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International Trademark Law

The International Trademark Association

The International Trademark Association

The International Trademark Association is a non-profit organization which is dedicated to advocacy for strong legal protection of trademark rights and other forms of intellectual property. Initially established by United States citizens and created for the purpose of enforcing American trademark rights, the group now exists on an international level. 
The group issues journals and newsletters and maintains resources of cataloged information dealing with new developments in trademark law. Various kinds of conferences and conventions are held under the name of the International Trademark Association for pooling the knowledge and skill-sets of professionals trained in trademark right issues. 
The primary purpose of the Association is to lead lobbying and advocacy services throughout the world in support of trademark protection rights. The main service which it provides for this purpose is the Annual Meeting, which was first held in 1878, and lasts for five days. The main International Trademark Association office is in New York City, with branch offices also operating in Brussels and Shanghai.
The International Trademark Association was founded in 1878 in the earlier form of the United States Trademark Association. It was created by seventeen businesspeople in New York City and was the first organization created for the advocacy of trademark rights in the United States, as well as the second trademark rights association, after the Parisian organization of the Union des Fabricant. The group first took a leading role in the national debate over trademark rights after the 1870 Trademark act was struck down in 1879 by the Supreme Court. The lobbying by the group helped impel Congress to enact the Trademark Act of 1881. 
The group began taking an international role in 1890 by intervening in an Austrian trademark rights case. In 1900 the Trademark Association submitted a report to Congress, on the invitation of President McKinley, recommending reforms of the 1881 Trademark Act. Partly on the basis of the report’s recommendations, Congress passed the Trademark Act of 1905. Later in the decade, the Trademark Association helped create the model for trademark law in South America. The major federal revision of United States trademark law enacted in 1945 as the Lanham Act was also supported by the Trademark Association. 
The group’s non-profit basis was earlier established  in 1926. In 1985 the group created a Trademark Review Commission for the purpose of examining the American trademark system. Due to the growth in non-American membership in the group, it was renamed the International Trademark Association in 1993. With the passage of the Agreement on Trade-Related Aspects of Property Rights under the World Trade Organization, the International Trademark Association was recognized as the official representative to the United Nations for the interests of trademark owners. 
In the same year, the United States passed the Federal Trademark Dilution Act with the support of the Association. Currently more than half of the group’s membership comes from outside of the United States.

Paris Convention for the Protection of International Property

Paris Convention for the Protection of International Property

 

The Paris Convention for the Protection of International Property created the first agreement on international trademark law. It did so as part of a larger attempt at creating common standards for intellectual property rights to enable the observance of rights to be observed across national boundaries. The Paris Convention initially held eleven nations to its agreement. There are currently 173 nations signatory to the Convention, which has been altered several times from its original provisions.

The Paris Convention was held in 1880 and signed three years later. It took place as a result of lobbying from people engaged in developing and implementing new forms of technology. Due to the professional disciplines of the Convention's supporters, it was oriented toward industrial areas of protection, such as international trademark law, rather than strictly defined intellectual property rights. 

When the delegates for the Paris Convention first arrived, they adopted the agenda of "the creation of a union which, without encroaching on the municipal law of the contracting countries, would lay down a number of general principles securing the interests of industrial property in the interior of the country as well as abroad." After being signed on March 20, 1883, the Convention's treaty went into effect on March 7, 1884. The signatory members were from Europe and Latin America, comprising the Netherlands, France, Switzerland, Serbia, Belgium, Spain, Portugal, Italy, Guatemala, Brazil, and El Salvador.

The Paris Convention provisions relevant for international trademark law include Articles 2, 4, 6, 8, and 10. Article 2 and 3 specify whom may receive protection under international trademark law. #2 protects citizens of signatory Paris Convention members in other such states, and #3 extends protection to non-citizens who are resident or commercially invested in signatory nations. Article 4 grants a "right of priority" for applicants for trademark rights in other member nations within six months from the application. 

