Shang, Yuqian (Ryan) --- "Why Harmonisation Of Substantive Trademark Laws Within Wto Members Is A 'Mission Impossible'" [2022] UNSWLawJlStuS 12; (2022) UNSWLJ Student Series No 22-12

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WHY HARMONISATION OF SUBSTANTIVE TRADEMARK LAWS WITHIN WTO MEMBERS IS A ‘MISSION IMPOSSIBLE’

YUQIAN (RYAN) SHANG

I INTRODUCTION

Under the influence of globalisation and the boom in international trade, trademarks are now considered by many as an increasingly important intangible asset. This is evidenced by the statistics of the World Intellectual Property Organisation (‘WIPO’) that during 2010 to 2019 the number of trademark applications via the Madrid System has consecutively increased from 277,681 to 439,100.^[1] Under this context it is argued that while substantive harmonisation of WTO member’s trademark laws is an ‘inherently desirable’ goal, ‘the differences between the trademark laws of WTO Members remain so great, and so irreconcilable, that such a goal will never be realised’.

There are some well-known gaps between domestic trademark laws. For instance, any Islamic Shari’a-compliant trademark law will prohibit the registration and protection of trademarks associated with alcoholic beverages, pork, and casinos.^[2] Also, albeit many states have legislated for the mandate plain packaging of tobacco, it has not become universally accepted.^[3] This essay acknowledges these gaps and will by no means challenge whether these gaps may ever be reconciled.

The aim of this essay, however, is to examine two specific issues: distinctiveness and anti-dilution laws, within three WTO members: the European Union (‘EU’), Australia, and China. This essay will argue that the gaps between domestic laws of these jurisdictions are unlikely to be closed for several reasons. Firstly, no uniform approach is required to implement treaty provisions in domestic legislations, which can often go beyond the minimum standards required under international agreements. Furthermore, even where a uniform approach is adopted, domestic legislations are open to the Courts in different jurisdictions to be interpreted or applied differently. Lastly, varying policy concerns can also impose challenges in harmonising more controversial issues, such as protection against dilution.

This essay will also critically analyse the desirability of harmonising substantive trademark laws, in light of the principles within relevant international treaties.

The next section will first briefly introduce the current framework of the international instruments in harmonising substantive trademark laws.

II INTERNATIONAL HARMONISATION FRAMEWORK

The principle of territoriality in trademark laws has long been a problem to trademark owners who wish to have cross-jurisdictional trademark protection.^[4] A number of international intellectual property treaties have been created to address the issue, which constitute the current international framework of substantive trademark laws harmonisation.^[5]

A The Paris Convention

As the first multilateral treaty establishing an international framework for trademark protection, the Paris Convention on the Protection of Industrial Property (‘Paris Convention’) aimed primarily at extending all member states the principle of national treatment and guaranteeing minimum standards of protection for ‘industrial property’ including trademarks.^[6]

Currently, the Convention has 177 contracting parties including Australia, China and all members of the EU.^[7] Albeit the convention touches upon some substantive trademark law issues, e.g. refusal of registration and assignment, it does not set out to harmonise national trademark laws.^[8] On the contrary, it expressly leaves a range of issues such like conditions for registration to be determined by domestic laws, which is a limitation to its effectiveness in harmonising substantive trademark laws.^[9]

B The TRIPS Agreement

The Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS Agreement’) entered into force on 1 January 1995 and can be said to be the most extensive and influential treaty in harmonising substantive trademark laws.^[10] The Agreement requires compliance with Articles 1-12 and 19 of the Paris Convention but went much further than that in at least three aspects.^[11]

Firstly, in addition to the principle of minimum standards and national treatment, the Agreement also provides for the most-favoured-nation treatment so that ‘any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded to the nationals of all other Members’.^[12]

Secondly, Articles 15-21 of the Agreement provides for much more detailed requirements on substantive issues such as protectable subject matters, rights of the trademark owner, etc.^[13] Article 18 also provides for the term of protection, which is not covered by the Paris Convention.^[14]

Thirdly, falling under the purview of the World Trade Organisation (‘WTO’), Article 64 provides that the WTO dispute resolution regime applies to any disputes arising under the TRIPS Agreement.^[15] Therefore, the obligations under not only the TRIPS Agreement, but also the incorporated provisions from the Paris Convention can be effectively enforced against a non-complying member.^[16]

C Post-TRIPS Treaties

In the post-TRIPS era, the EU and the US started to take advantage of the most-favoured-nation treatment under the TRIPS Agreement by entering into bilateral and multilateral Preferential Trade Agreements (‘PTAs’) containing even higher intellectual property protection standards, which are often referred to as ‘TRIPS-plus’ provisions.^[17]

The implications of these PTAs are potentially far-reaching in that they may ultimately ‘ratchet up’ the standard of substantive trademark laws.^[18] However, it remains to be seen whether the PTAs can achieve as far as harmonising the substantive trademark laws among all WTO members due to their bilateral or regional nature.

