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Board Resolutions
Relaxation of Trademark Registration Notice Requirements and Sanctions





March 2, 1999

Sponsoring Committee: Forms of Notice Subcommittee of the Issues and Policy Committee


Resolution

WHEREAS, in some countries once a trademark is registered, it is mandatory to indicate such registration on packaging; and

WHEREAS, most countries do not permit companies to indicate that the trademark is registered (by whatever means) on packaging when it is not so registered in that country; and

WHEREAS, in some countries there are significant penalties for violating notice rules; and

WHEREAS, these requirements make it difficult for trademark owners to market the same package in multiple countries;

BE IT RESOLVED, that it is the position of the International Trademark Association that:

  1. It should not be mandatory to represent that a trademark is registered
  2. The ® should be one of the legally permissible designations to indicate that a trademark is registered.
  3. Absent an intent to mislead, it should not be a civil wrong or criminal offence in a country where a mark is not registered, to represent that it is registered by use of a legally permissible designation, provided said mark is registered in:
               a) the country in which the trademark owner has either a domicile or a seat; or
               b) the country in which the product was first manufactured; or
               c) the country in which the product was first marketed.


Background

With the evolution of global trade, companies frequently market their products in packaging that facilitates their sale throughout the world. Uniform packaging enables companies to quickly meet demand and to benefit from substantial cost savings in the marketing and packaging of their products. The recent ability of companies to offer their products for sale over the Internet reflects the further globalization of markets and the need to create standard packaging for multiple markets.

With the evolution of global trade, companies frequently market their products in packaging that facilitates their sale throughout the world. Uniform packaging enables companies to quickly meet demand and to benefit from substantial cost savings in the marketing and packaging of their products. The recent ability of companies to offer their products for sale over the Internet reflects the further globalization of markets and the need to create standard packaging for multiple markets.

In this highly competitive environment, companies should be free to market their products in any manner they so choose providing they do not infringe prior rights or mislead the consumer. Accordingly, there should be no requirement that a trademark owner indicate that its mark is registered in any particular country (this should be for the trademark owner to decide), and it should be permissible to use ®, arguably the most widely accepted symbol of registration.

Although legislation in this regard appears to be rarely enforced, the possible sanctions are in some instances quite draconian. For example, in Oman and South Korea, representing that a trademark is registered, when it is not, can result in imprisonment of up to three years. The same act in Malaysia can result in imprisonment of up to five years. In addition to or as an alternative to imprisonment, fines can be imposed, as in the case of Panama, ranging from US$10,000 to US$200,000. Penalties also can be accompanied by suspension of the license to conduct business.

For the foregoing reasons, the Forms of Notice Subcommittee requests that the Board of Directors adopt this Resolution so that INTA may oppose this type of legislation and encourage the international harmonization of notice requirements.