On the protection of trademark rights by TRIPS Agr

2022-08-09
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On the protection of trademark rights by TRIPS Agreement

-- also compared with the Paris Convention

key words: trademark rights trips agreement right object right protection discrimination relief

main content: trademark rights are an important part of intellectual property rights. Trips agreement is the most important agreement in the world trade organization, and trademark protection is an important part of intellectual property protection. With the development of economy and world trade, the international protection of trademark rights shows a trend of continuous strengthening. What new changes have taken place in the protection of trademark rights is the focus of this paper

I The status of trademark rights in the TRIPS Agreement

in the TRIPS Agreement, Section 2 of Part II of the agreement makes special provisions on the protection of trademark rights. In terms of style, it lies behind copyright and before geographical indications, industrial product designs and patents. In the Paris Convention for the protection of industrial property rights (hereinafter referred to as the Paris Convention), the protection of all kinds of intellectual property rights is arranged together without sections, and the provisions between different types of rights are not completely separated. Some provisions also put several different property rights together, and it is obvious that trademark rights are located after patents and industrial product designs. In this regard, the author believes that the provisions of the TRIPS Agreement have a clearer logical structure, and the change in the position of trademark rights also reflects the importance of this right in the protection of all intellectual property rights

in terms of content, the TRIPS Agreement is not a complete and independent agreement on the protection of trademark rights. It is a supplementary provision to the Paris Convention on the protection of trademark rights. Article 2 of the agreement expressly stipulates that "with regard to the second, third and fourth parts of this agreement, all members shall abide by Articles 1 to 12 and Article 19 of the Paris Convention (1967)." "All the provisions of parts I to IV of this Agreement shall not derogate from the existing obligations that may be borne by each member party to each other in accordance with the Paris Convention." Since it fully complies with the Paris Convention, it means that the provisions on trademark rights in the TRIPS Agreement will not duplicate or contradict the Paris Convention, that is, the basis for the implementation of the Convention is based on the Paris Convention. However, in view of the different situations between the member countries of the World Trade Organization and the member countries of the Paris Convention, the provisions of the agreement undoubtedly extend the use of the Paris Convention to the non Paris Convention member countries of the world trade organization. In this sense, the provisions of the Paris Convention on the right to trade marks are an integral part of the protection of the right to trade marks in the TRIPS Agreement

in terms of application of principles, in the TRIPS Agreement, trademark protection is not only applicable to the "national treatment principle" and "priority principle", but also applicable to the "most favored nation treatment principle" established in the agreement, which is not included in the Paris Convention and other relevant trademark protection conventions. The "principle of national treatment" allows nationals of member states or nationals of their residences and places of business in Member States to enjoy the treatment of their nationals in trademark protection; The "most favored nation treatment principle" makes the most favored treatment of one member state to another member state quickly spread to other member states. "Priority principle" gives the most favorable international protection to the first registered trademark as far as possible

II. Specific protection and comments of TRIPS Agreement on trademark rights

then, in terms of specific systems and regulations, compared with the Paris Convention, what are the manifestations and differences of TRIPS Agreement on the protection of trademark rights? Through the analysis of the provisions of the TRIPS Agreement, it is mainly shown in the following aspects:

(I) in terms of protectable objects

The TRIPS agreement stipulates that any mark or combination of marks that can distinguish the goods or services of one enterprise from those of other enterprises shall constitute a trademark. In the definition of this concept, the fuzzy provisions in the Paris Convention have been changed, and the main standard in trademark recognition - the identifiability of marks has been clarified. Obviously, the most basic function of trademarks is to distinguish the sources of goods or services, so that different goods or services and different providers of goods or services are not confused. To this end, the agreement also specifically states that if the symbol itself cannot distinguish related goods or services, members can also determine whether it can be registered according to the identifications obtained from its use. That is, when there is no meaningful connection between the mark and the goods or services, the applicant for registration can make the public recognize the goods or services marked by the mark through the use of the trademark, so as to obtain registration. At the same time, taking into account the current situation of most countries, the agreement does not impose mandatory requirements on the scope of trademark objects, but allows countries to "visually perceptible" as a registration condition, mastering a certain degree of flexibility

in terms of the scope of trademark use, the definition of TRIPS agreement extends it to the field of services, and stipulates that service trademarks should be protected the same as commodity trademarks. Compared with the Paris Convention, "the countries of the union should not be required to make provisions on the registration of such trademarks (service trademarks)", for the recognition of service trademarks, the TRIPS Agreement is not freely recognized by each member state, but applies the provisions of commodity trademarks to service trademarks in principle. This means that all Member States are obliged to comply with the provisions applicable to service marks in the TRIPS Agreement. On the contrary, it is not difficult to find that the final revision of the Paris Convention was completed in the 1960s. At this time, the tertiary industry in all countries in the world was not developed, and even in developed countries, it was just in the rising stage. The protection of trademarks was naturally limited to commodity trademarks. The signing of the TRIPS agreement was in the 1990s. The major western countries, especially the United States, which played an important role in the signing of the agreement, have basically completed the adjustment of industrial structure. The service industry accounts for the largest proportion in the national economy. Naturally, the protection of service trademarks also requires further improvement, rising to the same important position as commodity protection

