International Trademark Research Articles

The TRIPs Compatibility of Australia's Tobacco Plain Packaging Legislation

The use of tobacco entails negative health consequences. In fact, it is reported that had the ill effects of tobacco been known much earlier in time, tobacco would have been a banned substance. Yet, in today's context tobacco has become part of legitimate trade, and the livelihoods in countries that export tobacco heavily depend on trade in tobacco. In the circumstances, could governments intervene on health and public policy grounds and regulate the manner in which tobacco products are marketed and sold? If so, to what extent? These are precisely the questions that fuel the gruelling dual between tobacco companies and health conscious countries, such as Australia that has recently enacted legislation making mandatory the plain packaging of tobacco products from December 2012. The Australian legislative measure, namely the Tobacco Plain Packaging Act 2011 (Cth), is currently under attack in several fronts, including the World Trade Organisation, though recently the Australian High Court upheld the constitutionality of the plain packaging legislation. The purpose of this paper is to approach the question of the legality of government intervention in totally prohibiting the striking elements of tobacco packaging from a purely international trademark law point of view. First, the paper identifies the scope of trademark protection as set out in the Agreement on the Trade Related aspects of Intellectual Property Rights (“TRIPs”) and then goes on to analyse the Australian plain packaging law in the context of its own trademark legislation. Thence, the paper considers whether the Australian plain packaging legislation complies with the core provisions on trademark protection enshrined in TRIPs, and lastly provides a possible compromise to reconcile the competing interests.

India's Accession to Madrid Protocol: Pavement for Global Trademark Protection

India signatory to Madrid Protocol :Six years post ratification of the Madrid Protocol, India enters the international regime of registration of Trademark.By notification dated 8th July 2013, the Trade Marks (Amendment) Act 2010 and the Trade Marks (Amendment) Rules, 2013 came in to force to enable India to accede to the Madrid Protocol for the International Registration of Marks at WIPO, bringing the total number of members of the international trademark system to 90. The Madrid Protocol system is a cost-effective way of obtaining protection in India and in the other 89 other member countries that are party to it. Initially implemented in 1891 with the Madrid Agreement and extended in 1989 to include the Madrid Protocol, the system provides an alternative to a bundle of national applications with all their individual registration requirements and separate fees. Simply put, it offers international protection for domestic trademarks with the filing of one single application.

The Forgotten Pan-American Trademark Convention of 1929: A Bold Vision of Extraterritorial Meets Current Realities

This paper argues that the 1929 General Inter-American Convention for Trade Mark and Commercial Protection ("Pan-American Convention") should be remembered, and will explain why it has instead been forgotten. This paper recounts the history of the Convention and shows how that history fits into the development of a practice in the U.S. of requiring implementing legislation in order for treaty provisions to become directly operative. I will rely on foreign caselaw to show how the Convention has not been forgotten in member states (Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay and Peru) and therefore has played a very different role abroad. And finally, I will demonstrate how the Convention makes at least two important contributions to international trademark law. First, it provides a novel approach to the protection of well-known marks by limiting their availability in cases where the mark was known to have been previously used in the region. Second, the Convention goes well beyond the Paris to provide a detailed set of protections against unfair competition. Given these substantive provisions, the fact that the Convention is still in force in the U.S., and that is self-executing, it is a wonder that there are so few U.S. cases that invoke this Convention.

Opposing third parties' applications for geographical indications under Regulation 510/2006

Ortrun Günzel is an attorney-at-law with Hoffmann Eitle, where she specialises in German, European and international trade mark, design, domain name and unfair competition law. EU Regulation 510/2006 provides for a high level of protection of names of geographical indications and designations of origin. Once a name is registered as a geographical indication or designation of origin, not only is it protected against the use of identical or confusingly similar product names, it is also protected against any generic use and against use of names which evoke associations with the registered name even without giving rise to a risk of confusion. Thus, a geographical indication or designation of origin registered under EU Regulation 510/2006 can be a powerful means in establishing and defending a competitive position. It is therefore essential to be able to combat the unjustified monopolization of names and the advantages in competition arising from unlawful registration of a designation as a geographical indication or designation of origin, for example, in cases where the name is in fact a generic term. Applications for registration as a geographical indication or designation of origin are often vehemently opposed, in particular by competitors, but also by other EU member states.

Trademark Law and Litigation in China

Confronted with scathing international criticism and mounting pressure, China has intensified its efforts over the years to improve its trademark protection regime. So where does China stand right now in terms of trademark protection? This article aims to answer this question by adopting a comparative framework based on international trademark treaties and U.S. trademark law. It examines the major provisions of the Chinese trademark law and reports a qualitative content analysis of court decisions on foreign trademark cases in Shanghai to investigate how the Chinese court interprets and enforces the law.

