SCT to Focus Work on Non-Traditional Types of Marks, Trademark Opposition Procedures and Industrial Designs
November 19, 2007
New types of marks, such as holograms and scent marks, trademark opposition procedures, and questions relating to the registration of industrial designs topped the agenda of the World Intellectual Property Organization (WIPO) Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). The 18th session of the SCT, which met from November 12 to 16, 2007, was attended by 74 member states, 3 intergovernmental organizations and 11 non—governmental organizations, and focused on key issues that aim to establish more clarity for the international protection of trademarks and industrial designs.
New Types of Marks
The Committee considered the approaches adopted in the legislation and trademark office practice of member states in relation to the registration of “non-traditional marks” such as three-dimensional marks, color marks, sound marks, scent marks, movement marks, hologram marks, slogans or position marks. This work will continue at the SCT’s next session, which, it is anticipated, will identify specific areas of convergence in the law and practice of member states in respect of these types of marks. This work aims to provide valuable insights and guidance to the trademark offices of member states and to users of the trademark system in relation to the treatment of such marks in the trademark registration process.
The SCT also considered an in-depth analysis of various aspects 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 a set of key approaches regarding issues such as the grounds of opposition, 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 identifying areas of convergence between various national and regional offices concerning opposition procedures.
With regard to industrial designs, the SCT continued its analyses of industrial design registration in member countries. The Committee gave the go ahead for the second stage of a comprehensive survey on various industrial design registration systems, covering questions of substantive design law. The first part of the survey, which covers design registration formalities, is well under way and a substantial amount of data has already been collected by the secretariat. This exercise is expected to result in the mapping of the industrial design protection landscape of member states. This will provide a clearer picture of the interface between marks, industrial designs and copyright. This initiative was launched by the SCT at its 16th session in (November 2006) and is expected to yield a basis for future deliberations of the SCT on whether it is desirable or feasible to promote greater convergence of design legislation.
Protection of State Emblems and Names and Abbreviations of Non-Governmental Organizations
Delegates also took note of 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. The secretariat informed the meeting about the successful launch of a new on-line searchable database containing some 2,400 records of protected state emblems and names, abbreviations and emblems of intergovernmental organizations. These 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 a means of improving public access to this data and thereby enhancing the protection of these signs against unauthorized registration or use as trademarks. In addition, a complete listing of all state emblems and names and abbreviations of international organizations communicated under Article 6ter is being made available free of charge in XTML format from a WIPO FTP server.
International Nonproprietary Names for Pharmaceutical Substances (INNs)
The Committee noted the past cooperation between the secretariats of WIPO and the World Health Organization (WHO), which, in the SCT’s area of work, had led to the distribution to trademark offices of WIPO member states, by the SCT secretariat, of cumulative lists of INNs. Under a WHO program, INNs provide a common generic designation of given pharmaceutical substances and in accordance with relevant WHO resolutions, INNs should not be registered as trademarks. SCT members have expressed great interest in obtaining better information on INNs and the extent to which they should be considered non-proprietary. The SCT secretariat was mandated to follow up on this issue with the WHO secretariat with a view to continuing this work at the next session of the SCT.
The next meeting of the SCT is scheduled to take place from June 2 to 6, 2008.
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