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November 7, 2007 

Sponsoring Committee: Legislation & Regulation Committee


Resolution

WHEREAS, the Board of Directors in 1997 adopted the Model Law Guidelines, which has served as an effective reference document for INTA to provide guidance to government policy officials and legislatures; and

WHEREAS, certain changes in global trademark laws and INTA’s policy have occurred since the publication of the 1997 Model Law Guidelines, which was re-released in 1998 with technical changes; and

WHEREAS, the former Issues & Policies Committee and the Legislation & Regulation Committee carefully reviewed INTA’s Board resolutions to provide revisions to the Model Law Guidelines in order to create the Model Law Guidelines, Revised, 2007;

BE IT RESOLVED, that the Board of Directors adopts the attached revision of the Model Law Guidelines, which hereby supersedes the 1998 version.


Background

INTA adopted the initial version of its Model Law Guidelines in February 1997, which was re-released with technical changes in May 1998. During the 2002-2003 committee term, the Model Law Guidelines Task Force (the “2002-2003 Task Force”) of the Issues and Policies Committee, Emerging Issues Subcommittee was asked to review the Model Law Guidelines and update them to reflect subsequent INTA Board Resolutions and other positions taken by INTA. In furtherance of this objective, the 2002-2003 Task Force reviewed all INTA Board Resolutions which address substantive trademark issues and which were passed from the year 1997 through April 2003. A new task force was formed in 2006 (the "2006 Task Force") to update the work of the 2002-2003 Task Force and further update the Model Law Guidelines to reflect INTA Board Resolutions and other positions taken by INTA from April 2003 through May, 2007.

Both Task Forces also considered the need for updating the organization and indexing of the Model Law Guidelines and other updates to better address current issues concerning the international protection of trademarks. The Board Resolutions reviewed by the Task Forces and the other changes made to the Model Law Guidelines are summarized below. It should be appreciated that the Model Law Guidelines are merely general principles and guidelines, and that variations on these principles and guidelines may be necessary to conform to law and practice in individual jurisdictions.

