[ncdnhc-discuss] FTAA - ICANN and trademark provisions

[James Love]

-------- Original Message --------
Subject: FTAA - ICANN and trademark provisions
Date: Fri, 08 Nov 2002 08:19:02 -0500
From: James Love <james.love at cptech.org>
To: random-bits <random-bits at lists.essential.org>

New FTAA text at http://www.ftaa-alca.org.  Here briefly is the FTAA
provision on ICANN and Domain Names, followed by the more general provisions
on trademarks.



                                                       Derestricted
                                               FTAA.TNC/w/133/Rev.2
                                                   November 1, 2002

                                 9.


[Article 13. Domain names on the Internet]

[13.1. Each Party shall participate in the Government Advisory
Committee (GAC) of the Internet Corporation for Assigned Names
and Numbers (ICANN) to promote appropriate country code Top Level
Domain (ccTLD) administration and delegation practices and
appropriate contractual relationships for the administration of
the ccTLDs in the Hemisphere.  Each Party shall have its domestic
Network Information Centers (NICs) participate in the ICANN
Uniform Dispute Resolution Procedure (UDRP) to address the
problem of cyber-piracy of trademarks.]

[13.1. Each Party shall make efforts, to the extent possible, to
promote an adequate administration of domain names.]

PART II. INTELLECTUAL PROPERTY RIGHTS

SECTION 1. TRADEMARKS

Article 1. Protectable Subject Matter

1.1. Any sign or any combination of signs, capable of
distinguishing goods or services of one  person1 from those of
other persons,  shall be capable of constituting a trademark.

[1.2. Signs that are susceptible of graphic representation may be
registered as trademarks.]

[1.2. Each Party may require, as a condition of registration,
that signs be visually perceptible.]

[1.2. No Party may require that signs be visually perceptible to
be eligible for registration.]

[1.3. Trademarks shall include [service marks,] [and] collective
marks [and certification marks].]

[1.3. Each Party may provide for protection of collective and
certification marks.]

[Article 2. Principles]

[2.1. Each Party shall adopt the principle of first to file and
priority in registration shall be determined on the date and hour
of the presentation of the application.]

Article 3. Prohibitions

3.1. Each Party may establish prohibitions on the registration of
trademarks, provided that they are not inconsistent with regional
or multilateral agreements on intellectual property to which it
is a party.

[3.2. Each Party may refuse to register trademarks that consist
of or comprise immoral matter, reproduce national symbols, or are
deceptive to the public.]

Article 4. Exhaustion of Rights

[4.1. The registration of a trademark shall not entitle a right
holder to prevent a third party from trading goods protected by
such registration if the good has already been introduced in the
market in any country by the right holder or by any other person
with the authorization of the right holder or by someone
economically related to him, in particular when the goods and the
containers or packages have been in direct contact with them and
have not been modified, altered, or deteriorated.
For purposes of this article, two persons are economically
related where one person can exercise a decisive influence on the
other, either directly or indirectly, with respect to the use of
the rights on the trademark, or where a third party may exercise
such an influence on both persons.]

[4.1. This Chapter shall not affect the authority of each Party
to determine the conditions, if any, under which the exhaustion
of rights related to products legitimately introduced in the
market by, or with the authorization of the owner of the
trademark shall apply.

However, if a Party recognizes the principle of domestic
exhaustion or the principle of non-exhaustion, the right holder,
based on his registration or grant, shall not prevent the
circulation of patented goods or goods bearing a trademark, when
legitimately introduced in the market under a compulsory license
or any other safeguard.

Each Party undertakes to review their domestic legislation within
a period not exceeding five years after the entry into force of
this Agreement, in order to adopt, at a minimum, the principle of
regional exhaustion in regard to all Parties.]

[4.1. Each Party agrees to apply the principle of regional
exhaustion of rights, i.e., the holder of the intellectual
property right may not prevent the free trade of legitimate
products, once lawfully introduced into the market in any Party,
whether by the right holder himself or by a licensee or third
party authorized by the right holder, provided that the products
and the containers or packaging that have been in direct contact
with such products have not been modified or altered.

Each Party shall have two years from the entry into force of this
Agreement to incorporate this principle in their national
legislation.]

Article 5. Rights Conferred

[5.1. The owner of a registered trademark shall have the
exclusive right to prevent all persons not having the owner's
consent from using in the course of trade identical or similar
signs [, including geographical indications,] for goods or
services  [that are identical or similar] [that are related] to
those goods or services in respect of which the owner's trademark
is registered, where such use would result in a likelihood of
confusion.]

[In case of the use of an identical sign for
[identical][identical or similar][related] goods or services, a
likelihood of confusion shall be presumed.  The rights described
above shall not prejudice any existing prior rights, nor shall
they affect the possibility of each Party making rights available
on the basis of use.]

Article 6. Well-Known Marks

[6.1. Each Party shall protect well known marks pursuant to
Article 6 bis of the Paris Convention and article 16.2 and 16.3
of the TRIPS Agreement.]

[6.2. In applying article 6 bis of the Paris Convention, no Party
shall require that the reputation of the trademark extend beyond
the sector of the public that normally deals with the relevant
goods or services.]

[6.3. In order to demonstrate that the mark is well-known, all
evidence [allowed by the Party in which such claim is being
pursued] may be used.]

