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International Intellectual Property

International Intellectual Property. Prof. Manheim Spring, 2007. Trademark Formalities. Copyright © 2007. TM Formalities. Why Registration? Identifies rights holders Excludes meritless claims Resolves priority disputes Compare Copyright & Patent

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International Intellectual Property

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  1. International Intellectual Property Prof. Manheim Spring, 2007 Trademark Formalities Copyright © 2007

  2. TM Formalities • Why Registration? • Identifies rights holders • Excludes meritless claims • Resolves priority disputes • Compare Copyright & Patent • Berne prohibits © formalities (outside CofO) • Paris requires patent formalities • Int’l TM conventions • All require or permit registration IIP

  3. IIP

  4. US Registration • Principal Register • Must be distinctive or acquired 2ndary meaning • Benefits • Presumption of validity • Incontestability after 5 years • Constructive nationwide notice • Protects “related” goods/services • Treble damage for willful infringer • Supplemental Register • If capable of distinguishing products or services • Establishes priority, federal jurisdiction IIP

  5. Priority • First-to-Register Countries (civil law) • Entitlement based on seniority of registration • Modest examination process (if not previously ® ) • First-to-Use Countries (common law) • Entitlement bases on priority of technical use • Adoption of mark by claimed owner • Public use in a way to identify or distinguish the marked goods as those of the adopter of the mark • No need to affix the mark to the good (packaging is ok) • “Token use” (merely to create TM rights) is insufficient • “Analogous use” (e.g., taking orders) is also insufficient Compare patent priority IIP

  6. IIP

  7. Priority • First-to-Register • Pros • Easier to administer • Priority disputes easily resolved • Incentivizes new companies and new products • Cons • May encourage “warehousing” of marks • Race to TM office, rather than creation or use • US System is mixed • Nominally first-to-use • “Intent-to-Use” approximates 1st-to-Register IIP

  8. Registration per TRIPs • Article 15 Protectable Subject Matter 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. IIP

  9. Registration per Paris • Article 6 Conditions of Registration (1) Conditions for the filing and registration of TM shall be determined in each country of the Union by its domestic legislation. (2) An application for 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 IIP

  10. US Registration Process • 15 USC §1051 Application for Registration (a) Application for use of trademark (1) The owner of a trademark used in commerce may request registration on the principal register by paying the prescribed fee and filing in the PTO an application (b) Application for bona fide intention to use (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 Traditional route actual use New route (1989 TLRA) intent to use IIP

  11. US Registration Process • 15 USC §1062 Publication (a) Examination and publication The application is referred to the examiner in charge of registration, who shall examination the applicat’n If it appears the applicant is entitled to registration, the mark is published in the PTO Official Gazette • 15 USC §1063 Opposition to registration (a) Any person who believes that he would be damaged by registration of a mark may file an opposition within thirty days after publication IIP

  12. US Registration Process • 15 USC §1051 Application for Registration (d) Statement that TM used is in commerce (1) Within six months after notice of allowance is issued, applicant shall file a verified statement that the mark is in use in commerce and specifying the date of first use • 15 USC §1063 Opposition to registration (b) Unless registration is successfully opposed (1) a mark entitled to registration under §1051(a) shall be registered, a certificate of registration issued, and notice of the registration published in the Official Gazette; or (2) a notice of allowance shall be issued for registration under §1051(b) of this title. otherwise deemed abandoned IIP

  13. US Compliance w. TRIPs • Timing • TRIPs: 3 years from application • US: 6 months from issuance • Extensions under §1051(d)(2) • The Director shall extend, for one additional 6-month period, the time for filing the statement of use … upon written request … before expiration of 6-months • 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. Most notices of allowance issue within 1 year IIP

  14. Basic Paris Principles • National Treatment - Art. 2(1) • Nationals of any country of the Union shall … enjoy in all other countries of the Union the advantages that their respective laws grant to nationals • Territoriality & Independence - Art. 6(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. • Priority - Art. 4(A)(1) • Any person who has duly filed an application for registration of a trademark, in one of the countries of the Union shall enjoy, for [filing] in other countries, a right of priority [for trademarks, this is 6 months] IIP

  15. Priority under Paris • Art. 4 • C.(1) The periods of priority referred to [in 4(A)(1)] shall be twelve months for patents and utility models, and six months for industrial designs and trademarks • Art. 6quinquies • 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 • F. The benefit of priority shall remain unaffected for applications for the registration filed within the Art. 4 period, even if registration in the country of origin is effected after the expiration of such period IIP

