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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
  

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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