How to Protect a Trademark Internationally ?

By Karan Shukla, Flywork.io Team, Flywork.io.

How does the concept of trademark works internationally? This is one question that many of the businessmen having businesses in more than one country asks. Read on to find out more.

What is a trademark?

The Cornell University defines Trademark as

A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.

Trademark is a symbol, often bearing distinctive imagery and quality, which denotes a business or company, as it’s legal mark. This imagery could be in the form or as a mix of images, texts, numbers, colours; the point being it’s distinctiveness. Use of trademarks can be dated back to the times of the Indus Valley Civilization, where traders used ‘terracotta seals’ to mark their products, so as to make it easy for them to differentiate between each others’ goods. The trademark found it’s way to the world with the vast extent of merchant navy in the early 18th century 1 and was slowly embossed within the colonies.

Trademarks internationally

The opening up of International Markets and the liberalisation of International Trade made it all the more important to register a trademark internationally. According to the World Intellectual Property Organization (WIPTO), more than 4 million new trademarks2 are registered all around the world, every year. Emerging markets such as India and China contribute to over 50 percent of them. A large number of trademarks present internationally makes it very difficult for an enterprise to enquire about every single trademark infringement. It is impossible to single out an infringement, especially if the country is not native to the owners of the trademark or if the trademark is not very widely known.
Every single infringement of a trademark, however minute it may be, is a direct attack on a brand’s goodwill and it’s market presence. Even if the brand can not single out every trademark infringement, it can still stamp it’s legal authority by getting a trademark registered. A registered trademark becomes legally binding and thus serves as a caveat, deterring it’s misuse and/or infringement.

International Trademark and WIPTO

The World Intellectual Property Organisation is a specialized agency of the United Nations. It was formed so as to provide for the protection of Intellectual Property Rights across the World. It was under the umbrella of the WIPTO that the Madrid Protocol was formulated in 1989. 
The Madrid Protocol3 formulated the process of obtaining a Trademark in over 90 countries, at once. The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties.  The Madrid system is a convenient and hands-on solution for registering trademarks worldwide. The applicant can just file a single set of application and get the mark registered in upto 124 states around the world. It makes it convenient to modify, expand or renew a global trademark portfolio through a single centralized system4.

Ways to register a trademark globally

•    Single individual registration method

The applicant for the trademark must visit the registration offices, either by himself or through an attorney, in all the states, he wishes to register his trademark. This is usually done by big brands, who have a lot of presence of teams for the same purpose and cannot afford to lose brand identity. The process is usually the same in all countries. It usually includes an application to the registrar or notary, getting a mark approved and the payment of registration charges.

•    Madrid System

The Madrid system is an international solution for the registration and management of trademarks worldwide. Under this system, the applicants can submit a single application to protect their mark in the states who have ratified the Madrid Agreement, (currently 113 in number). The applicant can apply for international trademark protection by filing an MM2 form, readily available on WIPO website5. After the due process, the applicant has to submit a copy of the same to their local Registrar/Notary. There is a processing fee for registering a trademark with the WIPO, but it’s considerably less than filing individual applications within each country. 

Legal Protection after registration

A trademark registration –

1.    Provides Prima facie evidence of ownership and validity
2.    Provides Legal protection in a country
3.    Deters others from using the same or almost same mark
4.    Provides Legal grounds for a suit of infringement of trademark to be brought in case of a dispute
5.    Is a caveat against misuse or defamation of a brand name or trademark

Let the qualified curated professionals at Flywork.io assist you to resolve any legal and allied issues. For more details visit us at Flywork.io.

Footnotes

1.    18th century marked the start of merchant relations between the West and the East and started a trade war between many European Nations.
2.    52 thousand of these new trademarks are registered under the WIPO
3.    The Madrid System for the International Registration of Marks is governed by the Madrid Agreement, concluded in 1891.
4.    Sometimes contracting states refuse to register the mark under the Madrid System.
 

 

 

Trademark vs Brand – Significance in the modern markets

By Bhanita Das, Flywork.io Team, Flywork.io.

The significance of a Brand name and a trademark has increased manifolds in the current highly competitive markets, nationally and internationally. Let’s look at a comparative overview of both.

In our day-to-day life we often hear the term Trademark and Brand, both seem to be similar but they have their significant distinction. Brand and Trademark both are valuable assets of a company.

MEANING OF BRAND

Brand is a name that is basically given by the manufacturer to the product or services they produce from its own of their specific company. For example: Puma, Biba, Apple, ZARA etc. It helps to create its identity and helps to make a strong market among the people. One of the best examples is the COLGATE, people are so used to this brand that they forgot that Colgate is a brand instead of toothpaste; often heard people saying other brand toothpaste also to be Colgate.

MEANING OF TRADEMARK

Trademark is basically a symbol or word which is legally registered to use as a representative of a company or product. In simple words, we can say it is a symbol that denotes a specific product and also legally differentiates from other products. The symbol should be unique in nature. It is a type of intellectual property consisting of design, signs, words, or expressions.

