III. INTERNATIONAL TREATIES – A MOVEMENT...

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III. INTERNATIONAL TREATIES – A MOVEMENT TOWARDS

HARMONIZATION OF TRADEMARK LAWS

III.1. NEED FOR UNIFORMITY

The ever-increasing importance and proliferation of trademarks in

international and domestic commerce is remarkable in its own way and should not

be overshadowed by the current discussions concerning patents and copyrights.

Most obvious is the impact of electronic commerce and the growth of the Internet

as a selling medium, a forum that transcends national boundaries and bears no

physical location on “Main Street.” The reputation of a product or service travels

rapidly in today’s commercial marketplace, and can reach foreign markets long

before the trademark owner has actually begun marketing its products and

conducting business.67’

Trademarks have become even more fundamental in our commercial

lives due to the primary changes taking place in the intensely competitive

international markets in consumer goods. When compared to the market that

existed a few decades ago, today’s consumer demands variety) quality, and

constant novelty. To meet these demands, businesses tailor their products to

smaller and increasingly heterogeneous, niche markets. Consequently, the

incentive exists to search for the least expensive location to manufacture the

product that will enable the business to compete in global markets. In this fluid

environment, the trademark originator’s intent to expand beyond its original

market should be presumed.

67 Roger Schechter, The Case For Limited Extraterritorial Reach of the Lanham Act, 37 VA. J.

INT’L L 619,628 (1997).

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Significant changes in the production and marketing of consumer goods

have occurred since the 1970s. Formerly, companies seldom revamped their

product lines. The difference today is startling. Take, for example, two heavily

advertised products, sneakers and automobiles, and consider how several models

were available twenty-five years ago for each. The likely answer is only a handful.

Today, in comparison, Nike introduces new sneaker models every six weeks.

Peruse any Sunday newspaper supplement and one finds hundreds of models of

automobiles for sale68.

This new world of international trademarks has created intense demands

on trademark owners. When models proliferate and product lines are constantly

being revamped, relentless pressure is imposed on a company to create a constant

flow of new trademarks. Once a trademark is created and the availability of the

trademark determined, the trademark must be registered and maintained in several

jurisdictions simultaneously. The figures are revealing. The number of trademark

registrations worldwide in 1967 was 400,000; by 1992, registrations totaled

1,200,000, a three-fold increase. It is expected that this number will increase even

more sharply in the years to come69.’ For these reasons, it is obvious that

trademark owners need speed, certainty, and efficiency in seeking and

maintaining their rights internationally.

Reliable, stable, and efficiently structured trademark system benefits

consumer and business interests alike. Trademarks serve the interests of

consumers because they reduce search costs and allow buyers to make rational

68 Jeff Madrick, Computers: Waiting for Revolution, 45 N.Y. REV. 5, 32 (March 26,1998).

69 Arpad Bogsch, Trademarks in 2017: Their Creation and Protection, 82 TM REP. 880,881

(1992).

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purchasing and repurchasing decisions with speed and assurance.70” Just as

important, a strong trademark system creates incentives for firms to create and

market products of desirable qualities, particularly when these qualities are not

observable before purchase. Indeed, the products that we buy today are embedded

with more and more intangible information that is largely unobservable to the

human eye. In this commercial environment trademarks operate as convenient

symbolic shorthand that provides this information to consumers in the most

efficient manner. For example, a washing machine might include software that

controls the correct temperature, or a microwave may apply technology to

regulate the length of time a certain vegetable is cooked. These intangible and

unobservable features account for an ever greater value of products71.

70 William Landes& Richard Posner, Trademark Law: An Economic Perspective, 30 Ji. &

ECON.265 (1987). Trademarks help to solve the problem of consumer ignorance about the quality

of a product. When quality is opaque not apparent on the goods themselves, the consumer can use

the trademark as a signal of quality. In this way, trademarks reduce the costs to consumers of

searching for a product with specific qualities.

71Ibid.(citing Frances Cairncross, The Death Of Distance How The Communications Revolution

Will Change Our Lives (1997) ).

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III.2. INTERNATIONAL AGREEMENTS RELATING TO TRADEMARK LAWS

III.2.a. Paris Convention for the Protection of Industrial

Property- The Beginnings of the International Trademark

System72

The Paris Convention for the Protection of Industrial Property is the

principal international treaty governing patents, trademarks, and unfair

competition. Concluded in 1883, the Paris Convention resulted in the first

international effort to standardize and simplify the protection of intellectual

property rights in Member States. This Treaty has been subsequently amended

several times, the last amendment occur ring in Stockholm in 196773.

Significantly, the Treaty drafted at the Paris Convention has the greatest number

of Member States of any treaty dealing with intellectual property rights, and is

administered by WIPO.

The Paris Convention is primarily concerned with harmonization of

substantive trademark law and is premised on the fundamental principle that

Member States are not allowed to discriminate between their nationals and

nationals of other Member States74. Thus, nationals of Member States enjoy the

same rights, advantages, and protections as nationals in every other Member State

72Paris Convention for the Protection of Industrial Property, opened for signature Mar. 20, 1883, as

amended at Stockholm, July 14, 1967, 21 U.S.T. 1630, 828 U.N.T.S. 305 [hereinafter Paris

Convention].

73Originally enacted in 1883, the Paris Convention has been revised six times: Brussels (1900);

Washington (1911); The Hague (1925); London (1934); Lisbon (1958); Stockholm (1967).

74 Art. 2., Paris Convention.

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of the Paris Convention. The consistency in trademark law among Member States

is accomplished by the provisions of the Paris Convention that provide for

conditions associated with the filing and registration of trademarks which are

determined by national laws75.

One important innovation of the Paris Convention is the right of priority.

Once a trademark application has been filed in a Member State, the applicant has

a period of six months in which to file corresponding applications in other

Member States without losing any rights76. In effect, the subsequent filings are

given a priority date of the first filing, and serves to protect the applicant against

third parties after the first filing but before subsequent convention filings77.

Another key provision of the Paris Convention concerns the protection of

“well known” marks78. Under Article 6bis, the Paris Convention confers

protection for “well known” marks, whether registered or not79. This provision

requires Member States to either refuse to register, cancel the registration, or to

prohibit the use of a mark, that is likely to create confusion “of a mark considered

by the competent authority of the country of registration or use to be well known

75Art.6(1). Paris Convention.

76 Art.4B,C(1). Paris Convention.

77 Stephen P. Ladas, Patents, Trademarks, and Related Rights: National and International

Protection 1196-97 (1975).

78 Clark W. Lackert, Famous Marks: Dilution From an International Perspective, in Annual

Advanced Seminar On Trademark Law 1997, at 87 (PLI Patents, Copyright, Trademarks, and

Literary Prop. Course Handbook Series No. 176, 1997); Frederick W. Mostert, Well-Known and

Famous Marks: Is Harmony Possible in the Global Village?, 89 TM REP. 103,107-08 (1996).

79Art. 6bis(1), Paris Convention.

