Member States Make Progress in Revising International Trademark Law Treaty (TLT)
Geneva, November 24, 2003
Press Updates UPD/2003/211
Member states of the World Intellectual Property Organization (WIPO) made headway in discussions to further simplify and streamline procedures for obtaining and maintaining a mark last week at the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). The meeting in Geneva from November 10 to 14 was attended by 79 member states, 3 intergovernmental organizations and 10 non-governmental organizations, also addressed the protection of Geographical Indications (GIs) and domain names.
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 order to keep pace with technological developments and other legislative improvements adopted in the framework of the Patent Law Treaty (PLT) (see PR 2000/222), the revision of the TLT includes provisions on electronic filing of trademark applications and associated communications, relief measures when certain time limits have been missed, the establishment of an assembly, and the possibility to incorporate the provisions contained in the Joint Recommendation on Trademark Licenses (see PR/2000/243).
SCT members considered the possiblity of holding a Diplomatic Conference to consider the revision of the TLT in 2005 as outlined in the Program and Budget for 2004-2005. A decision on this matter is expected at the next meeting of the SCT in April 2004.
The SCT approved the proposal on 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, by electronic means only, or both on paper and by electronic means.
It was also agreed to reduce and simplify requirements regarding the language of communications. Although the treaty mentions the principle according to which no Contracting Party may require the attestation, notarization, authentication, legalization or any other certification of any signature in a communication, offices which receive communications in more than one language may require a translation by an official translator or a representative. There is flexibility as to the actual presentation of a communication, as long as it corresponds to the contents of the relevant Model International Form provided for in the Regulations. The objective of these forms is to establish greater clarity for an applicant by outlining a list of maximum details to be supplied to the Office.
The provisions on signature accommodate recent developments such as the increasing acceptance by Offices of electronic signatures or other types of identification. Contracting Parties, however, remain free to require the original paper copy of any electronic communication transmitted to the office, within a reasonable period of time.
The SCT also approved, in large part, a provision on measures in case of failure to comply with time limits. The provision requires Contracting Parties to provide at least for one of three possible types of relief, namely extension of the time limit, continued processing or reinstatement of rights. The number of exceptions to the possibility of obtaining relief is limited, and Contracting Parties may not make demands beyond those contained in the treaty or in the regulations.
The Committee's discussions on Trademark Licenses reflected divergent opinions about whether or not to include the relevant provisions in the draft revised TLT. Many delegations and all private sector representatives, supported inclusion of the provisions contained in the Joint Recommendation on Trademark Licences, adopted by the WIPO and Paris Assemblies in September 2000. Some delegations, however, opposed their incorporation into the draft revised TLT. The SCT decided to continue this discussion at its next session.
The Joint Recommendation aims at harmonizing and simplifying the formal requirements for the recordal of trademark licenses. It therefore supplements the TLT which is designed to streamline and harmonize formal requirements set by national or regional offices for the filing of national or regional trademark applications, the recordal of changes or the renewal of trademark registrations. This Joint Recommendation - a soft-law, non-binding instrument - is a product of WIPO's policy to adapt to the fast pace of change in the field of industrial property by considering new options for accelerating the development of international harmonized common principles.
The SCT also noted the December 2003 deadline for replies to the questionnaire on Trademark Law and Practice. This survey will help identify issues for the further development of international trademark law, and promote the convergence of international trademark law and practice, by fostering a common approach to the examination of trademark applications. The survey's preliminary results will be presented to member States in 2004.
Internet Domain Names
The SCT also finalized its discussion of a number of issues relating to Internet domain names, specifically in relation to the Second WIPO Internet Domain Name Process. WIPO had initiated this Process in July 2001 to examine whether, in addition to trademarks, a number of other identifiers should be protected against their abusive registration as domain names. In September 2002, WIPO's member States recommended that the scope of the Uniform Domain Name Dispute Resolution Policy (UDRP), which is currently limited to trademarks, be extended to protect the names and acronyms of international intergovernmental organizations (IGOs) and country names. WIPO has transmitted these recommendations to the Internet Corporation for Assigned Names and Numbers (ICANN) which is responsible for adopting any amendments to the UDRP. ICANN is currently in the process of considering their implementation.
WIPO member States had, also in September 2002, identified three other issues in the area of country names where they felt further discussion was necessary in order to decide whether additional recommendations should be made to ICANN, as follows:
(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 has now decided not to recommend extending this proposed protection also to names by which countries are commonly known;
(ii) Whether to establish an arbitral appeal mechanism for country name disputes: Under the current UDRP, a complainant is required, when filing the complaint, to submit to the jurisdiction of the national courts either at the registrar's principal office or at the domain name holder's address. This requirement is meant to facilitate a losing respondent's recourse to a national court of justice. Since sovereign States might find it difficult to submit to the jurisdiction of another country's courts, member States discussed whether States should instead submit to a special de novo arbitration appeal procedure, i.e. a judicial non-court procedure to decide the dispute anew. The SCT has now decided, however, not to recommend the establishment of such a mechanism.
(iii) Whether protection should be extended retroactively: The September 2002 recommendations to ICANN proposed that country names be protected against future domain name registrations only and had deferred the question of retroactivity. The SCT decided, at its previous (tenth) session, not to recommend that protection of country names be extended retroactively.
Thus, with regard to country names, there is no present intention to make additional recommendations to ICANN. ICANN will be informed accordingly.
The SCT also discussed the protection of geographical indications against their abusive registration as domain names, and will continue to do so at its next session.
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