobi Treaty(WIPO Treaties). Paris Convention This convention, adopted in 1883, forms the foundation for the mandate of WIPO the treaty is binding upon all the countries that are party to the agreement. The convention related to matters of patents, trademarks, industrial designs, tradenames, utility models and issues relating to unfair competition (Paris Convention for the Protection of Industrial Property WIPO). The treaty further addresses the national treatment, right of priority and common rules aspect of the IP protection. Under national Treatment, the Convention states that each contracting party must grant the same protection to national of other member states as it does to its own nationals. Article 3 of the convention further allows that for members of the non-contracting parties’ real and effective industrial and commercial establishment in the territory of the contracting parties to be granted the same treatment as the national of that country (PARIS Convention). The provision on right of Priority provides that protection of patents, marks and industrial designs that have been filed on the contracting state. If an applicant files an application within their state (being a contracting state), the applicant can seek for protection of the same trademark in another contracting state within 6 to 12 months and this application will be assumed to have been filed on the same date as the initial application. This subsequent application is considered to have priority over any other application by different applicants during the same period (WIPO Paris Convention). The provision on the Rights of Priority is provided for in Article 4 of the Paris Convention. The third component gives laws that are binding on the contracting parties with regards to the patents, marks, trade names, unfair competition, industrial designs and indications of source. The Convention has further been revised seven times the last being in 1979. The Madrid System In 1883 the Paris Convention was signed as the first treaty to protect intellectual property rights through the protection of industrial property. It is out of this convention at the Madrid agreement was formed subject Article 19 of the Convention, which allows the countries of the union to make agreements that promote the protection of industrial property as long as they do not contravene the Convention (WIPO). It is this regard that the Madrid System for the International Registration of Marks (Madrid System) was adopted which is a combination of the Madrid Agreement and the Madrid Protocol. Together the system is administered by WIPO. Established in 1891, the Agreement forms the foundation for the Madrid System and is complimented by the Protocol in its operation. The agreement provide a, mechanism through which one can file for an international trademark without having to register the same trademark in the member country, provided the county is a contracting party to the Agreement (Feliu 2007).The Protocol was established in 1989 out of the need to address the challenges (Feliu 2007) that were seen to have been facing the administration of the Agreement. The Protocol works on the same principle of the Agreement. The objective of the protocol was to make the system flexible and compatible with the various regulations in the member countries (WIPO Madrid System Summary). The protocol allows an applicant to register their trademark in other contracting parties’ states. Presently, the Madrid System is party to approximately 97 states. The agreement allows for application to be made by any natural person or a legal entity that is found to have connections with a contracting party. According to the agreement, eligible applicant may register a Mark provided it has been registered with the trademark office of the contracting party with which the applicant has the necessary connection. For an applicant from the United States, which is a contracting party since 2003, the office of Origin will be the United States Patent and Trademark Office. Nice Agreement The nice Agreement, adopted 1957, was specifically adopted to help in the classification of goods and d=services in facilitating the registration of marks Nice agreement requires that each that the offices of origin in each contracting state to formally provide the classes of the classification to which the good or service to be registered belongs (WIPO Administered Treaties). The total contracting parties to the Agreements is 84 states, trademark offices of 65 states, the European Union, African Intellectual Property Organization, Benelux organization for Intellectual property, the office of Harmonization in internal Market and the African regional Intellectual Property Organization. The classification is provided for by the Agreement has 34 classes of goods and 11 classes for services that are subject to review by the Committee of Experts. All contracting parties of the Paris Convention are allowed to be party to the Nice Agreement. Vienna Agreement The Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (Vienna agreement), just like the Nice Agreement also established the classification but for the case of marks that consist of/contain figurative elements. The Agreements was adopted in 1973 but has since been amended once in 1985. The Vienna Agreement requires the office of origin of the contracting states to include in the registration or renewal of marks, the classes to which the figurative elements of the required mark of registration belong. Under this Agreement, there exists classification of figurative elements into 29 categories, 145 Divisions and 1700 sections. These classes of classification are however subject to reviews by the Committee of Experts on a periodic basis. This classification has been applied by the international Bureau of WIPO, the Benelux Organization for Intellectual Property, the African Intellectual Property Organization and the office for Harmonization in the Internal Market of EU. The Agreement is open to all contracting parties of the Paris Convention for