According to the WTO requirements and guidelines of the working party on the accession of Afghanistan, providing legal protection for geographical indications was one more area that the government of Afghanistan had to take steps in order to meet the WTO’s proposed requirements. It has
366-The WTO, Accession of Afghanistan, Implementation of the WTO Agreement on TRIPS, WT/ACC/AFG/8/Rev.1(2012), p. 9.
367 -“Compulsory licensing is a license that a government allows someone else to produce the patented product or process without the consent of the patent owner. It is one of the flexibilities on patent protection included in the WTO’s agreement on intellectual property” — this definition is also applicable with regards to the compulsory licensing of trademarks. TRIPS Agreement, Art. 21.
368 - The TRIPs Agreement, Art. 21.
369 - “Assignment” is an arrangement by which a trademark owner transfers ownership of the mark.
370-The WTO, Accession of Afghanistan, Implementation of the WTO Agreement on TRIPS, WT/ACC/AFG/8/Rev.1, 2012, p. 9.
371 - ATML, Art. 3 and 17.
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also been articulated in the WTO working party report on the accession of Afghanistan.372 Therefore, GIs are included in this chapter to examine the compatibility of the ATML with international agreements on geographical indications.
In theory, there are two kinds of geographical source indications: First, a trademark might point out that a product comes from, or is related to, a designated geographical location (“geographical indications”). Second, a trademark can be used as an “appellation of origin”, which shows that the products contain particular “qualities”, “characteristics” or attributes affiliated with a geographical location.373 The Afghan legal system provides legal protection for geographical indications at the national level, but not for appellations of origin as stipulated in international agreements.374
Therefore, there are two main treaties concerning the legal protection of Geographical Indications (GIs) and Appellations of Origin (AO).375 The first is the Lisbon Agreement (LA) for the Protection of Appellations and their International Registration (hereinafter the Lisbon Agreement) concluded in 1958, revised at Stockholm in 1967, and amended in 1979. The second treaty is the Geneva Act (GA) of the Lisbon Agreement on Appellations of Origin and Geographical Indications adopted in 2015 (hereinafter the Geneva Act).376 This section first provides a short summary of both Agreements and then examines the compatibility of the Afghan Geographical Indications Law (AGIL) with the aforementioned Agreements.
The Lisbon Agreement provides legal protection for “registered geographical denominations”. If a geographical name is protected in the country of origin, it cannot be used as a trademark.377 Article 1 of the Lisbon Agreement requires the State party to protect the “appellation of origin on their territories”.378 This protection depends on two conditions: First, the AO should indeed be protected in the country of origin, and second, it needs to be registered at the International Bureau of WIPO.379 Article 4 of the Afghan Geographical Indication Law (AGIL) states that ‘‘[a] geographical
372 - Based on the abovementioned reason, Afghan GI Law was also assessed. See the Accession Of Afghanistan, Implementation of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), WT/ACC/AFG/8/Rev.1, (2012). p. 9.
373 - Minde Glenn Browning, International Trademark Law: A Pathfinder and Selected Bibliography, p.353.
374 - Ministry of Justice (2015) Afghan Geographical Indication Law, Official Gazette, Issue No1178, (2015), Art 4.
[hereinafter AGIL] Non official translation by Afghanistan Trade ….ATAR Project.
375 - “An appellation of origin is a special kind of geographical indication generally consisting of a geographical name or a traditional designation used on products which have a specific quality or characteristics that are essentially due to the geographical environment in which they are produced. Consumers are familiar with these products and often request them –
even unknowingly – using their geographical name”. WIPO, see the link:
http://www.wipo.int/wipo_magazine/en/2008/06/article_0009.html
376 - WIPO, Lisbon Agreement for the Protection of Appellations of Origin and their International registration. available at: http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=285838
377 - Minde Glenn Browning, International Trademark Law: A Pathfinder and Selected Bibliography, p.353.
378 - The Lisbon Agreement, Art. 1 (2).
379 - The Lisbon Agreement, Art. 1 (2).
