Order ready-to-submit essays. No Plagiarism Guarantee!
Note: Our papers are 100% human-written, not AI-generated.
We Write Essays for Students
Tell us about your assignment and we will find the best writer for your paper
Get Help Now!
Territory Of Trade Marks
This paper focuses on the territoriality of trade marks. It seeks to analyse the extent and ways in which the principle of territoriality is reflected in the international, United States and European Union trade mark laws. Moreover, it will discuss problems caused by the territoriality of rights with a view of coming up with mechanisms or resolutions that might prove useful in resolving these problems.
It is worth mentioning that each trade mark law possesses a unique territorial characteristic. The United States through its courts, for instance, has had to modify its laws and doctrines, in order to suit the progressively cross-border character of its goodwill.[1]This has been done to avoid consumer confusion brought about by the similarity in the products or even brands in a given market. Moreover, international trade mark laws have been modified to enhance protection of producer interests through harmonising most of the national trade mark laws; this shields the producer from extra costs incurred while trading on international grounds. Protection has also been enhanced through facilitation of trademark protection on other territorial grounds.
As pertains to the United States trademark law, the Supreme Court’s decision in Hanover Star Milling Company v. Metcalf,[2], as well as the Supreme Court’s decision in the United Drug Company v. Theodore Rectanus[3], will be considered. First of all, it is important to note that the principle of territoriality in trademark laws usually takes two approaches, such as: trademark rights are protected on the basis of countries or a trademark infringement allegation can see the proprietor of that particular trademark use the laws of any individual country in which he acquired a trademark right to defend his case.
In the former case, a scenario can occur, whereby trademark rights are acquired in each country individually, such that if a firm wants to market its commodities by using a particular trademark in countries other than its country of origin, it will have to obtain the rights based on the laws of those foreign countries. The two cases mentioned earlier concerned companies that adopted similar or confusingly identical trademarks. In the first case, the trademark that brought about the dispute was ‘Tea Rose’, which was used by both companies to market their flour. The ruling of this case formed the basis of the ‘Tea Rose’ doctrines used until the early eighties when they were reformed. In its ruling, the Supreme Court revisited the basic tenets of priority laws, which applied to the trademarks that included the eighteen seventy nine Trade Mark ruling.[4]
This law provided that rights in marks arose at regular law only via the use of trademarks in association with business goods and services. The United States of America domestic trademark laws gave priority to the trader, businessman or firm that was the first in the adoption and utilisation of a particular trademark. However, this particular priority did not apply on a nationwide basis in that the trademark rights were protected by the priority, as long as the proprietor of that given trademark owned the goodwill associated with that trademark. This means that the priority only gave cover in areas where the business entity which owned that particular trademark, had been established. Consequently, a firm was only given national priority for a given trademark if the firm proceeded to establish its business in the entire of the United States of America after adopting and applying that particular trademark.
Despite the reforms made to this doctrine in the eighties, the general commitment towards the principle of territoriality in the US trademark laws still remained. This despite the establishment of a system that protected the national priority under the Lanham Act passed in 1947. Section 7(c) of the Act provided for constructive notice of rights in a given trademark, given that the proprietor of that trademark filed for a trademark application with the federal government.[5] Additionally, the ‘intent to use’ system set up by the Trademark Law Revision Act enacted in nineteen eighty eight gave the trademark proprietor a nationwide priority even before utilising the trademark.[6]
This happened only if the proprietor who adopted the trademark showed some genuine intention of using that trademark. On the other hand, if a trademark is yet to be used by a foreign company in the US trade environment, the principle of territoriality can boost the unexpected and unfair effect of preventing it from imposing its trademark against impersonators in the United States of America, even if trademark adopted by that foreign company is recognised both outside and inside the United States of America. A perfect example of this is the case Groupo Gigante v. Dallo and Co., Inc.[7] In this case, Groupo Gigante established in nineteen sixty two in Mexico, was the first to adopt and use the trademark Gigante in Mexico. However, this did not protect this particular trademark from being used by Dallo and Co., Inc from adopting and using that particular trademark in the United States because GroupoGigante had not used the same trademark in United States by the time Dallo and Co., Inc entered the market. The principle of territoriality in this case, gave priority to Dallo and Co., Inc; the first in time. The only exemption came in Southern California where GroupoGigante became the first to popularise the trademark Gigante; the well-known mark, and according to the ‘Tea Rose’ doctrines, also had the priority of use.
