Brief Introduction to Related International Treaties and Conventions (Trademark)

This article is written by Komal Prabhakar, final year student of BA.LLB. from The Law School, University of Jammu, an intern under Legal Vidhya.

“A trade-mark is a species of property, and the law protects it in the same manner as it does other property.”

– Justice Stephen J. Field (US Supreme Court decision in 1879[1]

INTRODUCTION

Today’s world has evolved into a multi-national commercial environment where trade and commerce are essential to the survival of every country’s economy. It has been more difficult to distinguish one good from another by their identification and quality. Similar to how names identify people and businesses, trademarks are used to identify goods and services. They have the benefit of identifying goods and services in manners that are engaging and universally identifiable. With the advent of globalisation and the idea of free trade and business, the regime of intellectual property rights has drawn increasing attention, been the topic of development, and is currently the source of greater worry. One of the branches of intellectual property, trademarks, has seen change and development in the recent years. The usage of trademarks has a long history, starting with the marks used by potters in Roman times and continuing with today’s well-known marks like the “golden arches” of McDonald’s, the “swoosh” of NIKE, or the name COCA-COLA.

The Industrial Revolution brought about a number of improvements and alterations to the commercial environment, including an increase in the number of available goods, a revolution in transportation, widespread and long-distance distribution, and ultimately the emergence of the global economy and international trade. From well-known firms providing a local market to today’s mass marketing and international marketplaces, the use and significance of trademarks have flourished.

The expansion of global trade has led to an increase in the development of mass marketing strategies and media advertising practises. Such advancements emphasise and increase the usage of trademarks and their significance. On the other hand, a legal framework for the protection of trademarks from an international perspective has to be developed due to the fast expansion of the global market. Because of this, a system enabling businesses to register and defend their marks in numerous nations throughout the world has been formed through a number of agreements, international treaties, and legislative measures.

INTELLECTUAL PROPERTY RIGHTS(IPR)

The term “Intellectual Property Rights” (IPR) refers to legal protections for cognitive works, including inventions, literary and creative productions, designs, symbols, and names used in commerce. IPR grants exclusive rights to creators, owners, and inventors to manage the use and dissemination of their creations in order to promote innovation and creativity. These rights grant the owner the power to regulate the use, duplication, distribution, and exhibition of their intellectual property and to pursue legal action against anybody who infringes on those rights. IPR rules differ from nation to nation, but they are normally enforced through court orders and lawsuits. It includes the following: –

1. Patent
2. Copyright
3. Trademark
4. Industrial designs
5. Geographical indications
6. Trade secrets

TRADEMARK

A trademark is a sign, or a group of marks, that is used to set one company’s products or services apart from those of another. A trademark’s owner has the sole authority to forbid anyone from using the mark to distinguish particular goods or services in the marketplace without the owner’s permission. The trademark’s owner has the option of using it themselves or granting permission for others to do so, generally through a licence that requires money or other perks. Additionally, trademarks may be delegated to another owner, who will then take over the trademark’s associated legal rights.

INTERNATIONAL TREATIES AND CONVETIONS RELATED TO TRADEMARK

 The rules and regulations governing trademarks and related issues were established by multilateral treaties and agreements like the Paris Convention, the Madrid Agreement and Madrid Protocol, TRIPS, the Trademark Law Treaty, and the Singapore Treaty on the Law of Trademarks. These accords lay forth the worldwide, local, and national legal framework for the protection of trademarks. The protection of rights, harmonisation of legislation, and multilateral filing are the fundamental goals of these treaties affecting trademarks. The significant trademark-related treaties and conventions are listed below: –

1. PARIS CONVENTION[2]– An international agreement known as the Paris Convention for the Protection of Industrial Property was originally signed in Paris, France, in 1883. A framework for the protection of industrial property rights, such as patents, trademarks, and industrial designs, among member nations was established by the agreement. The Paris Convention has undergone numerous revisions, the most recent of which was in 1979, to take into account technological advancements and new concerns around intellectual property. One of the most commonly ratified international treaties relating to intellectual property rights, the Paris Convention now includes 177 member nations. The key principles of this convention are as follows: –
2. National treatment: Every member nation is expected to accord foreign trademarks the same level of protection as it does its own trademarks. The same rights and legal safeguards are thereby provided to domestic and foreign trademark owners.
3. Priority: Within a certain timeframe, an applicant who has submitted a trademark application in one member nation may assert priority for the same trademark in other member countries.
4. Registration – Establishing a system for trademark registration and publishing information about registered trademarks in an official gazette or comparable publication are requirements for member countries.
5. Non-use and invalidation: The Paris Convention allows for the cancellation or invalidation of trademarks that have either fallen into generic status or have not been used for a predetermined amount of time.
6. Prohibition of confusing or immoral trademarks: Members of the European Union are forbidden from registering trademarks that are likely to be confused with already-existing trademarks or that are immoral or harmful to public order.

