1. Introduction
Traditionally, trademarks convey source information to consumers through the use of words, letters, or numerals.Footnote 1 Today, trademarks appear in new and innovative contexts.Footnote 2 With the steadily evolving use of marketing and communication strategies, enterprises seek to develop non-traditional signs as marketing strategies in international trade. International trademark law is now subject to a dynamic process from which non-traditional trademarks constantly emerge.
The types of signs that are currently considered as trademarks have expanded beyond imagination. Traditional signs are often used in trade with certain non-visual signs as well as other signs that may be visible and yet differ from the conventional notion of signs that are identified by traditional features.Footnote 3 In an attempt to categorize non-traditional signs that may constitute a trademark, the World Intellectual Property Organization (WIPO) divided such signs according to whether they are visually perceptible or not into two groups: Visual signs, including three-dimensional marks, combinations of colours or single colour, hologram marks, motion marks, position marks, and gesture marks; and Non-visible signs, including sound marks, olfactory marks, taste marks, and textile marks. The gradual recognition of non-traditional trademarks enlarges the reservoir of signs that are eligible for trademark protection; hence, more and more types of signs are being considered for use as trademarks. Such new categories of trademarks that have emerged due to modern technological and economic developments have raised certain questions.Footnote 4
This article focuses on the registration of non-traditional trademarks from an international perspective. After a brief introduction to the new category of trademarks, Section 2 explains whether non-traditional signs can constitute a trademark by analyzing the trademark definition stipulated in Article 15.1 of the TRIPS Agreement and by introducing the current status of legal protection afforded to non-traditional trademarks in domestic trademark legislation in WTO Members. Section 3 presents an in-depth analysis of Article 6quinquies of the Paris Convention and aims to address the significance of Article 6quinquies with regard to the international registration of non-traditional trademarks by comparing the essential difference between the two modes of international registration for non-traditional trademarks.
2. Non-traditional marks under the TRIPS AgreementFootnote 5
Although the Paris ConventionFootnote 6 has been the ‘cornerstone’ of the international regulation of industrial property for nearly a century, it makes no provision for the definition of a trademark.Footnote 7 Given the various problems in international trademark registration, it has been widely recognized that it is one of the ‘urgent tasks’ of international trademark law to overcome such difficulties due to the different prerequisites for trademark registration in different jurisdictions.Footnote 8 Thus, it is necessary to establish a uniform trademark definition. The purpose of establishing a general trademark definition is to find a concept that includes the categories that are capable of protection within individual countries.Footnote 9 Article 15.1 of the TRIPS Agreement is the first provision at the international level to provide a consolidated definition of trademarks, which was absent from the Paris Convention.Footnote 10 The inclusion of a definition of trademarks is generally considered to be a ‘major step’ beyond the Paris Convention.Footnote 11
2.1 A universally binding definition
2.1.1 Trademark definition in Article 15.1 of the TRIPS Agreement
Article 15.1 establishes that ‘any signs and combinations of signs that are capable of distinguishing the goods or service of one undertaking from those of other undertakings, shall be capable of constituting a trademark’.Footnote 12 Such a broad definition identifies the primary function and the ‘abstract capability’ of trademarks.Footnote 13 The ‘essential characteristic’ of trademarks is that they must have the capability of distinguishing goods or services.Footnote 14 As Schechter said, ‘the “only rational basis” for trademark protection is distinctiveness’.Footnote 15 The term ‘capable of distinguishing’ includes marks that actually distinguish as well as marks that have the capacity to distinguish.Footnote 16 The definition is based on the distinctiveness of signs as such or on distinctiveness as acquired through use.Footnote 17
The range of protectable signs is quite broad.Footnote 18 Virtually any sign that is able to distinguish goods or services may be considered a trademark, and there are few limits to the forms of signs.Footnote 19 The general term ‘any sign’ is designed to include not only any mark within the proper meaning of the word but also all means of marking that are not usually encompassed by this term. As Beier said, ‘such words clearly embrace not only merely what at the time of the enactment was deemed to be a mark but also all the marks that, in the future, on the basis of discoveries or the development of new processes, may be considered as such’.Footnote 20 This definition affords immense legal room for the registration of non-traditional trademarks. Any potential non-traditional sign can be accepted as a trademark in principle, as long as the non-traditional sign is capable of distinguishing different sources of goods or services.
2.1.2 Trademark definition in the WTO Members’ trademark legislation
Article 15.1 requires a uniform and binding definition of trademarks among WTO Members. To comply with Article 15.1, WTO Members must use distinctiveness as a primary condition for registrability and make registration available for all signs that are capable to distinguish.
After the enforcement of the TRIPS Agreement in 1995, most WTO Members incorporated Article 15.1 into their trademark laws by defining a trademark as ‘any sign’ that is capable of distinguishing goods or services from those of other undertakings.Footnote 21 The ‘basic criterion’ for identifying trademarks that are eligible for registration is distinctiveness.Footnote 22 For all Members, distinctiveness is recognized as the sole substantive condition and prerequisite for the protection of a trademark.Footnote 23 Distinctiveness could be called a ‘universal criterion’, although its application differs from one system to another.Footnote 24 As to how Members assess distinctiveness, Article 1.1 of the TRIPS Agreement provides that ‘each Member may resort to its legal system and practice to carry out such an assessment’.Footnote 25
2.2 Protectable trademark forms
2.2.1 Registrable signs in Article 15.1 of the TRIPS Agreement
The major disagreement between developed and developing countries in the field of trademarks during the negotiations of the TRIPS Agreement was ‘the extent to which a sign can constitute a trademark’.Footnote 26 It was difficult to agree on a common list, as each Member agreed on some of the terms but not on all of them. The developing countries were worried that too broad of a definition could limit the ability of their companies to use marks.Footnote 27 For the purpose of international legislation, some ‘leeway’ was required to secure the registrability of traditional and non-traditional trademark types, thereby ‘prolonging the usefulness of the definition’.Footnote 28 Therefore, the list reflects examples on which the negotiators reached a consensus,Footnote 29 and it only aims to afford some guidance for WTO Members in making their domestic legislation.Footnote 30
Article 15.1 clarifies the definition by giving examples of signs that are eligible for registration as trademarks, such as words including personal names, letters, numerals, figurative elements, and combinations of colours.Footnote 31 From the wording of Article 15.1, only combinations of colours are expressly included, while no reference is made to other non-traditional signs, in particular, three-dimensional signs, single colour, and sounds. Such a list is merely of an exemplary or ‘illustrative’ nature, and it should never be considered exhaustive and ‘exclusionary’.Footnote 32 The ‘non-final character’ is emphasized by the expression ‘in particular’ in its introduction.Footnote 33 The wording ‘capable of distinguishing’ contemplates a broad scope of eligible marks, which is not limited to the signs that are specifically mentioned in Article 15.1.Footnote 34 Other examples could be added to the list. The absence of other non-traditional signs may imply that those marks are ‘weak marks’ that are not inherently distinctive,Footnote 35 but it cannot be interpreted to mean that WTO Members may generally deny the trademark capability of certain categories of non-traditional signs. The only decisive question is to determine whether such trademark could distinguish different goods or services.Footnote 36 Abstract distinctiveness will determine the protectability in situations in which the application concerns non-traditional trademarks. To the extent that non-traditional materials are considered to be marks, because they are ‘capable of distinguishing’ goods or services, such protection would be compatible with the TRIPS Agreement.Footnote 37
2.2.2 Registrable signs in the WTO Members’ trademark legislations
The effects of the TRIPS Agreement have been noticeable in trademark laws worldwide, particularly in ‘a more expansive recognition of trademark subject matter’.Footnote 38 In response to such provisions, many countries have amended their trademark laws to allow for the registration of some non-traditional trademarks.Footnote 39 However, based on empirical studies on the evaluation of trademark laws of 162 WTO Members, it can be concluded that the range of non-traditional trademarks that are allowed for registration differs greatly across jurisdictions. Some Members offer protection for the full range of non-traditional trademarks, while other Members appear to offer protection to only one or two forms of non-traditional trademarks.
