CHAPTER 6 – INTERNATIONAL TRADE MARK PROTECTION – STRATEGY IS ESSENTIAL

FROM THE INITIAL IDEA TO A WELL KNOWN TRADE MARK- A LONG WAY TO GO

Olaf Kretzschmar IP Consultant/ Registered Foreign Lawyer

The so called Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks facilitate International trade mark protection on a global level.

It is almost self-evident that trade mark protection is crucial for any business and company. Australian businesses are increasingly aware of this fact and have thus begun to recognise that investment in intangible assets is money well spent. It protects, guides potential customers, indicates certain quality of goods and services and increases the business’ value at the same time.
However, even many established businesses and especially entrepreneurs fail to recognise the International dimension of their business. Today the internet is the sales vehicle in the majority of all industries. This especially applies to Australia which is geographically but not business wise isolated from the rest of the world. Thus International trade mark protection is important.

The International Trade Mark System (Madrid System)
The International statutory body, namely the World Intellectual Property Organisation (WIPO) and the two governing International multilateral treaties, called Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 1989 facilitate the registration of trademarks in multiple jurisdictions around the world. All member states of the treaties have agreed to provide the same standard of protection to applicants as they provide to residents of the respective member state. Both treaties together are referred to as “Madrid System”. WIPO itself expresses that it “… is the United Nations agency dedicated to the use of intellectual property (patents, copyright, trademarks, designs, etc.) as a means of stimulating innovation and
creativity” . So, WIPO is the starting point to obtain International trade mark protection. However, a trade mark applicant must bear in mind that there is no such legal institute like a “World Trade Mark” which covers all countries in the world with simply one single application.
As there is no central statutory body that protects trade mark owners around the globe, the question of the best protection strategy arises. Like in almost every challenging situation there is no ideal solution that suits all businesses. However, there are certain aspects that must be considered to establish the trade mark protection strategy that is ideal in the respective circumstances.

Strategies for creation an International trade mark portfolio

A trade mark applicant should consider the following aspects when it comes to the creation of a powerful international trade mark portfolio:

  • Where are my target markets in an International context?
  • What kind of goods and services is my business or company providing to customers between now and a period of five years in future (grace period)?
  • What is my budget for International trade mark protection?
  • Does my trade mark include a merely descriptive term (word)?

The so called “Madrid System” provides a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions. Registration through the Madrid system does not create an ‘international’ registration, as in the case of the European Community Trade Mark system; rather, it creates a bundle of national rights able to be administered centrally. Madrid provides a mechanism for obtaining trademark protection in many countries around the world which is more effective than seeking protection separately in each individual country or jurisdiction of interest.

However, many countries are neither member of the Madrid Agreement, nor have they agreed to the relating Protocol. Prominent countries are Canada or Thailand. Prominent countries and many other countries have their individual rule for trade mark registration, as well as a fee structure different to the Madrid System. Canada charges statutory fee in relation to the number of classes chosen for registration, Thailand charges per item (good or service) selected for protection.
A good way to obtain protection for almost descriptive names or terms that are at least allusive is to lodge an application for a European Community Trade Mark with the Office of Harmonisation in the Internal Market (OHIM). The reason for this is based on the fact that OHIM employs people from a variety of countries with different languages. It is simply an observation from past years that examiners with OHIM not seem to be very particular with descriptiveness of a mark, which normally is an obstacle to registration. One might be able to obtain a registration in Europe that would not have been granted elsewhere. Once registered overseas, this mark can be used as “home country registration” to obtain registration in other countries.

Enforcement of Australian judgements with regard to trade mark infringement

With the help of International trade mark registration and TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights) Australian judgements with regard to trade mark infringement can be enforced internationally. Part III of the TRIPS Agreement obliges Members to establish a comprehensive enforcement regime.
Article 41.1 of the TRIPS Agreement imposes upon Members of the WTO the general obligation to make available the enforcement procedures listed in the Agreement so as to permit effective action against any act of infringement of intellectual property rights covered by the Agreement. These procedures are required also to include ‘expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements.

In relation to the intellectual property rights covered by the TRIPS Agreement, Article 42 requires members to make available civil judicial procedures for the enforcement of those rights to rights holders, including federations and associations having legal standing to assert such rights. Article 42 requires that these procedures are fair and equitable in that defendants are entitled to ‘written notice which is timely and contains sufficient detail, including the basis of the claims.
Due to the existence of International Treaties concerning execution of injunctions or judgements or court orders that Australia has agreed to, an International trade mark registration is designed to protect its owner against violation of its intellectual property in an international context.

Conclusion

The Madrid Trade Mark System and its implementation in Australian trade mark law promotes International co-operation in relation to comprehensive trade mark protection.
It provides for the registration and enforcement in Australia and all member states of trade mark related orders made in these countries, Currently 85 countries have agreed to the International trade mark treaties and it is anticipated that more countries will become members.
In any event the Madrid System develops to provide protection of a world trade mark at one day.