COMMITTEE OF EXPERTS ON WELL-KNOWN MARKS

I. INTRODUCTION

1. Convened by the Director General of the World Intellectual Property Organization as part of the 1996-97 program of WIPO (document AB/XXVI/2, Item 03(5)), the Committee of Experts on Well-Known Marks (hereinafter referred to as "the Committee of Experts") held its third session in Geneva from October 20 to 23, 1997.

2. The following States members of WIPO and/or the Paris Union were represented at the session: Armenia, Austria, Belarus, Belgium, Brazil, Bulgaria, Canada, Cameroon, China, Costa Rica, Denmark, Ecuador, Egypt, Eritrea, Estonia, Finland, France, Germany, Greece, Guatemala, Hungary, Indonesia, Israel, Italy, Japan, Jordan, Kenya, Kyrgyzstan, Latvia, Lithuania, Luxembourg, Mauritius, Morocco, Netherlands, Norway, Peru, Philippines, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Saudi Arabia, Singapore, Slovakia, Slovenia, South Africa, Spain, Sudan, Switzerland, Thailand, Turkey, Ukraine, Uruguay, United Kingdom, United Republic of Tanzania, United States of America, Venezuela (58). The European Communities were also represented.

3. A representative of the African Regional Industrial Property Organization (ARIPO) took part in the session in an observer capacity.

4. Representatives of the following non-governmental organizations took part in the session in an observer capacity: Arab Society for the Protection of Industrial Property (ASPIP), Asian Patent Attorneys Association (APAA), European Association of Industries of Branded Products (AIM), European Communities Trade Mark Association (ECTA), European Federation of Agents of Industry in Industrial Property (FEMIPI), International Association for the Protection of Industrial Property (AIPPI), International Chamber of Commerce (ICC), International Federation of Industrial Property Attorneys (FICPI), International League of Competition Law (LIDC), International Trademark Association (INTA), Japan Intellectual Property Association (JIPA), Japan Patent Attorneys Association (JPAA), Japan Trademark Association (JTA), Licensing Executives Society (LES), Max-Planck-Institute for Foreign and International Patent, Copyright and Competition Law (MPI), Union of European Practitioners in Industrial Property (UEPIP), Union of Industrial and Employers' Confederations of Europe (UNICE) (17).

5. The list of participants appears in the Annex to this report.

6. Mr. François Curchod, Deputy Director General, opened the session and welcomed the participants.

7. The Committee of Experts unanimously elected Mr. Alan M. Troicuk (Canada) as Chairman and Ms. Constanja Moraru (Romania) and Ms. Flor María Arvelo Yanez (Venezuela) as Vice-Chairmen. Mr. P. Maugué (WIPO) acted as Secretary to the Committee of Experts.

8. Discussions were based on the following document drawn up by the International Bureau of WIPO: "Protection of Well-Known Marks" (document WKM/CE/III/2) (hereinafter referred to as the "memorandum of the International Bureau"). The provisions proposed in that document are hereinafter referred to as the "proposed provisions."

9. The International Bureau noted the interventions made and recorded them on tape. This report summarizes the discussions without reflecting all the observations made.

10. The Delegation of Austria declared that it strongly supported the idea of establishing an international instrument to increase the protection of well-known marks and, therefore, appreciated very much the efforts of WIPO to study and determine the criteria for the definition of well-known trademarks under Article 6bis of the Paris Convention and Article 16 of the TRIPS Agreement. As far as the substance of the Memorandum of the International Bureau was concerned, the Delegation expressed its reservation in respect of Article 4(2), dealing with the ex officio obligation to refuse applications which may be in conflict with the well-known mark if there is no opposition system, as well as in respect of the concept of "business identifiers."

11. The Delegation of Kenya declared that its country placed great importance on the role of intellectual property in the industrial and technological development. For that reason, Kenya had embarked, since 1989, on an important task of amending intellectual property legislation in regard to provide for effective protection for intellectual property rights, and more recently, with a view of making such legislation conform to the provisions of the TRIPS Agreement. The Delegation stated that Kenya had great interest in the deliberations of that Committee because, at that point in time, arrangements had been put in place and a committee has been set up and charged with the important task of amending the Trademark Act, Chapter 506, with a view of making the Act fully conform to the provisions of the Trademark Law Treaty and the TRIPS Agreement. The Delegation noted that with the current technological development in the field of communications, satellite television and air travel, trademarks which until recently were known only in a given geographical area are now known almost throughout the world. Recently, the Kenya Industrial Property Office has heard an increasing number of trademark opposition cases arising from some local applicants trying to register, in Kenya, trademarks that were well-known in the developed world. For that reason, the Delegation was particularly interested in Article 3 of the draft Provisions which attempts to set out the criteria that should be used in determining whether a trademark is well known or not. Furthermore, the Delegation said that, as part of Kenya's Industrial Property Awareness Outreach Programme, the Kenya Intellectual Property Office is greatly encouraging Kenyans who wished to register and protect their trademarks to design and select their own distinctive marks without trying to copy those of others. The Office has continued to inform the Kenyan public that, following the coming into force of the Trade Marks Amendment Act on March 1, 1995, it is a criminal offence to either forge another person's trademark, to import goods bearing forged trademarks or even to aide and abet persons who forge other persons trade or service marks. In that respect, the Delegation referred to a provision of the Trade Marks (Amendment) Act, 1994 giving power to the court, upon conviction of any person for an offense relating to forgery of a trademark or service mark, in addition to any sentence passed, to declare any goods in respect of or by means of which the offense was committed to be forfeited to the Government, unless the owner of the goods or any person acting on his behalf, or any other person interested in the goods shows cause to the contrary.

12. The Delegation of Japan stated that, with the globalization of economic activities, the adequate protection of trademarks was very important in order to maintain and promote the orderly trading of goods. In particular, the international strengthening of the protection of well-known marks contributed not only to the profits of the owners and users of well-known marks, but was also extremely important in ensuring the stable development of international trade. Therefore, that Delegation very much welcomed continuing discussions on this theme, and was pleased to be participating actively in the present Committee of Experts. Regarding the memorandum prepared by the International Bureau, the Delegation stated that, although there were some points that needed further discussion, it appreciated the efforts of the International Bureau to have the memorandum reflect so well the results of the meeting. Referring to some of the Japanese Patent Office's (JPO) ideas concerning the protection of well-known marks for the future, the Delegation said that it believed that it was most important that adequate protection of well-known marks was based on the Paris Convention for the Protection of Industrial Property and following the principle of territoriality. Furthermore, registration of well-known marks by the third parties for unfair purposes was not allowed in Japan, even if those marks were well-known only in specified countries outside of Japan. This should be kept so, especially when considering the recent and the future developments in the globalization of economic activity, and the appearance of global networks such as the Internet. In that regard, the Delegation said that this new approach of promoting further protection of well-known marks in the global era and going beyond traditional protection should be considered under the auspices of WIPO. From this point of view, the JPO considered the establishment of well-known marks databases to be an effective step. The Delegation announced that the Japanese Patent Office was going to study the feasibility of that idea, thereby taking into account the Internet aspects. In that context, the Delegation said that promoting such a database, not only from Japan but, through WIPO as an intermediary from all possible countries, would result in an efficient database system that would be beneficial to users and offices. Further, for the establishment of that database, the Delegation believed that it would be practical not to determine international standards for well-known marks, but to collect data in accordance with each country's condition.

that any time limit applicable under paragraphs (4) and (5), cannot be applied if a mark or other business identifier was registered, but never used. Referring to the evolution which the draft text had already undergone, the Delegation said it hoped that all the members of the Committee of Experts would concentrate their efforts to achieve a successful solution for the mutual benefit of all participants. Highlighting the Korean Intellectual Property Office's efforts to enhance the protection of well-known marks, the Delegation referred to the Korean Trademark Act, under which the practice of prohibiting the registration of any trademark application by an unauthorized or third party for a mark which was well-known in the Republic of Korea was firmly rooted in law. In this connection, the Korean Intellectual Property Office had also taken measures such as consistently updating its Foreign Trademark Directory, which was used as a reference during examinations, and was publishing its new Trademark Application Reporter. Not only did those publications promote a more rapid and appropriate protection of well-known marks, but they also gave owners of well-known marks a chance to monitor any trademark application which was identical or similar to a well-known mark. In addition to such a long term approach, the Korean Intellectual Property Office recently amended the Korean Trademark Act in order to include additional provisions that would prohibit the registration of a mark that is identical or similar to a foreign mark if the application was made for the purposes of unfair competition. The Delegation of the Republic of Korea believed that this new provision would contribute to the enhancement of the protection of well-known marks in the Republic of Korea.

