use - a useful concept in trade mark law – comparing vietnamese, eu and us law

Joint Swedish-Vietnamese
Master’s Programme
MASTER’S THESIS
“Use”- A Useful Concept in
Trade Mark Law
Comparing Vietnamese, EU and US law.
SUPERVISORS:
Han Henrik Lidgard
Pham Van Tuyet

Preface and Acknowledgements
A trade mark is not a concrete product as such but it is important to an undertaking
wishing to enter the market and improve his reputation there. In fact, a trade mark is
a type of intellectual property right and one which is infringed more easily than
others; the protection of trade marks has both a national and global scope. In order to
be protected, trade marks must satisfy certain requirements. In general,
distinctiveness is the most essential of these requirements and is normally inherent in
a good trademark, but distinctiveness can also be acquired through use. Use is a
complicated but very useful concept in trade mark law. This issue is treated in many
countries but remains vague in Vietnamese legislation. I think the topic is very
interesting and I decided to choose it for my master thesis.
I would like to express my heartfelt gratitude to my supervisors, Pro. Han Henrik
Lidgard and Dr. Pham Van Tuyet who supported me, made valuable comments and
gave me precious advices to improve my paper.
I am grateful to Dr. Christoffer Wong for his guidance and help during my course.
I would also express my special thanks to the professors in the Law faculty of Lund
University and the professors of Ha Noi Law University for sharing their knowledge
with me.
I would like to express my sincere thankfulness to my friends and my colleagues
for their warm support, help and love.
Finally, I am grateful to my parents, husband and children who encouraged me

throughout my studies and my work on this paper.
Even if I tried my best, my thesis contains many shortcomings. I would be grateful
for any further comments and suggestions regarding my thesis.
1
Table of Contents
Preface and Acknowledgements 1
Table of Contents 2
Abbreviations 4
Executive Summary 5
1.
1.1
1.2
1.3
1.4
1.5
1.6
2.
2.1
2.1.1
2.1.2
2.1.3
2.1.4
2.1.5
2.2
2.2.1
2.2.2
2.2.3
2.3
2.3.1
2.3.2

2.3.3
3.
3.1
3.1.1
3.1.2
3.2
3.2.1
3.2.2
3.3
3.3.1
3.3.2
3.4
3.4.1
3.4.2
Introduction 7
Rationale 7
Purpose and Research Questions 7
Method 8
Delimitation 8
Research Sources 8
Main Content 8
Some Issues Relating to Trade Marks and Distinctiveness 9
Definition of Trade Mark under International and National Law 9
International Law 9
Vietnamese Law 10
EU Law 10
US Trademarks Law 13
Brief Conclusion 14
International Agreements Regulating Trade Marks 15
The Paris Convention 15

The Madrid System 16
TRIPs 17
Distinctiveness as a Requirement for Registration 19
The Notion of Distinctiveness in Trade Mark Law 19
Determining Distinctiveness 19
Distinctiveness under National Trade Mark Law 20
Acquiring Distinctiveness through Use 29
The Notion of Use in Trade Mark Law and the Importance of Use. 29
The Notion of Use in Trade Mark Law 29
The Importance of Trade Mark Use 30
Acquiring Distinctiveness Through Use in Vietnam 31
Elements Making a Trade Mark Distinctive Through Use 31
Certain Trade Marks can Never Acquire Distinctiveness through Use 33
Acquiring Distinctiveness in the EU 34
Elements Making a Trade Mark Distinctive Through Use 34
Certain Trade Marks Can Never Acquire Distinctiveness through Use . 39
Acquiring Distinctiveness in US 42
Secondary Meaning and Descriptiveness 42
Elements Making a Trade Mark Distinctive Through Use 44
2
3.4.3
4.
4.1
4.2
4.3
4.4
5.
Certain Trade Marks can Never Acquire Distinctiveness Through Use . 46
Comparative Analysis and some Guidance for Vietnamese IP Law 47
The Definition of Trade Mark 47

Signs can Acquired Distinctiveness Through Use 47
Elements Making Trade Mark Distinctive Through Use and Examining
Distinctiveness 49
Certain Trade Mark Can Never Acquired Distinctiveness Through Use 50
Conclusion 51
Table of Statutes and other Legal
Instruments 52
International Treaties and
Conventions 52
National
Legislations
52
Vietnam 52
European
Union
52
United State of
America
53
Table of
Cases
53
Bibliography
55
Monographs
55
Articles in Journals, Anthologies
etc. 55
Internet
Resources

