1. International Intellectual Property Profs. Atik and Manheim Fall, 2006 Trademark Formalities

2. Fall, 2006Int'l IP2

3. Fall, 2006Int'l IP3 Types of Marks  Trademarks  15 USC § 1052 Lanham Act §2  Service marks  15 USC § 1053 Lanham Act §3  Collective marks  15 USC § 1054 Lanham Act §4  Certification marks  15 USC § 1054 Lanham Act §4

4. Fall, 2006Int'l IP4 Trademark  15 USC § 1127  The term trademark includes any word, name, symbol, or device, or any combination thereof.. to identify and distinguish.. goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.  The term service mark SM means any word [etc], to identify and distinguish the services of one person, including a unique service, from the services of others...  Also commonly referred to as trademark

5. Fall, 2006Int'l IP5 Trademark  Prohibited Acts  Use of mark “to cause confusion” (palming off)  Similar to CL tort of “unfair competition”  Dilution of “famous marks”  Geographic Indicators  Not protected if “primarily geographic”  Protectable if acquire secondary meaning

6. Fall, 2006Int'l IP6 Trade Dress  Protected under Lanham Act (15 USC § 1051)  Requirements  Inherently distinctive design [or color, smell, packaging] that functions as a source indicator  Nonfunctional  Otherwise subject to patent law  Ex: color is functional in clothing, not unseen ingredients

7. Fall, 2006Int'l IP7 Trademark vs. Registered Mark  Trademark (Unregistered Mark)   Arises under common law (state law) of unfair competition  See also Service Mark SM  Registered Mark   Lanham Act, 15 USC § 1051  The owner of a trademark used in commerce may request registration … in the PTO  Provides constructive nationwide notice  Registration provides additional remedies, but is not required for infringement suit

8. Fall, 2006Int'l IP8 Benefits of US Registration  Nationwide protection from the date of app  Prevents senior users in limited geography from expanding their territory  Incontestability if used for 5 yrs (and paperwork filed with USPTO)  Stop infringing goods at the dock  Mark is presumed valid during litigation  Enhanced Damages  Get to use that really cool ® symbol

9. Fall, 2006Int'l IP9 US Federal Trademark Law  The Trademark Cases (1879)  Federal TM law declared unconstl (federalism)  Acts of 1881 and 1905  Limited federal law to TMs used in commerce  Lanham Act (1946)  National Register of state marks  Compared to regional character of common law TM  Federal court jurisdiction  Some federal rights beyond state TM rights  E.g., service marks, collective marks, cyberpiracy

10. Fall, 2006Int'l IP10 Subject Matter Under US Law  15 USC § 1127 Definitions 15 USC § 1127 The term “trademark” includes  any word, name, symbol, or device, or combination  (1) used by a person, or  (2) which a person has a bona fide intention to use  to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

11. Fall, 2006Int'l IP11 Subject Matter under TRIPs  Article 15 Protectable Subject Matter Article 15 1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination … shall be eligible 2. Par. 1 shall not be understood to prevent a Member from denying registration on other grounds, provided that they do not derogate from the provisions of the Paris Convention.

12. Fall, 2006Int'l IP12 TM Formalities  Why Registration?  Identifies rights holders  Excludes meritless claims  Resolves priority disputes  Compare Copyright & Patent  Berne prohibits © formalities (outside CofO)  Paris requires patent formalities  Int’l TM conventions  All require or permit registration

13. Fall, 2006Int'l IP13 Priority  First-to-Register Countries (civil law)  Entitlement based on seniority of registration  Modest examination process  First-to-Use Countries (common law)  Entitlement bases on priority of technical use  Adoption of mark by claimed owner  Public use in a way to identify or distinguish the marked goods as those of the adopter of the mark  No need to affix the mark to the good (packaging is ok)  “Token use” (merely to create TM rights) is insufficient  “Analogous use” (e.g., taking orders) is also insufficient Compare patent priority

14. Fall, 2006Int'l IP14 Priority  First-to-Register  Pros  Easier to administer  Priority disputes easily resolved  Incentivizes new companies and new products  Cons  May encourage “warehousing” of marks  Race to TM office, rather than creation or use  US System is mixed  “Intent-to-Use” approximates 1 st -to-Register

15. Fall, 2006Int'l IP15 Registration per TRIPs  Article 15 Protectable Subject Matter Article 15 3. Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application.

