Review of TRIPS Implementing Legislation - Search

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Article 63.2 of the TRIPS Agreement requires Members to notify the laws and regulations made effective by that Member pertaining to the subject matter of the Agreement to the Council for TRIPS in order to assist the Council in its review of the operation of the Agreement.

This page allows you to search Members' questions and answers on notified laws and regulations. You can consult search results on screen, download and print them in Excel format. You can also download individual documents.

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Page 499 of 677   |   Number of documents : 13533

Document symbol Notifying Member Member raising question Question Answer Date of document distribution  
IP/Q2/LIE/1 Liechtenstein United States of America [Follow-up question from the US] In response to question 15 it was stated that the requirements of Article 6bis of the Paris Convention and TRIPS Articles 16.2 and 16.3 are being considered in the revision of the trademark law. Has specific language been proposed to bring the law into compliance with these TRIPS obligations? If so, what is this language? If not, how will this protection be provided?
It has to be noted, that the revision has not passed Parliament yet. The second and third reading of the revised Trademark Act will take place in the December session of Parliament. Therefore, at the moment no official translation of the revised text is available. The notification in English will be handed in after the Trademark Act has entered into force. Nevertheless, it can be stated that the requirements of Article 6bis of the Paris Convention and Articles 16.2 and 16.3 of the TRIPS Agreement will be taken into account in Articles 3 and 15 of the revised Trademark Act. Referring to the facts mentioned above, the obligations set out in Article 3 deal with the relative exceptions which do not allow a registration of a mark, for example, the identity with an earlier trademark for the same or similar goods and services, the similarity with an earlier trademark for the same or similar goods and the definition of an earlier mark. The obligations set out in Article 15 have been summarized in the answer to the follow-up question to initial question 6 from the United States.
12/08/1997
IP/Q2/LUX/1 Luxembourg General question Does your country recognize a right of priority on the basis of an earlier trademark application filed in any other WTO Member by a national of a WTO Member?
The Uniform Benelux Trademark Law and the Uniform Benelux Design Law do not yet recognize a priority right for nationals of all WTO Members. At the moment, both laws rule that only nationals of Members that are signatories to the Paris Convention can invoke a priority right. For both laws, a change has been proposed by the governments of the three Benelux countries (Protocols of 7 August 1996). These two proposals are pending approval by the national parliaments of the Benelux countries. After approval, nationals of all WTO Members can invoke a priority right when they file an application for a Benelux trademark or a Benelux design.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America 1. Article 1 of the uniform law governing marks in the Benelux countries sets forth the types of signs that are capable of being protected as a trademark. This list of signs does not include colour marks. Please indicate whether colour marks are capable of constituting a trademark under the uniform law governing marks in the Benelux countries, and if so, under what authority.
The list of signs capable of being protected as a trademark in Article 1 of the Uniform Benelux Trademark Law is not an exhaustive list. It is possible under the UBTL that a colour can constitute a trademark if it fulfils the general requirements for protection, i.e. if it is capable of distinguishing the products or services of a certain company. The Benelux Trademark Office in The Hague, Netherlands can refuse registration of a colour as a trademark when it does not meet the requirement of distinctiveness. At the end, it is up to the judge in an infringement case to decide whether or not a colour does fulfil the requirements of protection, including distinctiveness.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America 2. Please explain whether the nature of goods or services to which a trademark is to be applied can serve as an obstacle to the registration of the mark under either Benelux trademark law or Luxembourg trademark laws. If so, please identify and explain the subject matter excluded under the authority, and the relative provisions of such law that serve as a basis for these exclusions.
There are no national laws in Belgium, the Netherlands or Luxembourg on the protection of trademarks. The UBTL is a common law of the Benelux countries which is applicable in Belgium, the Netherlands and Luxembourg. The Benelux Trademark Office has the authority to refuse registration of trademarks when the nature of products or services is an obstacle to registration in only one case. A sign has to be refused as a trademark when the shape of a product is dictated by the nature of that product, or when its shape affects the essential worth of the product (Article 1 UBTL). This exclusion of protection is meant to avoid conjunction of trademark protection and copyright or design protection.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America 3. Please explain whether the uniform law governing marks in the Benelux countries provides for the acceptance of applications to register a trademark based on an intent to use the mark pursuant to TRIPS Article 15.3. Please explain the requirements and conditions that are placed on parties wishing to register and maintain applications of a mark based on an intent to use the mark.