(1) Three-dimensional marks
The shape and packaging of products are signs that may constitute trademarks in the legislation and practice of most Members.Footnote 40 Except for a few Members that never expressly mention three-dimensional marks,Footnote 41 most Members expressly admit them as protectable trademark forms. However, it is worth noting that some Members only extend trademark protection to the packaging of goods.Footnote 42
(2) Colour marks
Colour marks do not regularly appear in the trademark definitions of certain Members. Some laws treat both the combination of colours and single colour equally as registrable signs,Footnote 43 while some laws only mention combinations of colours.Footnote 44 The idea of registering single colour as trademarks was flatly rejected by a large number of delegations during the negotiations of the TRIPS Agreement.Footnote 45 Some scholars believed that the fact that Article 15.1 refers to combinations of colours means that Members are not obliged to make registration available for single colour. Otherwise, the presence of the expression ‘combination of colours’ would make no sense.Footnote 46 In practice, it worth noting that some Members expressly stipulate that single colour shall not be considered as a trademark and may not be registered.Footnote 47
In practice, the registration of single colour has given rise to debate and a number of judicial decisions. The European Court of Justice held that the fact that ‘colours possess little inherent capability for communicating specific information would not justify the conclusion that colour per se cannot be considered to be capable of distinguishing; it must be accepted that colour is capable of constituting a trademark with the meaning of Article 2 of the Directive’.Footnote 48 The Federal Court of Australia identified four circumstances where single colour that is applied to goods would be inherently adapted to distinguish.Footnote 49 The Supreme Court of the United States determined that ‘a single colour can be registered as a trademark if it is not de jure functional and if it has acquired distinctiveness’.Footnote 50 The Registrar of Trademarks in the United Kingdom held that ‘the applicant should have provided evidence to demonstrate that the public has been educated to recognize the mark as being distinctive of the applicant's goods’.Footnote 51
(3) Holograms and motion marks
Other visual non-traditional trademarks, such as holograms and motion marks, are the least mentioned. Most Members do not consider holograms as protectable signs that can constitute a trademark,Footnote 52 while few Members list holograms as protectable signs in their trademark definitions.Footnote 53
With regard to motion marks, they do not constitute a separate category of mark in most jurisdictions.Footnote 54 Only Korea and Taiwan specifically mention motion marks in their trademark definitions.Footnote 55
(4) Non-visual marks
WTO Members take entirely different attitudes towards the protection of sound marks. Some Members explicitly exclude the protection of sound marks.Footnote 56 In contrast, some Members specifically contemplate that sound signs may be protected as trademarks.Footnote 57 Among those Members, certain Members only protect musical sounds, not including non-musical sounds.Footnote 58 Other Members, while not providing for such protection, could be interpreted as not excluding it.Footnote 59
Other non-visual trademarks, such as olfactory marks, taste marks, and texture marks, are the least common non-traditional trademarks that may be protected. Most Members do not consider scents as trademarks,Footnote 60 while a very few Members unequivocally grant protection to such marks.Footnote 61 Some Members explicitly admit tastes as protectable signs in their trademark definitions.Footnote 62 Canada is the only Member that enumerates texture marks in its trademark definition, while in practice, the United States and Ecuador have accepted such a mark for registration.Footnote 63
2.3 Limitations on trademark form: visual perceptibility
The title of Article 15.1 mentions subject matter as ‘protectable’, instead of subject matter ‘to be protected’. Therefore, the subject matter covered by this provision qualifies for, but is not necessarily entitled to, protection.Footnote 64 The fact that a mark is of a type within the definition of trademark does not necessarily mean that it is entitled to registration.Footnote 65 Article 15 of the TRIPS Agreement contains ‘minimal specifications’ on the registration prerequisites and provides WTO Members with various grounds for denying registration of trademarks.Footnote 66 Signs can be refused registration if an exception applies, including the following: (1) a lack of inherent distinctiveness or acquired distinctiveness; (2) a lack of visual perceptibility; and (3) other grounds that are not inconsistent with provisions in the Paris Convention. With regard to non-traditional marks, the exception of visual perceptibility may be worth highlighting.
2.3.1 Visual perceptibility requirement
Given the divergence in the protection levels of trademarks among WTO Members, Article 15.1 entitles WTO Members to make registrability of a sign based on its visual perceptibility.Footnote 67 This means that sounds, smells, and tastes may be excluded from registrability, no matter how distinctive they are. This provision was designed to entitle Members to decide whether to protect non-visual signs in their domestic legislations. Difficulties may arise in interpreting the precise scope of this discretion.
