Critical analysis of the international conventions of Trademark in

bringing the harmonization of TRIPS.
 ABSTRACT

Keywords- Global market, Free trade, Intellectual Property Rights, World Economy
 TABLE OF CONTENTS

S.NO PARTICULARS PAGE.NO

1 INTRODUCTION
1.2 RESEARCH PROBLEM 04 - 07
1.3 RESEARCH QUESTIONS
1.4 RESEARCH METHODOLOGY
1.5 HYPOTHESIS
2 TRADEMARK CONVENTIONS AND THEIR
HARMONISATION ON IP LAWS
2.1 PARIS CONVENTION 09
2.2 VIENNA AGREEMENT

3 MADRID AGREEMENT 11
  3.1 MADRID PROTOCOL
3.2 NICE CLASSIFICATION

4 TRADEMARK LAW TREATY 12

4.1 SINGAPORE TREATY
5 SUGGESTIONS AND CONCLUSION 13
6 BIBLIOGRAPHY 14

1. INTRODUCTION
“Intellectual property includes the rights relating to –literary, artistic and scientific works-
performances and performing artists, photographs and broadcasts-inventions in all fields of
human endeavour-scientific discoveries industrial designs-trademarks, service marks, and
commercial names and designations-protection against unfair competition and all other rights
resulting from intellectual activity in the industrial, scientific, literary or artistic fields 1. The
purpose of the trademark is to distinguish the goods or services of one undertaking from
those of other undertakings. The essential function of the trademark, to identify and
distinguish the source of origin, has arguably become less essential, 2 while other functions
have become at least as essential: the communication, advertising and investment functions.
The trademark system thus serves to protect producers against unfair competition from other
producers seeking to free ride on the goodwill and positive reputation earned by the
trademark owner3.

The scope of the trademark corresponds with the classes that designate one or more goods
and/or services. According to this specificity principle the senior trademark is protected
against similar or identical marks for the same goods and services to avoid confusion. Unless
the trademark is a famous trademark,4 in which case the trademark is also protected against
similar or identical junior marks for dissimilar goods or services5 to avoid dilution by
blurring, tarnishment or free-riding.

1.2 RESEARCH PROBLEM

Trademarks are nothing but an important value that each of the trademark owner hold in their
respective business. Despite international conventions there are some discrepancies in the
matter of giving protection to the trademarks such as service marks being allowed in one
country and whereas in some countries such as Zambia it is not yet recognised. This problem
exists till now even after having many harmonising conventions and protocols for the

1
990 Ilayda Nemlioglu / Procedia Computer Science 158 (2019) 988–998 Nemlioglu/
Procedia Computer Science 00 (2019) 000–000 3
2
Scandecor Development AB v Scandecor Marketing AB, [2001] UKHL 2,1 [2001] 2 C.M.L.R. 30.
3
A Handbook on the WTO TRIPS Agreement
4
Famous trademarks in the US, trademarks with a reputation in the EU, and well-known trademarks following
the Paris Convention for the Protection of Industrial Property and Agreement of Trade-Related Aspects of
Intellectual Property Rights terms. Each term has its own scope and conditions for recognition.
5
A senior famous trademark is protected against an identical or similar junior mark for non-similar, similar and
identical goods and services. Cases that involve an identical trademark for identical goods or services are called
double identity cases. Judgment of the Court (Sixth Chamber) C-292/00, Davidoff & Cie SA and Zino Davidoff
SA v Gofkid Ltd., January 9, 2003, paras 24-26.
trademark law in the global IP market. This paper revolves around the protection of
trademark in this modern era of IP globalisation.

1.3 RESEARCH QUESTIONS:

Q1. What was the role played by international conventions in protecting the trademark
around the global market?

Q2. Whether the conventions favored for the harmonisation of the Trademark regime?

1.4 RESEARCH METHODOLOGY-

The methodology adopted for the purpose of conducting research on this paper is purely
doctrinal. The data has been collected from various primary and secondary sources
comprising of various international law books, articles and other primary sources like treaties,
conventions and reports of various organizations. It is purely an interpretative and analytical
study.

For the purpose of convenience this paper has been divided into five chapters.