The Linguist as Expert Witness in The Community Trademark Courts

AbstractThis paper explores the way the linguist as expert witness may smooth the progress of legal decision-making in cases involving a Community trademark (CTM) dispute. The study hypothesizes that the seesaw of court decisions found in CTM disputes could be avoided, if linguists were called upon as experts by the courts. Therefore, the discussion attempts to provide an answer to the following research questions: (a) Can forensic linguists provide relevant evidence in CTM litigation? (b) If so, what is the nature of this evidence? And (c) is it possible to determine and measure the strength of mark and the likelihood of confusion between two marks in dispute? In order to answer these research questions, an authentic case was thoroughly examined. This involved revisiting the CTM litigation between the earlier German nation-al trademark Respicort (Mundipharma AG) and the international trademark Respicur (Altana Pharma AG). The record showed no indication that a linguist had participated in this case during the eight years the legal dispute lasted. For purposes of analysis, the parameters most commonly accepted by Community trademark courts were employed in the forensic linguistic review of the Respicort v. Respicur case, namely strength of mark and likelihood of confusion.

Intellectual Property: The Dominant Force in Future Commercial Transactions Comprising Mergers and Acquisitions

There is a well-established statutory, administrative and judicial framework to safeguard intellectual property rights in India, whether they relate to patents, trademarks, copyright or industrial designs. Well-known international trademarks have been protected in India even when they were not registered in India. The Indian Trademarks Law has been extended through court decisions to service marks in addition to trade marks for goods. Computer software companies have successfully curtailed piracy through court orders. Computer databases have been protected. The courts, under the doctrine of breach of confidentiality, accorded an extensive protection of trade secrets. Right to privacy, which is not protected even in some developed countries, has been recognized in India. There would be two brands – Tata Indicomm and Virgin. Tata Indicomm positioned as a mass market brand, while Virgin would be positioned as a youth brand pitted against brands like Hutch. This is been done as Tata Indicom does not appeal to everyone in terms of popularity and appeal. Tata Indicom has already established itself in the mass market category while Richard Branson’s touch could bring in more subscribers.Mergers or amalgamation, result in the combination of two or more companies into one, wherein the merging entities lose their identities. No fresh investment is made through this process. However, an exchange of shares takes place between the entities involved in such a process. Generally, the company that survives is the buyer which retains its identity and the seller company is extinguished (Ramaiya, 1977). A merger can also be defined as an amalgamation if all assets and liabilities of one company are transferred to the transferee company in consideration of payment in the form of equity shares of the transferee company or debentures or cash or a mix of the above modes of payment. An acquisition, on the other hand, is aimed at gaining a controlling interest in the share capital of acquired company. It can be enforced through an agreement with the persons holding a majority interest in the company's management or through purchasing shares in the open market or purchasing new shares by private treaty or by making a take-over offer to the general body of shareholders.

Trade Mark Protection, Public Health and International Investment Law: Strains and Paradoxes

This article aims at exploring the antinomies and paradoxes of trade mark protection in international investment law. The negative impact of trade mark protection on public health seems counterintuitive or even paradoxical. Strong trade mark protection is usually associated with positive effects on consumer protection and, more generally, there is a sort of mystical thinking about trade marks. Brand names are deemed the keystone of a competitive economy, where individuals are encouraged to do the best they can and make their products recognizable to the public, who will determine their eventual success. However, it is a common criticism that in recent years law makers and judges have expanded the rights of trade mark owners too far, at the expense of the common weal. In some cases, trade marks have been used in an aggressive fashion by corporations in order to chill public health regulation. At the international level, this expansion ultimately determines the emergence of antinomies between intellectual property law and other branches of public international law. This article critically assesses international trade mark protection in order to verify whether such a paradox and the consequent systemic antinomies may be resolved. It also puts forward some legal mechanisms which may help policy makers and adjudicators to reconcile trade mark protection and public health in international investment law.

Protecting international trade marks in Poland: recent developments

The amending Act of June 2007 has added new provisions to the Polish Industrial Property Law which deal specifically with the issue of extension of international trade mark registrations into Poland. This Act sets the procedural rules governing the issue of extending international trade marks registrations into Poland as well as clarifying the conditions under which international trade mark holders may pursue infringements of their rights in Poland. The amendment brings more clarity to the issue of extending international trade mark registrations. It fosters the principle of free movement of goods and services and enables foreign parties to enjoy the smooth processing of their requests for extension of international trade mark registration. The new provisions concerning representation before the Patent Office remain confusing, but should not pose practical obstacles.

