CONCERNING PROVISIONS ON THE
PROTECTION OF MARKS,
AND OTHER INDUSTRIAL PROPERTY RIGHTS IN SIGNS,
ON THE INTERNET
(with Explanatory Notes)
the Assembly of the Paris Union for the
Protection of Industrial Property
the General Assembly of the
World Intellectual Property Organization (WIPO)
Thirty-Sixth Series of Meetings of the
Assemblies of the Member States of WIPO
September 24 to October 3, 2001
The Joint Recommendation Concerning the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet, which includes the text of the provisions as adopted by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) at its sixth session (March 12 to 16, 2001), was adopted at a joint session of the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) at the Thirty-Sixth Series of Meetings of the Assemblies of the Member States of WIPO (September 24 - October 3, 2001).
Initiated at the first session of the SCT (July 13 to 17, 1998), the issue relating to the protection of marks on the Internet was discussed at the second session, second part of the SCT (June 7 to 11, 1999) and at the third session of the SCT (November 8 to 12, 1999). Draft provisions concerning the protection of marks on the Internet were discussed by the SCT at its fourth session (March 27 to 31, 2000), at its fifth session (September 11 to 15, 2000) and at its sixth session (March 12 to 16, 2001).
The provisions aim at providing a clear legal framework for trademark owners who wish to use their marks on the Internet and to participate in the development of electronic commerce. They are intended to facilitate the application of existing laws relating to marks, and other industrial property rights in signs, on the Internet, and to be applied in the context of:
- determining whether, under the applicable law, use of a sign on the Internet has contributed to the acquisition, maintenance or infringement of a mark or other industrial property right in the sign, or whether such use constitutes an act of unfair competition;
- enabling owners of conflicting rights in identical or similar signs to use these signs concurrently on the Internet;
- determining remedies.
The determination of the applicable law itself is not addressed by the present provisions, but left to the private international laws of individual Member States.
Further to the adoption by the WIPO Assemblies of the Joint Recommendation Concerning Provisions on the Protection of Well-known Marks, in September 1999, and of the Joint Recommendation Concerning Trademark Licenses in September 2000, this Joint Recommendation is the third achievement of the SCT in implementing WIPOs policy of finding new ways to accelerate the development of international harmonized principles. This new approach to the progressive development of international intellectual property law was implemented by WIPO pursuant to the WIPO Program and Budget for the biennium 1998-99.
This volume contains the text of the Joint Recommendation, the accompanying provisions, and explanatory notes prepared by the International Bureau.