The Trademark Law Treaty

Trademarks / Trademark Law / Madrid Protocol

Another treaty of some importance affecting international practice, the Trademark Law Treaty (“TLT”) was adopted on October 27, 1994 and signed in Geneva on October 28, 1994 by thirty-nine member countries [23] 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. [24]

What has become today's TLT is only a shadow of the lofty aspirations originally envisioned for this project in 1987, when WIPO first proposed the Treaty. The original aim of the negotiations for this treaty, which in its infancy was entitled a "Proposed Treaty on the Harmonization of Laws for the Protection of Marks", was to harmonize the trademarks laws of the eventual signatory states in numerous areas, both administrative and substantive, including harmonization of the definition of registrable marks; provision for registration of sound marks; elimination of the "doing business" requirement for parties to own trademark registrations; provision of opposition procedures; harmonization of the definition of objectionable marks, both on the grounds of absolute and relative registrability; harmonization of the rights conferred by registration and when such rights are exhausted; and the protection of well-known marks and marks of high renown. However, in view of the diverse substantive laws of the various parties present at the Diplomatic Conferences, there was considerable reluctance on the part of many non-European countries to accept such possible sweeping changes in their national laws. The European countries were perhaps more sympathetic as they were experiencing a similar move as a result of the EC Directive on the Harmonization of Trademark Laws which covered much the same material. Therefore, almost all the substantive goals of the Treaty were eliminated, thereby leaving us with the purely administrative harmonization Treaty that we have today.

It is also interesting to note, from the perspective of both Europeans and non-Europeans alike, that the treaty in its final days of negotiation faced certain difficulties as a result, not of the trademark provisions of the Treaty, but of the political conflicts between non-Europeans, most notably the United States, and the European Union. The European Union had demanded a separate vote in the TLT Assembly, in addition to the individual votes of its then twelve member states. The United States and certain other non-European states objected to the European Union's argument that the Community Trademark Office was separate from the national offices of the member states and, accordingly, should have equal status with sovereign states. Due to the dangerous precedent that this unwarranted expansion of rights for intergovernmental organizations would set, particularly for other international treaties being negotiated by the European Union, the non-Europeans refused to agree. Eventually, a compromise on this issue was voted upon and reached at the final Diplomatic Conference, whereby the original language regarding voting rights of the contracting parties was simply deleted and replaced by language stating that the Treaty may be modified by Diplomatic Conference.

The principal features of trademark practice which the Treaty seeks to harmonize include, inter alia, the following:

1) The initial registration term and renewal terms of trademark registrations will be ten years. Applications to renew trademark registrations may be filed up to six months following expiration of the term.

2) Service marks are given the same protection as trademarks under the Paris Convention.

3) One power of attorney may be submitted for each applicant and member states may not require that signatures on powers be authenticated or legalized.

4) Cumbersome documentation procedures, such as the submission of multiple powers of attorney, certificates of incorporation or corporate status, chamber of commerce certificates, certificates of good standing, witness requirements, authentication, certification and legalization requirements will be alleviated.

5) A single application may be filed to cover multiple international classes, although such applications may be divided during opposition proceedings, on appeal, or until the Registrar renders a decision. Such applications may also result in multiple registrations which will refer to the priority date of the original and resulting registrations.

6) A single document may be filed to record the identical chain of title against multiple applications and registrations.

7) Member states may not require that trademarks be assigned together with the goodwill that they symbolize. However, this is seen as more of a procedural change than an actual substantive change.

8) Contracting states must comply with the provisions of the Paris Convention. The TLT also provides model forms which the contracting states are encouraged to adopt for their own Trademark Offices.