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in that country ....80„ Article 6bis entitles a national of Member State to protect

against exploitation of the famous mark on identical or similar goods. For

example, Coca-Cola could bring an action against the use or registration of a

trademark in a Member State as long as the “Coke” trademark was famous in that

state, and even if the “Coke” trademark was not registered in its country of origin.

Coca-Cola could not, however, bring the action if the trademark was used on, or

registered for, washing machines.

In contrast, suppose that “Coke” is registered for dissimilar goods, or that

“Coke” is used on similar goods but happens not to be famous in that Member

State. Clearly, relief under Article 6bis is not available, but another provision of

the Paris Convention may have some pertinence. Article 10bis of Paris provides

that “the countries of the Union are bound to assure to nationals of such countries

effective protection against unfair competition81’’ and defines unfair competition

“as any act of competition contrary to honest practices in industrial or commercial

matters.82” The problem is that little consensus exists on what constitutes “unfair

competition” under the Treaty. Despite such limitations, the Paris Convention, in

protecting famous marks, and even those that are unregistered, illustrates further

the move toward the erosion of territoriality in trademark 1aw.

The Paris Convention embodies a number of Special Unions (known also

as Special Arrangements) concerning various forms of industrial property. These

Special Unions have in their own way further harmonized and integrated the

international system. In order to adhere to a Special Union under the Paris

80 Art. 6bis(1), Paris Convention.

81Art. 10 bis(1), Paris Convention.

82 Art. 10 bis(2), Paris Convention

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Convention, a country must first be a member of the Paris Convention83’ The

Madrid Agreement Concerning the International Registration of Marks (“Madrid

Agreement”) is one such special arrangement. The Madrid Agreement was

completed at the Madrid Revision conference of the Paris Convention in 1890,

and later revised at Stockholm in 1967. The Madrid Agreement builds on

principles outlined at the Pans Convention by creating an international mechanism

for the registration of trademarks. Approximately thirty

Nations, the United States not being one of them, are party to the Madrid

Agreement.

The Paris Convention does not regulate the conditions for the filing and

registration of marks which are determined in each Contracting State by domestic

law. Consequently, no application for the registration of a mark filed by a national

of a Contracting State may be refused, nor may a registration be invalidated, on

the ground that filing, registration nor renewal has not been affected in the country

83 Other Arrangements concerning Trademarks include The Lisbon Agreement for the Protection

of Appellations of origin and Their International Registrations, Oct. 31, 1958, as last revised at

Stockholm, July 14, 1967, and mended 1979 (a multilateral treaty providing for an international

system of registration and protections of appellations of origin. The treaty was formed at the 1958

Lisbon Conference of the Revision of the Paris Convention. The United States is not a member);

The Madrid Arrangement for the Repression of False or Deceptive Indications of Source, July 14,

1967, 828 U.N.T.S. 389, 23 U.S.T. 1353 (First created at the Madrid Revision Conference of the

Paris Convention in 1890 and has been revised several times the latest revision being at Stockholm

in 1967. There are thirty members adhering to this arrangement. The United States in not a

member); Nice Arrangement Concerning the International Classification of Goods and Services

for the Purposes of the Registration of Marks, June 15, 1957,550 U.N.T.S. 45, as revised at

Stockholm, July 14, 1967 and at Geneva, May 13, 1977, in force Nov. 12, 1969.

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of origin. The registration of a mark obtained in one Contracting State is

independent of its possible registration in any other country, including the country

of origin; consequently, the lapse or annulment of the registration of a mark in one

Contracting State will not affect the validity of the registration in other

Contracting States. Where a mark has been duly registered in the country of

origin, it must, on request, be accepted for filing and protected in its original form

in the other Contracting States. Nevertheless, registration may be refused in well-

defined cases, such as where the mark would infringe the acquired rights of third

parties; where it is devoid of distinctive character; where it is contrary to morality

or public order; or where it is of such a nature as to be liable to deceive the public.

If, in any Contracting State, the use of a registered mark is compulsory, the

registration cannot be canceled for non-use until after a reasonable period, and

then only if the owner cannot justify this inaction.

Each Contracting State must refuse registration and prohibit the use of

marks that constitute a reproduction, imitation or translation, liable to create

confusion, of a mark used for identical and similar goods and considered by the

competent authority of that State to be well known in that State and to already

belong to a person entitled to the benefits of the Convention. Each Contracting

State must likewise refuse registration and prohibit the use of marks that consist

of or contain, without authorization, armorial bearings, State emblems and official

signs and hallmarks of Contracting States, provided they have been communicated

through the International Bureau of WIPO. The same provisions apply to armorial

bearings, flags, other emblems, abbreviations and names of certain

intergovernmental organizations. Collective marks must be granted protection.

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Significance of the Right of Priority

The right of priority, sometimes referred to as the “Convention priority

right, “Paris Convention priority right,” or “Union priority right,” is found in

Article 4. It provides that an applicant eligible for Convention benefits, who files a

first regular patent or trademark application in any of the countries of the Union,

can then file subsequent applications in other countries of the Union for a defined

period of time which subsequent applications will have an effective filing date as

of the first filed application.

For patents and utility models, the defined period is one year. For

industrial designs and trademarks, the defined period is six months. The duration

of the priority periods are designed to take into account the conflicting interests of

the applicant on one hand and of third parties on the other. The practical effect of

the priority right described in Article 4B is that second and subsequently filed

applications filed in a Union country within the priority period are treated as if

filed on the date the first application was filed.

The priority right is important, in the context of both patents and

trademark applications, in that all applications filed within the priority right period

will have priority over any intervening application for the same or closely similar

invention or mark that may have been filed in that country by some third party.

So, if a national of a Paris Convention nation files a first trademark application in

country A, and nine months later files a second application for the same mark in

country B, but meanwhile some five months after the first application a second

applicant files an application for the same or very similar mark for the same or

similar goods in country B, the first applicant will have priority over the second

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applicant in country B because the application in country B by the first applicant,

although second in time in that country, will be treated as if filed at the time of

that applicant’s first application in country A.

The priority right is additionally important in the context of patent

applications because it preserves the novelty of the invention within the countries

of the Union notwithstanding any publication, exhibition or other act capable of

destroying novelty of the invention during the priority period. So, for example, an

applicant eligible for Convention benefits can file a first patent application in

country A, and thereafter request early publication from the patent office of that

country, describe the invention in an industry journal, exhibit the invention in a

trade show, and/or offer to sell or use publicly the invention, all during the one

year priority period following the filing of a first application, and still file before

the end of that first year period parallel patent applications in countries B, C and

D of the Union, without losing eligibility for patent protection in these countries

notwithstanding that countries B, C and D are all countries whose patent laws

insist on absolute novelty of invention without the benefit of a grace period.

This Convention priority right allows the applicant desiring protection is

several countries of the Union the advantage and convenience of not having to file

multiple applications simultaneously in all Union countries in which protection is

desired without risking that others, particularly imitators in the case of marks, will

file on the same or similar invention or mark between the time a first application

is filed and a subsequent application is made in a Union country during the

priority period, and also without risking loss of novelty due to publication or some

other act capable of defeating novelty that may occur in this interim.