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denomination will be protected after the registration at the related office (CBR)”.380 Article 3 of the Lisbon Agreement describes the scope of protection and requires that member states provide protection
“against any usurpation or imitation”. The rejection of a foreign appellation is the core issue for the Lisbon Agreement.381
The competent authority of member states to the Lisbon Agreement may refuse to protect the appellation of origin within one year of obtaining notification of the registration, perhaps by providing the grounds for the rejection.382 The AGIL is silent in this regard and provides no legal protection against the usurpation and imitation of appellations of origin. Articles 6 and 7 of the GA deal with the generic nature and validity of the registration of an appellation of origin. Article 6 provides that a duly registered appellation of origin will not “be deemed to have become generic as long as it is protected in the country of origin”.383 According to Article 7 of the LA, registration based on Article 5 of the Agreement will be valid without renewal. Furthermore, a single fee will be paid for the registration of each appellation of origin.384
The AGIL provides legal protection for geographical indications after their registration (Article 9) and mentions neither renewals nor the payment of fees or their amount. It must be noted that the Afghan legal system does not distinguish between geographical indication on the one hand and appellation of origin on the other. With regard to the protection of geographical indications, the AGIL provides legal protection for geographical indications up to the national level. In contrast, it offers no provisions with regards to the international registration of geographical indications. Regarding appellations of origin, no legal documents define or provide legal protection for them. Also, Afghanistan is not legally obliged by the WTO and WIPO to adopt the LA and GA with regards to the protection of appellations of origin. Currently, based on the WTO convention, the only priority for Afghanistan’s government is to accord its laws and regulations with the TRIPS Agreement and the Paris Convention, as assessed in the previous sections.
The GA is administered under the auspices of WIPO and deals with the international registration and protection of appellations of origin and geographical indications for all kinds of products, not only food and beverages. This is the principle function of the Act. The objective of the GA is to “modernize
380 - AGIL, Art. 4.
381 - The Lisbon Agreement. Art. 3.
382 - Daniel J. Gervais, Reinventing Lisbon: The Case for a Protocol to the Lisbon Agreement (Geographical Indications), Chicago Journal of International Law: Vol. 11, No 1(2010), p. 91. Available at:
http://chicagounbound.uchicago.edu/cjil/vol11/iss1/5 . Also see the Lisbon Agreement, Art. 5.
383 - Lisbon Agreement, Art. 6.
384 - Lisbon Agreement, Art. 7.
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and expand the scope of the Lisbon Agreement, with the intent of attracting new signatories”.385 By virtue of the provisions of the GA, in order to protect AO and GIs on the international level, the contracting states shall protect the requested AO and GIs after their registration and publication based on their domestic law. The competent authority in the country of origin transfers the application to the International Bureau of WIPO. The application for international registration is filed in the name of the
“beneficiary” and “the natural person or legal entity”386, and then WIPO notifies the contracting parties.
Each member state is entitled, up to one year after the notification, to refuse or register the requested GIs and AO.387
The GA, as a complementary agreement to the Lisbon Agreement, is not yet in force.388 This Act is a new agreement and Afghanistan has no obligations with regards to it. Afghanistan’s Geographical Indications Law of 2015 devotes no provisions to the international registration of GIs and AO. For the moment, the core priority for Afghanistan is to concentrate on the compatibility of trademark law with the Paris Convention as well as the Madrid and TRIPS Agreements, which deal with the legal protection of trademarks. Therefore, the Lisbon Agreement and Geneva Act are not assessed in detail in this dissertation.
It can be concluded that an adjustment of the Afghan laws and regulations relating to intellectual property was needed, in particular the legal protection of trademarks based on the international principles and rules. According to the commitments of the Afghan government to WIPO and the WTO, it was required that the government make efforts to adjust the country’s intellectual property laws and regulations to reflect the international standards. Due to the abovementioned undertakings, Afghanistan commenced to enact and revise its IP laws. Providing a law that governs the legal protection of trademarks was one of the key components of these legal reforms. Consequently, the new Afghan Trademark Law was enacted in 2009 and later amended in 2015. While some of the amendments to the Trademark Law meet the requirements of WIPO and the WTO, there are still some areas in which the Afghan Trademark Law provides insufficient provisions, for instance: international registration of a trademark, protection of a collective trademark, defining the likelihood of confusion, visual perceptibility of a trademark, colour, sound and taste, criteria for a well-known mark, termination of a trademark, licensing and compulsory licensing. The Afghan trademark law needs to be brought more in line with the international agreements in relation to these matters.