Overall, the Paris Convention offers a framework for trademark protection that encourages global collaboration and the harmonisation of trademark laws across signatory nations.

• MADRID AGREEMENT[3] – An international agreement known as the Madrid Agreement Concerning the International Registration of Marks was first signed in Madrid, Spain, in 1891. With the agreement, trademark owners will have access to a streamlined procedure for the international registration of their marks, enabling them to obtain protection for their brands across a number of nations with just one application. The Madrid Protocol, which was enacted in 1989 and permits the international registration of trademarks through a comparable procedure, currently complements the Madrid Agreement, which has undergone multiple revisions, most recently in 2010. The Madrid Agreement is one of the most generally ratified international agreements pertaining to trademark registration and protection as of 2021, with 105 member nations. The Madrid system benefits trademark owners in a number of ways. The key principles of this agreement include the following: –
• International filing: A trademark owner may submit an application for protection in one or more WIPO member nations by submitting an international application with the organisation.
• Examining and registering: WIPO reviews the international application and registers the trademark if it is accepted. The trademark is subsequently automatically protected in all member nations that have been chosen.
• Renewal: To keep their rights in force, trademark owners must continue to pay annual renewal fees for their international trademark registrations.
• Assignment: International trademark registrations may be fully or partially assigned to other parties, and any such assignment must be filed with the WIPO.
• Cancellation: In some cases, such as when the trademark holder neglects to maintain protection in one or more designated member nations, international trademark registrations may be terminated.
• Transformation: In some circumstances, such as when the trademark is denied protection in one or more designated member nations, international registrations may be converted into national registrations.

In general, the Madrid Agreement streamlines the process for trademark owners to request protection in several nations with a single application and centralised WIPO administration. This facilitates international harmonisation and collaboration in the area of trademark law while lowering administrative costs and burdens for trademark owners.

• MADRID PROTOCOL[4] – An international agreement known as the Madrid Protocol was formed in 1989 to make the procedure of registering trademarks across numerous nations simpler. The Protocol, which is overseen by the World Intellectual Property Organisation (WIPO), is currently one of the main procedures for registering trademarks globally. A trademark owner may submit a single international application to WIPO under the Madrid Protocol, specifying the member nations in which they want to seek protection. The trademark is then immediately protected in all specified member countries after the application has been reviewed and registered by WIPO. The Madrid Protocol has a number of important components, including:
• Simplified filing: The Madrid Protocol enables trademark owners to submit a single application to the World Intellectual Property Organisation (WIPO) rather than making separate submissions in each nation where they want protection.
• Centralised administration: Under the Protocol, WIPO acts as the central administering authority for the registration of international trademarks, streamlining the procedure and lowering administrative burdens.
• Flexibility: Under the Protocol, trademark owners are free to enlarge the number of nations included in their worldwide registration at any time and to renew it for a further 10-year period.
• Cost savings: Trademark owners can avoid the expenses of submitting individual applications in various nations by submitting a single international application.
• Coordination with national laws: The Protocol is made to operate in accordance with each member country’s trademark laws, ensuring that trademark owners enjoy uniform protection everywhere.

The Madrid Protocol, one of the most generally ratified international agreements relating to trademark registration and protection, has 108 member nations as of 2021.

• NICE AGREEMENT[5] – A convention initially signed in 1957 in Nice, France, is the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. In order to facilitate the international protection of trademarks and streamline the trademark registration process, the agreement aims to offer a standardised framework for categorising goods and services for trademark registration. Since it was first approved, the Nice Agreement has undergone multiple revisions, the most recent of which was in 2019. The World Intellectual Property Organisation (WIPO) presently oversees its administration. More than 150 nations utilise the nice categorization for trademark registration and categorization as of 2021. According to the Nice Agreement, the following guidelines must be followed when classifying goods and services for trademark registration:
• 45 classes: There are 45 classes for products and services, with classes 1-34 covering goods and 35-45 covering services.
• System of classification: Each class is described by a particular collection of phrases that specify the kind of commodities or services that fall under its umbrella. Class 35, for instance, deals with advertising and business management services, whereas Class 25 deals with apparel, footwear, and headgear.
• Mandatory classification: In trademark applications, trademark applicants must list the goods and/or services they seek to register, using the relevant class or classes from the Nice Classification.
• Consistency: The Nice Classification aids in ensuring that trademarks are registered and protected uniformly throughout various legal systems and language types.
• Revision- The Nice Classification is periodically updated to take into account modifications to technology, business procedures, and consumer behaviour. 2019 marked the most recent revision.

