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The Singapore Treaty on the Law of Trademarks

The Singapore Treaty on the Law of Trademarks. Kiev March 15 2011. Noëlle Moutout Assistant Legal Officer. The Singapore Treaty. Scope and Characteristics Application The Resolution Supplementary to the Treaty. Background. Trademark Registration Variety of international requirements

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The Singapore Treaty on the Law of Trademarks

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  1. The Singapore Treaty on the Law of Trademarks Kiev March 15 2011 Noëlle Moutout Assistant Legal Officer

  2. The Singapore Treaty Scope and Characteristics Application The Resolution Supplementary to the Treaty

  3. Background Trademark Registration • Variety of international requirements • Inconsistencies generate additional costs • Excessive complexity • Could be an obstacle to trade • Certainty is a key element

  4. Background The Trademark Law TreatyTLT 1994 • Approved by a Diplomatic Conference • Geneva, October 10 to 28, 1994 • 97 States and Intergovernmental Organizations • 20 Non-Governmental Organizations • In force on August 1, 1996

  5. Singapore Treaty Revision process • Provided for by Article 18 TLT • 2 subsequent treaties [essentially] on the same topic • 2 separate legal instruments • Relations between both: Article 27 SG Treaty

  6. Singapore Treaty Objective • Harmonize and simplify the formalities relating to trademark registration procedures • Update the TLT 1994 • enhance the scope of the Treaty • introduction of: • electronic communications • relief measures concerning time limits • provisions relating to TM licenses • Establishment of an Assembly

  7. Singapore Treaty Harmonization • Definition of maximum requirements for • applications • requests for • changes of names or addresses • changes of ownership • corrections of mistakes • renewal • Term of registration • Application of PC to service marks

  8. Singapore Treaty Simplification • Filing date requirements • Multi-class application and registration • Use of the Nice Classification • No legalization or certification of signatures except in case of surrender of a registration • No extracts from registers of commerce

  9. Singapore Treaty Scope • Dynamic framework for defining harmonized rules on administrative trademark procedures • Wider scope of application than TLT: all marks registrable under national law • Regulations define details concerning • representation of hologram and non-visible marks • requirements for e-filing

  10. Singapore Treaty An international revised frame • Procedures before the Trademark Offices • Procedures not derived from the Madrid System • No “interface” (like for PLT↔PCT) [revision or amendment of the PCT will apply to the PLT if so decided by the Assembly]

  11. Singapore Treaty Which Trademark Offices? • Offices of the Contracting Parties • Offices of International Intergovernmental Organizations mentioned by the Treaty • ARIPO: African Regional Intellectual PropertyOrganization • OHIM: Office for Harmonization in the Internal Market • AIPO: African Intellectual Property Organization [Not the International Bureau]

  12. Singapore Treaty Modernity and Flexibility • Guidelines on non-traditional trademarks registration • Flexibility in the forms and means of communication freedom to choose in accordance to the technological means available in each jurisdiction

  13. Singapore Treaty • Approved by a Diplomatic Conference • Singapore, March 13 to 28, 2006 • 150 States and Intergovernmental Organizations + observers and Non-Governmental Organizations • In force on March 16, 2009

  14. Contracting Parties (24) • Entry into force:March 16, 2009 • Australia • Bulgaria • Denmark • Kyrgyzstan • Latvia • Republic of Moldova • Romania • Singapore • Switzerland • United States of America

  15. Contracting Parties 2 • Spain May 2009 • Estonia August 2009 • France November 2009 • Russian Federation December 2009 • Mali not yet in force * • Mongolia March 2011 • Netherlands not yet in force * • Poland July 2009 • Liechtenstein March 2010 • Slovakia May 2010 • UkraineMay 2010 • Italy September 2010 • Macedonia October 2010 • Serbia November 2010 • Croatia April 2011

  16. Singapore Treaty Main Characteristics of the SG Treaty

  17. Singapore Treaty Abbreviated Expressions – Article 1 New specific expressions: • Communication • Procedure before the Office • License, licensee • Diplomatic Conference • Assembly • TLT 1994

  18. Singapore Treaty General structure of the Treaty • Articles 2 to 21: “vertical issues” requirements concerning trademark applications and registration • Articles 22 to 32: constitutional issues provisions relating to the entry into force and administration of the Treaty

  19. Singapore Treaty General structure of the provisions List of maximum requirements Prohibition of other requirements Evidence in case of doubt

  20. Singapore Treaty Provisions relating to requirements • Scope of the Treaty • Presentation of applications • Communications - form and means - types • Relief measures • Inscription of licenses

  21. Singapore Treaty Administrative clauses • So-called “constitutional” provisions • In each international treaty • Treaty law rather than trademark law

