Key WIPO Committee Recommends Updating Trademark Law Treaty

Geneva, May 5, 2004
Press Updates UPD/2004/223

A key negotiating committee at the World Intellectual Property Organization (WIPO) has recommended the convening in the first half of 2006 of a Diplomatic Conference that would update the existing Trademark Law Treaty (TLT) to bring it in line with the technological advances of the past decade. Meeting in Geneva from April 26 to 30, 2004, the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) agreed to recommend to the WIPO General Assembly meeting from September 27 to October 5, 2004, to convene the conference. The meeting was attended by 76 member states, 4 intergovernmental organizations and 14 non-governmental organizations.

Revision of the Trademark Law Treaty

The Trademark Law Treaty (TLT) was concluded in 1994 with a view to streamlining and simplifying, on a worldwide basis, administrative procedures relating to national and regional trademark applications and the maintenance of trademark registrations. 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 generally vary from one country to another and the TLT has successfully introduced standard requirements to be followed in procedures before trademark offices.

In order to keep pace with developments in telecommunication and to create an institutional framework allowing the adaptation of certain administrative details regulated under the treaty, the revision of the TLT envisages the inclusion into the treaty of provisions on electronic filing of trademark applications and associated communications, provisions concerning the recording of trademark licenses, relief measures when certain time limits have been missed, and the establishment of an assembly of the contracting parties.

The SCT endorsed the introduction to the TLT of a specific provision concerning communications with intellectual property offices under which contracting parties are free to choose their preferred means of communication, including electronic communication. This will transform the originally paper-based approach of the TLT without imposing a specific mode of communication.

The draft revised treaty will maintain a provision which does not allow contracting parties to require the attestation, notarization, authentication, legalization or other certification of any signature in a communication, with very few exceptions, such as the surrender of registrations. The provisions on signature accommodate recent developments such as the increasing acceptance by offices of electronic signatures or other types of identification.

The SCT also made progress on a provision relating to measures required in case of failure to comply with time limits. There was a general understanding among delegations that future contracting parties to the revised TLT should provide at least one form of reinstatement of rights. These would be made available in situations in which rights were lost due to non-compliance with a time limit, in spite of due care on the part of the person who missed the time limit.

Moreover, the Committee discussed, for the first time, provisions aiming at the harmonization and simplification of requests for the recording of trademark licenses. In this respect, a number of delegations and representatives of observer organizations supported the inclusion of provisions on the recording of trademark licenses in the treaty, while other delegations expressed some concern on the issue (see UPD/2003/211).

Finally, the SCT had a first exchange of views on a new set of final and administrative clauses for the draft TLT. These clauses provide, among other things, for the creation of an assembly constituted by contracting parties. This assembly would have the power to change the regulations under the treaty, thereby allowing the administrative framework set up by the treaty to regularly adapt to changing circumstances and new developments in trademark registration procedures.

In conclusion, the SCT requested the Secretariat to convey a recommendation to the WIPO General Assembly meeting from September 27 to October 5, 2004, to approve the convening of a diplomatic conference for the adoption of a revised Trademark Law Treaty in the first half of 2006, with the exact dates and venue for such a diplomatic conference to be decided by the preparatory meeting, and to hold tow more sessions of the SCT prior to the holding of the diplomatic conference.

Questionnaire on Trademark Law and Practice

The secretariat presented to the SCT a status report on the ongoing work concerning a recently initiated trademark law survey. A questionnaire with a large number of questions on national trademark law and practice was circulated to SCT members in August 2003, and by April 2004 there were some 70 responses, providing abundant material on the trademark laws and administrative office practice of member states. The secretariat informed the SCT that it had started to compile all responses in a provisional summary document, which is to be be published after SCT members have had an opportunity to comment on it. This document could serve as a basis for future work of the SCT.

Protection of State Emblems

The secretariat informed the SCT on the recent publication of the "Article 6ter Express" database. This database is the latest addition to the WIPO Industrial Property Digital Library (IPDL) and constitutes a free of charge on-line search facility of all signs and emblems currently protected under Article 6ter of the Paris Convention for the Protection of Industrial Property. This article of the Paris Convention provides for the protection of certain State emblems and the names, emblems and flags of International Intergovernmental Organizations, such as the UN, WHO or UNAIDS. The database contains a total of 1204 protected signs and can be accessed at https://www.wipo.int/article6ter/en/.

Internet Domain Names

The SCT discussed the protection of geographical indications against their abusive registration as domain names, and agreed that this issue would stay on the agenda of the SCT.

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