It is vital to note that despite there are systems which facilitate the filing, registration or application of trademark rights in more than one authority on a regional or global basis (e.g. the Madrid and CTM systems, see further below), it is presently not possible to file and acquire a single trademark record which will automatically apply around the world. Like any national law, trademark laws apply only in their relevant country or authority warning letter, a quality which is sometimes known as “territoriality”.
Agreement on Trade-Related Aspects of Intellectual Property Rights
The natural limitations of the territorial application of trademark laws have been mitigated by various intellectual property treaties, foremost amongst which is the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights. TRIPS sets up legal compatibility between member jurisdictions by requiring the harmonization of applicable laws. For example, Article 15(1) of TRIPS provides a definition for “sign” which is used as or forms part of the definition of “trademark” in the trademark legislation of many authorities around the world.
The Madrid system for the international registration of marks
The principal international system for facilitating the registration of trademarks in multiple jurisdictions is commonly known as the “Madrid system”. Madrid provides a centrally managed system for securing trademark registrations in member jurisdictions by extending the protection of an “international registration” acquired through the World Intellectual Property Organization. This international registration is in turn based upon an application or registration obtained by a trade mark applicant in its home jurisdiction.
The main advantage of the Madrid system is that it permits a trademark owner to obtain trademark protection in many jurisdictions by filing one application in one authority with one set of fees, and make any changes (e.g. changes of name or address) and renew record across all applicable jurisdictions through a single administrative process. Furthermore, the “coverage” of the international record may be extended to additional member authority at any time.
Trademark Law Treaty
The Trademark Law Treaty sets up a system pursuant to which member authority agrees to standardize procedural aspects of the trademark record process. It is not necessarily respective of rules within individual countries.
Well-known trade mark
Well-known trade mark status is commonly issued to famous international trade marks in less-developed legal authorities.
Pursuant to Article 6 bis of the Paris Convention, countries are allowed to grant this status to marks that the relevant authority considers are ‘well known’. In addition to the standard basis for trade mark infringement (same/similar mark applied same/similar goods or services, and a likelihood of confusion), if the mark is considered well known it is an breach to apply the same or a similar mark to dissimilar goods/services where there is confusion, including where it takes unfair advantage of the well-known mark or causing detriment to it.