ratification through the Director General of WIPO and at present only 31 states has ratified this Agreement. Trademark Law Treaty (TLT) The TLT, concluded and adopted in 1994, gives the opportunity to all contracting parties of the Paris Convention to be privy to the registration procedures provided by the Law. TLT was mainly adopted for the purpose of standardizing the national and regional registration procedures (WIPO summary TLT). The treaty and the provision therein are centralized under three phases: application for registration, changes after registration and the renewal. The first phase of the registration requires that the contracting parties require of the applicant certain indications as provided under the Regulations of the Treaty: a request, name and address (rule 2) and details concerning the application (rule 3); indications on the mark including the classification of the mark under the Nice Agreement and to some extent indications of what the applicant intends to use the mark. The second phase concerning the changes after the registration includes the elements of changes in the names and addresses ( rule 2) and the provisions of the treaty allows that the applicant to make one application with regard to several changes requirements. The treaty also gives guidelines on renewal procedure especially on the standard time interval between registration and renewal of applications. Apart from the Regulations, the Treaty also includes Model International Forms (MIF) on matters of application; power of attorney; request for changes in names and addresses; certificate of transfer; transfer of document; request for correction of mistake; request for renewal of registration (WIPO Model International Forms). The Treaty allows that a contracting party may draft its own form applicable to its applicable provide such forms do not require mandatory elements that would be additional to the elements referred to in the corresponding MIF (WIPO summary TLT). There are a total of 53 contracting parties that are bound by the provision of the Treaties and its affiliated regulations. Singapore Treaty The Singapore Treaty on the Law of Trademarks is an expansion of the Trademark Law Treaty of 1994 that addresses the recent development in the registration procedure of trademarks. The Singapore Treaty has also adopted the regulations that guide its operations since November 2011, a resolution by the Diplomatic Conference to supplement the Treaty and there is also in place the Model International Form as at March 2006. Presently, there are total contracting parties of 45 that are subject to the treaty. The Singapore Treaty was reached at in 2006 for the purpose of providing a modern and dynamic international framework for the harmonization of administrative trademark registration procedures (WIPO Summary of Singapore Treaty). This treaty is applicable on all trademark application that is made to WIPO. The Singapore treaty brings to the table a few changes to the Treaty of 1984 that include the creation of an assembly, trademark license Record Provisions, relief Measure when Time Limits are missed, other non-traditional marks includes and the use of electronic media in communications (International Trademark Association 2006). The Treaty has set up an assembly that is mandated to amend the MIFs and foster the development of the treaty. The flexibility of the Treaty in the registration procedures is reflected in the inclusion of the extension of the time limits, allowing continued processing and reinstating the rights if time limit was passed for justifiable reasons. The time limit and continued processing is granted on request within two months after the time limit set has elapsed while requests for reinstatement are made within, at most, six months after the time limit expiry. The treaty has allowed further that the registration of marks include non-traditional marks that include, but not limited to, the holograms, color, position and non-visible marks such as sound or feel of the mark (WIPO Summary of Singapore Treaty). Further to this, the Treaty slows the contracting parties to choose their preferred means of communications (WIPO Summary of Singapore Treaty) either in paper, in electronic form or in any other form. This provision however affects the authentication factor as provided for by the TLT, which does not provide for certification of signatures except in the case of surrender of registration. The contracting parties can however choose on the means of authentication of electronic communications. The treaty is also accompanied by a Resolution by the Diplomatic Conference that gives each contracting party the freedom to decide on the adoption of the new marks of registration. The resolution further implores WIPO and the contracting parties to provide technical assistance in the implementation of the treaty in the least developed countries (Resolution 4), who shall be given preferential treatment in the implementation the treaty in their states (Resolution 7). Resolutions 9 give the contracting party the opportunity to settle disputes on the interpretation of the treaty and its implementation through amicable means (WIPO Resolution on Diplomatic Conference supplementary on the Singapore Treaty on the Law of Trademarks). Nairobi Treaty The Nairobi Treaty on the Protection of the Olympic Symbol was adopted in 1981 for the specific role of protecting the five interlaced rings of the Olympics. The treaty does not allow the use of this symbol for commercial purposes such as in advertisement without the proper authority of the International Olympic Committee (WIPO Nairobi Treaty). If the international Committee grants this authority then the national committee of the contracting party is due to a portion of the revenues generated from such authority. Ratification of this treaty is done through WIPO and is open to all contracting parties to the PARIS Convention, WIPO member states, members of the United Nations and any other member of the affiliated agencies of the United Nations. The