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In the introductory article on the trademark vectors I have mentioned that the definitions of the trademark that are currently used, are not in a smooth concordance with the reality of the market because the requirement that a trademark has to registered is not stated in those definitions.
If we were to accept this fact, then, as first consequence, we would face the volume of the trademark protection, this new concept being defined by the three vectors which in fact determine this volume protection: the territory where the trademark is registered, the list of goods and services for which the trademark is registered and the sign, the sign which should be visually perceptible, according with TRIPS Agreement.
Obviously there are also other opinions, which is normal. Only God knows the truth, we mortals can only get near it by debates based on principles and arguments.
Meanwhile we have to accept the obvious. The power of a trademark has many roots, but the principal pivot is given by the defense system which the trademark has at its disposal and which determines the trademarks strength.
What activates this defense system of the trademark? The registering.
What provides this defense system to the trademark? The law.
Who ensures the compliance of the provisions of the law? The public authority.
Where can the public authority be exercised? On its territory of competence.
So, we just arrived to the point! The territory.
Having the trademark in our mind, could we give a definition for the “territory”?
Let’s try: the territory is the surface of land where the law, according with a specific trademark was registered, is in force.
Remaining focused on the trademark, what could be the characteristics of this territory, as one of the three vectors of a trademark?
Before answering to that, please allow me a short parenthesis. In mathematics a vector has some specific characteristics, much more complex than what we need here in order to explain as clear as possible what it is, and how big is it, the protection of a trademark. In fact how big is the space covered by the exclusive rights resulting from the registration of a trademark? Therefore we will borrow from mathematics only one of the characteristics of vectors, namely the magnitude, meaning how big is a vector.
The magnitude of the vector “territory” is given by the size of the surface where the registration of the trademark is valid, having as basic unit the territory of a state, where we have a power of a public authority.
Obviously, a trademark will be registered with effects on the territory of a state, which is the minimum possible (at least today!), according with the territorial principle, sanctioned by the Paris Convention many years ago.
To be better undersood, let’s take as example the territory of my country, Romania. We have, like many, many other countries, a national administration for industrial property, trademarks, patents, industrial design being part of industrial property, namely the State Office for Inventions and Trademarks and we have a law, governing trademarks and geographical indications.
According to this law, the protection given to a registered trademark, once all procedures are completed, covers the national territory of Romania, equal, uniform like a blanket which covers every square centimeter, following fields, hills, mountains, lakes, rivers, territorial sea, the trademark protection being present not only in the commercial areas, but everywhere.
Regarding the “blanket” mentioned before, please remember what we were saying about the volume of protection in the introductory article. The blanket will be as thick as consistent the list of goods & services is: if the list is long, the blanket will be thick, if the list contains one or two items, the blanket will be a lot thinner.
When it comes to the texture of the “blanket”, remember that it depends on the sign, on how it is perceived by the consumers and, very important, on how distinctive is it.
This is the rule, not only for Romania. There is no way to have a trademark protected only for a part of the basic territory.
Really? Can we have something, link to a trademark, which can cover less that the territory of a country?
Connected to this aspect, let’s say a few words about something which restricts, or better said, can restrict the territory for the right of use of a trademark, but not its protection. It is about the license contract, which does not diminish the protection of the trademark from a territorial point of view. On the contrary, the territorial component of the license agreement is based exactly on the territorial protection of the trademark. It would be better to say that the license contract determines the territory where the licensee can use the right received by this contract. This territory can be smaller than the territory where the trademark, the object of the license contract, is protected.
This territorial principle in the registration of a trademark started to be seen as a constraint in the sense that the commercial exchanges became intensive and dealt very easy with the borders, using customs regimes increasingly more permissive.
From this perception to the real need to have a trademark protected on an extensive territory was less than one step which has been made in 1891 by the Madrid Agreement Concerning the International Registration of Marks.
This international agreement represented a real progress in understanding the necessity for an extensive territory for the trademark protection using a minimum procedure, but was not enough. Not enough because this “international protection” is not a real one. In fact it is just a sum of many national trademark protections and for the procedure. Let’s takes a brief view.
The Madrid Agreement introduced a single application, filed with the International Bureau, based on a national trademark registered in the country of origin. The designated contracting states will examine the trademark application upon their domestic law and decide accordingly, in one year from the international registration or from the request for extension of protection. Easy to understand that the trademark will be registered and will provide a different protection in the designated states, taking into account the existing situation at national level in every country. Firstly, we have to take into consideration the previous rights, in force on the territory of those countries, rights which can be opposed ex officio or in other procedures. As a result, on some territories we can have the same protection like in the country of origin; in others the situation could be significantly different. Secondly, within five years from the date of the international registration, the protection resulted is dependent on the trademarks’ fate in the country of origin. Moreover, within these five years, if the trademark “disappears” from the country of origin for a reason or other, no protection can be claimed in any designated countries which were indicated in the international application or as subsequent designations. In other words, even if the applicant of an international application initially decides on specific territory for obtaining international protection on it, at the end of the day this protection could be varied from one designated state to another. This result will be obtained by following the provisions of different laws and obviously with different costs from country to country.
Keeping our interest focused on the territory, we can say that the Madrid Agreement had, throughout the time, a right vision about this dimension of the trademark protection. More precisely, the negotiations for its improvements brought into the Madrid Agreement, after its revision from Nice in 1957, the Article 9quater which open a new way for developing of the international protection of trademarks. It is about the possibility that a group of states has to be recognized like a single one if they agree to effect the unification of their domestic laws on marks and, in the same time, the whole of their respective territories shall be deemed to be a single country for the purposes of the application of the provision of the Madrid Agreement. More, a common Office shall be substituted for the national Office of each of this group of states.
