International Treatment of Trademarks Under Paris Convention.

Globalization has forced the evolution of international norms. Prior to globalization in economy,
the world has never been able to communicate so quickly across borders.

As more of population becomes dependent on the Internet, trademarks are becoming more
valuable to consumers reliance to make product choice the foundation of trademark protection.

There are various international conventions streamlining Trademark regulation worldwide. In

order to receive maximum protection, Trademark owner must register his mark in each country
where he wishes to seek protection.

The Paris Convention on protection of Trademark is administered by WIPO. One hundred and
seventy one states comprises WIPO which is an agency within UN. Applicants to the
organization must ratify the Paris Convention to qualify for membership.

Paris Convention for Intellectual property protection

First ratified in 1883, the Convention protects Trademarks, Names, designs as stipulated in
Article 1(2)

The Convention operates under Three principles;

1. National Treatment doctrine

2. Priority right

3. Minimum standards for Intellectual property protection

The national Treatment doctrine accords foreign trademark owner (s) the same right and
protection as nationals in each country1. It draws it's doctrine from comity, in which courts acts
out of courtesy in recognition of foreign judgments.

Illustration: A Kenyan citizen with trademark registration in Spain receive same treatment
under Spanish trademark laws that Spanish trademark owner would receive in Spain. This is
covered in Article 2 of the Convention. Article 3 provides for same treatment for nationals

1
Robert J Gutowski, The marriage of intellectual property and international trade in the TRIPS AGREEMENT
The Convention recognizes common law doctrine of famous/well known marks in Article 6. It
accords protection to well known marks that are within a country even though that mark is not
registered in that State. Marks become known through magazines, newspapers, Internet et cetera

The Convention provides a 5 year period from date of registration for cancellation of such a well
known marks.

Question: Should well known marks be subject to special international

protection treatment?

A determination of whether well known marks should be subject to Special protection involves
an analysis; How does marks become well known?

Some marks have become so well known that they have global reputation. Marks including
MICROSOFT ® , COCA COLA® , MCDONALD'S ® have global reputation even if their
goods and services aren't advertised or sold.

In McDonald's case 2, the appellant corporation incorporated in Delaware ,US is one of the
largest fast food franchise in USA since 1955 and has franchise in several parts of the world
since 1971. Its franchisee obtained it's registration of trademark in south Africa in 1968, 74, 79,
80 84 and 1985. The respondent is a South Africa company of fast foods since 1968. In 1992 the
managing director decided to establish an outlet using MC DONALD'S trademarks design

Mc Donald's wanted to show that it's marks had acquired status of well known marks in south
Africa despite absence of actual use during apartheid regime. Supreme court ruled that
McDonald's was entitled to protection as a well known mark this quashing decision of lower
court.

Article 4 establishes a Priority right principle for Intellectual property3

The principle recognize first registrant as the true owner and subsequent registrants denied
registration. There's a six month priority requirement period which is absolute to the trademark
owner.

2
See Mc Donald’s corp V Joburger's Restaurant ( 1996) case number 547/95

3
Paris convention, Article 4 (a) (1)
 Illustration: A Kenyan registered his mark in January 2008 in France. In May 2008, he
registered his mark in Spain. Meanwhile, Spanish citizen sought to register that mark in April
2008.

In this instance, the owner of the mark would be entitled within grace period provided to register
his mark in Spain so as long as it is within the time limit.

Quiz: What is the minimum standard for international mark protection?

Article through 10 of the Paris Convention establish minimum standards for trademark rights. A
trademark, name must contain a distinctive character and should not serve an intended purpose
of the good. The min standards were set out in the Japanese Noodles case ( Wagamama Vs City
Center Restaurants Plc ( 1995) chancery division FSR 713