14. The Delegation of the United States of America stated that protecting well-known marks was a very important and serious task and, as advances in technology and telecommunications, such as the Internet, shrank the world into a truly global market place, such protection became more and more important and necessary for the owners of well-known marks. The Delegation had some comments on some parts of the Memorandum of the International Bureau which would be put forward in the further discussion. For instance, as regards the list of criteria for determining whether a mark is well-known in Article 3, some of the factors did not seem to be relevant for determining whether or not a mark is well-known. In respect of those matters, the Delegation was very interested to hear the opinion of the private circles, since they were the ones who would have to protect famous marks and to pay for the prosecution and the litigation in protecting the famous marks. They would also have the final say in whether or not these factors are useful and helpful in protecting their well-known marks.

15. The Delegation of the Russian Federation noted the progress and significant work which was carried out by the International Bureau aimed at the effective protection of well-known marks. The positive results of deeply studying the criteria, conditions and scope of protection in respect of well-known marks in different countries were visible now. Furthermore, those results appeared to be of practical relevance. In this connection, the Delegation informed the meeting that the Russian Federation conjectured to amend its legislation in respect of well-known marks. It believed that the special article would be adopted in the new Russian Trade Mark Law.

16. The Delegation of Canada stated that it continued to support the work of the Committee of Experts to improve the protection of well-known marks. The Delegation said that, clearly, businesses needed a secure international legal framework that ensured adequate and effective protection for the substantial investments that were necessary to establish and maintain a mark that is well known in one or more countries. At the same time, however, it considered it important to guard against providing an excessive level of protection for well-known marks. In particular, it had to be ensured that the rights that are accorded to internationally well-known marks did not unjustifiably interfere with the selection and use of trademarks at the national level. Businesses at the national level needed reliable, fast and cost-effective means to select and protect trademarks. Where they had acted in good faith and had carried out appropriate searches to avoid interfering with the rights of others, businesses needed to know that their investment in a mark would receive secure and equitable protection. Although the Delegation of Canada supported the main thrust of the text prepared by the International Bureau, it felt that it went too far in some respects and that it would unjustifiably interfere with the selection and use of trademarks at the national level. For example, although the Delegation agreed that well-known marks should be protected against conflicting uses in respect of dissimilar goods and services, it felt that such protection should only be required if the well-known mark had been registered in the territory in question. Without registration, it might be very difficult for third parties who are in the process of selecting a trademark at the national level, to become aware of a potential conflict with a mark that is well-known for dissimilar goods or services. The Delegation of Canada also considered that the current text was too ambitious in its coverage of business identifiers. In many countries, such as Canada, the office responsible for recording or registering business identifiers was distinct from the office responsible for registering trademarks. In Canada, the situation is even more complex since offices for the recordal or registration of business identifiers existed not only at the federal level but also in each of the provinces. In the view of that Delegation, it was unrealistic in the context of that Committee of Expert's work to seek to impose any obligations on offices that are responsible for the recordal or registration of business identifiers. Nevertheless, the Delegation of Canada considered it important to protect the owners of well-known marks against the use of conflicting business identifiers and, accordingly, it supported the provisions concerning the prohibition of use of conflicting business identifiers contained in Article 4(5) of the proposed text.

17. The Delegation of Switzerland said that it had always given its support to any work designed to improve the protection of trademark owners at the international level. It was pleased that the new draft provisions no longer placed Contracting Parties under the obligation to refuse the registration of a mark ex officio when it is liable to conflict with a well-known mark, pointing out that that was consistent with Swiss law. It did think however that Article 4(3)(a) would force an opening up of the opposition procedure to the owners of well-known marks in the broad sense of the Article, which in turn might present the Delegation with certain problems, but not actually jeopardize its general support for the draft provisions. Fear had moreover been expressed that the extensive protection given to well-known marks might call into question the principle enshrined in Swiss law of rights being acquired by registration. Finally, the fact that the Contracting Parties might, in the course of opposition proceedings, have to rule on a dispute involving a well-known mark was another potential source of problems: in Swiss law, the opposition procedure was designed to be a simple and rapid procedure, and there was reason to wonder whether a Government authority, which unlike a judge did not have access to every possible form of proof, would be in a position to assemble the facts with which to rule on every case of conflict. The Delegation concluded by pointing out that, compared with the previous draft provisions, the lengthening of the list of criteria determining whether a mark was well known was better suited to the complex nature of that type of mark.

18. The Delegation of Israel expressed its support for the Committee's work towards the enhancement and harmonization of protection for internationally well-known marks. Nevertheless, it believed that those rights must also take into account the rights of entities operating at the national level to act with an adequate degree of freedom and commercial certainty in their good faith selection, development, use and/or registration of new marks and business identifiers and in a manner which does not unduly inhibit this ability to expand their activities into future markets. Additionally, although it supported the use of the term "business identifier," it had some concerns with regard to the phrasing of its definition.

19. The Delegation of Venezuela stressed the importance of the draft provisions for the international protection of well-known marks. Since 1992, when Decision 344 of the Commission of the Cartagena Agreement was adopted, the Andean Community provided for effective protection of well-known marks. Article 84 of this Decision provides four basic criteria in order to determine well-known marks. The Delegation considered Article 3 of the draft provisions to be the most relevant for the discussions, as that Article provides us with the criteria to determine whether or not a mark is well-known.

20. The Delegation of Spain mentioned that the major problem they have concerning the draft provisions accepting the protection of a well-known mark which has not been registered for dissimilar goods and services. With respect to the other provisions, the Delegation did not find any major problems, as the Spanish Legislation already provides, with an ex officio examination, calls for opposition proceedings where appropriate, and protects not only trademarks but also business identifiers (trade names and establishment signs).

21. The Delegation of Belgium was pleased with the work done by WIPO on improving the protection of well-known marks, and mentioned the high quality of the document submitted to the Committee of Experts. In the interest of international trade and the owners of marks, the Delegation considered it extremely important to establish a clear definition of the well-known mark, and declared itself favorable on the whole to the draft provisions drawn up by the International Bureau. The Delegation mentioned that it was particularly interested in the discussion of the provisions of Article 3 and the criteria adopted to determine whether a mark was well known, and did not want those criteria to be either too stringent or too numerous. It concluded by expressing the wish that the current work might be completed successfully.

22. The Delegation of Romania was pleased that the International Bureau was going ahead with its work on the improvement of the protection of well-known marks. It mentioned that Romania's new Trademark Law would probably enter into force in the very near future, and that the law on its accession to the Trademark Law Treaty was due to be adopted shortly. The Delegation added that the new Trademark Law contained provisions strengthening the protection of well-known marks, and that those provisions were compatible with Article 16 of the TRIPS Agreement.