(1) Non-mandatory requirement
Members may require, as a condition of registration, that signs be visually perceptible. The TRIPS Agreement does not contain a ‘mandatory requirement’ for Members to register trademarks that consist of non-visible signs.Footnote 68 WTO Members may refuse the registration of a mark that is not visually perceptible.Footnote 69 However, they are not obliged to do so.Footnote 70 As the TRIPS Agreement only provides a minimum standard of protection, WTO Members are also free to provide broader protection by including non-visual signs as subject matter to be protected in their national legislations. This provision leaves legislative discretion for Members to make a different choice.
(2) A mere condition of registration
The requirement of ‘visual perceptibility’ imposes restrictions on trademark forms, which would eventually affect the protection of non-visual trademarks for WTO Members. However, it should be noted that ‘visual perceptibility’ is merely a ‘condition of registration’, which does not apply to qualify ‘what constitutes a registrable trademark’. In other words, this provision would never change the broad definition of trademark that any signs capable of distinguishing goods from different undertakings should be protectable trademark forms.
(3) Visual perceptibility v. graphical representation
Among the 162 WTO Members, 55 Members adopt another criterion for trademark registration, which requires that signs be capable of graphical representation.Footnote 71 It should be emphasized that ‘graphical representation’ and ‘visual perceptibility’ are different concepts.
The requirement of ‘graphic representation’ is designed to enable the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.Footnote 72 This requirement not only covers visual signs but also non-visual signs. Essentially, the requirement of ‘graphic representation’ is a mere ‘technical’ or ‘procedural’ condition for registration. A trademark may consist of a sign that is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly, for example, by means of images, lines, or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable, and objective.Footnote 73 For example, a sound mark can be represented by musical notes or phonograms. In view of the broad definition of a trademark as ‘any sign or any combinations of signs’, some Members have accepted non-visual marks for trademark registration provided that they are capable of graphic representation.Footnote 74
By contrast, the requirement of ‘visual perceptibility’ concerns the ‘the form of trademarks’. This requirement was designed to permit Members to exclude non-visual signs from registration. In the Brussels Draft of the TRIPS Agreement, the provision was once proposed as ‘Parties may require, as a condition of registration, that signs be capable of “graphical representation”’. However, in the final text, the conditions for registration were replaced by ‘visual perceptibility’. Some scholars commented that ‘the Chair's compilation can be deemed as rejecting the idea of making mandatory registration available for non-visual signs’.Footnote 75 In this respect, the TRIPS Agreement is narrower than domestic legislation that merely subjects registrability to the possibility of graphical representation.Footnote 76
2.3.2 Non-visual signs in the WTO Members’ trademark legislations
In practice, depending on the options selected by WTO Members in their implementation of the TRIPS Agreement, non-visual signs have been treated in different ways. Some Members require that all signs should be visually perceptible.Footnote 77 By contrast, some Members specifically incorporate non-visual signs, such as sound, scent, taste, or even texture marks, into their trademark definitions. Some Members, while not clearly listing non-visual signs in their trademark definition, could be interpreted as not excluding it. This may be the case where the list of signs contained in the relevant legislation is not considered to be exhaustive, and may accommodate other signs – as long as they fulfil the predetermined criteria of ‘graphical representation’.Footnote 78 Some Members take a more conservative approach, for example, in Uruguay, the registration of non-visual signs shall be conditional on the availability of suitable technical means.Footnote 79
Recently, the problem of registration of non-visual signs due to lack of uniformity in WTO Members’ trademark definition has been partially remedied through recent preferential trade agreements that require contracting Members to change their domestic approaches to non-traditional signs. For example, the United States has forced some countries to change their trademark definition to accept sound or smell marks as registrable signs by means of Free Trade Agreements (FTAs).Footnote 80 Therefore, certain WTO Members that initially refused non-visual signs from registration have revised their trademark definitions to admit such signs.Footnote 81 Likewise, some Regional Trade Agreements (RTAs) contained similar provisions, for example, the Andean Community countries expressly agree to extend trademark protection to sound and aromas.Footnote 82 Notably, the Trans-Pacific Partnership even unequivocally stipulates that ‘no party shall require that a sign be visually perceptible, and deny registration of a mark on the mere ground that the sign is a sound’.Footnote 83
Contrary to the Article 15.1 of the TRIPs Agreement, such FTAs or RTAs deprive contracting parties of the discretion to decide whether to protect non-visual signs. It could be foreseen that if all Members delete their requirement of visual perceptibility with regard to trademark forms in the future, there will be no barrier for the international registration of non-visual signs. However, those preferential trade agreements are binding only on contracting parties. Among all 162 WTO Members, most of them have not signed any preferential trade agreements to solve the problem of registrability of non-traditional trademarks. Therefore, it is important to interpret Article 15.1 of TRIPS Agreement and Article 6quinquies of the Paris Convention in a comprehensive way.
3. Non-traditional trademarks registrations under the Paris Convention
Based on the preceding overview of non-traditional trademarks under the TRIPS Agreement and domestic trademark legislations, international registration issues are brought into focus in the present section. International agreements have been signed to facilitate the international protection of trademarks.Footnote 84 The Paris Convention has provided the ‘framework’ for the worldwide protection of industrial property for more than a hundred years.Footnote 85 The TRIPS does not address procedural aspects of industrial property rights.Footnote 86 Article 2.1 of the TRIPS Agreement obliges all Members to comply with the substantive provisions of the Paris Convention.Footnote 87 Members are obliged to comply with the substantive provisions of the Paris Convention and the ‘TRIPS-specific’ provisions on trademarks.Footnote 88 This incorporation ‘complicates the task of delineating the new scope of protection’ and makes it necessary to discuss both treaties simultaneously.Footnote 89 The Paris Convention provides WTO Members with two ways to obtain trademark registrations in other Member states: one is by registration under Article 6; the other is by registration under Article 6quinquies.Footnote 90
3.1 Principle of independence
3.1.1 Article 6 of the Paris Convention
Article 6 establishes the most significant principle of the independence of trademarks by providing Members with discretion in how they administer their domestic trademark system.Footnote 91 Article 6 builds up to the principle of independence in three stages. Article 6 reserves for each Member the right to decide the conditions for trademark filing and registration in their domestic legislations. Foreign applicants who choose to seek the registration of a trademark in a Member state must comply with the relevant conditions that are specified in that Member's trademark legislation.Footnote 92 Article 6 sets forth the rule that obtaining and maintaining a trademark registration in any Member state may not be made dependent on the application or registration of the same mark in the applicant's country of origin. A trademark that is granted in a Member state is independent of those that already exist in other Member states for the same object, including in the country where it was first protected. Consequently, the same trademarks designating the same goods and belonging to the same trademark owner in several Member states are independent of one another.Footnote 93
3.1.2 Registration of non-traditional trademarks under Article 6
Although non-traditional trademarks are considered as possessing huge market potential, it remains difficult to obtain protection because of different conditions for trademark registration under domestic laws. The registrability of non-traditional trademarks has raised some questions, such as distinctiveness, functionality, and methods of graphical representation. Apart from those questions, non-traditional signs are often rejected in state practice for formal reasons.