55
Official Reports and other
Documents 56
Abbreviations
Art.
BoA
CFI
ECJ
EU
Ibid.
IP
IR
No.
NOIP
OHIM
TMEP
US
Article
Boad of Apeal
The Court of First Instance
The European Court of Justice
European Union
Ibiden
Intellectual property
Commission Regulation (EC)No.40/94 No. 2868/95
Number
Nation Office of Intellectual Property of Vietnam
The Office for Harmonisation in the Internal Market
Trademark Manual of Examining Procedure
United States of America

4
Executive Summary
The essential function of a trade mark is to distinguish one undertaking and/or its
products from the products of another. Distinctiveness is a central criterion during
the registration process. Distinctiveness may arise in two ways: inherent
distinctiveness or distinctiveness through use. The thesis investigates how
trademarks acquire distinctiveness through use.
The concept of “use” is fundamental to trade mark law in many countries. Is the
concept always understood in the same way?
In my country, Vietnam, this issue is regulated by Intellectual property law but the
notion of “use” remains vague and unexplained. Therefore, I want to compare
Vietnamese, EU and US law on how trade marks may become distinctive through
use and draw conclusions as to how Vietnam can improve its legislation. I chose EU
and US law because they are developed regions with a long tradition of trade mark
law and development.
In this thesis, I use various methods to deal with my subject. A descriptive,
traditional legal method will be used to analyse regulations, doctrines and cases in
Vietnamese, EU and US trade mark law with the focus always on how trademarks
may become distinctive through use.
An analytical and comparative method is used to compare Vietnamese law, EU
law and US law. I also use the synthetic method to give opinions and brief
conclusions on each issue.
The thesis will only investigate how trade marks may become distinctive through
use and what elements make trade marks without any inherent distinctive character
gain such distinctiveness. In addition, the thesis only deals with Vietnamese,
European Community and US trade mark legislation
The thesis is divided into 5 parts:
In the first part, there are some general remarks concerning the rationale for the
choice of topic and the methods used for researching and delimiting it.
In the second part, certain general trade mark issues are reviewed. I refer to

international agreements in order to underline that trade marks are important not only
in each nation but also throughout the world. In this part, a definition of trade mark is
given and distinctive character is emphasized as a requirement for registration.
5
In part 3, the thesis will investigate how trade marks acquire distinctiveness
through use in Vietnam, the EU and the US. Based on statutes, doctrine and cases, I
will focus on how signs can acquire distinctiveness through use and while certain
trade marks can never acquire distinctiveness in this way.
Part 4 is a comparative analysis of the issues mentioned in chapter 2, contrasting
separately Vietnam - EU, Vietnam - US and EU – US. I will investigate similarities
and differences between each of these pairs and give some suggestions for improving
Vietnamese legislation
In part 5, I will draw some brief general conclusions.
6
1.
1.1
Introduction
Rationale
Intellectual property plays an important role in the
industrial development process.
Director General Arpad Bogsch introduced the World
Intellectual Property
Organization Conference at the Louvre, Paris on June 1-3,
19941 and said that:
Intellectual Property’s prime aim is the recognition of the moral
and economic
value of intellectual creation in the cultural, social and
economic development of
nations.
Trade mark is one of area of intellectual property. As we

know, a trade mark is not a
product but it has great significance in commerce. The
essential function of the mark
is to distinguish one undertaking and/or its products from
the products of another. It
can give the consumer a guarantee of the identity and
quality of a product. This
distinctive function is the main condition for registration.
It is impossible to accept all signs that undertakings
register as trademarks. There
are many grounds for refusal, including a lack of
distinctiveness. However, a trade
mark may become distinctive through use. What is “use”?
What elements make
unregistered trade marks, which do not otherwise meet
distinctiveness requirements,
become distinctive through use?
The notion of “use” in trade mark law is regulated in
many countries but often in
different ways. Vietnamese law does attempt to regulate it,
but the notion remains
vague and unexplained. Investigating Vietnamese law by
comparing it to EU and US
law is interesting. My master thesis thus deals with “Use”-
A useful concept in
trade mark law – Comparing Vietnamese, EU and US
law”
1.2
Purpose
and