23. The Delegation of Hungary informed the Committee of Experts that Hungary had a new law on the protection of trademarks and geographical indications. These new law entered into force on July 1, 1997, and was considered to be conform with the relevant legal standards of the European Union. The law provided protection to well-known marks and introduced the category of marks having a reputation in the country. As far as Hungary was concerned, the Delegation thought that there was a constant need in the internationalization and the harmonization in this particular field. To that end, it considered the Memorandum of the International Bureau to be an excellent basis for that work.

24. The Delegation of the Republic of South Africa declared that the draft provisions had attempted, in a very creative manner, to accommodate the views expressed by delegates at the second meeting. The Republic of South Africa was pleased to participate in the third session of the Committee of Experts. The applicable law in its country was the Trade Marks Act of 1993, which became law in the middle of 1995, and which provided for the protection of well-known marks substantially as is envisaged by the document which was before the Committee. That meant that protection was given, even where the mark was not used nor registered in South Africa. On September 19, 1997, a further amendment was added to that Act, which gives some guidance, substantially along the lines envisaged by the document before the Committee, as to how the question of whether a mark was well-known should be determined. That determination should be made with regard to the relevant sector of the public, and not to the public as a whole. The Law of the Republic of South Africa did not, at the present stage, provide protection for a well-known mark in relation to dissimilar goods, where that mark was not registered. As regards that point, the Delegation associated itself with the reservations expressed by the Delegation of Canada, but it kept an open mind, and looked forward to the general discussions and, in particular, to the deliberation on that important revision regarding the protection in relation to dissimilar goods and/or services.

25. The Delegation of the Philippines announced that the new Intellectual Property Code was signed by the President on June 6, 1997, and would take effect on January 1, 1998. The competent authorities were now in the process of drafting the implementing rules and regulations. The intellectual property code provided for protection for internationally well-known marks and the Delegation was particularly interested in Article 3 of the present draft of the International Bureau. Furthermore, the Delegation expressed its interest for the discussions in respect of dissimilar goods and unregistered marks which were claimed to be internationally well-known.

26. The Delegation of Cameroon stated that the present meeting was particularly important to the Member States of the African Intellectual Property Organization (OAPI) as a whole, as they were at that very moment in the process of working on the revision of the Organization's basic text, which meant that the conclusions of all the current work could be taken into account in the final text that would be drawn up by the 14 OAPI Member States.

27. The Delegation of Uruguay considered the draft provisions of great importance. Since 1993, Uruguay has undertaken a battle against trademark piracy, including effective legal procedures to solve conflicts against well-known marks. In the present context of regional economic integration, the lack of uniform criteria to determine when a mark is well-known created certain conflicts. The Delegation believed that the draft provisions will be a solution to the international protection of well-known marks.

28. The Delegation of Portugal said that, generally speaking, it was in favor of the contents of the working document. It mentioned moreover that Portugal was in the process of revising its legislation, and intended to abandon the requirement of the filing of an application for registration as a condition of claiming that a mark was well known. It had therefore abandoned the proposal put forward at the previous session.

29. The Delegation of Peru agreed with the Delegation of Venezuela on the importance of this subject for the Andean Community. It said that the Andean Community was seeking a uniform interpretation and harmonization of the provisions on well-known marks contained within Decision 344. In the opinion of that Delegation, Decision 344 provided wide protection and, probably, the proposed provisions would be given consideration in the revision of Decision 344 that will begin in November 1997. The Delegation also stated that Peru adopted a law in 1996, that sought to implement the Andean Decision and, in part, contained provisions which corresponded to Article 4 of the draft provisions.

30. The Delegation of the United Republic of Tanzania declared that participation in the Committee of Experts was important for its country, since its Government had already formed a task force for amending most of the Intellectual Property Laws of its country in order to bring them in compliance with the TRIPS Agreement. For this purpose, its Government had requested technical and other assistance from WIPO and a WIPO expert mission was expected to be sent to Dar es Salaam for discussion with officials dealing with intellectual property matters. Well-known trademarks issue would be one of the subjects of discussions. Since the outcome of the deliberations of the present meeting would have a major bearing in the amendment of the Trade and Service Marks Act, 1986 of the United Republic of Tanzania, the Delegation stated that it would follow the discussion with a keen interest and contribute constructively to some of the issues such as the protection of well-known marks for dissimilar goods.

31. The Delegation of Indonesia said that it considered the present meeting to be very important. Indonesia had already revised its Trade Mark Law of 1992 by enacting the Trade Marks Law number 14 of 1997, which entered into force on May 7, 1997, and which regulated, inter alia, the protection of well-known marks. Therefore, the Delegation was in particularly interested in the discussion of Articles 3 and 4 of the draft provisions.

32. The Delegation of Australia said that the work of the Committee of Experts was a very important part of WIPO's role in harmonizing and strengthening the international intellectual property system. The form in which the study on well-known marks was to be adopted should be considered once sufficient agreement had been reached on that question. The Delegation recalled that the Trade Mark Law Treaty was limited to matters of a formal or administrative nature and did not include provisions on substantive law. The Delegation declared that, for this reason, it did not believe that it was appropriate to adopt the provisions in the form of a protocol to the Trademark Law Treaty.

33. The Delegation of the European Communities considered that, in a general sense, the Memorandum drawn up by the International Bureau represented a move in the right direction, and that it reflected some of the input from the second session. The European Community agreed with paragraph 3 of the Memorandum, given that, at the present stage, it was somewhat premature to discuss the legal form that the conclusions of the work in progress should be given. On the matter of substance, the Delegation was very much in favor of strengthening the protection of well-known marks. Generally speaking, it would be helpful if the provisions that were eventually approved could be made to conform as closely as possible to texts and concepts already in existence, among other things to make life easier for business and industry, and to facilitate their understanding of the legal environment in which they had to work. In that respect, therefore, any proliferation and consequent dilution of concepts and procedures should be avoided. As for the reservations that the Delegation had on a certain number of points, they would be explained in the course of the article-by-article discussion.

34. The Representative of the African Regional Industrial Property Organization (ARIPO) said that his Organization was represented in the meetings of the present Committee of Experts for the first time. There were two main reasons for this. The first reason was that the Administrative Council of ARIPO adopted a Protocol on marks, called the Banjul Protocol on Marks, in November 1993. The Protocol entered into force on March 6, 1997, for three out of the 14 member States of ARIPO, namely Malawi, Swaziland and Zimbabwe. The objective of the Banjul Protocol was to enable the ARIPO Office to receive trademark and service mark applications and to register marks on behalf of member States. ARIPO's participation in the meetings of the Committee of Experts was therefore to enable it to better serve its member States on questions regarding well-known marks. Most importantly, such participation would also enable the ARIPO Secretariat to study the question how the Banjul Protocol could be amended to conform to any international treaty or protocol on well-known marks in the event that these meetings resulted in an international agreement or protocol. The Representative recalled the inclusion, in the TRIPS Agreement, of provisions on the protection of well-known marks. Since most ARIPO member States were also bound by the TRIPS Agreement, those States were obliged to incorporate into their national laws the TRIPS provisions protecting well-known marks, by either the year 2000 or the year 2005. Therefore the second reason for ARIPO's participation in the Committee of Experts was to prepare itself for the role it was expected to play as a regional organization in strengthening the protection of well-known marks in its member States through the Banjul Protocol, taking into account the TRIPS Agreement and whatever agreement would come out of the present negotiations.

