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.

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Page 500 of 677   |   Number of documents : 13533

Document symbol Notifying Member Member raising question Question Answer Date of document distribution  
IP/Q2/NLD/1 Netherlands 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.
The Supreme Court of the Benelux (the Benelux Gerechtshof) has handed down an interpretation of the term "valid reasons" in Article 5.2(a) of the BMW on two occasions. The Court ruled that any risk that would normally be run in the operation of 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/NLD/1 Netherlands 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 under Article 4.5 of the UBTL. A mark that could be confused with a well-known mark, within the meaning of Article 6bis of the Paris Convention, can be declared invalid. The same protection applies even if the marks relate to dissimilar products or services. This protection covers both marks for products and marks for services (Article 39 of the UBTL).
12/08/1997
IP/Q2/NLD/1 Netherlands 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/NLD/1 Netherlands 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 Dutch 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) of the UBTL affords the rightful claimant the right to prevent third parties from using the mark in the course of trade for the products or services for which the mark has been registered. Under these circumstances, the likelihood of confusion is not a requirement for protection. Article 13.A.1(b) provides that the rightful claimant can take action against any use of the mark or a similar sign in the course of trade for products or services for which the mark has been registered, or for similar products or services, when there is likelihood of an association by the public between the mark and the sign.
12/08/1997
IP/Q2/NLD/1 Netherlands 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.
If a mark has been registered in bad faith (Article 4.6 of the UBTL), the registration can be declared invalid if a case is brought to court within five years of the date on which the mark is filed for registration.
12/08/1997
IP/Q2/NLD/1 Netherlands 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/NLD/1 Netherlands United States of America 8. Please explain how geographical indications are protected under Dutch law, as required by TRIPS Articles 22 and 23.
Geographical indications are protected under the general prohibition of unlawful acts (Article 6:162 of the Civil Code). Registered geographical indications are protected under EC Regulation 2081/92 of 14 July 1992 of the European Council and Regulations 1107/96 of 12 June 1996 and 1263/96 of 1 July 1996 of the European Commission.
12/08/1997
IP/Q2/NLD/1 Netherlands United States of America 9. Please describe the methods by which industrial designs are protected in the Netherlands, 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 (UBDL) and the Dutch Copyright Act (AW) provide for protection of designs in the Netherlands. (b)Requirements for the protection of designs are set out in Article 1 of the UBDL. These requirements are that the product must be new and that the object of protection is a utensil. The rights to the design are granted when a design is first filed (Article 3 of the UBDL). Designs are tested by the Benelux Design Office only for violations of public order or decency, and there is no objections procedure (Article 9 of the UBDL). Designs can be filed either at the national services of the Benelux countries or at the Benelux Design Office in The Hague, Netherlands. The file must contain a photographic or graphical illustration of the object and must be accompanied by payment of the prescribed taxes (Article 8 of the UBDL). Under the AW, the designer (Article 10 AW) is granted copyright as soon as the design is completed, providing it has its own original character and a personal mark of the maker. There is no registration procedure. Ultimately, the courts will decide whether a design fulfils the requirements for protection of design rights or copyright. (c)Once a design has been filed with the Benelux Design Office, the depositor is granted an exclusive right to prevent others from producing, importing, exporting, selling, offering for sale, renting, offering for rent, exhibiting, delivering, using or keeping in stock for industrial or commercial purposes a design with the same or similar appearance (Article 14.1 UBDL). The maximum period of protection provided by the UBDL is 15 years from the filing date (Article 12 of the UBDL). Copyright gives the rightful claimant the exclusive right to prevent others from copying the design or making it public (Article 1 of the AW). The term of protection ends 70 years after the death of the maker (Article 37 of the AW). (d)The holder of a right based on the UBDL can bring an infringement case before a court and sue for declaratory judgement, compensation for damages, an order to refrain from certain activities or to take certain actions, such as withdrawal of the products that infringe the rights and the provision of information on suppliers. If the court finds that the infringement was intentional, the holder of the rights can sue for destruction of the products in breach of those rights and of the production machinery, claim property rights to the goods in question and claim any earnings from the activities in breach of the rights. No conditions other than those mentioned in Article 14.1 of the UBDL are required. The holder of a copyright can also bring an infringement case to court without any further conditions. He can sue for declaratory judgement, compensation for damages, an order to refrain from certain activities or to take certain actions, such as withdrawal of the products in breach of the copyright and the provision of information on suppliers, as well as destruction of the products or property rights to the goods in question. (e)The appearance of objects which are necessary to obtain a technical effect is excluded from protection under the UBDL. The Court of Justice of the European Communities has ruled that design rights based on the UBDL will expire not only in the Benelux countries, but throughout the European Economic Area (EEA) once the subject of protection has been introduced to the market in the EEA, either by the rightful claimant or by a third party with the consent of the rightful claimant. There are no specific exceptions to the protection provided by the AW.