The next two sections will scrutinise the domestic laws of the EU, Australia and China on distinctiveness and anti-dilution laws, to examine to what extent they are harmonised and whether any gaps can be closed, in light of this international framework.

III DISTINCTIVENESS

The traditional understanding of a trademark requires it to be capable of indicating the trade origin of the goods.^[19] Consequently, the concept of ‘distinctiveness’ or ‘capable to distinguish’ is frequently found in both international and domestic trademark laws.^[20]

Article 15 of the TRIPS Agreement provides that ‘any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark’.^[21] Article 6^quinquies B(2) of the Paris Convention also provides for three exceptions to accepting and protecting a trademark duly registered in the country of origin: where the trademark is devoid of any distinctive character, is exclusively descriptive, or has passed into generic language.^[22]

Accordingly, the domestic trademark laws of the EU, Australia and China all first define a trademark as a sign capable to distinguish goods or services,^[23] and separately provide for the grounds for rejection where a trademark lacks distinctiveness.^[24]

Notwithstanding the consistency in legislative structure, further provisions of detailed grounds for rejection and the interpretations adopted by the domestic courts in these jurisdictions are divergent, which has compromised the effectiveness of the harmonisation.

A The EU

Corresponding to Article 6^quinquies B(2) of the Paris Convention, the same grounds are provided for rejecting an application under Articles 4(b)-(d) of the EU Trade Mark Directive and Articles 7(b)-(d) of the EU Trade Mark Regulation: where a trademark is devoid of any distinctive character, is descriptive, and has passed into generic language.^[25] Each ground was held to be independent of the others and require separate examination, notwithstanding the broad overlap between them.^[26]

To make these grounds legally separable, the European Court of Justice (‘ECJ’) has held that these grounds should be interpreted in light of the different public interest underlying each of them.^[27] However, in adopting such an approach the court can go beyond and even depart from the literal meanings of the legislation.

For instance, under the ground that a trademark is devoid of any distinctive character, it was held the intention of Article 7(1)(b) of the regulation is to preclude registration of trademarks which cannot fulfill its essential function to ‘guarantee the identity of the origin of the marked product’ to the relevant public, without any possibility of confusion with another origin.^[28] Similarly, in the context of acquired distinctiveness, the relevant test was held to be whether the relevant public actually perceive the goods or services, designated exclusively by the mark, as originating from a given undertaking, in consequence of such use.^[29]

As for the ground that a trademark is descriptive, it was held the relevant public interest is that such descriptive signs or indications ‘may be freely used by all’.^[30] Therefore, in OHIM v Wrigley it was held the registration must be refused if one of the possible meanings of a sign designates a characteristic of the goods or services concerned.^[31] The court of first instance was found to have erred in law in applying the test whether the mark is ‘exclusively descriptive’, notwithstanding the express provision ‘consist exclusively of’ within Article 7(1)(c) of the regulation.^[32]

The effectiveness of harmonisation becomes even more complicated when taking into account the co-existence of the EU trademark system and the national trademark laws of each member state.^[33] Albeit the substantive provisions in national laws and the union law are largely harmonised through the EU Trade Mark Directive and in principle should be applied in an identical fashion, in practice divergent outcomes might still be reached in different jurisdictions, as the decisions in one member state are not binding on the Court or competent authority in another member state.^[34]

In short, notwithstanding the high degree of consistency in the legislations, the effectiveness of harmonisation in the EU has been compromised by the interpretation of the Court of Justice of the EU (‘CJEU’) and the divergent practice of the domestic courts and competent authorities in the member states.

