Trans Pacific Partnership IP Chapter – Trademarks, Thoughts on Geographical Indications

It appears that an October 5, 2015 version of the Trans Pacific Partnership (TPP) Intellectual Property (IP) Chapter is now available on WikiLeaks.  This article includes the entire text of the WikiLeaks-referenced TPP Section C: Trademarks. This article offers accompanying commentary together on the TPP’s trademark provisions together with thoughts on portions of the TPP text regarding Geographical Indications (GIs).

Section C: Trademarks

Article QQ.C.1: {Types of Signs Registrable as Trademarks}

No Party may require, as a condition of registration, that a sign be visually perceptible, nor may a Party deny registration of a trademark solely on the ground that the sign of which it is composed is a sound. Additionally, each Party shall make best efforts to register scent marks. A Party may require a concise and accurate description, or graphical representation, or both, as applicable, of the trademark.

What this means:  Mark owners will not have to fight the threshold “eligible subject matter” fight for non-visual marks.  TPP provides a broad definition of eligible subject matter by prohibiting Parties from requiring that signs be visual perceptible. In other words, so-called “non-traditional” marks such as sound and scent, must be considered eligible for registration as a trademark.  

Article QQ.C.2: {Collective and Certification Marks}

Each Party shall provide that trademarks shall include collective marks and certification marks. A Party is not obligated to treat certification marks as a separate category in its domestic law, provided that such marks are protected. Each Party shall also provide that signs that may serve as geographical indications are capable of protection under its trademark system¹².

What this means:  For U.S. owners in particular, GIs protected under a trademark regime can be used for extension of protection in TPP Parties.  This is a significant benefit since many World Trade Organization (WTO) Members have separate GI systems which do not accept trademark registrations (including collective or certification marks) as a basis for extension of protection as a GI.

For TPP Parties, this language also means, explicitly, that they do not have to set up a separate, expensive GI system to protect GIs.  Instead, they can use their existing trademark system to accommodate GIs.

Footnote 12 limits the definition of “Geographical Indication” to goods.  However, it makes clear that a “Geographical Indication” can be a sign or combination of signs, not merely a word or – even more specifically – a geographic place name, as some countries have argued.  So, despite the limitation to “goods,” the TPP language ensures that Parties must extend protection to GIs may incorporate or consist solely of designs or other source-identifying signs.

Article QQ.C.3: {Use of Identical or Similar Signs}

Each Party shall provide that the owner of a registered trademark shall have the exclusive right to prevent third parties not having the owner’s consent from using in the course of trade identical or similar signs, including subsequent geographical indications,^{13, 14} for goods or services that are related to those goods or services in respect of which the owner’s trademark is registered, where such use would result in a likelihood of confusion. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.

What this means:  Trademark owners can breathe a sigh of relief that their rights won’t be “claim jumped” by a later-in-time assertion of rights in a GI. With specific reference to geographical indications, the TPP provisions are a significant international step in the treatment of GIs as private intellectual property rights – not supranational monoliths bartered among governments. Although the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), of which GIs are a part, makes clear that intellectual property rights are private rights, not all WTO members treat GIs this way. For some WTO members, GIs are “super rights” which dominate trademarks – even when a GI comes into being later in time. Further, for some WTO members, GIs may only be enforced or challenged at a government-to-government level, and can never become generic. The TPP text on both trademarks and geographical indications offers perspective and balance, treating trademarks and GIs as private intellectual property rights for all aspects of right acquisition, maintenance, challenge, and enforcement.

Article QQ.C.4: {Exceptions}

Each Party may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interest of the owner of the trademark and of third parties ¹⁵.

What this means: Standard language, right out of Article 17 of the TRIPs Agreement. As an aside, TPP countries Malaysia, Peru, and Vietnam are WTO members but have not yet formally accepted a TRIPs amendment on patents and public health.

Article QQ.C.5: {Well Known Trademarks}

1. No Party may require as a condition for determining that a trademark is well-known that the trademark has been registered in the Party or in another jurisdiction, included on a list of well-known trademarks, or given prior recognition as a well-known trademark.
2. Article 6bis of the Paris Convention for the Protection of Industrial Property (1967) shall apply, mutatis mutandis, to goods or services that are not identical or similar to those identified by a well-known trademark,¹⁶ whether registered or not, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the trademark, and provided that the interests of the owner of the trademark are likely to be damaged by such use.
3. Each Party recognizes the importance of the Joint Recommendation Concerning

Provisions on the Protection of Well-Known Marks (1999) as adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO.