35. The Representative of the Japan Patent Attorneys Association (JPAA) expressed its satisfaction with regard to the draft provisions, which clarified several issues discussed at the previous meeting of Committee of Experts, and basically agree to the revised draft provisions. However, he felt that further review of some wording used in the draft provisions might be needed. The Trademark Law of Japan provided protection for well-known marks in the same or broader scope than the draft provisions. Therefore, the contents of the draft provisions seemed to be accepted. However, the Trademark Law of Japan also provided protection for third party's trademark which had been filed, or used, when the mark which was sought to be protected was not well known yet, even though the third party's trademark was identical or similar to the well-known mark. Thus, the Representative expressed his hope that this situation, which was not mentioned in the draft provisions, would be clarified at that meeting, especially as regards the legal position of a third party which had already filed a trademark application before that mark had become well known. Additionally, the Representative asked for further discussions about the necessity of exchanging information, use and disclosure thereof for the well-known marks. Finally, he thought that it was advisable to adopt the conclusion of the draft provisions in a legally binding form. However, since the Representative believed that each country represented in the Committee of Experts could achieve the aim of the protection of the well-known marks in accordance with the contents of the draft provisions in accordance with its own policy, he did not, at present, persist on the form of the adoption of the draft provisions.

36. The Representative of the Japan Intellectual Property Association (JIPA) endorsed the Memorandum of the International Bureau. He pointed out that JIPA represents the views of the users of trademarks and other business identifiers, such as trade names. Furthermore, the Representative of JIPA stressed that he strongly support a study of the feasibility of setting up a voluntary international information network for the exchange of information among countries concerning well-known marks. He recognized that some countries may have difficulty organizing such a network because the Office, who is entrusted by a State with the registration of marks or other business identifiers, is not entitled to determine whether a mark is to be protected as a well-known mark. To overcome the difficulties, JIPA suggested that a non-governmental organization make some arrangements for exchange of information about well-known marks. Actually, the Japanese National Group of AIPPI was in the process of publishing The Journal of Japanese Well-Known Marks, forthcoming on March 1998. With respect to the form of the draft Provision, JIPA was of the opinion that the Committee should, after the completion of the study, adopt the provisions in the form of a recommendation. When a majority of the WIPO member States have ratified the TLT, a Protocol to the TLT would be desirable once sufficient agreement has been reached on such a conclusion.

37. The Representative of the International Chamber of Commerce said that it fully supported the efforts made by WIPO for the implementation of the protection of well-known marks, namely because a great part of its members were owners of well-known marks. In general terms, he fully supported the new draft of the Memorandum. Regarding Article 2(2), Article 3 and Article 4, the Representative reserved his position and comments until further discussions.

38. The Representative of the International Trademark Association (INTA) declared that his organization represented the owners of well-known marks around the world. He stated that, in his opinion, it was very important to look at the legislative history of the Paris Convention itself and, more particularly, at Article 6bis of that Convention. In that context, he referred to pages 128 and 129 of the treatise Famous and Well-Known Marks, where the legislative history of that provision-more particularly the Washington Conference of 1911 and the Hague Conference of 1925-was elaborately discussed. Those references showed that the amendments to the Paris Convention were intended to deal with the protection of well-known marks which were not registered. That was the outset and the philosophy of Article 6bis in those years. Quoting from page 19 of the said book, the Representative stated that "the principles of equity were equally extended to circumstances where a mark is neither registered nor used but had acquired a well known reputation in the local jurisdiction." That situation concerned the so-called reputation without use cases. Consequently Article 6bis was ear-marked to cover such classic "reputation without use" scenarios. Considering the issue of requiring registration in relation to non-competing goods, the Representative of INTA referred to WIPO document WKM/CE/I/2, where the following is set out: "National Trademark Offices are often confronted with the problem that so-called trade mark pirates apply for the registration of marks ahead in time of the true owners." The Representative further cited from Famous and Well-Known Marks "the reason is that brand owning companies who own such well-known trade marks frequently find that they have not yet been in a position to expand their business activities under those marks, nor have they obtained registrations for their marks in all jurisdictions." The Representative pointed out that even the most famous marks were not used everywhere and it was not possible to register and maintain trademark registrations in all international classes in all jurisdictions. He considered that to be a very important aspect. Speaking on behalf of the owners of well-known marks who were in the trenches each day and who had to battle trademark pirates around the world, he said that it might even be more important not to require registration in classes of non-competing goods than it was in those classes that were directly relevant. It was just practically inconceivable to register in all classes around the world. By way of example, the Representative referred to a case where the MARS® trademark was being used in relation to a condom-and, for obvious reasons, there was no registration to cover condoms in the country in question. However, that mark was still protected on the basis of unfair competition. The Representative concluded in stating that he considered it to be very important to keep in mind the legislative history of the Paris Convention and, looking at the realities of what well-known mark owners faced around the world, he believed that the possible considerations and fears of monopoly-phobia would recede in the light of those realities.

39. The Representative of the International League for Competition Law (LIDC) referred to its earlier remarks made during the general discussions in November 1995 and October 1996, and said that, without prejudice to the article-by-article discussion, it subscribed in a general sense to the new draft, which was up to its expectations. In support of the statement made by the Delegation of the European Community, it mentioned that it also considered it helpful, indeed desirable, to retain some unity of text, expression and formulation between the provisions under consideration and those of the Paris Convention on the one hand and the TRIPS Agreement on the other. It added that it also gave its support to the statement made by the Representative of INTA.

40. The Representative of the International Association for the Protection of Industrial Property (AIPPI) reiterated the interest and involvement of his organization in protection of well-known marks. He considered the Memorandum of the International Bureau to be well-formulated, and AIPPI support the majority of its provisions. As regards the question of registration for non-similar goods, the Representative stated that, asking for registration of a mark for a broad list of goods in order to give protection for non-similar goods would, in practice, mean not to give protection to non-similar goods at all. Therefore, a registration requirement would have concern a "minimum registration" for a "minimum list of goods and services," and then the question would arise whether it made sense to ask for this additional requirement. Cases in which a well-known mark was not registered at all were rare, but if they happened, the mark had to be protected in accordance with Article 6bis of the Paris Convention.

41. The Representative of the International Federation of Industrial Property Attorneys (FICPI) said that it gave its support to WIPO's efforts in connection with the protection of well-known marks, and that in a general sense it accepted the proposed texts, but reserved the right to make some comments in the course of the article-by-article discussion.

42. The Representative of the Max-Planck-Institute for Foreign and International Patent, Copyright and Competition Law (MPI) asked the International Bureau whether it could state its position as regards the relationship between Article 6bis and Article 10bis of the Paris Convention which regulated protection against unfair competition. The Representative said that it was clear that also Article 10bis of the Paris Convention dealt with cases of use of registered and unregistered marks where confusion might be caused. In that respect, she referred to the WIPO Model Provisions on Unfair Competition which set out that cases may fall under Article 10bis of the Paris Convention, in which confusion was caused by the use of a mark or by the registration of a mark which had not been registered in a country. The Representative said that it seemed to be clear that there were some cases where it was necessary to apply Article 10bis because the conditions of Article 6bis were not fulfilled. By way of example, the Representative referred to a case in which for a mark is sought which had not been registered, or was registered in bad faith by somebody else. The Representative considered the latter to be a clear case of unfair competition which might come probably under Article 10bis of the Paris Convention. The reason why the Representative considered that question to be of importance was that the considerations of the Committee of Experts concerned the criteria for a mark to be regarded as well-known and the extent to which the registration of a mark could be required in order to give that mark protection for dissimilar goods and/or services. However, if Article 10bis was applicable to cases of protection of well-known marks, the present discussions would probably lose some of their importance, even if the Committee would agree on issues such as the requirement of registration of a trademark in order to obtain protection for dissimilar goods and/or services, or the criteria for protection of well-known marks under Article 6bis. This would mean that, even if there were a certain level of protection laid down in the present negotiations as far as Article 6bis was concerned, there might still be the chance that protection can be obtained under Article 10bis.

progress made so far. He supported the principles and criteria, particularly in Article 3, that had been proposed, with certain modifications, which would considerably strengthen the protection of well-known marks.