385 - John Barker, New geographical indications agreement will affect trade mark strategies, John Barker Law. (2015), p. 2.
386 - WIPO, Geneva Act, Art. 6 (1), (2) http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=370082
387 - WIPO, Geneva Regulation, 2015, Art. 9 (1). Available at: http://www.wipo.int/wipolex/en/details.jsp?id=15629
388 - See the link: http://www.wipo.int/treaties/en/registration/lisbon/summary_lisbon.html
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The Paris Convention, as the first and primary effort for providing legal protection of intellectual property, is a significant phenomenon at an international level. It stipulates the key principles regarding patents, trademarks and industrial designs. The Paris Convention addresses three main issues: 1) national treatment, 2) right of priority, and 3) common rules. The principle of national treatment is reflected in Article 7 of the ATML – not in the same detail that the Convention has provided, but it nonetheless adheres to these principles. The right of priority, the independency of each registration as well as common rules for trademark protection have thus been clearly accepted in the ATML.
Additionally, the ATML accepts the reciprocal condition that Afghanistan has with some other countries.
Subsequently, in 1891 the Madrid Agreement was concluded. Its main purpose was to regulate the international registration of trademarks. Registration was based on national registration. This meant that if a company wanted to benefit from international registration, it should first be registered at the national level. To fill the gaps in the convention, in 1989 the Madrid Protocol was adopted. According to this protocol international registration is based on both “application” and “registration,” while according to the Madrid agreement international registration was only based on “national registration”.
The WTO adopted the TRIPS agreement as an integral part of the Agreement Establishing the World Trade Organization in 1994. Afghanistan’s accession was officially ratified at the WTO tenth Ministerial Conference in Nairobi, in December 2015. Therefore, Afghanistan, based on Article 7 of the 2004 constitution, is required to abide by the WTO conventions or treaties. The TRIPS Agreement, which is administered by the WTO, is one of the most inclusive bilateral agreements on intellectual property rights and provides “minimum standards” for the protection of intellectual property rights.
Articles 15 to 21 of the TRIPS Agreement deal with rules allocated to trademark protection.
Even though Afghanistan has made some amendments to the ATML, there are still some parts of the ATML that need to be brought into conformity with the TRIPS Agreement. For instance, the definition of a trademark based on TRIPS includes the colour and visual perception of a trademark, issues that have not been articulated in the ATML. Moreover, with respect to licensing and assigning trademarks as well as the compulsory licensing of trademarks, the ATML contains no clear provisions.
According to the WTO requirements, the government of Afghanistan also needed to make significant progress regarding the legal protection of Geographical Indications and Appellations of Origin. Therefore, a new Geographical Indication Law was enacted in 2015. There are two main treaties concerning the legal protection of Geographical Indications and Appellations of Origin. The first is the Lisbon Agreement for the Protection of Appellations and their International Registration 1979. The
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second treaty is the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications adopted in 2015. Even though Afghanistan has not signed these agreements, in order to meet the requirements of the WTO, it was necessary to regulate and provide legal protection for geographical indications in the country. As this issue is beyond the subject matter of this research, no more detailed information is provided to this end here.
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CHAPTER THREE
THE PURPOSES OF TRADEMARKS FROM A DEVELOPMENT PERSPECTIVE
3.1. Introduction
In the current commercial and industrial world, intellectual property is an important issue for economic development.389 The legal protection of intellectual property rights, particularly trademark protection from a development perspective, has been institutionalized, developed and well-protected in industrial countries. Therefore, the purpose and functionality of a trademark in every legal system is crucial, because the legal protection, dominion and subject matter of trademarks will be determined based on that purpose and functionality, and will provide motivation for investors to invest in their trademark as a part of intellectual property.
As already mentioned, international efforts for adopting a certain number of treaties with regards to intellectual property right protection played a substantial role in this area. The purposes of those treaties are to harmonize and stabilize the trademark system and efficiently provide legal protection for trademarks worldwide.390 The World Intellectual Property Organization (WIPO), as a central body for the administration of those agreements, plays a critical role in the enhancement and development of intellectual property rights, and trademarks in particular.