 The first chapter would basically deal with the introduction of the entire topic and would
go on to identify the research problem and the existing legal scenario of the same.
 The second chapter would be descriptive which would focus on the various conventional
laws on IP in relation to the global harmony and view their status as to how each countries
perceive the WIPO laws.
 The third chapter would discuss the regulations of the IP which has resulted in the growth
of the economy and the development of the IP in relation to the global market.
 The fourth chapter would discuss the parallel imports of IP goods in the light of
globalisation about the efforts made by the WIPO.
 The concluding chapter would sum up the entire discussion in the chapters above and
would contain certain possible recommendations for resolving the issues and challenges
in the harmonisation of IP laws in the global market.

1.5 HYPOTHESIS-

Intellectual Property is one of the key players in our global economy.

2. GLOBALISATION AND THEIR HARMONISATION ON IP LAWS

TRIPS constitutes the most important attempt to establish a global harmonisation of
Intellectual Property (IP) protection and enforcement, creating international standards for the
protection of patents, copyrights, trademarks and design6. The period since the mid-1990s has
seen sweeping and globalised reforms in the laws and standards protecting intellectual
property rights7. The harmonisation of IPRs introduced by the TRIPS Agreement has led to a
race to the top which is certainly not advantageous to countries wishing to catch up by
acquiring the expertise, knowledge and innovations of the leaders. Moreover, for most WTO
members, TRIPS is an exogenous introduction of rules and standards 8. Global trade and
investment have become increasingly liberalized in recent decades. This liberalization has
lately been accompanied by substantive new requirements for strong minimum standards of
intellectual property (IP) protection, which moves the world economy toward harmonized
private rights in knowledge goods9.

2.1 INTELLECTUAL DEBATE AROUND THE FORMATION OF GLOBAL LAW

Looking at the U.N. system at large, one quickly concludes that through their activities,
institutions such as the World Bank, the International Monetary Fund, the World Intellectual
Property Organization, the World Health Organization, or the United Nations Industrial
Development Organization contribute to the emergence of norms, rules, or practices of direct
relevance to the development of global law10 international law and comparative law are
important fields within the broader concept of global law11. It is important to encourage the
sharing of knowledge and views in these fields through research and publications, which is
exactly what international and comparative law reviews enable. We can therefore only
welcome the support given by universities and other sponsors to these law reviews, since they
help to foster the constructive and intellectual debate around the formation of global law12

6
Daniele Archibugi, Andrea Filippetti, ‘The Globalisation of Intellectual Property Rights: Four Learned
Lessons and Four Theses, Global Policy’ Volume 1 Issue 2 May 2010
7
Keith Maskus , The New Globalisation of Intellectual Property Rights: What's New This Time?,
https://doi.org/10.1111/aehr.12049
8
Daniele Archibugi, Andrea Filippetti, ‘The Globalisation of Intellectual Property Rights: Four Learned
Lessons and Four Theses, Global Policy’ Volume 1 Issue 2 May 2010
9
Keith E. Maskus, Jerome H. Reichman, THE GLOBALIZATION OF PRIVATE KNOWLEDGE GOODS
AND THE PRIVATIZATION OF GLOBAL PUBLIC GOODS, Journal of International Economic Law,
Volume 7, Issue 2, June 2004, Pages 279–320, https://doi.org/10.1093/jiel/7.2.279
10
The World Bank, Standard Bidding Documents: Procurement of Works (2000)
11
Penn Law European Society, PLES Conference, http://www.law.upenn.edu/alumni/ples
12
Pierrick Le, ‘Goff Global Law: A Legal Phenomenon Emerging from the Process of Globalization Source:
indiana Journal of Global Legal Studies’, Vol. 14, No. 1 (Winter 2007), pp. 119-14, Indiana University Press,
https://www.jstor.org/stable/10.2979/gls.2007.14.1.119
 Empirical evidence suggests that these reforms are not having much impact on innovation in
the developing world but are improving the processes and efficiency of technology
diffusion13. In connection with the process of globalization and its impact on international
trade, the question has arisen as to whether a notion of global law, converging around
common international practices and values, is emerging for the benefit of multinational
economic players and the international community at large14. In 2004, one of the most
reputable European international and comparative law specialists made the point that “the
growing globalisation requires a harmonisation and unification of the rules of law governing
world trade15.” Not surprisingly, this statement was made when advocating the need for a
“Global Commercial Code.”16

The results of the study indicate that globalization explains only 15% of the variance in
income inequality.