B Australia

In contrast to the European legislation, the grounds for rejection under the Australian Trade Marks Act do not follow the structure and the wording of Article 6^quinquies B(2) of the Paris Convention.^[35] Rather, s 41 classifies trademarks into three categories: trademarks that are sufficiently inherently distinctive on their own, that are to some extent but not sufficiently inherently distinctive under Subsection (4), and that are not to any extent inherently distinctive under Subsection (3).^[36]

The tests for the latter two categories are expressly provided under the respective subsections. For trademarks that are not to any extent inherently distinctive, the application will be rejected if the trademark has not been used by the applicant prior to the filing date to the extent that the trademark has in fact acquired the requisite distinctiveness.^[37] And for trademarks that are to some extent but not sufficiently inherently distinctive, the application will be rejected if the trademark does not and will not distinguish the designated goods or services taking into account the combined effect of the extent to which it is inherently distinctive, the use or intended use by the applicant, and any other circumstances.^[38]

In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, the High Court held that to determine whether a trademark is inherently distinctive requires first the consideration of the ‘ordinary signification’ of the words proposed to be used as the trademark to any person in Australia concerned with the goods.^[39] Once the ordinary significance is established, an inquiry can then be made into ‘whether other traders might legitimately need to use the word in respect of their goods’.^[40] The second limb of the test is not required under the EU approach as discussed previously.

In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks, however, the Court in deciding the distinctiveness of a three-dimensional bug shape of confectionary, suggested a shape that only has ‘functional significance’ cannot be distinctive.^[41] In doing so, the Court was incorporating a bar of functionality, which notably is a separate ground under the EU legislation, into distinctiveness.^[42] The difficulty with this approach, according to Handler, is that the Court has assumed a functional sign can never acquire distinctiveness, which is not only illogical but also inconsistent with the position under the EU trademark law that a mark will be permanently be excluded from protection merely by the functionality ground even though it has acquired distinctiveness through use.^[43]

The approach taken by Australia is therefore remarkably distinct from that taken by the EU, both in terms of the statutory provisions and the interpretation adopted.

C China

The Trademark Law of China has notably taken a similar to the approach to that taken by the EU, albeit in a briefer form. Paragraph One of Article 11 provides for three grounds on which an application must be rejected due to lack of distinctiveness: where the mark bears only generic name, design, or model name; where the mark only directly indicates the quality, principal raw material, function, etc. of the goods; and where a mark otherwise lacks any distinctive character.^[44] Paragraph two then provides that any mark falling under these grounds may nevertheless be registered as a trademark, if it has acquired distinctive feature through use and is readily distinguishable.^[45]

However, unlike the interpretation by the CJEU, which relies on the consideration of public interest, the second ground has been interpreted by the Supreme People’s Court as to only apply where a trademark is merely or primarily for the description or explanation of quality, principal raw material, function, etc. of the goods, and the ground does not apply if the trademark only implies the characteristics of the goods but does not affect its capacity to distinguish.^[46] Rui further noted the correct test to distinguish ‘description and ‘implication’ of the characteristics of the goods should be whether a sign expresses its underlying meaning in an ‘ordinary manner’, not whether the relevant public can understand the meaning which a sign is designed to express.^[47]

Also, seemingly consistent with the EU approach, Article 12 of China’s Trademark Law separately provides for a ground that a three-dimensional mark shall not be registered if it ‘merely indicates the inherent shape or only functions to achieve technical effects which give the goods substantive value’.^[48]

However, this Article has been interpreted as not excluding the possibility that the mark may become registrable after ‘long-term and extensive use’ so that it is deemed to be distinctive.^[49] By reincorporating acquired distinctiveness into the functionality bar and ultimately allowing a mark to be registered, the approach taken by China is unique to both the EU and Australian approaches, although the bar of ‘long-term and extensive use’ seems to be extremely high.

Through the comparison above, it is obvious that albeit distinctiveness is a common ground under international trademark laws, the way of implementing this requirement can diverge between different jurisdictions as long as the minimum standard set out in the TRIPS Agreement is satisfied. The gap is further expanded by the varying interpretation and practice of the courts and competent authorities. Therefore, the adoption of similar or even identical statutory language is no guarantee to the harmonisation of substantive trademark laws. For these reasons, it would be correct to conclude that the goal of harmonisation may never be realised, at least in the case of distinctiveness.

IV ANTI-DILUTION LAWS

In contrast to distinctiveness, which represents the traditional confusion-based justification of trademark protection, protection against dilution seeks to impose liability without any requirement of confusion.^[50] Without a universally accepted theoretical basis, the departure from the traditional confusion-based justification makes protection against dilution highly controversial.^[51]

Nevertheless, Articles 16.2 and 16.3 of the TRIPS Agreement extend the protection for well-known marks under Article 6^bis of the Paris Convention to service marks and goods or services which are not similar to those in respect of which a trademark is registered, provided that the use of that trademark ‘would indicate a connection between those goods or services and the registered trademark owner’, and ‘the interests of the registered trademark owner are likely to be damaged by such use’.^[52] It has also been subject to debate whether the ‘connection’ and the ‘likely to be damaged’ conditions under Article 16.3 should be interpreted as ‘in addition to’ or ‘in lieu of’ the confusion requirement under Article 6^bis of the Paris Convention, though the former interpretation seems to be favoured by courts and scholars.^[53]

This section will demonstrate the positions taken by different states to legislate on such a controversial issue are even more difficult to be reconciled due to the lack of an international, or even a national consensus on the extent to which the value of a trademark should be legally protected, as a matter of policy.

