Legal Issue in Cross - Border Trademark Enforcement

Author: Richa, IIMT College of Law

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INTRODUCTION

In today's era, businesses are not limited within a country, through international agreements, online platforms and digital marketing companies are selling their products in other countries. Trademark protects the owner's brand name, logo, symbol, slogan and distinctive mark. Cross-border trademark enforcement means a legal process whether the owner gets legal rights outside the country for their brand name, logo, symbol, slogan and distinctive mark and to prevent the issue of infringement.

However, getting a trademark across borders is not easy because trademark rights are territorial in nature and every country has their own laws and methods for registration and resolution of disputes. The rise of the digital era increases the risk of infringement outside the border but there are also lots of international agreements such as the Paris convention, TRIPS agreements, Madrid protocol, with these agreements, some challenges also arise.

This article discusses the major legal issue, challenges and discussion along with suggestions in Cross-border Trademark enforcement.

ANALYSIS

Cross-Border Trademark enforcement means a brand owner registered its brand name, logo, symbol, slogan and distinctive mark in other countries to protect their trademark right. With cross-border trademark enforcement, an unauthorized person cannot use the brand name, symbol, slogan and distinctive mark which belongs to another owner; if anyone did, he may be liable for trademark infringement.

IMPORTANCE OF CROSS-BORDER ENFORCEMENT

Cross-border Trademark enforcement plays an important role in the global economy because cross-border trademark enforcement helps businessmen in international trade. It prevents infringement, safeguard consumers and strengthen global intellectual property protection. Cross-border Trademark enforcement protects owners' trademark rights beyond national borders.

INTERNATIONAL LEGAL FRAMEWORKS

In the India, Trademark Act, 1999 provides statutory protection to owners in India and on international level various international agreements provide Trademark protection across borders.

Paris convention- The Paris convention was adopted in 1883 for the protection of industry property. It provides a common legal framework for members of countries, meaning the member countries get the same legal protection for their trademark that they granted to its own citizens.

TRIPS Agreement- The agreement on Trade Related Aspects of Intellectual Property Rights. It came into force in 1995. It is administered by the WTO. TRIPS require states members to take a civil, administrative, criminal and board approach to oppose trademark infringement and provide remedies against infringement and counterfeiting.

Madrid Protocol- Madrid protocol was adopted in 1989. It provides a single international application for trademark registration and also provides protection to trademark owners. Madrid protocol makes cross-border trademark enforcement easier, cheaper and faster.

WIPO- The World Intellectual Property Organization was established in 1967. WIPO provides technical assistance, training, maintains an international database and promotes harmonization in trademark enforcement.

MAJOR LEGAL ISSUES

In the digital era, trademark owners are still facing legal and practical challenges in enforcing the rights across cross-border. While international frameworks such as the Paris conversation, TRIPS agreement, Madrid protocol and WIPO provide protection and legal rights, the business is still having legal issues. Some of the major legal issues are discussed below: -

Jurisdiction Issue

Jurisdiction issue is a major issue in Cross-border Trademark Enforcement, because when the infringement issue arises and the infringement is linked with more than one country, it creates confusion that which country's court has authority to hear and decide a trademark issue and this issue creates jurisdictional conflict.

In today's digital era, online infringement has become even, if infringement occurs in multiple countries laws, then multiple countries laws and authority can claim right to exercise jurisdiction as a result it creates confusions about which court has jurisdiction to hear the case. The issue was highlighted in Banyan Tree Holding (P) Ltd. V. A. Murali Krishna Reddy, where the court held that only a website accessible is not enough for jurisdiction. The plaintiff has to prove that the website targets a particular country's customer then the jurisdiction is available in that country. This case shows how the jurisdiction issue creates challenges.

Territorial Nature of Trademark Right

Trademark rights are international, which means owners get protection in only countries where they registered their mark. For other countries’ protection he had to register individually in different countries for better protection. This issue was addressed in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., in this case the Supreme Court held that Toyota cannot claim its right only on the basis of international reputation, it had to prove that its brand or business had goodwill and reputation in India. The judgement highlights the issue related to territorial nature.

Differences in Trademark Laws

Differences in trademark law is another major legal issue in cross-border trademark enforcement. Difference in Trademark laws means different countries have their different procedure, legal issue, registration system, remedies and infringement test. Some countries believe in principle `first-to-file’ and some countries believe in principle `first-to-use’. These different principles and different systems highlighted in the case McDonald’s Corporation v. Future Enterprises Pte Ltd., where the Singapore court used their infringement and passing-off tests and held that both trademarks are different and the defendant did not infringe McDonald’s rights. The case shows the differences and difficulties in cross-border Trademark enforcement.