What could be said at this point? In the future, based on a little surrender of sovereignty, some states can consent to a common trademark law and a common trademark office to represent their common interest in trademark protection. In short, one law, one administration, one procedure, one protection covering all their territories, options which are highly desirable.
What follows is a small, but a very important step – the Benelux trademark, based on the Benelux Convention on Trade Marks, formed in 1962 and replaced in 2005 by the Benelux Convention on Intellectual Property. What does this mean? Three states - The Netherland, Belgium and Luxembourg decided to go together for the trademark protection, using one law and one administration which follow a single procedure for all trademark applications. From now on these countries were seen as one in all trademark related concerns. Their decision was taken into consideration for applications filed in the Madrid system as follows: as of January 1th1971 for the Madrid Agreement and as of April 1th 1998, for the Madrid Protocol.
What is Madrid Protocol?
Chronologically, it is time to talk about it and it is also relevant for our subject – territory vector of the trademark protection volume – because the territorial implications are important. We are talking about 55 countries contracting parties of the Agreement, opposed to 95 countries contracting parties of the Protocol, this one being much more attractive as the Madrid Agreements.
There are many presentations of the Madrid Protocol, so I will not do another one here, remaining focused on the territory. Let’s only say that it was adopted in 1989 and took effect on April 1st, 1996.
Why is the Madrid Protocol important also for territorial aspects, among others?
Firstly, because all the contracting parties from the Protocol cover a bigger territory unlike the case of the Madrid Agreement. Consequently, it is easier to access that bigger territory with an international application based on the Protocol.
Secondly, because the Protocol allows us to “save our back”, as opposed to the provisions of the Madrid Agreement. What does this mean? Suppose that there is an international application, having designated many countries, based on a trademark application in the country of origin. After lengthy proceedings, at the end of the fifth year or even later in some circumstances, the trademark application is definitely rejected in the country of origin and consequently the protection in all designated states will disappear. In this case, the provisions of the Protocol, unlike the ones of the Agreement, will allow us to file the trademark application in every of those countries, preserving the filing date of the international application. Obviously that will happen according to the specific interest of the owner who can decide where those transformation applications will be filed in order to keep the initial territory of protection or not.
Thirdly, because with a single designation it’s possible to cover the territory of the European Union, meaning 28 countries today, but only 15 countries in 1998 when EU became a part of the Madrid Protocol.
We have here a similar case with Benelux countries that could be now seen as a beginning, followed by another step, much bigger, represented by European Union with its Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, amended as Council Regulation (EC) No 207/2009 of 26 February 2009. Thanks to it, the “international territory” for the protection of a trademark received the consistency it needed.
The Community Trademark Regulation offered, since April 1th 1996, an instrument for obtaining trademark protection on a huge territory, meaning all European Union, using a single administration, the Office for Harmonization in the Internal Market – an agency of the European Commission, located in Alicante, Spain and obviously a single procedure for registration and granting protection for the community trademarks.
An important characteristic of this way for trademark protection is the unitary character, which preserves the unitary character of the territory of protection in all circumstances, meaning that all that happens with the community trademark (application or registered) has the same effect on all EU territory.
Now we have the perfect example of the “blanket” which covers the territory of many countries, including EU countries, with an exclusive right that was obtained, for a part of the territory meaning EU, using the same procedure, according to the same law and paying the same fees, using the Community Regulations. For the other part of the territory, the exclusive right was obtained based on an international treaty which allowed gathering up the protection gained on different territories, even if that protection was obtained according to a different law, with a different procedure and obviously a different office. This means that the territory vector, as component of the trademark protection volume, can vary from the unity – the territory of a country – to plurality, covering the territory of many countries, but following two different approaches.
The first approach is “discrete”, because even if it starts from the same point – international application, having behind a trademark registration in the country of origin - the protection could be different from country to country, because of the sign and the list of goods and services compared with earlier rights registered in a specific country. Metaphorically speaking, the “blanket” could have a different thickness on the territory, from country to country.
On the contrary, the second approach is “continuous” because of the unitary character of protection as it is the case of those which were obtained based on the Benelux Convention and on the Community Trademark Regulation.
At least in the case of a community trademark, this unitary character may be very clearly expressed from the point of view of territory as “all or nothing”, meaning that if the community trademark is registered then it is protected on the entire EU territory. If it is rejected, then it is the end of story, the trademark is unprotected in all EU territory.
Right! But in the latter case we find a similar situation, resulted from the provisions of the Madrid Protocol. In some cases when the protection of a community trademark cannot be obtained or it is lost for different reasons, the Community Trademark Regulation offers the possibility to convert it into national trademark applications, preserving the application date of the community trademark. Once this opportunity is used, the trademark protection will be obtained in the territories where it was asked for and where the trademark application will be accepted. In such conditions the protection became “discrete”, being a sum of many national protections.
Finally, we can conclude that the magnitude of the territory vector is increasing continuously, materializing, on one hand, the intensification of the production and alike the consumption and on the other hand it is the expression of the permanent intent to conquest new markets.
Obviously a “continuous” protection offers many more advantages as opposed to a “discrete” one for the simple fact that it has to deal only with one administration instead of several, each one for every country covered by trademark protection. Imagine what 28 European countries covered by Madrid System mean and how simple it is using Community Trademark Regulation! But do not forget! Even for a community trademark the defense of the right has to be done in a ”discrete” way.