| SUBJECT |
TRIPS |
NAFTA |
CENTRAL AMERICAN CONVENTION ON INDUSTRIAL PROPERTY AND THE PROTOCOL TO THIS CONVENTION (SIGNED ON NOVEMBER 30, 1994) |
DECISION 344 OF THE ANDEAN PACT |
PROTOCOL FOR HARMONIZATION ON INTELLECTUAL PROPERTY IN THE MERCOSUL (SIGNED IN AUGUST 1995) |
| PROTECTABLE SUBJECT MATTER |
MEMBERS MAY REQUIRE THAT SIGNS BE VISUALLY PERCEPTIBLE |
AS IN TRIPS |
IN THE CONVENTION, SIGNS, WORDS AND ALL GRAPHICAL OR MATERIAL MEANS CAPABLE OF DISTINGUISHING PRODUCTS OR SERVICES ARE REGISTRABLE. THE PROTOCOL USED AN EXTENSIVE LIST WHICH IN THE END IS NARROWER THAN IN THE CONVENTION. |
PERCEPTIBLE SIGNS THAT MAY BE GRAPHICALLY REPRESENTED ARE REGISTRABLE |
AS IN TRIPS |
| REGISTRATION |
MAY DEPEND ON USE BUT SHALL NOT BE A CONDITION FOR FILING |
AS IN TRIPS |
THE CONVENTION DOES NOT REQUIRE REGISTRATION BUT FOR CHEMICAL AND PHARMACEUTICAL PRODUCTS MAINLY (ART.8). HOWEVER, PROPERTY RIGHTS CAN ONLY BE ACQUIRED THROUGH REGISTRATION (ART,17). UNDER THE PROTOCOL PRIOR USE FOR AT LEAST 3 MONTHS ORIGINATES PRIOR RIGHTS (ART. 5, a) |
REGISTRATION IS REQUIRED AND IS NOT DEPENDENT ON USE |
PRIOR USE FOR AT LEAST 6 MONTHS MAY ORIGINATE RIGHTS BUT REGISTRATION IS REQUIRED FOR ENFORCEMENT (ART. 8). |
| RIGHTS CONFERRED |
TRADITIONAL TEST OF LIKELIHOOD OF CONFUSION |
AS IN TRIPS |
THE CONVENTION REQUIRES LIKELIHOOD OF CONFUSION. THE PROTOCOL GRANTS PROTECTION AGAINST UNDUE ASSOCIATIONS WITH MARKS COVERING NOT SIMILAR GOODS OR SERVICES AND THE TAKING OF UNDUE ADVANTAGE OF THE MARK'S REPUTATION (ART. 26 e AND f). |
PROTECTION EXPRESSLY EXTENDED TO THE POSSIBILITY OF CAUSING ECONOMIC OR COMMERCIAL HARM TO THE TRADEMARK OWNER OR DILUTION OF THE TRADEMARK (ART. 104, d). |
AS IN THE PROTOCOL TO THE CENTRAL AMERICAN CONVENTION (ART. 11). |
| TERM OF PROTECTION |
NO LESS THAN SEVEN YEARS |
NO LESS THAN TEN YEARS |
TEN YEARS |
TEN YEARS |
TEN YEARS |
| WELL-KNOWN MARK |
EXTENDED THE PROTECTION OF ARTICLE 6 BIS OF THE PARIS CONVENTION TO NOT SIMILAR GOODS OR SERVICES PROVIDED THAT THE INTERESTS OF THE OWNER OF THE REGISTERED MARK ARE LIKELY TO BE DAMAGED AND CONFINED THE REQUIRED KNOWLEDGE OF THE MARK TO THE RELEVANT SECTOR OF THE PUBLIC. |
EXTENDED THE PROTECTION OF ARTICLE 6 BIS OF THE PARIS CONVENTION TO SERVICES |
THE CONVENTION CONTAINS NO SPECIFIC PROVISION ON THIS SUBJECT. THE PROTOCOL EXTENDED THE PROTECTION OF TRIPS BY PROHIBITING THE TAKING OF UNFAIR ADVANTAGE OF THE NOTORIETY, DEFINED AS THE KNOWLEDGE OF THE MARK IN THE RELEVANT SECTOR OF THE PUBLIC OR IN ENTREPRENEUR'S CIRCLES OR IN INTERNATIONAL TRADE. |