Board Resolutions Reviewed
Below is a list of the Board Resolutions reviewed by the Task Forces, together with a discussion of the applicable Task Force’s determination as to whether each resolution should be included in the revised Model Law Guidelines. 
  1. WIPO Provisions for National Laws on Measures Against Counterfeiting and Piracy (September 16, 1998). The 2002-2003 Task Force has included the substance of this Board Resolution in the revised Model Law Guidelines in Proposals 14 and 15. The 2002-2003 Task Force also added the WIPO Model Provisions as Appendix D in Part III of the revised Model Law Guidelines.
  2. World Customs Organization – Model Legislation (November 19, 1997). This Board Resolution specifically states that it should be included in the Model Law Guidelines. The 2002-2003 Task Force has included the substance of this Board Resolution in the revised Model Law Guidelines in Proposals 14 and 15. The 2002-2003 Task Force has also added the WCO Model Legislation as Appendix E in Part III of the revised Model Law Guidelines.
  3. Comparative Advertising (March 3, 1998). This Board Resolution was already in the original Model Law Guidelines at Proposal 10.6 and the discussion of this resolution has been retained in the revised Model Law Guidelines.
  4. Appropriate Standard for Establishing a Dilution Claim (September 15, 1999). An earlier Board Resolution on Availability of Dilution as a Ground for Opposition and Cancellation Proceedings (March 3, 1998) is already covered within Proposal 4.2.11 of the Model Law Guidelines. The September 15, 1999 resolution has been incorporated in Proposal 4.2.11 of the revised Model Law Guidelines.
  5. WIPO Provisions for the Protection of Well-Known Marks (September 15, 1999). This is the same resolution as the resolution on Appropriate Standard for Establishing a Dilution Claim. See (4) above.
  6. Burden of Proving Consent in Parallel Import Cases (March 8, 2001). The 2003-2003 Task Force has included the substance of this Board Resolution in the revised Model Law Guidelines in Proposal 10.4.
  7. Exhaustion of Trademark Rights and Parallel Importation (May 26, 1999). The 2002-2003 Task Force has included the substance of this Board Resolution in the revised Model Law Guidelines in Proposal 10.4, as superseded by INTA’s March 8, 2001 Board Resolution, (6) above, and the INTA Position Paper 2002 on “Exhaustion of Trademark Rights and Parallel Imports”.
  8. Specialized Trademark Judiciaries (November 7, 2001). The 2002-2003 Task Force believes that this Board Resolution is inappropriate for inclusion in the Model Law Guidelines. The Model Law Guidelines contain fundamental principles of trademark law, and are intended for use with respect to countries that are developing trademark laws or amending existing laws to conform to worldwide standards for trademark laws. The specialized judiciaries Board Resolution is directed to countries with more established trademark systems.
  9. Adherence to the ARIPO Banjul Protocol (May 1, 2000). This Board Resolution deals with a specific geographic region and therefore is not appropriate for the Model Law Guidelines.
  10. Unfair Competition (March 3, 1998). The 2003-2003 Task Force has included the substance of this Board Resolution in the revised Model Law Guidelines at Proposal 11.
  11. Federal Right of Publicity (March 3, 1998), Security Interests in Trademarks (May 7, 1997), and Amendment to Lanham Act to Include Functionality as a Defense and Cancellation Ground to Incontestable Trademarks (September 15, 1999). The 2002-2003 Task Force believes that these Board Resolutions are specific to U.S. practice and therefore not appropriate for inclusion in the Model Law Guidelines.
  12. Availability of Dilution as a Ground for Opposition and Cancellation Proceedings (March 3, 1998). This Board Resolution was already included in the original Model Law Guidelines in Proposals 4.2.11 and 7.1.
  13. Relaxation of Trademark Registration Notice Requirements and Sanctions (March 2, 1999). The 2002-2003 Task Force has included the substance of this Board Resolution in the revised Model Law Guidelines in Proposal 8.
  14. Protection of Geographical Indications and Trademarks (September 24, 1997). This Board Resolution was already included in the original Model Law Guidelines in Proposal 13.
  15. Anticybersquatting (May 26, 1999). The 2002-2003 Task Force has included the substance of this Board Resolution in the revised Model Law Guidelines in Proposal 12.
  16. Protectability of Three-Dimensional Marks (May 7, 1997), and Protectability of Sound Trade Marks (February 25, 1997). These Board Resolutions were already included in the original Model Law Guidelines in Proposal 4.1.
  17. Notarization and Legalization Requirements (November 13, 2002). The 2002-2003 Task Force has included the substance of this Board Resolution in the revised Model Law Guidelines in Proposal 7.6.
  18. Measures to Combat Trademark Counterfeiting (March 7, 2005). The 2006 Task Force has included the substance of this Board Resolution in the revised Model Law Guidelines in Proposal 15.
  19. Well-Known Mark Registries (November 9, 2005). The 2006 Task Force has included the substance of this Board Resolution in the revised Model Law Guidelines in Proposal 3.
  20. Territorial Exclusivity of Trademark Validity (September 22, 2004). The 2006 Task Force believes that this Board Resolution relates to a procedural issue rather than general principles of trademark laws and thus is inappropriate for inclusion in the Model Law Guidelines.
  21. Certification Marks (July 31, 1998). The 2006 Task Force believes that this Board Resolution is specific to U.S. practice and therefore is inappropriate for inclusion in the Model Law Guidelines.
  22. Madrid System Safeguard Clause (November 9, 2005). The 2006 Task Force believes that this Board Resolution is specific to the relationship between the Madrid Agreement and the Madrid Protocol and therefore is inappropriate for inclusion in the Model Law Guidelines.
  23. Initial Interest Confusion (September 18, 2006). The 2006 Task Force believes that this Board Resolution is specific to a court’s consideration of the doctrine of initial interest confusion when analyzing likelihood of confusion and therefore is inappropriate for inclusion in the Model Law Guidelines.
  24. Protectability of Touch Marks (November 2, 2006). The 2006 Task Force has included the substance of this Board in the revised Model Law Guidelines in Proposal 4.1.
  25. Recordal of Security Interest in Trademarks (March 21, 2007) . The 2006 Task Force believes that this resolution relates to process and procedures for recording security interest in trademarks and therefore is inappropriate for inclusion in the Model Law Guidelines.
Other Substantive Changes to Model Law Guidelines
The 2002-2003 Task Force updated Proposal 3 of the Model Law Guidelines (Well-Known Marks), to reflect the substance of the September 1999 Paris Union and WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (the "Joint Recommendation") and added the Joint Recommendation as Appendix F. The Joint Recommendation has been endorsed by INTA.

The 2002-2003 Task Force also made minor changes to the Rationales for Proposals 4.2 and 7 to clarify that item 4.2.11 (dilution of a famous or well-known trademark as one of the grounds for non-registrability of a trademark) does not require bad faith.

The 2002-2003 Task Force updated some of the section headings in the Model Law Guidelines to better reflect the content of the applicable sections.

The 2006 Task Force created a new Proposal 15 specifically directed to Measures to Combat Trademark Counterfeiting, which includes some of the additions from the 2002-2003 Task Force plus additional provisions based on subsequent INTA Board Resolutions.

The revised Guidelines were reviewed and approved by the PDA Executive Council, which consists of the leadership of INTA’s policy development group. Accordingly, the Legislation & Regulation Committee recommends that the Board approve the above resolution adopting the 2007 Revision of the Model Law Guidelines.