Public
FTAA.soc/civ/105/Add.1
September 18, 2003

Original: English
 

FTAA - COMMITTEE OF GOVERNMENT REPRESENTATIVES ON THE PARTICIPATION
 OF CIVIL SOCIETY

CONTRIBUTION IN RESPONSE TO THE OPEN AND ONGOING INVITATION — EXECUTIVE
SUMMARY
 

FREE TRADE AREA OF THE AMERICAS SECOND DRAFT AGREEMENT EXECUTIVE
SUMMARY OF INTA COMMENTS ON CHAPTER ON INTELLECTUAL PROPERTY RIGHTS

The Second Draft Agreement is intended to comply with and to mirror in many respects prior IP agreements, such as the Trade-related Aspects of Intellectual Property Agreement (TRIPS) and the Trademark Law Treaty (TLT). INTA takes the position that TRIPS provisions should be considered “minimum” standards in the FTAA, and applauds without reservation the support of the Negotiating Group for the Madrid Protocol.

TRADEMARKS

Protectible Subject Matter:
INTA urges the adoption of sound marks, three-dimensional marks and retail service marks as protected signs and services, respectively, as foreseen in TRIPS.

Principles:
Many Member countries recognize varying degrees of rights in unregistered marks. INTA opposes any requirement that Member States adopt the “first to file” principle. Among other problems, any such requirement would bar enforcement of rights in well-known but unregistered marks.

Exhaustion of rights (Parallel Imports):
In order to ensure consumer confidence in the consistent level of quality of trademarked products and services, INTA urges the Ministers to remove provisions that would provide for either regional or international exhaustion. Such provisions would deny a trademark owner’s right to control the quality and image associated with its goods in each Member State.

Well-known marks:
INTA proposes adoption of the provisions of the WIPO Joint Resolution of September 1999. The Draft’s provisions include a limited definition of a “well-known” mark. INTA opposes the unwarranted requirement that a mark be registered to be deemed well known and to be accorded the protection to which well-known marks are entitled.

Term of protection:
INTA is in agreement with the Draft’s initial trademark registration term of ten years and the renewal term of ten years.

Requirements of use:
INTA supports the first provision 9.1 that requires parties to apply the use provisions of TRIPS Article 19. The language of the second provision 9.1 is vague and requires clarification. This provision calls for cancellation of a trademark registration on the ground of non-use for a period of at least five years from the “date of registration.” It is not clear whether this refers to the date registration was granted or the effective date of registration, which may result in confusion. INTA recommends that the provision more closely follow the language used in Section 45 of the Canadian Trademark Act.

Licensing and assignment:
The recording requirements create an undue burden on trademark owners and unjustified impediments to the enforcement of trademark rights, and therefore unnecessarily impede trade.

Procedural issues:
INTA supports Article 12.3, which requires Members to work toward implementing electronic methods of filing, processing and maintaining trademark applications and registrations. In addition, we urge the Ministers to adopt the provision of Article 12.5, which improves upon TRIPS by providing for opposition as well as cancellation proceedings.

Domain names on the Internet:
INTA is in agreement with the participation of contracting parties and national governments in the Government Advisory Committee (GAC) of the Internet Corporation of Assigned Names and Numbers (ICANN).

INTA also endorses the requirement of participation of country-code top-level domains (ccTLDs) of contracting parties in the ICANN Uniform Dispute Resolution Procedures (UDRP) for resolving alleged cybersqatting.

INTA proposes that contracting parties provide for an accurate, publicly accessible WHOIS database.

INTA requests clarification of the Draft’s provisions for cancellation and transfer of domain names.

GEOGRAPHICAL INDICATIONS-APPELLATIONS OF ORIGIN

The second Draft contains provisions on Geographical Indications/Appellations of Origins that closely resemble those of the Lisbon Agreement, and would preempt longstanding trademark rights. In light of the availability of unfair competition laws, certification marks, and similar existing avenues of protection, INTA strongly opposes any provisions that would result in the unwarranted preemption of trademark rights. Further, INTA recommends that FTAA provide for a “first in time, first in right” approach to resolving conflicts between trademarks and GIs/AOs, as set forth in TRIPS Article 16 (1).

PROTECTION OF [EXPRESSIONS OF] FOLKLORE

The provisions contained within this section provide special protection to specific interest groups without proof of likelihood of confusion. Since many “expressions of folklore” consist of combinations of common geometric shapes, these provisions would be likely to inhibit legitimate use of shapes. Determining if a mark consists of the names, denominations, words, letters or signs used to distinguish “expressions of folklore” would be a tedious and perplexing task.

ENFORCEMENT

INTA recommends the adoption of the anti-counterfeiting and anti-piracy measures proposed in TRIPS Part III, the WIPO Model Anti-Counterfeiting and Anti-Piracy Laws, and the World Customs Organization (WCO) Model Legislation as amended by INTA.