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International Agreements: Madrid Protocol, Trademark Law Treaty, and Singapore Treaty on the Law of Trademarks Global Intellectual Property Academy Amman, Jordan November 5 - 8, 2007. Nancy Omelko—Attorney-Advisor (Trademarks) Office of Intellectual Property Policy and Enforcement

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Nancy Omelko—Attorney-Advisor (Trademarks) Office of Intellectual Property Policy and Enforcement United States Patent a

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International Agreements: Madrid Protocol, Trademark Law Treaty, and Singapore Treaty on the Law of TrademarksGlobal Intellectual Property AcademyAmman, JordanNovember 5 - 8, 2007

Nancy Omelko—Attorney-Advisor (Trademarks)

Office of Intellectual Property Policy and Enforcement

United States Patent and Trademark Office

rationale for joining international trademark treaties
Rationale for Joining International Trademark Treaties
  • Trademark rights are territorial.
  • But—commerce is international.
  • Need to protect the marks of your nationals both at home and abroad.
  • Treaties provide the means to standardize ways to protect marks.
  • Standardization can reduce uncertainties and streamline process.
paris convention
Paris Convention
  • Article 2—National Treatment
  • Article 4—Right of Priority
  • Article 6—Well-known Marks
  • Article 6ter—State Emblems, Official Hallmarks
  • Article 6quinquies—Refusal Limitations
    • infringing; non-distinctive; contrary to morality.
paris convention continued
Paris Convention (continued)
  • Article 7bis—Collective Marks
  • Article 8—Trade Names
  • Article 9—Seizure
  • Article 10—Prohibition against false indication of source
  • Article 10bis—Unfair Competition
  • Article 10ter—Remedies
  • Article 1—Categories of IP
  • Article 2—Compliance with Paris Convention
  • Article 3—National Treatment
  • Article 4—Most-Favored-Nation Treatment
trips trademarks
  • Article 15—Defines protectable subject matter
  • Member countries:
    • May require that signs be visually perceptible
    • May require use
    • Must publish before or promptly after registration
    • Must afford an opportunity for petitions to cancel.
    • May afford opportunity to oppose registration.
trips trademarks continued
  • Article 16—Describes rights conferred
  • Registered trademark owners have the exclusive right to prevent third parties from using identical or similar signs.
  • Article 6bis of Paris shall apply to service marks
  • In determining whether a mark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member which has been obtained as a result of the promotion of the trademark.
trips trademarks continued8
  • Article 17—Exceptions—such as fair use
  • Article 18—Term of Protection and Renewal—no less than 7 years
  • Article 19—Requirement of Use—may be cancelled only after an uninterrupted period of 3 years. Excusable Non-use permitted.
  • Article 21—Licensing and Assignment
    • Compulsory licensing prohibited
    • Right to assign with or without transfer of business
trips geographical indications gis
TRIPs—Geographical Indications(GIs)
  • Article 22—Defines GIs—Provides legal means of protection for rightholders
  • Article23—Additional Protection for GIs for wines and spirits
  • Article 24—International Negotiations; Exceptions
madrid protocol a filing treaty
Madrid ProtocolA Filing Treaty
  • International Application (IA) filed through national trademark office
  • The IA must have a basis at the national office:
    • Pending application
    • Registration
  • The national office must certify that the IA is the same as the basis
extensions of protection
Extensions of Protection
  • The applicant for IA designates the countries where it want its protection to be extended.
  • This can be done at the time the IA is filed—or later, as a subsequent designation.
  • If the IA meets all the formalities of WIPO, including payment of the fees in Swiss Francs, each requested extension of protection is sent to the national office for consideration.
  • The national office will evaluate the request on the basis of its own laws.
  • Provides for the centralized acquisition, maintenance and management of trademark rights around the world by filing a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated.
  • Appoint a representative before the WIPO
  • Change name or address of holder or representative
  • Cancel some or all goods/services in IR, and thus for all DCPs
  • Record a license
  • Restrict holder’s right of disposal
  • National office only has 12 months—or 18 months at most to refuse registration.
trademark law treaty procedural treaty
Trademark Law Treaty: Procedural Treaty

Article 2:

  • (1) Applies to visible signs;

- does not apply to holograms;

- does not apply to sound and olfactory marks.

  • (2) Applies to marks relating to goods and services.

