International Trademark Research Articles

Promoting Regional Cooperation and International Harmonization of Trademark Law with Frontier Technological Innovation

In the era of globalization, international harmonization of trademark law is essential. At the same time, the emergence of cutting-edge technologies such as AI and blockchain has completely provided a new solution to trademark protection and management, while also challenging the existing legal framework. These technologies require cross-border cooperation to effectively harmonize trademark law. This article examines the role of innovative technologies in enhancing international harmonization of trademark law, with a focus on improving trademark protection and administration. This paper combines legal analysis, technology assessments and case studies to explore the impact of these technologies on international harmonisation. The study aims to answer the following key questions: How do current challenges in international trademark harmonization affect global cooperation? What is the potential of technology to solve these problems? The expected conclusion is that innovative technologies can significantly simplify international harmonization of trademark law, facilitate cross-border cooperation and strengthen legal frameworks. This paper may help to advance global IP protection and provide new insights into international trademark law harmonization, contributing to a more cohesive and efficient global IP landscape.

Dispute Settlement of International Trademark on Intellectual Property Rights (Case Study: Decision Number 557 K/PDT.SUS-HKI/2016)

<p><em>Intellectual Property Rights (IPR), namely rights resulting from the impact of thought patterns resulting in products that are beneficial to legal subjects. However, there are still many problems that arise in IPR such as brand theft, brand plagiarism and so on. One of them is the case of Laverana, a cosmetic product from Germany. This brand was plagiarized by Irawan Gunawan to be used as a product brand in Indonesia. On top of these things, Laverana also felt disadvantaged. Therefore, this article aims to provide an understanding of the importance of protecting IPR and how to resolve international trademark disputes. The research method used in this research itself is a normative-empirical legal research method and a literature approach as well as legal protection theory and effectiveness theory in this brand plagiarism dispute case. The resolution of the Intellectual Property Rights dispute in the Laverana case was pursued through litigation, namely the Indonesian court to try the defendant, namely Irawan Gunawan. The final decision obtained from the court stated that the party from Germany or the original owner of the Laverana Brand won. This resulted in Irawan Gunawan (defendant) having to withdraw from the brand and being charged legal fees of Rp. 5,000,000 (5 Million Rupiah</em><em>)</em><em>.</em></p>

Some Considerations on the Constraints of the Madrid System for the International Registration of Marks

Over the years, the subject of the advantages of the Madrid System, the convenience and the economic advantages it offers to users has been frequently addressed and argued. However, less attention has been paid to the constraints of this international trademark registration system and its provisions that need to be revised to adapt the system to user requirements. These aspects will be addressed, in a constructive manner, in this paper. In particular, the paper presents some considerations regarding the dependency clause stipulated in Art. 6 of the Madrid Protocol, the impossibility of introducing changes in the sign claimed in an international registration and the limitations imposed by the Madrid System in the case of multiple applicants.

A STUDY OF THE MADRID SYSTEM FOR TRADEMARK REGISTRATION AND MANAGEMENT WORLDWIDE

Registering trademarks internationally – to protect products and services and differentiate them from competitors – is the first step toward protecting business interests abroad, and an integral part of any successful global business strategy. Companies of all sizes rely on trademarks to highlight their brand value in the market. The Madrid System supports SMEs in expanding their businesses across borders and helps them build valuable wealth from intellectual property assets. This may be of additional importance to small companies that may own relatively few tangible assets. With more than 1.5 million trademarks registered worldwide, the Madrid System for the International Registration of Marks is the main choice for the international registration of trademarks for export-oriented SMEs. The Madrid System is a unique global system that seeks to protect trademarks in multiple export markets. It is a convenient and cost-effective solution for trademark registration and management around the world. The Madrid System is widely used by small and medium-sized businesses, with 86 % of System users having a trademark portfolio of fewer than three international trademark registrations.