Both the term sounds to be similar in nature but there are some differentiations between them. So let’s have a look at it. 

SIGNIFICANCE OF BRAND 

Brand helps the buyer to identify the product which they like and dislike.

Brand helps to identify the marketer as well as helps in reducing the time needed for purchasing the product and services.

For a seller, branding helps to reduce price comparison and helps the firm to introduce a new product.

It helps to facilitate promotion of the goods and services.

SIGNIFICANCE OF TRADEMARK

Trademark is important for a startup for its security, by trademarking a company can secure its product and services being used by another company.

Trademark is permanent which needs to be renewed periodically.

Trademark is a company’s greatest asset that acts as a catalyst for increasing the value of a startup.

DIFFERENCE BETWEEN TRADEMARK & BRAND

1.     A legal brand is not a legal name of a company, it is just a name selected by the company but a trademark is legally bound to represent a business by its services or goods.

2.     Not all brands are trademarks but all trademarks are brands.

3.     A brand consists of several elements which include image, character identity, personality, essence, culture reputation; and these combines to define the value of a brand                  whereas a  trademark is used to protect a various aspect of a brand such as Brand name, Signatures, Color Schemes, Packaging, Unique labeling etc.

4.     Brand name is associated with culture, personality, vision, and reputation whereas a trademark is associated with the description, packaging, color schemes.

5.     Brand can only be protected to state-level but a trademark protects the company’s product identity by establishing that the mark has not been used before.

6.     Brand can be created or named by any manufacturer but a trademark can only be used after it is registered.

7.     Brand can be used by different producers & sellers but trademarks can only be used by the producer who has got it registered.

8.     The fundamental concept of the brand is that it is the easy way to remember the product, whereas the trademark is a source of origin of any product or service.

CONCLUSION

Thus, the above-mentioned terms i.e. Brand and Trademark both are valuable assets of a company. Although both the terms sometimes act as a synonym yet they are very different from each other. A brand is a name that relates to products and services offered by a company whereas a Trademark is a legally registered trade or brand name or logo or slogan that basically identifies a company to its product or services. A good brand helps in suggesting the product benefits and its usage as well as the trademark gives us the right to use our business name nationwide in connection and also allows us to file a suit in case of a dispute.

 

Let the qualified curated professionals at Flywork.io assist you to resolve any legal and allied issues. For more details visit us at Flywork.io.

 

Working of the TRIPS

This blog aims to provide a preliminary insight into the working procedure of TRIPS Agreement. It follows the common route that is followed when countries try to approach the WTO Dispute Settlement Body to resolve issues relating to trade laws or infringing intellectual property rights.

The TRIPS Agreement establishes minimum substantive standards for the establishment of rights to IP. However, it is addressing a subject matter of very broad scope with rules that are deliberately designed to provide Members with substantial flexibility in their implementation. Predicting the specific issues that will be raised in dispute settlement would be rather difficult in light of the broad scope of potential subject matter.

The TRIPS Agreement Part III on Enforcement of IPRs take the approach of obligating Members to establish administrative and judicial mechanisms through which private IPRs holders can seek effective protection of their interests. It is implicit in all international agreements that their parties will undertake to implement them in good faith.There are two basic types of claims regarding the enforcement provisions of the TRIPS Agreement that are foreseeable. The first are claims that Members have failed to adopt laws and establish administrative mechanisms that satisfy the basic requirements of Part III of the Agreement. The second are claims that while Members may have adopted the relevant laws and mechanisms, they are failing to operate them in a manner that is “effective”.

The TRIPS Agreement incorporates the general consultation and dispute settlement mechanism of Articles XXII and XIIII of the GATT 1994, and the DSU, and from that standpoint the same procedural considerations apply in the TRIPS context as in the GATT and GATS contexts. There are familiar procedures for initiation of consultations, consultations, request for the establishment of a panel, third party participation, establishment of a panel, establishment of terms of reference, submission of pleadings and evidence, proceedings before the panels, possibilities for expert consultation, and so forth.[1]

A procedure for settling disputes existed under the old GATT, but it had no fixed timetables, rulings were easier to block, and many cases dragged on for a long time inconclusively. The Uruguay Round agreement introduced a more structured process with more clearly defined stages in the procedure. It sets out in considerable detail the procedures and the timetable to be followed in resolving disputes. If a case runs its full course to a first ruling, it should not normally take more than about one year — 15 months if the case is appealed. The agreed time limits are flexible, and if the case is considered urgent (e.g. if perishable goods are involved), it is accelerated as much as possible.

The Uruguay Round agreement also made it impossible for the country losing a case to block the adoption of the ruling. Under the previous GATT procedure, rulings could only be adopted by consensus, meaning that a single objection could block the ruling. Now, rulings are automatically adopted unless there is a consensus to reject a ruling — any country wanting to block a ruling has to persuade all other WTO members (including its adversary in the case) to share its view.

Although much of the procedure does resemble a court or tribunal, the preferred solution is for the countries concerned to discuss their problems and settle the dispute by themselves. The first stage is therefore consultations between the governments concerned, and even when the case has progressed to other stages, consultation and mediation are still always possible.

