Open Access Research Article
EXPLORING AMBIGUITY: TRADEMARK PROTECTION IN INTERNATIONAL TREATIES AND THE CHALLENGES OF NON-TRADITIONAL MARKS
Published Paper
Article Details
EXPLORING
AMBIGUITY: TRADEMARK PROTECTION IN INTERNATIONAL TREATIES AND THE CHALLENGES OF
NON-TRADITIONAL MARKS
AUTHORED BY
- ANSIF S,
THERESA SIMON M & MELDIN MARIA
SIBYCHAN
INTRODUCTION
Trademarks play a crucial role in
promoting innovation and ensuring equitable competition in the global
intellectual property market. The Madrid System, the TRIPS Agreement, and the
Paris Convention are some of the international treaties that govern trademarks;
nevertheless, they do not precisely define the scope of trademark protection.
Trademarks are dual by nature. In
other words, it has both an international and a national dimension. While
national laws provide the legislative, executive, and judicial branches
necessary for protection on their territory, international instruments
guarantee minimal levels of protection by supplying means for contracting
states to enforce them. Throughout history, numerous multinational agreements
and treaties have emerged to safeguard trademarks. Better protection of rights
for different types of marks, harmonisation of laws, and an effective system
for multilateral filing for global protection are the main goals of these
international agreements influencing trademarks. This essay examines the
challenges associated with protecting trademarks internationally, with a
particular emphasis on the obstacles presented by non-traditional marks. As
businesses experiment with new branding elements including sound, colour,
fragrance, and motion marks, international treaties are becoming more and more
significant.
PARIS
CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY,1883
The Paris Convention[1], a
cornerstone in the realm of international intellectual property law, was
conceived with the objective of fostering cooperation among nations for the
protection of industrial property, including trademarks. While the Convention
has been instrumental in aligning various national trademark systems, the
determination of the precise scope of protection has proven to be a nuanced and
evolving challenge. The Paris Convention upholds the principles of national
treatment and the right of priority. Despite its fundamental principles, the
Paris Convention does not provide a comprehensive definition of the scope of
trademark protection. The absence of explicit guidelines regarding the types of
marks covered, the duration of protection, and the specific criteria for
infringement has led to divergent interpretations among member states. This
lack of specificity has resulted in variations in the enforcement and
recognition of trademarks, causing uncertainty for businesses operating
internationally.
The Convention was crafted in an era
vastly different from the modern complexities of trademarks, including
non-traditional marks like sound, colour, and holograms. The challenge lies in
reconciling the evolving nature of trademarks with the traditional framework
established by the Convention. The Paris Convention outlines the framework for
the protection of trademark rights but does not prescribe standardized
enforcement mechanisms or remedies for infringement. Member states retain the discretion
to establish their enforcement procedures, leading to disparities in the
effectiveness of trademark protection and the remedies available to trademark
owners.
MADRID
SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS
The Madrid system, which consists of
the Madrid Protocol[2] and the
Madrid Agreement[3]
combined, continues to take form as the most authoritative and generally
recognised modern international agreement system for trademark registration
internationally. The WIPO is in charge of both the agreement and the protocol.
Simplifying the procedure of getting international trademark protection is the
goal of the Madrid system.
The applicant may choose from the
list of member nations when submitting an application to the national office in
order to request mark protection. The international application's compliance
with home state requirements and correspondence with the basic application is
examined by the national office in the country of origin. After the national
office is satisfied, the application is sent to WIPO. The mark is registered in
the chosen member nations after all formalities, such as examination,
advertisement for approval, and opposition, are completed. The protocol
stipulates a 10-year registration term that may be renewed for an additional
10-year duration.
The trademark owner benefits from the
Madrid system in a number of ways. An international registration can be
obtained by filing a single application with the international bureau through
the home country's office in one language and paying a single set of fees, as
opposed to filing separate national applications in each country of interest,
in multiple languages, in accordance with various national or regional
regulations, and paying multiple plus higher fees. Another benefit is that all
designated contractual parties just need to complete one procedural step to
maintain and renew their registration. Consequently, the Madrid Protocol offers
a practical and affordable means of acquiring trademark protection.
Nevertheless, the system also has several drawbacks. It is important to note
that the "Basic National Application" is a prerequisite for the
international application under the Protocol. Therefore, in the event that the
same is changed or refused, the international application will be automatically
revised or denied.