Trademark Use Doctrine - Ground on Internet Keywords Adversity

Technological innovations, incredible marketing strategies and forming consumer habit have been shaping the form of trademark use for centuries. The way people use information and purchase merchandise is also changing the internet. Companies need to seek a new marketing strategy advertising their products so as to break through information flow; and keyword advertising is regarded as an effective way to solve the obstacle. The core issue, however, Trademark Law, about what is trademark use, once again be brought forth into light.United States Federal Courts have never articulated a standard for trademark use, nor addressed whether selling keyword advertising falls into the scope of trademark use the pre-internet age. In this article, however, we can see courts strike down a doctrine of trademark use which is drawn Lanham Act. The Courts expand definition of A mark is used commerce to the field of trademark use doctrine as, in connection with services when it is used or displayed the sale or advertising of services and the services are rendered commerce. And keyword advertising is merely a measure of competition which selling and buying keyword advertising is not deemed as trademark use.Strong international trademark protection has unevenly influenced national trademark regulation. Since national trademark rules share a common source, Taiwanese Trademark Law might vary the definition of trademark use as well as Taiwanese courts.

The Lawfulness of Criticizing Big Business: Comparing Approaches to the Balancing of Societal Interests Behind Trademark Protection

Today, third parties that have not traditionally been subject to trademark law increasingly find themselves as defendants in trademark infringement law suits. Whether the culprit or not, strong international trademark protection has unevenly influenced national trademark regulation and the lack of emphasis and clear reference to limits on the acquired right have left courts struggling with how to balance conflicting interests in the use of marks. This note goes back to the source, i.e. international trademark law, in an attempt to locate the limits of trademark law, expressed or implied, and ascertain whether there exists a common understanding of when trademark protection is legitimately afforded and when it is not. After conducting a theoretical and practical comparison of alternative approaches to balancing competing rights, this note argues that an international common core of trademark protection is inherent in existing international rules. However, the author concludes that this common core mandates a re-evaluation of the traditional approach to trademark interpretation. To this avail the author introduces a systemizing tool designed to aid judges in securing the realization of no more and no less than the international common core of trademark protection in the national application of trademark law. Re-evaluation is necessary to avoid the harmful results that the traditional categorical approach produces in relation to this new group of defendants, as well as to repair the doctrinal damage incurred from forceful attempts to fit these cases into existing doctrine. The proposed systemizing framework introduces the flexible analytical tools needed to service the global market place in striking an adequate balance between equally important conflicting interests in society.

Trade mark owners' perspectives on the Madrid System: practical experiences and theoretical underpinnings

The Madrid System for the registration of trade marks is based on two international treaties: the Madrid Agreement Concenring the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The objective of the system is to assist trade mark owners in obtaining trade mark protection internationally and to facilitate their worldwide protection. Thus, the question arises to which extent the system meets the requirements it was designed for. This article presents the Madrid System from in international trade mark owner's perspective, links the Madrid treaties with trade, and evaluates the Madrid System from a practitioner's point of view. The views of trade mark owners varying in size, geographical distribution, market context and number of trade marks filed through the Madrid System have been explored in a series of 23 in-depth interviews. The empirical analysis underlines the important role of the Madrid System in expanding business' market coverage, but also shows that a major challenge will be to meet the diverse needs of business operating in varied contexts of developing and developed countries. While trade mark owners in developed countries need a system that fits high-speed post-Fordist business operations, further awareness-raising and capacity building is necessary to fully integrate the private sector in developing countries and to expand participation beyond current usage levels.