Research Questions
The purpose of
the thesis is to
compare
Vietnamese, EU
and US law on
how trade
marks may
become
distinctive
through use and
to draw
conclusions as to
how
Vietnam can
improve its
legislation.
The research
questions are:
-
-
-
How do trade marks acquire
distinctiveness through use?
Which trade marks can never
acquire distinctiveness
through use?
How to improve Vietnamese
law on this issue?
Trittion. G

(2002), p.3.
7
1.3
Method
A descriptive, traditional legal method will be used to
analyse regulations,
doctrines and cases in Vietnamese and the EU and US
trade mark law with the focus
always on how trademarks may become distinctive
through use. Source for my work
will be trade mark legislation case law and legal theories,
opinions and commentaries
Because this is a work which refers to the relevant
position in several countries,
an analytical and comparative method is used to compare
Vietnamese law, EU law
and US law regarding how trade marks may acquire
distinctiveness through use.
Based on the factual presentation and the analytical
comparison, the author will use a
synthetic method to give her opinions and brief
conclusions on each issue.
1.4
Delimitation
Distinctiveness may arise in two ways: “inherent
distinctiveness” or “acquiring
distinctiveness through use”. The thesis only investigates
how trade marks acquire
distinctiveness through use.
The thesis also only deals with Vietnamese, European

Community and US trade
mark law. The reason for my selection of the two areas of
comparison is that they are
two distinct legal systems with different approaches while
both of them have a long
tradition in and experience of trade mark law.
1.5
1.6
-
-
-
Research Sources
Trade mark legislation in Viet Nam, EU, US
Cases
Legal theories, articles, opinions, commentaries…
Main Content
Part 1:
Introduction
Part 2: Some
issues relating to
trade marks and
distinctiveness
Part 3: Acquiring
distinctiveness
through use
Part 4:
Comparative
analysis and
some guidance
for Vietnamese

IP law
Part 5:
Conclusion
8
2.
2.1
2.1.1
Some Issues Relating to Trade Marks and
Distinctiveness
Definition of Trade Mark under International and
National Law∗
International Law
Owing to the importance of trade marks, there are many
international agreements in
the trade mark field. They include the Paris Convention,
the Madrid system and
TRIPs which all have members from all over the world.
None of these Agreements
have however defined the concept “trade mark” except for
TRIPs.
Art. 15 of TRIPs stated:
Any sign, or any combination of signs, capable of
distinguishing the goods or
services of one undertaking from those of other undertakings,
shall be capable of
constituting a trademark. Such signs, in particular words
including personal names,
letters, numerals, figurative elements and combinations of
colours as well as any
combination of such signs, shall be eligible for registration as

trademarks. Where
signs are not inherently capable of distinguishing the relevant
goods or services,
Members may make registrability depend on distinctiveness
acquired through use.
Members may require, as a condition of registration, that signs
be visually
perceptible.
From this, it seems that three points are relevant and will
need to be considered:
Firstly, a trademark consists of any sign, or any
combination of signs. Such signs
which can be trade marks are words including personal
names, letters, numerals,
figurative elements and combinations of colours as well as
any combination of such
signs;
Secondly, such signs may be visually perceptible or any
s
i
g
n
s

w
h
i
c
h

s
h
a
l
l

b
e
eli
gib
le
for
reg
istr
ati
on
as
tra
de
ma
rks
;
T
h
i
r
d
l
y
,

s
u
c
h

s
i
g
n
s which are
capable of
distinguishin
g the goods
or services
of
one
undertaki
ng from
those of
other
undertaki
ngs.
In brief,
the basic
notion of
the trade
mark
under
internatio

nal law is
general
and
flexible.
Members
can
provide
their own
definition
based on
their
social and
economic
needs.
∗
Ref
ere
nce
s to
tra
de
ma
rks
incl
ude
ser
vic
e
ma
rks

