Trademark Protection System
in
-Janak Bhandari*
glap@wlink.com.np
Introduction of Trademark:
Today intellectual property is a major aspect of the world trade. Trademark is one factor of that which travels around the world by its quality product and popularity. Therefore, in world market place to save the goodwill of the products through the trademark every country has developed the legal rule to protect the trademark.
A consumer is duped if he buys a commodity presuming it to have originated from a certain identified source when actually it is not and later he finds the commodity substandard. In the process the reputation of traders suffers if spurious goods are sold as those originating from him. The interests of both the consumer and trader can be saved if some definite symbol which marks out the origin of goods from a definite trade source is attached with the goods emanating from such source. Such symbol is called a trademark. Regarding the trademarks aspect the following definitions may clear what the trademark is in actual sense.
Trademarks are diverse and familiar feature in both industrial and commercial markets. Trademarks have long been used by manufacturer and traders to identify their goods and distinguish them from goods made or sold by others.[1]
A Trademark is a sign capable of distinguishing the goods or services produced or provided by one enterprise from those of another enterprises. [2]
Trademarks are "visible signs" which serve to identify the goods or services of an enterprise and to distinguish them from those of another. The term "visible sign" is very broad in scope and includes any of the following or combinations thereof: "arbitrary or fanciful designations, names, slogans, devices, numbers, letters, pictures or symbols, labels, combinations or arrangement of colors, and shapes of containers or of the goods themselves."[3]
In
The Patent Design & Trademark Act 1965 (2022 BS) define the trademark as " a word or symbol or illustrations or a combination of the three to be used by a firm, company or person to distinguish their products or services from those of others."[4]
In the International aspects TRIPs define a trademark as "any sign or any combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertaking.'[5]
By above definitions it is known that the trademark are distinctive signs that are used to distinguish products whether goods or services, of one undertaking from another's. Which helps consumers decide which goods to buy and thus serve the competitive market interest of an enterprise as well as general economic interests.
The main feature of trademark is "Distinctiveness", which became associated with quality and consumers expectations in a product or service.
Historical development of Trademark:
Trademarks are not a creation of our times. It has a long History. Trademarks as marks of origin were affixed by the makes of bricks, leather books, weapons, cooking ware and other things even in the ancient cultures. These marks were either letters usually initials or other symbolic sign stamped on the goods to signify the maker of product. Such makings were also used as signs of ownership. The English word "brand" often used synonymously with trademark even today, reflects of this brand today was the marking placed on cattle by farmers with hot irons.[6]
In the Roman times it was common for pottery to be embossed
or impressed with a mark.[7]
Merchant's marks were used in commerce in
Trademark although not yet called by that "term of art" a word created only in 19th century continued to play a similar role throughout the greater part of History, including medieval time and the centuries beyond.[9]
In regarding the Nepalese trademark law history, it is not
found any trademark law before the enactment of Patent Design & Trademark
Law 1993 BS. After enactment of this Act, one of the merchants from Indrachowk,
Kathmandu has registered a trademark in 1994 BS for his mustard oil products,
and that was a first trademark registered in the history of
The existing Patent Design & Trademark Act 1965 repealed old one. Under this Act there are around 27000 trademarks are registered domestic and foreign owners.
As understand that the trademark is a distinctive sign, which identifies certain goods and services as these produced or provided by a specific person or enterprise. Distinctiveness is the main feature of the trademark, and the trademark performs the following functions:
1. It identifies the product and its origin
2. It guarantees unchanged qualities
3. It advertise the product
For the protection of trademark it is need to register in home country and other countries, where the business is made or the entrepreneurs wished to protect. In home country which is nation of origin the protection is available under the national law, but for the international protection it is need to follow the rules provided by the various international treaties, agreements & conventions.
Trademark Protection System in
1. Patent,
Design & Trademark Law, 1936 (1993BS)
This law gives the right over the trademark after having its registration with the concerned authority. In which mentioned that" Everyone can registered his trademark to the concerned authority.[11] At that time the law had a provision of compensation or jailed for infringing the others trademark. The authority can compensate the infringer
up to 200 Rupees or 6 months jailed and along with the confiscation of all the articles connected with an infringement.[12]
Under this law there were protected various national and foreign marks. Some of them are still existed by making the continuous renewal.
2. Patent,
Design & Trademark Act, 1965 (2022BS)
Under
this Act the right is protected under the registration of trademark with the
concerned authority. The trademarks are registered in
There
is provision of USE of trademark after having registration. If the trademark is
not brought into use within one year from the registration, the Registry after
making necessary investigation cancel the registration of such mark.[14]
Regarding
the duration of trademark this act provides the 7-year period protection after
having the registration and can be renewable for further after completion of
each 7 years.
The
protection of infringement matters, the Act made the provision as "if the
Department found an infringement the infringer shall be liable for a fine of
Rs. 100000 and confiscation of all the articles connected with
infringement."[15]
This act does not have a provision of jailed to the infringer.
In
the litigation aspect the Registry (Department of Industries) has a
semi-judiciary authority. Appeal against the decision of Department can be
filed in appellate court and after then Supreme Court. Regarding the remedy of
injunction the Act is quite, but in practice it can be done through the
provision of Civil Right Act 2012 BS.