Evaluation of the Madrid Treaty for the Protection of Trademarks

In recent decades, the world has globalized at a rapid pace bringing hitherto unimaginable developments to different facets of life, socially, economically and otherwise. This trend has impacted virtually all aspects of human endeavor, especially in the areas of commerce, and cross-border travels of goods and services through information technology and dissemination, and technology acquisition. Also, the movement of goods and services across international borders has been made relatively seamless through the availability of instant information courtesy of the internet. With all these developments, the need has arisen, unlike ever before, for the protection of investors’ businesses and other related proprietary interests, especially in foreign countries. One of these interests, and undoubtedly, the subject of this paper, is intellectual property. Specifically, this paper discusses the issue of international trademark protection in the context of the Madrid Agreement and Protocol on the protection of trademarks. Adopting the doctrinal method of research approach, the work did a comparative analysis of the two instruments. It xrayed the system, bringing to the fore, the enormous benefits accruing to the use of the system. Prominent among them is that an applicant under the system has the advantage of single registration in a single language. Findings revealed among other things that, though the Protocol undoubtedly complements the Agreement, there are significant differences between the two, pointing to the inference that the Protocol was made to ameliorate the difficulties encountered in trademark registration under the Agreement. Also,it is our finding that Nigeria is yet to accede to these treaties. It was accordingly recommended that the Government of Nigeria should immediately accede to the System for Nigerians to enjoy the full benefits arising from the system without more.

The Legal Protection of Jeniper Product Brand Rights Associated with Brands and Geographical Indications

This study aims to discover the legal protection of trademark rights from its law and geographical indications. In addition, this study also determines the implementation of the trademark law on Jeniper products. This study employed empirical legal approach involving interviews, observations, and literature studies. This study revealed that the legal protection regulation of trademark right is governed by several laws and regulations. This includes trademark and geographical indications Act, Government Regulation of the Republic of Indonesia Number 22 of 2018─International trademark Registration─Protocols Related to the Madrid Agreement on International trademark Registration, and Ministry of Law and Human Rights Regulation Number 67 of 2016─Trademark Registration and Regional Regulation of West Java Province Number 10 of 2018─Intellectual Property Management. Furthermore, the implementation of legal protection, trademark rights of Jeniper products, have been registered at the Directorate General of Intellectual Property Rights of the Republic of Indonesia. Thus, they are legally by the State. In conclusion, the Regional Government of Kuningan Regency lacks a specific Regional Regulation, governing Trademark Rights in Kuningan Regency

Perlindungan Hukum Terhadap Persamaan Pemegang Hak Atas Merek Dalam Persaingan Dagang

Regarding the critical nature of trademark reform, Indonesia participated in the World Intellectual Property Organization's approval of the International Trademark Agreement (WIPO). The 1992 Trademark Law was updated in 1997 by Law No. 10 Resolution No. 14 of 1997, which takes into account the provisions of the International Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS-GATT). This clause protects the origin and geographical indicators of products. Additionally, the provision modifies the former in the preceding law. With regards to trademarks in Indonesia Each user has the ability to trademark his or her name. According to Article 3 of Law No. 20 of 2016 on Marks, trademark rights are granted to registered trademark owners, indicating that the brand system in Indonesia is a constitutive (active) system, with registered trademark owners being trademark rights holders. The registered mark's owner, as the mark's holder, either uses the mark himself or grants authorization to others to do so. Additionally, Article 40 of Law No. 20 of 2016 on Marks and Geographical Indications provides that trademark rights may be transferred in accordance with the Act's provisions.

Seafood Without the Sea: Article 20 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, the ‘Justifiability Test’ and Innovative Technologies in a Sustainable Blue Economy

Abstract With the growing global demand for seafood and ocean ecosystems increasingly at risk, advances in the field of cellular aquaculture provide a unique opportunity to foster sustainable fisheries. However, the successful commercialization of cell-based seafood requires the adoption of the regulation on product labelling. This article explores the trademarks issues of cell-based foods specifically and whether these types of intellectual property rights can contribute to the promotion of sustainable fisheries in the so-called ‘blue economy’. It examines the extent to which international trademark protection has the ability to contribute to better ocean governance by accommodating higher public policy imperatives, the recent case law on Article 20 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, and the newly adopted ‘justifiability test’ for special requirements as they apply to trademarks. It appraises some of the legal implications for the regulatory design of domestic labelling regulation as they apply to cell-based seafood.

Pakistan and Madrid Protocol - Missing Domestic Law to Recognize International Trademark Registrations

Pakistan and Madrid Protocol - Missing Domestic Law to Recognize International Trademark Registrations

Objection to the trademark application or the action of international registration of a trademark in Ukraine