(1) Signs that do not constitute as a trademark
Non-traditional signs have not been widely acknowledged and accepted in WTO Members. The primary obstacle involving the international registration of non-traditional trademarks stems from different permissible signs that can be considered as trademarks in domestic legislations. The recognition of permissible trademark forms varies greatly from one country to another. As introduced above, the non-traditional trademarks that may be protected in most jurisdictions are three-dimensional marks and combinations of colour marks. Other non-traditional signs that have been registered in some countries are not considered as registrable signs in other countries, in particular, single colour marks and non-visual signs.
(2) Signs not visually perceptible
Since Article 15.1 of the TRIPS Agreement entitles Members to require signs to be visually perceptible as a condition for registration, certain Members explicitly exclude non-visual signs from being registered. A failure to comply with this requirement of being ‘visually perceptible’ may form a possible ground for refusal in many jurisdictions. Even in a Member state that does not require signs to be visually perceptible, the scope of protectable non-visual signs varies. Sound marks may be protected in most jurisdictions, and scent marks could be accepted in certain countries. However, other non-visual signs, in particular, taste marks and textile marks are the least protected in most jurisdictions.
3.2 Principle of ‘telle quelle’
Article 6 is not the only way to register a trademark in another country. If an applicant has duly registered a trademark in its country of origin, Article 6quinquies provides an alternative means of obtaining protection of that trademark in other countries.Footnote 94
3.2.1 Article 6quinquies of Paris Convention
Parallel to the principle of independence, the next most important provision in the Convention is the principle of ‘telle quelle’. As a special rule for the benefit of owners of trademarks, Article 6quinquies provides for the ‘extraterritorial effects’ of the registration in the country of origin.Footnote 95
(1) Application condition
The application of Article 6quinquies is subject to two prerequisites. First, the trademark must be duly registered.Footnote 96 Mere filing or use is not sufficient for claiming the application of Article 6quinquies. Second, the trademarks must be properly registered in the applicant's country of origin, which is prescribed to prevent applicants from freely choosing a country. Such protection is to be considered as fair only when the prior registration has been acquired in certain countries which have a real relationship with applicants.Footnote 97
(2) Application scope
Controversies have continuously arisen concerning the precise scope of protection, as the Paris Convention itself contains no provision as to the degree of protection to be granted. Radical disputes have concentrated on whether Article 6quinquies concerns merely the form or also the content of a trademark. The controversy has to be understood with regard to the historic development of the provision, which in its original version of 1883 was expressly restricted to the protection of a trademark in its original form.Footnote 98 As an integral part of that Convention, paragraph 4 of the Final Protocol explicitly provides that Article 6 concerns only the form of the mark.Footnote 99 In United States – Section 211 Omnibus Case, the Appellate Body examined the language of the disputed provision and its context, and affirmed that Article 6quinquies only addresses the form of a trademark and not all of the features of a trademark.Footnote 100
(3) Application exception
The obligation to accept a trademark duly registered in the country of origin is subject to certain exceptions. Those grounds, as stipulated in Section B and Section C of Article 6quinquies, are deemed as ‘exception to exception situations’. The Lisbon conference expressly states that those grounds for refusal are exhaustive. Footnote 101 The ‘mandatory nature’ of Article 6quinquies permits countries to deny registration under the ‘telle quelle’ provision only on grounds that are specified in that provision.Footnote 102 In other words, Members are not free to apply other grounds to refuse such registrations. With regard to the form of trademarks, the sole task for competent authorities is to determine whether any of the given grounds would apply.Footnote 103
3.2.2 Implementation of Article 6quinquies in WTO Members
The Paris Convention explicitly requires each Member country to adopt appropriate legislation to implement the Convention.Footnote 104 Applications of Article 6quinquies may be directly claimed, and the applicants may avail themselves of this later registration and claim more than national treatment according to the domestic legislation.Footnote 105 Members that do not allow the Paris Convention to have any self-executing character are obliged to transfer this principle into their domestic laws. In this case, applications of Article 6quinquies may not be directly claimed, and the applicants should invoke the corresponding provisions of domestic laws.Footnote 106
Historically, the ‘telle quelle’ provision has been of considerable assistance in many cases.Footnote 107 It is usually used as a ‘counterbalance’ to opposition that the trademark cannot be registered because it is in contradiction with the absolute grounds of refusal that are established by national trademark legislations.Footnote 108 For instance, marks that consist solely of letters or numerals are not registrable absent proof of secondary meaning under the 1961 Norwegian Trademark Act; however, letters or numerals filed by foreign applicants are registrable under ‘telle quelle’ rules.Footnote 109 Moreover, surnames are as a rule not registrable, but foreign applicants may remove this surname objection by invoking the ‘telle quelle’ provision.Footnote 110 Similarly, foreign applicants often invoke Section 16 of Israeli trademark law and have often succeeded in registering many of their trademarks that would have been rejected by the Israeli Trademark Office.Footnote 111
However, the ‘telle quelle’ provision has led to conflicting findings by different courts.Footnote 112 Interpretations unquestionably differ among the various jurisdictions. There are certain countries that do not act in the spirit of the provision contained in the ‘telle quelle’ provision.Footnote 113 When this provision came to be tested in these courts, ‘its meaning was often reduced to very narrow limits’.Footnote 114 Many decisions showed that the ‘telle quelle’ rule has been incorrectly interpreted by the competent authorities of Members.