A bid for recognition

Last year this journal carried a note on the world’s first auction of intellectual property rights, held in San Francisco before the full glare of publicity. Like the Wright Brothers’ first manned flight more than a century before it, the first manned IP auction attracted a mixture of responses. From the cynical and from those whose interests are served by more traditional means of matching IP vendor and purchaser came words of criticism or faint praise: yes, the auction had achieved some sales—but the prices fetched were moderate and the rights on offer were somehow portrayed as unwanted or tarnished by the means selected for their disposal. From enthusiasts and idealists came quite the opposite message: it was an achievement for such an event to have happened at all and the very fact that it had taken place was an encouraging omen, if not a precedent, for the conducting of future auctions. A year later, the notion of the intellectual property auction has become well-established in the psyche of the intellectual property investor, even if it has not yet become part of his business routine. The prominent presence of IP auctioneers at the International Trademark Association Meeting this spring in Chicago, a wider acceptance of the notion that IP rights have become a commodity in their own right, the perception of a future need to develop further channels for the disposal of securitised rights and the attraction of auctions as an empirical means of establishing the value of an individual right or a bundle of rights—all these factors have softened resistance to the notion that the auction is an apt and desirable means of trading IP rights. Indeed even conservative Europe, treated to a taste of this transatlantic phenomenon this June, has survived the ordeal and, by all accounts, is not unwilling to repeat it. Cumulative sales on the auction floor (an understated description of London’s Dorchester Hotel) exceeded $8 million, the average sale price per lot reaching $578,607). Some criticisms of the IP auction may have been neutralised or inhibited by positive talk and by financially lucrative results, but they have not gone away. The sad facts are that you can only bid for what is on offer and that businesses that have developed commercially attractive viable IP assets will not sell them if there is another, more appealing route to their commercialisation: working the asset oneself, the development of a licensing programme or even mortgaging it may all be preferable in any given set of circumstances. No analogy may be drawn with the sale by auction of fine art works either. For a Monet masterpiece the auction room is the method of choice: the painting is a collector’s item, it is unique, its value is likely to appreciate as the passage of time progresses and in accordance with the degree to which comparable works themselves appreciate. For intellectual property rights the position is quite different. Most are of finite duration (patents and designs being particularly so) and their value is more likely to depreciate in the face of competition from comparable products and methods. Further, the most valuable assets—brands that are underpinned by a raft of trade mark registrations, supporting design and copyright and a deep reservoir of know-how, are rarely sold separately from the business that has developed them; they are more likely to be the subject of a takeover bid than an auction bid. Bearing this in mind, it is important not to condemn the IP auction as a failure in terms of the sums offered. So what is the next step for IP auctions? Will they continue to develop into the pleasurable events that businesses such as Ocean Tomo are seeking to develop, with glossy catalogues, opulent dinners and a good deal of ego-polishing for prospective bidders? Or will they take the discreet and downmarket route of the internet, offering the facility to conduct e-bids and perhaps a wiki for the ongoing maintenance of commercial data, due diligence and suchlike? The answer to this question is driven by considerations of profit, principally the profit of the auctioneer as middle man. The greater the gap between outlay and return, and the greater the absolute magnitude of the latter, the more disposed will be the IP auctioneer to steer his skills into that particular haven.

Fresh Freud: No longer lost in translation.

The new translations of Freud into English highlight the question as to the nature of Freud's quest and achievement. They show a livelier Freud than the Strachey translations (Freud, 1953-1974), who used everyday language in his work instead of trying to establish a new technical vocabulary for an esoteric new discipline. However, with the new Penguin editions thus far, fresh Freud is no longer lost in translation. The Standard Edition was created importantly to create an authoritative international trademark and was made more natural scientific in appearance. The fresh translations show a Freud in tune with Karl Popper's (1976) approach in his later work that viewed science as essentially problem solving. The example of Mourning and Melancholia (Freud, 1917/ 1964, 1917/1981, 1917/2005) is discussed as an exercise in exploration, conjectures, criticism, construct formation, and problem solving. Translation issues are discussed. Instead of being a particular trade mark, the very fact of there being new and different translations opens Freud's works to further questioning about their meanings and intents in the marketplace of ideas and practices

In Person

Ellen has more than 20 years of experience practising trade mark and IP law. Formerly a partner and the head of the trade mark department with one of the largest intellectual property firms in Israel, she specializes in global branding, trade mark and trade name counselling, including the development and management of international trade mark portfolios for technology and other companies. Acting for a number of Fortune 100 companies, she represents the administrative body responsible for domain name allocation under the .IL ccTLD and contributed the section on Israel trade mark and internet law, as well as the chapter on ccTLDs for the International Trademark Association book Trademark Law and the Internet. In addition she has authored the section on Israel trademark and internet law in Domain Names: Global Practice and Procedure, published by Sweet & Maxwell. Having been admitted to practise before the Israel, New York, Massachusetts,...