A The European Union and China

The EU has long provided legal protection for registered trademarks which have ‘a reputation’ against three forms of dilution: ‘blurring’, ‘tarnishment’, and ‘free-riding’, which are now respectively linked to the grounds of ‘detrimental to the distinctive character’, ‘detrimental to the repute’, and ‘taking unfair advantage of the distinctiveness and the repute’ under Article 9(2)(c) of the EU Trade Mark Regulation and Article 10(2)(c) of the EU Trade Mark Directive.^[54] Albeit the protection against dilution was not a mandatory measure before 23 December 2015 under the previous Directive, the protection had already existed in all member states except Cyprus and therefore the 2015 Directive did not in practice bring any sizable changes.^[55]

The expansive protection for well-known marks under the EU law is understandable considering many top luxury brands are headquartered in Europe. Arguably, the economic power possessed by these brands has heavily influenced the regional legal policy as well as the consumer culture, which is reflected by the ECJ’s much criticised judgment in L’Oréal SA v Bellure NV that the legally protected interests of a trademark ‘proprietor’ are not limited to ensuring the trademark’s function to distinguish, but also extend to the functions of ‘communication, investment or advertising’.^[56]

China’s Trademark Law has also granted extensive protection for well-known marks against dilution. Article 13 Paragraph 3 provides that the registration and the use of a trademark shall be prohibited, where the trademark is of a different or dissimilar kind of goods and is a ‘reproduction, imitation, or translation’ of another person's well-known trademark registered in China and misleads the public so that the interests of the owner of the registered well-known trademark are likely to be impaired.^[57] The provision has been interpreted as to apply where the trademark is sufficient to lead the relevant public into believing that the accused mark is associated to a great extent with the well-known mark, so as to ‘blur the distinctiveness of the well-known mark, tarnish or take unfair advantage of the market repute of the well-known mark’.^[58]

Notwithstanding the consistent position taken by China and the EU, the legislative history reveals that China’s incentive in granting such protection was purely to fulfill its treaty obligations when it became a party to the Paris Convention in 1985 and a member of the WTO in 2001.^[59] Interestingly, some Chinese scholars now argue that in light of the recent economic development of China, China’s Trademark Law should take a further step to remove the ‘confusion’ requirement and grant cross-category protection even if a well-known mark has not been registered in China, which seems to be a very radical recommendation considering the controversy around the dilution theories, and would create new gaps between the EU and Chinese laws if implemented.^[60]

B Australia

Section 120(3) of the Trade Marks Act provides that a trademark will be infringed if it is well-known in Australia; a sign substantially identical with, or deceptively similar to the well-known trademark is used as a trademark in relation to unrelated goods or services; the sign would be taken as indicating a connection between the unrelated goods or services and well-known trademark because that trademark is well known; and the interests of the registered owner for that reason are likely to be adversely affected.^[61]

There have been debates on whether Section 120(3) is an anti-dilution provision. While the High Court was of the view that it is, most commentators argue it should not be interpreted as an anti-dilution provision, as the requirement of ‘connection’ still implicitly encompasses an element of confusion.^[62]

It is not clear why Australia has not yet legislated for anti-dilution protection. However, an opinions paper in 2004 by the then Advisory Council on Intellectual Property suggests that domestic voices varied widely on whether further protection is needed, which may be an answer to why no further reform ever took place.^[63]

In short, due to the controversy around whether trademarks should be legally protected against dilution, the positions taken by Australia is even more divergent to the legislations of the EU and China. While the positions taken by China and the EU seem to be currently consistent, a closer scrutiny at the policy bases in these two jurisdictions suggests that new gaps may be created by potential legal reforms. Considering these factors together with the difficulty in harmonising ‘distinctiveness’, the only conclusion that can be reasonably drawn is that the gaps in the substantive trademark laws within WTO members are unlikely to be reconciled.

V IS HARMONISATION INHERENTLY DESIRABLE?