  22. Singapore Treaty Administrative clauses • Assembly • International Bureau • Procedure to become part of the Treaty • Application of the TLT 94 and the SG Treaty • Entry into force, effective date of ratifications and accessions • Reservations, denunciation…

  23. Singapore Treaty Regulations – Article 22 • Rules on administrative procedures • Useful details in the implementation or matters expressly mentioned in the Treaty • Contain the MIF • Treaty prevails in case of conflict

  24. Singapore Treaty Assembly – Article 23 • Amendment of the Regulations • Innovation: TLT does not have a body in charge of amendments (“irregular”)

  25. Singapore Treaty Assembly • Composition: one delegate for each Contracting Party • Mission: • Deal with matters concerning the development of the Treaty • Amend the Regulations and Model International Forms • Advantage: simplifies the future revision of the Regulations

  26. Singapore Treaty First SG Treaty Assembly • Geneva, September 22 to October 1, 2009 • Discussion: - Rules of Procedure - Assistance in the implementation of the Singapore Treaty - Future work: initiate the revision process for Rule 3(4) a (6)

  27. Singapore Treaty Becoming party & entry into force Article 26 • Any WIPO Member State • Intergovernmental organization which maintains a registration office • States for which TMs are registered through another Office, an IGO or an Office common to a group of States • Effective Date = deposit of instrument • In force 3 months later

  28. Singapore Treaty Application of the TLT – Article 27 • SG Treaty prevails for parties of both treaties • Common norm applied between parties to the SG Treaty and parties to the TLT not party to the SGT • 2 international law principles: • Lex posteriori derogat priori • Lex specialis

  29. Singapore Treaty Reservations Article 29 • Special kinds of marks • Multi-class registration • substantive examination on the occasion of renewal (service marks) • certain rights of the licensee • accompany the instrument of ratification or accession • withdrawn at any time

  30. Singapore Treaty No Transitional Provisions • TLT Declarations: • single application for G&S • single power of attorney • prohibition of certification • single request for a change • use evidence for renewal • substantive examination for renewal • TLT provided that declarations would lose effect on October 28, 2004

  31. The Resolution by the Diplomatic Conference Supplementary to the Singapore Treaty and the Regulations

  32. Singapore Treaty Background • status of resolutions and declarations to treaties • provisions contained in other international treaties on “special and differential treatment” • as opposed to reservations, which seek to exclude or limit the legal effect of a provision

  33. Resolution Objective of the Resolution • Clarify de meaning of specific provisions of the treaty • Understanding on measures to facilitate the implementation of the treaty in developing and least-developed counties (LDCs)

  34. Resolution Content of the Resolution 1. Name of the Treaty 2. Procedure before the Office 3. Understanding between parties on new types of marks and electronic communications 4. Special provisions on technical assistance 5. Dispute settlement

  35. Resolution “Procedure before the Office” • Article 1(viii) “any procedure in proceedings before the office with respect to an application or a registration” • Resolution: It will not cover judicial procedures under the Contracting Parties’ legislation

  36. Resolution New types of marks and electronic publication • Any obligations : • to register new types of marks • to implement electronic filing systems or other automation systems • Each CP shall decide whether and when to provide for registration of NTM

  37. Resolution Technical Assistance • with a view to facilitating implementation of the treaty in developing countries and LDCs • to take full advantage of the Treaty • WIPO and CPs provide adequate technical assistance comprising: • technological; • legal and other support

  38. Resolution Objective of the assistance • Improve the information and communication technology infrastructure in DCs and LDCs • Contribute to narrowing the technological gap between Contracting Parties

  39. Resolution Engagement to share • on a multilateral basis: information and experience on: • legal • technical • and institutional aspects • for the implementation of the Treaty • “how to take full advantage of opportunities and benefits”

  40. Resolution Acknowledging special situation and needs of LDCs • Special and differential treatment • LDCs are primary and main beneficiaries of technical assistance provided • by Contracting Parties • by WIPO

  41. Resolution Technical assistance: content • Assistance in establishing a legal framework • Information, education and awareness raising • Assistance in revising administrative practices and procedures • Building up the necessary trained manpower and facilities

  42. Resolution Monitoring implementation & Dispute settlement • Assembly monitors and evaluates the assistance’s progress • Any dispute relating to the Treaty: • interpretation • application • to be settled through consultation and mediation under the auspices of the Director General of WIPO

  43. Resolution Follow-up • Report to the WIPO General Assembly (September 25 to October 2, 2006) • Coordination to “give effect” to the Singapore Resolution • Discussions on legal and technical cooperation to be provided, such as the development of automated systems

  44. Benefits of the SG Treaty For TM Owners of Contracting Parties • Modernization of legal framework for trademark administration • Streamlining of national procedures • Reduction of backlogs and increase turnover of files • Alignment with the Madrid System • Potential benefits of e-filing

  45. Thank you noelle.moutout@wipo.int

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