Protection of Trademark in International Level
There
are various treaties, agreement and conventions for the international trademark
protection. In this aspect we will see the major provisions of these treaties
in brief separately.
1.
This
is the first international convention for the international system of trademark
protection along with other industrial property. This was drafted in 1880 and
came into force in 1884. It has been revised several times, most recently in
The first major provision of this convention
is the National Treatment for the applicant of member countries.
The one member country treated as the own national for the applicant of another
country and distributed the same privileges also. In convention it is said that
"National 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"[17]
Another
major aspect of this convention is the Right of Priority, an
application for the registration of trademark in own home country gets its
priority in other member countries also from the date of first application
filing, the priority claim in the other country within a period of 6 months.[18]
This is a great benefit if in the mean time someone else had filed for the same
trademark in those other countries.
Further,
trademarks duly registered in the country of origin shall be accepted for
filing and protected as in the other countries of the
These
are the major provisions of this convention for the international protection of
trademark.
.2. The
This
agreement was signed on
The
World Intellectual Property Protection (WIPO) administers this agreement. This
Agreement simplifies international registration procedures for the acquisition
of trademark protection by providing for a single international application
upon payment of single fee. The System
of Madrid Agreement may be summarized[21]
as follows:
v
a citizen or a legal entity of a member state owns a registered in the
country of origin;
v
on the basis of the home country registration , the trademark owner
applies for the international trademark registration through the national
office to the International Bureau of WIPO, indicating the member countries in
which the applicant like to have trademark protection,
v
the International Bureau makes the registration and passes the
application to all the designated member countries
v
in each of these states, the international application is treated as a
national application,
v
the states have one year from the date of application receiving in
which to refuse the registration of their country,
v
and if they do not send the notification about refusal within period of
12 months, the trademark automatically been registered in these countries.
Under this system there are two major aspects, one
is home registration must be required to file an international application and second
aspect is that if the trademark is registered internationally, the trademark
protection is available if the trademark is canceled in home country after the
five years of registration. But if the
trademark canceled in home country within the period of 5 years from the date
of registration all the international protection[22]
will also ended.
3. The Protocol Relating to the
The Madrid Protocol was signed on
The Protocol permits the international registration
on the basis of a national application instead of national registration[23].
Other procedures are as same as applied in Agreement regarding the application
till it enters into the national phase.
Furthermore, the protocol extends the deadline to make
a notification to the applicant and WIPO that registration has been denied to
eighteen months. If opposition to protection is raised by a third party the
deadline is extended an additional seven months.[24]
Although the protocol is new treaty independent from
the Madrid Agreement and introduces new procedures for international
registration, both are intended to be linked by means of common implementation
regulation, which entered into a force an
The interesting provisions about these agreement and
protocol is, if the country of origin is member of both the agreement and
protocol, and the countries where the international application should made
also the member of both, then the provisions of the agreement take precedence
over the provision of the protocol in these countries.[25]
4. The
Trademark Law Treaty 1994
The Trademark Law Treaty (TLT) was adopted in
The Principal
features of trademark protection practice which treaty seeks to harmonize
include, the followings: [28]
v
The initial registration and renewal terms of trademark registrations s
will be ten years. Applications to renew trademark registration may file up to
six months following expiration of the term.
v
In this treaty a single application may file to cover multiple
international classes
v
Service marks are given the same protection s trademarks under the
v
One power of attorney may be submitted for each applicant and member
states may not require the signatures on powers be authenticated
v
the 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
v
Contracting states must comply with the Provisions of the Paris
Conventions. The TLT also provides model forms, which the contracting states
are encouraged to adopt for their own trademark offices.
5. Agreement on Trade Related Aspects of Intellectual Property
Rights (TRIPS) 1994
TRIPS is a part of and parcel of World Trade
Organization (WTO) set up as in annexure 1-c to the Marrakesh Agreement by
which WTO was established. Objects of TRIPS are to give protection and
enforcement of intellectual property rights to be required for the promotion of
intellectual innovation.[29]
The TRIPS
Agreement imposes an obligation on its participant states to apply the Paris
Convention standards relating trademark[30].
It also cross refers to those provisions at a number of points, supplements
some of them in significant respects and imposes its own obligations in
addition thus is adopting a broad definition of the signs capable being marks,
it requires trademark registration to extend to marks for services.[31]For
the first time in international intellectual property law, the section on
trademarks of the TRIPS agreement gives a clear definition what constitutes a
trademark and lays down[32]
the definition we already mentioned in chapter-1 in definition.
