HOW IS INTERNATIONAL TRADEMARK INFRINGEMENT HANDLED ACROSS BORDER?

INTRODUCTION:

The conduct of trademark has dual nature it has both national and international dimension its protection is governed by both the national laws and regulations and international treaties, which jointly serves a consolidated set of Regulation of Intellectual Property Rights.

In order to be homogeneous with the level of protection all over the world, we have leading international instruments and institutions. trademarks promote action and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also restricts the activities of unfair competitors as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system allows skilled and enterprising individuals to produce and market goods and services in the most equitable manner possible; this has thereby facilitated international trade. With the establishment of the WTO, trademark law in India has been modernized through the Trade Marks Act, 1999, along with the Rules thereunder and is in harmony with two major international treaties on the subject, namely, The Paris Convention for Protection of Industrial Property and TRIPS Agreement.

THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY, 1883:

The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on 20 March 1883, was one of the first intellectual property treaties. It established a union for the protection of industrial property. The Convention is still in force. The substantive provisions of the Convention fall into three main categories: national treatment, priority right, and common rules.

TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS) AGREEMENT:

With the establishment of the World Trade Organization (WTO), the importance and role of intellectual property protection has been crystallized in the Trade-Related Intellectual Property Systems (TRIPS) Agreement. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) treaty in 1994. The general goals of the TRIPS Agreement are contained in the Preamble to the Agreement, which reproduces the basic Uruguay Round negotiating objectives established in the TRIPS area by the 1986 Punta del Este Declaration and the 1988-89 Mid-Term Review. These objectives include

i. the reduction of distortions and impediments to international trade,

ii. promotion of effective and adequate of intellectual property rights, and

iii. ensuring that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.

TRADEMARK LAW TREATY (TLT), 1994:

The treaty was introduced with the objective of bringing uniformity and efficiency to national and regional trademark registration systems. It seeks to achieve this by simplifying and harmonizing procedural requirements, thereby minimizing administrative complexities and ensuring greater consistency and predictability in the filing and management of trademark applications across multiple jurisdictions.

CROSS-BORDER REGULATION OF TRADEMARK INFRINGEMENT

· Protectable subject matter: The basic rule contained in Article 15 of the TRIPS Agreement is that any sign, or any combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertakings, must be eligible for registration as a trademark, provided that it is visually perceptible. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, must be eligible for registration as trademarks.

· Rights Conferred: The owner of a registered trademark must be granted the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion.

MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS (1891) AND THE PROTOCOL RELATING TO THAT AGREEMENT (1989)

The system of international registration of marks is governed by two treaties: the Madrid Agreement, and the Protocol relating to that Agreement. The Madrid Agreement and the Madrid Protocol are accessible to any State that is a member of the Paris Convention for the Protection of Industrial Property. The two treaties are parallel and independent and States may adhere to either of them or to both. In addition, an intergovernmental organization which maintains its own Office for the registration of marks may become party to the Protocol. States and organizations which are party to the Madrid system are collectively referred to as Contracting Parties. The system makes it possible to protect a mark in a large number of countries by obtaining an international registration which has effect in each of the Contracting Parties that has been designated. An international application for trademark registration may be submitted exclusively by a natural person or legal entity that maintains a legitimate connection with a Contracting Party to the Agreement or the Protocol. Such a connection may be established through the applicant’s place of business, domicile, or nationality, thereby ensuring that only those with a recognized legal or territorial link to a member jurisdiction are entitled to seek protection under the international registration system.

Once the International Bureau receives the international application, it carries out an examination for compliance with the requirements of the Agreement, the Protocol, and their Common Regulations. This examination is restricted to formalities, including the classification and comprehensibility of the list of goods and/or services; any matter of substance, such as whether the mark qualifies for protection or whether it is in conflict with an earlier mark, is left to each designated Contracting Party to determine. If there are no irregularities, the International Bureau records the mark in the International Register, publishes the international registration in the WIPO Gazette of International Marks, and notifies it to each designated Contracting Party.

CONCLUSION

Trademark protection has become a vital element in international trade and digital commerce. While rights are territorially limited, frameworks like the Paris Convention, TRIPS, TLT, and the Madrid System have strengthened cross-border protection by harmonizing procedures and ensuring broader recognition of rights. Yet, challenges such as jurisdictional conflicts and digital infringements remain. India’s alignment through the Trade Marks Act, 1999, reflects its commitment to global standards, highlighting the need for continuous cooperation to safeguard brand identity and promote fair competition worldwide.