Having concluded harmonising substantive trademark laws within WTO members is a ‘mission impossible’, perhaps a more fundamental question to be asked is whether harmonisation of substantive trademark laws is an ‘inherently desirable’ goal in the first place.

As is recognised by the preamble of the TRIPS Agreement, the very object that the harmonisation of substantive trademark laws should achieve is to ‘reduce distortions and impediments to international trades’.^[64] In this sense, harmonising substantive trademark laws can be said to be a desirable goal, as a more coherent international trademark legal regime will necessarily reduce legal and compliance costs as well as uncertainties in international trades within the current WTO framework.

However, it does not follow that harmonising substantive trademark laws is in itself desirable, as the preamble of the TRIPS Agreement also expressly recognises that there would be a point beyond which the protection and the enforcement of intellectual property rights would themselves become ‘barriers to legitimate trade’, which should be prevented.^[65] Indeed, as is demonstrated in the case of anti-dilution laws, even the minimum standards imposed by the TRIPS Agreement are not without criticism.

The question subsequently arises under this context whether further harmonisation is desirable in requiring uniformity in domestic legislations and in raising the current standards of trademark protection globally, just as what is being done by some of the ‘TRIPS-plus’ provisions. As is discussed in the section for distinctiveness, it is neither necessary nor helpful in requiring uniformity in domestic legislations, as doing so does not guarantee the consistency and coherency in the decisions made by the courts and competent authorities. And as for further raising the global standards of trademark protection, the procedure to amend the TRIPS Agreement would be a great obstacle, which makes it highly unlikely to be realised in the near future.

Therefore, the desirability of harmonising substantive trademark laws derives from the object to reduce distortions and impediments to international trades. It would be too dangerous to conclude that harmonisation is inherently desirable, as any insistence on harmonisation without considering the economic impacts is doomed to be fruitless.

VI CONCLUSION

Through examining the position taken by the trademark laws of the EU, Australia, and China on distinctiveness and anti-dilution laws, this essay has demonstrated harmonising substantive trademark laws within WTO members is likely to be a ‘mission impossible’, as a consequence of a range of complicated and intertwining factors, including lack of uniformity in domestic legislations, divergent interpretation and practice adopted by domestic courts and competent authorities, as well as competing policy concerns where more controversial issues are involved.

However, in stressing too much on the idea of harmonising substantive trademark laws, one is likely to lose sight of the bigger picture: the ultimate concern is the facilitation of international trades, and harmonising substantive trademark laws is merely one vehicle to achieve that goal. In this sense, any further harmonisation should be proceeded with prudence, as what makes the international economy blossom also possesses the power to stifle its vitality.

BIBLIOGRAPHY

A Articles/Books/Reports

Advisory Council on Intellectual Property, Review of the Enforcement of Trade Marks (Opinions Paper, April 2004)

Bently, Lionel, ‘The Making of Moder Trade Mark Law: The Construction of the Legal Concept of Trade Mark (1860-1880)’ in Lionel Bently et al (eds), Trade Marks and Brands: An Interdisciplinary Critique (Cambridge University Press, 2008) 1

Bently, Lionel and Brad Sherman, Intellectual Property Law (Oxford University Press, 4^th ed, 2014)

Bodenhausen, Georg, Guide to the Application of the Paris Convention for the Protection of Industrial Property (BIRPI, 1968)

Bone, Robert, ‘Schechter's Ideas in Historical Context and Dilution's Rocky Road’ (2008) 24(3) Santa Clara Computer and High-technology Law Journal 469

Davison, Mark et al, Australian Intellectual Property Law (Cambridge University Press, 4^th ed, 2020)

Elmahjub, Ezieddin, ‘An Islamic Perspective on the Theories of Intellectual Property’ in Brian Fitzgerald and John Gilchrist (eds), Copyright Perspectives: Past, Present and Prospect (Springer, 2015) 51

Frankel, Susy and Daniel J Gervais, Advanced Introduction to International Intellectual Property (Edward Elgar, 2016)

Handler, Michael, ‘Disentangling Functionality, Distinctiveness and Use in Australian Trade Mark Law’ (2018) 42(1) Melbourne University Law Review 55

Handler, Michael, ‘Trade Mark Dilutions in Australia?’ (2007) 29(8) European Intellectual Property Review 307

Handler, Michael and Bryan Mercurio, ‘Intellectual Property’ in Simon Lester, Bryan Mercurio and Lorand Bartels (eds), Bilateral and Regional Trade Agreements: Commentary, Analysis and Case Studies (Cambridge University Press, 2nd ed, 2015) 324

