Keynote Address

at the
120th Annual Meeting of the
International Trademark Association (INTA)
Boston, MA, USA
Wednesday, May 13, 1998

THE NEW WIPO AGENDA IN THE FIELD OF TRADEMARKS

Mr. President,
Distinguished members of INTA, Ladies and Gentlemen,

This is the first time I am attending an INTA meeting, and I am very much honored to have been given the opportunity of addressing such a distinguished audience in the prestigious city of Boston.

The membership of INTA has given an overwhelming response to the program of the meeting.

I am impressed by the enthusiasm with which each of you participates in this meeting. You all are determined to work for the improvement of the current trademark situation. Much is still to be done. Solutions have to be found for further strengthening the protection of trademarks worldwide, and to make access to protection simpler and cost-effective.

When pursuing this objective, trademark owners and their representatives can count on the World Intellectual Property Organization. Our objective is exactly the same, and we share your mission.

The Place of Trademarks in WIPO's Work

In WIPO's agenda, trademarks have always held an important place.

We are guided by the fact that there is a growing number of trademarks which represent substantial values and sometimes constitute the most important asset of an enterprise.

Trademarks are important not only because they represent values for their owners. They are also used in the interest of consumers who want to distinguish goods and services offered on the market. Thus trademarks are a critical factor in the economic development of all countries.

Cooperation Between WIPO and INTA

The staff of WIPO's Secretariat has the humble but also noble task to assist our Member States in implementing their intellectual property policy and to provide services to the owners of intellectual property rights. In the fulfillment of this task, the cooperation with the private sector and nonstate actors, and, in particular, in the field of trademarks, the International Trademark Association, is of eminent importance.

This international assembly indeed offers an excellent opportunity for the International Bureau of WIPO to be in direct contact with a great number of users of the trademarks system, right owners and their representatives. We feel that WIPO's work in the area of trademarks can benefit greatly from your suggestions and advice.

Therefore, we seek a direct dialogue with the members and management of your Association. We want to learn from you and to understand your needs and wishes. I am glad to say that, in the past, this dialogue has taken place in a smooth and efficient manner, and it is my desire to do everything from our side to ensure that this dialogue is even further enhanced.

The Purpose of This Presentation

You have asked me to present my vision, as newly elected Director General of WIPO, in respect of activities of WIPO in the field of trademarks.

I do not want to escape this challenge. However, I prefer for my presentation a somewhat more modest title, namely "The New WIPO Agenda in the Field of Trademarks."

This approach is based on the fact that WIPO, with its predecessor, BIRPI, has a long history. Thus, whatever I propose to do, is based on the achievements of my predecessors in the Office as Director General, in particular, Dr. Arpad Bogsch, whom you have gracefully honored during your Annual Meeting last year. I therefore think that it is appropriate to first look at what WIPO has achieved so far before I talk about my own agenda and vision.

II. A QUICK GLANCE AT WHAT HAS BEEN ACHIEVED SO FAR

The Basis: International Trademark Law Under the Paris Convention

The first achievement to be mentioned here is more than 100 years old but has not lost its significance. I refer to the Paris Convention for the Protection of Industrial Property, which, already in 1883, included two fundamental principles of international trademark law, namely the principle of national treatment and the right of priority.

These two basic principles of the Paris Convention were later supplemented by provisions requiring a minimum of protection for trademarks. Those provisions concern, for example, the protection of well-known marks, the limitation of grounds for refusal of protection of a mark and the obligation to protect service marks.

The Paris Convention thus stands as a monument, and the more recent worldwide treaty in the field of intellectual property, namely the TRIPS Agreement, has recognized this by taking over all the substantive provisions of the Paris Convention.

The International Registration of Marks Under the Madrid Agreement and Protocol

An achievement of WIPO which is of particular importance for trademark owners is the establishment of the system of international registration of trademarks under the Madrid Agreement.

In 1989, a Protocol to the Madrid Agreement was adopted which makes the system of international registration of trademarks acceptable to a number of countries which so far were unable to joint the Madrid Agreement.

What still remains to be done is to find a solution to the entirely non-trademark law issue of the voting right of the European Communities in the Assembly of the Madrid Union.