There are no requirements in the UBTL relating to the intention to use a trademark when filing an application for a trademark.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America [Follow-up question from the US] Please explain whether the uniform law governing marks in the Benelux countries provides for the acceptance of applications to register a trademark based on an intent to use the mark pursuant to TRIPS Article 15.3. If it does, please identify the relevant section of this law.
The acceptance of an application for a Benelux trademark is not dependant on the intention to use the mark. There are no such requirements in the UBTL and in that respect the law fully complies with Article 15.3 of the TRIPS Agreement.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America 4. Article 5.2(a) of the uniform law governing marks in the Benelux countries allows the proprietor of a trademark to present "valid reasons" to justify continued registration despite non-use of a trademark. Please explain the types of circumstances that would be sufficient to satisfy this provision, including, where relevant, results of administrative or judicial decisions addressing the issue.
In two cases, the Supreme Court of the Benelux for trademarks and designs (the Benelux Court of Justice) has given an interpretation of what is meant by "valid reasons" in Article 5.2(a) UBTL. The Court ruled that any risk that is normal when running an enterprise cannot constitute a valid reason for non-use (Winston decision, 27 January 1981, NJ 1981, 333; Kim decision, 18 November 1988, NJ 1988, 299).
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America 5. Please explain how unregistered well-known marks are protected in the Benelux countries, as required by TRIPS Articles 16.2 and 16.3.
Well-known marks are protected through Article 4.5 UBTL. It is not possible to obtain a registration for a mark that can cause confusion with a well-known mark in the meaning of Article 6bis of the Paris Convention. The protection is also applicable when the conflicting marks are used for dissimilar products or services. This protection applies to marks for products and to service marks (Article 39 UBTL).
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America [Follow-up question from the US] Does the Benelux trademark law place any requirements or conditions on owners of unregistered well-known marks who have brought an action against a third party's use of the unregistered well-known mark before that action can proceed?
The UBTL states that the proprietor of a well known mark can only get a court ruling forcing a third party to stop its use of this well known mark if this mark has been registered in the Benelux countries (Article 12.A.1). In the event that the proprietor of an unregistered well-known mark starts legal proceedings against a third party's use of this mark, the proprietor of the well known mark always has the option of registering his mark during the proceedings, on the basis of Article 12.A.3, and thus fulfilling this specific requirement of the above mentioned Article 12.A.1.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America 6. Please explain whether a presumption of likelihood of confusion is provided under either the uniform law governing marks in the Benelux countries or Luxembourg laws or regulations in the determination of confusing similarity involving identical marks that are used on identical goods, as required by TRIPS Article 16.1. If so, please provide an indication of the basis for this presumption.
Article 13.A.1(a) UBTL gives the right holder the right to prevent third persons from using the mark in the course of trade for products or services for which the mark has been registered for. Under these circumstances, likelihood of confusion is not required. Article 13.A.1(b) UBTL sets out that the right holder can take action against any use of the mark or a similar sign in the course of trade for products or services the mark has been registered for or for similar products or services, when there is likelihood of association to the public between the mark and the sign.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America 7. Please explain whether the uniform law governing marks in the Benelux countries imposes time limits on actions to cancel trademark registrations that have been obtained by means of fraud or bad faith.
When a mark has been registered in bad faith (Article 4.6 UBTL), the registration can be declared invalid if an action is brought to court within five years from the date of application of the mark.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America [Follow-up question from the US] According to this response, marks registered in bad faith can only be cancelled if an action is brought to court within five years from the date of deposit. Please explain how the Benelux countries implement Article 6bis(3) of the Paris Convention, which states that no time limit shall be fixed for requesting the cancellation of a mark registered in bad faith.