Draft Article 1: Definitions

44. Item (i). In response to a question raised by one delegation, the International Bureau stated that no reference was made to business identifiers in this item because it was intended that the term "Party" should also cover intergovernmental organizations, which did not maintain offices for the registration of business identifiers.

45. Item (ii). One delegation suggested to replace the words "marks or other business identifiers" by "marks and/or other business identifiers." It was also indicated by the International Bureau that, in the French text, the words "Partie contractante" should be replaced by "Partie." Furthermore, it was noted that item (ii) might have to be reviewed depending on the outcome of the discussion on those provisions of Article 4 which referred to Offices.

46. Items (ii) and (iv). It was agreed that the wording of those two items should be amended by deleting the words "a mark" in item (iv) and, consequently, the word "other" in item (ii). It was noted that corresponding amendments would have to be made in Article 4.

47. Item (iii). This item was approved as proposed.

48. Item (iv). Some delegations and representatives of observer organizations proposed to broaden the definition of "business identifier." To that effect, the representative of an observer organization suggested a definition along the following lines: any sign intended to identify a business, such as a trade name, or a business symbol, emblem or logo.

49. One delegation suggested to include trade dress in the definition of business identifier.

50. Two delegations said that domain names should also be mentioned in the definition, provided that they were used as business identifiers. It was noted that, should the definition of business identifier cover domain names, the draft provisions would have to be carefully checked because some of them could not, as presently drafted, apply to domain names.

Draft Article 2: Conditions of Protection

51. Paragraph (1). The majority of the delegations and representatives of observer organizations that expressed their views supported that provision. However, the Delegations of Canada, Egypt, Jordan, the Philippines, South Africa and Spain said that registration of well-known marks should be allowed to be required as regards protection with respect to dissimilar goods and/or services.

52. Paragraph (2). As a conclusion of the discussion on that paragraph, it was agreed that the International Bureau would redraft it along the following lines: "For the purposes of determining whether a mark is to be protected as a well-known mark, it may not be required that the mark be well known in any territory other than the territory in which it is to be protected as a well-known mark or that it be well known by the public at large, but it shall suffice that the mark be well known by the relevant sector of the public in the territory in which it is to be protected as a well-known mark."

53. It was noted that the relevant sector of the public might, in certain cases, be the public at large, for example, with respect to certain types of consumer goods.

54. Paragraph (3). The International Bureau indicated that the reference to Article 2(ii) should be replaced by a reference to paragraph (2).

55. It was suggested, with reference to item (i), that one should speak of users of services, and not of consumers of services, while another suggestion was made to the effect that the word "customers" should be used with the word "consumer" in a parallel manner, since the customer of a given good was not necessarily the user, i.e., the consumer of that good.

56. It was suggested that item (ii) should be divided into two items, one dealing with the channels of distribution and the other with the business circles.

57. The International Bureau was invited to take those suggestions into account when redrafting paragraph (3).

Draft Article 3: Criteria for Determining Whether a Mark Is Well Known

58. General. A large number of delegations and representatives of observer organizations stated that the scope of the introductory words of Article 3 was too broad. The owner of a well-known mark should be free to invoke, at his own choice, one or several of the criteria listed in that Article, in order to show that the mark was well known. It was said by those delegations and representatives of observer organizations that the effect of the list of criteria contained in Article 3 should not be that an Office or a court could require compliance with any or all of those requirements as a condition for granting protection to a well-known mark.

59. Other delegations were of the view that an Office or a court should be free to use any of the criteria appearing on the list.

60. After some discussions, it was agreed that Article 3 should contain two introductory provisions. The first would set out that, for the purposes of determining whether a mark was well known, all surrounding circumstances from which it may be inferred that the mark was well known should be taken into account. The second would stipulate that circumstances which might be relevant in certain cases could include, in particular, those referred to in items (i) to (xii) of the draft provisions, subject to any changes to be made to those items as a result of the discussion. In that context, it was noted that the criteria listed in that Article were only of an illustrative nature and that the relevance of each criterion depended on the context of the factual situation under consideration. It was also pointed out that the non-fulfillment of any of those criteria should in itself not lead to the conclusion that a given mark was not well known, and the International Bureau was invited to consider whether that should be said in the notes or in the text itself.

61. Item (i). This item was approved as proposed, subject to the suggestion of the representative of one observer organization to divide item (i) into two separate items, one dealing with the duration, extent and geographical area of any use of the mark, and the other with the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applied.

62. Items (ii) and (iii). It was agreed that those items should be deleted.

63. Item (iv). It was agreed that the words "quality-image acquired by the mark" should be replaced by the words "reputation acquired by the mark."

64. Items (v) to (xii). The International Bureau took note of many suggestions to regroup two or more of those items. In particular, such suggestions concerned items (v), (vii) and (viii), and items (x) and (xi).

65. The representative of an observer organization suggested that, whenever any of those items referred to a factual situation in the world, the local existence of those circumstances could also be relevant. Therefore, the criteria should read, where appropriate, "locally or in the world."

66. It was noted that, where the number of registrations obtained worldwide was relevant, those registrations would not necessarily have to be in the name of the same person since in many cases a mark was owned in different countries by several companies belonging to the same group.

67. The representative of an observer organization suggested that, instead of the criteria in items (v) to (viii), it might be sufficient to introduce a criterion referring to the extent to which a mark was used and protected throughout the world.

68. As regards use of marks on the Internet, it was agreed that such use was covered by the term "use" contained in item (i). It was therefore agreed that a separate item covering use of a mark on the Internet was not necessary and that such use could be dealt with in the notes.

69. Concerning the relationship between items (x) and (xi), it was pointed out that the former item represented a broader concept, since it covered also opposition procedures, whereas the latter item primarily seemed to concern court decisions.

70. In conclusion, the International Bureau was invited to redraft items (i) to (xii) on the basis of the suggestions and observations made during the discussions.

Draft Article 4: Contents of Protection

71. General. The International Bureau declared that, in particular in view of the envisaged broadening of the definition of business identifiers, it would consider the possibility of separating, in the next draft, the provisions dealing with protection of well-known marks against marks and the provisions dealing with protection of well-known marks against business identifiers.

72. Paragraph (1)(a). In response to a remark made by one delegation, it was pointed out that Parties would not be required to protect a well-known mark before it became well known in their territory.

73. The Delegation of the Republic of South Africa pointed out that, because of the principle that new laws could not have retroactive effect to the extent that they undermined existing or vested rights, well-known marks were protected in its country from the date on which they became well known in that country or from the date on which the law recognized protection of well-known marks in general, whichever was the later date. In the Republic of South Africa, the date on which legislation for the protection of well-known marks came into force was August 31, 1997. Consequently, that was the earliest date from which a well-known mark would be protected under existing legislation.

74. The delegation of Canada suggested to amend the second sentence along the following lines: "Parties shall not be required to consider a mark or business identifier to be in conflict with a well-known mark if the mark or business identifier was used or registered, or an application for its registration was filed, in their territory before the well-known mark became well known in their territory." Subject to the inclusion of the words "in good faith" after the words "in their territory," proposed by the International Bureau, the suggestion of the Delegation of Canada was supported by several delegations and representatives of observer organizations.

75. Paragraphs (1)(b) and (c). These subparagraphs were the subject of a long exchange of views. In particular, the words "liable to create confusion" were considered as irrelevant where applied to "reproduction." The representative of an observer organization even considered that those words were irrelevant in respect of "imitation," since imitation, by itself, was liable to create confusion.

76. It was generally felt that subparagraph (b) should deal with the protection provided under Article 6bis of the Paris Convention for the Protection of Industrial Property, while subparagraph (c) should deal with the extended protection under Article 16.3 of the TRIPS Agreement.