in terms of trademark registration, the new provisions of the agreement contain three important contents: first. Members may decide that the registration of a trademark depends on its use, but shall not take the actual use as a prerequisite for the application for registration, and shall not reject the application simply because the intention to use the trademark has not been realized within 3 years from the date of the application. Its significance is that unused trademarks can also be used for application, as long as they are for use; Whether a trademark can be registered has nothing to do with the effect achieved by its use. It is unfair to refuse to register just because it fails to achieve the purpose of use. II. The nature of goods and services using trademarks should not become an obstacle to trademark registration under any circumstances. This article means that the registration authorities of Member States shall not prevent the application for marking as a trademark due to the conditions of the goods or services themselves. For example, when goods or services have no internal or external connection with the application mark itself, the application mark can become a trademark of goods or services if it complies with the provisions of the law. Of course, according to the basic principles of the civil law, the goods or services here should be understood as allowed by the law and public order and good customs. Otherwise, the goods and services themselves are not allowed by the law. What about trademark registration? III. It stipulates the announcement before and after trademark registration and provides a reasonable opportunity to cancel the registration and raise objections. This clause carries on the remedies of the Paris Convention for unauthorized agents or representatives who apply for registered trademarks to infringe the interests of the real owner, and expands its application to prevent and remedy other acts harmful to the interests of the real owner, such as malicious registration. At the same time, the principle of independence of trademark registration is naturally inherited due to the observance of the Paris Convention

(II) protection of the right itself

the TRIPS Agreement defines trademark rights as exclusive rights of trademarks, which are different from and similar to ownership rights. The emphasis on "proprietary" means that it can not enjoy the right through the possession of specific tangible objects like ownership, which means that it is not possible to enjoy the right of trademark after owning the trademark, and its right can only be monopolized by the applicant for registration or the transferee. It is similar to ownership, which means that its owner can use, benefit and dispose of its trademark exclusive right like exercising ownership, and eliminate the obstruction of others. Especially for the disposal of trademark rights, the agreement restricts compulsory licensing - "members can determine the licensing and transfer conditions of trademarks", but "compulsory trademark licensing system shall not be adopted" and the obligee shall be given the freedom of independent transfer, which is also the confirmation of the first part of the agreement "intellectual property rights are private rights"

in addition, for well-known trademarks, because they contain more intangible properties such as business labor and goodwill of trademark owners, and also condense good control functions, they have become the cause of fault, and more consumers trust them. Therefore, various international conventions implement special protection for them. And because the protection of well-known trademarks often involves the interests of national industries in various countries, countries often adopt practices that are conducive to their own trademarks, especially in the recognition of well-known trademarks. The recognition of well-known trademarks in the Paris Convention only generally stipulates that they should be recognized by the competent authorities of the country of registration or the country of use, which inevitably leads to different standards. In this regard, although the TRIPS agreement fails to give a unified standard, it stipulates that the recognition of well-known trademarks "should take into account the degree of public awareness of the well-known trademarks, including the degree of public awareness caused by the publicity of the trademark in the member territory". Obviously, this standard is proposed as a standard that Member States must comply with, which greatly reduces the uncertainty in the recognition of well-known trademarks. In addition, in terms of trademark confirmation, the TRIPS Agreement adds the provision of providing judicial or quasi judicial review opportunities. Although this provision may not fundamentally solve the problem, after all, it provides an additional remedy for the parties

in the degree of right protection. The TRIPS agreement gives the definition of counterfeit trademark. As long as a trademark that is the same as a valid registered trademark is used, or a trademark whose substantive part is indistinguishable from a valid registered trademark is used, it constitutes a counterfeit trademark and should bear the corresponding civil, administrative and even criminal responsibilities. The protection of well-known trademarks is further strengthened: first, well-known trademarks can be protected without registration, and they are protected according to higher standards than ordinary trademarks. Secondly, the "cross category" protection of well-known trademarks not only includes the protection of the same or similar goods or services, but also extends to non similar goods or services, which is stronger than any previous convention. The reason is that in today's world, the diversification of enterprise operations has become a trend, and the capital flow is extremely active. Even on goods or services that are different from the goods or services marked by the original trademark, it is still enough to make consumers misunderstand, causing harm to the dilution of the original well-known trademark. Therefore, it is absolutely necessary for the TRIPS agreement to report the results obtained and other provisions to strengthen protection

on the other hand, in terms of investigating infringement, the system design of TRIPS Agreement is also more complete, with a complete set of civil, administrative and judicial relief procedures, including the strict protection of criminal procedures: "all members should provide criminal procedures and criminal procedures

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