TransPacific Partnership (TPP) Negotiating Parties - TPP IP Chapter-Leaked Draft- Section C: Trademarks lyrics

{TRADEMARKS} {Section C: Trademarks} Article QQ.C.1: {Types of Signs Registrable as Trademarks} [NZ/US/AU/CL/PE/SG/CA/JP/MY37 propose: 1. [VN/BN/MX oppose: No] [Party may require, as a condition of registration, that a sign be visually perceptible, [VN/BN/MX oppose: nor may a Party] [VN/BN/MX propose: and] deny registration of a trademark solely on the ground that the sign of which it is composed is a sound [CL/CA/JP/MY oppose: or a scent] CL/CA/MX/MY propose: Each Party may provide trademark protection for scents].] A Party may require a concise and accurate description, or graphical representation, or both, as applicable, of the trademark. Article QQ.C.2: {Collective and Certification Marks} 1. Each Party shall provide that trademarks shall include collective marks and certification marks. A Party is not obligated to treat certification marks as a separate category in its domestic law, provided that such marks are protected. Each Party [JP/MX propose: may][ JP oppose: shall] also provide that signs that may serve as geographical indications are eligible for protection under its trademark system [38]39 [PE/NZ/MX/CL/BN/AU/US/JP/SG oppose; VN propose40: A Party may provide that Signs descriptive of geographical origin of goods or services, including geographical indication as defined in Article 22 of the TRIPS Agreement, may not be protected as trademarks other than collective and certification marks, unless they have acquired distinctiveness through use.] [US/PE/MX41/SG propose; AU/NZ/ VN/BN/MY/CL/CA oppose: 2. Pursuant to Article 20 of the TRIPS Agreement, each Party shall ensure that its measures mandating the use of the term customary in common language as the common name for a good or service ("common name") including, inter alia, requirements concerning --FOOTNOTES-- 37 Negotiators' Note: MY supports this article subject to further domestic implementation. 38 [JP propose: For clarity a Party may require that a sign has acquired distinctiveness through use, where the sign consists only of names of place.] 39 For purposes of this Chapter, geographical indication means indications that identify a good as originating in the territory of a party, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin. Consistent with this definition, any sign or combination of signs shall be eligible for protection under one or more of the legal means for protecting GIs, or a combination of such means. 40 Negotiators' Note: CA/MY is flexible on this proposal. 41 Negotiators' Notes: PE/MX/SG will go with consensus on this paragraph. 16-----PAGE BREAK----- the relative size, placement or style of use of the trademark in relation to the common name, do not impair the use or effectiveness of trademarks used in relation to such good or service. [42]]43[44] Article QQ.C.3: {Use of Identical or Similar Signs} Each Party shall provide that the owner of a registered trademark shall have the exclusive right to prevent third parties not having the owner's consent from using in the course of trade identical or similar signs, [PE/MY/VN/CA/MX oppose45: including subsequent geographical indications,] for goods or services that are related to those goods or services in respect of which the owner's trademark is registered, where such use would result in a likelihood of confusion. In the case of the use of an identical sign, [PE/MY/SG/CL/CA/MX/VN oppose46: including a geographical indication,] for identical goods or services, a likelihood of confusion shall be presumed. Article QQ.C.4: Each Party may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interest of the owner of the trademark and of third parties. [VN propose; AU/US/NZ/SG/MY/CL/PE/CA/JP/BN oppose: The owner of a registered trademark shall not have the right to prevent third parties from using geographical indications or other signs descriptive of goods and services even though they are identical or similar to the trademark unless such use would result in confusion.]47Article QQ.C.5: {Well Known Trademarks} 1. 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, --FOOTNOTES-- 42 [PE/US propose: For greater certainty, the existence of such measures does not per se, amount to impairment.] 43 Negotiators' Note: MX is still reflecting on this provision. JP is considering this provision. 44 [SG propose: this provision is not intended to affect the use of common names of pharmaceutical products in prescribing medicine.] 45 Negotiators' Note: JP is considering this provision. 46 Negotiators' Note: JP is considering this provision. 47 Negotiators' Note: MX will go with consensus with this paragraph. 17-----PAGE BREAK----- included on a list of well-known trademarks, or given prior recognition as a well- known trademark. 2. Article 6bis of the Paris Convention for the Protection of Industrial Property (1967) shall apply, mutatis mutandis, to goods or services that are not identical or similar to those identified by a well-known trademark, [48] [BN oppose: whether registered or not49,] provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the trademark, and provided that the interests of the owner of the trademark are likely to be damaged by such use. 3. Each Party recognizes the importance of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (1999) as adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO. [US/BN/CL/PE/MX/CA/JP/NZ/SG/VN propose; AU/MY oppose: 450. Each Party shall [PE/BN/MX/CA51 propose: according to domestic laws] provide for appropriate measures to refuse or cancel the registration and prohibit the use of a trademark that is identical or similar to a well-known trademark, [SG/VN propose: as being already well-known before the registration or use of the first-mentioned trademark,] for related goods or services, if