The Nice Agreement, in its whole form, offers a standardised framework for categorising goods and services for trademark registration, which aids in streamlining the procedure for international trademark protection and promoting uniformity and clarity in trademark law.

• VIENNA AGREEMENT – The “Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks,” which was approved in Vienna, Austria in 1973, is a legal document. The classification of figurative aspects of marks, such as logos, symbols, and designs, is standardised by this treaty. Trademark offices all throughout the world search, register, and categorise figurative components of marks using the Vienna Classification. The World Intellectual Property Organisation (WIPO), which oversees its administration, has a database of all the figurative components of marks that fall under the system’s classification. The worldwide protection of trademarks is made easier by the Vienna Agreement and Vienna Classification, especially for marks that contain figurative features. By giving these parts a standardised classification system, the Agreement and classification assist to make trademark law more uniform and understandable while also easing the administrative burden associated with trademark registration and protection. The following guidelines are provided by the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks:
• 29 groups: According to the Vienna Classification, figurative aspects of marks are divided into 29 groups.
• Classification system: A classification system is used, with each category being specified by a particular set of phrases that specify the type and substance of the figurative element, such as animals, people, letters or numbers, and geometrical shapes.
• Optional classification: The Vienna Classification is an optional classification for trademark applicants. However, the applicant may decide to classify a figurative element in a trademark under the Vienna Classification if it is present.
• International protection: By offering a standardised system for the classification of these features, the Vienna Agreement and Classification support the international protection of trademarks that incorporate figurative elements.
• Administrative effectiveness: The Vienna Agreement and Classification help to lessen the administrative burden of trademark registration and protection by offering a standardised system for the classification of figurative components.

The Vienna Agreement and Classification, used together, offer a standardised approach for classifying figurative components of marks, which makes it easier to defend trademarks internationally and lessens the administrative load on trademark applicants and offices.

• SINGAPORE TREATY[6] – On March 27, 2006, Singapore signed the Singapore Treaty on the Law of Trademarks, an international agreement. The convention creates global norms and practices for the registration and administration of trademarks. The Singapore Treaty’s main guidelines are as follows:
• Formalities: The treaty outlines uniform formalities, such as application requirements and examination processes, for the filing and registration of trademarks.
• Classification: The Nice Classification system is to be used in accordance with the treaty to classify goods and services.
• Electronic filing: For trademark applications and other associated procedures, the convention supports the use of electronic filing and communication.
• Non-traditional marks: According to the treaty, non-traditional marks like colour marks and sound marks may be registered.
• Renewals: The treaty lays out standard operating processes, including renewal fees and scheduling, for trademark registration renewals.
• Recording of licences and assignments: The convention enables the registration of trademark licences and assignments in global trademark registries.
• Administrative and judicial procedures: Administrative and judicial procedures, such as opposition and cancellation proceedings, are covered by the treaty, which also defines standard rules and guidelines for these processes.

In order to reduce costs and improve efficiency for trademark owners and administrators, the Singapore Treaty seeks to harmonise and streamline worldwide trademark registration and management operations. The World Intellectual Property Organisation (WIPO) is in charge of managing it, and there are currently more than 50 member nations.

• TRADEMARK LAW TREATY[7] – An international agreement known as the Trademark Law Treaty (TLT) was approved in 1994 in Geneva, Switzerland. The agreement intends to standardise and simplify the formalities involved in trademark registration processes in all signatory nations. The TLT’s main clauses are as follows:
• Standards for filing: The TLT specifies uniform standards for filing trademark applications, including the minimal data needed for the application, the categories of products and services that may be covered by the mark, and the kind of mark that may be registered.
• Examining trademark applications: The TLT defines uniform examination methods, including the timing of the inspection and the reasons for rejecting a trademark application.
• Publication and opposition procedure: The TLT lays out guidelines for the publication of trademark applications, the right of third parties to oppose a trademark application, and the steps to take when filing an objection.
• Renewal procedures: The TLT outlines the conditions for and duration of trademark registration renewals. It also outlines the prerequisites for renewal.
• Record of trademark assignments and licenses: The TLT specifies processes for the record of trademark assignments and licences, including the kinds of information that must be included in the record and how the record affects the assignment’s or license’s ability to continue in use.

The TLT aspires to speed up and streamline trademark registration processes, cut expenses, and give trademark owners and applicants more legal security. In 2021, there will be 49 including the United States, Japan, and numerous European nations— TLT members.

