“TRADEMARK VISA” Treaty
New Proposal of Extraterritoriality for Trademark Legislation
Sadai Satoru
Proposal:
The proposal is that countries shall introduce a international system (treaty) which allows the indication for an imported product which shows that the domestic trademark law is not applicable to the product. For example, “CAUTION! The trademark on this product is not related to the registered trademark in this country.” or similar indication (including additional information described later) is put on the product by certain big size letters. And the government allow coexistence of plural similar trademarks (marks) in the country.
Background:
The trademark laws in most countries allow only one trademark for one category of goods (in one goods classification), and the use of same or similar trademark by others are prohibited (except for certain prior use). Meanwhile, from old times, it is numerous that using or registering the trademarks which are famous and renowned in another country without owners' permission. Against this use without permission, present legal measure is “well-known mark” system for exclusive use of famous marks. And the owners of well-known marks have been trying to eliminate those free-riders with the well-known mark system. But, in order to be qualified as “well-known mark” in another countries, there are various barriers in many countries. Usually, a product in a small market is difficult to be qualified as “well-known”. On the contrary, sometimes, well-known mark system may have excessively strong power so that it kicks out innocent bona-fide prior users. Upon this, the proposal here is to solve these kind of problems.
Concrete measures:
Importer shall file a request of registration in order to indicate that the imported product is the out of domestic trademark system. Government shall register the imported product when the following items are assured: 1. Name and address and telephone etc of importer, 2. Name of imported product and original country, 3. Trademark registration in the original country, 4. Power of attorney of the trademark owner in the original country to the importer, 5. Deposit security money if necessary, etc. Each of imported products shall indicate necessary information such as described above and also, for example, “CAUTION! The trademark on this product is not related to the registered trademark in this country.” by certain big size letters. If the indication is excessively redundant, the registration number can alternate it to make the indication small. The indication shall accompany the product until it is sold to end-consumers. Punishment shall be also necessary. This legal scheme is similar to food indication regulation.
Outcome:
By the above legislation system, even if the same trademark is maliciously registered in another country by a third party, original products can be exported by original manufacturer and can be sold in that country. For example, apple (agricultural product) named “Fuji” trademark-registered in J-country can be imported and sold in M-country where Fuji trademark is already registered as apple by third party. And consumers who want delicious J-country Fuji can get the apple they want by seeing the indication and referring registration information. Generally speaking, products of SMEs (Small and medium enterprises) and farmers can hardly be qualified as “well-known” mark products due to their business size. And also, big rich companies can buy the third party's obstructive trademark right but SMEs cannot. Upon this, the proposed system will help these SMEs and farmers.
Tentative naming:
This system allow a foreign product (trademark) to co-exist with a domestic product (trademark) by registration. This is similar to visa for foreign people which allow foreign people to exist in the country as same as native people. Then, temporarily, this system is named “Trademark Visa”.
Anticipated problem and countermeasures:
<1> Possibility that the Trademark Visa indication is removed and only the trademark is on the product...
--- When the Trademark Visa indication is removed, the product should be under domestic trademark law. Then this product infringes the domestic trademark owner's right. The person who removed the indication is to be punished.
<2> Possibility that fake products which imitate Trademark Visa product are imported and sold...
--- Trademark Visa product is out of domestic trademark law. Domestic trademark law regards Trademark Visa product as “No brand name”. Accordingly, Trademark Visa product cannot be protected by domestic trademark law. Then when an imitation product appears, Trademark Visa product owners need to seek help from domestic penal code (i.e. fraud, forgery of private document, etc.) or anti-competition law if applicable.
<3> When a trademark has been registered in the present country by a foreign original genuine owner, another same trademark is registered as Trademark Visa product maliciously by a third party.
--- At first, Trademark Visa needs an authentic trademark registration in some other country. It is difficult for malicious third party to get authentic trademark registration there. Then, this kind of case is scarce.
--- Nevertheless, when the malicious third party has got same registration in other country (ex. C-country), this Trademark Visa product can be imported and sold in the present country. At that time, consumers need to select the product of domestically registered trademark, or the product of Trademark Visa from C-country. In this case, if a consumer knows that the original country of the genuine product is J-country, he will not buy Trademark Visa product from C-country. And if a consumer doesn't know the original country of the genuine product, he regards the Trademark Visa product as “no brand name”, then he will not buy Trademark Visa product. The result is same. Consumers can avoid buying malicious products.