Keywords: objection, opposition, trademark, appellate chamber, period of opposition
 The article analyses themain approaches to the practice of filing and the consequences of filing objections ofthird parties against trademark applications or international trademark registrationsbased on a study of the provisions of regulations of Ukraine and foreign countries.The filing of an objection to an application for a trademark is defined as theright of any third party to state its views on the inconsistency of the designation appliedfor registration with the conditions of granting legal protection. It is concludedthat this procedure in Ukraine is not fully harmonized with the practice of the EuropeanUnion: Ukrainian law does not provide for the submission — of observation ofthird parties, when the trademark cannot be registered ex officio. Such observationcan be submitted by any person free of charge, but this person will not become a partyto the proceedings during the designation examination.It is determined that this right in Ukraine can be exercised within several instances:1) Objection of a third party, which is filed at the stage of examination of the designation;2) Objection of a third party, which is submitted to the Appeals Chamber of the NationalIntellectual Property Authority;3) Appeal of the approved decision of the Appeals Chamber of the National IntellectualProperty Authority in court.The article provides suggestions for improving the procedure for filing objections toan application for a trademark or the action of international registration of a trademarkin Ukraine:1) granting the right to third parties to submit to the National Intellectual PropertyAuthority free observations against trademark applications that do not relate to«relative» grounds for refusal of the legal protection of the designation.2) increase the fee for filing an objection to a trademark application or internationaltrademark registration to reduce the number of filing of unscrupulous objections,the purpose of which is to increase the term of registration of the applicant'strademark.3) extension of the terms of payment of the state fee for issuing a certificate ofUkraine for a trademark and the fee for the publication of the issuance of a certificatefor up to five months for those applications for trademarks against whichthird parties have filed objections.

Baby, Bye, Bye, Bye

Christian Louboutin. Manchester United. Agent Provocateur. In a world where trademarks have become more than brand identifiers, counterfeit versions of brands should be easily identifiable. Yet counterfeiting regimes from Asian countries continue to funnel counterfeit goods through the United States and European Union borders. Both regions continue to impose stricter anti-counterfeiting laws and regulations. Nevertheless, companies in the United States, Italy, and France are drastically affected by counterfeiting, losing billions per year in revenue. The International Chamber of Commerce’s (“ICC”) Business Action to Stop Counterfeiting and Piracy (“BASCAP”) and the International Trademark Association (“INTA”) estimate that the value of international and domestic trade in counterfeit and pirated goods in 2013 ranged from $710–$917 billion. BASCAP and INTA predict that by 2022, the value of business in counterfeit and pirated goods could reach $991 billion. Asian countries produce more than 70% of all counterfeit goods with the People’s Republic of China (“PRC”) and Hong Kong as the leading provenance economies for counterfeiting. China’s proliferation of counterfeit goods stems from economic, social, and political forces that influence China’s socialist market economy. On average, 20% of consumer products in the Chinese market are counterfeit goods. The counterfeiting industry continues to cripple various countries including the United States, Italy, and France, costing corporations billions in revenue and placing consumers in significant financial and health risk. The substantial impact of counterfeiting on the global economy has spurred the United States, Italy, and France to impose strict anti-counterfeiting laws and regulations. The United States anti-counterfeiting arsenal to protect trademark owners includes civil enforcement under the Lanham Act 15 U.S.C. § 1051 and criminal enforcement under 18 U.S.C. § 2320. Italy and France impose similar laws and regulations but also take their anti-counterfeiting mechanism further by seeking stricter criminal penalties for manufacturers, distributors, and consumers. This Article explains the regulatory and legal anti-counterfeiting mechanisms adopted by the United States and the European Union, specifically Italy and France, to illustrate the international legal and regulatory tools used to reduce the economic hardships of counterfeiting.

Kajian yuridis tentang merek terkenal dan upaya hukum terhadap pelanggarannya

International trademark regulation is based on the Paris Convention and The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) while in Indonesia the regulation regarding trademark has undergone several changes, most recently Law Number 20 of 2016 concerning Trademarks and Geographical Indication. A trademark can be said to be a well-known trademark if it meets the criteria for a well-known trademark, but the latest Indonesia trademark law does not clearly explain the criteria for it. This study uses a normative juridical approach. This approach focuses on examining literature materials such as legislation and other relevant sources. This study examines the criteria for a well-known trademark by making comparisons between existing laws in Indonesia and countries and examines what legal remedies can be taken if a violation occurs. The results of this study indicate that there are several criteria for a well-known trademark that can be applied in Indonesia from the regulations of other countries to provide legal certainty. Some of these criteria are records of successful use of marks, trademarks that have been registered in various countries and those that are not yet in the Indonesian legal system, namely special registration of a well-known trademark. For legal measures against infringement of the well-known trademark, it can be done in court (litigation) or outside the court (non-litigation) such as dispute resolution through arbitration. How to cite item: Aldison, K. D. Sunarjo., Djaja, Hendra. (2021). Kajian yuridis tentang merek terkenal dan upaya hukum terhadap pelanggarannya. Jurnal Cakrawala Hukum , 12(1), 41-50.doi:10.26905/idjch.v12i1.5723.