16. Fall, 2006Int'l IP16 Registration per Paris  Article 6 Conditions of Registration Article 6 (1) Conditions for the filing and registration of TM shall be determined in each country of the Union by its domestic legislation. (2) An application for registration of a mark filed by a national of a country of the Union in any country of the Union may not be refused, nor may a registration be invalidated, on the ground that filing, registration, or renewal, has not been effected in the country of origin. (3) A mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin

17. Fall, 2006Int'l IP17 US Registration Process  15 USC § 1051 Application for Registration 15 USC § 1051 (a) Application for use of trademark (1) The owner of a trademark used in commerce may request registration on the principal register by paying the prescribed fee and filing in the PTO an application (b) Application for bona fide intention to use (1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register Traditional route actual use New route (1989 TLRA) intent to use

18. Fall, 2006Int'l IP18 US Registration Process  15 USC § 1062 Publication 15 USC § 1062 (a) Examination and publication The application is referred to the examiner in charge of registration, who shall examination the applicat’n If it appears the applicant is entitled to registration, the mark is published in the PTO Official Gazette  15 USC § 1063 Opposition to registration 15 USC § 1063 (a) Any person who believes that he would be damaged by registration of a mark may file an opposition within thirty days after publication

19. Fall, 2006Int'l IP19 US Registration Process  15 USC § 1063 Opposition to registration 15 USC § 1063 (b) Unless registration is successfully opposed (1) a mark entitled to registration under § 1051(a) shall be registered, a certificate of registration issued, and notice of the registration published in the Official Gazette; or § 1051(a) (2) a notice of allowance shall be issued for registration under § 1051(b) of this title. § 1051(b)  15 USC § 1051 Application for Registration 15 USC § 1051 (d) Statement that TM used is in commerce (1) Within six months after notice of allowance is issued, applicant shall file a verified statement that the mark is in use in commerce and specifying the date of first use otherwise deemed abandoned

20. Fall, 2006Int'l IP20 US Compliance w. TRIPs  TRIPs Art. 15Art. 15  actual use of a TM shall not be a condition for filing  application shall not be refused solely on the ground that intended use has not taken place within 3 years from the date of application.  US TM Law Revision Act (1988) § 1051 § 1051  (b) A person who has a bona fide intention … to use [ITU] a trademark in commerce may request regis- tration of its trademark on the principal register  (d) Within 6 months after notice of allowance issues, applicant shall file a verified statement that the mark is in use in commerce and specifying date of first use does this comply w. TRIPs?

21. Fall, 2006Int'l IP21 US Compliance w. TRIPs  Timing  TRIPs: 3 years from application  US: 6 months from issuance  Extensions under § 1051(d)(2) § 1051(d)(2)  The Director shall extend, for one additional 6-month period, the time for filing the statement of use … upon written request … before expiration of 6-months  The Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months. Most notices of allowance issue within 1 year

22. Fall, 2006Int'l IP22 Basic Paris Principles  National Treatment - Art. 2(1)  Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals  Territoriality & Independence - Art. 6(3)  A mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin.  Priority - Art. 4(A)(1)  Any person who has duly filed an application for registration of a trademark, in one of the countries of the Union shall enjoy, for [filing] in other countries, a right of priority

23. Fall, 2006Int'l IP23 Priority under Paris  Art. 4 Art. 4  C.(1) The periods of priority referred to [in 4(A)(1)] shall be twelve months for patents and utility models, and six months for industrial designs and trademarks  Art. 6quinquies Art. 6quinquies  A.(1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union  F. The benefit of priority shall remain unaffected for applications for the registration filed within the Art. 4 period, even if registration in the country of origin is effected after the expiration of such period

24. Fall, 2006Int'l IP24 Priority Under US Law  15 USC § 1126 (Lanham Act “Section 44”) 15 USC § 1126 (b) Benefits to nationals of member country Nationals of member country are entitled to benefits of this section, in addition to the rights to which any owner of a mark is otherwise entitled by this chapter. (c) Prior registration in country of origin US registration under (b) shall not be granted until the mark is registered in the country of origin of applicant, unless the applicant alleges use in commerce. (d) Right of priority Application for registration of member country shall be given priority date in US: Provided that US application is filed within six months;