<4> Parallel import
--- The basic purpose of Trademark Visa is limited, exceptional, extraterritorial measure. Complicated conditions are not preferable for government's management and consumers' understanding. Then it is preferable to avoid allowing parallel import.
<5> Possibility of trademark “dilution” by consumers when consumers remove only Trademark Visa indication and use the product with the (foreign) trademark. (even if it doesn't constitutes trademark infringement in domestic law)
--- There is no possibility for goods like foods, medicines, cosmetics, and various materials whose indications are mainly on the packages and whose (foreign) trademarks are not shown to others when consumers use them. Generally speaking, most of products has scarce possibility of dilution.
--- For example, When a consumer removes Trademark Visa indication from a handbag with numerous (foreign) trademarks all over the surface, and carries it on the street, this may have a possibility to constitute dilution. But, this kind of case will happen only the trademark is well-known mark. That is, there is very little possibility that dilution occur in general goods which are not well-known mark products. The dilution of well-known mark shall be in the issue of ordinary trademark law.
<6> Desisting from manufacturing original products in a foreign country
--- This Trademark Visa system requires the coincidence between trademark registration country and producing country. Then, when the producing country is different from trademark registration county, it is out of Trademark Visa system. That is to say, the original product manufacturer needs to make the product in the original country and export it from that country. This may be a disadvantage for manufacturers who want to expand the production to abroad. But, from the viewpoint of consumer side, consumers have merit that they can get the products of the country which the trademark owner takes care of sufficiently (i.e. original country). Comparing these manufacturer's demerit with consumer's merit, consumer's merit seems to be bigger. Generally, since most of SMEs and farmers do not expand their production to abroad, then there will be no problem on this matter. Moreover, from the viewpoint of government of the producing country, since Trademark Visa system prevent outflow abroad of domestic industries, it is favorable system.
<7> Service marks
--- Theoretically, Trademark Visa system can be adopted to service marks, too. It is great advantage if consumers can enjoy foreign services that they want without stirring abroad and without minding domestic trademarks. Feasibility study is eagerly awaited.
The above is the outline of the proposal. The true purpose of trademarks law is not letting individuals keep monopoly of marks and names. True purpose is preventing confusion of consumers. Now, we should reconfirm the true purpose, here again. The proposal contributes to SMEs who are suffering from foreign trademark barrier when their products are to be exported. The proposal contributes to consumers who want to select good product among wide area of choices all over the world. The solution is “co-existence of trademark” using extraterritorial measures.
In the daily life of people in the world, personal computers are essential. People in the world have been watching the screens of personal computers everyday. Information all aver the world is shown on the screens of those personal computers. Also, trademarks all over the world are shown on the screens. In this situation, trademarks which have conflict against the trademarks registered in the country where the personal computer exists (= where the person watching the personal computer) are also shown and indicated. But, this conflict doesn't matter in the world of internet. Also, this conflict doesn't matter for the people who watch the personal computers. And, this “invasion” of foreign trademarks into domestic computers will surely increase day by day. This mean that the monopoly system which allows one individual to use a word exclusively in an enclosed area has been pushed to the limit and this monopoly system cannot go on anymore.
Please remember that the essential purpose of trademark law is to prevent confusing. Then, even when tremendous amount of information and words come from foreign countries, it will be no problem if consumers are not confused about trademarks. Rather, it is better and happier for people to choose goods among more various choices from all over the world if people are not confused.
Despite everything, every country in the world goes into global information age. In this age, it is inevitable that many goods exist, many names exist, and many same names coexist. In this age, the above proposal will help all countries to take concrete measure in order to corp with global information age and save trademark system. The above proposal is merely the very first step. Then, the concrete measures are intentionally limited in a small scale. The proposal will be improved to the system which includes Service Marks in the future when the international consensus has been made up.
The above is the proposal. Since this is merely one person's idea, this may have many points to discuss further. Then, I would like you to have same kind of awareness and to make up this kind of international legal scheme by further discussion and polishing idea. And, please note that the proposed system can be implemented in the law in one (your) country only. You do not need to insist “treaty”.
I, Sadai Satoru, waive the copyright of this article. Please use it freely for further discussion.
Thank you so much for your kindest reading till the very end.