The Ethiopian Well-Known Trademark Protection System and Its Implication on Foreign Direct Investment

Due to the ever increasing trans-border movement, internet connection and globalization, individuals in different corner of the world are becoming easily accustomed to international well-known marks even though the owners of such marks do not produce/supply goods/services within a particular territory. Be this as it may, coupled with the conventional registration and territorial based system that is pursued in respect of the protection of trademarks, the dynamic change of such interaction among the global community have opened a fertile ground for trademark squatters to register and exploit the international well-known marks of others. On the backdrop of this fact, this manuscript investigates the Ethiopian well-known trademark protection system in light of its capacity to promote the interest of the country, in particular in respect of its potential implication on the foreign direct investment flow of the country. The study has made use of primary and secondary sources of data and qualitative analysis to investigate the implication of the regime on the foreign direct investment flow of the country. The finding is that the existing international well-known trademark protection legal framework, which hangs up the special protection of such marks to a future international convention, apart from its potential threat on franchise business and foreign direct investment flow, it is deterring the country from benefiting out of employment opportunities and declaration fees which the country shall consider forth with. Keywords: International well-known trademark, Foreign Direct Investment, Franchise business, Registration, Territorial. DOI: 10.7176/JLPG/106-01 Publication date: February 28 th 2021

Adopting Passing off Concept of Unfair Competition Into Indonesia’s Trademark Law

The application of the concepts of unfair competition in Indonesia’s Trademark Law is one of the reasons as a proper solution in providing justification and argumentation basis, in terms of to answer the issue of impersonation of trademarks on different kinds goods, particularly for impersonation of domestic well known mark obtains sufficient legal basis due to the existence of protection and legal certainty for the trademark owner which is impersonated thereof. The current Indonesia trademark law basically only provide trademark lawsuit in terms of cancellation for registered mark; legal damages claim. Both lawsuits related to using unauthorized registered mark based on overall or basic similarities in the same kind of goods, although unauthorized use in different kind of good is possible to be sued but it is restricted for international well-known mark only. In addition there is such trademark lawsuit in connection with deletion registered mark means this proceeding enforce when the registered mark does not use for three years as of the mark registered. Considering that actually the concept of unfair competition basically reflect to the understanding of unlawful act (tort) which stating in the article 1365 Indonesia’s Civil Code. However, this understanding is not covered in Indonesia’s Trademark law instead of it is enforced in Indonesia’s civil law and civil procedure. Hence, if there is a trademark impersonation dispute in the different kinds of goods, the resolution of the dispute will refer to unlawful act and that lawsuit will be trialed by regular district court, even though based on trademark law for trademark lawsuit should be trialed by commercial court. Therefore, it is lead to uncertainty in terms of the authorize court which is examined and handled the said case. To include the concept of unfair competition as a part of trademark violation into Indonesia’s trademark law hopefully enable to anticipate in reducing any kind of types trademark violation occurred including in the form of violation such impersonation of domestic well-known mark in different kind of goods. This research is normative legal research with a legislation, concept, and comparative approach. The legal material with technical analysis is done by the method of interpretation. Comparing to the concept of unfair competition, passing off within Indonesia’s trademark law; International Trademark Convention will answers whether the understanding of unfair competition applied in the trademark violation in Indonesia particularly in connection with the issues of impersonation towards registered of well-known mark domestically is already proper either for domestic or worldwide perspective.

The Politics of Law in the Madrid Protocol Ratification in the Form of President Regulation Related to Trademark Registration

The implementation of Madrid System in Indonesia since the 1st January in 2018 is expected to have a positive impact in terms of international trademark registration to allow and protect entrepreneurial entities, from individual, legal, and business entities to compete globally.On the other hand, trademark registration originated from Indonesia using the Madrid Protocol Systemto other countries is still considerably minimal compared to trademark registration from other countries to Indonesia. There are issues point out in this writing, specifically to describe the politics of law in the ratification of Protocol related to the Madrid Agreement Concerning the International Trademark Registration, 1989 and also obstacle adhere after the ratification of the Madrid Protocol in the registration of international trademarks in Indonesia. Result of this study is that the ratification of Protocol related to the Madrid Agreement regarding International Trademark Registration, 1989 conducted by Indonesian government through Republic of Indonesia Presidential Regulation No. 92 in 2017 regarding ratification of Protocol Related to the Madrid Agreement Regarding International Trademark Registration, 1989 contained in State Gazette No.212 in 2017 is already appropriate. However, judging from the timeframe of the Madrid Protocol’s formation was formed already since1989, the ratification in Indonesia is considered delayed, knowing that this ratification is very beneficial for protecting entrepreneurs to expand their business abroad. Obstacles revolve around the implementation of the Madrid Protocol system in Indonesia are due to several reasons; few of them are of lack of encouragement from the entrepreneurial entities to register their brand, thougherapplication conditions from some countries compared to in Indonesia, and unavailability of online platform to register international trademark.

