Protocol on Harmonization of Intellectual Property Norms in MERCOSUR in the Field of Trademarks, Indications of Source & Appellations of Origin
The Governments of the Argentine Republic, the Federative Republic of Brazil, the Republic of Paraguay and the Oriental Republic of Uruguay,
Wishing to reduce distortions and impediments to trade and the circulation of goods and services in the territory of the Party States of the Treaty of Asunción;
Recognizing the need to promote an effective and adequate protection of intellectual property rights regarding trademarks, indications of source and denominations of origin and to guarantee that the exercise of said rights does not in itself represent a barrier to legitimate trade;
Recognizing the need to establish to such ends, rules and principles which shall serve to guide the administrative, legislative and judicial actions of each Party State with respect to the recognition and application of intellectual property rights regarding trademarks, indications of source and denominations of origin;
Agreeing that said rules and principles should conform with the norms established in the existing multilateral instruments at the international level, particularly the Paris Convention for the Protection of Industrial Property (Act of Stockholm of 1967) and the Agreement on Aspects of Intellectual Property Related to Commerce, signed on April 15, 1 994, as an annex to the Agreement that established the World Trade Organization, negotiated within the framework of the Uruguay Round of GATT,
Approve the Protocol that follows:
ARTICLE 1. Nature and Scope of Obligations
The Party States shall guarantee the effective protection of intellectual property regarding trademarks, indications of source and denominations of origin, assuring as a minimum the protection derived from the principles and norms of this Protocol.
They may, however, grant a more ample protection, provided that [said protection] is not incompatible with the norms and principles of the treaties mention ed in the present Protocol.
ARTICLE 2. Effectiveness of International Obligations
(1)The Party States obligate themselves to comply with the norms and principles of the Paris Convention for the Protection of Industrial Property (Act of Stockholm of 1967) and the Agreement on Aspects of Intellectual Property Related to Commerce (1994), attached to the agreement for the creation of the World Commerce Organization (1994).
(2) No provision of the present Protocol shall affect the obligations of the Party States that result from the Paris Convention for the Protection of Industrial property (Act of Stockholm of 1967) or from the Agreement on Aspects of Intellectual Property Related to Commerce (1994).
ARTICLE 3. National Treatment
Each Party State shall grant the nationals of the other Party States a treatment which shall be no less favorable than [the treatment] it grants its own nationals with respect to the protection and the exercise of intellectual property rights regarding trademarks, indications of source and denominations of origin.
ARTICLE 4. Exemption of Legalization
(1) The Party States shall make efforts to exempt from legalization, whenever possible, the documents and signatures [included] in the procedures related to intellectual property rights regarding trademarks, indications of source and denominations of origin.
(2) The Party States shall make efforts to exempt from sworn or legalized translation, whenever possible, the original documents of the proceedings related to intellectual property regarding trademarks, indications of source and denominations of origin, when said documents are in the Spanish or Portuguese languages.
(3) The Party States may require a sworn or legalized translation when this is indispensable in the case of litigation in administrative or judicial matters.
ARTICLE 5. Definition of Trademark
(1) The Party States shall recognize as a trademark, for registration purposes, any sign that is susceptible of being distinguished in the trade of products and services.
(2) Any Party State may demand, as a condition of its registration, that a sign be visually perceptible.
(3) The Party States shall protect service trademarks and collective trademarks, and they may, likewise, establish protection for certification trademarks.
(4) The nature of the product or service to which the trademark is to be applied shall, in no case, constitute an obstacle for the registration of the trademark.
ARTICLE 6. Signs Considered a s Trademarks
(1) Trademarks may consist of, among other [things], fantasy words, names, pseudonyms, commercial themes, letters, numbers, monograms, figures, portraits, labels, shields, imprints, trimmings, lines and stripes, combinations and arrangements of colors, and the shape of the products, of their containers or fittings, or of the means or places of sale of the products or services.
(2) Trademarks may consist of national or foreign geographical indications, provided that they are not indications of source or denominations of origin, in accordance with the definition given in Articles 19 and 20 of the present Protocol.
ARTICLE 7. Registration Provisions
The registration of a trademark may be requested by physical or juridical persons, of public or private law, that have a legitimate interest in doing so.