The Madrid Agreement and Protocol
traditionally required graphical representation for trademark registration.
However, this criterion can be restrictive, especially for non-traditional
marks. Recent developments, including amendments to the system, have aimed at
addressing this limitation, allowing for a broader scope of protection that
accommodates non-traditional marks. While the Madrid Agreement and Protocol
have significantly simplified the process of obtaining international trademark
protection, the determination of the scope of this protection remains a
multifaceted issue. National autonomy, the graphical representation
requirement, and the evolving nature of trademark law present challenges in
achieving a standardized and comprehensive scope.
AGREEMENT
ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS)
The TRIPS Agreement, enacted in 1994,
marked a significant milestone in the convergence of international intellectual
property laws. Trademarks, as a vital subset of intellectual property, are
subject to the provisions of TRIPS. The agreement specifies minimum protection
requirements for all categories of intellectual property that fall under its
purview. In addition, it offers domestic processes and recourse options for the
enforcement of intellectual property rights. The Agreement subjects issues
arising between WTO Members over their TRIPS commitments to the dispute
resolution processes of the WTO.[4]
Trademark protection regulations are
outlined in TRIPS Articles 15 through 21. The principles outlined in Article 15
on the terms and content of trademark protection must be upheld by the member
state. It gives a clear definition of a trademark, saying that any sign, or
combination of signs, that can be used to identify the products or services of
one business from the products or services of another business can be
considered a trademark. This definition makes it very evident that the TRIPS
accords allow for equal treatment for service marks that indicate services as
well as trademarks associated with commodities. As per the TRIPS, it is clearly
stated that signs that lack the inherent ability to differentiate relevant
goods or services can be evaluated based on their acquired distinctiveness via
use. Thus, as long as they do not deviate from the Paris Convention's
provisions, the member state is free to refuse trademark registration for any
other reason. The TRIPS agreement states that, whilst acknowledging the
registration of a mark based on its use, actual trademark use is not a
prerequisite for submitting an application for registration. Furthermore, it
states that the member state must give a reasonable opportunity for
applications of opposition or revocation of the trademark, either prior to
registration or immediately following registration, and must publish the
trademark.
TRIPS acknowledges the importance of
distinctiveness in trademark protection. It also recognizes the protection of
well-known trademarks beyond their country of origin. However, the agreement
falls short of providing a uniform definition of distinctiveness or clear
criteria for determining well-known status, leading to divergent
interpretations and applications across jurisdictions. The TRIPS Agreement
calls for effective enforcement mechanisms against trademark infringement,
including counterfeiting. However, the agreement does not offer detailed
guidance on the specific measures that member states should adopt.
Consequently, there is a lack of uniformity in the enforcement practices,
creating challenges for businesses seeking consistent protection across
borders.
NON-TRADITIONAL
TRADEMARKS
Trademarks have historically only
included words, symbols, designs, or combinations of these. Although there may
be minor variations across nations, the range is generally consistent, and
discussions about broadening it date back more than a century. Any trademark
that does not fall within the traditional definition of word, symbol, or
design, or a combination thereof, will be regarded as a non-traditional
trademark. Because the term "non-traditional trademark" has such a
broad connotation, using it to describe trademarks might be confusing.[5]
After analysing unconventional trademarks, the World Intellectual Property
Organisation (WIPO) established the Standing Committee on the Law of
Trademarks, Industrial Designs, and Geographical Indications (SCT), a permanent
committee tasked with researching trademarks, designs, and geographical
indications. The SCT separated non-visual trademarks from visual trademarks.[6]
Visual trademarks include, but are not limited to, three-dimensional marks,
colour marks, holograms, slogans, motion or multimedia signs, position marks,
gesture marks, and book and movie titles. The following are thought to be
included in this concept when it comes to non-visual trademarks: taste,
texture, or feel; sound; and smell.
No agreement was reached on a
definition of a trademark during the Paris Convention discussions, and the
Convention stayed silent on whether trademark rights come from registration,
use, or both, leaving it up to the national laws of the member nations. Under
the leadership of AIPPI, the 1956 Congress of Washington decided it was
premature to propose a general definition for trademarks. Discussions along
these lines have place in Brussels (1954) and Vienna (1952). The scope of a
mark is not definitively specified in the Madrid System Protocol and Agreement.
