TPP leak: time for trade marks

A pleasant way to sail the
Pacific: the Kat-amaran

Not so secret. Our first assessment of the Wikileaked text of the Trans-Pacific Partnership (by Angela Daly) covered copyright and our second assessment (by Alberto Bellan) dealt with the TPP's general provisions. This third review takes in trade marks; it's also by Alberto, gallantly serving as our guest-Kat-for-a-day-or-two (Alberto's details can be found both on LinkedIn and on Twitter, at @albertobellan). This is what Alberto tells us:

Apparently, the most intriguing (and shocking) point in the Chapter concerning trade marks regards protectable subject matter.

Art. QQ.C.1, “Types of Signs Registrable as Trademarks”, is one of the most bracketed provisions of the whole Chapter. And the reason is easy to see. According to some States’ original proposals, the TTP should provide that the parties are not more allowed to “deny registration of a trademark solely on the ground that the sign of which it is composed is a sound or a scent” and that they only “may require a concise and accurate description, or graphical representation, or both, as applicable, of the trademark” [emphases added]. 

If this provision survives for further negotiations, scents could finally secure trade mark protection -- but the point is “how?”, given the current impossibility of representing them graphically in a easy, certain and immediately intelligible way. Perhaps it is just one of this guest Kat’s signs of paranoia, but it could likely occur by the mean of an “accurate description” (does this mean, eg, the chemical composition?), which this provisions appears to consider as an alternative (“or both”) to the graphical representation (though this may not be mandatory). 

There is nothing really new and exciting to report as to the scope of a trade mark's protection. Indeed, Articles QQ.C.3 and QQ.C.5 lay down the familiar triadic-structured scope of protection which would allow (and already allows) the trade mark owner to prevent the use in the course of trade of: 

(i) Identical trade marks for identical goods or services with presumed likelihood of confusion;
(ii) Identical or similar trade marks for identical or related goods or services are preventable if a likelihood of confusion is established; and
(iii) Well-known trade marks on a Paris Convention Art. 6bis model (“mutatis mutandis”) when free rides or dilution occur.

According to Art. QQ.C.5,

“No Party may require as a condition for determining that a trademark is well-known that the trademark has been registered in the Party or in another jurisdiction”.

Exhaustion is debated too under the trade mark section. As mentioned within the “General Principles”, some countries are trying to introduce here a rule (Art. QQ.C.11) according to which

“The Parties are encouraged to establish international exhaustion of trademark rights. For this purpose, the registration of a trademark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in any country under that trademark by the proprietor or with his consent”. 

The US and Japan do not agree with that (and, reasonably, why would they change their mind here after expressing their opposition in the General Principles?). 

This section provides some innovative provisions to ensure that both the trade mark registration system and enforcement are adequate for the internet era. Thus, as far as registration is concerned, Art. QQ.C.7 seeks to oblige the member states to provide 

 “(a) a system for the electronic application for, and maintenance of, trademarks;

and (b) a publicly available electronic information system, including an online database, of trademark applications and of registered trademarks”. 

(Currently some Europeans countries, including Italy, do not provide electronic filing and prosecution system accessible to all users in the manner in which OHIM does). 

On the enforcement side, the Chapter considers cybersquatting and other “cyberpiracy” issues based on country-code top-level domain (ccTLD) and affecting trade mark rights. The solution proposed by the TTP Committee (whoever that is!) mainly relies on national enforcement systems and could constitute an innovative mean of harmonisation (and, in some countries, of modernisation) among different jurisdictions. According to Art. QQ.C.12, “Domain Names on the Internet”, 

“each Party shall adopt or maintain a system for the management of its country-code top-level domain (ccTLD) that provides … an appropriate procedure for the settlement of disputes, based on, or modelled along the same lines as, the principles established in the Uniform Domain-Name Dispute-Resolution Policy, or that is: (i) designed to resolve disputes expeditiously and at low cost, (ii) fair and equitable, (iii) not overly burdensome, and (iv) does not preclude resort to court litigation”. 

Apparently, the provision could also pave the way for a kind of public Whois registration database, providing that the parties also adopt or maintain an “online public access to a reliable and accurate database of contact information concerning domain-name registrants”. This should be done “in accordance with each Party's laws regarding protection of privacy and personal data”, the rule ironically reads.