Settling disputes is the responsibility of the Dispute Settlement Body (the General Council in another guise), which consists of all WTO members. The Dispute Settlement Body has the sole authority to establish “panels” of experts to consider the case, and to accept or reject the panels’ findings or the results of an appeal. It monitors the implementation of the rulings and recommendations, and has the power to authorize retaliation when a country does not comply with a ruling.

First stage: consultation (up to 60 days)

Before taking any other actions the countries in dispute have to talk to each other to see if they can settle their differences by themselves. If that fails, they can also ask the WTO director-general to mediate or try to help in any other way.

Second stage: the panel (up to 45 days for a panel to be appointed, plus 6 months for the panel to conclude).

 If consultations fail, the complaining country can ask for a panel to be appointed. The country “in the dock” can block the creation of a panel once, but when the Dispute Settlement Body meets for a second time, the appointment can no longer be blocked (unless there is a consensus against appointing the panel).

Officially, the panel is helping the Dispute Settlement Body make rulings or recommendations. But because the panel’s report can only be rejected by consensus in the Dispute Settlement Body, its conclusions are difficult to overturn. The panel’s findings have to be based on the agreements cited.

The panel’s final report should normally be given to the parties to the dispute within six months. In cases of urgency, including those concerning perishable goods, the deadline is shortened to three months.

The agreement describes in some detail how the panels are to work. The main stages are:

 Before the first hearing: each side to the dispute presents its case in writing to the panel.

First hearing: the case for the complaining country and defence: the complaining country (or countries), the responding country, and those that have announced they have an interest in the dispute, make their case at the panel’s first hearing.

Rebuttals: the countries involved submit written rebuttals and present oral arguments at the panel’s second meeting.

Experts: if one side raises scientific or other technical matters, the panel may consult experts or appoint an expert review group to prepare an advisory report.

First draft: the panel submits the descriptive (factual and argument) sections of its report to the two sides, giving them two weeks to comment. This report does not include findings and conclusions.

Interim report: The panel then submits an interim report, including its findings and conclusions, to the two sides, giving them one week to ask for a review.

Review: The period of review must not exceed two weeks. During that time, the panel may hold additional meetings with the two sides.

Final report: A final report is submitted to the two sides and three weeks later, it is circulated to all WTO members. If the panel decides that the disputed trade measure does break a WTO agreement or an obligation, it recommends that the measure be made to conform to the WTO rules. The panel may suggest how this could be done.

The report becomes a ruling: The report becomes the Dispute Settlement Body’s ruling or recommendation within 60 days unless a consensus rejects it. Both sides can appeal the report (and in some cases both sides do).

Panels

Panels are like tribunals. But unlike in a normal tribunal, the panelists are usually chosen in consultation with the countries in dispute. Only if the two sides cannot agree does the WTO director-general appoint them.

Panels consist of three (possibly five) experts from different countries who examine the evidence and decide who is right and who is wrong. The panel’s report is passed to the Dispute Settlement Body, which can only reject the report by consensus.

Panelists for each case may be chosen from an indicative list of well-qualified candidates nominated by WTO Members, although others may be considered as well, including those who have formerly served as panelist.  Panelists serve in their individual capacities. They cannot receive instructions from any government. The indicative list is maintained by the Secretariat and periodically revised according to any modifications or additions submitted by Members.

Appeals

Either side can appeal a panel’s ruling. Sometimes both sides do so. Appeals have to be based on points of law such as legal interpretation — they cannot reexamine existing evidence or examine new issues.

Each appeal is heard by three members of a permanent seven-member Appellate Body set up by the Dispute Settlement Body and broadly representing the range of WTO membership. Members of the Appellate Body have four-year terms. They have to be individuals with recognized standing in the field of law and international trade, not affiliated to any government.

The appeal can uphold, modify or reverse the panel’s legal findings and conclusions. Normally appeals should not last more than 60 days, with an absolute maximum of 90 days.

The Dispute Settlement Body has to accept or reject the appeals report within 30 days — and rejection is only possible by consensus.[2]

Case in Point:

India – Patent Protection for Pharmaceutical and Agricultural Chemical Products, WT/DS50 (“India – Patents (US)”) was the first WTO dispute under the TRIPS Agreement that resulted in a decision by a panel, and subsequently by the Appellate Body. The complaining party was the United States, which alleged that India had failed to adequately implement TRIPS Agreement requirements under Articles 70:8 and 70:9 to establish a so-called “mailbox” to receive and preserve patent applications and to adopt legislation authorizing the grant of exclusive marketing rights (EMRs)[3]

[1] http://unctad.org/en/docs/edmmisc232add18_en.pdf

[2] https://www.wto.org/english/thewto_e/whatis_e/tif_e/disp1_e.htm

[3]http://unctad.org/en/docs/edmmisc232add18_en.pdf page 43

Picture Credits: https://en.wikipedia.org/wiki/File:World_Trade_Organization_Members.svg