Take the United Kingdom as an example, which adopted a provision resembling the ‘telle quelle’ rule four months after the signature of the Paris Convention.Footnote 115 In the Carter Medicine Co. case, Judge North makes it clear that ‘foreign trademarks, even when registered abroad should conform to the requirements of the British Acts; the question what foreign trademarks can be registered in this country depends entirely on the Act’.Footnote 116 The same opinion was held by Justice Sterling in the California Fig Syrup Co. case.Footnote 117 On each occasion, the Courts refused to look at the Convention and construed that as requiring a foreign applicant to submit it to the normal test of the section defining a trademark. The ‘telle quelle’ provision was regarded as a so-called ‘dead letter’ in the United Kingdom.Footnote 118
After the two cases noted in the previous paragraph, the British delegates made the country's legal position abundantly clear in a formal statement at the resumed session on 12 December 1900, in which the British Government consented to the maintenance of Article 6 of the Paris Convention in its present form on condition that all of the contracting States should be at liberty to keep their existing law on the subject.Footnote 119 There have been conflicting views on the legal effect on this statement. Kerly expressed the view that ‘British law did not carry out the international agreements that are constituted by Article 6 of the Convention’.Footnote 120 Ellwood took a more conservative view that ‘the British's express reservation constituted formal notice to all concerned of the way this country would construe those provisions’.Footnote 121 The British statement is merely a reservation to the effect of Article 6 in the United Kingdom, which would never change the drafting purpose and inherent spirit of the provision. Although the British delegate preferred to see the ‘telle quelle’ provision omitted from Article 6 of the Convention, a considerable number of contracting countries valued the expression as a background for trademark registration.Footnote 122 It is well to remember that the British statement was not approved unanimously because the Italian delegate expressly objected to such retention of Article 6. The delegates who proposed the amendment of this Article started complaining regarding the non-observance of this provision in the UK.Footnote 123 The UK was often accused of not carrying out the requirements of Article 6 of the Convention.Footnote 124 The rational application of Article 6 of the Convention ‘depends upon the loyalty of the contracting States’.Footnote 125 The weakness of Article 6quinquies derived in part from the failure of key countries to conform to the Paris Convention.
Article 6quinquies represents a ‘substantial departure’ from the principle of independence.Footnote 126 Many commentators have held that Article 6quinquies has only a ‘minimal amount of importance’, and the special benefits for trademark proprietors afforded by Article 6quinques are ‘de minimus’.Footnote 127 There are four reasons why Article 6quinquies is very difficult to apply. First, Article 6quinquies only applies when the conditions for trademark registration in the country of origin are more favourable than those conditions in other Members. If the domestic legislation of protecting countries is extremely liberal, for instance, in the United States and France, foreign applicants will rarely call upon Article 6quinquies because any sign that is considered to be registrable as a trademark in their country of origin can, in all probability, be registered.Footnote 128 Second, Article 6quinquies depends on the prior registration in the country of origin, which aims to avoid ‘forum shopping’. Third, Article 6quinquies concerns only the ‘form of marks’, instead of all features of trademarks. Competent authorities reserve the discretion to refuse such applications based on any grounds that do not concern trademark forms, such as ownership, graphical representation, or requirement of use. Fourth, the application of Article 6quinquies is subject to exceptions that are prescribed in Section B and Section C, which largely temper the absolute character of any obligation under Article 6quinuies. Moreover, there is still no ‘extraterritorial mechanism for enforcement’ of Article 6quinuies.Footnote 129 In retrospect, the weakness of Article 6quinquies derived ‘mainly from the lax enforcement of existing norms that state practice tolerated’.Footnote 130
However, it is to this clause that we must pay most attention. Although the definition of what a trademark is under most national laws has now been extended to certain types of trademarks that may have been problematic in earlier times, there are still other types of non-traditional trademarks that have not been accepted in most countries. Therefore, the ‘potential burden’ to recognize something as a trademark that is not protected as such under one's own law still exists.Footnote 131 Article 6quinquies is of prominent significance for the international harmonization of domestic trademark laws. Unfortunately, it has not achieved the intended objective and purpose, and more emphasis should be paid to its enforcement. If properly used, the ‘telle quelle’ provision is a powerful tool.
3.2.3 The significance of Article 6quinquies for non-traditional trademarks
Due to modern technological and economic developments, new categories of trademarks have recently emerged and raised questions that probably might not be solved by the use of the ‘telle quelle’ clause.Footnote 132 One particular question is whether Article 6quinquies requires country A, in which protection is claimed, to recognize and protect a mark that is registered in country B, where this mark could not otherwise have qualified as a trademark under the law of country A. Typical examples are three-dimensional signs, single colour, and, more recently, sounds and smells. A uncertain interpretation of what falls under protection of Article 6quinquies often arises.Footnote 133
The position taken by the majority is summarized by Bodenhausen, that ‘Members were not obliged to interpret the notion of a trademark in a manner which differs from that of their national legislation’.Footnote 134 Simply put, if a mark is registered in the country of origin, but it is not considered to be a trademark in another country, then this latter country is not obliged to register it.Footnote 135 Thus, if protection is sought for three-dimensional marks or sounds that were eligible for protection as trademarks in country B but not in country A, then it would be open to country A to refuse this protection. In practice, German Patent and Trademark Office refused to apply the ‘telle quelle’ clause to sound marks in a decision in 1931 on the ground that ‘when the Paris Convention was drafted, such marks were not considered, and the intention of the signatory states must control the interpretation of the Convention’.Footnote 136 Likewise, before the latest revision of trademark law in 2013, the Trademark Office of China refused several international applications of sound marks filed under Article 6quinquies, by foreign companies such as Siemens, Allianz, and Dachser, on the mere ground that ‘a sound mark is not acceptable at present in China’.Footnote 137
On the other hand, Bodenhausen affirms that ‘the ‘telle quelle’ rule will apply to trademarks that consist of numbers, letters, surnames, geographical names, words, or scripts and other signs’.Footnote 138 If the application for protection was in respect of words or symbols, country A would not be able to refuse on the ground that certain types of words were not protected under its law.Footnote 139 In practice, the German Federal Supreme Court extended protection to a letter mark, which at the time of the decision fell under an absolute prohibition of registration.Footnote 140 Similarly, the Israeli Trademark Office has accepted family name as registrable under the ‘telle quelle’ clause.Footnote 141
Bodenhausen's interpretation of Article 6quinquies has been shared by many commentators. Gill believed that ‘the Paris Convention does not enforce registrations of all marks “telle quelle”’.Footnote 142 Bereskin emphasized that ‘Article 6quinquies is subject to the basic principle that Member is entitled to decide the conditions for registration of any mark, which must include the ability to decide what constituted a registrable trademark’.Footnote 143 Pauwelyn commented that ‘Article 6quinquies only requires that the trademark must be registered, if domestic law of Member permits such registration’.Footnote 144
Even WIPO itself characterizes Article 6quinquies much more narrowly: Article 6quinquies does not affect questions relating to the nature or the function of the trademarks as conceived in the countries where protection is sought. Thus, Members are not obliged to register and extend protection to a subject that does not fall within the meaning of a trademark as defined in the law of that country.Footnote 145 Although the list of exceptions stipulated in Article 6quinquies is exhaustive so that no other grounds may be invoked to refuse the registration of the trademark, the list does not exclude any ground for refusal of protection for which there is a need in national legislation.Footnote 146
The above-mentioned opinions will lead to a result that if under the law of a Member country a non-traditional mark is not considered to be a trademark in that country, it is not obliged to accept that subject matter for registration and protection. Such an interpretation of Article 6quinquies will adversely affect the protection and registration of non-traditional trademarks in global trade. In the author's view, Bodenhausen's interpretation of Article 6quinquies does not sufficiently take account of the fundamental nature and essential function of trademarks in international trade. Such interpretations also appear to be incompatible with the whole philosophy of the Paris Convention, and they are not corroborated by the drafting purpose of Article 6quinquies. Moreover, such interpretations of Article 6quinquies have become anachronistic since the enforcement of the TRIPS Agreement, which provides for a consolidated definition of trademarks among WTO Members. To answer the particular question that was raised initially, the following aspects should be re-examined and highlighted.