  16. Priority Under US Law • 15 USC § 1126 (Lanham Act “Section 44”) (b) Benefits to nationals of member country Nationals of member country are entitled to benefits of this section, in addition to the rights to which any owner of a mark is otherwise entitled by this chapter. (c) Prior registration in country of origin US registration under (b) shall not be granted until the mark is registered in the country of origin of applicant, unless the applicant alleges use in commerce. (d) Right of priority Application for registration of member country shall be given priority date in US: Provided that US application is filed within six months; Implements Paris Art. 4 IIP

  17. SCM v. Langis Foods (1976) • Facts • Langis files CA app w/o prior use (3/28/69) • Actual use in Canada begins later (5/15/69) • SCM actual use (LEMON TREE) in US (5/15/69) • SCM files US app for LEMON TREE (6/18/69) • Langis files US app (9/19/69), seeks priority • Priority period for Langis lapses after 9/28/69 • SCM actual use (ORANGE TREE, LIME TREE) (6/70) • SCM files US app for ORANGE, LIME (7/70) • USPTO issues LEMON regis’n to Langis (10/1971) IIP

  18. SCM v. Langis Foods (1976) • 15 USC § 1126 (d) Right of priority - Application for registration of member country shall be given priority date in US: Provided that US application is filed within six months • Holding: • Constructive filing date in Canada not defeated by failure to use in US within 6 months IIP

  19. SCM v. Langis Foods (1976) • More favorable treatment to foreign filers? • Although 1051(b) allows ITU filing • 1051(d) requires verified statement of US w/in 6 mo • Section 44 does not require use within 6 mo. • Is this required or allowed by Paris? • Is it fair? • Priority based on foreign filing gives applicant time to decide whether to commercialize within US market; acts during 6 mo. can’t defeat application • Note extended priority period for patents • 12 months (Paris) or 30 months (PCT) IIP

  20. Paris “telle quelle” Provision • Art. 6 • (1) The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation • Art. 6quinquies (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 • (2) The Union country of origin is where the applicant • has an industrial or commercial presence, or, • the country of the Union where he has his domicile, or, • the Union country of which he is a national. IIP

  21. Paris “As Is” Provision • Art. 6quinquies • B. Trademarks covered by this Article may be neither denied registration nor invalidated except: (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 [re product qualities], 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 … 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. IIP

  22. Paris “As Is” Provision • Relates principally to matters of form • Can’t deny registration based on form of TM • Even if that form not approved in 2d country • But what constitutes “form” • Simply the “style” of the TM (Bodenhausen), or more basic? • TM subject matter & other TM elements not covered by Art. 6quinquies • Problem 4-3 • Must Country B permit registration of smells if applicant obtains registration in Country A? • Is smell an issue of “form” or subject matter? unresolved IIP

  23. EU v. US (WTO 2002) • Facts • Cuba expropriates Havana Club mark (1959) • Cubaexport registers Havana Club in Cuba (1974) • Begins marketing outside US • Files “Section 44” application in US (w/in 6 mo) • US Cert. of Registration (1976); Renewed (1996) • Bacardi exports Havana Club Rum to US (1996) • Omnibus Blah Blah Act § 211 • Bars enforcement of marks confiscated by Cuba • Unless registered by US national IIP

  24. EU v. US (WTO 2002) • Effect of TRIPs, Art. 15(2) • Par 1 (recognition of TM) shall not be understood to prevent a Member from denying registration of a TM on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967). • Effect of § 211 • Does it regulate “ownership” (US argument) • § 211 denies ownership to confiscated marks • The law need not determine rightful owner • Or curtail TM of certain right holders (EU arg)? • Ownership determined by lex loci or lex fori? • Recall Itar-Tass v. Russian Kourier IIP

  25. EU v. US (WTO 2002) • Registrations recognized by Paris/TRIPs • Reg under Art. 6(1) is per national law • US could apply ownership requirements of § 211 • Reg under Art 6quinquies (“additional” rights) • Must first register in Country of Origin; plus • Comply with member state’s registration laws • What local law does Art 6quinquies allow? • US: all laws (including substantive) except the form(telle quelle: “existing state”)the TM takes • EU: telle quelle includes all aspects of the TM IIP

  26. EU v. US (WTO 2002) • What local law does Art 6quinquies allow? • Panel: Art 6quin. relates only to “form” of TM • Appellate Body: Art 6quin does not bypass 6(1) • Otherwise substantive TM law of country of origin would apply throughout Union • § 211 doesn’t violate Paris • Further story • § 211 violates MFN Treatment (TRIPs Art. 4) • Due to its exception for US & non-Cuban nationals • See H.R. 3372: Trademark Defense Act of 2005 • Repealing § 211 IIP

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