As pertains to the principle of territoriality in the international trademark law, we do find that the laws are regarded as being territorial in scope. Particularly, if a trademark infringement occurs in a given area, country or region, domestic laws of that particular place where the infringement occurred will govern, or rather will be exploited in making the rulings, as pertains to the infringement of trademark rights. Of particular interest is the case of Ingenohl Company v. Walter E. Olsen & Company.[8] In this case, something that came out clearly was that a trademark, upon infringement, will draw much of its protection from the prevailing laws in Hong Kong and would bestow no rights. The only exception would be by the assent of that particular law. If one moves across borders, for example, it is widely expected that he will be subject to the laws of the country he is in at that particular moment, and not the laws of his country of origin. Consistent with this, trademark laws applicable in the United States of America are bound to be effected only within the borders of the United States. Hence, the business environment in which one does his or her business governs and determines the extent of the intellectual property rights of a given trader.
The Paris Convention established in the nineteenth century sought to protect industrial property. Under this convention, nations that were signatory, were obligated to provide protection to trademarks adopted and used by a foreign firm. In particular, it provided for equity in the application and registration of trademarks, whereby both local and international firms had an equal chance of applying for registration of a particular trademark.[9] This convention was reinforced by a pact known as the Trade Related Aspects of Intellectual Property (TRIPs). Both the Paris Convention and the TRIPs agreement made some great contribution to the principle of territoriality in international trademark laws. For example, under Article 6bis of the Paris Convention,[10] trademarks that are recognised in a single country, which is a party to the Convention, should be protected by the laws in each and every country, which is signatory to the Paris Convention. Moreover this particular article together with Article 16 of TRIPs protect trademarks from infringement in counties they are not registered in provided that those particular trademarks are well-known and their use in a given country has a strong likelihood of creating confusion amongst consumers. This was the case in GroupoGigante v. Dallo and Co., Inc in Southern California.
The convention and pact came as a way of harmonising initiatives undertaken by different countries to curb cases of trademark infringement. Moreover, they did effect some degree of union between substantive norms. It is worth mentioning that the acquisition of trademark rights is usually done via localised use in that using a particular trademark within a given territory would merit it for the issuance of a trademark right within that particular territory.
Before the Paris Convention, TRIPs and many other international agreements came into effect, the procedure for acquiring a given trademark nationally was different in every country, even when the proprietor of a given trademark had the intention of using it in different national trade markets.[11] The Paris Convention enabled the proprietors of a given trademark to achieve a sole priority engagement for all their applications for a given trademark within countries that were signatories to the Paris Convention, provided that each and every successive trademark application was made within a period of six months from the first. The Madrid system, on the other hand, encouraged trademark standardisation in the signatory countries, thus hastening the global marketing process.[12]
When it comes to the principle of territoriality within the European Union trademark laws, it is worth noting that many legal structures giving cover to the civil court command have experienced certain amalgamation over the years. This has happened primarily due to concluding international treaties, such as the Brussels Convention, which provided for jurisdiction and implementation of rulings in maters dealing with civil and commercial issues. This convention was adopted in Brussels on September 27, 1968. Another treaty was the Lugano Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters,[13] which was adopted in the city of Lugano on September 16, 1988 (widely known as the ‘Lugano Convention’). Moreover, proceedings regarding the registered rights to intellectual property will go to court exclusively in the place where registration occurred. This is provided for in the Brussels Regulation on jurisdiction which has served to unify the procedural law in international matters, which are valid for the European Union member states. In any particular dispute, these conventions took priority over the trademark law regulations of individual member states.
Under these conventions, people domiciled in the European Union member states were to be prosecuted in those member states’ courts, without taking their nationality into consideration.[14] For official persons, the domicile place is considered to be within the locality of their constitutional seat, central government, or primary place of conducting business.[15] Under these regulations, any person residing in a given member state, was to be prosecuted in other member states’ courts, given that the gravity of the matter in dispute or the pact between the parties justified this particular measure.[16] If a defendant was not domiciled in a particular member state, then the laws of those particular member states decided whether their courts did have authority to hear a given case.[17] More specifically, courts in a given local jurisdiction were to be directed by the laws and principles in the member state they were located in, in accordance with the Brussels regulations. This was to apply, unless those courts had jurisdictions which were based on extraordinary jurisdiction rules.[18]
Many problems do arise because of the territoriality of trademark rights. First, the marks are territorial in scope hence; different proprietors may possess rights to a similar mark designed for same class of business goods and services, but in different countries. For example, a trader or a firm in State B may use a mark that is similar but separately used by a trader in State C, because each trader initially markets his or her commodities in a single territory. Secondly, a defendant living in State B may decide to exploit in that state a trademark that is applied within the scope of a trademark owner with exclusive rights of that mark in State C but not in State B. This might end up yielding some likelihood of confusion amongst consumers, in case the products of the trader in State B penetrate the market of the trader in State C.