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The priority right is only applicable with respect to a “first” application for

a given invention or mark. The priority period does not begin to run again in the

case of a subsequently filed application for patent on an invention that

incorporates in part the invention for which a patent application was previously

filed, or for a mark that resembles or incorporates in part a mark previously

applied for. An applicant is not permitted to elongate the priority period in this

manner, but rather is obliged to file all applications for the same or related

inventions and marks in the Union member countries within the applicable

priority period in order to obtain the benefits of the Convention priority right.

The right of priority may be invoked by a successor in title and the

subsequent applications must concern the same invention or mark, but the

category of protection applied for need not be identical in each case. As such a

subsequent utility model application can claim priority based upon a first patent

application, and vise versa, so long as the subject matter of the two applications

are the same. Although rights of priority are limited to the same invention or

mark, multiple priorities and partial priorities may be claimed with reference to

first filed patent applications, and priorities may even be combined from first

applications filed in different member countries.

A first application must be “duly filed”, meaning comprising elements

sufficient to obtain a filing date in accordance with the applicable national law.

Provisional applications, and applications filed under multinational treaties,

including PCT and EU patent applications, can qualify as a “first” application for

purposes of the Union priority right. The fate of the first filed application has no

impact on the priority right. Withdrawal, rejection or abandonment of the “first”

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correctly filed application cannot destroy or alter in any way the right of priority

of subsequently filed eligible patent and trademark applications.

III.2.b. TRIPS Agreement :-

III.2.b.(i). WTO and The TRIPS Agreement

The conclusion of the Agreement on Trade related Aspects of

Intellectual Property Rights (TRIPS)84 in 1994 presaged the advent of a global

epoch in trademark rights. The TRIPS Agreement not only provides substantive

standards for the eligibility and protection of trademarks, but also mandates that

“effective” enforcement procedures are available under national legal systems. It

does so by establishing a global network of “coordinate” national courts to

enforce the substantive trademark provisions of the Agreement.85 Without

replacing the national, territorially-based trademarks of Member States, TRIPS is

based on principles of territoriality requiring independent trademark applications

and actions for the enforcement of rights in each Member State of the World

Trade Organization (WTO).

84 Final Act Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations,

Marrakesh Agreement Establishing the World Trade Organization, signed at Marrakesh

(Morocco), April 15, 1994 [hereinafter WTO Agreement]; Annex IC, Agreement on Trade related

Aspects of Intellectual Property Rights [hereinafter TRIPS Agreement or TRIPS], reprinted in The

Results of the Uruguay Round of Multilateral Trade Negotiations—The Legal Texts, 1-19, 365-403

(GATT Secretariat, Geneva 1994).

85See Part II, Sect. 2 of the TRIPS Agreement. Article41 mandates WTO Members ensure that

“effective” procedures are available under domestic law.

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Despite the fact that domestic trademark laws have been duly amended in

accordance with the TRIPS Agreement throughout the 151 Member States of the

World Trade Organization (WTO), multi-jurisdictional actions for trademark

infringement indicate that implementation of the TRIPS Agreement has not

rendered the law more certain, nor the outcome of litigation significantly more

predictable. The World Trade Organization (WTO) is the international

organization dealing with the rules of trade between nations. As of February 2005,

148 countries are Members of the WTO. In becoming Members of the WTO,

countries undertake to adhere to the 18 specific agreements annexed to the

Agreement establishing the WTO. They cannot choose to be party to some

agreements but not others (with the exception of a few “plurilateral” agreements

that are not obligatory).

Of these agreements, Trade-Related Aspects of Intellectual Property

Rights (TRIPS) is expected to have the greatest impact on the pharmaceutical

sector and access to medicines. The TRIPS Agreement has been in force since

1995 and is to date the most comprehensive multilateral agreement on intellectual

property. The TRIPS Agreement introduced global minimum standards for

protecting and enforcing nearly all forms of intellectual property rights (IPR),

including those for patents. International conventions prior to TRIPS did not

specify minimum standards for patents. At the time that negotiations began, over

40 countries in the world did not grant patent protection for pharmaceutical

products. The TRIPS Agreement now requires all WTO members, with few

exceptions, to adapt their laws to the minimum standards of IPR protection. In

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addition, the TRIPS Agreement also introduced detailed obligations for the

enforcement of intellectual property rights.

However, TRIPS also contains provisions that allow a degree of flexibility

and sufficient room for countries to accommodate their own patent and

intellectual property systems and developmental needs. This means countries have

a certain amount of freedom in modifying their regulations and, various options

exist for them in formulating their national legislation to ensure a proper balance

between the goal of providing incentives for future inventions of new drugs and

the goal of affordable access to existing medicines.

Ideas and knowledge are an increasingly important part of trade. Most of

the value of new medicines and other high technology products lies in the amount

of invention, innovation, research, design and testing involved. Films, music

recordings, books, computer software and on-line services are bought and sold

because of the information and creativity they contain, not usually because of the

plastic, metal or paper used to make them. Several products that used to be traded

as low-technology goods or commodities now contain a higher proportion of

invention and design in their value – for example brand named clothing or new

varieties of plants.

Creators can be given the right to prevent others from using their

inventions, designs or other creations — and to use that right to negotiate payment

in return for others using them. These are “intellectual property rights”. They take

a number of forms. For example books, paintings and films come under copyright;

inventions can be patented; brand names and product logos can be registered as

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trademarks; and so on. Governments and parliaments have given creators these

rights as and incentive to produce ideas that will benefit society as a whole.

The extent of protection and enforcement of these rights varied widely

around the world; and as intellectual property became more important in trade,

these differences became a source of tension in international economic relations.

New internationally-agreed trade rules for intellectual property rights were seen as

a way to introduce more order and predictability, and for disputes to be settled

more systematically.

The WTO’s TRIPS Agreement is an attempt to narrow the gaps in the way

these rights are protected around the world, and to bring them under common

international rules. It establishes minimum levels of protection that each

government has to give to the intellectual property of fellow WTO members. In

doing so, it strikes a balance between the long term benefits and possible short

term costs to society. Society benefits in the long term when intellectual property

protection encourages creation and invention, especially when the period of

protection expires and the creations and inventions enter the public domain.

Governments are allowed to reduce any short term costs through various

exceptions, for example to tackle public health problems. And, when there are

trade disputes over intellectual property rights, the WTO’s dispute settlement

system is now available.

TRIPs covers five broad issues:

Application of basic principles of the trading system and other

international intellectual property agreements.

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The provision of adequate standards and principles concerning the

availability, scope and use of trade-related intellectual property rights –

minimum standard

The provision of effective and appropriate means for the enforcement of

trade-related intellectual property rights, taking into account differences in

national legal systems – civil and administrative procedures.

The provision of effective and expeditious procedures for the multilateral

prevention and settlement of disputes between governments

Special transitional arrangements during the period when the new system

is being introduced.