More specifically, the results show that

(1) strengthening intellectual property rights and openness are positively correlated with
income inequality;

(2) foreign direct investment is negative and significantly correlated with income inequality
but this is not robust to different model specifications;

(3) the institutional infrastructure is negatively correlated with income inequality17.

Developing countries may need to take the lead in policy experimentation and IP innovation
in order to offset overly protectionist tendencies in the rich countries and to maintain the
supply of global public goods in an emerging transnational system of innovation18.

3. INTERNATIONAL IP CONVENTIONS AND GLOBALISATION

13
Keith Maskus , The New Globalisation of Intellectual Property Rights: What's New This Time?,
https://doi.org/10.1111/aehr.12049
14
. This question was one of the topics debated during the Globalization of the Legal Profession Symposium at
the Indiana University School of Law, on April 6, 2006. This article sets out in greater detail the views
expressed by the author during his presentation at the Symposium.
15
. Ole Lando, A Global Commercial Code, 50 Recht der Internationalen Wirtschaft [R.I.W.] 161, 161 (2004)
(F.R.G.).
16
Professor Lando takes the view in his article that existing international conventions as well as other
internationally recognized legal principles should be collected to form the substance of this “Global Commercial
Code.”
17
Samuel Adams,
Globalization and income inequality: Implications for intellectual property rights, Journal of Policy Modeling,
Volume 30, Issue 5, 2008, Pages 725-735, ISSN 0161-8938,
18
Keith E. Maskus, Jerome H. Reichman, THE GLOBALIZATION OF PRIVATE KNOWLEDGE GOODS
AND THE PRIVATIZATION OF GLOBAL PUBLIC GOODS, Journal of International Economic Law,
Volume 7, Issue 2, June 2004, Pages 279–320, https://doi.org/10.1093/jiel/7.2.279
The global economy, including developed and developing nations alike, is becoming more
innovation-driven—powered by knowledge, creativity, and technology, each of which is
fundamentally supported by intellectual property (IP) and intellectual property rights (IPR)
protections. And yet, over the past two decades, the policy debate over IP’s role has come
under an increasingly active and coordinated attack, driven by IPR sceptics and opponents
hailing from a variety of academic and multilateral institutions, nongovernmental
organizations (NGOs), and some developing nations and policymakers therein 19. Despite
tremendous changes in technologies and business practices, as well as the need for greater
global innovation to help address global policy challenges, the international framework and
debate around IP largely pivots around the positions of IPR opponents who favour weak or
non-existent protections and enforcement, and who view IP as enabling monopolistic rents
imposed by wealthy multinationals and rich nations20. As such the IP conventions aim to
harmonise all country laws to improve the globalisation.

 3.1 IP REGULATIONS IN RELATION TO THE GLOBAL ECONOMIC MARKET

Intellectual property represents the main value component of many trade transactions21.
Indeed, global trade flows are increasingly dominated by knowledge-intensive goods and
services, which are growing faster than capital- and labour-intensive flows22. Global cross-
border exports of commercial knowledge- and technology-intensive goods and services
reached an estimated $4 trillion in 2014, consisting of $1.6 trillion of commercial knowledge-
intensive services and $2.4 trillion of exports of high-tech products23. In fact, knowledge—
rather than labor, capital, or resource-intensive components—represents about one-half of
current global trade flows; and this knowledge-intensive component is growing faster, at
about 1.3 times the rate of labour-intensive flows24. This is partly due to the rise of
knowledge-intensive business services—such as computer-related services (e.g., software and
19
Stephen Ezell Nigel Cory, ‘The Way Forward for Intellectual Property Internationally’, April 25, 2019
20
Stephen Ezell Nigel Cory, ‘The Way Forward for Intellectual Property Internationally’, April 25, 2019
21
International Trade Center, Bringing SMEs onto the E-Commerce Highway (Geneva: International Trade
Centre, 2016), http://www.intracen.org/uploadedFiles/intracenorg/Content/Publications/Bringing SMEs onto the
e-Commerce Highway_final_250516_Low-res.pdf.
22
.James Manyika et al., “Global Flows in a Digital Age” (McKinsey Global Institute, April 2014),
https://www.mckinsey.com/business-functions/strategy-and-corporate-finance/our-insights/global-flows-in-a-
digital-age.
23
.National Science Board, Science and Engineering Indicators 2016: Chapter 6: Industry, Technology, and the
Global Marketplace (Washington, D.C.: National Science Foundation Board, 2016),
https://www.nsf.gov/statistics/2016/nsb20161/uploads/1/9/chapter-6.pdf.
24
McKinsey Global Institute defines knowledge-intensive goods and services flows as those that have a high
R&D component or utilize highly skilled labor. As such, they help transmit information, ideas, and expertise
among exchanging parties. James Manyika et al., “Global Flows in a Digital Age: How Trade, Finance, People,
and Data Connect the World Economy” (McKinsey Global Institute, April, 2014),
information processing), research and development (R&D) services, and business services
(e.g., legal, accounting, and advertising)—which provide critical intermediate inputs into
other economic activity. Research estimates that while services account for just 20 percent of
gross exports worldwide, the share more than doubles to 41 percent when considering value-
added exports25.

