The 2008-2009 recession notwithstanding, global trade has increased to historic levels. Globalization is both cause and effect of rapid development in the economies of a number of countries, notably China, India, Brazil, and the Russian Federation. By way of example, in the period 1999-2008 merchandise imports to China grew by 684 per cent, to India by 621 per cent, to Brazil by 352 per cent and to Russia by 738 per cent.1 As the pace of trade has grown, the number of applications for trade-mark registrations has increased, in some cases exponentially. Between 1995 and 2007, trademark applications in China increased from 172,146 to 714,942. Trademark applications in the same period more than doubled in Brazil, India, and Russia.2
Trade-mark strategies, including enforcement strategies, must now also be global. Trade-mark lawyers, in-house counsel and trade-mark administrators are increasingly faced with the problem of enforcing their trade-marks in foreign jurisdictions. While there are a number of firms and services which provide bare summaries of local enforcement regimes, these rarely contain the level of detail which decision-makers require. This paper is intended to outline, in a comprehensive but practical and useful way, trade-mark litigation procedures in the quickly developing economies of the BRIC (Brazil, Russia, India and China) countries, as well as in the North American Free Trade Agreement (NAFTA) countries of Canada, Mexico, and the United States. The focus is on providing a greater level of detail, and practical information, than is ordinarily available.
The paper begins with a summary of the basic enforcement obligations to which each of the BRIC and NAFTA countries are obliged under the Agreement on Trade-Related Aspects Of Intellectual Property Rights (TRIPS) and the North American Free Trade Agreement. It then proceeds to a review of the particular enforcement regimes in each of the BRIC and NAFTA countries. The paper is not, however, confined to enforcement proceedings; it also addresses the issue of inter partes litigation in trademark application and cancellation proceedings. Rather than adopting an academic or jurisprudential perspective, it is intended to convey information which may be of more practical assistance to trade-mark counsel and trade-mark administrators worldwide.
1. THE BRIC COUNTRIES
BRIC is an acronym, first coined by Goldman Sachs in 2001, referring to the economies of Brazil, Russia, India, and China. These countries collectively account for 40 per cent of the world's population. While not a formal trading association or economic block, the BRIC countries are among the world's largest and fastest growing emerging markets. Measured by GDP, they presently constitute the world's third, eighth, tenth, and twelfth largest economies. It is anticipated that by 2050, they will constitute the world's first, third, fourth, and sixth, largest economies, respectively.3
NAFTA is the North American Free Trade Agreement, a multi-lateral agreement between the United States, Canada, and Mexico. Unlike the BRIC countries, NAFTA is a formal trading association and an economic block. Measured by GDP, the United States, Canada and Mexico presently constitute the world's first, eleventh and thirteenth largest economies, respectively.4 It is anticipated that, by 2050, they will constitute the second, eight, and twelfth largest economies, respectively.
Chapter 17 of NAFTA sets out the agreement of the parties in respect of intellectual property issues. Five articles (1714 to 1719) address enforcement mechanisms under the headings General Provisions, Specific Procedural and Remedial Aspects of Civil and Administrative Procedures, Provisional Measures, Criminal Procedures and Penalties, and Enforcement of Intellectual Property Rights at the Border.
All BRIC countries, and NAFTA members, have acceded to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which came into effect on January 1, 1995. TRIPS is the most comprehensive international multi-lateral agreement on intellectual property, covering, as it does, copyright, trade-marks, geographical indications, patents, industrial designs, and other forms of intellectual property.
In respect of each of these main areas, the TRIPS Agreement sets out both substantive rights and, more importantly from our present perspective, minimum standards for domestic procedures and remedies for the enforcement of those rights. Part Three of the Agreement, entitled "Enforcement of Intellectual Property Rights" is divided into five sections – General Obligations, Civil and Administrative Procedures and Remedies, Provisional Measures, Special Requirements Related to Border Measures, and Criminal Procedures.
There are substantial similarities between the enforcement provisions obtained in NAFTA and the TRIPS Agreements. The provisions are sufficiently similar that they can be considered together.
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1 World Trade Organization, Statistics Database.
2 WIPO Statistics Database, December 2008.
3 Goldman Sachs, Global Economics Paper No. 99 and Wikipedia "BRIC" retrieved July 20, 2009.
4 The World Bank: World Development Indicator's Database, July 1, 2009; "Gross Domestic Product" (2008).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.