There are various international laws which are applicable to trade marks including:
- The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957) (“the Nice Agreement”)
The Nice Agreement provides an international system of classification of goods and services, known as the Nice Classification, which is applied in various jurisdictions around the world including Kenya. In countries party to the Nice Agreement, the classification is used to record the classes of goods or services in relation to which a mark is sought or registered.
Challenge
It is not uncommon to find that some IP Offices may consider the similarity of classes as opposed to the similarity of goods/services when determining the likelihood of confusion with respect to two marks.
Solution
There have been various decisions that have affirmed that the NICE Classification serves exclusively administrative purposes and, therefore, goods or services may not be regarded as being similar to each other on ground that they appear in the same class under the NICE Classification, and they may not be regarded as dissimilar from each other on the ground that they appear in different classes under the NICE classification. This makes the classification of goods irrelevant to the question of similarity of goods and services. Additionally, several decisions have established the factors to be considered in determining similarity of goods/ services including: the respective uses and users of the goods/ services; the respective trade channels through which the goods/ services reach the market and in the case of items that would for example usually be found in supermarkets, whether they are, or are likely to be found on the same or different shelves. Therefore, this gives trade mark owners the basis of challenging any decisions in which the similarity of classes has been considered as opposed to the similarity of goods/services.
- The Paris Convention for the Protection of Industrial Property, 1883 (“Paris Convention”) and The Agreement on Trade-Related Aspects of Intellectual Property Rights 1994, (“TRIPS Agreement”)
Article 6bis of the Paris Convention and Article 16 of the TRIPS Agreement contain provisions regarding the protection of well-known marks.
Challenges
There appears to be a lack of consistency in various jurisdictions with regard to the protection of “well-known” marks including the imposition of use requirements within a particular jurisdiction and requiring that the mark be well-known by the public at large. These requirements are contrary to the guidelines contained in the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks; specifically Article 2(3). Additionally, many countries apply different and conflicting criteria in determining what factors should be used to evaluate awareness/notoriety of a mark.
Solution
Given the changes in business and consumer trends, it has become necessary to recognize additional factors that may be relevant in making a determination on whether a mark is well-known including online presence across market segments, social media presence as well as foreign and domestic traditional and non-traditional press.
- The Madrid Agreement Concerning the International Registration of Marks, 1891 (“Madrid Agreement”) and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 1989 (“Madrid Protocol”)
The Madrid Agreement and the Madrid Protocol govern the Madrid System for the International Registration of Marks. The system makes it possible to protect a mark in several countries by obtaining a single international registration that has effect in each of the designated contracting parties.
Challenge
When filing an international trade mark application, an applicant must have, or have applied for, a national or regional trademark registration (known as a “basic mark” or “basic application/registration”) through the applicant’s IP Office (“Office of Origin”). The protection resulting from the international registration is dependent upon the basic application for a period of five (5) years after filing. Therefore, if a basic application is refused or withdrawn within five (5) years from the date of the international registration, the international registration will also be cancelled; and the protection in the designated territories would be nullified.
Solution
Where an international registration is cancelled at the request of the Office of Origin, it is possible for the holder/applicant to secure continued protection in the territories previously covered by the international registration, by applying for national or regional protection directly before the Offices of those previously designated territories. Applicants would be able to secure this continued protection before IP Offices that have implemented provisions allowing for this transformation procedure.
The minimum requirements for a transformation application are:
- the application must be filed within three (3) months from the date of the recording of the cancellation of the international registration in the International Register;
- the goods and services listed in the application must be covered by the list of goods and services of the international registration in respect of the designated territory concerned; and
- the application must comply with the applicable national or regional requirements set out in the law of the designated territory, including requirements for address for service or local representation and payment of the requisite fees.
Please contact us at info@cfllegal.com should you require further information.
