International Trademark Agreements

Under the Paris Convention for the Protection of Industrial Property, trademark applications filed in other countries may take as their effective date the filing date of a United States application. The Applicant would thereby gain priority in such countries over other applicants which file after the U.S. filing date. However, applicants can take advantage of this international provision only by filing within six months of the U.S. filing date.

On the other hand, while the U.S. has signed the Paris Convention, it has not signed (but is considering) the Madrid Agreement. U.S. applicants therefore may not file one application covering the countries of the Madrid Agreement, but must register country-by-country, except in the European Union, Benelux, and Malaysia.

The rights of trademark owners and applicants are controlled in part by the following International Trademark Agreements, and in part by the laws of the county (state) in which trademark rights are to be exercised.

1. Trademark "Protection" Treaties

The first general group of treaties defines internationally agreed basic standards governing intellectual property in each country. For example, foreign applicants are treated on an equal footing with nationals of the country in which registration is sought ("national treatment") under the Paris Convention. These treaties include the following:

1. Paris Convention for the Protection of Industrial Property
2. Nairobi Treaty on the Protection of the Olympic Symbol
3. Trademark Law Treaty
4. Trademark Law Treaty - Articles
5. Regulations Under the Trademark Law Treaty

2. Global Trademark "Protection" System Treaties

The second general group, known as the global protection system treaties, ensure that one international registration or filing will have effect in any (selected) signatory State. The services provided by the World Intellectual Property Organization (WIPO) under these treaties simplify and reduce the cost of making individual applications or filings in all the countries in which protection is sought for a given intellectual property right. These treaties include the following:

6. Madrid Agreement Concerning the International Registration of Marks
7. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
8. Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement
9. Madrid System for the International Registration of Marks

3. Classification Treaties

The third and final general group of treaties consists of classification treaties, which create classification systems that organize information concerning trademarks into indexed, manageable structures for easy retrieval. These treaties include the following:

10. Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
11. Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks

Trademark Jurisdictions

While a trademark owner's rights are controlled in part by the above International Trademark Agreements, particularly as regards registration, most questions of trademark law are decided by reference to the law of the individual sovereign nations. This is particularly true of questions of infringement. Individual trademark jurisdictions include the following countries:

Western Europe	Eastern Europe
Andorra	Albania
Austria	Bosnia and Herzogovina
Benelux	Bulgaria
Denmark	Chech Republic
European Union	Croatia
France	Czechoslovakia
Germany	Estonia
Greece	Finland
Iceland	Hungary
Ireland	Latvia
Italy (and Holy See)	Lithuania
Liechtenstein	Macedonia
Monaco	Poland
Norway	Romania
Portugal	Slovakia
Spain
Sweden
Switzerland
United Kingdom
Middle East	Commonwealth of Independent States
Bahrain	Armenia
Cyprus	Azerbaijan
Iran	Belarus
Iraq	Georgia
Israel	Kazakhstan
Jordan	Kyrgyzstan
Kuwait	Moldova
Lebanon	Russian Federation
Oman & Muscat	Tajikistan
Qatar	Turkmenistan
Ras Al-Khaimah	Ukraine
Republic of Yemen	Uzbekistan
Saudi Arabia
South Yemen (Aden)
Syria
Turkey
United Arab Emerates
Northern Africa	Southern Africa
Algeria	Bophuthatswana
Egypt	Botswana
Libya	Lesotho
Morocco	Namibia (SW Afr.)
Sudan	Rep. of South Africa
Tunisia	Swaziland
Tangiers	Transkei
Liberia	Venda
Indian Subcontinent	Asean & Environs
Afghanistan	Australia
Bangladesh	Brunei Darussalam
Bhutan	Cambodia
India	Fiji
Nepal	Indonesia
Pakistan	Kiribati
Sri Lanka	Laos
	Malaysia (Malay, Sabah, Sarawak)
Far East	Myanmar (Burma)
China (P.R.C.)	Nauru
Hong Kong	New Zealand
Japan	Papua New Guinea
Macao	Philippines
ROC - Taiwan	Republic of Vietnam
North Korea	Singapore
South Korea	Thailand
	Turalu
	Vanuatu
North America	South America
Canada	Argentina
United States	Bolivia
	Brazil
Central America	Chile
Belize	Colombia
Costa Rica	Ecuador
El Salvador	Guiana
Guatemala	Guyana
Honduras	Paraguay
Mexico	Peru
Nicaragua	Suriname
Panama	Uruguay
	Venezuela
Caribbean
Anguilla
Antigua & Barbuda
Aruba
Bahamas
Barbados
Bonaire
British Virgin Islands
Cuba
Curacao
Dominica
Dominican Republic
Grenada
Haiti
Jamaica
Martinique
Netherlands Antilles
Puerto Rico
Saint Kitts-Nevis
Saint Vincent and the Grenadines
Santa Lucia
Trinidad and Tobago

Chapter Seventeen: Intellectual Property

Article 1701: Nature and Scope of Obligations

1. Each Party shall provide in its territory to the nationals of another Party adequate and effective protection and enforcement of intellectual property rights, while ensuring that measures to enforce intellectual property rights do not themselves become barriers to legitimate trade.