III.2.b.(ii). Basic Principles of TRIPS

National Treatment

The TRIPS Agreement provides for national treatment86 .National

treatment means that Members are required to treat nationals of other countries

the same as their own nationals. In international treaties on intellectual property,

this principle of national treatment is already included in the Paris and Berne

Conventions. It is necessary to take into account that the former principle of

national treatment embodied in GATT only applied to the equal treatment of

imported goods and domestic products. As a result of the inclusion of national

treatment in the TRIPS Agreement, it has become clear that the principle now also

applies to intellectual property not subject to the Paris or Berne Conventions

(trade secrets, etc.), and the principle now also applies to the enforcement of

intellectual property rights.

86 Art. 3 (1) of TRIPS

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Most-Favoured-Nation Treatment

The TRIPS Agreement provides for Most-Favoured-Nation

treatment.87Most-Favoured-Nation treatment was a basic assumption in GATT,

but it had not been applied to international treaties concerning intellectual

property. Therefore, the TRIPS Agreement is significant as the first international

treaty concerning intellectual property to apply Most-Favoured-Nation

treatment88. The difference between national treatment and Most-Favoured-Nation

treatment is that while national treatment requires that foreign nationals are treated

the same or better than domestic nationals, Most-Favoured-Nation treatment is the

principle that all foreign nationals must be treated equally. Consequently,

according to Most-Favoured-Nation treatment, if country A offers country B

certain benefits or privileges, it must automatically offer these to all other

countries. Therefore, a consequence of Most-Favoured-Nation treatment is that

the outcomes of bilateral agreements automatically extend to other countries as

well. It must be noted that the former principle of Most-Favoured-Nation

treatment embodied in GATT only applied to the equal treatment of imported

goods and domestic products.

87 Art. 4 of TRIPS.

88MahimaPuri, Anjali Varma, Indian Council for Research on International Economic Relations

(ICRIER) WORKING PAPER NO. 166, INTELLECTUAL PROPERTY CONVENTIONS AND

INDIAN LAW, 2005.

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III.2.c. Trademark Law Treaty89:-

The Trademark Law Treaty (“TLT”) was adopted on October 27, 1994

and signed in Geneva on October 28, 1994 by thirty-nine member countries of

WIPO. The Treaty entered into force on August 1, 1996, three months after the

date on which the Treaty was ratified by a minimum of five countries. The Treaty

is now in effect in a number of countries.

The aim of the TLT is to standardize and streamline national and regional

trademark registration procedures. This is achieved through the simplification and

harmonization of certain features of those procedures, thus making trademark

applications and the administration of trademark registrations in multiple

jurisdictions less complex and more predictable. The great majority of the

provisions of the TLT concern the procedure before a trademark office which can

be divided into three main phases: application for registration; changes after

registration; and renewal. The rules concerning each phase are constructed so as to

clearly define the requirements for an application or a specific request.

As regard to the first phase – application for registration – the Contracting

Parties to the TLT may require, as a maximum, the following indications: a

request, the name and address and other indications concerning the applicant and

the representative; various indications concerning the mark, including a certain

number of representations of the mark; the goods and services for which

registration is sought classified in the relevant class of the International

Classification (established under the Nice Agreement Concerning the

89www.wipo.int/freepublications/en/intproperty/442/wipo_pub_442_pdf.

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International Classification of Goods and Services for the Purposes of the

Registration of Marks (1957); and, where applicable, a declaration of intention to

use the mark. Each Contracting Party must also allow that an application can

relate to goods and/or services belonging to several classes of the International

Classification. As the list of permissible requirements is exhaustive, a Contracting

Party cannot require, for example, that the applicant produces an extract from a

register of commerce, an indication of a certain commercial activity, or evidence

to the effect that the mark has been registered in the trademark register of another

country.

The second phase of the trademark procedure covered by the TLT

concerns changes in names or addresses and changes in the ownership of the

registration. Here too, the applicable formal requirements are exhaustively listed.

A single request is sufficient even where the change relates to more than one –

possibly hundreds – of trademark applications or registrations, provided that the

change to be recorded pertains to all registrations or applications concerned.

As to the third phase, renewal, the TLT standardizes the duration of the

initial period of registration and the duration of each renewal to 10 years each.

Furthermore, the TLT provides that a power of attorney may relate to several

applications or registrations by the same person or entity. It also provides that, if

requests are made on forms corresponding to the forms attached to the TLT, they

must be accepted, subject to their being completed in a language accepted by the

office, and that no further formalities may be required. Most notably, the TLT

does not allow a requirement as to the attestation, notarization, authentication,

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legalization or certification of any signature, except in the case of the surrender of

a registration.

III.2.d. Singapore Treaty on Law of Trademarks90:-

The Singapore Treaty was concluded on March 27, 2006, and entered into

force on March16, 2009. The Treaty is open to states Members of WIPO and

certain intergovernmental organizations. The objective of the Singapore Treaty is

to create a modern and dynamic international framework for the harmonization of

administrative trademark registration procedures. Building on the Trademark Law

Treaty of 1994 (TLT), the Singapore Treaty has a wider scope of application and

addresses new developments in the field of communication technologies. The

Singapore Treaty is applicable to all types of marks registrable under the law of a

given Contracting Party. Contracting Parties are free to choose the means of

communication with their offices (including communications in electronic form or

by electronic means of transmittal). Relief measures in respect of time limits as

well as provisions on the recording of trademark licenses are introduced, and an

Assembly of the Contracting Parties is established. However, other provisions of

the Singapore Treaty (such as the requirements to provide for multiclass

applications and registrations and the use of the International (“Nice”)

Classification) closely follow the TLT. The two treaties are separate, and may be

ratified or adhered to independently. Unlike the TLT, the Singapore Treaty applies

generally to all marks that can be registered under the law of a Contracting Party.

90www.wipo.int/freepublications/en/intproperty/442/wipo_pub_442_pdf

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The Singapore Treaty leaves Contracting Parties the freedom to choose the

form and means of transmittal of communications and whether to accept

communications on paper, in electronic form or in another form. This has

consequences on formal requirements for applications and requests, such as the

signature on communications with the office. The Treaty maintains a very

important provision of the TLT, namely that the authentication, certification or

attestation of any signature on paper communications cannot be required.

However, Contracting Parties are free to determine whether and how they wish to

implement a system of authentication of electronic communications.

The Treaty provides for relief measures when an applicant or holder has

missed a time limit in an action for a procedure before an office. Contracting

Parties must make available, at their choice, at least one of the following relief

measures: extension of the time limit; or continued processing and reinstatement

of rights, if the failure to meet the time limit was unintentional or occurred in spite

of due care required by the circumstances.

The Singapore Treaty includes provisions on the recording of trademark

licenses, and establishes maximum requirements for requests for recordal,

amendment or cancellation of the recordal of a license. The creation of an

Assembly of the Contracting Parties introduced a degree of flexibility in defining

the details of administrative procedures to be implemented by national trademark

offices, where it is anticipated that future developments in trademark registration

procedures and practices will warrant amendments to those details. The Assembly

is endowed with powers to modify the Regulations and the Model International

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Forms, where necessary, and can also address – at a preliminary level – questions

relating to the future development of the Treaty.