the use of that trademark is likely to cause confusion [CA/SG/VN oppose:52 or to deceive or risk a**ociating the trademark with the owner of the well- known trademark, or constitutes unfair exploitation of the reputation of the well- known trademark.]] Article QQ.C.6: {Examination, Opposition and Cancellation / Procedural Aspects} Each Party shall provide a system for the examination and registration of trademarks which shall include, inter alia: (a) providing to the applicant a communication in writing, which may be electronic, of the reasons for any refusal to register a trademark; --FOOTNOTES-- 48 [US/CA/CL/MX/SG/NZ/VN/BN/AU/MY propose: Where a Party determines whether a mark is well-known in the Party, the Party need not require that the reputation of the trademark extend beyond the sector of the public that normally deals with the relevant goods or services.] 49 Negotiators' Note: MY support subject to domestic implementation. 50 Negotiators' Note: Parties reviewing the scope of this paragraph intersessionally. 51 Negotiators' Note: CA is flexible on this language, subject to its final attribution of this paragraph. 52 Negotiators' Note: JP is considering this provision.18-----PAGE BREAK----- (b) providing the opportunity for the applicant to respond to communications from the competent authorities, to contest an initial refusal, and to appeal judicially any final refusal to register a trademark; (c) providing an opportunity to oppose the registration of a trademark or to seek cancellation53 of a trademark; and (d) requiring that administrative decisions in oppositions and cancellation proceedings be reasoned and in writing. Written decisions may be provided electronically. Article QQ.C.7: {Electronic Trademarks System} Each Party shall 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. Article QQ.C.8: {Cla**ification of Goods and Services} Each Party shall adopt or maintain a trademark cla**ification system that is consistent with the Nice Agreement Concerning the International Cla**ification of Goods and Services for the Purposes of the Registration of Marks (NiceCla**ification) of [June 15, 1957], as revised and amended. Each Party shall provide that: [CA oppose: (a) registrations and the publications of applications indicate the goods and services by their names, grouped according to the cla**es established by the Nice Cla**ification 54; and] (b) goods or services may not be considered as being similar to each other on the ground that, in any registration or publication, they are cla**fied --FOOTNOTES-- 53 For greater certainty, cancellation for purposes of this Section may be implemented through nullity or revocation proceedings. 54 Parties that rely on translations of the Nice Cla**ification are required to follow updated versions of the Nice Cla**ification to the extent that official translations have been issued and published.19-----PAGE BREAK-----in the same cla** of the Nice Cla**ification. Conversely, each Party shall provide that goods or services may not be considered as being dissimilar from each other on the ground that, in any registration or publication, they are cla**ified in different cla**es of the Nice Cla**ification.Article QQ.C.9: {Term of Protection for Trademarks} Each Party shall provide that initial registration and each renewal of registration of a trademark shall be for a term of no less than 10 years. Article QQ.C.10 55: No Party may require recordal of trademark licenses: a. to establish the validity of the license; [US/CA/NZ/SG/JP/AU propose; VN/MX/BN/PE/CL/MY oppose: b. as a condition for the right of a licensee to join infringement proceedings initiated by the holder, or to obtain by way of such proceedings damages resulting from an infringement of the trademark which is subject to the license; or c. as a condition for use of a trademark by a licensee, to be deemed to constitute use by the holder in proceedings relating to the acquisition, maintenance and enforcement of trademarks.] Article QQ.C.11: {International Exhaustion of Rights} [CL/NZ/SG/VN/PE/MY/BN/AU/CA/MX propose; US/JP oppose: 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.] Article QQ.C.12: {Domain Names on the Internet} 1. 56 In order to address the problem of trademark [VN/MX propose: geographical indication and trade name] cyber-piracy, each Party shall adopt or maintain a system --FOOTNOTES-- 55 Negotiators' Note: AU supports this article ad referendum. 56 Negotiators' Note: AU supports this paragraph ad referendum.20---PAGE BREAK---for the management of its country-code top-level domain (ccTLD) that provides: (a) 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; (b) online public access to a reliable and accurate database of contact information concerning domain-name registrants57;in accordance with each Party's laws regarding protection of privacy 58 and personal data. 59 2. [PE/SG/CL/AU/NZ/MY/BN/CA oppose; US/VN/JP/MX propose: Each party shall provide [VN: oppose adequate and effective] [VN propose: appropriate] remedies against the registration trafficking 60, or use in any ccTLD, with a bad faith intent to profit, of a domain name that is identical or confusingly similar to a trademark [VN/MX propose: , geographical indication or trade name].]--FOOTNOTES-- 57 Negotiators' Note: Brunei can accept this provision pending completion of its database. 58 Negotiators' Note: US seeks further clarification on the scope of application of privacy data. 59 Negotiators' Note: AU/CL/MY/NZ/US/SG/JP support contingent on understanding that TPP will include a general provision related to privacy/disclosure of information; issues. 60 Negotiators' Note: JP seeks clarification as to whether "registration" is deemed to be synonymous with "acquiring the right to use" and reserves its position pending clarification of the term "trafficking".21---PAGE BREAK---