It appears that the changes to be effected by the TLT are generally well-received among trademark owners and may be somewhat mixed among trademark offices and trademark practitioners. The U.S.P.T.O. is particularly pleased by the TLT since it should not greatly affect their method of operations and they were able to retain an optional requirement that declarations of use or intention to use may be required of applicants by the contracting states. However, many trademark offices which now require that separate trademark applications be filed where one may suffice, or that separate documents be filed where one set is adequate, will probably be somewhat relieved by the reduction in paperwork albeit somewhat taken aback by the corresponding reduction in revenue from official fees. Developing nations are therefore again less likely to favor TLT on this ground.

One of the largest procedural difficulties which has plagued our profession in the past, and which will be eliminated by the TLT, is the requirement that documents be legalized before they are accepted by certain national Trademark Offices. It is unfortunate that of the list of signatories only a few still maintain legalization requirements. Therefore, it appears that the TLT is, in part, "preaching to the converted." The unconverted will continue to maintain legalization requirements, if for no other valid reason than to generate revenue for their coffers and principally to maintain their local consulate offices.

Many strenuous objections were raised during the Diplomatic Conferences by representatives of "legalization countries" against proposals to eliminate legalization requirements. However, these objections did not succeed. There was a dichotomy of opinion whether an exception should be made in this regard for certain trademark documents that affect the title, scope or existence of a registration, such as voluntary partial or complete cancellation and transfer of ownership. However, emphasis on signature authentication in such cases is misplaced, as authentication, in and of itself, does not assist to prevent fraud and abuse. For example, in certain jurisdictions, such as the state of California, a notary public may only attest that the signature on the document is that of the stated signatory. In such jurisdictions notarization, and subsequent legalization, is virtually meaningless as the notary may not attest to the authority or capacity of the signatory to sign the documents. Validly notarized documents for California trademark owners have been used in "legalization countries" and have not encountered difficulties.

The drive to simplify the preparation and filing of documents is also welcome, for the most part, particularly by trademark owners who stand to save substantial sums in certain jurisdictions when recording chains of title and filing multiple class applications. The practitioners' view is generally favorable as, rather than devoting our energies to assisting clients through the quagmire of documents needed to transact intellectual property matters in the contracting states, we may now devote our time and attention to the more substantive portions of our practices.

Now that a select group of contracting states will be able to achieve procedural uniformity to one degree or another, there are some who believe strongly that the WIPO should turn its attention to developing a substantive Trademark Law Treaty. However, given the recent climate in which the substantive portions of the present Trademark Law Treaty were received, and subsequently rejected, this would not appear to be a productive exercise for WIPO to undertake. Non-European jurisdictions, particularly common law jurisdictions, including the United States, Canada and many British law countries other than the United Kingdom as now definitely a part of Europe, are likely to resist such efforts. The law governing much of the substantive trademark issues that would be addressed, particularly enforcing famous marks under the theory of unfair competition, or passing-off in British law countries, is difficult to modify by treaty in certain countries as, generally, these are not statutory causes of action. In addition, adherence to such a Treaty could well result in significant additional costs in operating some national Trademark Offices, which now only conduct cursory examination or have no capacity or authority to resolve inter partes disputes concerning the Register. However, it will be interesting to see whether WIPO takes up this task and, if it does, what the "global" consensus will be. Despite harmonization, it must be recognized that nationalism, even in the field of trademarks, has not been completely obliterated. Harmonization is one thing, complete abdication to one global anything is a long way off.

[23] Austria, Belarus, Belgium, Bosnia & Herzegovina, China (PRC), Cuba, Czech Republic, Denmark, Dominican Republic, Germany, Greece, Hungary, Indonesia, Israel, Italy, Ivory Coast, Kenya, Latvia, Lithuania, Luxembourg, Malta, Mexico, Moldova, Monaco, Portugal, Russian Federation, Senegal, Slovakia, Slovenia, South Africa, Swaziland, Switzerland, Togo, Trinidad and Tobago, Turkey, Ukraine, United Kingdom, U.S.A., Uruguay.

[24] See http://www.wipo.org (26 member states, some with reservations, as of October 15, 2001, including, for example, Australia, Egypt, Japan, Sri Lanka, United Kingdom and United States).

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