Although developed economies as a group dominate knowledge-intensive flows, developing

countries’ share is growing rapidly. China’s knowledge-intensive flows are the world’s
second largest26. Indicative of a broadening distribution, a recent European Commission (EC)
and Organization for Economic Cooperation and Development (OECD) report into
intellectual property and the world’s top 2,000 companies by R&D spending showed these
companies’ headquarters were distributed across 44 countries, while their subsidiaries were
spread across more than 100 countries27. While multinationals may only represent one source
of R&D investment, the broader trend is evident as emerging economies’ world share of
R&D expenditure increased from 12 percent in 1992 to 26 percent in 2010. Furthermore, as a
common measure of innovative activity, patent applications filed by the residents of
emerging economies at their national offices grew by 10.4 percent annually from 1992 to
2011, compared with 2.3 percent growth for OECD countries28. In 2015, the World
Intellectual Property Organization (WIPO) reported that IP offices in Asia received the bulk
of world IP filings (for industrial designs, patents, trademarks, and utility models)29. In China
alone, the number of patents increased from 600,000 in 2010 to almost 1.5 million in 2014,
while the country also has the most active trademarks in the world and one-third of the
world’s industrial design registrations. In 2015, for the second consecutive year, Huawei
Technologies of China was the top Patent Cooperation Treaty applicant, with 3,898
applications published.30

25
Robert Johnson, “Five Facts About Value-Added Exports and Implications for Macroeconomics and Trade
Research,” Journal of Economic Perspectives, Vol. 28, No. 2, pp. 119–142 (2014).
26
James Manyika et al., “Global Flows in a Digital Age.”.
27
OECD, World Top R&D Investors: Industrial Property Strategies in the Digital Economy (Brussels and Paris:
European Commission and OECD, 2017),
http://publications.jrc.ec.europa.eu/repository/bitstream/JRC107015/kjna28656enn.pdf.
28
WIPO, Ideas Production and International Knowledge Spillovers: Digging Deeper Into Emerging Countries
(Geneva: WIPO, August 2017), http://www.wipo.int/edocs/pubdocs/en/wipo_pub_econstat_wp_35.pdf
29
WIPO, WIPO IP Facts and Figures 2016 (Geneva: WIPO, 2016),
http://www.wipo.int/edocs/pubdocs/en/wipo_pub_943_2016.pdf
30
Ibid.
Therefore, what’s at stake in the debate over intellectual property is nothing less than an
essential framework condition for global trade and innovation31. With innovation truly the
most important “good” for the future of the global economy and society, policymakers cannot
afford to take it for granted. For innovation does not fall like “manna from heaven,” as
economist Robert Solow once suggested. Rather, innovation is the product not only of market
incentives for innovators (enabled by IP protection), but also of other incentives, rules, and
policies that collectively comprise complex national innovation systems. These include
policies related not only to IP but also to scientific research, technology commercialization,
investments in information and communications technology, education and skills
development, taxes, trade, government procurement, competition, and regulatory policies.
Moreover, in an interconnected world, innovations in one country get applied in virtually all
nations. For example, if an innovator in South Korea comes up with much better battery
technology, the entire world benefits32.