The Madrid Agreement permits the registration of non-traditional marks such as
"sound" could be covered.
A worldwide shift in trademark rights
was brought about by the TRIPS Agreement of 1994, which introduced a broad
definition in Article 15(1) that first highlights the trademarks' functional
nature, which is based on their distinctiveness. This broad term includes a
wide range of formats, including words, names, letters, numbers, figurative
elements, and colour combinations. The fact that parties to the 1990
negotiations were unable to reach a consensus on a particular set of examples
led to the definition's expansion. While the US, EU, and Japan proposed a more
specific definition, non-visual trademarks are not expressly excluded by the
TRIPS Agreement.[7] The key
provision in Article 15(1) is the fourth sentence, which gives member states
the option to impose visual perceptibility requirements on applicants for
registration. As a result, TRIPS does not require the protection of non-visual
trademarks; rather, each member state is free to choose whether to do so.
According to Article 15(1), non-visual trademarks should be protected if they
fulfil a trademark purpose and have a distinctive character, which is in line
with the functional approach of the TRIPS definition. Registration might not be
necessary in order to protect these trademarks; instead, protection might go beyond
trademark law and incorporate anti-competition statutes. In the course of
discussions over the TRIPS Agreement, Bolivia put out a solution: if a visually
non-visual trademark—such as sounds, smells, or three-dimensional shapes—can be
graphically represented and has a distinctive character, it may be eligible for
registration. Free Trade Agreements (FTAs) have led to an increase in the
registration of new mark categories, including sounds, on a global scale. The
US frequently promotes more extensive trademark protection in free trade
agreements. For example, the US-Korea free trade agreement (Article 18.2)
requires clearly that sound marks be protected, particularly in agreements with
developing nations.
The Trade Marks Act, 1994,
implemented in response to EU Directive 89/104/EEC, governs trademarks and
registration in the UK and the Isle of Man. In 1994, Chanel's attempt to
trademark the scent of Chanel No. 5 was rejected, as the fragrance and the
product were considered inseparable[8].
Meanwhile, Sumitomo Rubber Co.'s scent of roses for their tires and Unicorn
Products' smell of beer for their darts were accepted.[9]
Graphical representation is crucial
in the EU for trademark acceptance. In the case of Raf Sieckmann v. Deutsches
Patent und Markenamt[10],
an application for scent trademarking was rejected due to insufficient
graphical representation. The ECJ, relying on EU Directive 89/104/EEC,
emphasized the importance of clear, precise, and accessible representation,
leading to the establishment of the Sieckmann test. This test was later applied
in cases such as Apple Inc v. Deutsches Patent und Markenamt[11].
In Shield Mark BV v. Kist[12],
a landmark case, the ECJ ruled that aural marks could be trademarked if
distinctive and graphically represented. Relying on EU Directive 89/104/EEC and
the Sieckmann case, they specified that descriptions like "crow of a
rooster" were insufficient, but representation through musical notes was
acceptable. This decision, based on graphical representation, influenced
judgments globally. However, with the removal of the graphical representation
requirement in EU Trademark Directive 2015/2436 and EU Trademark Regulation
2015/2424, registration of unconventional marks, including those related to
smell, taste, movement, touch, color, shape, and sound, has become more
accessible.
CONCLUSION
While dynamic, the international
trademark protection structure can be confusing at times. Important agreements
like as the TRIPS Agreement, Madrid System, and Paris Convention offer a
worldwide framework but are not definite in nature, particularly with regard to
non-traditional trademarks. There are opportunities and problems in the
ever-changing business landscape brought about by technologies like motion
marks, colour, sound, and scent. For companies looking to get worldwide
trademark recognition, the lack of clear criteria results in a
jurisdiction-dependent approach that adds complexity. Emerging trends indicate
a rising recognition of non-traditional marks, such as the removal of graphical
representation restrictions in EU trademark law reforms. Balancing innovation and distinctiveness is
delicate, and legal frameworks adapt to these changes. Businesses and legal
professionals need to be aware of both local and global legal requirements in
this complex environment. The possible harmonisation of worldwide standards may
come into play in the future if non-traditional trademarks gain popularity.