77. The representative of an observer organization, supported by several delegations and representatives of observer organizations, suggested that subparagraph (c) should also apply in cases of identical or similar goods or services, because a risk of dilution could exist also in such cases. It was agreed to take into account that suggestion in the next draft.

78. Several delegations were in favor of allowing to require that the well-known mark, in order to benefit from the expanded protection provided for in subparagraph (c), be registered, it being understood that such registration should only cover the goods or services for which the mark was well known (see paragraph 51, above).

79. Other delegations and the representatives of several observer organizations reiterated their position that any requirement as to registration should be prohibited (see paragraph 51, above). One delegation declared that a registration requirement would facilitate the activities of counterfeiters.

80. Paragraph (1)(c), items (i) to (iii). The International Bureau indicated that those items should be redrafted in order to make it clear that reference was made not to the use of the well-known mark, but to the use of the mark or business identifier which was in conflict with the well-known mark.

81. Paragraph (1)(c), item (i). It was agreed that item (i) should be combined with the requirement of damage to the owner of the well-known mark referred to in item (iii), thus following Article 16.3 of the TRIPS Agreement.

82. Paragraph (1)(c), item (ii). The representative of an observer organization suggested that the words "or diluted" should be added after the word "impaired."

83. It was generally considered that item (ii) was too broad and that its scope should be limited. For that purpose, the International Bureau suggested that this item be redrafted along the following lines: "The use of that mark ... is likely to impair in an unfair manner the distinctive character of the well-known mark."

84. Paragraph (1)(c), item (iii). See paragraph 81, above.

85. The representative of an observer organization suggested adding a provision according to which fair use and use with due cause of a well-known mark should always be permissible.

86. Paragraph (2). One delegation, supported by several other delegations, suggested to provide that there was no obligation of ex officio refusal in two situations, firstly, as stated in the draft provisions, where the applicable law allowed a third party to oppose registration of a mark, and secondly where the applicable law allowed a third party to request the cancellation of the registration of a mark.

87. The representative of an observer organization stated that such an amendment would have the effect that the obligation to refuse ex officio, provided in the first sentence, would never be applicable in practice.

88. The majority of the delegations which expressed their views declared that Offices were not equipped to refuse ex officio marks which were in conflict with well-known marks.

89. A delegation proposed to use the wording of Article 6bis of the Paris Convention under which an obligation to refuse ex officio existed only where the applicable legislation so permitted.

90. In response to a delegation indicating that, according to its law, the Office may issue refusals ex officio, it was pointed out that, even if paragraph (2) was deleted, nothing prevented an Office from refusing ex officio marks which were in conflicts with well-known marks.

91. Paragraph (3). Several delegations expressed themselves in favor of both subparagraphs (a) and (b), while one delegation was opposed to subparagraph (b).

92. The representative of an observer organization pointed out that in countries where there was no registration procedure of business identifiers, or where such a registration procedure existed but without any possibility to oppose registration, subparagraph (b) would not apply.

93. Paragraph (4). One delegation, supported by another delegation, suggested that the time period provided for in that paragraph should be calculated from the moment when the owner of the well-known mark had knowledge of the use of the conflicting mark or business identifier.

94. A number of delegations and representatives of observer organizations suggested that, where the registration of a conflicting mark was concerned, the time period should be calculated as from the publication, in the official gazette, of the registration of the conflicting mark, whereas other delegations expressed themselves in favor of calculating the time period, as provided for in the draft, as from the registration of the conflicting mark.

95. One delegation suggested that the time limit be five years from the publication of the registration or the knowledge of the use of the mark which was in conflict with the well-known mark.

96. In conclusion, the International Bureau was invited to further study that question.

97. Paragraph (5). Several delegations suggested that the time limit contained in this paragraph be calculated as of the moment the owner of the well-known mark had knowledge of the use of the conflicting mark or business identifier.

98. Paragraph (6). The Delegation of Spain suggested to replace, in the second line of paragraph (6) in the Spanish version, the words "las Partes no pueden disponer plazo alguno" by the words "no se impondrá plazo alguno a las Partes para solicitar."

99. The International Bureau suggested to amend the second sentence of paragraph (6) as follows: "A person who obtained the registration of or used a mark or business identifier which is in conflict with a well-known mark shall be deemed to be in bad faith, unless that person shows that, at the time when he applied for the registration or started using the said mark or business identifier, he did not know and had no reason to know that the mark which is to be protected as a well-known mark existed."

100. Two delegations proposed that the word "existed" be replaced by the words "was well known."

101. One delegation said that, under the proposed wording of the second sentence of paragraph (6), it would be particularly difficult for a defendant to show that it did not act in bad faith. Therefore, that delegation suggested that this matter be left to national law.

102. Another delegation, supported by other delegations and the representative of an observer organization, suggested that the second sentence of paragraph (6) contain a test for establishing whether a person who used a mark or obtained the registration of a mark that was conflicting with a well-known mark acted in bad faith, but do not shift the burden of proof as to the state of mind to the defending party.

103. The representatives of several observer organizations supported the proposed draft. One of them pointed out that the defending party had acted in bad faith in the great majority of cases in which well-known marks were misappropriated, and that it was important that presumptions in favor of the owners of well-known marks be created.

104. It was agreed that at least one further meeting was needed in order to reach agreement on the contents of the draft provisions.

105. This report was unanimously adopted by the Committee of Experts on October 23, 1997.

AFRIQUE DU SUD/SOUTH AFRICA

Theodore Franklin HENDRICKSE, Member of Trademarks Ministerial Advisory Committee, Rondebosch

ALLEMAGNE/GERMANY

Mathias HELLMANN, Assistant Head of Division, Federal Ministry of Justice, Bonn
Rüdiger KÄTKER, Marks Examiner, German Patent Office, Munich

ARABIE SAOUDITE/SAUDI ARABIA

Basil BINJABR, Deputy Director General, International Organization Department, Ministry of Commerce, Riyadh

ARMÉNIE/ARMENIA

Tereza KANETSYAN (Mrs.), Principal Expert, Registration of Patents and Trademarks, Armenian Patent Office, Yerevan

AUSTRALIE/AUSTRALIA

Julia NIELSON (Ms.), Permanent Mission, Geneva

AUTRICHE/AUSTRIA

Robert ULLRICH, Legal Officer, Legal Division, Austrian Patent Office, Vienna
Ewald GLANTSCHNIG, Counsellor, Permanent Mission, Geneva

BÉLARUS/BELARUS

Evgeny ZINKEVICH, Head of Trademarks Section, Belarus Patent Office, Minsk

BELGIQUE/BELGIUM

Monique PETIT (Mlle), conseiller-adjoint à l'Office de la propriété industrielle, Administration de la politique commerciale, Ministère des affaires économiques, Bruxelles

BRÉSIL/BRAZIL

Guido Fernando SILVA SOARES, Minister Counselor, Permanent Mission, Geneva
Edson DA COSTA, Director of Trademarks, National Institute of Industrial Property, Rio de Janeiro
Luiz Cesar GASSER, Second Secretary, Permanent Mission, Geneva

BULGARIE/BULGARIA

Veneta BORISSOVA CHAMANDOURA (Ms.), Head, Department of Trademarks-International Registration, Patent Office of the Republic of Bulgaria, Sofia

CAMEROUN/CAMEROON

Luc BESSAYEMBA, chef du Bureau des brevets, Service de la propriété industrielle, Ministère du développement industriel et commercial, Yaoundé

CANADA

Alan Michael TROICUK, Legal Counsel, Canadian Intellectual Property Office, Industry Canada Legal Services, Ottawa

