Negotiators Consider Measures to ProtectTrademarks in Cyberspace
Geneva, September 19, 2000
Press Updates UPD/2000/107
Negotiators have agreed in principle on a set of provisions to protect marks and others industrial property rights in cyberspace in a bid to prevent conflicts related to the use of signs on the Internet. In a meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), held at the headquarters of the World Intellectual Property Organization (WIPO), delegates agreed on guidelines to facilitate the application of existing trademark law into cyberspace and on limited exceptions to the principle of liability.
At the meeting, attended by delegations from 86 WIPO member states, 5 intergovernmental and 17 non-governmental organizations from September 11 to 15, 2000, negotiators reached consensus on most of the substantial provisions of the text which will be submitted for adoption to the next session of the Standing Committee in March 2001.
The borderless character of the Internet and new forms of use of signs, made possible by technological advances (metatags, URLs, keywords ), challenge the territorial nature of industrial property rights which are granted by national or regional authorities and are territorially limited. Trademark law makes it illegal for anyone, without the consent of the owner to use the mark or a sign identical or similar to it in the territory where it is protected. The draft provisions are intended to facilitate the application of existing national laws to legal problems arising as a result of the use of signs on the Internet.
Under the established system, which covers the acquisition, maintenance or infringement of trademarks rights, identical signs for goods or services in different categories can co-exist in different countries. The Internet, however, as a global communications medium offers an owner of a trademark a simultaneous and immediate presence irrespective of territorial location. It is, therefore, the source of potential conflicts between owners of marks claiming entitlement to the use of an identical sign on the Internet. The draft provisions seek to safeguard the interests of legitimate owners of trademarks and avoid conflicts by setting out conditions that will enable the co-existence of similar marks on the Internet. This constitutes a major innovation in trademark law.
Since each country has a different intellectual property legal framework, these measures will make it possible to link the use of a trademark on the Internet to the industrial property laws of a specific country. They are also designed to enable the co-existence of marks in cyberspace, through the use of specific disclaimers. This will help to avoid the imposition of global injunctions which would be detrimental to the further growth of electronic commerce.
The SCT also considered possible solutions for conflicts between trademarks and geographical indications (GIs) and for conflicts between homonymous geographical indications. The SCT agreed on the need to consider this question further and requested the Secretariat to prepare a background paper to improve understanding of the associated legal issues. This paper will be submitted for discussion to the next session of the SCT in 2001.
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