unl
ess otherwise stated.
2.1.2
Vietnamese Law
Vietnam is a member of the major international trade
mark treaties including the
Paris Convention and the Madrid International Trade
Mark Registration System
(Madrid Agreement and Madrid Protocol).
In the past, intellectual property rights in Vietnam
were governed by various
codes, decrees and circulars, as well as by internal
regulations issued by the NOIP.
The new IP law was promulgated in late 2005 and
came into effect in July 20062.
There is no provision of Vietnamese law which
gives a definition of “trade mark”.
In the IP law, some help is to be found in the section
on the interpretation of
terminologies (Art4 (16)). According to this, a trade
mark is “any sign used to
distinguish goods or services of different organizations
and individuals”. However,
not all signs can seek protection as trade marks. There
are general requirements for
marks to be eligible for protection under Art 72, which
provides that:
“A mark shall be eligible for protection if it meets the
following conditions:
To be a visible sign in the form of letters, words, pictures,

figures, including three-
dimensional figures or a combination thereof, represented
in one or more colours;
To be capable of distinguishing goods or services of the
mark owners from those of
others”
From this, a sign may only become a trade mark if it
satisfies two conditions. The
first is that it is a “visible sign”. This condition is
narrower than the provision in
TRIPs on “any signs”. This mean that, smell signs and
sound signs cannot be
registered as a trade mark under Vietnamese law. The
second, “capable of
distinguishing” is a compulsory condition for a trade
mark. This also serves the main
function of a trade mark. This character is to be found
in international
agreements on
trade marks and in
the laws of other
countries.
2.1.3
EU Law
A trade mark
definition under EU
law is to be found in
Directive No.89/1043
and
Regulation No

40/94.4 In order to be
capable of
registration, a mark
must fall within
the definition of a
trade mark as set out
in Art.2 of Directive
89/104 and Art.4 of
the
The Law on Intellectual property was
approved by the Vietnamese Parliament
in 29 November,
2005. Law
No.50/2005/QH11,
legislature XI, Session 8,
came into force in 1 July
2006.
First Council Directive 89/104/EEC of
December 21st 1988 approximating the
laws of the
Member States relating
to trade mark.
Council Regulation (EC) No40/94 of 20
December 1993 on the Community trade
mark.
10
Regulation No.40/94. The article is entitled “Signs of which a trade mark may
consist” and provides:
A community trade mark may consist of any signs capable of being represented
graphically, particularly words, including personal names, designs, letters,

numerals, the shape of goods or their packaging, provided that such signs are
capable of distinguishing the goods or services of one undertaking from those of
other undertaking.
This contains three basis requirements. To qualify a trade mark, the candidate must
be (1) a sign which (2) is capable of being represented graphically and which (3) is
capable of distinguishing the goods and services of one undertaking from those of
other undertakings.
The word “sign” in this context is understood to be very wide and makes the
definition of trade mark “flexible and open-ended”5. Although Art.4 of the
Regulation No.40/94 gives a list of signs, i.e., words including personal names,
designs, letters, numerals, or the shape of goods or their packaging, they are not an
exhaustive list. These signs are merely the ones most frequently used by
undertakings to identify their goods or services. In fact, there are many unusual signs
which do not fall within this list but are still registered by the competent authority.
Although not specifically stated, “sign” in this broad definition could include
slogans, sounds, smell and gestures. As the Board of Appeal at the OHIM said, the
notion of a sign “is to be interpreted as a very broad, open and general term
encompassing all conceivable types of marks (including, for example, sound marks
and three-dimensional marks)”.6
Nonetheless, in order to be registered, the sign must be “capable of being
represented graphically”. The purpose of its character is to show what the trade mark
is. In other words, it must be possible to understand the sign and a trade mark must
be perceivable by consumers through one, or even more, of the five senses. In recent
years, the issue of graphical representation has become the focus of attention in
relation to smell, sound and colour marks. For example, the smell of freshly cut grass
for tennis balls, the sound of NOKIA,7 the sound mark of British Telecom’s beeps on
the speaking clock, the three-dimensional form of the COCACOLA bottle8…
Kitchin, D (2005) p.13
R122/98-3, Wm. Wrinley, para.17
Sandri. S (2003), Non-convention trade marks and community law, p.332, 333