CHINE/CHINA

ZHAO Gang, Deputy Head, Supervision and Administration Division, Trademark Office, State Administration for Industry and Commerce, Beijing

LEUNG Ka-Lai Ada (Ms.), Senior Solicitor, Intellectual Property Department, the Government of the Hong Kong Special Administrative Region, Hong Kong

COSTA RICA

Joaquín ALVAREZ, Ministro Consejero, Misión Permanente, Ginebra
Liliana ALFARO ROJAS (Sra.), Directora General, Registro de la Propiedad Industrial, Ministerio de Justicia, San José

DANEMARK/DENMARK

Knud WALLBERG, Head of Department, Danish Patent Office, Taastrup
Lene BACH ANDERSEN (Ms.), Head of Section, Danish Patent Office, Taastrup

ÉGYPTE/EGYPT

Alaa YOUSSEF, Third Secretary, Permanent Mission, Geneva

ÉQUATEUR/ECUADOR

Federico MENESES, Consejero, Misión Permanente, Ginebra

ÉRYTHRÉE/ERITREA

Bereket WOLDEYOHANNES, Consul, Consulate of the State of Eritrea, Geneva

ESPAGNE/SPAIN

Maria Teresa YESTE (Ms.), Consejera Técnica del Departamento de Signos Distintivos, Oficina Española de Patentes y Marcas, Ministerio de Industria y Energía, Madrid

ESTONIE/ESTONIA

Ingrid MATSINA (Ms.), Deputy Head, Trademark Department, Ministry of Economic Affairs, Tallinn

ÉTATS-UNIS D'AMÉRIQUE/UNITED STATES OF AMERICA

Lynne BERESFORD (Ms.), Attorney-Advisor, Office of Legislative and International Affairs, Patent and Trademark Office, Washington, D.C.

Lizbeth KULICK (Ms.), Attorney-Advisor, Patent and Trademark Office, Washington, D.C.

FÉDÉRATION DE RUSSIE/RUSSIAN FEDERATION

Valentina ORLOVA (Ms.), Head, Department of Theory and Practice of Industrial Property Protection, Russian Agency for Patents and Trademarks, Moscow

Izolda A. VEDERNIKOVA (Ms.), Deputy Director, Department of Multilateral Relations, Russian Agency for Patents and Trademarks, Moscow

Lidia P. SALENKO (Ms.), Member of the Union of Industry, Moscow

FINLANDE/FINLAND

Päivi RAATIKAINEN (Ms.), Head of Section, National Board of Patents and Registration, Helsinki

FRANCE

Agnès MARCADÉ (Mme), chef du Service des affaires juridiques et contentieuses, Institut national de la propriété industrielle, Paris

Gilles REQUENA, chargé de mission au Service des affaires juridiques et contentieuses, Institut national de la propriété industrielle, Paris

Joëlle ROGÉ (Mme), conseiller juridique, Mission permanente, Genève

GRÈCE/GREECE

Maria KORONEOU (Mme), chef de la direction de la propriété industrielle, Ministère du développement, Direction de la propriété commerciale et industrielle, Athènes

GUATEMALA

Luis Alberto PADILLA MENÉNDEZ, Embajador, Representante Permanente, Misión Permanente, Ginebra

Beatríz MÉNDEZ DE LA HOZ (Srta.), Tercer Secretario, Misión Permanente, Ginebra

HONGRIE/HUNGARY

Magdolna ANGYAL (Mrs.), Head, Legal Section, Hungarian Patent Office, Budapest

Endre MILLISITS, Head of International Trademark Section, Hungarian Patent Office, Budapest

INDONÉSIE/INDONESIA

Bambang HIENDRASTO, First Secretary, Permanent Mission, Geneva
Kristianti GUNAWAN (Mrs.), Head of Sub Directorate of Trademark Examination, Department of Justice, Tangerang

ISRAËL/ISRAEL

Howard Zvi POLINER, Legal Advisor to the Commissioner of Patents, Designs and Trademarks, Patent Office, Ministry of Justice, Jerusalem

ITALIE/ITALY

Sante PAPARO, directeur de la Division des marques, Office italien des brevets et des marques, Ministère de l'industrie, du commerce et de l'artisanat, Rome

Nelusco NATALI, Mission permanente, Genève

JAPON/JAPAN

Satoshi MORIYASU, First Secretary, Permanent Mission, Geneva

Seiji YAMADA Examiner, Trademark Examination Division (Machinery), First Examination Department, Japanese Patent Office, Tokyo

Sunao SATO, Examiner, Trademark Examination Division (Service), First Examination Department, Japanese Patent Office, Tokyo

JORDANIE/JORDAN

Mohammad KHRIESAT, Director of Trade Registration and Industrial Property Protection, Ministry of Industry and Trade, Amman

KENYA

John Ezekiel Kabue MUCHAE, Deputy Director, Kenya Industrial Property Office, Ministry of Research, Technical Training and Technology, Nairobi

Alex Kiptanui CHEPSIROR, Counsellor, Permanent Mission, Geneva

KIRGHIZISTAN/KYRGYZSTAN

Olga BEKBAEVA (Mrs.), Chief Expert, Trademark Examination Division, State Agency of Intellectual Property, Bishkek

LETTONIE/LATVIA

Jnis ANCTIS, Senior Examiner-Counsellor, Patent Office of the Republic of Latvia, Riga

LITUANIE/LITHUANIA

Rimvydas NAUJOKAS, Director, State Patent Bureau of the Republic of Lithuania, Vilnius

LUXEMBOURG

Edmond SIMON, directeur adjoint, Bureau Benelux des marques, Luxembourg

MAROC/MOROCCO

Dounia EL OUARDI (Mlle), ingénieur d'État, Office marocain de la propriété industrielle, Casablanca
Abdellah BENMELLOUK, premier secrétaire, Mission permanente, Genève

MAURICE/MAURITIUS

Vishnou GONDEEA, Principal Assistant Secretary, Ministry of Industry and Commerce, Port-Louis

NORVÈGE/NORWAY

Debbie RØNNING (Miss), Head, Trademark Section, Norwegian Patent Office, Oslo

PAYS-BAS/NETHERLANDS

I.W. VAN DER EIJK, Legal Advisor, Netherlands Industrial Property Office, Rijswijk
Albert SNETHLAGE, Legal Advisor on Industrial Property, Ministry of Economic Affairs, The Hague

PÉROU/PERU

Ana María PACÓN (Sra.), Presidenta de la Sala de Propiedad Intelectual, Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual (INDECOPI), Lima

PHILIPPINES

Emma C. FRANCISCO (Ms.), Director, Bureau of Patents, Trademarks and Technology Transfer, Department of Trade and Industry, Manila

PORTUGAL

José Sérgio DE CALHEIROS DA GAMA, conseiller, Mission permanente, Genève
Paulo SERRÃO, chef de Division, Institut national de la propriété industrielle, Ministère de l'économie, Lisbonne
Maria Joana PINTO-COELHO (Mme), conseiller, Institut national de la propriété industrielle, Ministère de l'économie, Lisbonne

RÉPUBLIQUE DE CORÉE/REPUBLIC OF KOREA

Joon-Kyu KIM, Counsellor, Permanent Mission, Geneva
Joong-Hyo KIM, Senior Director, Trademark and Design Policy Planning Division, Korean Industrial Property Office, Seoul
Deok-Cheol CHOI, Deputy Director, Trademark and Design Policy Planning Division, Korean Industrial Property Office, Seoul

RÉPUBLIQUE DE MOLDOVA/REPUBLIC OF MOLDOVA

Valentina DMITRIENCO (Mrs.), Head, Trademark and Industrial Design Examination Department, State Agency on Industrial Property Protection, Kishinev