Harmonization of Trademark Law and the Trademark Law Treaty (TLT)

WIPO's work for harmonization of trademark laws culminated in 1994 with the adoption of the Trademark Law Treaty.

This Treaty provides for a magna carta for trademark applicants and owners in respect of formalities which can be required by national and regional Offices. It guarantees that, in procedures for the registration of trademarks and the renewal of such registration, no formality may be required which is not expressly allowed by the Treaty and the Regulations.

III. WHAT WIPO WILL DO DURING THE CURRENT BIENNIUM

The Approach Taken in WIPO's New Program and Budget

At the end of March, the Assemblies of the Member States of WIPO adopted the program and budget for the Organization for the years 1998 and 1999.

The approach proposed by me, and now adopted by WIPO's Member States, is intended to meet four basic challenges:

First is the challenge of relevance. WIPO and its program must remain relevant to:

• the priorities of Member States;
• the private sector;
• civil society and non-state actors; and
• new and emerging technologies.

Second is the challenge of governance. The decision-making bodies, working methods and procedures must be streamlined, made simpler, cost effective, and results oriented.

Third is the challenge of influence, including:

• the progressive development of international, harmonized principles and rules;
• building institutions that leave a lasting legacy in developing countries;
• the development of global systems and services for the protection of intellectual property, and
• the use of modern information technologies.

Fourth is the challenge to what I call the "corporate image" of intellectual property generally and, specifically, WIPO. We must-all of us-intensify our efforts to reach out to all segments and sectors of the global society to provide positive information about intellectual property and encouragement to protect it. In this way, intellectual property may be assured for all by the next millennium.

Together with consensus-building, there are two principles which govern the new program and budget:

• complete transparency with respect to, in particular, the income generated by the various operations of the International Bureau and the corresponding expenses, and
  
• accountability of the activities performed under the program and budget.

There are a number of trademark-related activities in the program which I shall now explain to you.

The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications

The first of those activities is the establishment of the so-called Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications. The first session of that Standing Committee will take place from July 13 to 17, and INTA is invited to participate in that session.

The Standing Committee will have jurisdiction over all questions of harmonization of trademark laws, or as we now call it, progressive development of trademark law, because there is not only the task of harmonizing the existing laws with each other, but also the very important task of further developing existing legal approaches.

The Standing Committee will, inter alia, deal with three matters:

• improvement of the protection of well-known marks,
• harmonization of rules concerning trademark licensing,
• harmonization of substantive trademark law, in particular, with respect to questions concerning the domain name system on the Internet.

The latter question is of great practical importance and urgency in view of the tremendously growing number of cases where trademarks are used on the Internet.

The Policy Advisory Commission and the Industry Advisory Commission

One new feature of WIPO's program is the establishment of two advisory commissions, namely the Policy Advisory Commission and the Industry Advisory Commission.

Although they only have an advisory role, they will certainly have influence on what WIPO will do in the current biennium and in future years in the field of trademarks.

The Policy Advisory Commission will include individual experts from a wide range of policy backgrounds-potentially both governmental and non-governmental. Their task will be to identify and review issues that may need to be addressed by WIPO, or that may have a bearing on its operations, and formulate policy options to address those issues.

The members of the Industry Advisory Commission will come from industry, in the largest sense, that is to say including commercial enterprises that own trademarks. They will advise WIPO of ways in which industry could work with WIPO to best implement our program of activities.

Moreover, they will be called upon to inform WIPO at an early stage about directions towards which their industries are headed and possible consequences for intellectual property protection.

Both Commissions hopefully will work as think tanks and offer a forum for dialogue. Ideally they will function as a kind of early warning system for problems and opportunities.

Enlargement of the Geographical Scope of the System of International Registration of Marks

As you all know, the system of international registration of marks has not yet reached its desirable geographical coverage. More than 100 countries, including the United States of America and Japan, are still not participating in that system.

One of the most important tasks of WIPO during the current biennium is to facilitate the process of accessions to the Madrid Agreement and Protocol.

There is a great variety of activities relating to the promotion of WIPO's treaties. We consult with governments who consider the possibility of accession to the international registration system, and with governments who have not yet initiated this process. We explain the system to potential users and representatives in non-member States, and we show to all interested visitors the state-of-the-art operations at WIPO's Headquarters in Geneva.