(1) The international character of trademarks
International trade is inconceivable today without trademarks. In foreign markets, trademarks are the ‘only means of creating and maintaining good will’.Footnote 147 In a global economy, registration is essential to ensure legal interest for trademark owners.Footnote 148 The registration of trademarks worldwide are critical to international trade as nearly all legitimately traded goods operate under trademark protection. Considering the ‘international character’ of a trademark, once a person has registered a trademark in his country of origin and established his good will in international trade, ‘he should not be compelled to adopt a different mark for each county to comply with such country's conception of what a trademark is’.Footnote 149 As Ricketson suggested, ‘international trade will be facilitated if there is ready acceptance and recognition of the same mark in countries where the trademark owner wishes to do business’.Footnote 150
With regard to non-traditional trademarks, there are important differences in the domestic legislation of the Members regarding the conditions for registration. Certain non-traditional trademarks that have been registered in country of origin would not be accepted for registration in foreign countries. WTO Members take materially different attitudes towards non-traditional trademarks, in particular, single colour and non-visual signs. The differences in domestic legislations could inevitably prevent the uniform use of the same trademark.Footnote 151 Different marks will be used to identify goods or services from the same source in different countries in international trade. Due to differences in domestic legislations with regard to the form of a trademark, the ‘telle quelle’ provision has been of great importance to international trade. Article 6quinquies is designed to facilitate the international protection of industrial property rights. As is widely recognized, it is in the interest of both trademark owners and the public to have the same trademark apply to the same goods in different countries.Footnote 152 Once consumers associate a given sign with a specific enterprise, the denial of trademark protection implies a certain risk of consumer confusion.Footnote 153
(2) The legislative history and drafting purpose of Article 6quinuies
To understand Article 6quinquies, one must go back to the very beginning. It is necessary to recall that prior to the year 1880, the laws of the various countries differed materially in their conceptions of a trademark. For example, it was not possible to register word marks or figurative elements in Germany, and letters or numerals were deemed to be non-registrable in most countries.Footnote 154 Such similar restrictions made it impossible for a trademark owner to use his trademark in the same form in more than one country. Only a few signs were considered to have the character of a trademark, with the result that a considerable number of trademarks were illicitly appropriated and brought into contempt in certain countries.Footnote 155
The original Paris Convention of 1883 provided the ‘telle quelle’ clause in Article 6, which states that ‘Every trademark duly filed in the country of origin shall be accepted for filling and protection in its original form in the other countries of the Union’. The word ‘telle quelle’ was born of a France–Russian compromise.Footnote 156 To define the scope of this Article to ensure a just and uniform application of its provisions, paragraph 4 of the Final Protocol of 1883 explained that Article 6 should be understood in the sense that ‘no trademark may be excluded from protection in one of the States of the Union for the sole reason that it does not comply, with regard to the signs of which it is composed, with the conditions of the laws of that State, provided it complies on this point with the laws of the country of origin and that it has been properly filed there’.Footnote 157 The foregoing provision of the Final Protocol left ‘little doubt’ as to the meaning of the principle of ‘telle quelle’.Footnote 158
The ‘telle quelle’ provisions have been modified several times since.Footnote 159 At the Revision Conference of Washington (1911), it was proposed that the relevant provision be omitted in the Final Protocol, and to introduce into the Convention itself the rule that the provision would apply to a trademark ‘with regard to the signs of which it is composed’.Footnote 160 No objection was raised, and the relevant provision was omitted in the Final Protocol but without the introduction of such a rule. Although this agreed interpretation was omitted, it should never change the meaning of the provision or alter the intended sense of ‘telle quelle’ as it was made explicit in 1883.Footnote 161
From the wording of Article 6quinquies and its legislative history, it is quite clear that the ‘telle quelle’ provision was designed to diminish the impact of difference on the registration of trademarks in international trade and to establish the effect of bringing about a certain uniformity of the law of different countries as to the concept of trademarks.Footnote 162 Inherent in the language is the notion that the ‘form of trademarks’ shall in no case form an obstacle to the registration of ‘telle quelle’ trademarks. This clause was capable of addressing the differences among the individual countries regarding the type of marks that are capable of trademark protection.Footnote 163
The ‘telle-quelle’ clause provides that the character of the mark shall be judged from the point of view of the country of origin.Footnote 164 Article 6qinquies aims to create rights for foreigners over and beyond the rights of domestic nationals, to create exceptions to the domestic laws as to what constitutes a trademark.Footnote 165 Put another way, Article 6quinquies aims to afford nationals of Member states a right to request, in all other Member country states, marks that nationals of the receiving country could not file in their home country.
