Member States Address Non-Traditional Marks, Advance Work on Industrial Designs

Geneva, July 2, 2010

WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) met from June 30 to July 2, 2010 to address industrial design law issues, the protection of state names against registration or use as trademarks, grounds of refusal for trademark registration and collective and certification marks. 

At the conclusion of the 23rd session of WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indication, the SCT Chairperson, Mr. Adil El Maliki, Director General of the Patent and Trademark Office of Morocco, said “that all delegations attached great importance to the work of the SCT on possible convergences in the industrial design law and practice of member states and that the SCT supported the advancement of that work.”
The SCT decided to include the issue of trademarks and the Internet on the agenda of its next meeting. That session is expected to consider the WIPO Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet, and recent developments within Internet Corporation for Assigned Names and Numbers (ICANN) on domain name issues.
The SCT made also progress on the protection of names of states against registration or use as trademarks, and agreed to circulate a questionnaire on member states’ law and practice in that field, in order to obtain a basis for possible future work.
Earlier in the week, member states of the Singapore Treaty on the Law of Trademarks, an international treaty setting standards for trademark registration procedures, took an important decision to define rules for the representation of a number of non-traditional marks such as hologram, motion, color, position and sound marks. This is the first time that an international treaty makes explicit reference to non-traditional marks and sets out rules for their representation in trademark applications. It is a significant acknowledgement that subject matter for brands goes beyond the traditional signs for which trademark protection is usually sought. 
The first session of the Working Group of the Review of Rule 3(4) to (6) of the Regulations under the Singapore Treaty on the Law of Trademarks agreed on June 29, 2010 to recommend to the Singapore Treaty Assembly, which will meet in September 2010, changes into the Regulations under the Singapore Treaty concerning the representation of 3D marks, hologram, position, motion, color and sound marks, namely the adoption of   binding standards concerning those marks.   Once adopted by the Assembly, these changes will refer in detail to these non-traditional marks and indicate a manner for representing them in trademark applications.  While the actual number of trademark registrations representing non-traditional marks remains modest, it is a clear sign that the intellectual property community is responsive to the evolving needs of the branded goods industry. 

A great deal of creativity and investment goes into the development of brands and it is vital for the industry to be able to secure that investment. The Singapore Treaty was adopted by WIPO member states in Singapore on March 28, 2006, and establishes trademark office administration rules applicable to all types of trademarks, taking into account the advantages and potential of electronic communication facilities, while recognizing the varying needs of both developing and developed nations. The Treaty also creates a dynamic regulatory framework with a built-in review mechanism that will help ensure that the international legal framework remains attuned to the evolving practical concerns of trademark owners as well as to the needs of developing countries.

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