Dispute Resolution as Regards Conflicts Between Trademarks and Internet Domain Names

As you know, the unlawful use of trademarks as domain names is a subject of concern among trademark holders. The mechanisms for resolving conflicts between trademark holders and domain name holders which are presently available are expensive and cumbersome.

Dispute resolution procedures constituting alternatives to litigation for resolving disputes between trademark owners and domain name registrants, such as mediation, arbitration, or a form of administrative procedure designed specifically for domain name disputes, should be further studied. It is recalled that WIPO has developed an on-line system for administering commercial disputes involving intellectual property. This system will be available for disputes involving Internet domain names.

We are of the opinion that the protection of domain names and, more generally, of intellectual property rights on the Internet, is vital not only to trademark holders, but also to users of this remarkable medium. We are ready to participate in the elaboration of solutions to the existing problems; however, we do not want to comment on Internet governance, which is a technical and economic policy issue on which WIPO's Member States have not expressed a position.

Upgrading of Trademark Law and Administration in Developing Countries and Transition Countries, and Strengthening of Enforcement Mechanisms

Particular emphasis is given in WIPO's new program to cooperation with developing countries and cooperation with certain countries in Europe and Asia, for example,

• the modernization of the intellectual property system taking into account the TRIPS Agreement, and
• the development and promotion of industrial and social uses of intellectual property.

As regards trademarks, of particular relevance are:

• the modernization of national legislation and infrastructure,
• the development of nationally focused plans for institution building,
• the establishment of national and regional user organizations, and
• the development of public knowledge of trademark protection.

IV. VISIONS FOR THE FIRST DECADE OF THE NEXT CENTURY AND MILLENNIUM

Global Coverage of International Registration System

The first part of my vision concerns the international registration system. I want that system to cover all countries of the world.

As I have already said, I am fully aware of the problems that the Madrid Protocol still encounters, because of the voting right issue.

However, that issue, in my opinion, is not an unsolvable one.

Compared with the present situation, the advantages of the Protocol for the whole trademark community, in particular for the trademark owners represented by your Association, are evident.

Of course, the international trademark community will have to continue to express its interest in having the Protocol adopted by all countries of the world. Here I very much count on INTA's continued support and action.

Global Trademark Law Standards and Enforcement Measures

The second part of my vision concerns national and regional trademark laws, both as regards the conditions for protection, and the scope and enforcement of protection conferred by those laws.

The trend for harmonizing those laws and strengthening enforcement mechanisms, which is reflected in the adoption of the Trademark Law Treaty and the TRIPS Agreement, should continue, and WIPO should have an important share in this endeavor.

We frequently hear that it is difficult to complete the process of ratification of the Trademark Law Treaty as well as other measures of harmonization of trademark law with the desired speed, in view of many other urgent tasks to be dealt with by legal draftsmen and parliaments.

Here again INTA will have a crucial role in continuing to persuade governments and legislators of the urgency of ratifying the TLT and of implementing the additional harmonization measures which are under preparation within the framework of WIPO.

Global Trademark Information Services

The third part of my vision concerns trademark information services.

A global system should be established which would ensure that information on all trademarks registered at the national, regional and international levels is instantly available, "on-line."

Your Association could support this area by drawing the attention of governments to the fact that this project is of immediate impact, not only on the international trademark community, but also in the socio-economic development and wealth creation for the national communities and nations.

V. CONCLUDING REMARKS

I believe it is essential to concentrate on projects which have a real chance of being realized.

I therefore, intentionally, refrain from propagating a project which could be called a "world trademark." In my view, such a project, in contrast to a "world patent," is, at least for the time being, premature because the validity of a trademark and any conflicts with competing marks are to be determined according to criteria which, even if they are generally similar, are evaluated differently by countries, for instance, the pronunciation of a word in different languages.

The continued cooperation of WIPO with the interested circles and market sector interests, and, in particular, with the International Trademark Association will be in the interests of Justice and Humanity.

Let us think together; let us work together; let us together face the challenges of the 21st Century with a collective mission and a common vision.

I thank you for your attention.