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Standing Committee Focuses on Measuresto Improve Harmonization of Application of Trademark Law

Geneva, November 16, 1999
Press Updates UPD/1999/74

Specialists in trademark law met at WIPO headquarters from November 8 to 12, 1999, to discuss a cluster of issues relating to the simplification and harmonization of international trademark law. The third session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) kicked off with discussion of new measures to resolve legal problems associated with the use of trademarks and signs on the Internet. Talks also focused on trademark licensing, geographical indications and International Non-Proprietary Names for Pharmaceutical Substances (INNs). This week-long meeting was attended by delegations from 83 WIPO member States, together with 13 non-governmental organizations (NGOs) and three intergovernmental organizations.

Use of Trademarks and Signs on the Internet

The issues relating to the use of trademarks and signs on the Internet stem from the territorial nature of intellectual property rights as well as the global reach and borderless nature of the Internet which results in a single act having effect simultaneously in practically all jurisdictions of the world. Such problems include definition of the circumstances under which use of a sign on the Internet infringes trademark rights and the global effect of trademark injunctions.

As a first step in addressing the legal problems associated with the use of trademarks and signs and the application of traditional trademark law on the Internet, the SCT drew up a list of general principles. These recognize that trademark protection should apply to the Internet and that coexistence of trademarks should be possible in cyberspace under the relevant laws of each member State. The principles will serve as the basis for future discussions to determine how existing norms can be applied to trademark protection on the Internet and the extent to which a new internationally harmonized approach is appropriate. The draft provisions, which will be drawn up by the WIPO Secretariat on the basis of discussions at the Standing Committee, will be presented to the SCT at its next session in March 2000.

Practical measures to enable co-existence of conflicting rights on the Internet were also considered. Given the territorial nature of trademark rights, identical or similar trademarks can be held in different countries by different owners who are completely unrelated to one another. In cyberspace, this can result in a "conflict of rights" owing to the borderless nature of the Internet where a sign is visible on computer screens all over the world.

Trademark Licenses

Significant progress was also made in the area of trademark licensing. The SCT discussed a series of draft provisions relating to the issue of trademark licenses. These are designed to simplify and harmonize formalities associated with the recordal of licenses for the use of marks. The recordal of a license is an administrative procedure relating to the registration of a mark and is closely linked to the subject matter of the Trademark Law Treaty (TLT). The TLT was concluded in 1994 and aims to make national and regional trademark systems more user-friendly by streamlining procedures. The TLT sets out maximum requirements concerning applications for registration and requests for recordal of certain matters relating to an application for registration.

Geographical Indications

SCT members gave the go-ahead to the WIPO Secretariat to prepare a study concerning possible solutions for conflicts between trademarks and geographical indications and homonymous geographical indications. Such conflicts arise when a sign having a geographical connotation is commercially used by different parties, whereby one party uses it as a trademark and the other party as a geographical indication, and products bearing that sign are sold by both parties into the same market. Conflicts between homonymous geographical indications occur where a geographical name that exists in different countries is used to indicate the origin of a product. As a result, the same kind of products bearing the same geographical indication may be put on the market, although the actual origin of the products is different. The study is expected to be presented to the SCT for consideration at its fifth session.

International Non-Proprietary Names for Pharmaceutical Substances

With regard to the question of trademarks and International Nonproprietary Names for Pharmaceutical Substances (INNs), the SCT considered the results of a survey of WIPO member States, which gathered information on ways that trademark offices deal with applications for trademark registration that might be in conflict with INNs. INNs identify a pharmaceutical substance or active pharmaceutical ingredient by a unique name that is globally recognized and is in the public domain. The INN system has been operational since 1953 and aims to provide health professionals with a unique and universally available designated name to identify individual pharmaceutical substances. The underlying reason for ensuring that proprietary rights, including trademarks, cannot be claimed in INNs is to protect the safety of patients by allowing them to identify a specific pharmaceutical substance under one single, globally available name.

On the basis of the results of the survey, it was agreed that WIPO would collaborate, on a technical level, with the WHO to identify technical means of making INN information electronically available, to requesting WIPO members States. Improved access to such information will ensure that INNs are not misused or appropriated through the registration of trademarks.

The SCT was established by WIPO member States in March 1998 to assist in setting priorities, coordinating and streamlining the Organization's on-going work in the progressive development of the international law of trademarks, industrial designs and geographical indications.

The next session of the SCT is scheduled to take place from March 27 to 31, 2000.

For further information, please contact, Mr. Denis Croze (Trademarks on the Internet, Trademark Licensing) or Mr. Marcus Höpperger (Geographical Indications, INNs), Industrial Property Law Division:

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