Annard. R, et al (1998), Guide to Community trade mark, p.29.
The requirement of graphic representation is necessary for the following reasons.
The first is to enable publicity to be given to the fact that applicant is seeking
registration. The second reason is to determine the scope of existing trade mark
rights and to allow the owner of earlier marks to check for similar marks in new
applications. The third reason is to make bureaucratic handling, classification and
comparison with other signs more manageable.
How is the phrase “capable of being represented graphically” to be understood?
The basic rules governing representation and the community trade mark are set
out in Rule 3 of the IR.9 This states that if the applicant does not wish to claim any
special graphic feature or colour the mark must be reproduced in normal script, for
example by typing the letters, numerals and signs in the space provided in the
application. The use of small and capital letters is permitted. Paragraph (2) and (3) of
Rule 3 then go on to state that, in other cases the application must indicate this fact
and the mark must be reproduced on a separate sheet of paper. The implication of
Rule 3(1) of the IR is that non-stylised word, numeral and letter marks may simple
be typed or written into the applicant form. However, this could be made clearer on
the OHIM application form, which requires the applicant to represent anything other
than a work mark on the separate sheet and to specify in the application the type of
mark applied for.
Rule 3(3) of IR state that where registration of a three dimensional mark is applied
for the application must indicate this fact. The representation must consist of a
photographic reproduction or a graphic representation of the mark. Up to six
different perspectives may be supplied on the one sheet.
Where registration in colour is applied for the application must indicate this and
indicate the colours making up the mark. The applicant is free to use his own
description of the colours. The reproduction supplied must consist of the colours
applied for.
Rule 3 of the IR gives no guidance on the representation of a sound mark other
than that it must be on a separate sheet of paper. The OHIM Examination

Guidelines10 state that musical notation may be an acceptable form of graphic
representation.
Commission Regulation (EC) No. 2868/95
Examination Guideline, 8.2.
12
There is no mention of the smell/ scent mark in either the IR or the Guidelines 3.7.
Such marks are very difficult to represent, especially as they are not natural smells
and they are often refused registration as trade marks. In Ralf Siekmann, the olfactory
smell was not registered as a trade mark because “the requirements of graphic
representability are not satisfied by a chemical formula, by a description in written
words, by the deposit of an odour sample or by a combination of those elements”.11
A graphic representation was one which utilizes images, lines or characters. In order
to render a sign registrable as a trade mark the graphic representation must be “clear,
precise, self-contained, easily accessible, intelligible, durable and objective”.12
There are many different techniques that applicants may use to represent their
mark graphically. For example, “word marks” are written, device or “figurative”
marks are represented by a picture.13
The basis requirement of a trade mark is that is “capable of distinguishing the
goods and services of one undertaking from those of other undertaking”. This issue
will be examined in part 2.3 of this Chapter.
2.1.4
US Trademarks Law
US trade marks are governed by the provisions of the Lanham Act14. In contrast to
Vietnamese and EU trade mark law, the Lanham Act lays down statutory boundaries
for trademarks and service marks.
According to Sec.1127 Lanham Act, the term “trademark” is explained as follows:
The term "trademark" includes any word, name, symbol, or device, or any
combination thereof -
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to

register on the principal register established by this chapter, to identify and
distinguish his or her goods, including a unique product, from those manufactured
Case C-273/00 [2000] ECRI-11737, Ralf Sieckmann, para. 73
Case C-273/00 [2000] ECRI-11737, Ralf Sieckmann, para. 55
Commission Regulation (EC)No.2868/95, Rule 3(5)
The current federal trademark statute is the Lanham Act of 1946, most recently amended in
1996, and codified in Title 15 of the United States Code. Its purpose is to eliminate unfair competition
in marketing goods and services and to provide the owners of marks with protection against
confusingly similar marks. It covers such areas as when owners of mark are entitled to federal
protection for infringement, the types of protections available and the procedure for registering marks.
It allows for registration of service marks.
or sold by others and to indicate the source of the goods, even if that source is
unknown.
The definition conflates two very different functions of the trade mark: first, to
indicate the source of goods, and second, to distinguish those goods from the goods
of others.
Traditionally, trademark protection in the United States was reserved for marks
that are easily perceived as source identifiers, such as words, names, acronyms,
logos, and graphic symbols. However, it has gradually extended trademark protection
to other categories of marks that are not so easily perceived as source identifiers,
such as product configurations, colors, sounds, scents, motions, and holograms.
Sec.1052 Lanham Act established which marks may qualify for registration on the
Principal Register. Provided that a mark distinguishes its goods from those of others,
there is a presumption in favor of registration unless registration is barred by virtue
of certain specific prohibitions: “No trademark by which the goods of the applicant
may be distinguished from the goods of others shall be refused registration on the
principal register on account of its nature…”.
Thus, any sign which may be distinguished from the goods of others is potentially
a trademark.
2.1.5

