SCT Examines Non-Traditional Marks, Trademark Opposition Procedures and Industrial Designs
July 28, 2008
Non-traditional 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) (19th session), which met from July 21 to 25, 2008. The meeting, attended by 82 member states, 4 intergovernmental organizations and 11 non-governmental organizations, focused on exploring ways to establish greater clarity on issues relating to the registration of trademarks and industrial designs.
The Committee identified a number of areas of convergence for the representation and description 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 seeks to promote consistency of outcomes in the trademark registration process under various national procedures. The SCT made progress in identifying possible areas for greater convergence in registration practices. This work will continue at the next session of the SCT.
The SCT also explored ways to promote greater convergence in procedures relating to various aspects of trademark opposition. These procedures offer third parties the opportunity to object to the registration of a trademark either before or after it has been registered with a trademark office. The SCT agreed on a number of areas of convergence in this field, such as the relation between opposition and examination procedures, grounds for opposition, entitlement to file an opposition, the length of the opposition period, observations made by third parties and the “cooling off” period allowing for settlement negotiations.
Protection of State Emblems and Names and Abbreviations of Non-Governmental Organizations
Delegates also considered a proposal to revise the communication procedures 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. Those signs are generally not available for trademark use. The proposal essentially concerns replacing the paper-based communication system by a periodical electronic publication. The SCT discussed the technical details of the proposal and agreed to submit a recommendation to the Assembly of the Paris Union to adopt this new procedure at its forthcoming meeting in September 2008.
With regard to industrial designs, the SCT examined the Summary of Replies to the Questionnaire on Design Law and Practice, a document prepared on the basis of the responses received from 68 members and observers to the SCT, dealing generally with the formalities for design registration procedures, management of registrations and communications with offices, the subject matter of industrial design protection, appeals, alternative dispute resolution and the relation of design with other areas of IP law, namely trademarks, copyright and unfair competition law. The SCT will continue its analysis of the questionnaire at its next session with a view to identify possible areas in industrial design law and practice in which it wishes to pursue further work.
International Nonproprietary Names for Pharmaceutical Substances (INN)
The Committee noted the past cooperation between the secretariats of WIPO and the World Health Organization (WHO), which, in respect of the SCT and its work, had resulted in the distribution of cumulative lists of INNs to national trademark offices.
Under a WHO program, INNs provide a common generic designation of given pharmaceutical substances.
In accordance with relevant WHO resolutions, INNs should not be registered as trademarks.
With a view to a improving the efficiency with which new lists of proposed and recommended INNs are distributed, the SCT decided to move to an electronic based solution whereby new INN lists are published on the WHO website with an e-mail alert being sent to subscribers of the SCT forum.
WHO gave a presentation on the INNs protection system and responded to questions from delegates.
Furthermore, the SCT requested the secretariat to explore together with the WHO secretariat ways of developing a publicly searchable database for INNs.
The next meeting of the SCT is scheduled to take place in Geneva from December 1 to 5, 2008.
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