25. Fall, 2006Int'l IP25 SCM v. Langis Foods (1976)  Facts  Langis files CA app w/o prior use (3/28/69)  Actual use in Canada begins later (5/15/69)  SCM actual use (LEMON TREE) in US (5/15/69)  SCM files US app for LEMON TREE (6/18/69)  Langis files US app (9/19/69), seeks priority  Priority period for Langis lapses after 9/28/69  SCM actual use (ORANGE TREE, LIME TREE) (6/70)  SCM files US app for ORANGE, LIME (7/70)  USPTO issues LEMON regis’n to Langis (10/1971)

26. Fall, 2006Int'l IP26 SCM v. Langis Foods (1976)  15 USC § 1052 TMs registrable 15 USC § 1052  No TM shall be refused registration … unless it (d) resembles a mark registered in the PTO, or a mark or trade name previously used in the United States by another and not abandoned  15 USC § 1126 15 USC § 1126 (d) Right of priority - Application for registration of member country shall be given priority date in US: Provided that US application is filed within six months  Holding:  Constructive filing date in Canada not defeated by failure to use in US within 6 months

27. Fall, 2006Int'l IP27 SCM v. Langis Foods (1976)  More favorable treatment to foreign filers?  Although 1051(b) allows ITU filing  1051(d) requires verified statement of US w/in 6 mo  Section 44 does not require use within 6 mo.  Is this required or allowed by Paris?  Is it fair?  Priority based on foreign filing gives applicant time to decide whether to commercialize within US market; acts during 6 mo. can’t defeat application  Note extended priority period for patents  12 months (Paris) or 30 months (PCT)

28. Fall, 2006Int'l IP28 Paris “telle quelle” Provision  Art. 6 Art. 6  (1) The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation  Art. 6quinquies (A) Art. 6quinquies as is  (1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union  (2) The Union country of origin is where the applicant  has an industrial or commercial presence, or,  the country of the Union where he has his domicile, or,  the Union country of which he is a national.

29. Fall, 2006Int'l IP29 Paris “As Is” Provision  Art. 6quinquies Art. 6quinquies  B. Trademarks covered by this Article may be neither denied registration nor invalidated except: (i) when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed; (ii) when they are devoid of any distinctive character, or consist exclusively of signs or indications [re product qualities], or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed; (iii) when they are contrary to morality or public order and … of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.

30. Fall, 2006Int'l IP30 Paris “As Is” Provision  Relates principally to matters of form  Can’t deny registration based on form of TM  Even if that form not approved in 2d country  But what constitutes “form”  Simply the “style” of the TM (Bodenhausen), or more basic?  TM subject matter & other TM elements not covered by Art. 6quinquies  Problem 4-3  Must Country B permit registration of smells if applicant obtains registration in Country A?  Is smell an issue of “form” or subject matter? unresolved

31. Fall, 2006Int'l IP31 EU v. US (WTO 2002)  Facts  Cuba expropriates Havana Club mark (1959)  Cubaexport registers Havana Club in Cuba (1974)  Begins marketing outside US  Files “Section 44” application in US (w/in 6 mo)Section 44  US Cert. of Registration (1976); Renewed (1996)  Bacardi exports Havana Club Rum to US (1996)  Omnibus Blah Blah Act § 211 Omnibus Blah Blah Act § 211  Bars enforcement of marks confiscated by Cuba  Unless registered by US national

32. Fall, 2006Int'l IP32 EU v. US (WTO 2002)  Effect of TRIPs, Art. 15(2)Art. 15(2)  Par 1 (recognition of TM) shall not be understood to prevent a Member from denying registration of a TM on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967).  Effect of § 211  Does it regulate “ownership” (US argument)  § 211 denies ownership to confiscated marks  The law need not determine rightful owner  Or curtail TM of certain right holders (EU arg)?  Ownership determined by lex loci or lex fori?  Recall Itar-Tass v. Russian Kourier