Kur, Annette, 'The EU Trademark Reform Package: (Too) Bold a Step Ahead or Back to Status Quo' (2015) 19(1) Marquette Intellectual Property Law Review 15

Kur, Annette and Martin Senftleben, European Trade Mark Law (Oxford University Press, 2017)

Philips, Jeremy, Trade Mark Law: A Practical Anatomy (Oxford University Press, 2003)

Winner, Ellen and Aaron Denberg, International Trademark Treaties with Commentary (Oceana Publications, 2004)

芮松艳 [Rui, Songyan], 《论司法审判中如何认定商标显著性》[On How to Determine Distinctiveness of Trademarks in Adjudication] [2017] 17 法律适用 [National Judges College Law Journal] 16

王莲峰、曾涛 [Wang, Lianfeng and Zeng Tao], 《国际视角下我国未注册驰名商标保护制度的完善》[An International Perspective of the Improvement of Protection for Unregistered Well-known Marks in China] [2021] 3 知识产权 [Intellectual Property] 54

B Cases

Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12; (2000) 202 CLR 45

Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; (2014) 254 CLR 337

Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494

Koninklijke KPN Nederland NV v Benelux-Merkenbureau (C-363/99) [2004] ECR I-1651

L’Oréal SA v Bellure NV (C-487/07) [2009] EUECJ C-487/07; [2009] ECR I-5185

Novelty Pte Ltd v Amanresorts Ltd [2009] SGCA 13; [2009] 3 SLR 216

OHIM v Wrigley (C-191/01P) [2003] ECR I-12473

SAT.1 v OHIM (C- 329/02) [2004] ECR I-8317

Société des Produits Nestlé SA v Cadbury UK Ltd (CJEU, C-215/14, ECLI:EU:C:2015:604, 16 September 2015)

C Legislation

Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth)

《最高人民法院关于审理涉及驰名商标保护的民事纠纷案件应用法律若干问题的解释》[Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of the Law to the Adjudication of Civil Dispute Cases Involving Well-Known Trademarks] (People’s Republic of China) Supreme People’s Court, Fa Shi [2009] No 3, 23 April 2009, as amended by Supreme People’s Court, Fa Shi [2020] No 19

Parliament and Council Directive 2015/2436 of 16 December 2015 to Approximate the Laws of the Member States Relating to Trade Marks [2015] OJ L 336/1

Parliament and Council Regulation 2017/1001 of 14 June 2017 on the European Union Trade Mark [2017] OJ L 154/1

《最高人民法院关于审理商标授权确权行政案件若干问题的规定》[Provisions of the Supreme People’s Court on Several Issues Concerning the Adjudication of Administrative Cases on Granting and Affirming Trademark-related Rights] (People’s Republic of China) Supreme People’s Court, Fa Shi [2017] No 2, 10 January 2017, as amended by Supreme People’s Court, Fa Shi [2020] No 19

Trade Marks Act 1995 (Cth)

《中华人民共和国商标法》[Trademark Law of the People's Republic of China] (People’s Republic of China) National People’s Congress Standing Committee, Order No 10, 23 August 1982, as amended up to Decision of April 23, 2019 of the Standing Committee of National People's Congress

D Treaties

Marrakesh Agreement Establishing the World Trade Organisation, opened for signature 15 April 1994, 1867 UNTS 3 (entered into force 1 January 1995) annex 1C

Paris Convention on the Protection of Industrial Property, signed 14 July 1967, 828 UNTS 305 (entered into force 26 April 1970)

E Others

‘Contracting Parties’, WIPO Lex (Web Page) <https://wipolex.wipo.int/en/treaties/ShowResults?search_what=C&treaty_id=2>

‘Plain Packaging’, WHO Europe (Web Page) <https://www.euro.who.int/en/health-topics/disease-prevention/tobacco/publications/key-policy-documents/who-framework-convention-on-tobacco-control-who-fctc/key-areas-of-tobacco-control-policy/plain-packaging>

‘WIPO IP Statistics Data Center’, WIPO IP Portal (Statistics) <https://www3.wipo.int/ipstats/index.htm?tab=trademark>

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^[1] ‘WIPO IP Statistics Data Center’, WIPO IP Portal (Statistics) <https://www3.wipo.int/ipstats/index.htm?tab=trademark>.

^[2] Ezieddin Elmahjub, ‘An Islamic Perspective on the Theories of Intellectual Property’ in Brian Fitzgerald and John Gilchrist (eds), Copyright Perspectives: Past, Present and Prospect (Springer, 2015) 51, 58-9.