Furthermore, the Diplomatic Conference adopted a Resolution

Supplementary to the Singapore Treaty on the Law of Trademarks and the

Regulations. There under, with a view to declaring an understanding by the

Contracting Parties on several areas covered by the Treaty, namely: that the

Treaty does not impose any obligations on Contracting Parties to (i) register new

types of marks, or (ii) implement electronic filing systems or other automation

systems.

Special provisions are made to provide developing and least developed

countries with additional technical assistance and technological support to enable

them to take full advantage of the provisions of the Treaty. It was recognized that

LDCs shall be the primary and main beneficiaries of technical assistance by

Contracting Parties. The Assembly monitors and evaluates, at every ordinary

session, the progress of the assistance granted. Any dispute arising in relation to

the interpretation or application of the Treaty is to be settled amicably through

consultation and mediation under the auspices of the Director General of WIPO.

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III.2.e. Nairobi Treaty on the Protection of Olympic

Symbols91 :-

All States party to the Treaty are under the obligation to protect the

Olympic symbol – five interlaced rings – against use for commercial purposes (in

advertisements, on goods, as a mark, etc.) without the authorization of the

International Olympic Committee. An important effect of the Treaty is that, if the

International Olympic Committee grants authorization to use the Olympic symbol

in a State party to the Treaty, the National Olympic Committee of that State is

entitled to a part in any revenue the International Olympic Committee obtains for

granting the said authorization. The Treaty does not provide for the institution of a

Union, governing body or budget. The Treaty is open to any State member of

WIPO. Instruments of ratification, acceptance, approval or accession must be

deposited with the Director General of WIPO.

III.2.f. Madrid Agreement Relating to International

Registration of Marks and the Protocol relating to Madrid

Agreement Concerning International Registration of

Marks92 :-

III.2.f.(i). Introduction

The Madrid System for the International Registration of Marks is

governed by two treaties namely The Madrid Agreement, concluded in 1891 and

revised at Brussels (1900), Washington (1911),The Hague (1925), London (1934),



60

Nice (1957) and Stockholm (1967), and amended in 1979, and The Protocol

relating to that Agreement concluded in 1989, which aims to make the Madrid

system more flexible and more compatible with the domestic legislation of certain

countries or intergovernmental organizations that had not been able to accede to

the Agreement. States and organizations party to the Madrid system are

collectively referred to as Contracting Parties. 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.

III.2.f.(ii). Prerequisites of Registration

An application for international registration may be filed only by a natural

person or legal entity having a connection – through establishment, domicile or

nationality – with a Contracting Party to the Agreement or the Protocol. A mark

may be the subject of an international application only if it has already been

registered with the trademark office (referred to as the office of origin) of the

Contracting Party with which the applicant has the necessary connections.

However, where all the designations are effected under the Protocol, the

international application may be based simply on an application for registration

filed with the office of origin. An international application must be presented to

the International Bureau of WIPO through the intermediary of the office of origin.

The International Application

An application for international registration must designate one or more

Contracting Parties in which protection is sought. Further designations can be

effected subsequently. A Contracting Party may be designated only if it is party to

the same treaty as the Contracting Party whose office is the office of origin. The

61

latter cannot itself be designated in the international application. The designation

of a given Contracting Party is made either under the Agreement or the Protocol,

depending on which treaty is common to the Contracting Parties concerned. If

both Contracting Parties are party to the Agreement and the Protocol; the

designation will be governed by the Protocol. This follows the repeal of the so-

called “safeguard clause”, which took effect on January 1, 2008. Also, from

September 1, 2008, a full trilingual regime (English, French and Spanish) became

operative – that is, an international application can now be filed in any of the three

languages, irrespective of which treaty or treaties govern the application, unless

the office of origin restricts that choice to one or two of these languages. The

filing of an international application is subject to the payment of a primaryfee

(which is reduced to 10 per cent of the prescribed amount for international

applications filed by applicants whose country of origin is an LDC, in accordance

with the list established by the United Nations), a supplementary fee for each class

of goods and/or services beyond the first three classes, and a complementary fee

for each Contracting Party designated. However, a Contracting Party to the

Protocol may declare that, when it is designated under the Protocol, the

complementary fee is replaced by an individual fee, whose amount is determined

by the Contracting Party concerned but may not be higher than the amount that

would be payable for the registration of a mark with its office.

International Registration

Once the International Bureau receives an international application, it carries out

an examination for compliance with the requirements of the Agreement, the

Protocol and their Common Regulations. This examination is restricted to

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formalities, including the classification and comprehensibility of the list of goods

and/or services. If there are no irregularities in the application, the International

Bureau records the mark in the International Register, publishes the international

registration in the WIPO Gazette of International Marks (hereinafter referred to as

“the Gazette”), and notifies it to each designated Contracting Party. Any matter of

substance, such as whether the mark qualifies for protection or whether it is in

conflict with an earlier mark in a particular Contracting Party, is determined by

that Contracting Party’s trademark office under the applicable domestic

legislation.

Statement of grant of protection or refusal of protection

From January 1, 2011, the office of each designated Contracting Party shall issue

a statement of grant of protection under Rule 18ter of the Common Regulations.

However, when designated Contracting Parties examine the international

registration for compliance with their domestic legislation, and if some

substantive provisions are not complied with, they have the right to refuse

protection in their territory. Any such refusal, including an indication of the

grounds on which it is based, must be communicated to the International Bureau,

normally within 12 months from the date of notification. However, a Contracting

Party to the Protocol may declare that, when it is designated under the Protocol,

this time limit is extended to 18 months. That Contracting Party may also declare

that a refusal based on an opposition may be communicated to the International

Bureau even after the 18-month time limit. The refusal is communicated to the

holder of the registration or the holder’s representative before the International

Bureau, recorded in the International Register and published in the Gazette. The

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procedure subsequent to a refusal (such as an appeal or a review) is carried out

directly by the competent administration and/or court of the Contracting Party

concerned and the holder, without the involvement of the International Bureau.

The final decision concerning the refusal must, however, be communicated to the

International Bureau, which records and publishes it.

Effects of an International Registration

The effects of an international registration in each designated Contracting Party

are, from the date of the international registration, the same as if the mark had

been deposited directly with the office of that Contracting Party. If no refusal is

issued within the applicable time limit, or if a refusal originally notified by a

Contracting Party is subsequently withdrawn, the protection of the mark is, from

the date of the international registration, the same as if it had been registered by

the office of that Contracting Party.

An international registration is effective for 10 years. It may be renewed

for further periods of 10 years on payment of the prescribed fees. Protection may

be limited with regard to some or all of the goods or services or may be renounced

with regard to only some of the designated Contracting Parties. An international

registration may be transferred in relation to all or some of the designated

Contracting Parties and all or some of the goods or services indicated.

III.2.f.(iii). Advantages of the Madrid System

The Madrid system offers several advantages for trademark owners.

Instead of filing a separate national application in each country of interest, in

several different languages, in accordance with different national or regional

64

procedural rules and regulations and paying several different (and often higher)

fees, an international registration may be obtained by simply filing one application

with the International Bureau (through the office of the home country), in one

language (English, French or Spanish) and paying one set of fees. Similar

advantages exist for maintaining and renewing a registration. Likewise, if the

international registration is assigned to a third party, or is otherwise changed, such

as a change in name and/or address, this may be recorded with effect for all

designated Contracting Parties by means of a single procedural step.