ARTICLE 8. Priority for the Registration of a Trademark
Priority for the registration of a trademark shall be granted to the person who first requests it, unless that right is claimed by a third party who has used the trademark in a public, peaceful way and in good faith, in any of th e Party States, during a minimum term of six months, provided that upon presenting his objection he [also] requests the registration of the trademark.
ARTICLE 9. Registrable Trademarks
(1) The Party States shall prohibit the registration, among others, of descriptive signs or signs that are generically used to designate products or services or types of products or services that the trademark distinguishes, or signs that constitute indications of source or denominations of origin.
(2) The Party States shall also prohibit the registration, among others, of signs that are misleading, contrary to morality or the public good, offensive to persons living or dead or to religions; signs that are formed with national symbols or symbols of any country; signs that are susceptible of falsely suggesting a relation with persons living or dead, or with national symbols of any country, or that offend their value or respectability.
(3) The Party States shall reject applications for registration of trademarks that have been proven to infringe upon rights of third parties, and the Party States shall invalidate the registration of trademarks applied for in bad faith that have been proven to infringe upon rights of third parties.
(4) The Party States shall specifically prohibit the registration of a sign that imitates or duplicates, partially or completely, a trademark that the applicant evidently could not fail to have recognized as belonging to a owner established or domiciled in any of the Party States, or that is susceptible of causing confusion or association.
(5) Article 6 bis of the Paris Convention for the Protection of Industrial Property shall be applied mutatis mutandi to the services. In order to determine the notoriety of the trademark in the sense of the provision mentioned here, the knowledge of the sign shall be taken into account, including said knowledge in the pertinent State in which protection is requested, said knowledge having been acquired from the publicity of the sign.
(6) The Party States shall assure in their respective territories the protection of the trademarks that have become exceptionally well known and belong to nationals o f the Party States; said protection shall be against the duplication or imitation of said trademarks, in any line of activity, provided that there is a chance that damage will be caused.
ARTICLE 10. Term for Registration and Renewal
(1) The validity of the registration of a trademark shall expire ten years after the date of its granting in the respective Party State.
(2) The term of validity of the registration may be postponed for equal and successive ten-year terms, to begin on the date of the preceding expiry date of the registration.
(3) The Party States obligate themselves to comply, as a minimum, with the provisions established in Article 5 bis of the Paris Convention for the Protection of Industrial Property (Act of Stockholm of 1967).
(4) When the term is extended no modification shall be introduced in the trademark, nor may the list of products of services covered by the registration be expanded.
(5) With respect to the extension of the registration of a trademark, a Party State may not: Perform a thorough examination of the registration; Call for opposition or admit same; Require that the trademark be in use; nor Require the trademark to have been registered or its registration to have been extended in another country or regional office.
ARTICLE 11. Rights Granted by Registration
The registration of a trademark shall grant the owner an exclusive right of use, and the right to prevent any person from performing, without the patentee’s consent, the following acts, among others: the use, in commerce, of a sign identical or similar to the trademark, for any products or services, when said use may cause confusion or a risk of association with the holder of the registration, or unjust economic or commercial damage, caused by a dilution of the distinctive force or the commercial value of the trademark, or a risk of an improper use of the prestige of the trademark or of its owner.
ARTICLE 12. Use of Certain Indications by Third Parties
The registration of a trademark shall not grant the owner the right to prohibit a third party to use, among others, the following indications, provided that such use is mad e in good faith and cannot cause confusion regarding the company origin of the products or services:
(a) His name or address, or those of his commercial establishments; and
(b) Indications or information on the availability, use, application or compatibility of his products or services, in particular in relation to repair parts or accessories.
ARTICLE 13. Exhaustion of a Right
The registration of a trademark shall not prevent the free circulation of the trademarked products, legally introduced into commerce by the owner or with his authorization. The Party States obligate themselves to include in their respective legislations measures that provide for the exhaustion of the right granted by the registration.
ARTICLE 14. Nullity of Registration and Prohibition of Use
(1) Upon request by an interested person, and after the owner of the registration of the trademark has been granted a hearing, the national competent authority of a Party State shall declare the nullity of the registration if it was made in violation of any of the provisions established in Articles 8 and 9.
(2) When the causes of nullity affect only one or some of the products or services with regard to which the trademark was registered, nullity shall be declared only with respect to these products or services, and they shall be eliminated from the respective list in the registration of the trademark.
