For two weeks in March, more than 350 people gathered at Singapore's Suntec Center to finalize a new international treaty on trademarks, 12 years after the original rules came into existence. But what will the Singapore Treaty mean for rights owners? Emma Barraclough reports
Cast your mind back 12 years to 1994. Few people had Internet addresses, even fewer companies had websites and the state of the art way for would-be trademark owners to communicate with IP offices was by fax. OHIM had yet to be set up and European IP lawyers still thought of Alicante as the airport gateway to the beaches of Benidorm, rather than the geographical heart of the Community trade mark. Only a handful of marketing departments had thought of linking their brands to particular scents or sounds or textures and even fewer had asked their legal team to look into getting legal protection for their novel promotional ideas.
It was in this year that WIPO members concluded the Trademark Law Treaty. It was designed to streamline and simplify the administrative procedures that IP owners needed to follow to obtain and maintain national and regional trademarks. By creating a benchmark standard for the types of documents that would-be trademark owners and licensors needed to provide national authorities, it was hoped that the new Treaty would make their lives, and the lives of their IP attorneys, easier.
Although just 33 member countries had formally ratified the Treaty by the beginning of 2006 (see box), many more IP offices tried to adhere to its principles. But by the start of the 21st century, the 1994 Treaty was looking distinctly behind the times. In particular, a rule requiring national offices to accept paper filings looked in danger of binding officials to outmoded methods of working just as the Internet, mobile phones and BLACKBERRY devices were transforming office life.
"At the time, people were unaware of the consequences because it was just prior to the .com revolution. In the wake of digital communications and efiling, the portion of the 1994 Trademark Law Treaty dealing with communications looked out of date," says Marcus Hopperger of WIPO.
At the moment, many jurisdictions allow trademarks to be filed online, including the European Union, Hong Kong, the United Kingdom and the United States. Although no IP office forces applicants to file electronically, some of them could well want to make online filing mandatory in the future to boost efficiency and cut costs.
As a result, WIPO members decided to overhaul the Treaty and asked the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications – to which Hopperger is secretary – to prepare drafts. The new Treaty was adopted by a diplomatic conference in Singapore on March 27.
In particular, the new rules say that IP offices can specify how they want applicants to communicate with them, in anticipation that some countries might move entirely to efiling.
Dissent
Not all member states were happy with the change. Diplomats from a number of developing countries argued that trademark applicants from their countries could be disadvantaged when they tried to file abroad if they did not have easy access to high-speed Internet links. In practice, of course, the vast majority of trademark applications are handled by agents in the country where trademark protection is sought. But to allay concerns, a specific provision in the Treaty makes it clear that the rules will not apply to communications between trademark agencies and their clients, allowing attorneys to contact IP owners in whatever way they want.
Other delegates from developing countries were concerned that the paperless-filing revolution that could be ushered in by changes to the Treaty could leave their own cash-strapped IP offices far behind. In response, WIPO members resolved to provide technical assistance to developing and least developed countries in the form of legal and technological support. How that pledge is turned into specific action is still to be worked out on a country-by-country basis.
But months of preparation and consultation by the WIPO committee in charge of preparing the draft agreement meant that opposition was minimized by the time diplomats met in Singapore to thrash out the final deal. "There was a lot of discussion and debate, but no very, very difficult areas," says Hopperger.
Key changes
In addition to overhauling the rules on paper filing, WIPO member states agreed to make the Treaty apply to all kinds of marks. The 1994 agreement only covered visible signs, leaving a wide range of non-traditional marks such as sounds and smells outside its scope. The increased flexibility is important in this rapidly changing area, given the rise in the number of non-traditional marks filed over the past five years.
"Non-traditional marks make up a very small proportion of trademark applications," says Hopperger. "It's a very appealing area of law but practically it is not so important at the moment. But that might change in the future and the new Treaty makes provision for that." Of course not all IP offices accept all kinds of trademarks. The Treaty does not envisage obliging states to accept non-traditional marks, but rather sets out how an IP office should handle them, if it does accept them.
Licensing
The new Treaty aims to simplify procedures for recording licenses. At the moment, around 100 WIPO members have a framework for recording these agreements and a number of jurisdictions make it mandatory, penalizing IP owners, in one way or another, who fail to comply. But the new Treaty will require contracting parties to make it clear that failure to record a license will not affect the trademark registration itself.
Deadlines
Trademark applicants in jurisdictions that ratify the new Treaty will also benefit from new rules requiring IP offices to relax any tough rules that they apply to IP owners who miss deadlines. WIPO members agreed to introduce compulsory relief measures for applicants who fail to get their documents in on time. Rather than dismissing the application or canceling the trademark registration, IP offices will have to offer either to extend the time limits, continue to process the request or reinstate rights.
What next
March 27 saw 147 WIPO member states at the Singapore Suntec Center adopt the Treaty. Now they need to ratify the agreement to bring it into their national laws. "We have to be realistic about how long it will take them to sign up to it," says Hopperger. "But by adopting the Treaty unanimously, everyone has indicated a large degree of consensus that this is the new standard for handling trademarks."
As soon as 10 members ratify the agreement, the Treaty will come into force. This time, WIPO has been careful to make sure that many of the technical details are contained in the Treaty's regulations, rather in the body of the Treaty itself, which means that subsequent amendments can be made by an assembly of the contracting parties, rather than by a full diplomatic meeting.
Says Hopperger: "The coming into force of the Singapore Treaty creates a truly international standard for all types of trademark office procedures and all types of trademarks, including the recording of trademark licenses. It will cut red tape and bring down transaction costs for brand owners. Membership of the Treaty will grow over time, but the fact that 147 WIPO member states have adopted it unanimously is a very strong signal that the Singapore Treaty is the acceptable standard."
Contracting parties to the 1994 Trademark Law Treaty
Australia, Cyprus, Czech Republic, Denmark, Egypt, Estonia, Germany, Hungary, Indonesia, Ireland, Japan, Kazakhstan, Kyrgyzstan, Latvia, Liechtenstein, Lithuania, Monaco, South Korea, Moldova, Romania, Russian Federation, Serbia and Montenegro, Slovakia, Slovenia, Spain, Sri Lanka, Switzerland, Trinidad and Tobago, Turkey, Ukraine, United Kingdom, United States and Uzbekistan.