When Two Giants Collide: Article 17 and the Scope of Trademark Protection Afforded Under the Trips Agreement

The protection of trademarks, when it raises a conflict with the protection of geographical indications is one of the most contested issues on the international trade and intellectual property arena. In European Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs a WTO panel was faced with this issue. The panel report gives some insight into what international trademark law mandates as well as some pointers on how conflicts between different IP rights should be solved. This article attempts a deeper analysis of the coexistence of rights in the framework of the TRIPS Agreement that will inevitably grow in importance, when trade-related aspects start permeating all intellectual property issues in WTO fora. The article adopts a new approach to analyzing international trademark law. The Western concept of trademarks as property is contrasted to another concept of property that is derived from the use of property. While the property discussion in itself is not new to trademark law, nor is a discussion on the significance of trademark use in trademark law, here, the discussions are combined and refined in an attempt to provide an analytical framework for deciding international trademark cases. It is argued that the property right in a trademark should be assessed through how it is used, and any finding of infringement hinges upon whether the use of the trademark by its proprietor is unlawfully affected by a third party's use of an identical or similar sign. Informed by property theory and international law, the analytical framework is applied to the issues raised in the panel report. This leads to the conclusion that the panel report is flawed in certain respects.

In Person

Shane Smyth is a popular and well-known personality in international trade mark circles, where his friendly face and amicable demeanour provide the frontage for a mordant wit. A partner in the Dublin, Ireland, patent and trade mark firm of F. R. Kelly & Co., which he joined in 1982, Shane has degrees in both law and computer science. Despite the demands of his busy practice as a solicitor, European patent attorney and Community trade mark attorney, he finds time to lecture in computer law at Trinity College Dublin. A council member of MARQUES, he serves the EU Scientific Committee on Designations of Geographical Origin and is the co-author (with Robert Clark) of Butterworths' Irish Intellectual Property Law. I have a combination of legal (solicitor) and science qualifications (computer science), which I wished to combine. I joined F. R. Kelly & Co. as soon as I finished my solicitor's apprenticeship in 1982. This is the only politically correct answer which will be provided.

The Trips Agreement after Seattle

The Journal of World Intellectual PropertyVolume 3, Issue 4 p. 509-523 The Trips Agreement after Seattle Implementation and Dispute Settlement Issues Daniel J. Gervais, Daniel J. Gervais Partner, Brouillette Charpentier Fortin, Montreal, Canada.Search for more papers by this author Daniel J. Gervais, Daniel J. Gervais Partner, Brouillette Charpentier Fortin, Montreal, Canada.Search for more papers by this author First published: 01 November 2005 https://doi.org/10.1111/j.1747-1796.2000.tb00140.xCitations: 2 This article is a slightly modified version of the author's paper presented at the International Trademark Association Annual Meeting, Denver, Colorado, U.S.A., in May 2000. AboutPDF ToolsRequest permissionExport citationAdd to favoritesTrack citation ShareShare Give accessShare full text accessShare full-text accessPlease review our Terms and Conditions of Use and check box below to share full-text version of article.I have read and accept the Wiley Online Library Terms and Conditions of UseShareable LinkUse the link below to share a full-text version of this article with your friends and colleagues. Learn more.Copy URL Share a linkShare onFacebookTwitterLinked InRedditWechat Citing Literature Volume3, Issue4July 2000Pages 509-523 RelatedInformation

The Global Distribution of Trademarks: Some Stylised Facts

Trademarks are words, signs, symbols, or combinations thereof that identify goods as manufactured by a particular person or a company, therefore allowing consumers to distinguish between goods originating in different sources. Trademarks belong to the wider family of intellectual property rights (IPRs), and once registered benefit from legal protection against unauthorized use by entities other than the legal owner. While some suggest that cross-border registrations of IPRs may be associated with welfare transfers from developing to industrial countries, surprisingly little is known about an important component of the global IPR system, namely, the worldwide distribution of trademark registrations. This study provides the first step in filling this gap in the literature. Its purpose is to present some new stylized facts which emerge from the analysis of a dataset compiled by the authors based on the statistical information published by the World Intellectual Property Organization (WIPO). Questions of interest include the distribution of trademarks between countries of different income levels, the share of trademark registrations accounted for by foreign residents and its variation across different income groups, the extent to which poor countries participate in the international trademark system, and the distribution of registrations across different sectors of the economy.

Income-Related Biases in International Trade: What Do Trademark Registration Data Tell Us?

Rich countries trade more among themselves than with poor economies due to a closer match of exporter supply structures and importer preferences. In the literature, the closeness of supply and demand has traditionally been determined by the quality of products—as expressed in the Linder hypothesis. This paper examines an extension of the hypothesis by considering the extent of brand differentiation as another determinant of the closeness of supply and demand. The analysis employs information on international trademark registrations to test whether richer countries import more from countries exporting products of higher quality and greater brand differentiation. The hypothesis is confirmed in most consumer goods sectors.