^[3] ‘Plain Packaging’, WHO Europe (Web Page) <https://www.euro.who.int/en/health-topics/disease-prevention/tobacco/publications/key-policy-documents/who-framework-convention-on-tobacco-control-who-fctc/key-areas-of-tobacco-control-policy/plain-packaging>.

^[4] Lionel Bently and Brad Sherman, Intellectual Property Law (Oxford University Press, 4^th ed, 2014) 6.

^[5] Ibid.

^[6] Ibid; Susy Frankel and Daniel J Gervais, Advanced Introduction to International Intellectual Property (Edward Elgar, 2016) 17; Paris Convention on the Protection of Industrial Property, signed 14 July 1967, 828 UNTS 305 (entered into force 26 April 1970) art 2 (‘Paris Convention’).

^[7] Ellen Winner and Aaron Denberg, International Trademark Treaties with Commentary (Oceana Publications, 2004) 48; ‘Contracting Parties’, WIPO Lex (Web Page) <https://wipolex.wipo.int/en/treaties/ShowResults?search_what=C&treaty_id=2>.

^[8] Paris Convention (n 6) arts 6^ter, 6^quinquies B.

^[9] Ibid arts 6(1), 6^septies (3), 9(3), 11(1).

^[10] Marrakesh Agreement Establishing the World Trade Organization, opened for signature 15 April 1994, 1867 UNTS 3 (entered into force 1 January 1995) annex 1C (‘TRIPS Agreement’); Frankel and Gervais (n 6) 29.

^[11] Ibid art 2.1; Frankel and Gervais (n 6) 17.

^[12] TRIPS Agreement (n 10) arts 1.1, 3, 4.

^[13] Ibid arts15-21.

^[14] Ibid art 18.

^[15] Ibid art 64.

^[16] Frankel and Gervais (n 6) 17, 29.

^[17] Michael Handler and Bryan Mercurio, ‘Intellectual Property’ in Simon Lester, Bryan Mercurio and Lorand Bartels (eds), Bilateral and Regional Trade Agreements: Commentary, Analysis and Case Studies (Cambridge University Press, 2nd ed, 2015) 324, 324-5.

^[18] Ibid 325.

^[19] Lionel Bently, ‘The Making of Moder Trade Mark Law: The Construction of the Legal Concept of Trade Mark (1860-1880)’ in Lionel Bently et al (eds), Trade Marks and Brands: An Interdisciplinary Critique (Cambridge University Press, 2008) 1, 28-9.

^[20] Jeremy Philips, Trade Mark Law: A Practical Anatomy (Oxford University Press, 2003) 59.

^[21] TRIPS Agreement (n 10) art 15.

^[22] Paris Convention (n 6) art 6^quinquies B(2); Georg Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property (BIRPI, 1968) 110-1, 115.

^[23] Parliament and Council Directive 2015/2436 of 16 December 2015 to Approximate the Laws of the Member States Relating to Trade Marks [2015] OJ L 336/1, art 3(a) (‘EUTMD’); Parliament and Council Regulation 2017/1001 of 14 June 2017 on the European Union Trade Mark [2017] OJ L 154/1, art 4(a) (‘EUTMR’); Trade Marks Act 1995 (Cth) s 17; 《中华人民共和国商标法》[Trademark Law of the People's Republic of China] (People’s Republic of China) National People’s Congress Standing Committee, Order No 10, 23 August 1982, as amended up to Decision of April 23, 2019 of the Standing Committee of National People's Congress, arts 8-9 (‘Trademark Law of China’).

^[24] EUTMD (n 23) arts 4(b)-(d); EUTMR (n 23) arts 7(b)-(d); Trade Marks Act 1995 (Cth) s 41(1); Trademark Law of China (n 23) art 11.

^[25] EUTMD (n 23) arts 4(b)-(d); EUTMR (n 23) arts 7(b)-(d).

^[26] SAT.1 v OHIM (C- 329/02) [2004] ECR I-8317, I-8347; Annette Kur and Martin Senftleben, European Trade Mark Law (Oxford University Press, 2017) 111.

^[27] Ibid.

^[28] Ibid.

^[29] Société des Produits Nestlé SA v Cadbury UK Ltd (CJEU, C-215/14, ECLI:EU:C:2015:604, 16 September 2015) [64]-[65].