Article 6bis places trademarks widely recognized in their country of origin under general international trademark law protections in other member states. Another provision, Article 6quinquies, assures that the "tell quelle" (original form) of a trademark shall be accepted for registration in other Paris Convention nations. Article 6septies prevents individuals with a business or legal relationship to the original registrant from applying for the same rights. 

Article 8 recognizes that trade names are also due to the same protections even if they are not registered as trademarks. Article 10bis allows for the payment of damages, levying of injunctions, and prosecution under criminal law for cases in which acts of unfair competition have occurred.

Since the passage of the Paris Convention, it has been amended and revised several times for the requirements of new member states and development of intellectual property issues. The Convention was most recently altered on September 28, 1979, and most previously revised on July 14, 1967 in Stockholm. 

Notable previous revisions to the Paris Convention include those of June 2, 1911 in Washington, November 6, 1925 in The Hague, June 2, 1934 in London, and October 31, 1958 in Stockholm.

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The WTO TRIPS Agreement

The WTO TRIPS Agreement

Current international standards for the enforcement of trademark law The World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights, otherwise referred to as the WTO TRIPS agreement, establishes basic and minimal standards for the enforcement of such areas of intellectual property rights as copyright and trademarks.
Signatory nations to the WTO TRIPS agreement are required to pass laws giving protection to the free enjoyment of intellectual property rights within the country and in relation to other countries. The drafting of the WTO TRIPS agreement recognized the changing nature of trademark and copyright issues in a world marked by an expansion of international commerce and use of digital technology.
The WTO TRIPS agreement was negotiated during the Uruguay Round of the predecessor to the WTO, the General Agreement on Tariffs and Trade (GATT), a creation of the United Nations in place since the end of World War II. Impetus came from the United States government and various American businesses for the creation of a system which would recognize intellectual property rights as commodities in of themselves. The Uruguay Round lasted from 1986 to 1994 and ended with the creation of the WTO. The TRIPS agreement went into effect in the beginning of 1995.
Article 15 of the WTO TRIPS agreement provides the basic definition of a trademark as is applicable for international law. The basic WTO definition of a trademark is the use of an individual sign or arrangement of signs by a provider of goods and services in a way intended and able to set them apart from those of other providers. It allows for the registration of any trademark falling under these terms with the caveat that it must be “visually perceptible.” 
Following articles of the WTO TRIPS agreement deals with subsidary issues of trademark right enforcement. The WTO TRIPS agreement derives its provisions for the protection of trademarks considered to be “well known” from the comparable article in the Paris Convention, the foundational legislation on intellectual property right standards, Article 6bis. 
This provision, given in Articles 16.2 and 16.3, requires the refusal of registration to trademarks held to be excessively similar to previously established trademarks of notable repute. It also specifies that well-known and newly applied-for trademarks may conflict with each other even if they are applied to different areas of goods and services. Article 17 of TRIPS allows for the “fair use” doctrine to be observed in trademark right protection. 
The terms which WTO members may set for the “lifespan” of trademark registration cannot, by Article 19 of TRIPS, fall below seven years. The issue of trademark registration lapsing under international law is addressed in Article 19, which mandates a waiting period of three years before ownership to an unused trademark may be allowed to lapse and provides for exceptions in cases out of the hands of the trademark owner. Article 20 provides for the free use of a trademark after it has been registered according to the owner’s wishes.

