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P.2.1 Article 6(1) — Trademarks
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P.2.1.1 US — Section 211 Appropriations Act,
paras. 130, 132-133
(WT/DS176/AB/R)
Before examining the text of Article 6quinquies,
we note that the Paris Convention (1967) provides two ways in which a
national of a country of the Paris Union may obtain registration of a
trademark in a country of that Union other than the country of the
applicant’s origin: one way is by registration under Article 6 of the
Paris Convention (1967); the other is by registration under Article 6quinquies
of that same Convention.
…
Article 6(1) states the general rule, namely,
that each country of the Paris Union has the right to determine the conditions
for filing and registration of trademarks in its domestic legislation.
This is a reservation of considerable discretion to the countries of the
Paris Union — and now, by incorporation, the Members of the WTO — to
continue, in principle, to determine for themselves the conditions for
filing and registration of trademarks. Thus, in our view, the general
rule under the Paris Convention (1967) is that national laws apply with
respect to trademark registrations within the territory of each
country of the Paris Union, subject to the requirements of other
provisions of that Convention. And, likewise, through incorporation,
this is also now the general rule for all WTO Members under the TRIPS
Agreement.
Therefore, an applicant who chooses to seek
registration of a trademark in a particular foreign country under
Article 6 must comply with the conditions for filing and registration
specified in that country’s legislation. Such an applicant is not
obliged to register a trademark first in its country of origin in order
to register that trademark in another country of the Paris Union.
However, that applicant must comply with the conditions of that other
country where registration is sought.
P.2.2 Article 6quinquies — Trademarks
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P.2.2.1 US — Section 211 Appropriations Act,
paras. 135-136
(WT/DS176/AB/R)
This alternative way of seeking acceptance in
another country of the Paris Union of a trademark registered in the
applicant’s country of origin, afforded by Article 6quinquies
A(1), is subject to two prerequisites. First, that trademark must be duly
registered according to the domestic legislation of the country of
origin, and, second, it must be registered in the applicant’s country
of origin, as defined in Article 6quinquies A(2)…
By virtue of Article 6quinquies A(1),
WTO Members are obliged to confer an exceptional right on an applicant
in a Paris Union country other than its country of origin, one that is
over and above whatever rights the other country grants to its own
nationals in its domestic law. …
P.2.2.2 US — Section 211 Appropriations Act,
paras. 137, 139
(WT/DS176/AB/R)
The participants to this dispute disagree on
the scope of the requirement imposed by Article 6quinquies A(1)
to accept for filing and protect trademarks duly registered in the
country of origin “as is”. Looking first to the text of Article 6quinquies
A(1), we see that the words “as is” (or, in French, “telle quelle”)
relate to the trademark to be “accepted for filing and protected” in
another country based on registration in the applicant’s country of
origin. The ordinary meaning of the words “as is” is “in the
existing state”. The French term “telle quelle” can be defined as
“sans arrangement, sans modification.” This suggests to us that the
requirement of Article 6quinquies A(1) to accept for filing and
protect a trademark duly registered in the applicant’s country of
origin relates at least to the form of the trademark as
registered in the applicant’s country of origin. The question before
us is whether the scope of this requirement also encompasses other
features and aspects of that trademark as registered in the country of
origin.
…
… We find that there is considerable
contextual support for the view that the requirement to register a
trademark “as is” under Article 6quinquies A(1) does not
encompass all the features and aspects of that trademark. …
P.2.2.3 US — Section 211 Appropriations Act,
para. 147
(WT/DS176/AB/R)
… We also agree that the obligation of
countries of the Paris Union under Article 6quinquies A(1) to
accept for filing and protect a trademark duly registered in the country
of origin “as is” does not encompass matters related to ownership.
P.2.3 Article 8 — Trade names
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P.2.3.1 US — Section 211 Appropriations Act,
para. 338
(WT/DS176/AB/R)
Article 8 of the Paris Convention (1967)
covers only the protection of trade names; Article 8 has no other
subject. If the intention of the negotiators had been to exclude trade
names from protection, there would have been no purpose whatsoever in
including Article 8 in the list of Paris Convention (1967) provisions
that were specifically incorporated into the TRIPS Agreement.
…
P.2.3.2 US — Section 211 Appropriations Act,
para. 341
(WT/DS176/AB/R)
… we reverse the Panel’s finding in
paragraph 8.41 of the Panel Report that trade names are not covered
under the TRIPS Agreement and find that WTO Members do
have an obligation under the TRIPS Agreement to provide
protection to trade names.
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