International Trademark Registration Process The World Intellectual Property Organization requires that before an applicant makes an international application for a mark, the mark has to be registered in the home office, generally the office of origin within the contracting state of the applicant. WIPO defines this registration as the basic mark. Once the registration is granted, the applicant needs to make the international application through the office of origin which has the obligation and mandate to forward to the respective office in WIPO. Once received, WIPO conducts an examination of the application before it is approved. All approved registration are published in the WIPO gazette of International Marks and notifications of the same given to all other contracting states IP offices where the applicant seeks protection. However, the decision of whether to protect the registered mark is left on the various IP offices in the states where protection is being sought within 12 to 18 months after the receipt of the protection based on their regulations. The decision of not to protect, either fully or partially, in one state does not influence the protection decision in other states. WIPO allows the applicant to appeal on the decision of refusal of protection to the IP office that refused to grant the protection. All the IP offices that accept the application of protection in their territories have to issue a statement on the protection. The renewal of the registration is set after each ten year period following the grant of protection. Once protection is granted on any mark is granted under the laws and treaties of WIPO, then the applicant has the legal authority to exclude other people from the use of the mark in any way that can be construed to bring commercial benefit to the third party. Disputes Resolution: case study The grant of protection implies that third parties that use the mark that has been registered by WIPO without the proper authorization of the applicant and for commercial purposes are bound to enter into conflicts. For this reason and its probability of occurrence, WIPO set up the Arbitration and Mediation Center. The center is responsible for the receipt, and determination of dispute cases involving intellectual property brought before it. The center therefore advises for other means of dispute resolution other than court litigation which include: Mediation, Arbitration, expedited Arbitration or Expert determination. The parties to the resolution are however free to choose which method they wish to use in the dispute resolution. One case in point includes the resolution method of expedited arbitration. The parties to the dispute were European Company that was engaged in the production of luxury goods and another Asian manufacturer. The European Company had made an application for the registered of a trademark for those goods and the trademark had received protection grant. The Asian Manufacturer began to sell their products, fashion products, with the same trademark. This was the start of the dispute. The Asian Manufacturer was under the impression that the European had no right of use of the trademark. The Asian Manufacture therefore filed a case of non-use against the European Company in two European Countries for the use of the trademark. The court case went all the way up to the appeal and the result of the case was decide that the two companies would be engaged in coexistence agreement which included a clause on the WIPO expedited arbitration should there arise the need for dispute resolution. Despite the agreement, when the European Company used the trademark during a trade fair, the Asian Manufacturer applied for arbitration proceedings to be taken against the European Company. The ground for the proceedings applications was the ‘infringement of the Coexistence agreement by the European Company. Conclusion The intellectual property of all traders ought to be protected and they have always been protected in the various regional spaces. However, the completion and the subsequent adoption of the Paris Convention in 1883 was the beginning of protecting these rights on the international level. The convention allows that these rights are protected in various countries which are contracting parties to the convention and regarded as members to the convention. The Paris convention formed the foundation of the World Intellectual Property Organization that has further lead to the enactment, establishment and adoption of several other treaties. The contracting parties to these agreements are bound by the provisions of the agreements and treaties and thus promoting invention on the global scale or rather, beyond the national space. The organization further has in place a dispute resolution center which promotes and protects the various inventions and trademarks without infringing on the rights of the owner. References International Trademark association Policy and Advocacy: Singapore Treaty on the Law of Trademarks November 8 2006 [online] available from: www.inta.org/Advocacy/Pages/SingaporeTreatyontheLawofTrademarks.aspx accessed 12/9/2016 WIPO Treaties [online] available from: www.wipo.int/trademarks/en/index.html#laws accessed 12/9/2016 WIPO Administered treaties [online] available from: www.wipo.int/treaties/en/ip/paris/summary_paris.html accessed 12/9/2016 WIPO Administered Treaties: Summary of the Trademark Law Treaty [online] available from: www.wipo.int/treateies/en/ip/tlt/summary_tlt.html accessed 12/9/2016 WIPO Trademark Law Treaty: Model International Forms [online] available from: www.wipo.int/wipolex/en/treaties/text.jsp?file=294346 accessed 12/9/2016 WIPO Administered Treaties: Summary of the Singapore Treaty on the Law of Trademarks [online] available from: www.wipo.int/treaties/en/ip/singapore/summary_singapore.html accessed 12/9/2016 WIPO Resolution on Diplomatic Conference supplementary on the Singapore Treaty on the Law of Trademarks [online] available from: www.wipo.int/wipolex/en/treaties/text.jsp?file_id=291518 accessed 12/9/2016 Read More