(3) The Party States may establish a time period regarding prescription of the action requesting nullity.
(4) The action requesting nullity shall not prescribe when the registration was obtained in bad faith.
ARTICLE 15. Cancellation of a Registration Due to Lack of Use of the Trademark
(1) In those Party States in which there exists an obligation to use the trademark, upon request by any interested person and after the patentee has been granted a hearing, a competent authority may cancel the registration of a trademark when it has not been used in any of the Party States during the five years preceding the date on which the cancellation action was filed. The request for cancellation shall not be admitted before five years have passed after the date of registration of the trademark. The registration of a trademark shall not be canceled when the respective competent authority believes there are reasons that justify the lack of use of the trademark.
(2) Where there is an obligation to use the trademark the Party States may provide for the partial lapse of the registration when the lack of use affects only one or several of the products or services distinguished by the trademark.
ARTICLE 16. Use of a Trademark
(1) The Party States in which there exists an obligation to use the trademark hereby declare that the criteria regarding the obligation to use the trademark shall be established by common agreement of the respective competent national authorities.
(2) The use of the trademark in any of the Party States shall constitute sufficient grounds to prevent cancellation of the registration requested in any of the Party States.
(3) The burden of proof regarding the use of the trademark shall be borne by the owner of the trademark.
ARTICLE 17. Opposition to a Registration or to a Registration Request
The Party States obligate themselves to establish an administrative procedure by which the registration of a trademark may be opposed. They also obligate themselves to establish an administrative procedure regarding the nullity of a registration.
ARTICLE 18. Classification of Products and Services The Party States that do not use the International Classification of Products and Services for the Registration of Trademarks, established by the Nice Accord of 1957, nor its revised and updated versions, obligate themselves to adopt the necessary measures to do so.
INDICATIONS OF SOURCE AND DENOMINATIONS OF ORIGIN
ARTICLE 19. Obligation to Grant Protection and Definitions
(1) The Party States obligate themselves to reciprocally protect their indications of source and denomination s of origin.
(2) An indication of source is the geographical name of the country, city, region or locality within a Party State’s territory, which is known as a center place for the extraction, production or manufacture of a certain product or for the performance of a certain service.
(3) A denomination of origin is the geographical name of a country, city, region or locality within a Party State’s territory, which designates products or services whose qualities or characteristics are exclusively or essentially caused by the geographical environment, including natural and human factors.
ARTICLE 20. Prohibition to Register as a Trademark
The indications of source and denominations o f origin described in paragraphs (2) and (3) above shall not be registered as trademarks.
The Party States shall grant protection to the variety of plants and other vegetable products by means of patents or a special system or any other system resulting from the combination of both patents and a special system.
The Party States shall implement effective measures to repress the commercial manufacture of “pirate” or falsified products.
The Party States shall cooperate in the examination and resolution of difficulties inherent in the circulation of goods and services in the MERCOSUR, resulting from questions related to intellectual property.
The Party States obligate themselves to make efforts to sign, as soon as possible, additional agreements regarding invention patents, models of utility, industrial designs, author’s rights and related rights, and other matters associated with intellectual property.
The controversies that should arise among the Party States with respect to the application, interpretation or noncompliance of the provisions contained in the Present Protocol shall be resolved by means of direct diplomatic negotiations. If through said negotiations an agreement cannot be reached or if the controversy should be resolved only in part, the procedures established in the controversy resolution system in force in the MERCOSUR shall apply.
The present Protocol, which is an integral part of the Treaty of Asunción, shall become effective, for the first States that ratify it, thirty days after the second ratification instrument has been filed.
For the rest of the signatories, [the Protocol] shall become effective thirty days after the filing of the respective ratification instruments, in the order in which they are filed.
The adherence of one State to the Treaty of Asunción, shall imply ipso jure the adherence to the present Protocol.
The Government of the Republic of Paraguay shall be the depositary of the present Protocol and of the ratification instruments and shall send duly authenticated copies of same to the Governments of the rest of the States.
The Government of the Republic of Paraguay shall notify the Governments of the rest of the States the date that this Protocol becomes effective and the date of filing of the instruments.
Signed in Asunción, Republic of Paraguay, the fifth day of the month of August of the year nineteen hundred and ninety-five, in one original, in the Spanish and Portuguese languages, both texts being equally authentic.