SCT To Intensify Work on New Types of Marks, Trademark Opposition Procedures and Industrial Designs

Geneva, May 15, 2007

Member states of the World Intellectual Property Organization (WIPO) have stepped up work on a number of topical issues relating to trademarks and industrial designs. This came at a meeting of WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). The 17th session of the SCT, which met from May 7 to 11, 2007, was attended by 77 member states, four intergovernmental organizations and 16 non-governmental organizations.

New Types of Marks

The Committee considered in depth member state’s legislation and trademark office practice in relation to the registration of three-dimensional marks, color marks and sound marks. This exchange, which will continue at the forthcoming 18th session in respect of other types of marks, such as motion marks, position marks, hologram marks, slogans, smell, feel and taste marks, is expected to result in a set of practices for member states relating to the representation of those types of marks in trademark office procedures.

Trademark Opposition

The SCT spent considerable time on the issue of trademark registration opposition procedures which offer third parties the opportunity to object to a trademark either before or after it was registered with a trademark office. Delegates worked on the grounds of opposition, and examined the experience of SCT members with regard to pre-registration or post-registration opposition. Other issues that were addressed in that context include third-party observations made in the course of opposition procedures, cooling off periods allowing for settlement negotiations, member states’ experience with introducing new opposition systems and the effect the abolition of office examination as to prior rights can have on the number of oppositions filed. As a result, the Committee will consider, at its next session, a document with key learnings derived from the experiences of various national and regional offices concerning opposition procedures.

Industrial Designs

With regard to industrial designs, the SCT fine-tuned some 70 questions for a questionnaire concerning industrial design registration in member countries. The Committee gave the go ahead for a comprehensive survey on various industrial design registration systems, which will be conducted in two stages, i.e., first, covering design registration formalities and, later on this year, questions of substantive design law. This exercise is intended to map the industrial design protection landscape of member states and to explore the borderlines between marks, industrial designs and copyright. This initiative was launched by the SCT at its previous session and is expected to yield a basis for future deliberations of the SCT whether approximation of design legislation is desirable and feasible.

Protection of State Emblems and Names and Abbreviations of Non-Governmental Organizations

Delegates also worked on the enhancement of certain aspects of the procedure for the protection of state emblems and names and abbreviations of international organizations under Article 6ter of the Paris Convention for the Protection of Industrial Property. At this occasion, the secretariat demonstrated a test version of a new on-line searchable database containing some 2,400 records of protected state emblems and names, abbreviations and emblems of intergovernmental organizations. Those signs are generally not available for trademark use. The database does not have any legal effect and inclusion of signs is of a purely informative nature. However, this tool is widely seen as giving improved access of this data to the public, thus enhancing the protection of those signs against unauthorized registration or use as trademarks.

The next meeting of the SCT is scheduled to take place from November 12 to 16, 2007.

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