Member States Discuss the Revision of International Trademark Law Treaty (TLT)

Geneva, May 8, 2003
Press Updates UPD/2003/191

The further simplification and streamlining of procedures for obtaining and maintaining a mark was discussed by member States attending the WIPO Standing Committee on the Law of Trademarks, Geographical Indications and Industrial Designs (SCT) which met in Geneva from April 28 to May 2, 2003. The meeting, attended by delegations from 79 member States, 3 intergovernmental organizations and 12 non-governmental organizations, addressed the future revision of the Trademark Law Treaty (TLT), the question of the protection of Geographical Indications (GIs) and domain names.

Trademarks

The discussions on trademarks focused on the revision of the TLT. The TLT was concluded in 1994 with a view to streamlining and simplifying, on a worldwide basis, formal trademark procedures relating to national and regional trademark applications and the maintenance of trademarks. The TLT currently has thirty one member countries. Companies seeking trademark protection must, as a first step, meet certain formality requirements in order to avoid rejection of their application and a consequent loss of rights. These formalities currently vary from one country to another. In view of technological developments, new areas for consideration in revising the TLT include the possibility of introducing electronic filing of trademark applications and associated communications, incorporation of the Joint Recommendation on Trademark Licenses (see PR/2000/243) and relief and re-instatement of rights when certain time limits have been missed. Such enhancements promise to generate additional cost savings and efficiency gains for trademark owners and industrial property offices.

The meeting considered the current proposal on electronic communications which envisages that "any Contracting Party may choose the means of transmittal of communications". This means that the Trademark Office of any Contracting Party may choose whether to accept filings on paper only, or both on paper and by electronic means. Discussions emphasized the need to provide developing, least developed and countries in transition with technical and financial assistance to facilitate the implementation of electronic communication in those countries.

The SCT also agreed to circulate a questionnaire to member States to gather information on national practices. This survey would serve to identify issues for the further development of international trademark law, and promote the convergence of international trademark law and practice, by for example, fostering a common approach to the examination of trademark applications. A summary of responses will be presented to member States in 2004.

Geographical Indications

In relation to geographical indications (GIs), the SCT took note of a WIPO study on issues generally considered by different IP systems in relation to the protection of GIs. The study explored the various elements supporting a claim for quality, reputation or other characteristics and examined criteria used in evaluating a claim that these elements are "essentially attributable to" the geographical origin of a given product. The study is designed to promote a better overall understanding of what is meant by the term geographical indication.

A number of treaties administered by the World Intellectual Property Organization (WIPO) provide for the protection of geographical indications, most notably the Paris Convention for the Protection of Industrial Property of 1883, and the Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration. In addition, Articles 22 to 24 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) deal with the international protection of geographical indications within the framework of the World Trade Organization (WTO).

Internet Domain Names

The SCT also discussed a number of outstanding issues relating to Internet domain names, specifically in relation to the Second WIPO Internet Domain Name Process. In July 2001, at the request of its member States, WIPO initiated this process to examine the relationship between a number of identifiers (other than trademarks) and domain names. In September 2002, WIPO's member States recommended that the scope of the Uniform Domain Name Dispute Resolution Policy (UDRP) be extended to protect the names and acronyms of international intergovernmental organizations (IGOs) and country names. These recommendations were transmitted by WIPO to the Internet Corporation for Assigned Names and Numbers (ICANN) which is responsible for adopting amendments to the UDRP.

In the area of the protection of country names, the SCT considered three outstanding issues:

(i) Whether protection should be extended to names by which countries are commonly known: To date, WIPO member States have recommended protecting the long and short names of countries, as outlined in the United Nations Terminology Bulletin, in the six official languages of the United Nations as well as the official language(s) of the country concerned. The SCT will continue discussing this issue at its next session;

(ii) Whether protection should be extended retroactively: The SCT decided not to recommend to ICANN that protection of country names should be extended retroactively. The September 2002 recommendations to ICANN proposed that protection be extended to future domain name registrations only and had deferred the question of retroactivity.

(iii) Whether to establish an arbitral appeal mechanism: The SCT requested further information on how such an arbitration mechanism might work in practice for further discussion at its next session. The UDRP does not exclude recourse by either party to a national court of justice. To this end, in presenting a complaint, the complainant is required to submit to the jurisdiction of the national courts either of the registrar's principal office or the domain name holder's address. For sovereign States this would require waiving their sovereign immunity from jurisdiction in the courts of other countries. This could be avoided if States submitted to a special appeal procedure by way of de novo arbitration (i.e. the dispute is treated as if it had not been the subject of a previous domain name dispute resolution procedure).

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