Metka Potočnik, Arbitrating Brands: International Investment Treaties and Trade Marks

Metka Potočnik, <i>Arbitrating Brands: International Investment Treaties and Trade Marks</i>

Component-Based Attention for Large-Scale Trademark Retrieval

The demand for large-scale trademark retrieval (TR) systems has significantly increased to combat the rise in international trademark infringement. Unfortunately, the ranking accuracy of current approaches using either hand-crafted or pre-trained deep convolution neural network (DCNN) features is inadequate for large-scale deployments. We show in this paper that the ranking accuracy of TR systems can be significantly improved by incorporating hard and soft attention mechanisms, which direct attention to critical information such as figurative elements and reduce attention given to distracting and uninformative elements such as text and background. Our proposed approach achieves state-of-the-art results on a challenging large-scale trademark dataset.

International Trademarking and Regional Export Performance

Analysis of international trade at the sub-national region level is perennially hampered by the lack of granular data. We contribute a new analytic approach for understanding trade performance of sub-national regions using a newly constructed international trademark filing dataset. We show that international trademarks provide an indicator of regional export activity by analyzing US data aggregated to the industry and State level. Our new dataset shows more detailed information about exporting businesses than have previously been unavailable such as the company name, industry, market and location. It is therefore valuable for public sector export promotion programs as well as business seeking timely information about the behavior of their competitors.

Analisis Permohonan Pendaftaran Merek Secara Internasional Bagi UMKM Setelah Diterbitkan Peraturan Presiden No. 92 Tahun 2017 Tentang Ratifikasi Protokol Madrid

This research aims to analyze the barriers to the application of international trademark registration for MSME after the issuance of Presidential Regulation No. 92 of 2017 concerning Ratification of Madrid Protocols. Another purpose of this research is to find out the government's efforts in facing obstacles to international brand registration applications for MSMEs.This research is a normative legal research using primary data and secondary data. Primary data was collected through interviews with the guidelines of the interview, while secondary data obtained through the method of documentation with a study of the documentation and data analysis done qualitatively.The results of this study are: First, there are obstacles to the application of international trademark registration for MSMEs after the issuance of Presidential Regulation No. 92 of 2017 concerning the Ratification of the Madrid Protocol because of the lack of interest and insight of MSMEs on international trademark registration applications, general regulations, language difficulties, and the cost of expensive brand registration applications. Second, the efforts made by the government to face obstacles for MSMEs are by making rules for reducing the cost of applying for basic brand registration, the existence of a special team of the Madrid Protocol and increasing socialization of brands and applications for trademark registration using the Madrid Protocol.

Trademark Transactions in Common Law Countries: Liberalisation and Its Limits

Historically, common law countries took a restrictive approach to transactions involving trademarks. This restrictive approach was said to flow from the reasons for granting protection for trademarks in the first place. If a trademark communicates information to consumers as to the origin and quality of a particular trader’s goods or services, it was thought that any dealing with a trademark, such as an assignment of the mark or the grant of a licence to a third party to use the mark, would disrupt the source and quality guarantee functions of the mark and potentially cause confusion among consumers. In other words, the very reasons that a trademark receives legal protection were thought to justify constraining an owner’s ability to deal with the mark. Initially, these sorts of concerns were highly influential, and the law either proscribed or imposed strict limitations on the exploitation of trademarks. However, over the course of the last century there was a gradual liberalisation of these rules. Consequently, in most common law countries we have now reached a position where the law recognises registered trademarks to be personal property, which can be exploited with fewer restrictions than in the past. This liberalisation has to a large extent reflected changes in business practices, as brands have come to be recognised as valuable commodities in their own right and as trademark licensing, merchandising and franchising have become large and lucrative industries. Notwithstanding this, the tension between the idea of the mark as “property” and the mark as a badge of origin remains. This chapter, published in an edited collection on international and comparative trade mark law, explores how this tension is reflected in common law countries in the retention of restrictions on trademark transactions in cases where marks have been or might be used in such a way as to deceive consumers. Working out when a badge of origin can be transferred to an unrelated third party whilst not falling into the category of a “deceptive transaction” remains more difficult than is often appreciated, as our analysis of key doctrines in Australian, UK and US trademark law reveals.