Beyond the international harmonization of trademark law: the community trade mark as a model of unitary transnational trademark protection.

AuthorBlakely, Timothy W.
PositionEuropean Union

The rapid globalization of the economic marketplace has spurred a proliferation of international lawmaking with respect to intellectual property rights. Harmonization of laws has been called the "dominant impulse" for such international lawmaking initiatives.(1) This trend is clearly visible in the world of trademark law.

Trademarks perform specialized functions in the world of intellectual property. Traditionally, they are understood to identify the origin of a product.(2) With the increasing use of advertising and the growth of a consumer society, trademarks have gradually come to be understood as marks that serve to aid consumers with product differentiation, evaluation of product quality, and brand identification.(3) The role of the trademark is becoming more important as goods increasingly travel to distant markets where brand recognition may be the consumer's only assurance of quality and origin. The harmonization of international trademark law is a critical step in allowing trademarks to serve their important role in the global economy, and such harmonization could also serve as a stepping-stone toward the emergence of a unitary transnational system of trademark protection.(4)

The harmonization of trademark law has largely been an effort to escape the disjunction between the "dogmatic territoriality"(5) underlying the justification for the exercise of legislative and judicial power, and the economic and practical realities of intellectual property law.(6) Harmonization--by its very nature a process through which different jurisdictional laws are reformed to more closely resemble an agreed upon goal--fails, however, to escape the foundational role of territoriality in the enforcement of substantive trademark (and other intellectual property) law. Following harmonization, the laws of the individual nations are the only governing body of law,(7) and protection of those rights in foreign countries "is only an extension of the domestic right."(8)

Although scholars have debated the role, wisdom, and future of harmonization in the realm of international trademark law, the trend toward such harmonization is undeniable.(9) Progressive efforts at the harmonization of international trademark law have been underway for the past century, from the basic substantive and procedural innovations of the Paris Convention in the 1880s to the fully harmonized and unitary (if regional) trademark system introduced in the 1990s in the European Union.

The purpose of this Comment is to trace briefly the developments of the past century with respect to the harmonization of international trademark law, to discuss their shortcomings, and then to focus on the model of trademark protection developed in the European Union (the Community Trade Mark System).(10) This model has gone beyond the harmonization of trademark laws and has established a unitary trademark law governing the European Union. As such, it is a valuable model of the process and framework necessary for the creation of a greater transnational system of trademark protection, and it should be studied closely by those who envision the possibility of a unitary worldwide system of trademark protection.

Part I of this Comment introduces and defines the concept of harmonization and discusses the advantages as well as the inherent limitations of harmonization efforts. Part II discusses several of the principal international efforts at the harmonization of trademark protection. Part III explores the comprehensive development of the harmonization of trademark law in the European Union. Part IV explains how the harmonization of trademark law in the European Union set the stage for the creation of a unitary trademark system in Europe. Part V concludes with suggestions as to how the Community Trade Mark System can serve as a model for a unitary worldwide system of trademark protection, noting that the CTM moves us closer to a functional model of international trademark harmonization than any other model. A continued study of the evolution and success of the CTM will give trademark law scholars and practitioners valuable insights as new proposals for more comprehensive international trademark harmonization are put forth.

  1. HARMONIZATION: A PROCESS WITH INHERENT LIMITATIONS

    Harmonization is the process by which the varying laws of different sovereign entities are changed to more closely reflect a common set of legal principles agreed to by those sovereign entities.(11) The "rationales of harmonization ... are well known: efficiency, clarity, predictability."(12) Harmonization should not be confused, however, with international lawmaking, as it does not lead to a uniform set of agreed rules, but rather merely "directs a change of rules, standards or processes in order to avoid conflicts and bring about equivalence."(13) Therefore, the end product of harmonization is not a truly unitary body of law that governs a particular subject matter over a number of distinct jurisdictions. Instead, even after harmonization, the governing law in each jurisdiction is not the target set of legal principles, but the revised national law of each local jurisdiction. All harmonization can accomplish is the reformation of the individual jurisdictions' laws so that the difference between the laws of the distinct jurisdictions is smaller. Furthermore, the courts of the independent jurisdictions are likely to interpret the changed national law not by the considerations which led to the harmonization effort, but rather by the nuances and traditions of that legal subject matter as they have evolved in that jurisdiction's particular jurisprudence.

    This reality creates two inherent weaknesses and shortcomings in harmonization efforts: (1) true uniformity of law is unlikely given the varying political and legislative processes that each jurisdiction necessarily undertakes in its attempt to reach the target goals of harmonization; and (2) the interpretation and enforcement of the harmonized laws of each jurisdiction will be governed by the law of each local government, invariably leading to inconsistencies in the meaning and application of the law. In the end, harmonization does nothing to affect the essence of territoriality--that the laws of each particular jurisdiction determine the existence and enforcement of the legal rights for that territory. Harmonization is an important trend, however, and it has been an oft-utilized tool in creating trademark protection that can better serve the needs of international trade.(14)

  2. TRENDS IN HARMONIZATION: EFFORTS AT BASIC SUBSTANTIVE AND PROCEDURAL HARMONIZATION OF TRADEMARK REGISTRATION

    Clearly, "[al reliable, stable, and efficiently structured trademark system benefits consumer and business interests alike."(15) It became clear some time ago that the development of such a structured system would have to take place, at least to some degree, on an international level--especially given the increasingly international marketplace for goods identified by trademarks. Several attempts have been made to achieve some measure of harmonization that could provide greater certainty and predictability in the realm of trademark protection for those whose products cross national borders and for those who consume those products.

    1. The Paris Convention

      The genesis of harmonization efforts in the realm of international trademark law has its seeds in the nineteenth century. In 1883, with the passage of the Paris Convention for the Protection of Industrial Property,(16) "the first international effort to standardize and simplify the protection of intellectual property rights in Member States" was consummated.(17) The Pads Convention approached the issue of trademark protection through the application of two key principles: the National Treatment Principle and the Principle of Independence of Rights.

      The first, the National Treatment Principle, holds that member states should not be allowed to discriminate between their nationals and the nationals of other member states in affording trademark protection.(18) The National Treatment Principle necessarily carries with it the provision that a member state may refuse to extend or enforce trademark rights protection "to citizens or corporations of states that are not members of the Paris Convention."(19)

      The second principle, the Principle of Independence of Rights, asserts that the trademark rights granted in one member state are independent of trademark fights in all other member states.(20) Thus, a trademark owner is "subject exclusively to the national law of each country" that has granted trademark rights.(21) This limitation, that the substantive law regulating the rights of trademark owners remains national, illustrates well the degree to which the principle of territoriality is embedded in traditional notions of intellectual property law.

      The Paris Convention, however, does achieve some measure of procedural harmonization in that it gives a right of priority "to trademark registrants who have already registered their mark in another member nation, because of that prior registration."(22) It also provides for the special protection of "well known" trademarks, in part by permitting the registrant of a well known mark to institute cancellation proceedings based on the validity of its earlier registration.(23)

      Further, the Paris Convention provides a procedural framework that dictates that an application for trademark protection cannot be denied registration in a member nation "if a valid certificate of registration from another member nation is presented and certain criteria are met."(24) .The agreement also expressly "permits the conclusion of special agreements between member states. Presently, four such special agreements exist relating to trademarks: the Madrid Agreement,(25) the Trademark Registration Treaty,(26) the Madrid Protocol,[27] and the Trademark Law Treaty.[28],(29) Standing alone, however, the Paris Convention...

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