As these, TRIPS extends the Paris Convention
provision on the protection of well-known marks to service marks and to cases
of dilution by use for different goods and services where that use is damaging.[33]
Use may not be used automatic precondition of
registration, though it is to be taken into account in assessing
distinctiveness.[34] Removal
for non-use can occur only after a period of at least three years.[35]The
term of a grant before renewal of a registration must be at least 7 years.[36]
While it is proper to require the use of a house
mark in addition to product mark, other incumbrances, such as use with another
trademark, use in a special form or use in an manner detrimental to its
capacity to distinguish, are forbidden, as is compulsory licensing.[37]
Assignments, more over, are to be permitted with or without the transfer of the
related business. Developing countries have some times sought to impose
trademark curbs with a view to controlling technology transfers involving
trans-national corporations. These hopes have largely proved vain and have been
curtailed or abandoned. TRIPS will help to bury them.[38]
Basically TRIPS do the following not only for the
trademark protection but also for the whole Intellectual property system.
v
Establishing minimum standards for intellectual property rights
protection in the national systems of WTO members
v
Prescribing agreed elements of an effective mechanism for
administration and enforcement of intellectual property rights
v
Creating a transparency mechanism each WTO members is required to
provide details of their national intellectual property laws and systems, and
to answer questions about their intellectual property systems
v
Creating a predictable, rules based system for the settlement of
disputes about trade-related intellectual property issues between WTO members
v
Allowing for mechanisms that ensure that the national intellectual
property systems support widely accepted public policy objectives; such as
stamping out unfair competition, facilitating transfer of technology, and
promoting environmental protection
TRIPS Agreement is not itself an international law
but it is the guidelines for the state, where the national laws must be meet
the compliant with the provisions of TRIPS Agreement.
6. The Nice Agreement Concerning the International
Classification of Goods and Services for the Purpose of the Registration of
Marks, 1957
This agreement adopted in
Under this agreement there are 34 classes in
regarding the goods and 11 classes for services, total 45 classes.
Various countries that are not a party to the
agreement also use this classification system.
7. The
This agreement was adopted at the close conference
on 1973 and entered into force in 1985. The purpose of this agreement is to
establish an international classification for the figurative elements of
trademark. Means not all trademarks are covered by this classification but only
those trademarks which contain figurative elements, like stars, human beings,
animals, plants, etc.[40]
8. The
This agreement came into force in
Article 5 of the Agreement provides for the
international registration of appellations of origin. Registration is effected
by the competent Office of the country of origin. This applies in the name of
any natural persons or any legal entities, public or private having a right to
use the appellation, according to their national legislation.
Registered appellations of origin enjoy full
protection in the member countries of the Lisbon Union such time as it loses
protection in country of origin.[42]
These are the international treaties and the
provisions of which is the system of international protection trademarks.
Conclusion:
A
trademark is a sign creates distinctiveness, the main function of which is to
enable consumer to identify a product or origin. This developed from the
ancient time when the makers of bricks put the mark in bricks. As we see this
is the very valuable asset, that’s why it needs to protect. And the protection
is available through national or international system.
As
we discussed above the national protection is available through the national
law, in
In
the aspect of International system of protection we discussed various treaties,
agreements, and conventions relating to the trademark. Every treaty have own
importance, it is seen that the
Nepal
is a member of the W.T.O. and it need to change their law to compliant TRIPS
Agreement, for this exercise is ongoing, and hope to get the new Intellectual
Property law very soon which may more supportive to better protection &
enforcement of the trademark rights in Nepal.
[1] David Bainbridge, Intellectual Property, Fifth Edition, Aditya Books Private Limited. (2003), P. 531
[2] Making a Mark, An Introduction to Trademark for small and medium sized Enterprises, WIPO,( 2004), P.3
[3] Guide
on the Industrial Property Activities of Enterprises in Developing Countries,
WIPO,
[4] Section 2C
[5] Article 15.1 of TRIPs Agreement
[6] Supra Note 1 at P. 27
[7] Supra Note 3 at P. 531
[8] ibid
[9] Supra Note 1 at P. 27
[10] From the source of DOI
[11] Section 24 (a), Patent Design & Trademark Law 1936
[12] Section 25 (a & b), Patent Design & Trademark Law 1936
[13] Proviso Section 18(1), Patent, Design & Trademark Act 1965
[14] Section 18(C), Patent, Design & Trademark Act 1965
[15] Section 15, Patent, Design & Trademark Act 1965
[16] Supra Note 1 at P. 4
[17] Article 2(1), Paris Convention
[18] Article 4C(1 & 2), Paris Convention
[19] www.iusmentis.com/trademarks, (3/14/05)
[20] www.lawduke.edu/journals/djci/articles, (3/14/05)
[21] ibid
[22] Article 6
(1) ,
[23] Supra Note 22
[24] ibid
[25] Supra
Note 21,
[26] www.iiprp.com/seminars,
[27] General Information, WIPO, (2004),p. 7
[28] Supra
Note 28,
[29] Supra Note 1 at P. 302
[30] TRIPS Article 2(1)
[31] ibid Article 15
[32] Jayshree Watal, Intellectual Property Rights in the WTO & Developing Countries, Oxford, (2002),P. 248
[33] TRIPS Article 16
[34] ibid Article 15(1), (3)
[35] ibid Article 19
[36] ibid Article 18
[37] Supra Note 2 at P. 524
[38] ibid
[39] Background Reading Material on Intellectual Property, WIPO, (1988), P. 184
[40] ibid at P. 185
[41]ibid
[42] ibid