Brief Conclusion
Notwithstanding what a trade mark is, that it is“capable of distinguishing” is always
an essential characteristic. No sign will become a trade mark if it does not satisfy
this. The trademark laws of Vietnam, the EU and the US do not provide full
definitions of the term. The notion of trade mark is understood through other
provisions which listed signs, in particular conventional ones, which may be
registered as trade marks. Non-conventional signs (smell, sound, slogan…) were not
well covered by existing law.
Note that Vietnamese law only recognizes “visual signs” while the EU and the US
both accept “any sign” as being capable of being trade marks.
Although there are differences in the understanding of trade marks, in all three
jurisdictions, they serve the same function or purpose. And having a distinctive
feature is always a condition for registration.
14
2.2
2.2.1
International Agreements Regulating Trade Marks
The Paris Convention15
The Paris Convention signed in Paris, France, on March
20, 1883, was one of the
first intellectual property treaties. It can be seen, indeed, as
the “ancestor” of later
conventions in the field. The Convention applies to
industrial property in the widest
sense, including patents, marks, industrial designs, utility
models (a kind of “small
patent” provided for by the laws of some countries), trade
names (designations under
which an industrial or commercial activity is carried on),
geographical indications

(indications of source and appellations of origin) and the
repression of unfair
competition. (Copyright and unregistered designs are
covered by the Bern Copyright
Convention of 1886)
The substantive provisions of the Convention fall into
three main categories:
national treatment, right of priority, common rules.
Under the provisions on national treatment, each
Convention country must grant
the same protection to nationals of the other Convention
countries as it grants to its
own nationals. These provisions also protect nationals of
non-convention countries if
they are domiciled or have a real and effective industrial or
commercial
establishment in a Convention country.
The second important element was establishment of a
right of priority in the case
of patents (and utility models, where they exist), marks
and industrial designs. This
right means that, the applicant who files the first
application in one of the Convention
countries may, within a certain period of time, apply for
protection in any other
Convention country. These later applications will be
regarded as if they had been
file
d
on

the
sa
me
da
y
as
the
firs
t
ap
pli
cat
ion
.
T
h
e

C
o
n
v
e
n
t
i
o
n

l

a
y
s

d
o
w
n

a

f
e
w

c
o
m
m
o
n

r
ules which
all the
Convention
countries
must
follow.
As to

trade
marks
the most
important
common
rule is the
independ
ence of
the trade
mark in
different
member
states.
But there
is no
regulation
of the
condition
s for the
filing and
registratio
n of
marks.
These
issues are
determine
d in each
Conventi
on
country

by
domestic
law.
15
Th
e
Par
is
Co
nve
nti
on
for
the
Pro
tect
ion
of
Ind
ustrial Property was signed on 20 March
1883. It came into effect on 7 March 1884 and has been revised in
Brussels in 1900, in
Washington in 1911, at the Hague in 1925, in London in 1934, in
Lisbon in 1958 and in
Stockholm in 1967; it was last amended in 1979.
In relation to trade marks, the Convention obliges its signatories:
(i)
(ii)
(iii)
(iv)

to protect well-known marks belonging to nationals of Convention
countries (Art 6bis);
to prevent the use and registration of “armorial bearing, flags and
emblems” of Convention countries (Art 6ter);
to provide effective protection against unfair competition (Art 10bis) and;
to accept for registration any trade mark which has been duly registered in
its countries of origin (Art 6quinquies – the so-called “telle-quelle”
obligation)
This Convention provides certain overriding principles with the aim of facilitating
international trade and collaboration. Substantive provisions regarding protection of
intellectual property rights are not covered and nor are the distinctive features of
trade marks.
2.2.2
The Madrid System
The “Madrid system” collectively refers to two separate treaties:
(a) The Madrid Agreement concerning the International Registration of Marks,
which was concluded in 1891, entered into force in 1892 and was last revised
at Stockholm in 1967 (the Madrid Agreement); and
(b) The Protocol Relating to the Madrid Agreement which was adopted in 1989,
entered in force on 1 December 1995 and came to operation on April 1996
(The Madrid Protocol)
Each treaty provides for the international registration of mark for goods and services
and creates what is essentially a filing system.
While the Paris Convention was of some assistance to transnational traders, it
failed to create a mechanism for international applications for marks. However, the
Madrid system provides just such a mechanism. Under these arrangements, after
making a “home registration” or “home application”, an individual or company may
apply to the Bureau of the WIPO for an international registration. The Bureau passes
the application on to relevant national trade mark offices. If the Offices of the
contracting parties do not refuse the application within the time limit given, it is

