New types of marks, such as holograms and scent marks, trademark opposition
procedures, and questions relating to the registration of industrial designs
topped the agenda of the World Intellectual Property Organization (WIPO) Standing
Committee on the Law of Trademarks, Industrial Designs and Geographical Indications
(SCT).
The 18th session of the SCT, which met from November 12 to 16, 2007, was attended
by 74 member states, 3 intergovernmental organizations and 11 non-governmental
organizations, and focused on key issues that aim to establish more clarity
for the international protection of trademarks and industrial designs.
The Committee considered the approaches adopted in the legislation and trademark
office practice of member states in relation to the registration of “non-traditional
marks” such as three-dimensional marks, color marks, sound marks, scent
marks, movement marks, hologram marks, slogans or position marks.
This work will continue at the SCT’s next session, which, it is anticipated,
will identify specific areas of convergence in the law and practice of member
states in respect of these types of marks. This work aims to provide insights
and guidance to the trademark offices of member states and to users of the trademark
system in relation to the treatment of such marks in the trademark registration
process.
The SCT also considered an in-depth analysis of various aspects of trademark
registration opposition procedures which offer third parties the opportunity
to object to a trademark either before or after it was registered with a trademark
office.
Delegates worked on a set of key approaches regarding issues such as the grounds
of opposition, third-party observations made in the course of opposition procedures,
cooling off periods allowing for settlement negotiations, member states’
experience with introducing new opposition systems and the effect the abolition
of office examination as to prior rights can have on the number of oppositions
filed.
As a result, the Committee will consider, at its next session, a document identifying
areas of convergence between various national and regional offices concerning
opposition procedures.
With regard to industrial designs, meanwhile, the SCT continued its analyses
of industrial design registration in member countries. The Committee gave the
go-ahead for the second stage of a comprehensive survey on various industrial
design registration systems, covering questions of substantive design law.
The first part of the survey, which covers design registration formalities,
is well under way and a substantial amount of data has already been collected
by the secretariat. This exercise is expected to result in the mapping of the
industrial design protection landscape of member states, and was launched by
the SCT at its 16th session in (November 2006).
Delegates also took note of the enhancement of certain aspects of the procedure
for the protection of state emblems and names and abbreviations of international
organizations under the Paris Convention for the Protection of Industrial Property.
The secretariat informed the meeting about the successful launch of a new on-line
searchable database containing some 2,400 records of protected state emblems
and names, abbreviations and emblems of intergovernmental organizations. These
signs are generally not available for trademark use.
The database does not have any legal effect and inclusion of signs is of a
purely informative nature. However, this tool is widely seen as a means of improving
public access to this data and thereby enhancing the protection of these signs
against unauthorized registration or use as trademarks.
Finally, with regard to International Nonproprietary Names for Pharmaceutical
Substances (INNs), the Committee noted the past cooperation between the secretariats
of WIPO and the World Health Organization (WHO), which, in the SCT’s area
of work, had led to the distribution to trademark offices of WIPO member states,
by the SCT secretariat, of cumulative lists of INNs.
Under a WHO program, INNs provide a common generic designation of given pharmaceutical
substances and in accordance with relevant WHO resolutions, INNs should not
be registered as trademarks. SCT members have expressed great interest in obtaining
better information on INNs and the extent to which they should be considered
non-proprietary.
The SCT secretariat was mandated to follow up on this issue with the WHO secretariat,
with a view to continuing this work at the next session of the SCT, which will
take place from June 2 to 6, 2008.
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