4. THE PARALLEL IMPORTS OF IP GOODS IN THE LIGHT OF

GLOBALISATION

Copyright has emerged as one of the most important means of regulating the international
flow of ideas and knowledge-based products, and will be a central instrument for the
knowledge industries of the twenty-first century. Those who control copyright have a
significant advantage in the emerging, knowledge-based global economy. The fact is that
copyright ownership is largely in the hands of the major industrialized nations and of the
major multimedia corporations, placing low per capita income countries as well as smaller
economies at a significant disadvantage33.

           Despite the increasing volume of India’s trade in print material, its global position
remains low in comparison to many other countries. This is surprising given the popularity of
English as an important language for reading. World exports of printed material increased
from US$ 36.4 billion to an average of US$ 47.2 billion 34. In light of the globalization of
international markets and the ever-increasing ties among global economies, a philosophy of
free trade is far more desirable than any protectionist regime. Free trade allows for the
31
Robert Atkinson and Stephen J. Ezell, Innovation Economics: The Race for Global Advantage (Yale
University Press, 2012).
32
Stephen Ezell Nigel Cory, ‘The Way Forward for Intellectual Property Internationally’, April 25, 2019
33
UNESCO (1998). World Information Report 1997/98, UNESCO, Paris, p.320.
http://www.unesco.org/webworld/com_inf_reports/wirenglish/chap23.pdf
34
The Impact of Parallel Imports of Books, Films / Music and Software on the Indian Economy with Special,
Ministry of Human Resource Development (Copyright Division, Department of Higher Education) Government
of India.
development of emerging nations by providing them with access to working markets. It also
allows developed nations to tap into the resources of the world's nations through a
competitive economy, while ensuring that there will be no exploitation of nations holding
weak bargaining positions by inefficient international rent seekers. The United States should
adopt a progressive stance and not exclude parallel imports from the U.S. marketplace35.

With transportation costs proportionately low, distant competitors will enter the now-
sheltered markets of those companies with goods produced more cheaply under scale-
efficient conditions. Global competition spells the end of domestic territoriality, no matter
how diminutive the territory may be. When the global producer offers its lower costs
internationally, its patronage expands exponentially. It not only reaches into distant markets,
but also attracts customers who previously held to local preferences and now capitulate to the
attractions of lower prices. The strategy of standardization not only responds to worldwide
homogenized markets but also expands those markets with aggressive low pricing36.

5. SUGGESTION/CONCLUSION

I would say that the globalisation has played a vital part of both in positive and negative
concept especially in the field of Intellectual property rights. Since the globalisation has
grown and has now been part and parcel of our world trade economy the WTO has played its
role well and have established various organisations in the filed of IP too.

To be specific I would say that WIPO being the mother of our international IP trade has made
its member nations to provide a national treatment to any of the IP applications as if it was
applied in their own nations. But still there exists an issue of the software which are being
copyrighted in India and whereas in US the software is being patented so there exists an issue
of duration of years of protection which is the problematic concept in the field of Protection
of any IP in a global market. The issue is that software patented in United States for 25 years
so when the owner of the software registers in United States for 25 years and in India under
copyright for 60 years then the company’s economy would fail as in U.S the software will
come in public domain after 25 years.

As such the software copyrighted in India for 60 years but in U.S the patent law is
contradicting so as a result the export system of a company would fail in the global market

35
RICHARD M. ANDRADE", THE PARALLEL IMPORTATION OF UNAUTHORIZED GENUINE
GOODS: ANALYSIS AND OBSERVATIONS OF THE GRAY MARKET, U. Pa. J. Int'l Bus. L, [Vol. 14:3]
36
Theodore Levitt, The Globalization of Markets From the Magazine (May 1983).
and thereby that would lead to a financial crisis in one country due to the globalisation of IP
products that is being produced and sold under different branches of member states.
Therefore, the WIPO though have taken the weapon of the globalisation all over the word in
cases of the world trade economy should possess certain qualities like it needs more
involvement of all member nations and has to upgrade to new developments in order to avoid
errors in the world trade economical market.      Also, it has to harmonisation laws that ensure
uniformity of all country laws and its equal enforcement. And talk about under- developed
nation’s economy which needs more attention to attain a proper globalisation.

BIBLIOGRAPHY-