EXTENDED THE PROTECTION OF ARTICLE 6 BIS OF THE PARIS CONVENTION TO NOT SIMILAR GOODS OR SERVICES WITHOUT THE NEED TO SHOW CONFUSION OR ASSOCIATION IN CASE OF REPRODUCTION, IMITATION OR TRANSLATION. REQUIRED THE POSSIBILITY OF CONFUSION ONLY IN CASES OF MERE RESEMBLANCE. |
EXTENDED THE PROTECTION OF ARTICLE 6 BIS AS IN TRIPS. BESIDES, FORBIDED THE REGISTRATION OF A MARK CAPABLE OF CAUSING A MERE ASSOCIATION WITH A MARK WHICH THE APPLICANT COULD NOT MISKNOW AS BELONGING TO AN OWNER ESTABLISHED OR DOMICILED IN ANY MEMBER STATE (ARTICLE 9, PARAGRAPH 4). |
| CERTIFICATION AND COLLECTIVE MARKS |
ONLY CONTAINS A PROVISION FOR COLLECTIVE MARKS (IN THE PARIS CONVENTION) BUT EMBRACING BOTH CONCEPTS |
THE DEFINITION OF MARKS OF INDUSTRY AND COMMERCE EXPRESSLY EMBRACED THE CERTIFICATION AND COLLECTIVE MARKS |
AS IN TRIPS FOR THE CONVENTION. THE PROTOCOL CONTAINS VERY SPECIFIC PROVISIONS FOR THE PROTECTION OF BOTH TYPES OF TRADEMARK. CERTIFICATION MARKS MAY ONLY BE ASSIGNED WITH THE BUSINESS TO WHICH THE TRADEMARK BELONGS (ART. 58,2). |
AS IN TRIPS |
MEMBERS SHALL PROTECT COLLECTIVE MARKS AND MAY PROTECT CERTIFICATION MARKS |
| REGISTRATION OF INDICATIONS OF SOURCE AND APPELLATIONS OF ORIGIN AS A MARK |
ONLY PROHIBITS THE REGISTRATION OF THE MISLEADING GEOGRAPHICAL INDICATIONS |
AS IN TRIPS |
MAY BE REGISTERED ONLY AS A COLLECTIVE MARK UNDER THE CONVENTION (ART. 10N). THE PROTOCOL DOES NOT CONTAIN A SIMILAR PROVISION BUT PROVIDED FOR THE REGISTRATION OF APPELLATIONS OF ORIGIN AS SUCH (ART. 73) |
AS IN TRIPS |
REGISTRATION PROHIBITED |
| REQUIREMENT OF USE |
REGISTRATION MAY BE CANCELED ONLY AFTER AT LEAST THREE YEARS OF NON-USE |
REGISTRATION MAY BE CANCELED AFTER TWO YEARS OF NON-USE |
CONTAINS NO PROVISION SPECIFYING A PERIOD FOR THE CANCELLATION OF A REGISTRATION FOR NON-USE. THE PROTOCOL PROVIDED FOR CANCELLATION AFTER FIVE YEARS OF NON-USE (ART. 39). |
REGISTRATION MAY BE CANCELED AFTER THREE YEARS OF NON-USE |
REGISTRATION MAY BE CANCELED ONLY AFTER FIVE YEARS OF NON-USE |
| OTHER REQUIREMENTS |
TRADEMARK USE SHALL NOT BE UNJUSTIFIABLY ENCUMBERED BY SPECIAL REQUIREMENTS SUCH AS OF FORM, USE WITH ANOTHER TRADEMARK OR IN A MANNER DETRIMENTAL TO ITS CAPABILITY TO DISTINGUISH THE GOODS OR SERVICES. |
AS IN TRIPS |
CONTAINS NO EQUIVALENT PROVISION |
CONTAINS NO EQUIVALENT PROVISION |
CONTAINS NO EQUIVALENT PROVISION |
| PARALLEL IMPORTATION |
FOOTNOTE 13 IN ARTICLE 51 CLARIFIES THAT MEMBERS SHALL NOT BE OBLIGED TO PROHIBIT IT. |
CONTAINS NO SPECIAL PROVISION ON THIS SUBJECT. |
THE CONVENTION MERELY STATES THAT IMPORTATION OF PRODUCTS BEARING THE MARK CAN BE STOPPED (ART. 26, C). THE PROTOCOL EXPRESSLY ALLOWS IT. |
ALLOWS IT. |
ALLOWS IT. |