389- Intellectual Property Rights Intensive Industries: contribution to economic performance and employment in the European Union, Industry-Level Analysis Report, September, 2013 (A joint project between the European Patent Office and the Office for Harmonization in the Internal Market), p. 17.
390 - Timothy W. Blakely, Beyond the International Harmonization of Trademark Law: The Community, p. 313.
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By protecting trademarks, a legal system can provide legal instruments for the producers to keep and enhance their “good will”. Moreover, it also promotes competition among producers and, as a result of this legal protection, the consumer will receive good and consistent quality of products.391
Presently, trademark law embraces a broader context than it had before the 20th century. Thus, most of the current developments in trademark law are not in conformity with the main objectives of traditional trademark protection.392 From a general point of view, the purposes of trademarks are manifold: protecting consumers and producers, source indication, or prevention of dilution and confusion (deception) as well as representing consistent product quality.
In the beginning, the basic purpose of trademark law was consumer protection. Essentially, the legal function of a trademark was to designate the source of the products bearing it.393 Recently, trademark law has broken loose from traditional394 concepts of consumer protection purposes. From this perspective, the idea was that trademark law would protect consumer interests by enabling them to make informed consumption decisions.395 Moreover, two new issues relating to the purposes of trademarks have recently been raised by commentators: “dilution”396 and “initial interest confusion”.397
The primary focus of this chapter is on the purposes of trademarks from a development perspective from a general point of view. The sources drawn on in this chapter are to a large part written by different scholars and commentators from a development perspective. The legal sources such as national laws, regulations and some jurisprudence from Afghanistan are also consulted. Additionally, sometimes reference is made to certain legal sources from other countries such as the United States and the European Community that have addressed and explained the subject matter of the related issues.
391 - Graeme W. Austin, Tolerating Confusion about Confusion: Trademark Policies and Fair Use. Trademark Law and Theory A Handbook of Contemporary Research, Edited by Graeme B. Dinwoodie and Mark D. Janis,Publisehd by: Edward Elgar Publishing Limited, 2008, p. 368. [hereinafter Graeme W. Austin, Tolerating Confusion About Confusion: Trademark Policies and Fair Use].
392 - Mark P. McKenna, The Normative Foundation of Trademark Law, Notre Dame Law Review, Vol. 85, Issue No 5, (2007). p. 1840. [hrereinafter Mark P. McKenna, The Normative Foundation of Trademark Law]
393 - Maximiliano Marzetti, Speechless Trademark? Dilution Theory Meets Freedom of Speech, Latin American and Caribbean Law and Economic Association (2005), p. 3. [hereinafter Maximiliano Marzetti, Speechless Trademark?].
Available at: http://works.bepress.com/maximiliano_marzetti/4
394 - In the context of trademark law, “traditional” means the law which has been evolved by common law courts in the 19th and early 20th centuries.
395 - Chenoy Ceil. The Central Rational for Trademark Protection is and Ought to be the Need of Businesses to Protect Their Brand Value Rather than the Public Interest, University of Tampa, Johan H. Sykes College of Business, (2013), p. 3.
[hereinafter Chenoy Ceil, The Central Rational for Trademark Protection]. Available at:
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2288154&download=yes
396 - “The impairment of a famous trademark’s strength, effectiveness, or distinctiveness through the use of the mark on an unrelated product, usually blurring the trademark’s distinctive character or tarnishing it with an unsavory association. The elements of trademark dilution are (1) ownership of a famous mark and (2) actual dilution”. See Black law dictionary, p. 489.
397 -“It refers to situations in which consumers are confused at first, but this confusion evaporates before any actual purchase take place” see Irina D. Manta, Hedonic Trademarks, Ohio State Law Journal, Vol. 74:2 (2013), p. 272. [hereinafter Irina D.
Manta, Hedonic Trademark]. Available at: http://ssrn.com/abstract=2125252
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Therefore, this chapter first examines the WIOP’s agenda for trademark legal protection.
Second, the purpose and function of Afghan trademark law, the criteria for assessing similarity and identical trademarks, the protective function of trademarks, source indication, dilution and initial interest confusion disputes, collective and quality marks are addressed respectively.