According to Bodenhausen's interpretation, a line was deliberately drawn between traditional marks and non-traditional trademarks with respect to the application of Article 6quinquies. This attitude would be illogical. Why, as a matter of substance, should non-traditional marks fall on the non-application side of the line, and traditional marks on the other? In both circumstances, the marks that are registered in the country of origin would not have been registered in the protecting country if the application had been made by a national of that country. Bodenhausen does not explain why such a distinction is possible.Footnote 166 Such a distinction is incompatible with the inherent spirit of Article 6quinquies. The Paris Convention contains no definition of signs that are capable of constituting a protectable trademark. Instead, it declares ‘the law of the country of origin to be decisive’.Footnote 167 The word ‘trademark’ used in the Paris Convention always has the broadest meaning, and it does not relate exclusively to traditional signs.Footnote 168 The object of the ‘telle quelle’ provision was not to draw an unreasonable distinction of this type.Footnote 169 The degree of confidence accompanying Bodenhausen's argument ‘diminishes’ as one considers specific cases.Footnote 170 There would be a tendency to admit that a mark that is introduced from abroad should be subject to examination in all cases of a non-traditional mark, but no examination should be made in the case of a word or symbol mark.
(3) A universally binding definition of trademarks since the TRIPS Agreement
The problems discussed here would not arise in the event that the Paris Convention itself contained a definition of trademarks. The question that arises from the application of the ‘telle quelle’ provision with regard to trademark form could be solved unequivocally by a generally binding definition that sets forth the permissible forms of trademarks.Footnote 171 Efforts to create an international trademark definition are not new. Early in the 1880s, the Belgian delegate suggested that future Conferences would have to decide on the nature of the signs that could be used as trademarks in all of the countries of the Union.Footnote 172 However, until now, there has been no definition of trademarks in the Paris Convention. It provides neither an indication as to what forms of trademarks can be protected nor what constitutes a trademark.Footnote 173
Bodenhausen's argument might make some sense if there were no uniform definition in the Paris Convention. However, after the enforcement of the TRIPS Agreement, it seems hardly convincing. The TRIPS Agreement establishes a universally valid legal definition of a trademark at the international level.Footnote 174 Article 15.1 defines a trademark as any sign that is capable of distinguishing goods or services from different undertakings. This conceptual definition does not limit the types of signs that may be considered to be a trademark.Footnote 175 Virtually any distinctive sign may constitute a trademark.Footnote 176 Article 15.1 requires a uniform and binding definition of trademarks among all WTO Members. This provision does not leave room for Members to decide what a trademark is.Footnote 177 The protection of distinctive marks is a ‘mandatory standard rather than a minimum standard’.Footnote 178 Members are obliged to ensure that those signs that meet the distinctiveness criteria are ‘eligible for registration’ as trademarks within their domestic legislation.Footnote 179 Failure to protect distinctive trademarks is a TRIPS violation. Article 15.1 only allows Members to set forth in their domestic legislation conditions for the registration of trademarks that do not address the definition of either ‘protectable subject matter’ or ‘what constitutes a trademark’.Footnote 180 As a consequence, Members cannot refuse the registration of non-traditional trademarks that are filed by virtue of Article 6quinquies, on the mere ground that ‘such mark does not conform to their trademark definition’ because trademarks are objectively defined by Article 15.1.
Another question might arise with non-visual signs because Article 15.1 of the TRIPS Agreement entitles Members to require visual perceptibility as a condition for registration. WTO Members take entirely different attitudes to non-visual signs. Some jurisdictions require that a sign must in itself be visible, while some jurisdictions explicitly or implicitly allow registration of non-visual signs. With regard to the issue of visual perceptibility, one may question whether excluding all non-visual signs is compatible with Article 6quinquies. Essentially, this issue is whether the flexibility that is granted to Members in terms of the last sentence of Article 15.1 of the TRIPS Agreement is overridden in light of Article 6quinquies of the Paris Convention?
The answers given by commentators have been mixed. Carvalho argued that ‘the grounds provided by Article 6quinquies are qualified by the TRIPS Agreement as “other grounds”, which is different from the grounds that are mentioned in Article 15.1. The grounds in Article 15.1 may indeed derogate from Article 6quinquies because only “other grounds” that are stipulated in Article 15.1 may not.’Footnote 181 Such an explanation appears to us to be illogical. Gervais proposes a different approach: in comparing the last sentence of Article 15.1 with Article 6quinquies, a ‘telle quelle’ mark should be ‘examined on its individual merits’.Footnote 182 However, it is questionable to what extent the individual evaluation is compatible with the general exclusion of non-visual signs.Footnote 183
In the author's view, the answer has been explicitly provided by the TRIPS Agreement. Article 2 of the TRIPS Agreement explicitly provides that Members shall comply with Article 1 and Article 19 of the Paris Convention, and that nothing in this Agreement shall derogate from existing obligations that Members may have to each other under the Paris Convention.Footnote 184 The Paris Convention neither expressly prohibits nor explicitly permits the inclusion of such a registration prerequisite of visual perceptibility in national legislations.Footnote 185 Article 6quinquies obliges Members to offer protection to ‘telle quelle’ marks unless the grounds of denial expressly provided for in the said provision are satisfied. It is noteworthy that the requirement of visual perceptibility does concern the form of trademarks, and that the lack of visual perceptibility is not a permitted ground for denial under Article 6quinquies. Therefore, any limitation as regards the registrability of a non-visual sign that is predicated on its invisibility clearly is a prohibition that relates to the form of the mark.Footnote 186 A ‘telle quelle’ mark, irrespective of its visual characteristics, must be granted protection, and the absolute requirement under domestic law of visual perceptibility is contrary to the Paris Convention insofar as ‘telle quelle’ marks are concerned. Accordingly, although visual perceptibility may be required for ordinary marks, insofar as ‘telle quelle’ marks are concerned, such a requirement cannot form a hindrance to registration.Footnote 187
At present, the controversy about the scope of the ‘telle quelle’ clause has lost much of its significance with regard to international harmonization by the TRIPS Agreement, which brings about uniform principles for eligibility for registration and the protection of trademarks and states that all WTO Members are bound by the Paris Convention.Footnote 188 In this sense, Article 15.1 of the TRIPS Agreement finally puts an end to the dispute on the types of trademarks that are eligible for registration.Footnote 189
Back to the original question, the critical issue is a question of ‘carrying out a stipulation’ of the Paris Convention, so the answer is not whether domestic legislations prohibited registration of certain trademarks.Footnote 190 Article 6quinquies is a substantive treaty clause that expressly limits a country's ability to refuse a trademark. In considering whether a mark registered in the country of origin should be protected, it is a ‘judicial error’ to ask whether such a mark may be a trademark according to domestic law. Article 6quinquies imposes on all Members the obligation to accept for registration a foreign registered trademark ‘without submitting it to the usual test of a domestic mark’.Footnote 191 It is essential not to let each Member examine the character of a trademark according to its own law. The Paris Convention contains an international regulation complete in itself, to which the national law must yield. The law of the country of origin is decisive on the question of what may be used as a trademark. The opinion that a Member can promulgate rules that exclude whole classes of marks because of legal conceptions that are peculiar to domestic law is erroneous.
