The New Singapore Treaty on the Law of Trademarks – What Does It Change?

On March 27, 146 WIPO Member States adopted by consensus the Singapore Treaty on the Law of Trademarks, concluding four years of work on the revision of the 1994 Trademark Law Treaty (TLT). This article explains why the revision of the TLT was necessary and describes the new features introduced by the Singapore Treaty.

The protection of trademarks is widely based on trademark registration procedures. Although unregistered marks can enjoy protection in many jurisdictions, the best protection for trademarks is obtained through their registration with a trademark registration authority, usually the trademark office of a country. Registration also serves a vital public interest, as trademark registers are public – registrations and applications are published regularly, and notice is given to third parties that certain specific signs are protected as trademarks. Trademark registers enable entrepreneurs to monitor their marks and the marks of competitors, and help them to "clear" new marks before introducing them into the marketplace.

As trademarks are territorial rights (national or regional), individual states maintain national trademark registries, or organize the administration at the regional level through a regional register. From the point of view of trademark owners, it is highly desirable that registration procedures are common to all national and regional trademark registers, as this increases the efficiency of administrative action and helps to contain transaction costs. This is the background against which the TLT in 1994 introduced harmonized and simplified trademark registration procedures applicable in all states party to that treaty.

Why revise the TLT?

The need to revise the TLT became apparent soon after its adoption. This was due largely to the "dot.com" revolution and to the introduction of e-mail and Internet-based communications. Such innovations were little known in 1994, when the fax-machine was still the most advanced means of communication between an applicant and a trademark office. Hence, the TLT contained provisions obliging contracting states to accept communications in paper form, with no possibility of electronic communication.

Other aspects requiring revision included the different types of marks covered. The TLT applies only to marks that consist of visible signs, with no provision for the registration of non-visible signs, such as sound marks. There were also procedural problems to be remedied. The treaty has a two-tiered structure, and procedural details are dealt with in the Regulations, the original idea being that those regulations could be amended by a decision of the assembly of the contracting parties. However, the TLT was adopted without providing for an assembly, thus making it impossible to change the regulations after their adoption. Nor does the TLT provide procedures for the recording of trademark licenses, or for relief measures when trademark holders miss time limits. It is essentially these areas to which the Singapore Treaty introduces changes.

Assembly of Contracting Parties

The new Singapore Treaty provides for the creation of an assembly of the contracting parties with powers to amend the Regulations. While this may sound bureaucratic, it is key to ensuring that the Regulations can keep pace with the sort of technological advances which will affect important administrative details, such as how a mark is represented in the application, or the nature of electronic authentication systems used in communications with an office. So the introduction of an assembly of the contracting parties to the Singapore Treaty sets up a dynamic framework for the definition of trademark office procedures, which can be adapted to respond to future developments.

Types of Marks

The Singapore Treaty is applicable to all signs that can be registered as marks in a given contracting state, but without obliging contracting parties to register specific types of marks. Thus the Singapore Treaty explicitly recognizes that trademarks are no longer limited to two-dimensional labels on products. Indeed, the Regulations under the Singapore Treaty expressly mention new types of marks, such as hologram marks, motion marks, color marks, and marks consisting of non-visible signs, such as sound or taste marks. For the time being, the Treaty does not include standardized rules as to how those marks should be represented in applications or registrations. But since they are mentioned in the Regulations, the assembly of the contracting parties will be able to define relevant standards, once the treaty has entered into force and once there is agreement on the substance of such standards. Although these sorts of marks generate a great deal of interest, they are still relatively uncommon. Out of the more than 450,000 marks in the Madrid system international registry, for example, only 29 are audio marks.

Communications

Communications touch on various procedures related to the registration of trademarks. The Singapore Treaty gives offices complete freedom to determine the form of communication (i.e. paper form or electronic form) and the means of transmittal (i.e. physical means such as postal or courier services, or electronic means such as facsimile or e-mail). However, as far as the contents of the communication and the submission of supporting documents is concerned, the standard rules of the Singapore Treaty apply. In this way, the Treaty achieves harmonization of procedures while, at the same time, permitting contracting parties to work with their preferred communication technology. It is noteworthy that, at present, no trademark office in any WIPO Member State prescribes the exclusive use of electronic communications, although a good number of offices offer e-filing, and it is only a question of time before some of those offices will give preference to e-communications. Communications between trademark agents and their clients remain unregulated as they do not fall within the purview of the Singapore Treaty.

Recording of Licenses

More than 100 WIPO Member States provide for the recording of trademark licenses, although without necessarily requesting it on a mandatory basis. Trademark licensing occurs frequently in the branded goods industry, and it is widely accepted that common rules in this area are highly desirable. The Singapore Treaty thus contains provisions relating to requests for recording licenses, and for amending or canceling recorded licenses

Procedural Relief Measures

The Singapore Treaty introduces mandatory relief measures for trademark office procedures with a view to alleviating procedural mistakes by trademark applicants, notably missed time limits, which, if not remedied, could be detrimental to rights in trademarks. A specific set of rules carefully balances the interests between the person who has missed the time limit and interests of the wider public in swift and transparent trademark office procedures.

A Treaty Fit for the Future

The Treaty will enter into force once it has been ratified by ten eligible States or intergovernmental organizations. With the adoption of the Singapore Treaty, WIPO Member States have given themselves a modern and dynamic instrument for standardizing trademark office procedures to respond in an efficient manner to future challenges to the trademark system.