Key WIPO Committee Continues Work on Range of International Trademark Issues
Geneva, November 21, 2006
Press Updates UPD/2006/281
Member states of the World Intellectual Property Organization (WIPO) meeting under the auspices of the Standing Committee on Trademarks, Industrial Designs and Geographical Indications (SCT) in Geneva from November 13 to 17, 2006, addressed a range of issues relating to trademark and industrial design law and practice in WIPO member states. Discussions focussed, in particular, on new types of marks, International Nonproprietary Names for Pharmaceutical Substances (INNs), trademark opposition procedures, trademarks and their relationship with copyright, the procedures for protecting flags and state emblems as well as the names and abbreviations of intergovernmental organizations, customary names associated with biodiversity, and certain aspects of industrial design registration. Delegations representing 89 WIPO member states and 17 observer organizations participated in the meeting.
Delegates continued to examine different approaches by member states to the representation and description of new marks such as three-dimensional marks, audio marks, single color marks, holograms, and olfactory (smell) marks, with a view to identifying areas of convergence and to exploring in greater detail the relationship between established trademark principles and new types of marks, for example, in terms of functionality, specialty and distinctiveness. Issues of public interest, including the need to safeguard the public domain were also addressed in these discussions.
The types of signs that are nowadays considered capable of constituting a trademark have expanded beyond works or figurative devices. Moreover, visually perceptible signs are being used in trade together with signs, which may not, in themselves be visually perceptible, but have a potential for distinguishing goods and services. Other signs may be visible and yet differ from the traditional notion of signs constituting trademarks by one or more of their features.
Trademark Opposition Procedures
The SCT also addressed the issue of trademark registration opposition procedures which offer third parties the opportunity to oppose the registration of a trademark within a certain period of time provided by the applicable law. Delegates agreed to continue work on the grounds of opposition, to examine the experience of SCT members with regard to pre-registration or post-registration opposition and the relationship between given types of examination systems and their related opposition procedures.
International Non-Proprietary Names for Pharmaceutical Products (INNs)
The SCT also agreed on a number of proposals for making information on International Non-Proprietary Names for Pharmaceutical Products (INNs) available to trademark administrations of interested countries. These proposals include the circulation of cumulative lists of INNs on CDs. This initiative, undertaken in cooperation with the World Health Organization (WHO), will help to prevent conflicts between INNs and trademarks and to discourage use as trademarks of commercial names derived from INNs.
INNs, of which there are currently 8,000, identify pharmaceutical substances or active pharmaceutical ingredients and each INN is a unique name that is a globally recognized generic name for an active substance used in pharmaceutical preparations. The aim of the INN system is to provide health professionals with a unique and universally available designated name to identify each pharmaceutical substance. With the growing number of INNs and trademarks, the possibility of conflicts between them has gradually increased. The main source of conflict is usually an attempt by a manufacturer to propose a new trademark containing "stems" which are word elements established in the INN system to demonstrate the relationship between pharmacologically related substances. By the use of common "stems" medical practitioners can recognize that the substance belongs to a group of substances having similar pharmacological activity.
Non-Exclusive List of Customary Names Associated with Biodiversity
The Committee also took note of a non-exclusive list of customary names used in Brazil associated with biodiversity and presented to the Committee by the Delegation of Brazil. Such a list will help to inform would-be trademark applicants as well as trademark registration authorities of the generic nature of these terms in Brazil. Among others, such initiatives are expected to have some impact on avoiding the appropriation, by private parties, of generic terms used for the designation of plant genetic resources.
With regard to industrial designs, the SCT agreed to promote a better understanding of the various industrial design registration systems and to develop a questionnaire on the formalities of industrial design registration in member countries. It further agreed to explore the borderlines between all types of marks and industrial designs and agreed to further focus on the jurisprudence in member states in dealing with the overlap between copyright and trademarks, including new types of marks, with a particular focus on identifying existing and potential problems.
Protection of State Emblems and Abbreviations of Non-Governmental Organizations
Delegates also agreed to continue work on the enhancement of certain aspects of the procedure for the protection of State emblems and names and abbreviations of international organizations under Article 6ter of the Paris Convention, including the revision of a searchable on-line database.
The next meeting of the SCT is scheduled to take place from May 7 to 11, 2007.
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