TRIPS Articles 15 to 21: Trademarks

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Any sign capable of distinguishing is registrable, registration gives the right to stop confusing use, well known marks are protected across dissimilar goods, and use may not be unjustifiably encumbered.

Article 15, protectable subject matter

Article 15.1, the definition. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours, as well as any combination of such signs, shall be eligible for registration.

Three permissions follow in the same paragraph. Where signs are not inherently capable of distinguishing, a Member may make registrability depend on distinctiveness acquired through use. And a Member may require, as a condition of registration, that signs be visually perceptible.

That last permission is why sound and smell marks are optional. India used it: section 2(1)(zb) of the Trade Marks Act, 1999 requires a mark capable of being represented graphically.

Article 15.2: paragraph 1 does not prevent a Member from denying registration on other grounds, provided they do not derogate from Paris (1967). So absolute and relative grounds of refusal remain national, subject to Paris.

Article 15.3: a Member may make registrability depend on use, but actual use shall not be a condition for filing, and an application shall not be refused solely because intended use has not taken place before the expiry of three years from the application date.

Article 15.4: the nature of the goods or services shall in no case form an obstacle to registration. This is Paris Article 7 restated, and it is the provision the plain packaging complainants invoked, arguing that Australia had made tobacco's nature an obstacle.

Article 15.5: Members shall publish each mark either before or promptly after registration and afford a reasonable opportunity for petitions to cancel; opposition may additionally be afforded.

So cancellation is compulsory and opposition is optional, which is the reverse of what most candidates assume. India provides both, opposition under section 21 and rectification under sections 57 and 47.

Article 16, rights conferred

Article 16.1, the core right. The owner of a registered mark shall have 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 registered where such use would result in a likelihood of confusion. In the case of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.