4. Each Party shall provide for appropriate measures to refuse the application or cancel the registration and prohibit the use of a trademark that is identical or similar to a well-known trademark,¹⁷ for identical or similar goods or services, if the use of that trademark is likely to cause confusion with the prior well known trademark. A Party may also provide such measures inter alia in cases in which the subsequent trademark is likely to deceive.

What this means: The referenced World Intellectual Property Organization (WIPO) Joint Recommendation should provide useful guidance in determining if a mark is well-known. Since the Joint Recommendation includes concepts of dilution, passing off, and bad faith, as well as conflict with business identifiers and domain names, owners of well-known (or famous) marks should find this TPP provision adequate.

Article QQ.C.6: {Examination, Opposition and Cancellation / Procedural Aspects}

Each Party shall provide a system for the examination and registration of trademarks which shall include, inter alia:

(a) providing to the applicant a communication in writing, which may be electronic, of the reasons for any refusal to register a trademark;

(b) providing the opportunity for the applicant to respond to communications from the competent authorities, to contest an initial refusal, and to appeal judicially any final refusal to register a trademark;

(c) providing an opportunity to oppose the registration of a trademark or to seek cancellation¹⁸ of a trademark; and

(d) requiring that administrative decisions in opposition and cancellation proceedings be reasoned and in writing. Written decisions may be provided electronically.

What this means: More transparency and accountability in trademark prosecution matters.  If a Party does not have or chooses not to create a pre-registration opposition procedure, they must provide a similar cancellation procedure.

Article QQ.C.7: {Electronic Trademarks System}

Each Party shall provide:

(a)    a system for the electronic application for, and maintenance of, trademarks; and

(b)    a publicly available electronic information system, including an online database, of trademark applications and of registered trademarks.

What this means:  All Parties must permit electronic filing and electronic search.  It’s not clear whether the “electronic application and maintenance” system must be Internet based since it does not use the term “online.”  “Online” is used to modify the type of database of trademark applications and registered marks which must be available.  To the degree it is difficult now to apply for marks and search pending or registered marks, this language should significantly reduce barriers.

Article QQ.C.8: {Classification of Goods and Services}

Each Party shall adopt or maintain a trademark classification system that is consistent with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) of June 15, 1957, as revised and amended. Each Party shall provide that:

(a) registrations and the publications of applications indicate the goods and services by their names, grouped according to the classes established by the Nice Classification¹⁹; and

(b) goods or services may not be considered as being similar to each other on the ground that, in any registration or publication, they are classified in the same class of the Nice Classification. Conversely, each Party shall provide that goods or services may not be considered as being dissimilar from each other on the ground that, in any registration or publication, they are classified in different classes of the Nice Classification.

What this means: Requires use of the Nice Classification (June 15, 1957, as revised and amended.) However, Parties may not use Nice Classification as a per se standard for determining likelihood of confusion. Thus, consistent with the TPP’s Article C.6, any refusals based on similarity of the goods or services will have to provide reasoning beyond a pat statement that the goods/services are in the same class and vice versa, with that reasoning committed to writing.

Article QQ.C.9: {Term of Protection for Trademarks}

Each Party shall provide that initial registration and each renewal of registration of a trademark shall be for a term of no less than 10 years.

What this means: The international standard for trademark registration terms are moving in the direction of 10 years. Article 18 of the TRIPs Agreement sets the minimum trademark registration term at 7 years.

Article QQ.C.10: {Non-recordal of a license}

No Party may require recordal of trademark licenses: to establish the validity of the license; or as a condition for use of a trademark by a licensee, to be deemed to constitute use by the holder in proceedings relating to the acquisition, maintenance and enforcement of trademarks.

What this means: This language gets Parties out of the business of using license recordation (or lack thereof) as a proxy for validity. The Article C.10 language should eliminate one species of challenge encountered by legitimate rights holders in enforcement proceedings.

Article QQ.C.11: There does not appear to be a numbered Article C.11. It is unclear whether this is merely a technical omission (likely) or whether there exists a super-secret Article C.11!

