The Singapore Treaty on the Law of Trademarks

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

2. The Singapore Treaty Classification of Goods and Services and Multi-class Application Division of Application and of Registration Prohibition of Other Requirements

3. The Singapore Treaty Multi-class application • Article 3(2): One and the same application may relate to several G/S, irrespective of whether they belong to  classes

4. The Singapore Treaty Multi-class application • Article 9: • Indication of G/S by their names, grouped by class(es) of the Nice Classification, in order • Classes are not criteria for determining similarity or dissimilarity of G/S • Circumstances have to be considered

5. The Nice Classification – 1957 Principles • Exclusively for trademark registration • Obligation for Member States: indication of the classes in official titles and publications • Also • Obligatory for organizations • IB – BOIP – OHIM – AOPI – ARIPO • Other countries not party to the Nice Agreement

6. The Nice Classification Contents 34 classes for goods and 11 classes for services [9th edition] • alphabetical list of 11000 indications Authentic texts in French and English + official version in Spanish

7. The Nice Classification Legal effect • attributed by each party (Art. 2 – Nice Agreement) • does not bind its Members in respect of the extent of the protection afforded to any given mark

8. Singapore Treaty Single registration • A multi-class application will result in a multi-class registration [Article 6] • The application can not be subsequently split into two or more registrations • Unless application divided under Article 7

9. Singapore Treaty Division – Article 7 • Relating to one or more of the G/S (single or multi-class application) • When objection concerns part of the list of G/S

10. Singapore Treaty Division • Of the application - until the decision on the registration of the mark - during any opposition proceedings - during any appeal proceeding against the decision  divisional application proceeds to registration

11. Singapore Treaty Division • Of the registration - during any proceeding challenging the validity of the registration - during any appeal proceeding against the decision • Or at any time for commercial reasons

12. Singapore Treaty Division • Contracting parties are free to: - establish requirements for application division, including fees - exclude division if pre-registration opposition exists

13. Singapore Treaty Prohibition of other requirements • Structure of the provisions: • list of maximum requirements: exhaustive list • other permitted requirements • prohibition of additional requirements

14. Singapore Treaty Prohibition of other requirements • Articles: • 3 Application • 4 Representation; address for service • 5 Filing Date • 8 Communications • 10 Changes in name or address • 11 Change of ownership • 12 Correction of a mistake • 13 Duration and renewal of registration • 14 Relief measures • 17 Recordal of a license

15. Singapore Treaty Prohibition of other requirements • Certificate or extract from register of commerce • Indication of industrial or commercial activity • Activity corresponding to the G/S • Evidence of registration or renewal in another country • Advertisement of a change • Reproduction for renewal

16. Singapore Treaty Prohibition of other requirements • However: • Possibility to require additional info: • Registrability of the mark (consent, compliance w/ Article 6ter of the PC) • Ability to file (minor, person under tutelage) • Evidencein case of doubt concerning the veracity of any element

17. Thank you noelle.moutout@wipo.int