^[30] OHIM v Wrigley (C-191/01P) [2003] ECR I-12473, I-12485; Koninklijke KPN Nederland NV v Benelux-Merkenbureau (C-363/99) [2004] ECR I-1651, I-1674.

^[31] (C-191/01P) [2003] ECR I-12473, I-12485.

^[32] Ibid I-12486.

^[33] EUTMR (n 23) recital 7.

^[34] Kur and Senftleben (n 26) 71-2.

^[35] Trade Marks Act 1995 (Cth) s 41.

^[36] Ibid; Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) 146-7.

^[37] Trade Marks Act 1995 (Cth) s 41(3)(b).

^[38] Ibid s 41(4)(b).

^[39] [2014] HCA 48; (2014) 254 CLR 337, 361-2.

^[40] Ibid.

^[41] [2002] FCAFC 273; (2002) 122 FCR 494, 509, 529.

^[42] EUTMD (n 23) art 4(e); EUTMR (n 23) art 7(e).

^[43] Michael Handler, ‘Disentangling Functionality, Distinctiveness and Use in Australian Trade Mark Law’ (2018) 42(1) Melbourne University Law Review 55, 74-6; Kur and Senftleben (n 26) 158.

^[44] Trademark Law of China (n 23) art 11.

^[45] Ibid.

^[46] 《最高人民法院关于审理商标授权确权行政案件若干问题的规定》[Provisions of the Supreme People’s Court on Several Issues Concerning the Adjudication of Administrative Cases on Granting and Affirming Trademark-related Rights] (People’s Republic of China) Supreme People’s Court, Fa Shi [2017] No 2, 10 January 2017, as amended by Supreme People’s Court, Fa Shi [2020] No 19, art 11 (‘Provisions of the Supreme People’s Court’).

^[47] 芮松艳 [Rui Songyan], 《论司法审判中如何认定商标显著性》[On How to Determine Distinctiveness of Trademarks in Adjudication] [2017] 17 法律适用 [National Judges College Law Journal] 16, 17.

^[48] Trademark Law of China (n 23) art 12.

^[49] Provisions of the Supreme People’s Court (n 46) art 9.

^[50] Robert Bone, ‘Schechter's Ideas in Historical Context and Dilution's Rocky Road’ (2008) 24(3) Santa Clara Computer and High-technology Law Journal 469, 472-3.

^[51] Ibid 505-6.

^[52] TRIPS Agreement (n 10) arts 16.2, 16.3.

^[53] Novelty Pte Ltd v Amanresorts Ltd [2009] SGCA 13; [2009] 3 SLR 216, 279-80; Michael Handler, ‘Trade Mark Dilutions in Australia?’ (2007) 29(8) European Intellectual Property Review 307, 308-10 (‘Dilutions in Australia’).

^[54] EUTMD (n 23) art 10(2)(c); EUTMR (n 23) art 9(2)(c); Kur and Senftleben (n 26) 338.

^[55] Annette Kur, 'The EU Trademark Reform Package: (Too) Bold a Step Ahead or Back to Status Quo' (2015) 19(1) Marquette Intellectual Property Law Review 15, 30.

^[56] (C-487/07) [2009] EUECJ C-487/07; [2009] ECR I-5185, I-5251.

^[57] Trademark Law of China (n 23) art 13.2.

^[58] 《最高人民法院关于审理涉及驰名商标保护的民事纠纷案件应用法律若干问题的解释》[Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of the Law to the Adjudication of Civil Dispute Cases Involving Well-Known Trademarks] (People’s Republic of China) Supreme People’s Court, Fa Shi [2009] No 3, 23 April 2009, as amended by Supreme People’s Court, Fa Shi [2020] No 19, art 9.2.

^[59] 王莲峰、曾涛 [Wang Lianfeng and Zeng Tao], 《国际视角下我国未注册驰名商标保护制度的完善》[An International Perspective of the Improvement of Protection for Unregistered Well-known Marks in China] [2021] 3 知识产权 [Intellectual Property] 54, 55-6.

^[60] Ibid 64-5.

^[61] Trade Marks Act 1995 (Cth) s 120(3).

^[62] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12; (2000) 202 CLR 45, 66; Handler, ‘Dilution in Australia’ (n 53) 314-5; Mark Davison et al, Australian Intellectual Property Law (Cambridge University Press, 4^th ed, 2020) [16.4.6].

^[63] Advisory Council on Intellectual Property, Review of the Enforcement of Trade Marks (Opinions Paper, April 2004) [4.1].

^[64] TRIPS Agreement (n 10) preamble.

^[65] Ibid.