Many different international trademark agreements are in force today. They aid in the standardization of trademark regulations and enforcement across all member countries and territories. These agreements ensure that those who seek trademark registration in more than one location are able to do so without facing any undue difficulties.
By understanding the qualities and attributes of international trademark agreements, an applicant will be able to save much time and money when making such an application. Applicants can also utilize these agreements to garner the greatest possible amount of value from their intellectual property. This is especially important for those who register trademarks for business activities abroad.
The Madrid System
The Madrid System is the primary intellectual property agreement which governs international trademark registration. It contains the Madrid Agreement and the Madrid Protocol. The World Intellectual Property Office (WIPO) administers all policies regarding international trademark registration applications under the Madrid System. WIPO also processes these international applications.
According to the Madrid Agreement, anyone who is a national of a member country or territory may receive protection for a registered trademark in any other member jurisdiction. The Madrid Protocol permits nationals of members to receive protection in any other member jurisdiction based on a pending application or registration in the country or jurisdiction of origin. In areas where both the Madrid Agreement and Madrid Protocol are in force, the Madrid Protocol takes precedence.
To file an international trademark registration application under the Madrid System, an applicant must already have registered or applied for the same trademark in the applicant’s own country. Following this, the trademark will be certified and sent to WIPO for examination and subsequent approval. Applicants may also use WIPO’s centralized system to manage international trademark registration matters.
The Paris Convention
The Paris Convention is one of the world’s oldest intellectual property treaties. It is also one of the most extensive; it involves 177 countries. The Paris Convention allows one’s trademark registration application in a foreign member jurisdiction to be treated in the same way as an application made by a national of that jurisdiction. This foreigner may also receive the same intellectual property protections and rights to which a local applicant would be entitled.
The article of the Paris Convention which has the greatest impact on trademark registration is Article 6(1). This article states that every country which is a member of the Paris Convention may determine its own conditions for trademark registration and filing. Article 6(1) thus necessitates that every applicant who seeks trademark registration abroad must fulfill that country’s trademark registration and filing conditions. National laws regarding trademark registration apply within the territory of each member jurisdiction.
The Paris Convention also states that decisions on trademark registration in a country are to be made independently. No input from foreign intellectual property bodies may be used to influence the decision made. Decisions on trademark registrations are to be made in accordance with national or territorial trademark laws.
The TRIPS Agreement
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) involves all member nations of the World Trade Organization (WTO). It establishes basic standards for intellectual property matters as they apply to nationals of other WTO members. The TRIPS Agreement is the world’s most comprehensive agreement on intellectual property in force today.
Article 15 of the TRIPS Agreement states several guidelines regarding trademarks and protectable subject matter. Some of its sections contain certain key points about international trademark registration. According to Article 15.2, no member of the TRIPS Agreement is allowed to deny a foreigner’s registration of a trademark on non-specific grounds if the trademark has not violated the terms of the Paris Convention.
Article 15.3 allows members to require a trademark’s registrability by a foreigner to depend on its use. However, it also bars members from requiring existing use of a trademark to be a condition for the filing of a trademark registration application. Additionally, the TRIPS Agreement does not permit the lack of registration of a trademark in the applicant’s country of origin to be a reason for the denial of that trademark’s registration abroad. This rule mirrors one found in the Paris Convention.
This article is brought to you by Exy Intellectual Property Malaysia and Singapore.