33. Fall, 2006Int'l IP33 EU v. US (WTO 2002)  Registrations recognized by Paris/TRIPs  Reg under Art. 6(1) is per national law  US could apply ownership requirements of § 211  Reg under Art 6quinquies (“additional” rights)  Must first register in Country of Origin; plus  Comply with member state’s registration laws  What local law does Art 6quinquies allow?Art 6quinquies  US: all laws (including substantive) except the form (telle quelle: “existing state”) the TM takes  EU: telle quelle includes all aspects of the TM

34. Fall, 2006Int'l IP34 EU v. US (WTO 2002)  What local law does Art 6quinquies allow?Art 6quinquies  Panel: Art 6quin. relates only to “form” of TM  Appellate Body: Art 6quin does not bypass 6(1)  Otherwise substantive TM law of country of origin would apply throughout Union  § 211 doesn’t violate Paris  Further story  § 211 violates MFN Treatment (TRIPs Art. 4)TRIPs Art. 4  Due to its exception for US & non-Cuban nationals  See H.R. 3372: Trademark Defense Act of 2005Trademark Defense Act of 2005  Repealing § 211

35. Fall, 2006Int'l IP35 Madrid System  Madrid Agreement  Concerning the Int’l Registration of Marks (1892)  Not true Int’l Reg; merely central forwarding agent  Compare PCT  “Home” registration forms basis of other regis’ns  Protocol Relating to the Madrid Agr (1989)  True Int’l Registration (with WIPO Int’l Bureau)  Marks are registered in WIPO’s Int’l Register  Based on application or registration in home country  Protected by member states as if registered locally  Compare EPO US 2003 EU 2004

36. Fall, 2006Int'l IP36 Madrid System  Int’l Application Process  File with member registration bureau  Examines for scope of TM  Forwards to WIPO  International search and objections  Priority date of nat’l filing if within 2 months  Or 6 months if nat’l filing is in a Paris country  Designate states (or EU) where protection sought  Term  Renewable 10-year terms flowchart

37. Fall, 2006Int'l IP37 Madrid System  “Central” Attacks on TM  If basic application/registration fails <5 years  Int’l registration is cancelled  After 5 years  Int’l registration becomes independent  Protocol Art. 9quinquies Protocol Art. 9quinquies  Transformation of int’l into nat’l applications  In the event the int’l registration is cancelled at the request of the Office of origin, the holder [may] file an application for the registration of the same mark with the Office of any of the Contracting Parties  Relates back to date of international registration

38. Fall, 2006Int'l IP38 Community Trade Mark (CTM)  EU Unified Trademark Registration System  Council Regulation 40/94 (CTM)40/94  Single registration for all EU member states  Open to nationals of any WTO member  Top 10 Reasons for CTM Registration Top 10 Reasons for CTM Registration  Registration through Office for Harmonization in the Internal Market (OHIM) [Alicante, Spain]OHIM  Opposition proceedings (usually by registrants in other countries)  E.g., Trivastan (Italy) vs. Travatan  [ECJ Opinion]ECJ Opinion Flowchart 1 Flowchart 2

39. Fall, 2006Int'l IP39

40. Fall, 2006Int'l IP40 full form

41. Fall, 2006Int'l IP41 Community Trade Mark (CTM)  Registration Disputes  TM Opposition Division TM Opposition Division  TM Cancellation Division TM Cancellation Division  Board of Appeal Board of Appeal  Court of First Instance Court of First Instance  ECJ ECJ

42. Fall, 2006Int'l IP42 Community Trade Mark (CTM)  Infringement Suits  Community Trademark Courts Community Trademark Courts  Designated national courts (1st and 2d instance)  Jurisdiction  EEA-wide jurisdiction and relief  Familiar venue rules  Domicile of def’t; domicile of claimant; Spain  Choice of Law  Substantive law where infringement occurred  Injunction per law of forum  Erie-like doctrine (nat’l law where CTM deficient)

43. Fall, 2006Int'l IP43 Community Trade Mark (CTM)  Remedies  Pan-European Relief  Including provisional  Substantive Law (damages, injunctions)  Per national law of forum  Ex: temporary injunction based on filed application (Italy)  Ex: confusion standard broader in Benelux countries  Ex: broader discover rules in UK  May lead to Forum Shopping  Conflicts between OHIM and CTM Court  Complicated, but generally OHIM primacy