• NAIROBI TREATY[8] – An international agreement known as the Nairobi Treaty on the Protection of the Olympic Symbol was passed in Nairobi, Kenya, in 1981. The Olympic symbol, which consists of the five interlocking rings and the word “Olympic,” is protected by the treaty from unauthorised use and exploitation. The Nairobi Treaty’s main clauses are as follows:
• Protection of the Olympic emblem: Under the terms of the treaty, the Olympic symbol is protected as a trademark, making it illegal to use it without authorization in connection with products or services.
• Registration – The Olympic emblem may be registered as a trademark with the national trademark offices of participating nations under the terms of the treaty.
• Enforcement of rights: The treaty outlines civil and criminal penalties for violation as well as the enforcement of trademark rights pertaining to the Olympic emblem.
• Limitation: The agreement has limitations and exceptions to the protection of the Olympic emblem, such as fair use in news reporting and commentary.

The Nairobi Treaty aims to safeguard the Olympic Games’ honour and prestige as well as to stop the unlicensed commercial exploitation of the Olympic symbol. The Nairobi Treaty has 112 signatories as of 2021, including the United States, China, and numerous European nations.

• TRIPS AGREEMENT[9] – Trademark enforcement and protection are covered by the TRIPS Agreement’s requirements. In particular, the agreement mandates that member nations guarantee the protection of trademarks, including collective marks and certification marks, and make sure that both domestic and foreign citizens have access to this protection. The TRIPS Agreement lays out guidelines for the enforcement and protection of trademarks, such as:
• The meaning of trademarks: Trademarks are any signs that can differentiate the goods or services of one person from those of another, according to the TRIPS Agreement.
• Trademark protection: According to the TRIPS Agreement, member nations must provide the protection of trademarks, including collective marks and certification marks, and make sure that both domestic and foreign citizens have access to this protection.
• Scope: The TRIPS Agreement mandates that member countries protect both registered trademarks and well-known marks that are not registered, as long as those trademarks are recognised in the member state in question.
• Trademark enforcement: According to the TRIPS Agreement, member nations must offer both civil and criminal penalties for trademark infringement, as well as injunctions, monetary fines, and the confiscation of infringing goods.
• Border controls: According to the TRIPS Agreement, member nations must establish procedures for the detention of items suspected of violating intellectual property rights at the border and for the destruction of such goods if they are determined to be infringing.
• Trademark usage restrictions: The TRIPS Agreement forbids the use of any trademarks that are misleading or deceptive, including those that falsely imply a connection to a specific area.
• Administrative processes: The TRIPS Agreement mandates that member nations create procedures for the cancellation or revocation of trademarks as well as for the publishing and evaluation of trademark applications.

Overall, the TRIPS Agreement’s regulations support greater uniformity and harmonisation in how trademarks are handled across various nations and regions and offer a framework for the defence and enforcement of trademark rights.

CONCLUSION

Trademark treaties and conventions have been established to promote the protection and enforcement of trademarks worldwide. The Paris Convention, Madrid Agreement, Madrid Protocol, Nice Agreement, Vienna Agreement, and TRIPS Agreement are all important international agreements that have helped to create a more consistent and harmonized system of trademark law. These agreements have set out minimum standards for the protection and enforcement of trademarks, including the definition of trademarks, their scope of protection, enforcement measures, and administrative procedures. While there are still differences in how trademarks are treated in different countries, understanding the specific requirements and regulations related to trademarks in each country is essential for businesses and individuals seeking trademark protection.

A system for trademark protection on a global scale has been developed by several international instruments. Incorporating the TRIPs rules into the current legal framework for trademark protection was one of India’s most difficult challenges as a member nation. India committed to sweeping internal reforms by joining the WTO and becoming a party to it. India made a number of concessions to enable the transition from a national system of IPR protection that was entirely domestic in origin to an international system of IPR protection that would fulfil the basic requirements stipulated by the TRIPS in order to achieve this criterion. TRIPS has been crucial in influencing developing nations like India to establish extremely effective IPR regimes.

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[1] UNITED STATES V. STEFFENS, WITTEMANN, JOHNSON, 100 U.S. 82 (1879, Supreme Court of the United States)

[2] Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, 21 U.S.T. 1583, 828 U.N.T.S. 305.

[3] Madrid Agreement Concerning the International Registration of Marks, Apr. 14, 1891, 828 U.N.T.S. 3.

[4] The Trade Marks Act, 1999, 36-D.

[5] Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, opened for signature June 15, 1957, 828 U.N.T.S. 187.

[6] Singapore Treaty on the Law of Trademarks, opened for signature April 27, 2006, 45 I.L.M. 1124.

[7] Trademark Law Treaty, adopted October 27, 1994, 33 I.L.M. 1193

[8] Nairobi Treaty on the Protection of the Olympic Symbol, adopted September 26, 1981, 20 I.L.M. 728

[9] Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299.