The Different Classes of Goods Under the Nice Agreement

The Different Classes of Goods Under the Nice Agreement

The World Intellectual Property Organization is responsible for administering the system referred to as the International (Nice) Classification of Goods and Services, or, officially, the the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. This system was created to allow  for the registration of trademarks made in reference to a particular good or service. The Nice Classification was agreed to on June 15, 1957 in its namesake city. 
It was later altered by revisions made at Stockholm in 1967 and in Geneva in 1977. At the start of 2009, this agreement was binding for 83 nations. Its various descriptions and classifications are also used for the practical purposes of trademark registration in the 64 nations which have not officially signed the Nice Agreement. The Agreement may be entered into by nations which are signatory to the Paris Convention, the foundation of European intellectual property right law.
The version of the Nice Classification currently in use is the Ninth Edition, which was introduced at the start of 2007. The textual versions of the Nice Agreement which are considered “authentic” are those presented in French and English. WIPO provides the full contents of the Nice Classification online, in a published version, and on CD-ROM. The CD-ROM versions of the Nice Agreement are presented in both English and French. Revisions to the Nice Agreement are made by a body, composed of representatives from each of the signatory states, called the Committee of Experts. 
WIPO considers the basic purpose of the Nice Classification System to be to allow the international registration of goods to be more easily made. Because similar trademarks found in the same category may incur the most serious legal problems, the classification system is also intended to help along prospective trademark applicants by enabling them to discover if there are any preexisting versions of their trademark. For this reason, the classification system based on the Nice Agreement is made available in several languages.
         Class 1: Chemicals (may include foundational materials for other classes of goods)
         Class 2: Paints (may include anti-corrosive materials)
         Class 3: Cosmetics and cleaning preparations
         Class 4: Lubricants and fuels
         Class 5: Pharmaceuticals
         Class 6: Metal goods
         Class 7: Machinery
         Class 8: Hand tools
         Class 9: Electrical and scientific apparatus
         Class 10: Medical apparatus (includes tools used for medical procedures and artificial limbs)
         Class 11: Environmental control apparatus (may include light sources, sanitary procedures, and food preparation in addition to temperature control)
         Class 12: Vehicles
         Class 13: Firearms
         Class 14: Jewelry (includes time pieces and excludes valuable metals used for purposes other than decoration)
         Class 15: Musical instruments
         Class 16: Paper goods and printed matter
         Class 17: Rubber goods
         Class 18: leather goods
         Class 19: Nonmetallic building materials
         Class 20: Furniture and articles not otherwise classified
         Class 21: Housewares and glasses
         Class 22: Cordage and fibers
         Class 23: Yarns and threads
         Class 24: Fabrics
         Class 25: Clothing (includes shoes and hats)
         Class 26: Fancy goods (fake flowers, items for personal adornment and ornamentation)

An Overview of the Inter-American Convention

An Overview of the Inter-American Convention

International trademark law is sometimes implemented on a regional basis. In the Americas, the United States took the lead in setting up trademark protection agreements with Latin American nations. The most widespread agreement was enacted with the passage of the General Inter-American Convention for Trademark and Commercial Protection of Washington, 1929, which is alternately referred to as the Washington Convention or as the Pan-American Convention of 1929. It was signed by the United States, Peru, Paraguay, Panama, Honduras, Haiti, Guatemala, Cuba and Colombia. 
The United States had enacted previous trademark protection treaties with its Latin American neighbors in 1910, in the Buenos Aires Convention agreed to with Bolivia and Ecuador, and the Santiago Convention in 1923, signed by Uruguay, the Dominican Republic, and Brazil. The passage of the Inter-American Convention into international trademark law followed from the resolutions adopted to that effect on February 15, 1928 through the Sixth International Conference of American States held at Havana and on May 2 of that year through the Governing Board of the Pan-American Union in Washington. 
This trademark protection act supplanted the earlier international trademark legislation enacted in Santiago in 1923 as the Convention for the Protection of Commercial, Industrial and Agricultural Trade Marks and Commercial Names.
The Inter-American Convention and its equivalent companions in international trademark law allow for trademark owners to block the registration of trademarks in other countries on the basis of trademark protection violations. 
The trademark protection procedure enacted through the treaty requires that the relevant motion be filed by a registrant for the infringed-upon trademark, that the new trademark is sufficiently close to the older mark to cause confusion, that it be proven that the individual applying for the new trademark have been aware of the older one, and that the two trademarks function in regard to the same class of goods or services.