12/08/1997
IP/Q2/NLD/1 Netherlands United States of America 10. Please explain how textile designs are protected under your law.
Textile designs can be protected under both the UBDL and the AW. Neither Act provides for specific exceptions for textile designs.
12/08/1997
IP/Q2/NOR/1 Norway 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?
Yes. Norway does 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. This follows from the Trademarks Act, Section 30 and more specifically from Section 5 of the Trademarks Regulations.
24/09/1997
IP/Q2/NOR/1 Norway European Union 1. For the purpose of clarification: According to Article 2.1 of the TRIPS Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967). The Norwegian Trademarks Act, Section 29 (supplemented by the Trademarks Regulations, Section 11) states that "telle quelle" registration according to Article 6quinquies of the Paris Convention shall be "subject to reciprocity". In light of the fact that the condition of reciprocity was deleted from the Trademarks Act, Sections 18 and 30 regarding priority in order to comply with the TRIPS Agreement, the Government should explain why a condition for reciprocity is upheld in Section 29.
It is merely due to an oversight that the condition of reciprocity was not deleted from the Norwegian Trademarks Act, Section 29, at the same time as the corresponding condition was deleted from Sections 18 and 30. The Norwegian Government has become aware of this oversight and has formally proposed to amend Section 29 of the Trademarks Act (cf. Ot.prp.nr. 73 (1995 96) p. 11). The proposal is currently being considered by the Norwegian Parliament (Stortinget).
24/09/1997
IP/Q2/NOR/1 Norway European Union 2. In the Government's proposal to the Norwegian Parliament (Stortinget) to ratify the TRIPS Agreement, the Government stated that it is necessary to amend Norwegian law in order to implement the protection for geographical indications for wines and spirits under Article 23 of the TRIPS Agreement (St.prp.nr. 65 - 1993-94, p. 169). The Norwegian Government should inform about the status of the proposed amendments to Norwegian legislation and at what time these amendments are expected to enter into force.
The Norwegian Government has formally proposed amendments to the Trademarks Act and the Marketing Control Act, in order to ensure full compliance of Norwegian law with the requirements of Article 23 of the TRIPS Agreement (cf. Ot.prp.nr. 73 (1995 96) p. 5). The proposal is currently being considered by the Norwegian Parliament (Stortinget). It is expected that the amendments will enter into force on 1 January 1997.
24/09/1997
IP/Q2/NOR/1 Norway European Union 3. Under Article 25.2 of the TRIPS Agreement, each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. In the Government's proposal to the Norwegian Parliament (Stortinget) to ratify the TRIPS Agreement (St.prp.nr. 65 - 1993-94, p. 169), the Government held that it is unclear whether Article 25.2 requires specific provisions in Norwegian legislation for the protection of textile designs. According to the Ministry of Justice's green paper of 21 December 1995, the Ministry is of the opinion that the assessment of whether it is necessary to give specific provisions in Norwegian law should be postponed until the international development, especially in the European Union, is further clarified. As the Norwegian Government is obliged to implement the provisions of the TRIPS Agreement within the time limits given in Article 65, the Norwegian Government should clarify whether Norwegian law protects textile designs, including fashion (Article 25.2 of the TRIPS Agreement). If yes, which are the conditions and what is the legal basis?