Lastly, one may have a right to utilise a mark in a given country, but not necessarily in another, because of dissimilar ways of resolving trademark validity instead of using the legal basis and differences. Depending on how the consumers interpret that particular trademark, these problems can be resolved through the use of traditional trademark concepts, such as the priority of rights or even the likelihood of confusion when such cases occur. Moreover, substantive rules governing the national trademark laws can be harmonised to minimise costs and chances of uncertainties. Also, mechanisms can be put in place to facilitate trademark registration on the basis of international rules, and lastly, to assert the inviolability of current national boundaries in trademark rights recognition and allowance.
Finally, this paper has elucidated the principle of territoriality of trademarks as applied domestically, internationally and within the European Union. It has discussed the problems and possible ways of resolving them. It is worth mentioning that jurisdiction should not be only based on the accessibility in an area of a product containing a given mark, but also on the legal issues and likelihood of confusion.
Bibliography
Paris Convention available at:
http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P394_63737
Brussels Regulation available at:
http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:41968A0927%2801%29:EN:NOT
Legal information institute (1992): 15 U.S.C. § 1057(c) Certificates of Registration. Jersey publishers.
Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935
Graeme B. Dinwoodie (2004): Trademarks and Territory: Detaching Trademark Law from the Nation-State. Available at: http://works.bepress.com/graeme_dinwoodie/6 Pg 887-896
United States of America Supreme Court Centre (1879): Trademark Cases: 100 U.S. 82 (1879). Available at: http://www.pddoc.com/copyright/trade_mark_cases.htm
Madrid the Madrid Agreement Concerning the International Registration of Marks Protoc June 27, 1989, WIPO Pub. No. 204: available at:
http://www.wipo.int/export/sites/www/madrid/en/legal_texts/pdf/madrid_agreement.pdf
Lugano Convention available at:http://curia.europa.eu/common/recdoc/convention/en/c-textes/lug-idx.htm
Case
GrupoGigante v. Dallo& Co., Inc. 391 F.3d 1088 (9th Cir 2004)
Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916)
Ingenohl Company v. Walter E. Olsen & Company. 273 U.S. 541, 47 S.Ct. 451 (1927)
United Drug Company v. Theodore Rectanus 248 U.S. 90
[1]Graeme B. Dinwoodie:Trademarks and Territory: Detaching Trademark Law from the Nation-State pg 888-892
[2]Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916)
[3]United Drug Company v. Theodore Rectanus 248 U.S. 90 (1918).
[4]U.S Supreme Court Trademark cases 100 U.S. 82 (1879). U.S v. Steffens; Whiteman and Johnson .
[5]15 U.S.C. § 1057(c) Certificates of Registration by Legal Information Institute.
[6]Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935.
[7]GrupoGigante v. Dallo& Co., Inc. 391 F.3d 1088 (9th Cir 2004)
[8]Ingenohl Company v. Walter E. Olsen & Company.273 U.S. 541, 47 S.Ct. 451 (1927)
[9] Paris Convention for the Protection of Industrial Property, July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305
[10]Paris Convention, art. 6bis.
[11] Paris Convention, supra note 3, art. 4.
[12]Protoc June 27, 1989, WIPO Pub. No. 204(E )ol Relating to the Madrid Agreement Concerning the
International Registration of Marks, adopted.
[13]The Lugano Convention II was endorsed in Brussels on March 28, 2007
[14]Art. 2 (1) of the Brussels I Regulation
[15]Art. 60 (1) of the Brussels I Regulation .
[16]Sec. 2-7 Chapter II of the Brussels I Regulation.
[17]Art. 4 of the Brussels I Regulation.
[18]Arts. 90 (1) and (2 (a)) of the Brussels I Regulation
PLACE THIS ORDER OR A SIMILAR ORDER WITH GRADE VALLEY TODAY AND GET AN AMAZING DISCOUNT
The post Territory Of Trade Marks detailed analysis appeared first on Grade Ninjas.
Welcome to originalessaywriters.com, our friendly and experienced essay writers are available 24/7 to complete all your assignments. We offer high-quality academic essays written from scratch to guarantee top grades to all students. All our papers are 100% plagiarism-free and come with a plagiarism report, upon request
Tell Us “Write My Essay for Me” and Relax! You will get an original essay well before your submission deadline.