RÉPUBLIQUE-UNIE DE TANZANIE/UNITED REPUBLIC OF TANZANIA

Stephen Dominic MTETEWAUNGA, Acting Registrar of Trade and Service Marks, Registrar of Trademarks, Dar es Salaam

ROUMANIE/ROMANIA

Dalila PIU (Mme), chef de la Section des marques, Office d'État pour les inventions et les marques, Bucarest
Constana MORARU (Mme), conseiller juridique, Office d'État pour les inventions et les marques, Bucarest

ROYAUME-UNI/UNITED KINGDOM

Stephen Jonathon PROBERT, Principal Hearing Officer, Trade Marks Registry, The Patent Office, Newport
Jeffery David WATSON, Administrator, Trade Marks Policy, The Patent Office, Newport
Helen FRARY (Miss), Second Secretary, Permanent Mission, Geneva

SINGAPOUR/SINGAPORE

F. Arul SELVAMALAR (Miss), Assistant Registrar, Registry of Trade Marks and Patents, Singapore

SLOVAQUIE/SLOVAKIA

Romana BENIKOVÁ (Mrs.), Examiner, Trademarks and Industrial Design Department, Industrial Property Office, Banská Bystrica

SLOVÉNIE/SLOVENIA

Mojca PEAR (Mrs.), Advisor to Director, Legal Service, Slovenian Intellectual Property Office, Ljubljana
Vesna KOVI (Mrs.), Head of Trademark and Design Department, Slovenian Intellectual Property Office, Ljubljana

SOUDAN/SUDAN

Muna Eltahir ABDELRAMAN (Mrs.), Senior Legal Advisor, Ministry of Justice, Commercial Registrar Department, Khartoum

SUISSE/SWITZERLAND

Martin SCHNEIDER, chef de la Section 1, Division des marques, Institut fédéral de la propriété intellectuelle, Berne

THAÏLANDE/THAILAND

Quanchai SASIVANIJ (Miss), Third Secretary, Permanent Mission, Geneva

TURQUIE/TURKEY

Nermin TUNCER (Mrs.), Director, Trademark Division, Turkish Patent Institute, Kizilay-Ankara
Hürriyet ZDEMIR (Miss), Director, Trademark Division, Turkish Patent Institute, Kizilay-Ankara

UKRAINE

Liana GARRIDO (Mrs.), Head, Department of International Marks, State Patent Office of Ukraine, Kyiv
Iryna KOZHARS'KA (Mrs.), Chief, Law and Patent Policy Department, State Patent Office of Ukraine, Kyiv

URUGUAY

María Federica ACOSTA Y LARA (Sra.), Asesor Letrado, Dirección Nacional de la Propiedad Industrial, Montevideo

VENEZUELA

Flor María ARVELO YANEZ (Sra.), Jefe de la Oficina de Marcas, Servicio Autónomo Registro de la Propiedad Industrial (SARPI), Caracas

David José VIVAS EUGUI, attaché, Misión Permanente, Ginebra

COMMUNAUTÉS EUROPÉENNES (CE)/EUROPEAN COMMUNITIES (EC)

Roland KOBIA, administrateur, Direction générale XV, Commission des Communautés européennes, Bruxelles

Jonathon STOODLEY, premier secrétaire, Délégation permanente, Genève

Panagiotis GEROULAKOS, chef de Service, Office de l'harmonisation dans le marché intérieur (marques, dessins et modèles), Alicante

ORGANISATION RÉGIONALE AFRICAINE DE LA PROPRIÉTÉ INDUSTRIELLE (ARIPO)/AFRICAN REGIONAL INDUSTRIAL PROPERTY ORGANIZATION (ARIPO)

Mzondi Haviland CHIRAMBO, Director General, Harare, Zimbabwe

Association asiatique d'experts juridiques en brevets (APAA)/Asian Patent Attorneys Association (APAA): Ashraf ALI (Counsellor, Karachi); Atsushi OSHIMA (Member of Trademark Committee, Tokyo)

Association communautaire du droit des marques (ECTA)/European Communities Trade Mark Association (ECTA): David H. TATHAM (Council Member, London)

Association européenne des industries de produits de marque (AIM)/European Association of Industries of Branded Products (AIM): Dawn FRANKLIN (Miss) (Member of Trademark Committee, Buckinghamshire)

Association internationale pour la protection de la propriété industrielle (AIPPI)/International Association for the Protection of Industrial Property (AIPPI): Gerd F. KUNZE (Intellectual Property Consultant, Chexbres, Switzerland)

Association internationale pour les marques (INTA)/International Trademark Association (INTA): Frederick MOSTERT (Executive Vice President, New York); Bruce MACPHERSON (Trademark Affairs and Policies Manager, New York)

Chambre de commerce internationale (CCI)/International Chamber of Commerce (ICC): Gonçalo MOREIRA RATO (Lawyer, J.E. Dias Costa, LDA, Lisbon)

Fédération européenne des mandataires de l'industrie en propriété industrielle (FEMIPI)/European Federation of Agents of Industry in Industrial Property (FEMIPI): François DÛSOLIER (juriste marques, Paris)

Fédération internationale des conseils en propriété industrielle (FICPI)/International Federation of Industrial Property Attorneys (FICPI): Gonçalo MOREIRA RATO (Lawyer, J.E. Dias Costa, LDA, Lisbon)

Japan Intellectual Property Association (JIPA): Tomohiro NAKAMURA (Vice-Chair, Trademark Committee, Tokyo)

Japan Patent Attorneys Association (JPAA): Shuya KOHHARA (Vice-Chairman, Trademark Committee, Tokyo); Hitoshi NAKAMURA (Vice-Chairman, Trademark Committee, Tokyo)

Japan Trademark Association (JTA): Atsushi OSHIMA (Chairman, International Activities Committee, Tokyo)

Licensing Executives Society (LES): Pierre HUG (Past President, Zurich)

Ligue internationale du droit de la concurrence (LIDC)/International League of Competition Law (LIDC): Jaques GUYET (ancien président, Genève); Thierry DE HALLER (Lausanne)

Institut Max Planck de droit étranger et international en matière de brevets, de droit d'auteur et de concurrence (MPI)/Max-Planck-Institute for Foreign and International Patent, Copyright and Competition Law (MPI): Annette KUR (Ms.) (Munich)

Société arabe pour la protection de la propriété industrielle (ASPIP)/Arab Society for the Protection of Industrial Property (ASPIP): Luay T. ABU-GHAZALEH (Board Member, Riyadh)

Union des confédérations de l'industrie et des employeurs d'Europe (UNICE)/Union of Industrial and Employers' Confederations of Europe (UNICE): David H. TATHAM, (Member, Trademarks Working Group, London)

Union des praticiens européens en propriété industrielle (UPEPI)/Union of European Practitioners in Industrial Property (UEPIP): Anne KEUNE (Ms.) (Geneva)

Président/Chairman: Alan Michael TROICUK (Canada)

Vice-présidents/Vice-Chairmen: Constana MORARU (Mme) (Romanie/Romania)
Flor MarÍa ARVELO YANEZ (Sra.) (Venezuela)

Secrétaire/Secretary: Pierre MAUGUÉ (OMPI/WIPO)

François CURCHOD, vice-directeur général/Deputy Director General

Département du droit de la propriété industrielle/Industrial Property Law Department: Ludwig BAEUMER (directeur/Director); Pierre MAUGUÉ (chef de la Section du droit des marques et des dessins et modèles industriels/Head, Trademark and Industrial Design Law Section); Marcus HÖPPERGER (juriste principal, Section du droit des marques et des dessins et modèles industriels/Senior Legal Officer, Trademark and Industrial Design Law Section); Yolanda HUERTA (Ms.) (juriste adjointe/Assistant Legal Officer)