To facilitate the work of the users of the Madrid system, the International

Bureau publishes a Guide to the International Registration of Marks under the

Madrid Agreement and the Madrid Protocol. The Madrid Agreement and Protocol

are open to any State party to the Paris Convention for the Protection of Industrial

Property (1883). The two treaties are parallel and independent, and States may

adhere to either or both of them. In addition, an intergovernmental organization

that maintains its own office for the registration of marks may become party to the

Protocol. Instruments of ratification or accession must be deposited with the

Director General of WIPO.

III.2.f.(iv). Madrid Protocol – Indian case

India submitted its instrument of accession to the Protocol relating to the

Madrid Agreement Concerning the International Registration of Marks, known as

the “Madrid Protocol” on 8 April 2013 with the World Intellectual Property

Organization (WIPO). India became the 90th country to accede to the Madrid

Protocol. This is one of the most important developments in Indian trademark law

in recent years, providing a system for obtaining international trademark

65

protection that is streamlined and potentially very cost-efficient. The Madrid

Protocol’s efficient trademark protection shall be made available in India to

international and domestic trademark owners on 8 July, the date on which the

treaty will enter into force with respect to India.

Brief history of legislative initiatives

The Trademark (Amendment) Bill, 2007 was introduced in Parliament on

23 August, 2007. However, due to the paucity of time, the Bill could not be taken

up for consideration and the Bill lapsed. The Bill was reintroduced in 2009. The

upper house (Rajya Sabha) of the Parliament passed the Trademark Amendment

Bill, 2009 after a spirited debate on 10 August 2010. Thereafter, the lower house

(Lok Sabha) of the Parliament also passed the Bill. The 2009 amendment to the

Trademarks Act inserted chapter IVA, entitled “Special provisions relating to

protection of trademarks through international registration under the Madrid

protocol”.

Also, the Government of India through the Ministry of Commerce and

Industry (Department of Industrial Development) made amendments in the

existing Trademarks Rules to incorporate the procedural laws for implementation

of the Madrid Protocol. The Trademarks (Amended) Rules, 2013 shall come into

force on such date as the Central Government may, by notification in the Official

Gazette, appoint. India has, therefore, brought about the necessary amendments

and changes in its existing trademark laws to be in harmony with the Madrid

Protocol. However, the implementation of the laws governing the Madrid Protocol

has to be tested.

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The Madrid Protocol not the Madrid Agreement

India has joined the Madrid Protocol and not the Madrid Agreement. The

Madrid System is only available to applicants in its member countries, and the

geographic scope of trademark protection is also limited to the territories of these

countries. Domestic applicants in India will only be able to designate member

countries of the Madrid Protocol. There are only a few countries that have joined

exclusively the Madrid Agreement and not the Madrid Protocol and as such

domestic applicants in India will not be greatly affected. The Madrid Protocol,

which came into existence in 1989 and came into force on 1 April 1996, is an

offshoot of the Madrid Agreement and has modernised the Madrid Agreement in

several ways. The most important advantage of the Madrid Protocol is the ability

to file an international application on the basis of a pending application in a

Contracting Party instead of a registered trademark as required under the Madrid

Agreement. Also, the important aspect of the Madrid Protocol is the mechanism to

apply for transformation of a failed international registration into regional or

national applications while retaining the priority date of the original international

registration. These are some of the considerations that weighed over the decision

of the Indian Government to accede to the Madrid Protocol. Like the PCT system

in patent law, the Madrid Protocol is also a mechanism for obtaining trademark

protection under individual national laws and is not a trademark law in itself.

Advantages of the Madrid Protocol

The most obvious advantages for Indian and foreign businesses by the accession

of India to the Madrid Protocol are:

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Convenience and cost-efficiency of paying one fee and using one trademark

registration as the basis for registration in several different countries. Using

the Madrid Protocol, an Indian applicant may extend protection for a

trademark in one or more member countries by electronically filing an

international application designating member countries where trademark

protection is sought with the Indian Trademarks Registry. The Indian

applicant may base its international application on an existing Indian

registration or on a new Indian application. Likewise, an international

applicant may designate India and claim trademark protection in India.

The Madrid Protocol obviates the need for the Indian applicant to retain

separate local trademark counsel in each country in which it wishes to file a

trademark application, unless the national trademark office issues a rejection

or requires additional information. This benefit will also extend to the

international applicants, designating India.

The Madrid Protocol speeds up the prosecution process by limiting the

amount of time an office of a Contracting Party has to act once it has

received a request for extension of an international registration. An

application filed directly through a national office can take more than six

years to process and as such the Madrid Protocol will be a boon for domestic

as well as international applicants.

The Madrid Protocol provides that any change in the details of the right

holder such as name or address or title can be reflected through one single

document at the International Bureau and no separate steps are required to be

taken at each national office.

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The Madrid Protocol provides the flexibility of adding and subsequently

designating the member country at a later date under the same international

registration. The filing and maintenance fees associated with the international

registration are lower over time than maintaining several separate national

registrations.

The preparedness of India to deal with international applications

Even though India has amended its trademark laws to be consonant with the

Madrid Protocol, the implementation of laws in true spirit has to be seen once the

Madrid Protocol comes into force on 8 July 2013. Some of the disincentives to

implementation of the Madrid Protocol in India are:

Lack of manpower: The Indian Trademarks Registry has not been able to

streamline its national filings till date due to lack of manpower. The

additional burden of international applications on the already low-staffed

Trademarks Registry will aggravate the situation.

Discrimination between national applications and international applications:

The Indian Trademarks Registry will have to process the international

applications under the Madrid Protocol within 18 months, which in turn will

delay national applications. If such discrimination becomes rampant there are

all possibilities that the applicants of national applications will ask the courts

to uphold their right to equal treatment.

Vulnerability: For the first five years, an international registration is

dependent on the basic mark. Hence, if an Indian basic mark is limited or

cancelled, the international registration, and all extensions under it, are

69

similarly limited or cancelled. After the expiry of this five-year term,

however, the international registration becomes independent. The Indian

Trademarks Registry has a huge number of trademark registrations and

applications. The possibility of refusal on relative grounds and oppositions is

also relatively high. International applicants need to be very cautious before

selecting any trademark and taking the route provided by the Protocol.

Goods and Services: The Indian Trademarks Registry allows broad

specification of goods and services. However, the same may not be

acceptable under the national laws of other jurisdictions.

The Madrid Protocol restricts the freedom to assign ownership of an

international registration to entities residing in or having a connection with a

non-Madrid Protocol member country. India’s neighbours, such as Pakistan,

Nepal, Bangladesh, are not members of the Madrid Protocol. Indian

businesses have considerable interests in these countries and will have to file

national applications.

Although the Madrid Protocol offers a useful and cost-effective way of obtaining

trademark protection, applicants need to tread cautiously and should take an

informed decision to use the Madrid route in India only once the waters have been

tested. Further, while choosing between the national filing and the Madrid route,

filing strategy should be tailored to deliver the best results, especially considering

the nature of the trademark concerned.