[6.4. Article 6bis of the Paris Convention (1967) shall apply,
mutatis mutandis, to goods or services which are not similar to
those [in respect of which a trademark is registered][identified
by a well-known trademark, whether registered or not,] provided
that use of that trademark in relation to those goods or services
would indicate a connection between those goods or services and
the owner of the trademark and provided that the interests of the
owner of the trademark are likely to be damaged by such use.]

Article 7. Exceptions

[7.1. Each Party may provide limited exceptions to the rights
conferred by a trademark, such as fair use of descriptive terms,
provided that such exceptions take account of the legitimate
interests of the trademark owner and of third parties.]

[7.1. Each Party may establish exceptions pursuant to Article 17
of the TRIPS Agreement.]

Article 8. Term of Protection

8.1. Initial registration and each renewal of registration of a
trademark shall be for a term of not less than ten years [from
the date of filing of the application or the date of its
registration according to the legislation of each Party].  The
registration of a trademark shall be renewable indefinitely [as
long as it complies with the conditions for renewal].

Article 9. Requirement of Use

[9.1. Each Party shall apply the provisions of Article 19 of the
TRIPS Agreement.]

[9.1. Registration may be cancelled if, after five years of the
date of registration, a trademark has not been effectively and
genuinely used by the owner or by a third party with the express
consent of the owner, within the territory of the Party that has
granted the registration for specific goods or services; or if
such use has been suspended for the same uninterrupted period of
time.  This may be claimed through the exercise of the relevant
action, unless there are valid reasons for non-use of the
trademark.]

[9.1. Use of a trademark shall be required by a Party to maintain
registration of a trademark.]

[9.2. In procedures for cancellation due to non-use, according to
the national legislation of each Party, the burden of proof on
actual use of the trademarks shall be on the holder of the mark.]

[Article 10. Other Requirements]

[10.1 Each Party shall apply Article 20 of the TRIPS Agreement.]

Article 11. Licensing and Assignment

[11.1. Each Party may determine the conditions for the licensing
and assignment of trademarks pursuant to article 21 of the TRIPS
Agreement.]

[11.2. Licensing agreements shall be in writing and registered
with the competent body of the Party and shall not include
clauses that restrain trade. If a license is not registered it
shall not have effect against third parties.]

[11.2. The competent authorities of each Party may implement
mechanisms for the recording of trademark licenses.]

[11.2. No Party shall require recordal of trademark licenses to
establish the validity of the license or to assert any rights in
a trademark.]

[11.3. Licenses may be exclusive or non-exclusive. If the license
does not include an exclusivity clause, it shall be presumed that
non-exclusive rights have been granted to the licensee.]

Article 12. Procedural Issues

12.1. Each Party shall ensure that procedures for applying for,
processing, registering and maintaining the registration of
trademarks are sufficiently clear and transparent, respecting
principles of due process.

[12.2. Each Party shall provide a system for the registration of
trademarks, which shall include:
a)written notice to the applicant2of the reasons for the refusal
    to register its trademark;
b)a reasonable opportunity for the applicant to respond to the
    notice;
c)in the case of a final refusal to register, written notice to
    the applicant of the reasons for the final refusal; and
d)for each decision rendered in an opposition or cancellation
    proceeding, a written explanation of the reasons for the
    decision.]


[12.3. Each Party shall work, to the maximum degree practical, to
provide a system for the electronic application, processing,
registration and maintenance of trademarks.]

[12.4. International Classification System
a)Each registration or publication which concerns a trademark
    application or registration and which indicates goods or
    services shall indicate the goods or services by their names,
    grouped according to the classes of the Nice Classification.
b)Goods or services may not be considered as being similar to
    each other on the ground that, in any registration or
    publication, they appear in the same class of the Nice
    Classification.  Conversely, goods or services may not be
    considered as being dissimilar from each other on the ground
    that, in any registration or publication, they appear in
    different classes of the Nice Classification.]

[12.5. Each Party shall publish each trademark either before its
registration or promptly after it is registered, and shall afford
a reasonable opportunity for petitions to cancel the
registration. In addition, each Party [may][shall], afford an
opportunity for the registration of a trademark to be opposed.]

[Article 13. Domain names on the Internet]

[13.1. Each Party shall participate in the Government Advisory
Committee (GAC) of the Internet Corporation for Assigned Names
and Numbers (ICANN) to promote appropriate country code Top Level
Domain (ccTLD) administration and delegation practices and
appropriate contractual relationships for the administration of
the ccTLDs in the Hemisphere.  Each Party shall have its domestic
Network Information Centers (NICs) participate in the ICANN
Uniform Dispute Resolution Procedure (UDRP) to address the
problem of cyber-piracy of trademarks.]

[13.1. Each Party shall make efforts, to the extent possible, to
promote an adequate administration of domain names.]



_______________________________
1 For the purposes of this Article the term “person” includes
natural and legal persons.
2 For the purposes of this Article, “Notice to the applicant”
refers to the notice to the applicant or his agent or
representative in the country of application.

-- 
------
James Love, Consumer Project on Technology
http://www.cptech.org, mailto:love at cptech.org
voice: 1.202.387.8030; mobile 1.202.361.3040


-- 
------
James Love, Consumer Project on Technology
http://www.cptech.org, mailto:love at cptech.org
voice: 1.202.387.8030; mobile 1.202.361.3040