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Trademark Treaties and International Law

The Trademark Treaties and International Law Committee considers the treaties of the United States and foreign countries and intergovernmental organizations, and the statutes, rules, regulations, and judicial decisions of foreign countries and intergovernmental organizations, as they relate to trademarks, trade names, and unfair competition which may affect the business of U.S. companies.
Committee members coordinate thier activities with all of the trademark-related standing committees, the International and Foreign Law Committee, and the International Education Committee. ​

 

 Committee Announcements

 
  
Announcement Description
  

Set forth below is a summary of the discussions that took place at the 34th Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (“SCT”), which I attended at WIPO Headquarters from Monday, November 16 to Wednesday, November 18, 2015.

 

1.         Design Law Treaty

 

Work on the DLT is substantially complete except for two remaining issues:  (1) technical assistance; and (2) inclusion of a requirement to disclose the use of genetic resources or their derivatives and/or the use of or derivation from traditional knowledge or one or more traditional cultural expressions in the applied-for design (“Disclosure Requirement”).  In its meeting in October 2015, the WIPO General Assembly indicated that it would “convene a diplomatic conference for the adoption of a Design Law Treaty at the end of the first half of 2017, only if the discussions on technical assistance and disclosure have been completed during the thirty-fourth and thirty-fifth sessions of the SCT.”

 

a.         Technical Assistance

 

The Secretariat proposed the following language for consideration at the 34th Session, to which there was little, if any, opposition.

 

[Article 22] [Resolution]

Technical Assistance and Capacity Building

 

[(1)] [Principles] The Organization shall, subject to availability of resources and with a view to facilitating the implementation of the Treaty, provide technical assistance, in particular to developing countries and Least Developed Countries. Such technical assistance shall

(i) be development-oriented, demand-driven, transparent, targeted and adequate for the strengthening of the capacity of beneficiary countries to implement the Treaty;

(ii) take into account the priorities and the specific needs of receiving countries for enabling the users to take full advantage of the provisions of the Treaty.

(2) [Technical Assistance and Capacity Building]

(a) Technical assistance and capacity building activities provided under this Treaty shall be for the implementation of this Treaty and, where requested, include:

(i) establishing the required legal framework and revising administrative practices and procedures of design registration authorities;

(ii) building up the necessary capacity of the Offices, including but not limited to providing training of human resources, [and providing appropriate equipment and technology as well as the required infrastructure]

(b) The Organization shall provide, subject to [allocation and] availability of resources financing for [WIPO] activities and measures that are required to implement the Treaty in accordance with paragraph (2)(a), (3)(a) [and Article 24(1)(c)]. [Moreover, the Organization shall seek to enter into agreements with international financing organization, intergovernmental organizations and governments of receiving countries in order to provide financial support for technical assistance pursuant to this Treaty.]

(3) [Other Provisions] 23

[(a) The World Intellectual Property Organization is urged to expedite the creation of a digital library system for registered designs. Contracting Parties shall endeavor to communicate published registered design information through such system. The Organization shall support Contracting Parties in their efforts to exchange information through this system.]

[(b) Contracting Parties to this Treaty [shall endeavor][are encouraged] to establish a fee reduction system to the benefit of design creators [(natural persons and small and medium enterprises (SMEs))]. [Such fee reduction system if implemented shall apply to those who are nationals of and reside in a developing country or an LDC.]]

 

b.         Disclosure Requirement

 

Article 3 of the DLT is intended to provide a closed list of items that can be required by a Contracting Party in an application for design registration.  Nigeria (on behalf of a group of African countries) proposed the following provision for inclusion as Article 3(a)(ix):  

 

A Contracting Party may require that an application contain some, or all, of the following indications or elements: . . . (ix) where the subject matter claimed in the industrial design application includes utilization of, or is directly based on genetic resources, their derivatives and the associated traditional knowledge, traditional knowledge, or one or more traditional cultural expressions, each party shall require applicants to: (1) disclose the country of origin, or if unknown, source of the genetic resources or their derivatives, traditional knowledge, or one or more traditional cultural expressions; (2) provide relevant information, as required by the national law of the Intellectual Property Office, regarding compliance with access and benefit sharing requirements, including prior informed consent; (3) if the source and or country of origin is not known, make a declaration to that effect . . . .

 

Substantial opposition remains, primarily on the basis that this provision goes beyond “filing formalities,” but instead goes to substantive examination that may vary based on the substantive law of each contracting party.  For its part, the Africa Group argues that something needs to be done to curb “illicit appropriation” of traditional cultural expressions and their belief that inclusion of such a requirement is needed to motivate applicants to disclose relevant information.

Following discussion in early plenary and informal sessions, the Africa Group circulated a simpler, alternate provision:

 

(ix)         a disclosure of the origin or source of traditional cultural express, traditional knowledge or biological/genetic resources utilized or incorporated in the industrial design;

 

During a plenary session on the second day, the Chair put forward an alternate solution.  In lieu of including a disclosure requirement provision in Article 3, the Chair suggested the addition of a new Article 1bis (incorporating a statement similar to Article 2(2) of the Patent Law Treaty): 

 

(1)          Nothing in this Treaty or the Regulations is intended to be construed as prescribing anything that would limit the freedom of a Contracting Party to prescribe such requirements of the applicable substantive law relating to industrial designs as it desires.