Article 14.B.2 in conjunction with Articles 4.5 and 4.6 of the UBTL states that a registration for a mark that causes confusion with a well-known mark (Article 4.5), or for a mark that has been registered in bad faith (Article 4.6), can be declared invalid if a case is brought to court within five years of the date of deposit. The Supreme Court of the Benelux, however, ruled in the Adidas case (BenGH 23 December 1985) that the time limit of five years in Article 14.B.2 does not apply when a mark is registered in bad faith and the infringed mark is a well-known mark as mentioned in Article 6bis of the Paris Convention. This means that, in these cases, no time limit applies for invoking invalidation of a mark registered in bad faith.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America 8. Please explain how geographical indications are protected under Luxembourg law, as required by TRIPS Articles 22 and 23.
Registered geographical indications are protected through EC Regulation 2081/92 (14 July 1992) of the European Council, and the Regulations 1107/96 (12 June 1996) and 1263/96 (1 July 1996) of the European Commission.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America 9. Please describe the methods by which industrial designs are protected in the Luxembourg, in particular: (a)the form or forms of intellectual property used to protect the design (e.g., patent, copyright, sui generis); (b) the conditions that must be satisfied to obtain the grant of such protection (e.g., whether designs must be new or original and the parameters of these concepts), and a brief description of the registration or granting procedure; (c)the nature of the rights granted and the term of protection provided; (d)the nature of remedies available to the owner of each type of protection, including a description of the conditions that may be imposed (e.g., whether commercial use is required); and (e)whether any exceptions to protection or rights exist for each type of intellectual property involved.
(a)The uniform law governing the protection of designs in the Benelux (Uniform Benelux Design Law, UBDL) and the Copyright Law of Luxembourg (LCL) (Law of 29 March 1972, as amended) offer protection for designs in Luxembourg. (b)A design can be protected through the UBDL if it meets the requirements set out in Article 1 of that law. The design has to fulfil the requirement of novelty and the object of protection has to be a utility product. The first application of a design causes the design right (Article 3 UBDL). Designs are not examined by the Benelux Design Office except for conflict with public order or morality, and there is no opposition procedure (Article 9 UBDL). An application can be made at the national industrial property services in the Benelux countries or at the Benelux Design Office in The Hague, Netherlands. The application has to contain a (photo-)graphical representation of the appearance of the object and payment of the prescribed fees (Article 8 UBDL). Under Article 8 of the LCL the maker of a design obtains a copyright as soon as he has made the design available to the public, if the design has its own original character and a personal mark of the maker. There is no registration procedure. In cases before court, for design or copyright protection, it will be judged whether a design fulfils the protection requirements for a design right or copyright. (c)Once a design application has been filed at the Benelux Design Office, the applicant obtains an exclusive right to prevent others to produce, import, export, sell, offer for sale, rent, offer for rental, exhibit, deliver, use or keep in stock for industrial or commercial purposes a design with the same or similar appearance (Article 14.1 UBDL). The maximum term of protection in the UBDL is 15 years from the filing date (Article 12 UBDL). A copyright gives the right holder the exclusive right to prevent others to copy his design or to make it public (Article 8 LCL). The term of protection ends 50 years after the death of the maker (Article 2 LCL). This term will be 70 years under the modified LCL which will enter into force at the end of 1996. (d)The holder of a design right based on the UBDL can bring an infringement case before court and ask for declatory judgements, a claim for damages, an order to abstain from certain activities or to act, such as recalling infringing products, and providing information about suppliers. When court has stated the infringement was on purpose, the right holder can claim destruction of the infringing products and productive machinery, a property claim on these goods and a claim on money obtained from infringing activities. No further conditions than those mentioned in Article 14.1 UBDL are required. The holder of a copyright can also bring an infringement case to court without any further conditions. He can ask for declaratory judgements, a claim for damages, an order to abstain from certain activities or to act, such as recalling infringing products, as well as destruction of the infringing products or a property claim on these goods. (e)Excluded from protection under the UBDL are those appearances of objects which are necessary to obtain a technical effect. The Court of Justice of the European Communities has ruled for design rights based on the UBDL that such rights will be exhausted in the European Economic Area (EEA) and not only in the Benelux countries, when the product has been brought on the market in the EEA by the right holder or by a third person with his consent. Under the LCL there are no specific exceptions to protection.