Online and Digital Trademark Infringement

Rapid growth of the digital era raises the risk of online and digital Trademark infringement. Unauthorised sellers can use brand products through the website, online marketplace, and social media platforms. These sites are easily accessible and it raises disputes of infringement in multiple countries at the same time. In this situation taking legal action becomes challenging because identifying the infringer is not easy. As a result, the digital environment shows the easy accessibility of infringement and challenges in cross-border Trademark enforcement.

Overall, these major challenges, such as jurisdiction issue, territorial nature of Trademark rights, online and digital trademark infringement and difference in trademark laws reveals the issue in cross-border trademark enforcement.

Cross - Border Enforcement Challenges

Beside legal issues, trademark owners are facing lots of problems in cross-border enforcement. One of the major issues is the high cost of litigation. For the litigation, the owner has to expend money for local lawyers, court procedure, etc. which creates financial burden on owners, especially small businesses owners.

Along with the high cost of litigation, the collection of evidence is also a major challenge because when disputes arise in other countries, the evidence may be available in other countries and collection of those pieces of evidence is difficult and time consuming.

Similarly, language and procedural differences is another major issue, because for the language barriers and litigation process owners may need translators and local lawyer/s which increase the time and expense.

As a result, these challenges make cross-border enforcement more difficult, expensive and time consuming.

DISCUSSION

Cross-Border enforcement becomes possible because of international agreements, such as the Paris Convention, TRIPS agreement and Madrid Protocol. It facilitates trademark protection to owners in other countries. They make the registration process easier in other countries. Beside these agreements WIPO also provides a simple system for international trademark registration.

Despite this, so many legal issues are there in cross-border enforcement. One of the major issues is the jurisdiction issue, whether, at the time of dispute, which country's court has authority to decide the case. This issue is highlighted in the case of Banyan tree whether the judgement strengthens the issue.

Apart from jurisdiction issues, another major issue is the territorial nature of trademark rights. Whether for other countries, the protection owner has to register their mark separately because of different rules and regulation procedures. Single registration is not enough for protection. This issue is seen in the case of Toyota, where the court held that trademark protection is available in those countries where it is registered. This case supports the issue.

Similarly, other related issues are differences in Trademark laws, in which differences create confusion in procedure and decision, also make registration expensive and time consuming.

Lastly, the rapid growth of e-commerce and online platforms, the risk of online infringement is increasing, because websites and online platforms are easily accessible and taking an action against an infringer is not easy.

The study highlights that for the reduction of these challenges and issues, this is a requirement of a new international agreement for trademark registration, which provides protection globally to trademark owners. Before the new international agreement, Countries should cooperate with each other for dispute resolution and online platforms must be focused on dispute related online infringement. For the identification of online trademarks, infringer countries can use Artificial Intelligence (AI). It may help countries to provide speedy justice and better protection.

CONCLUSION

In today's digital era, Cross-border Trademark Enforcement becomes important for business operations on a global level. For the enforcement of Trademark there are various international agreements, such as Paris Convention, TRIPS agreement and Madrid protocol, which facilitates protection to trademark owners in other countries. With these agreements, trademark enforcement has become easier but still these are some legal issues which makes the enforcement challenging. These issues create some major challenges like jurisdiction issues, territorial nature of trademark rights, digital trademark infringement and differences in trademark laws. It creates challenges, for example expensive litigation, delay in jurisdiction, language barriers and evidence collection.

In conclusion, the study shows the need for new single international agreements, which provides protection globally to trademark owners. With the new single agreement, the procedure of enforcement may become easier and cheaper. Also it may provide speedy justice and protection to trademark owners.

REFERENCES

• Agreement on Trade-Related Aspects of Intellectual Property Rights art. 15–21, Apr. 15, 1994, 1869 U.N.T.S. 299.

• Paris Convention for the Protection of Industrial Property art. 1–10, Mar. 20, 1883, as revised July 14, 1967, 828 U.N.T.S. 305.

• Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, June 27, 1989, WIPO.

• World Intellectual Property Organization, Madrid System for the International Registration of Marks, https://www.wipo.int/madrid/en/.

• Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780 (India). https://indiankanoon.org/doc/1794287/

• Toyota Jidosha Kabushiki Kaisha v. Prius Auto Indus. Ltd., (2018) 2 S.C.C. 1 (India). https://main.sci.gov.in/jonew/judis/41006.pdf

• Lionel Bently et al., Intellectual Property Law (5th ed. 2018).

• Peter K. Yu, International Trademark Law and Policy (Edward Elgar Publ’g 2012).