The law considers a trademark to be a form of property. Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office (e.g. USPTO) of a particular jurisdiction. In some jurisdictions, trademark rights can be established through either or both means. Certain jurisdictions generally do not recognize trademarks rights arising through use. In the United States the only way to qualify for a federally registered trademark is to first use the trademark in commerce.
A registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered. The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or “colorfully” similar to the “registered” products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. An example may be a very large multinational brand such as “Sony” where a non-electronic product such as a pair of sunglasses might be assumed to have come from Sony Corporation of Japan despite not being a class of goods that Sony has rights in.
Once trademark rights are established in a particular jurisdiction, these rights are generally only enforceable in that jurisdiction, a quality which is sometimes known as territoriality. However, there is a range of international trademark laws and systems which facilitate the protection of trademarks in more than one jurisdiction (see the International Trademarks section).
It is important to note that although there are systems which facilitate the filing, registration or enforcement of trademark rights in more than one jurisdiction on a regional or global basis (e.g. the Madrid system, see further below), it is currently not possible to file and obtain a single trademark registration which will automatically apply around the world. Like any national law, trademark laws apply only in their applicable country or jurisdiction, a quality which is sometimes known as “territoriality”.
The Madrid system for the international registration of marks, also conveniently known as the Madrid System, is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world.
The Madrid system provides a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions. Registration through the Madrid system does not create an ‘international’ registration, rather it provides a mechanism for obtaining trademark protection in many countries around the world, which is more effective than seeking protection separately in each individual country or jurisdiction of interest.
The Madrid system now permits the filing, registration and maintenance of trade mark rights in more than one jurisdiction, provided that the target jurisdiction is a party to the system. The Madrid system is administered by the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland.
Two significant recent developments in international trade mark law were the accession of the United States and the European Union to the Madrid Protocol on 2 November 2003 and 1 October 2004, respectively. With the addition of these jurisdictions to the Protocol, most major trading jurisdictions have joined the Madrid system.
Trademark Oppositions and Cancellations
In a trademark opposition, third parties may use opposition proceedings to “oppose” the registration of a trademark after the application to register the trademark has been accepted and published for opposition purposes. If an opposition is defeated the trademark will proceed to registration.