2. To provide adequate and effective protection and enforcement of intellectual property rights, each Party shall, at a minimum, give effect to this Chapter and to the substantive provisions of:
   1. the Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of their Phonograms, 1971 (Geneva Convention);
   2. the Berne Convention for the Protection of Literary and Artistic Works, 1971 (Berne Convention);
   3. the Paris Convention for the Protection of Industrial Property, 1967 (Paris Convention); and
   4. the International Convention for the Protection of New Varieties of Plants, 1978 (UPOV Convention), or the International Convention for the Protection of New Varieties of Plants, 1991 (UPOV Convention).

   If a Party has not acceded to the specified text of any such Conventions on or before the date of entry into force of this Agreement, it shall make every effort to accede.

3. Annex 1701.3 applies to the Parties specified in that Annex.

Article 1702: More Extensive Protection

A Party may implement in its domestic law more extensive protection of intellectual property rights than is required under this Agreement, provided that such protection is not inconsistent with this Agreement.

Article 1703: National Treatment

1. Each Party shall accord to nationals of another Party treatment no less favorable than that it accords to its own nationals with regard to the protection and enforcement of all intellectual property rights. In respect of sound recordings, each Party shall provide such treatment to producers and performers of another Party, except that a Party may limit rights of performers of another Party in respect of secondary uses of sound recordings to those rights its nationals are accorded in the territory of such other Party.

2. No Party may, as a condition of according national treatment under this Article, require right holders to comply with any formalities or conditions in order to acquire rights in respect of copyright and related rights.

3. A Party may derogate from paragraph 1 in relation to its judicial and administrative procedures for the protection or enforcement of intellectual property rights, including any procedure requiring a national of another Party to designate for service of process an address in the Party's territory or to appoint an agent in the Party's territory, if the derogation is consistent with the relevant Convention listed in Article 1701(2), provided that such derogation:
   1. is necessary to secure compliance with measures that are not inconsistent with this Chapter; and
   2. is not applied in a manner that would constitute a disguised restriction on trade.

4. No Party shall have any obligation under this Article with respect to procedures provided in multilateral agreements concluded under the auspices of the World Intellectual Property Organization relating to the acquisition or maintenance of intellectual property rights.

Article 1704: Control of Abusive or Anticompetitive Practices or Conditions

Nothing in this Chapter shall prevent a Party from specifying in its domestic law licensing practices or conditions that may in particular cases constitute an abuse of intellectual property rights having an adverse effect on competition in the relevant market. A Party may adopt or maintain, consistent with the other provisions of this Agreement, appropriate measures to prevent or control such practices or conditions.

Article 1708: Trademarks

1. For purposes of this Agreement, a trademark consists of any sign, or any combination of signs, capable of distinguishing the goods or services of one person from those of another, including personal names, designs, letters, numerals, colors, figurative elements, or the shape of goods or of their packaging. Trademarks shall include service marks and collective marks, and may include certification marks. A Party may require, as a condition for registration, that a sign be visually perceptible.

2. Each Party shall provide to the owner of a registered trademark the right to prevent all persons not having the owner's consent from using in commerce identical or similar signs for goods or services that are identical or similar to those goods or services in respect of which the owner's trademark is registered, where such use would result in a likelihood of confusion. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any prior rights, nor shall they affect the possibility of a Party making rights available on the basis of use.
3. A Party may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. No Party may refuse an application solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application for registration.
4. Each Party shall provide a system for the registration of trademarks, which shall include:
   1. examination of applications;

   2. notice to be given to an applicant of the reasons for the refusal to register a trademark;

   3. a reasonable opportunity for the applicant to respond to the notice;

   4. publication of each trademark either before or promptly after it is registered; and

   5. a reasonable opportunity for interested persons to petition to cancel the registration of a trademark.

   A Party may provide for a reasonable opportunity for interested persons to oppose the registration of a trademark.

5. The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to the registration of the trademark.

6. Article 6bis of the Paris Convention shall apply, with such modifications as may be necessary, to services. In determining whether a trademark is wellknown, account shall be taken of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Party's territory obtained as a result of the promotion of the trademark. No Party may require that the reputation of the trademark extend beyond the sector of the public that normally deals with the relevant goods or services.

7. Each Party shall provide that the initial registration of a trademark be for a term of at least 10 years and that the registration be indefinitely renewable for terms of not less than 10 years when conditions for renewal have been met.

8. Each Party shall require the use of a trademark to maintain a registration. The registration may be canceled for the reason of non-use only after an uninterrupted period of at least two years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Each Party shall recognize, as valid reasons for non- use, circumstances arising independently of the will of the trademark owner that constitute an obstacle to the use of the trademark, such as import restrictions on, or other government requirements for, goods or services identified by the trademark.

9. Each Party shall recognize use of a trademark by a person other than the trademark owner, where such use is subject to the owner's control, as use of the trademark for purposes of maintaining the registration.

10. No Party may encumber the use of a trademark in commerce by special requirements, such as a use that reduces the trademark's function as an indication of source or a use with another trademark.

11. A Party may determine conditions on the licensing and assignment of trademarks, it being understood that the compulsory licensing of trademarks shall not be permitted and that the owner of a registered trademark shall have the right to assign its trademark with or without the transfer of the business to which the trademark belongs.

12. A Party may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take into account the legitimate interests of the trademark owner and of other persons.

13. Each Party shall prohibit the registration as a trademark of words, at least in English, French or Spanish, that generically designate goods or services or types of goods or services to which the trademark applies.

14. Each Party shall refuse to register trademarks that consist of or comprise immoral, deceptive or scandalous matter, or matter that may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or any Party's national symbols, or bring them into contempt or disrepute.