Territoriality of Trademark Rights

Extract

Can the registered owner of a trademark object to the use of his mark on goods on which the same trademark has been legally affixed abroad, but which have been imported into this country without his consent and against his wishes through what may be termed “irregular channels”, i.e., not through the agent, licensee or subsidiary of the trademark proprietor?

This question of apparently minor importance has lately come to the forefront of interest in professional circles. The intensification of international trade since the end of World War II, the lowering of tariffs, the creation of supra-national economic units such as EEC and EFTA, and the growing number of international firms and concerns with the consequent establishment of sales organizations abroad have brought this question in different sets of circumstances before the courts of many countries. Their decisions have been widely divergent, from country to country, and sometimes even within the same country; many of them have been attacked in textbooks and legal periodicals; their reasoning, even where the results have been accepted, has been criticized and new doctrines have been proposed. In 1967, the International Association for the Protection of Industrial Property (AIPPI), with a view to unifying trademark law, initiated an extensive study of this question, but has so far failed to arrive at a generally acceptable solution.