Summer/Fall 1999
The Trademark Law Treaty (TLT) contains twenty-five articles supported by implementing regulations. Among the treaty’s key provisions, as outlined by one of the leading legal treatises on trademark law, McCarthy on Trademarks and Unfair Competition, are the following:
- Under U.S. law, trademarks and service marks are given equal standing, with the title trademark being given to a mark applied to goods and the title service mark being given to a mark applied to services. However, many foreign countries treat trademarks and service marks differently. The TLT now requires member nations to register service marks and equate service marks with trademarks for purposes of the treaty requirements.
- U.S. law permits an applicant to file one application in multiple international classes of goods and services. However, many foreign countries have required that an application only designate one international class. The TLT now requires the use of multi-class applications that permit a single application to cover goods and services falling in multiple classes.
- Since 1989, U.S. law permitted applicants to file intent-to-use applications, with documentation and proof of use required only prior to actual registration. The TLT now permits member nations to use an intent-to-use application system with proof of use also required as a predicate to registration. This will finally allow U.S. applicants in the process of investigating the utility and availability of a mark to begin the process of registering the mark in foreign countries as a precursor to actual introduction of the mark into the foreign market.
- The TLT prohibits the requirement of certain technical formalities, such as a certificate from a register of commerce or proof of registration in another country, except where Convention date priority is desired.
- All countries set out their independent requirements for filing an application to register a mark. In the past such requirements may have differed between countries. The TLT now defines the elements that can be required as a basis for receiving an application filing date.
- Unlike the U.S., many countries have maintained a requirement that any signatures being submitted in support of registration of a mark be notarized or otherwise legalized in accordance with the laws of that nation. Under the TLT, it will no longer be necessary in most instances to notarize or otherwise legalize signatures.
- The TLT greatly simplifies the procedures for recording changes in name and ownership of trademark applications and registration. A standard international form is provided in the treaty regulations and each nation must accept the request for change if made on an official form. However, a nation may require that the request be made in the local official language. A significant simplification is a provision permitting one form to serve to change ownership of multiple applications or registrations. TLT, arts. 11(1)(h), 11(3). If a change in ownership results from a corporate merger, a member nation may require a certified copy of an official document evidencing the merger. A member nation may not require, as a condition of changing title to a registration, that an assignee prove that it received the business or relevant goodwill of the trademark. TLT, art. 11(4)(iv). However, this provision does not preclude a member nation, such as the United States, from enforcing a rule against assignments in gross.
- Many countries have differing terms for renewal of trademarks, resulting in the need to closely monitor and record the current dates of renewal for each registration in each country and monitor any changes to renewal requirements in each country. The TLT now harmonizes the term of registration and of succeeding renewals at ten years.
- The TLT defines the conditions that may be required for renewal of registration. It specifically prohibits the requirement of a declaration or proof of actual use as a condition of renewal, as required by United States law. TLT, art. 13(4)(iii). However, a nation can apply use requirements during the registration period outside of the renewal procedure. This is how the United States implemented this treaty obligation. The Lanham Act section 9 was amended to conform to the requirements of the treaty. However, the requirement of an affidavit of use was maintained by taking the obligation out of the renewal provisions of section 9 and inserting the obligation in section 8 as an independent and continual ten year obligation separate from the “renewal” process.
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §29:34 (4th Ed., June 1999 release).