Textile designs, including fashion, may be protected under the Norwegian Designs Act of 29 May 1970, No. 33. Please note that the legal definition of a "design" in Section 1 of the Designs Act also covers textile designs. Chapter 1 of the Designs Act prescribes the conditions that must be satisfied in order for a design to be registered. Section 2 provides the fundamental condition: "a design may as a general rule only be registered if it differs essentially from what was known prior to the filing date of the application for registration".
24/09/1997
IP/Q2/NOR/1 Norway Japan 1. Since it is not clearly stipulated in the Designs Act that textile designs are protected in conformity with the TRIPS Agreement, please explain under which provision of the Act or other copyright related law these designs are protected. Moreover, to make sure that the opportunity to seek and obtain protection for textile designs is not impaired unreasonably, please explain your system or practice particularly with regard to cost, examination or publication (cf. paragraph 2 of Article 25 of the TRIPS Agreement).
Textile designs, including fashion, may be protected under the Norwegian Designs Act of 29 May 1970, No 33. Please note that the legal definition of a "design" in Section 1 of the Designs Act also covers textile designs. The registration procedure will shortly be amended. The new procedure, which is expected to enter into force on 1 January 1997, is briefly as follows: -An application for a registration of a design must be made in writing to the Patent Office and must be accompanied by the prescribed fees (Section 10). The basic fee is at present NOK 900. -The Patent Office examines whether the conditions for registration of the design are fulfilled. If the applicant has not complied with the prescribed requirements, or if the Patent Office has other objections to the registration, the applicant shall be notified thereof in an official letter and be requested to express his or her views or make amendments within a specified time limit. If, after the receipt of the applicant's reply, the Patent Office still finds an objection to the acceptance of the application and if the applicant has had occasion to comment on the objection, the application shall be rejected, unless the Patent Office finds reasons for sending the applicant another official letter. -If an application is in the prescribed form and no objection to the registration is found to exist, then the design is registered and the registration is published (Section 18). The public then has four months to enter oppositions (Section 20). If an opposition is entered, then the Patent Office may cancel the registration if it finds that the registration should not have been made, or reject the opposition if it finds nothing wrong with the registration (Section 21). The decision of the Patent Office may be appealed to the Board of Appeals (Section 22). The decision of the Board of Appeals may be brought before a court of law (Section 23). -If the application is in the prescribed form, the design will normally be registered within six months after the filing date. The Patent Office has initiated a project with the aim of speeding up the registration procedure.
24/09/1997
IP/Q2/NOR/1 Norway Japan 2. The word "selling" is not included in the scope of the right to a design provided for in Section 5 of the Designs Act. If the word "assigning" corresponds to the word "selling", please elaborate on the difference between the two (cf. paragraph 1 of Article 26 of the TRIPS Agreement).
The first paragraph of Section 5 of the Designs Act reads as follows: "The design right implies, with the exceptions established in this Act, that nobody except the holder of the design right (the holder of the design) may without authorization exploit the design commercially by manufacturing, importing, offering for sale, transferring or leasing goods, the appearance of which does not differ essentially from the design, or goods incorporating anything that does not differ essentially from the design." Norway is of the opinion that this provision is consistent with Article 26 of the TRIPS Agreement.
24/09/1997
IP/Q2/NOR/1 Norway Japan 3. In your country, it is stipulated in Section 7 of the Designs Act that importation of spare parts and accessories to be used for the repair of aircraft may be excluded from the right to a design. Please explain its consistency with paragraph 2 of Article 26 of the TRIPS Agreement.
Paragraph 2 of Article 26 of the TRIPS Agreement allows Members to provide "limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties". As Japan correctly points out, Section 7 of the Norwegian Designs Act stipulates that importation of spare parts and accessories to be used for the repair of aircraft, may be excluded from the right to design. This provision is necessary in order for Norway to comply with the requirements of Article 27 of the Convention on International Civil Aviation, done at Chicago on 7 December 1944, to which Norway is a party. It only allows for very limited exceptions to the protection of industrial designs, and it is the view of Norway that these exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and that they do not unreasonably prejudice the legitimate interests of the owner of the protected design. Indeed, it is Norway's understanding that the purpose of paragraph 2 of Article 26 of the TRIPS Agreement is precisely to allow Members to retain provisions like Section 7 of the Norwegian Designs Act.