- does not apply to collective marks, certification marks and guarantee marks.

  • Article 3: What countries can require in an application
    • Declaration of use or intent to use.
    • Fees
    • Language
    • Signature
    • Multiple-class application
    • Actual use
what countries cannot require
What Countries Cannot Require
  • The furnishing of any certificate of, or extract from, a register of commerce;
  • An indication of the applicant’s carrying on of any industrial or commercial activity, as well as the furnishing of evidence to that effect;
  • An indication of the applicant’s carrying on of an activity corresponding to the goods and/or services listed in the application as well as the furnishing of evidence to that effect;
  • The furnishing of evidence to the effect that the mark has been registered—except for Paris priority.
filing date article 5
Filing Date—Article 5
  • Can require:
    • Request to register
    • Identity of applicant
    • Mailing address
    • Clear reproduction of the mark
    • List of goods/services
    • Declaration of use or intent to use
    • Fees
  • Cannot require: Anything else
signature article 8
Signature—Article 8
  • Must accept a handwritten signature
  • If country accepts faxed documents, must consider communication signed if signature appears on facsimile—may require original be submitted within time
  • If country accepts electronic filing, must consider signed if sender identified properly.
  • May not require authentication—except for surrender of registration.
classification of goods services
Classification of Goods/Services
  • Goods/services may not be considered as being similar to each other simply because they are in the same class of Nice.
  • Goods/services may not be considered as being dissimilar to each other simply because they are not in the same class of Nice.
change of address ownership
Change of Address/Ownership
  • Article 10—Country may not request a certificate reflecting the change in name or address.
  • Article 11—Country may not require the following proof of ownership:
    • Certificate from register of commerce;
    • Indication of new owner’s commercial activity—with or without its corresponding to goods/services;
    • Indication of transfer of good will.
duration and renewal of registration
Duration and Renewal of Registration
  • Duration of initial and subsequent renewal—10 years
  • Country may not require:
    • Reproduction of the mark
    • Proof of registration or renewal in another country;
    • A declaration or proof concerning use of the mark.
singapore treaty
Singapore Treaty
  • The Diplomatic Conference for the negotiation and adoption of the Revised Trademark Law Treaty was held in Singapore, March 13-28, 2006, under the auspices of the World Intellectual Property Organization (WIPO).
  • The treaty is the product of 7 working sessions of the WIPO Standing Committee on the Law of Trademarks, Geographical Indications and Industrial Designs (SCT).
  • This treaty updates the 1994 Trademark Law Treaty to which the U.S. is a party.
electronic communication provisions
Electronic Communication Provisions

The Singapore Treaty allows for Offices to take advantage of electronic communication systems as an efficient and cost saving alternative to paper communications, at such time that the Office is ready to embrace the technology.

license recordal provisions
License Recordal Provisions
  • The license recordal provisions will reduce the formalities that trademark owners must face when doing business in a country that is a Party to the Singapore Treaty that requires recordal and will reduce the damaging effects that can result from failure to record a license in those jurisdictions.
  • For companies with significant licensing practices, this will represent an immense cost savings.
  • The Assembly provisions create a more attractive treaty for WIPO Member States to join since the built-in review mechanism allows for adapting the treaty to changing times.
relief measures when time limits are missed
Relief Measures when Time Limits are Missed:
  • in cases in which a time limit has been missed for an action in a procedure relating to an application or registration.
    • (i) extension of the time limit;
    • (ii) continued processing; and
    • (iii) reinstatement of rights if the trademark office finds that the failure to meet the time limit occurred despite due care taken, or if the failure was unintentional.
non traditional marks
Non-Traditional Marks
  • Now can applied to all signs registrable under the national law of any Contracting Party, including non-visible signs such as sounds and smells, in addition to nontraditional marks such as three-dimensional marks and holograms.
entry into force
Entry into Force

The Treaty shall enter into force three months after ten States or intergovernmental organizations having a regional trademark office have deposited their instruments of ratification or accession.

  • Paris Convention—172
  • TRIPS—151
  • Madrid Protocol—74
  • Trademark Law Treaty—39
  • Singapore Treaty—2 ratifications
  • Nice Agreement (Classification)—81
thank you
Thank you

Nancy Omelko

Office of Intellectual Property Policy and Enforcement