When Two Giants Collide: Article 17 and the Scope of Trademark Protection Afforded Under the Trips Agreement
43 Pages Posted: 18 Sep 2006
The protection of trademarks, when it raises a conflict with the protection of geographical indications is one of the most contested issues on the international trade and intellectual property arena. In European Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs a WTO panel was faced with this issue. The panel report gives some insight into what international trademark law mandates as well as some pointers on how conflicts between different IP rights should be solved. This article attempts a deeper analysis of the coexistence of rights in the framework of the TRIPS Agreement that will inevitably grow in importance, when trade-related aspects start permeating all intellectual property issues in WTO fora.
The article adopts a new approach to analyzing international trademark law. The Western concept of trademarks as property is contrasted to another concept of property that is derived from the use of property. While the property discussion in itself is not new to trademark law, nor is a discussion on the significance of trademark use in trademark law, here, the discussions are combined and refined in an attempt to provide an analytical framework for deciding international trademark cases.
It is argued that the property right in a trademark should be assessed through how it is used, and any finding of infringement hinges upon whether the use of the trademark by its proprietor is unlawfully affected by a third party's use of an identical or similar sign. Informed by property theory and international law, the analytical framework is applied to the issues raised in the panel report. This leads to the conclusion that the panel report is flawed in certain respects.
Keywords: trademark, geographical indications, co-existence of rights, treaty interpretation, WTO, TRIPS
JEL Classification: K11, K33, O19
Suggested Citation: Suggested Citation