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III.2.g.Nice Agreement Concerning International

Classification of Goods or Services for the Purposes of the

registration of Marks93 :-

The Nice Classification is a system of classifying goods and services for

the purpose of registering trademarks. The latest 9thversion of the system groups

products into 45 classes and allows users seeking to trademark a good or service

to choose from these classes as appropriate. Since the system is recognized in

numerous countries, this makes applying for trademarks internationally a more

streamlined process. The classification system is specified by the World

Intellectual Property Organization (WIPO).

The Classification consists of a list of classes – 34 for goods and 11 for

services – and an alphabetical list of the goods and services. The services

comprise some 11,000 items. The Nice Classification is continuously revised by a

“committee of experts,” whose membership is representative of all signatory

states, and a new edition is published every five years. The current (ninth) edition

has been in effect since January 1, 2007.The Agreement, concluded in 1957, was

revised at Stockholm in 1967 and at Geneva in 1977, and was amended in 1979.

The Agreement is open to States party to the Paris Convention for the Protection

of Industrial Property (1883).

As on January 2014, 83 States are party to the Nice Agreement, the

trademark offices of about 65 additional States, as well as the International Bureau

of WIPO, the African Intellectual Property Organization (OAPI), the African


71

Regional Intellectual Property Organization (ARIPO), the Benelux Organization

for Intellectual Property (BOIP) and the European Union Office for

Harmonization in the Internal Market (Trademarks and Designs) (OHIM),

actually use the Classification. The Nice Agreement created a Union, which has

an Assembly. Every State member of the Union which has adhered to the

Stockholm Act or the Geneva Act of the Nice Agreement is a member of the

Assembly. The trademark offices of the nation’s signatory to the Nice Agreement

agree to employ the designated classification codes in their official documents and

publications.

III.2.g.(i). Advantages of the Nice Classification

Use of the Nice Classification by national offices has the advantage that

trademark applications are coordinated with reference to a single classification

system. Filing is thereby greatly simplified, as the goods and services to which a

given mark applies will be classified the same in all countries that have adopted

the system. That the Nice Classification exists in several languages also saves

applicants a considerable amount of work when filing internationally.

III.2.g.(ii).List of Classes

Goods

1. Chemicals used in industry, science and photography, as well as in

agriculture, horticulture and forestry; unprocessed artificial resins,

unprocessed plastics; manures; fire extinguishing compositions; tempering

and soldering preparations; chemical substances for preserving foodstuffs;

tanning substances; adhesives used in industry.

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2. Paints, varnishes, lacquers; preservatives against rust and against

deterioration of wood; colorants; mordents; raw natural resins; metals in

foil and powder form for painters, decorators, printers and artists.

3. Bleaching preparations and other substances for laundry use; cleaning,

polishing, scouring and abrasive preparations; soaps; perfumery, essential

oils, cosmetics, hair lotions; dentifrices.

4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding

compositions; fuels (including motor spirit) and illuminants; candles and

wicks for lighting.

5. Pharmaceutical and veterinary preparations; sanitary preparations for

medical purposes; dietetic substances adapted for medical use, food for

babies; plasters, materials for dressings; material for stopping teeth, dental

wax; disinfectants; preparations for destroying vermin; fungicides,

herbicides.

6. Common metals and their alloys; metal building materials; transportable

buildings of metal; materials of metal for railway tracks; non-electric

cables and wires of common metal; ironmongery, small items of metal

hardware; pipes and tubes of metal; safes; goods of common metal not

included in other classes; ores.

7. Machines and machine tools; motors and engines (except for land

vehicles); machine coupling and transmission components (except for land

vehicles); agricultural implements other than hand-operated; incubators for

eggs.

8. Hand tools and implements (hand-operated); cutlery; side arms; razors.

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9. Scientific, nautical, surveying, photographic, cinematographic, optical,

weighing, measuring, signaling, checking (supervision), life-saving and

teaching apparatus and instruments; apparatus and instruments for

conducting, switching, transforming, accumulating, regulating or

controlling electricity; apparatus for recording, transmission or

reproduction of sound or images; magnetic data carriers, recording discs;

automatic vending machines and mechanisms for coin-operated apparatus;

cash registers, calculating machines, data processing equipment and

computers; fire-extinguishing apparatus.

10. Surgical, medical, dental and veterinary apparatus and instruments,

artificial limbs, eyes and teeth; orthopedic articles; suture materials.

11. Apparatus for lighting, heating, steam generating, cooking, refrigerating,

drying, ventilating, water supply and sanitary purposes.

12. Vehicles; apparatus for locomotion by land, air or water.

13. Firearms; ammunition and projectiles; explosives; fireworks.

14. Precious metals and their alloys and goods in precious metals or coated

therewith, not included in other classes; jewellery, precious stones;

chorological and chronometric instruments.

15. Musical instruments.

16. Paper, cardboard and goods made from these materials, not included in

other classes; printed matter; bookbinding material; photographs;

stationery; adhesives for stationery or household purposes; artists’

materials; paint brushes; typewriters and office requisites (except

furniture); instructional and teaching material (except apparatus); plastic

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materials for packaging (not included in other classes); printers’ type;

printing blocks.

17. Rubber, gutta-percha, gum, asbestos, mica and goods made from these

materials and not included in other classes; plastics in extruded form for

use in manufacture; packing, stopping and insulating materials; flexible

pipes, not of metal.

18. Leather and imitations of leather, and goods made of these materials and

not included in other classes; animal skins, hides; trunks and travelling

bags; umbrellas, parasols and walking sticks; whips, harness and 74lobali.

19. Building materials (non-metallic); non-metallic rigid pipes for building;

asphalt, pitch and bitumen; non-metallic transportable buildings;

monuments, not of metal.

20. Furniture, mirrors, picture frames; goods (not included in other classes) of

wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell,

amber, mother-of-pearl, meerschaum and substitutes for all these

materials, or of plastics.

21. Household or kitchen utensils and containers; combs and sponges; brushes

(except paint brushes); brush-making materials; articles for cleaning

purposes; steel wool; un-worked or semi-worked glass (except glass used

in building); glassware, porcelain and earthenware not included in other

classes.

22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not

included in other classes); padding and stuffing materials (except of rubber

or plastics); raw fibrous textile materials.

23. Yarns and threads, for textile use.

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24. Textiles and textile goods, not included in other classes; bed and table

covers.

25. Clothing, footwear, headgear.

26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and

needles; artificial flowers.

27. Carpets, rugs, mats and matting, linoleum and other materials for covering

existing floors; wall hangings (non-textile).

28. Games and playthings; gymnastic and sporting articles not included in

other classes; decorations for Christmas trees.

29. Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and

cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk

products; edible oils and fats.

30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and

preparations made from cereals, bread, pastry and confectionery, ices;

honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces

(condiments); spices; ice.

31. Agricultural, horticultural and forestry products and grains not included in

other classes; live animals; fresh fruits and vegetables; seeds, natural

plants and flowers; foodstuffs for animals, malt.

