TM International

Paris Convention

The Paris Convention on the protection of industrial property rights was an early Treaty on the international recognition of trademarks, service marks, trade names, indication of services and the suppression of unfair competition.

Under the Paris Convention, a priority claim entitled a claimant who had filed a trademark application in a Convention country to file and claim priority in other Convention countries within six months. The application is deemed backdated to the date of application in the first country, provided the application is made in the second and further countries within six months.

The owner of a trade mark registered abroad, which is not registered in the State may obtain an injunction against the use of an identical or similar mark in relation to identical or similar goods or services, where this is likely to cause confusion.  This replicates the right to an injunction for passing off.

Flags & Emblems

National emblems such as flags, official marks and signs may not be registered without the consent of the relevant State Authority.  The Controller may not require consent where it is satisfied that the emblem may be used in the manner proposed without such authorisation. Under the National Cultural Institutions Act, the Chief Herald registers coats of arms.  Copyright is vested in the Chief Herald.

The Convention does not oblige states to prevent registration of government symbols and emblems,  where they are is not of a nature to mislead the public in relation to the connection between the user and the organisations.  Certain Irish state emblems are protected.

TRIPs Context

TRIPS is an agreement on the trade related aspects of intellectual property.  This includes trade in counterfeit goods.  It is part of the World Trade Organisation agreements, Uruguay Round.

TRIPS provides minimum standards in relation to the protection of trade-related intellectual property rights. Nationals of all member states must be treated equally in relation to intellectual property rights.  The provisions of the Paris Convention must be respected.

States must protect trademarks and signs which distinguish goods and services. Where the signs do not themselves distinguish the goods, provision must be made for registration-based protection.

Required Provisions

Use may not be a condition of application but may be a condition of registration.  Registration may be denied based on issues of morality and the public interest. The nature of the goods and services cannot be grounds for refusal of registration.

TRIPS allows for exceptions to the rights conferred by a trademark provided the exceptions take account of the legitimate interest of the owners of the trademark and third parties.  Initial registration must be for at least 7 years.  Fees may be required as a condition of maintenance of registration. Cancellation may be allowed after a minimum of three years non-use unless there is a valid reason for non-use based on obstacles to use.

States may not unjustifiably burden the manner in which the trademark is used.  The owner of trademarks must have the right to assign and licence the trademark. Compulsory licensing is prohibited. Enforcement procedures must be fair and equitable.

They must not be unduly complicated, costly or involve unreasonable delays.  Injunctive relief and damages must be available.  Criminal penalties must be provided for in the case of deliberate counterfeiting.  There must be provision for fines, seizure, forfeiture and destruction of goods which infringe trademarks.

Madrid Agreemennt

The Madrid Agreement on the international registration of marks is designed to enable the owner of a nationally registered trademark to obtain protection in another member state, by a single application. Once the home state registration is acquired, an application for international registration can be filed with the national registry.  It is directed to the World Intellectual Property Organisation.

The applicant designates states which are party to the treaty.  Once the national registry completes formalities, WIPO makes a formal examination.  It tests the specifications of the goods and services and the proposed registration class. It allocates a number and publishes the application.  National registries are notified.

Each national registry treats the application as if it is filed in its country.  Each country has 12 months in which to refuse registration.  The application is deemed registered unless refused within 12 months. Renewals, and licenses on assignments are dealt with centrally through the WIPO.  Strictly speaking, there are multiple registrations.

International Registration

International registration is based on home registration.  If, during the first five years, the national registration ceases, the international registration falls away. After five years, international registration subsists, independent of national registration.  Ireland is a party to the Madrid Agreement and its protocol.

The period for notification of refusal of protection can be extended up to 18 months or later in some cases.  If there is no refusal during the period concerned, registration is deemed.

Under the protocol, the duration of protection is 10 years.  It is 20 years under the Madrid Agreement. The Madrid Agreement and the protocol are separate agreements. An application with the WIPO may designate the Community Trademark. The Madrid protocol mark is effectively a series of national marks.  The rights and remedies consequent on Infringement depends on national law.