12/08/1997
IP/Q2/LUX/1 Luxembourg United States of America 10. Please explain how textile designs are protected under your law.
Textile designs are protectable under the UBDL and under the LCL. The general conditions for protection must be fulfilled.
12/08/1997
IP/Q2/NLD/1 Netherlands General question Does your country recognize a right of priority on the basis of an earlier trademark application filed in any other WTO Member by a national of a WTO Member?
The Uniform Benelux Trademark Law and the Uniform Benelux Design Law do not yet recognize a priority right for nationals of all WTO Members. At the moment, both laws rule that only nationals of Members that are signatories to the Paris Convention can invoke a priority right. For both laws, a change has been proposed by the governments of the three Benelux countries (Protocols of 7 August 1996). These two proposals are pending approval by the national parliaments of the Benelux countries. After approval, nationals of all WTO Members can invoke a priority right when they file an application for a Benelux trademark or a Benelux design.
12/08/1997
IP/Q2/NLD/1 Netherlands United States of America 1. Article 1 of the uniform law governing marks in the Benelux countries sets forth the types of signs that are capable of being protected as a trademark. This list of signs does not include colour marks. Please indicate whether colour marks are capable of constituting a trademark under the uniform law governing marks in the Benelux countries, and if so, under what authority.
The list of signs qualifying for protection as a trademark in Article 1 of the Uniform Benelux Trademark Law (UBTL) is not an exhaustive list. Under the UBTL, a colour constitutes a trademark if it fulfils the requirements for protection. These relate to the ability of a colour to distinguish the products or services of a company. The Benelux Trademark Office in The Hague, Netherlands can refuse to register a colour as a trademark if it does not meet the requirements of distinctiveness. Ultimately, it is up to the courts to decide whether or not a colour fulfils the requirements for protection, including distinctiveness, if an infringement claim is brought.
12/08/1997
IP/Q2/NLD/1 Netherlands United States of America 2. Please explain whether the nature of goods or services to which a trademark is to be applied can serve as an obstacle to the registration of the mark under Dutch or Benelux trademark law. If so, please identify and explain the subject matter excluded under the authority, and the relative provisions of such law that serve as a basis for these exclusions.
There are no specific Dutch, Belgian or Luxembourg laws on the protection of trademarks. The UBTL is a uniform law of the Benelux countries which is applicable in Belgium, Luxembourg and the Netherlands. The Benelux Trademark Office is the authority that decides whether to register or refuse registration of trademarks. In only one case can the nature of a product or service constitute an impediment to registration, i.e. when the shape of the product is dictated by its nature, and the shape affects the essential value of the product (Article 1 UBTL). In this case, refusal is compulsory. This exclusion of protection is intended to avoid an overlap between trademark protection and copyright and design protection.
12/08/1997
IP/Q2/NLD/1 Netherlands United States of America 3. Please explain whether the uniform law governing marks in the Benelux countries provides for the acceptance of applications to register a trademark based on an intent to use the mark pursuant to TRIPS Article 15.3. Please explain the requirements and conditions that are placed on parties wishing to register and maintain applications of a mark based on an intent to use the mark.
The UBTL imposes no requirements for the application of a trademark relating to the intention to use a trademark.
12/08/1997
IP/Q2/NLD/1 Netherlands United States of America [Follow-up question from the US] Please explain whether the uniform law governing marks in the Benelux countries provides for the acceptance of applications to register a trademark based on an intent to use the mark pursuant to TRIPS Article 15.3. If it does, please identify the relevant section of this law.
The acceptance of an application for a Benelux trademark is not dependant on the intention to use the mark. There are no such requirements in the UBTL and in that respect the law fully complies with Article 15.3 of the TRIPS Agreement.
12/08/1997

Page 499 of 677   |   Number of documents : 13533

 
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