32. Beers; mineral and aerated waters and other non-alcoholic drinks; fruit

drinks and fruit juices; syrups and other preparations for making

beverages.

33. Alcoholic beverages (except beers).

34. Tobacco; smokers’ articles; matches.

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Services

35. Advertising; business management; business administration; office

functions.

36. Insurance; financial affairs; monetary affairs; real estate affairs.

37. Building construction; repair; installation services.

38. Telecommunications.

39. Transport; packaging and storage of goods; travel arrangement.

40. Treatment of materials.

41. Education; providing of training; entertainment; sporting and cultural

activities.

42. Scientific and technological services and research and design relating

thereto; industrial analysis and research services; design and development

of computer hardware and software.

43. Services for providing food and drink; temporary accommodation.

44. Medical services; veterinary services; hygienic and beauty care for human

beings or animals; agriculture, horticulture and forestry services.

45. Legal services; security services for the protection of property and

individuals; personal and social services rendered by others to meet the

needs of individuals.

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III.2.h.Vienna Agreement Establishing an International

Classification of the figurative Elements of Marks94 :-

The Vienna Agreement establishes a classification for marks that consist

of, or contain, figurative elements (the Vienna Classification). The competent

offices of Contracting States must indicate in official documents and publications

relating to registrations and renewals of marks the numbers of the categories,

divisions and sections of the Classification to which the figurative elements of

those marks belong.

A Committee of Experts, in which all Contracting States are represented,

set up under the Agreement, is entrusted with the task of periodically revising the

Classification. The current (sixth) edition has been in force since January 1, 2008.

The Classification consists of 29 categories, 144 divisions and some 1,667

sections in which the figurative elements of marks are classified.

Although only 29 States are party to the Vienna Agreement, the

Classification is used by the industrial property offices of at least 30 States, as

well as by the International Bureau of WIPO, the African Intellectual Property

Organization (OAPI), the Benelux Organization for Intellectual Property (BOIP)

and the European Union Office for Harmonization in the Internal Market

(Trademarks and Designs) (OHIM).

The Vienna Agreement created a Union, which has an Assembly. Every

State member of the Union is a member of the Assembly. Among the most

important tasks of the Assembly is the adoption of the biennial program and


78

budget of the Union. The Vienna Agreement, concluded in 1973, was amended in

1985. The Agreement is open to States party to the Paris Convention for the

Protection of Industrial Property (1883). Instruments of ratification or accession

must be deposited with the Director General of WIPO.

III.3.CONSTITUTIONAL DIRECTIVE TO HONOUR TREATIES

According to Article 51I of the Indian constitution which reads, the State

is beneath a constitutional directive to endeavor and to foster respect for

international law and treaty obligations in the dealings of the organized peoples

with one another. Though the directive principles of State Policy cannot be

enforced in the subordinate Courts, they are nevertheless fundamental in the

governance of the Country. The definition of ‘State’ given in Article 12 for part

III of the Constitution pertaining to Fundamental Rights and incorporated in

Article 36 for Part IV which contains the Directive Principles of State Policy; is

very extensive and includes judicial and quasi-judicial authorities also. Therefore,

the courts in India are obliged to Endeavour to foster respect for international law

and responsibilities under the international treaties95.

The constitutional objective to abide by international law including

international treaties and conventions is also mentioned in Article 253 which,

notwithstanding the distribution of legislative powers between the Federal Union

and the States, endows the Parliament to make law for the whole or any part of the

territory of India for enforcing any treaty, agreement or convention with any other

Country or Countries or any decision made at any international Conference,

95 Justice R.K. Abhichandani, Role of Judiciary in the Effective Protection of Intellectual Property

Rights, Judge, High Court of Gujarat.

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association or other body. The Parliament is vested with powers under article 246

entry 14 of the Union List of subjects on which it can legislate contained in

Schedule VII of the Constitution. It is empowered to legislate with respect to the

subject of entering into treaties and agreements with foreign countries and

implementation of treaties, agreements and conventions with foreign countries.

Although, barring treaties which demand legislation to be made, the international

agreements entered into by the Union in exercise of its executive powers under

Article 73 which are not adverse to law are required to be recognized by the

Municipal Courts. For entering into treaty or enforcing it in India, it is not a

Constitutional requisite that the executive should be backed by Parliamentary

legislation. The subject of Patents, inventions and designs; copyright; trademarks

and merchandise marks is assigned to the Parliament under entry 49 of the Union

List for the purpose of legislation.

III.4.PROACTIVE ROLE OF INDIAN LEGISLATURE

The Trademarks Act, 1940 (5 of 1940) was the first statute law on

trademarks in India. Prior to that, protection of trademarks was left to the

governed by Common Law. Cases concerning trademarks were decided in the

light of section 54 of Specific Relief Act, 1877, while registration was secured by

obtaining a declaration as to ownership under the Indian Registration Act, 1908

(Whirlpool Corporation vs. Registrar of Trademarks). The said enactment was

amended by the Trademarks Amendment Act, 1941 (27 of 1941) and later by two

other amendments. By the Trademarks Amendment Act, 1943, the Trademarks

Registry, which was formerly a part of the Patent Office, Calcutta (Now Kolkata)

was separated from the Patent Office to constitute a separate Trademarks Registry

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under a Registrar of Trademarks at Bombay (now Mumbai). Thereafter, the Act

was amended by the Trademarks Amendment Act, of 1946, to give effect to the

reciprocal arrangements relating to trademarks between the Government of India

and the then Indian States and further amendments introduced by Part B States

Laws Act, 1951.

On the basis of the report of Mr. Justice Ayyangar the Trademarks Act,

1940 was replaced by the Trade & Merchandise Marks Act, 1958. The 1958 Act

consolidated the provisions of the Trademarks Act, 1940, the Indian Merchandise

Marks Act, 1889(which was in force since 1.4.1889) and the provisions relating to

trademarks in the Indian Penal Code. The Trade & Merchandise Marks Act, 1958

(Act 43 of 1958) was brought into force on 25th November 1959. Certain minor

amendments were carried out by the Repealing & Amending Act, 1960 (58 of

1960) and the Patents Act, 1970 (39 of 1970).

The Trade & Merchandise Mark Act, 1958 has been revised and replaced

by the Trade Mark Act, 1999. The process started as it was felt that a

comprehensive review of the 1958 Act be made in view of new developments in

trading and commercial practices, increasing globalization of trade and industry,

the need to encourage investment flows and transfer of technology, need for

simplification and harmonization of trade mark management system in the

country. The Trademarks Bill, 1993 was introduced in the LokSabha on

19.5.1993, which was passed by the LokSabha on the lines recommended by the

Standing Committee. However, as the Bill failed to get through the RajyaSabha, it

lapsed on the dissolution of the LokSabha. A new Bill titled as Trademarks Bill,

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1999 (Bill No.33 of 1999) was introduced in RajyaSabha and eventually passed

by both the Houses of Parliament. The Bill received the assent of the President on

30.12.1999 and became an Act.

III. INTERNATIONAL TREATIES – A MOVEMENT...

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