treated as registered. The simplification of the process of international registration
has obvious advantages for trade mark owners.
The Madrid Agreement built upon the basis tenets of the Paris Convention, and
indeed became part of it, but only for those countries that ratified the new treaty.
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The Madrid protocol makes the Madrid system more attractive to non members.
Similar to the Madrid Agreement, the Madrid Protocol provide for trade mark
registration in several countries through the filing of a single application. However
the Protocol differs from the Agreement in a number of ways.
The advantage for the trade mark owner is that by filing a single application at
one office in one language with one international registration fee paid in one
currency, he can obtain a single registration with one registration number and one
renewal date covering a number of jurisdictions.
The Madrid Protocol attempted to overcome the shortcomings of the Madrid
Agreement by adopting provisions that addressed the concerns voiced against it.
First, unlike the Madrid Agreement, the Madrid Protocol permits international
registration to be based on a national application rather than an existing national
registration.
Second, it provides that if the national registration or application upon which the
international application was based on is cancelled; the owner of the international
registration may convert the international registration into distinct national
applications, while retaining the effective filing date of the original international
registration.
Third, it allows filings in English as well as in French, whereas the Madrid
Agreement, by requiting filing to be in French, presents greater procedural hurdles
for non-francophone countries.
Four, it enables countries to charge fees that cover filing costs under the
international application procedures.
Finally, the Protocol extends the deadlines within which countries have to notify
applicants of the denial of their national applications. Of these innovations, the most

important is that, the Protocol was the first system that provided for a truly
international application system.
In brief, the Madrid system consists of two treaties which only relate to trade
marks and not to other industrial property rights.
2.2.3
TRIPs 16
TRIPs is an international agreement administered by the WTO) that sets down
minimum standards for many forms of intellectual property regulation. It was
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TRIPs is an abbreviation for “Agreement on Trade-Related Aspects of Intellectual Property
Rights”. The TRIPS Agreement is Annex 1C of the Marrakesh Agreement Establishing the World
Trade Organization, signed in Marrakesh, Morocco on 15 April 1994.
negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and
Trade (GATT) in 1994.
The areas of intellectual property that it covers are: copyright and related rights ;
trademarks including service marks; geographical indications; industrial designs;
patents; the layout-designs of integrated circuits; and undisclosed information .
The three main features of the Agreement are:
Standards: This is the first international agreement that sets out the minimum
standards of protection for many forms of intellectual property.
Enforcement. The second main set of provisions deals with domestic procedures
and remedies for the enforcement of intellectual property rights. This is the first
international agreement which lays down certain general principles applicable to all
intellectual property right enforcement procedures. In addition, it contains provisions
on civil and administrative procedures and remedies, provisional measures, special
requirements related to border measures and criminal procedures, which specify, in a
certain amount of detail, the procedures and remedies that must be available so that
right holders can effectively enforce their rights.
Dispute settlement. This is also the first international intellectual property
agreement covering disputes between WTO Members about whether they respect the

TRIPS obligations which are subject to the WTO's dispute settlement procedures.
The TRIPS Agreement is a minimum standards agreement, which allows
Members to provide more extensive protection of intellectual property if they so
wish. Members are left free to determine the appropriate method of implementing the
provisions of the Agreement within their own legal system and practice.
As to trade marks, TRIPs defines the protectable subject matter. For the first time,
there is an international agreement stipulating that registration depends on
distinctiveness acquired through use. “Where signs are not inherently capable of
distinguishing the relevant goods or services, Members may make registrability
depend on distinctiveness acquired through use” (Art15 (1))
In addition, Art 15(3) provides that:
“Member may make registrability depend on use. However, actual use of a trade
mark shall not be a condition for filling an application for registration.”
Basing themselves on TRIPs, many countries adopted this provision in their
domestic law. But the concept of “use” is not explained in the same way in each
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