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WIPO Member States Agree to Move Forward withHarmonization of Trademark Law

Geneva, June 4, 2002
Press Updates UPD/2002/169

Member states of the World Intellectual Property Organization (WIPO) have advanced in their discussions on a comprehensive program of harmonization of laws for the protection of marks. They have also identified areas for further discussion on common principles to facilitate the protection of geographical indications (GIs) and have decided to address some questions relating to the protection of industrial designs. Delegates from 76 member states and 17 observer organizations attending the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) met from May 27 to 31, 2002.

At the meeting, SCT members committed themselves to work towards further simplifying and streamlining the procedures concerning formal requirements for the registration of trademarks and other related procedures such as the provisions regarding the electronic filing of communications with intellectual property offices. Delegates also initiated discussions on further harmonization of substantive trademark law addressing questions such as the definition of a mark, non traditional marks (smell marks, sound marks, holograms and three-dimensional marks), grounds for refusal of trademark rights, and rights conferred by registration. By creating legal certainty through the adoption of common approaches, users of the many different trademark systems that exist worldwide will benefit from significant time and cost savings.

Trademarks formality requirements are currently governed by the WIPO Trademark Law Treaty (TLT), concluded in 1994, which serves to harmonize and simplify the formal requirements involved in registering a trademark and other related procedures. The SCT discussed revised draft provisions of the TLT prepared by the WIPO secretariat on the basis of similar provisions contained in the Patent Law Treaty (PLT), which was adopted in 2000. The SCT agreed to build on the TLT to further simplify and expand the harmonization of formalities by introducing provisions on electronic filing, relief in respect of time limits fixed by the intellectual property office (IPO) and on reinstatement of rights after a finding of due care or unintentionality by the IPO.

The fruitful and in-depth exchange of views on the substantive harmonization of trademark laws were based on a document prepared by the WIPO secretariat. Discussions illustrated the broad diversity of national systems, procedures and approaches in the field of marks. Definitions of non-traditional marks (smell marks, sound marks, holograms and three-dimensional marks) were broadly discussed. Many SCT members noted the difficulties experienced in examination of smell marks. Absolute grounds for refusal (such as non-distinctiveness of a mark, misleading marks etc.), and relative grounds for refusal (conflicts with prior rights), were thoroughly debated. The appropriate use of the commonly known signs ™ and ® was also discussed. The use of these symbols which signal to the consumer that a trademark is either protected ™ or registered ® are not currently regulated at the international level. The substantive harmonization of international trademark laws aims to further simplify the work of national intellectual property offices, and to provide a clear and harmonized legal framework for trademark applicants or holders and their representatives.

Time constraints prevented discussion of certain questions such as the harmonization of the administration/examination procedures (among which the introduction of the opportunity for third parties to file oppositions against an application or a registration of a mark), and problems relating to the use of a mark in the course of trade. These issues will be discussed at the next meeting of the SCT in November 2002.

SCT members also reviewed the protection of geographical indications (GIs). Open discussions focused on the definition of geographical indications, the protection of a GI in its country of origin, and the protection of a GI abroad. The SCT agreed to continue the discussion of these topics at its next session. Although WIPO's involvement in the protection of geographical indications is long-standing, this is the first time that this issue has been discussed in such depth in the context of the SCT. The protection of geographical indications promises to generate significant potential benefits for local producers, small and medium-sized enterprises (SMEs) and indigenous groups.

SCT members agreed to use the definition contained in Article 22.1 of the TRIPS Agreement as the starting point for discussions. This article states that GIs are indications which identify a good as originating in the territory of a member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.

The SCT also debated the practical differences between the systems of protection of geographical indications at the national level. In principle, geographical indications are protected either as appellations of origin or as collective or certification marks. The purpose of the discussions is not to harmonize the different systems of GI protection but to allow SCT members to better understand the characteristics of these systems. The committee also discussed the necessary link between a geographical indication and the territory in question as well as problems relating to territorial effects of the protection of a geographical indication. Certain issues, namely, questions involving generic terms, conflicts between trademarks and geographical indications and those between homonymous geographical indications were postponed for discussion at the November session of the SCT.

The WIPO secretariat was also requested to prepare an information paper on industrial designs for discussion at the next SCT meeting. The paper will address the question of the relationship between industrial designs and traditional knowledge and between industrial designs and three-dimensional marks.

The next meeting of the SCT will take place from November 11 to 15, 2002 and will look at provisions for further harmonization of formality requirements for the registration of trademarks, further harmonization of substantive international trademark law, geographical indications and as a new topic, industrial designs.

For further information, please contact the Media Relations and Public Affairs Section at WIPO:

  • Tel: (+41 22) - 338 81 61 or 338 95 47
  • Fax: (+41 22) - 338 88 10
  • Email: publicinf@wipo.int.
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