The proceeding legal considerations led to the conclusion that Article 6quinquies restricts Members’ discretion on permissible trademark forms in cases of applications that enjoy the protection of Article 6quinquies, and it prevents Members from denying such registration on the mere basis of the form of the trademark.Footnote 192 When a foreign trademark owner comes to another country with a registration in his home country, the foreign trademark must be granted registration although by virtue of a certain definition of marks in the country in question, such a mark would not be ordinarily registered.Footnote 193 By way of example, Article 6quinquies would require a country to register a sound if it were registered in a Member state, even though such a sound does not constitute a trademark under the receiving country's law. Members cannot refuse registration on the mere ground that ‘the applied mark does not fall into the scope of trademark protection’, ‘the applied marks are not permitted forms’, or ‘the applied marks are not visually perceptible’. However, Members remain substantially free to regulate the registration of trademarks under national law, so long as there is no interference with their form.Footnote 194
3.3 Comparison between two ways of trademark registration
There have been controversies on the inherent connections between the principle of independence and the principle of ‘telle quelle’. The initial position under Article 6 of the Paris Convention of 1883 was that the ‘telle quelle’ rule prevailed, while the principle of independence was only articulated in the Revision Conference of London in 1934.Footnote 195 Considering that a clear distinction should be drawn between the protection of ordinary trademarks and that which is afforded to ‘telle quelle’ marks, the Revision Conference of Lisbon in 1958 split the original complicated Article 6 into two separate articles. These provisions were not changed in the Stockholm Revision. Article 6 established the normal situation of independence of trademarks registration, while Article 6quinquies only applies to carefully defined circumstances. Applicants may choose either form of trademark application, depending on their own marketing strategies. Competent authorities should be clearly aware of the essential differences between registrations under Article 6 and Article 6quinquies. There are certain key concepts that need to be clarified and highlighted.
3.3.1 Different prerequisite
To register a trademark in other Members, the applicants who seek registration by virtue of Article 6 are not obliged to register the same trademark first in any other country.Footnote 196 Therefore, no action with respect to the mark in the country of origin may be required as a prerequisite for obtaining a registration of the mark in that country.Footnote 197 The benefits under Article 6quinquies can be claimed only if the mark has been duly registered in the country of origin.Footnote 198 Before filing an international application, the potential applicant must establish which country may be the country of origin for the international application in question.Footnote 199
3.3.2 Different treatment
In conjunction with the principle of national treatment, Article 6 entitles foreign applicants to benefits as nationals.Footnote 200 The applications must be treated equally regardless of the country of origin of the applicant.Footnote 201 Article 6quinquies has been described as a ‘national treatment plus’ provision.Footnote 202 Members are obliged to confer an additional right on trademark owners, one that is over and above whatever rights the other country grants to its own nationals in its domestic law.Footnote 203 The application of the ‘telle quelle’ exception will result in a disparity of treatment of foreign trademark owners and domestic applicants. Article 6quinquies aims to create the right in foreign trademark owners to register marks that domestic applicants could not register.Footnote 204 The position of the foreign applicants is superior to that of a national of the country concerned.Footnote 205
3.3.3 Different applicable law
Article 6 ‘extends the national treatment principle to an extreme’ because the trademark owner is subject exclusively to the national law of each country.Footnote 206 Members may apply only their domestic legislations when determining the conditions for trademark registration and exclude reference back to any national law of the country of origin. The validity of registration will depend only on the domestic legislation of each country concerned.Footnote 207 Registration under Article 6quinquies would be governed by both the trademark law of the protecting country and that of the applicant's country of origin. With regard to the form of trademarks, the law to be applied ought to be that of the county of origin, while the conditions for registration that are imposed in the domestic legislation would be irrelevant.Footnote 208
3.3.4 Different refusal grounds
For ordinary international applications, the TRIPS Agreement provides Members with various grounds for denying registration.Footnote 209 Signs may be refused for registration due to: non-compliance with permissible trademark forms, a lack of inherent distinctiveness or acquired distinctiveness, a lack of visual perceptibility, or other grounds that are not inconsistent with the provisions of the Paris Convention.Footnote 210 The mandatory nature of Article 6quinquies permits Members to deny registration under the ‘telle quelle’ provision only on the grounds that are specified in that provision.Footnote 211 ‘Recourse, in respect to trademark forms, cannot be made to the provisions of national law’.Footnote 212 Except for the specific grounds, a ‘telle quelle’ mark must not be refused protection. Grounds of denial that go beyond the scope of those that are specified in Article 6quinquies would stand contrary to the Paris Convention. However, Members are free to apply to trademark applications other provisions of their domestic law that do not concern the signs of which a trademark is composed.Footnote 213
4. Conclusion
The preceding legal considerations lead to the conclusion that applicants would be able to choose ways to register non-traditional trademarks, depending on which conditions for registration were more favourable to their interests and their marketing strategies. Comparatively speaking, Article 6quinquies will afford additional and exceptional rights to foreign applicants with regard to the trademark forms than Article 6. Therefore, if an applicant who wishes to register a non-traditional trademark that has not been accepted as a permissible trademark form in other WTO Member states where the registration is sought, the applicant will be more likely to succeed by invoking Article 6quinquies.
For WTO Members, two types of applications of non-traditional trademarks should be strictly distinguished and treated with care. Members reserve the right to determine the conditions for registration of non-traditional trademarks under Article 6, which means that they could decide whether to accept certain signs as trademarks, entirely depending on their domestic trademark legislations. However, it cannot be overemphasized that for the registration of non-traditional trademarks under Article 6quinqiues, WTO Members are obliged to confer an exceptional right with regard to trademark forms, which is over and above national treatment. Even if the applied trademark does not satisfy the conditions for registration under local law, Members are obliged to register the non-traditional mark ‘telle quelle’. Although Article 6quinquies permits Members to deny protection on grounds that are expressly stipulated in Sections 2 and 3, the notion that Members may not interpret the trademark definition in a manner that is different from that of their national legislation is outmoded, and the current practice of certain countries that have refused the ‘telle quelle’ registration on the sole ground concerning trademark forms, for example, that ‘the applied marks are not protectable trademark forms in its internal law’, should be discontinued.
