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WIPO Committee Makes Progress On International Trademark Issues

by Ulrika Lomas, for, Brussels

22 November 2006

Member states of the World Intellectual Property Organization, meeting under the auspices of the Standing Committee on Trademarks, Industrial Designs and Geographical Indications (SCT) in Geneva from November 13 to 17, 2006, addressed a range of issues relating to trademark and industrial design law and practice in WIPO member states.

According to WIPO, discussions focussed in particular on new types of marks, International Nonproprietary Names for Pharmaceutical Substances (INNs), trademark opposition procedures, trademarks and their relationship with copyright, the procedures for protecting flags and state emblems as well as the names and abbreviations of intergovernmental organizations, customary names associated with biodiversity, and certain aspects of industrial design registration.

Delegations representing 89 WIPO member states and 17 observer organizations participated in the meeting.

With regard to new marks, delegates continued to examine different approaches by member states to the representation and description of new marks such as three-dimensional marks, audio marks, single color marks, holograms, and olfactory (smell) marks, with a view to identifying areas of convergence and to exploring in greater detail the relationship between established trademark principles and new types of marks, for example, in terms of functionality, specialty and distinctiveness.

Issues of public interest, including the need to safeguard the public domain were also addressed in these discussions.

The SCT also addressed the issue of trademark registration opposition procedures which offer third parties the opportunity to oppose the registration of a trademark within a certain period of time provided by the applicable law.

Delegates agreed to continue work on the grounds of opposition, to examine the experience of SCT members with regard to pre-registration or post-registration opposition and the relationship between given types of examination systems and their related opposition procedures.

The Standing Committee additionally agreed on a number of proposals for making information on International Non-Proprietary Names for Pharmaceutical Products (INNs) available to trademark administrations of interested countries. These proposals include the circulation of cumulative lists of INNs on CDs.

This initiative, undertaken in cooperation with the World Health Organization (WHO), will help to prevent conflicts between INNs and trademarks and to discourage use as trademarks of commercial names derived from INNs.

The next meeting of the SCT is scheduled to take place from May 7 to 11, 2007.

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