24/09/1997
IP/Q2/NOR/1 Norway Japan 4. In your country, the first duration of protection available is less than ten years, and any renewal thereafter cannot be requested at the time of registration. It may happen, therefore, that the duration of protection is less than ten years when the first duration has lapsed and the restoration is not permitted afterwards. Would this not be contrary to the spirit of paragraph 3 of Article 26 of the TRIPS Agreement?
Section 24 of the Norwegian Designs Act stipulates that a design registration shall be in force for up to five years from the day on which the application for registration was filed, and that it may, upon request, be renewed for two further periods of five years each. Each of these latter periods runs from the expiration of the preceding period. There are only two requirements for the renewal of the registration (cf. Section 25): firstly, the renewal must be requested no earlier than one year before and no later than six months after the expiration of the preceding period, and secondly, the applicant must pay the prescribed fees within the same interval. It is left entirely to the holder of the design right to decide whether or not to renew the right. The duration of protection available is thus 15 years. It is difficult to see how this could be contrary to the spirit of paragraph 3 of Article 26 of the TRIPS Agreement.
24/09/1997
IP/Q2/NOR/1 Norway United States of America 1. Chapter 1, Section 1 of Norway’s Trademarks Act sets forth the type of sign that is capable of being protected as a trademark. The list of signs does not include colour marks. Please explain whether colour marks are capable of constituting a trademark under Norway’s trademark law, and if so, under what authority.
In theory, the list of signs under Section 1 of the Norwegian Trademarks Act includes colour marks. However, a trademark may, according to Section 13, not be registered unless it is capable of distinguishing the goods of the holder from those of others. A colour mark may therefore only be registered as a trademark if it is considered to be well known within the circle of trade concerned in Norway as a distinctive sign for someone's goods or services, i.e. if the mark more specifically has acquired a "secondary meaning" in which the public identifies the colour with the product. There is at present no single colour mark registered as a trademark in Norway.
24/09/1997
IP/Q2/NOR/1 Norway United States of America 2. Please explain whether Norwegian trademark law establishes a presumption of likelihood of confusion in the determination of confusing similarity in cases where identical marks are used on identical goods, as required by TRIPS Article 16.1. If so, please identify and explain the legal basis for this presumption.
It follows from Sections 4 and 6 of the Trademarks Act that a likelihood of confusion shall be presumed if an identical sign is used for identical goods or services. Section 4 states that the right to a sign in accordance with Sections 1 to 3 has the effect that, in the course of trade, nobody except the holder may use the same sign for his or her goods or services (cf. the third paragraph of Section 1). An identical sign is always considered as the "same sign" within the meaning of this provision, and it follows from Section 6 that the provision always applies to identical goods or services. In other words, the holder does not have to prove likelihood of confusion in each particular case where an identical sign is used for identical goods or services – the Trademarks Act presumes that such likelihood of confusion exists in these cases.
24/09/1997
IP/Q2/NOR/1 Norway United States of America 3. TRIPS Article 20 provides that use of a trademark shall not be encumbered by special requirements such as use in a special form. However, Chapter 1, Section 10 of the Trademarks Act states that “where this is found reasonable, a court of law may decide that one or both signs in future may be used only for particular goods in a certain area or in a particular manner, such as in a certain shape or form or with reference to a geographical location or with the addition of the name of the proprietor or any other elucidating addition” in situations where a registered mark has co-existed with an unregistered trademark for a period of time. Please explain how these provisions comply with TRIPS Article 20.
Article 20 of the TRIPS Agreement provides that the use of a trademark shall not be unjustifiably encumbered by special requirements such as use in a special form. Section 10 of the Norwegian Trademarks Act prescribes that a court of law may order that the use of a trademark be encumbered by special requirements such as use in a special form, but only in cases where this is necessary to prevent any likelihood of confusion as referred to in Sections 3, 8 and 9 of the Trademarks Act, and where it is found reasonable. Norway believes that the word "unjustifiably" was included in Article 20 of the TRIPS Agreement precisely so that the TRIPS Agreement would not preclude provisions in national law such as Section 10 of the Norwegian Trademarks Act.
24/09/1997

Page 500 of 677   |   Number of documents : 13533

 
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