Yes. Several international agreements make it possible to file a single application for registration of a trademark in more than one country. For example, registration with the Benelux Office for Intellectual Property ensures the protection of trademarks in the Benelux countries (Belgium, Luxembourg and the Netherlands). The registration of an EU trade mark (EU trade mark) (formerly a Community trade mark) protects a trade mark in all Member States of the European Union (EU). The Madrid Agreement and the Madrid Protocol allow for the filing of an application for international registration offering trademark protection in each of the countries designated by the applicant that are parties to one or both of these treaties. Filing with the African Regional Intellectual Property Organization or the African Intellectual Property Organization protects a trademark in all Member States of that organization. The Paris Convention covers many forms of “industrial property”, not just trademarks. The Paris Convention provides that each country that is a party to the Treaty shall grant the same protection to trademark registrations of another country that is also a Party to the Treaty. For example, if a U.S. company files a trademark application in France, that U.S. company should be able to obtain the same trademark protection as a French company, subject to clear restrictions, such as . B the fact that the mark is not distinctive or contrary to morality or public order.
In addition, there is a trademark application filed by a foreign applicant directly with another country party to the Paris Convention, completely independent of a trademark application that can be filed in the foreign applicant`s country of origin. The Paris Convention broadly covers and covers patents, trademarks, industrial designs, utility models, service marks, trade names and geographical indications and aims to prevent unfair competition. Article 11(1) of the Paris Convention requires EU countries to `grant patentable inventions, utility models, industrial designs and trade marks temporary protection for products exhibited at official or officially recognised international exhibitions in the territory of one of them`. [4] Article 40 of the TRIPS Agreement recognizes that certain anti-competitive licensing practices or conditions relating to intellectual property rights have negative effects on trade and may impede the transfer and dissemination of technology (paragraph 1). Member States may, in accordance with the other provisions of the Agreement, take appropriate measures to prevent or control abusive and anti-competitive licensing practices of intellectual property rights (paragraph 2). The Agreement provides for a mechanism whereby a country wishing to take action against practices involving companies of another Member State may enter into consultations with that other Member State and exchange publicly available non-confidential information on the matter in question and other information at its disposal, subject to national law and conclusion. mutually satisfactory agreements on the preservation of its confidentiality at the request of the Member (paragraph 3). Similarly, a country whose companies are subject to such measures in another Member State may enter into consultations with that Member (paragraph 4). The Andean Pact is an agreement between the member countries of the Andean Community (Bolivia, Colombia, Ecuador and Peru) which provides for a common trademark law between the member countries. The Andean Pact does not provide for the joint registration of trademarks.
Rather, it provides that certain reciprocal rights are available at the request of the trademark owner. For example, a company which has applied for the registration of a trade mark for the first time in one Member State may file an opposition against a similar trade mark which is applied for in one of the other Member States. In addition, the use of a trade mark in one Member State constitutes use in all Member States if the trade mark is the subject of an action for annulment for non-use. In today`s global economy, companies need to be prepared not only for the protection and rights of their trademarks in the United States, but also for the protection of their trademarks abroad. Through the Paris Convention and the Madrid Protocol, there are international procedures for applying for and obtaining international protection of trademarks. This blog explains these methods and when and why each can be beneficial to your business. [1] Service marks are trademarks that distinguish the source of services. For the purposes of this blog, the term trademark includes both trademarks and service marks. Articles 3, 4 and 5 set out the basic rules of national treatment and preferential treatment of aliens, common to all categories of intellectual property covered by the Convention. These obligations relate not only to substantive standards of protection, but also to issues relating to the availability, acquisition, scope, maintenance and enforcement of intellectual property rights, as well as issues relating to the use of intellectual property rights specifically addressed in the Agreement.
While the national treatment clause prohibits discrimination between nationals of one Member and nationals of other Members, the most-favoured-nation clause prohibits discrimination between nationals of other Members. With regard to the national treatment obligation, exceptions permitted under existing WIPO intellectual property conventions are also permitted under the TRIPS Agreement. If these exceptions allow for substantial reciprocity, a resulting exception to most-favoured-nation treatment is also permitted (e.g.B. comparison of copyright protection clauses that go beyond the minimum duration prescribed by the TRIPS Agreement pursuant to Article 7(8) of the Berne Convention, as incorporated into the TRIPS Agreement). Certain other limited derogations from the most-favoured-nation obligation are also provided. It is understood that the countries of the Union reserve the right to conclude separate special agreements between themselves for the protection of industrial property, provided that such agreements do not infringe the provisions of this Convention. The process of registering trademarks in the United States and international filings and registrations can be complicated and time-consuming. Whether the Madrid Protocol should be used for an international trademark application or whether an application should be filed directly with a foreign trademark office should be considered on a case-by-case basis. However, every global company should prioritize protecting its brands in the most effective way.
While registration (in the U.S. and abroad) can be expensive, it would be exponentially more expensive in the long run to not adequately protect trademarks in the countries where the company operates from the outset. The Treaty also pioneered the concept of priority intellectual property rights. The idea of priority rights is that owners of intellectual property rights can apply for intellectual property protection for trademarks, patents, designs and more in all jurisdictions using the date of the original application. The `Paris Convention right of priority`, also known as the `Paris Convention right of priority` or `Union right of priority`, was also established by Article 4 of the Paris Convention and is considered one of the cornerstones of the Paris Convention. [3] It provides that an applicant from a Contracting State may use his first filing date (in one of the Contracting States) as the effective filing date in another Contracting State, provided that the applicant or his successor in title within 6 months (in the case of industrial designs and trademarks) or 12 months (in the case of patents and utility models) after the first application, a request for follow-up is filed. The Paris Convention of 1878 dealt with unfair competition at the most minimalist and least controversial level. Much has been left to national laws to determine for themselves. Bilateral agreements between countries that later became the Member States of the Paris Convention were no longer necessary, since the Paris Convention granted nationals of Member States the same or more rights than had previously been granted to them under those bilateral agreements.
The system is not perfect and also has some shortcomings, hence the many legal revisions that take place on an ongoing basis. An international registration allows trademark owners to register their marks in multiple countries (Contracting Parties) with a single unified application through a centralized filing system administered by the International Bureau of WIPO. WIPO verifies the formal requirements, including the accuracy of the specifications for the goods and services and the payment of the corresponding fees, and transmits the international registration to the selected countries. .
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