 

Unfortunately, no final resolution was reached; therefore, this last issue will be taken up at the next Session.

 

2.         Trademarks

 

a.         Protection of Country Names

 

Discussion on this topic was quite limited, and the topic was essentially pushed forward to the next session.  The Committee adopted SCT/34/2 as a “Reference Document” and requested the Secretariat to prepare for the next session a new working document to identify “different practices and approaches and, where appropriate, presenting existing areas of convergence” that could form the basis for future work.

 

            b.         Update on Trademark-Related Aspects of the Domain Name System

 

WIPO presented a verbal report to the Committee, which essentially consisted of a summary of document SCT/34/3.  There was no discussion of any significance among the delegations on this topic.

 

c.         Geographic Indications

 

Various European Countries continue to push for a separate register for Geographic Indications.  The U.S. delegation asked for a further study to be undertaken by the Secretariat to summarize how the various countries are already handling GI’s under their respective laws.  At the Chair’s request, the country representatives submitted a proposed work plan for consideration at future meetings.

  

The Thirty-Second Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications will convene at WIPO Headquarters on November 24, 2014.  Set forth below is a summary of the proposals currently being considered.  Copies of the meeting documents are available via the WIPO website at:  http://www.wipo.int/meetings/en/details.jsp?meeting_id=32090

1.           Industrial Design Law Treaty

2.           Protection of Country Names against Registration and Use as Trademarks

3.           Trademark Related Aspects of the Domain Name System

4.           Geographical Indications

Posted 22-Oct-2014​

  

The Twelfth Session of the Working Group on the Legal Development of the Madrid System for the International Registration of Marks at WIPO is currently meeting.  Set forth below is a summary of the proposals currently being considered.  Copies of the meeting documents are available via the WIPO website at:  http://www.wipo.int/meetings/en/details.jsp?meeting_id=32427

Proposal to Freeze the Operation of the “Dependency” Principals in Articles 6(2), (3) and (4)

The most significant proposal under consideration is a proposal to freeze the dependency requirement.  Under the current Madrid treaties, an International Registration is “dependent” on the registration of the mark registered in the country of origin for a period of five years from the date of the International Registration.  This gives rise to the concept of a “central attack,” whereby the International Registration (including the trademark rights in all of the countries designated in the International Registration) are susceptible to attack by attacking the in a single proceeding, namely by cancelling the basic registration (i.e., the registration of the mark in the country of origin).  One justification originally put forward for the dependency principal was as a means to help prevent the Madrid treaties from being used to facilitate bad faith registrations.  To temper the potential impact of the dependency principal, the Madrid Protocol introduced the concept of “transformation” – a process whereby an International Registration cancelled as a result of a central attack can be transformed into individual national registrations in those countries previously designated in the cancelled International Registration.

The current proposal would freeze the application of dependency with respect to all future Madrid applications (dependency would continue to apply with respect to all International Registrations issued from Madrid applications filed prior to the effective date of the proposed change).  One practical effect of the proposal is likely to be a reallocation of costs to attack or defend an International Registration.  For example, in the event of a successful central attack under the current system, the International registrant bears the costs of transformation to preserve its trademark rights in the countries previously designated in the cancelled International Registration.  By comparison, under the current proposal, the attacking/challenging party would bear not only the cost to attack the country of origin registration, but would also bear the cost of separately challenging the International Registration in each country designated in the International Registration.

 

Proposed Amendments to Common Regulations

1.           Proposed Amendments to Rule 5 – FAILURES IN POSTAL AND DELIVERY SERVICES OR COMMUNICATIONS SENT ELECTRONICALLY

Provide relief if failure to respond timely is due to force majeure relating to the mode of delivery (either by post or by electronic means) (such as local internet outage).  Would require due care and evidence of the circumstances (“reliable and verifiable information of the situation”).

This would be in addition to “continued processing” option under proposed Rule 5bis, which will be submitted to the Madrid Union Assembly in September 2014 (but, if adopted, “continued processing” will require a fee and must be submitted within two months following expiry of the time limit concerned).

2.           Proposed Amendments to Rule 9 - VOLUNTARY DESCRIPTION OF THE MARK

Amend Rule 9 so that applicant may provide a description of the mark (i) even if one is not provided in the basic application and (ii) which may or may not be identical to the one in the basic application or registration.

3.           Proposed Amendments to Rule 21 – REPLACEMENT

The proposed amendments would make it possible for the IB to act as a conduit or clearinghouse for requests to the Offices of Contracting Parties to take notice of a replacement.  No fee would be charged by the IB, but Office of Contracting Parties could charge a fee.

Replacement – a subsequent IR replaces a prior national or regional registration where:  (i) both are owned by the same entity, (ii) and all the goods/services in the national or regional registration are also listed in the IR.

4.           Proposed Amendments to Rules 24 and 36 - SUBSEQUENT DESIGNATIONS

Amendments would (i) require IB to review ID if different from IR; (ii) allow IB to charge a fee; (iii) provide exemption from fee for filings that are limited updating contact information; and (iv) provide for use of an e-form for subsequent designations.

Proposal for the Introduction of the Recordal of Division or Merger Concerning an International Registration

Would set up centralized procedures at the IB for dividing an IR and for “re-merging” previously divided IBs.

Posted 22-Oct-2014​

 

 Committee Calendar

 
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