Ongoing discussions and adaptations are crucial for trademark protection to
align with the evolving nature of 21st-century commerce.
REFERENCE
·
Paris Convention for The Protection of Industrial
Property,1883
·
The Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks,1989.
·
The Madrid Agreement Concerning the International
Registration of Trade Marks,1891.
·
Agreement on Trade-Related Aspects of Intellectual Property
Rights,1994.
·
Sumitomo Rubber Co’s Application No. 2001416, 31 October
1994.
·
Case C-273/00 Ralf Sieckmann v Deutsches Patent- und
Markenamt. EU:C: 2002:748. [2002], ECR I-11737.
·
Case C-421/13 Apple Inc v Deutsches Patent und Markenamt
[2014] ECLI:EU:C: 2014:302
·
Case
C-283/01 Shield Mark BV v Kist [2003] ECR I-10353
·
Daniel Gervais, The TRIPS Agreement: Drafting History and
Analysis (Sweet & Maxwell, 2003).
·
Joanna Schmidt Szalewski, 'The International Protection of
Trademarks after the TRIPS Agreement' (1998) 9 Duke Journal of Comparative and
International Law
·
R Carapeto, 'A Reflection About the Introduction of
Non-Traditional Trademarks' (2016) 34 Waseda Bulletin of Comparative Law.
·
WIPO Standing Committee on the Law of Trademarks, Industrial
Designs and Geographical Indications (SCT).
·
Nathan K G Lau, 'Registration of Olfactory Marks as
Trademarks: Insurmountable Problems?' (2004) 16 Singapore Academy Law Journal.
[1] The Paris convention was sighed on
20th March 1883. Revised on 14th December 1990 at Brussels, on 2nd June 1911 at
Washington, on 6th November 1925 at Hague, on 2nd June 1934 at London & on
14th July 1967 at stockholm. It was amended last on 28th September 1979.
[2] The Protocol Relating to the
Madrid Agreement Concerning the International Registration of Marks (concluded
1989, entered into force 1995, became operative 1996).
[3] The Madrid Agreement Concerning
the International Registration of Trade Marks [concluded 1891,revised
Brussels (1900), Washington (1911), The Hague (1925),
London (1934), Nice (1957), Stockholm (1967), and
amended in 1979].
[4] Joanna Schmidt Szalewski, 'The
International Protection of Trademarks after the TRIPS Agreement' (1998) 9 Duke
Journal of Comparative and International Law 189
[5] R Carapeto, 'A Reflection About the
Introduction of Non-Traditional Trademarks' (2016) 34 Waseda Bulletin of
Comparative Law, 28
[6] WIPO Standing Committee on the Law
of Trademarks, Industrial Designs and Geographical Indications (SCT)
[7] Daniel Gervais, The TRIPS Agreement:
Drafting History and Analysis (Sweet & Maxwell, 2003) 167.
[8] Nathan K G Lau, 'Registration of Olfactory
Marks as Trademarks: Insurmountable Problems?' (2004) 16 Singapore Academy Law
Journal 264, 265.
[9] Sumitomo Rubber Co’s Application
No. 2001416, 31 October 1994.
[10] Case C-273/00 Ralf Sieckmann v
Deutsches Patent- und Markenamt. EU:C: 2002:748. [2002], ECR I-11737.
[11] Case C-421/13 Apple Inc v
Deutsches Patent und Markenamt [2014] ECLI:EU:C: 2014:302
[12] Case C-283/01 Shield Mark BV v
Kist [2003] ECR I-10353
Article Information
EXPLORING AMBIGUITY: TRADEMARK PROTECTION IN INTERNATIONAL TREATIES AND THE CHALLENGES OF NON-TRADITIONAL MARKS
Authors: ANSIF S, THERESA SIMON M, MELDIN MARIA SICHAN
- Journal IJLRA
- ISSN 2582-6433
- Published 2024/01/09
- Issue 7
About Journal
International Journal for Legal Research and Analysis
- Abbreviation IJLRA
- ISSN 2582-6433
- Access Open Access
- License CC 4.0
All research articles published in International Journal for Legal Research and Analysis are open access and available to read, download and share, subject to proper citation of the original work.
Disclaimer: The opinions expressed in this publication are those of the authors and do not necessarily reflect the views of International Journal for Legal Research and Analysis.