Article QQ.C.12: {Domain Name Cybersquatting}

1. In connection with each Party’s system for the management of its country-code top-level domain (ccTLD) domain names, the following shall be available:

(a)    an appropriate procedure for the settlement of disputes, based on, or modelled along the same lines as, the principles established in the Uniform Domain-Name Dispute-Resolution Policy, or that is: (i) designed to resolve disputes expeditiously and at low cost, (ii) fair and equitable, (iii) not overly burdensome, and (iv) does not preclude resort to court litigation; and

(b)    online public access to a reliable and accurate database of contact information concerning domain-name registrants; in accordance with each Party’s laws and, where applicable, relevant administrator policies regarding protection of privacy and personal data.

2. In connection with each Party’s system for the management of ccTLD domain names, appropriate remedies²⁰, shall be available, at least in cases where a person registers or holds, with a bad faith intent to profit, a domain name that is identical or confusingly similar to a trademark^.

What this means:  Each Party must provide a dispute-settlement procedures for its ccTLD system which is based on or modeled along the same lines as the Uniform Domain Name Dispute Resolution Policy OR is designed to resolve disputes expeditiously and at low cost, is fair and equitable, not overly burdensome, and does not preclude resort to court litigation.

The information above is brief and addresses and only Section C on Trademarks.  The TPP’s other IP Sections, based on the WikiLeaks document, are:

• Section A– General Provisions.
• Section B– Cooperation.
• Section D– Geographical Indications.  Article QQ.D.2(a) is quite important:  it requires Parties to accept applications for protection without requiring intercession by a Party on behalf of its nationals.  Certain current GI regimes don’t treat GIs as individual intellectual property rights, even though – if they are WTO members to whom TRIPs provisions apply – they’re supposed to.  In those regimes, rights owners have to play “Mother May I?” and get their government to submit a request for GI protection.
• Section E– Patents and Undisclosed Test or Other Data.
• Section F– Industrial Designs.
• Section G– Copyrights and Related Rights.
• Section H– Enforcement. Section H is quite far-reaching in its subject matter and merits special study by itself.
• Section I– Internet Service Providers, again meriting special attention.
• Section J – Final Provisions, including transition periods for various TPP Parties.

TPP Parties are:

• • Australia
  • Brunei
  • Canada
  • Chile
  • Japan
  • Malaysia
  • Mexico
  • New Zealand
  • Peru
  • Singapore
  • United States
  • Vietnam

Closing thoughts: If the referenced TPP text is close to the final text, it is well worth reading now.  In fact, this text may not come as a surprise to readers who have been involved in working with one or more TPP governments throughout the negotiating process.  From the trademark owner’s perspective, the TPP’s trademark and geographical indications wording seems to offer protection for trademarks and geographical indications in a manner which promotes greater uniformity – and therefore certainty – in prosecution and litigation proceedings among TPP signatories.

¹² For purposes of this Chapter, geographical indication means indications that identify a good as originating in the territory of a party, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin. Consistent with this definition, any sign or combination of signs shall be eligible for protection under one or more of the legal means for protecting GIs, or a combination of such means. {Chair’s note: address placement in legal scrub.}

¹³ For greater certainty, the exclusive right in this Article applies to cases of unauthorized use of geographical indications with goods for which the trademark is registered, where the use of that geographical indication in the course of trade would result in a likelihood of confusion as to source of the goods.

¹⁴ For greater certainty, the Parties understand that Article QQ.C.3 should not be interpreted to affect their rights and obligations under articles 22 and 23 of the TRIPs Agreement.

¹⁵ Where a Party determines whether a mark is well-known in the Party, the Party need not require that the reputation of the trademark extend beyond the sector of the public that normally deals with the relevant goods or services.

¹⁶ It is understood that such a well-known trademark is one that was already well-known before the registration or use of the first-mentioned trademark.

¹⁷ Drafter’s note: For greater certainty, the Parties understand that Article QQ.C.4 applies to provisions relating to rights conferred by trademarks in this Chapter.

¹⁸ For greater certainty, cancellation for purposes of this Section may be implemented through nullity or revocation proceedings.

¹⁹ Parties that rely on translations of the Nice Classification are required to follow updated versions of the Nice Classification to the extent that official translations have been issued and published.

²⁰ It is understood that such remedies may but need not include, for example, revocation, cancellation, transfer, damages, or injunctive relief.