WIPO Completes New Trademark Treaty; Impact Remains To Be Seen

A new international trademark law treaty could streamline procedures for global protection of marks of developed and developing countries, but it is unclear what the impact will be on the majority of members of the World Intellectual Property Organization.

The Singapore Treaty on the Law of Trademarks updates the 1994 Trademark Law Treaty, to which there are 33 contracting parties, a cross-section of developed and developing countries. The new treaty will enter into force when 10 WIPO members ratify it, according to Marcus Hopperger, acting director of the WIPO trademark law division. Countries already signed up to the 1994 treaty are “very much” expected to ratify the new one, Hopperger said in an interview.

No country is required to ratify it, but countries may see an advantage in being able to participate in the expected assembly of contracting parties that could set standards (such as the size of a mark reproduced on application forms), Hopperger said. Major changes to the treaty would require another formal negotiation of all member states.

The treaty is without penalties, instead a technical agreement that stands alone unlike a World Trade Organization agreement which would be subject to WTO dispute settlement procedures.

In Singapore, developing countries raised concerns that new standards on electronic communications not apply to them if they do not choose so, Hopperger said. He assured countries that in carrying forward much of the substance of the 1994 agreement, the new treaty has “preserved all flexibilities.”

He also said it was clarified at the conference that the worldwide trademark system functions “very much at the local level.” Companies may only file for trademarks where they are based, but it was made clear in the new treaty that there would be no affect on agents who work with clients to obtain trademark protection in other countries.

Hopperger said the new treaty introduces electronic communications to the 1994 Trademark Law Treaty. The earlier treaty made it compulsory for trademark offices to accept applications in paper form, but in order to reflect technological changes, now offices have the freedom to accept either paper or electronic filings. He stressed that it does not mandate the acceptance only of electronic filings, and that the content of filings will be the same either way.

The new treaty also reflects a rise in new types of trademarks from “traditional” visible signs such as labels to non-traditional trademarks such as sounds or smells. For instance, he said, the ring tone of Nokia mobile phones is trademarked. “This is a very new area of the law that generates a lot of interest,” Hopperger said. But so far, visible signs remain the “vast majority” of trademarks.

On the non-traditional, non-visible marks, he said the treaty contains provisions, but no obligations for contracting states to register them.

According to WIPO, during the negotiation, some developing and least-developed countries expressed concern about whether they could fully benefit from the treaty. This resulted in a “firm commitment” by industrialised countries “to provide adequate technical assistance and other forms of support to strengthen the institutional capacity of those countries to … take full advantage of the treaty,” WIPO said in a statement. Participants in the 13-31 March diplomatic conference in Singapore included 162 delegations plus intergovernmental organisations and non-governmental organisations.

Idris Highlights Investment Boost

WIPO Director General Kamil Idris told the conference that the new treaty would be of “significant importance for member states of WIPO, for brand owners and for the public at large.” The treaty will improve the climate for trade and investment, and provide simplified procedures including electronic communications for national and regional trademark administration authorities, he said.

Idris also said the new treaty would “contribute to enhancing legal security for intangible assets as member states commit to adopting simplified and internationally harmonised administrative rules for trademark protection.” Part of WIPO’s mission, he added, is “to help shape a business environment conducive to investment in creative industries, including the branded goods industry.”

During the conference, Singaporean Deputy Prime Minister S. Jayakumar backed stronger enforcement measures for intellectual property rights, and said that WIPO’s work promoting IP protection and harmonising IP rules “must continue.” “With the increase in cross-border trade and transactions, this work will continue to grow in importance,” he said. Singapore is an advanced developing country, but many less developed country governments have shown concern with the drive toward stronger IP protection and harmonisation.

Idris thanked Singapore for hosting the event, and pledged WIPO’s continued support for more development of the country’s IP infrastructure. He said WIPO views Singapore’s role as an “IP hub,” and called the government’s commitment to IP “a model for the region and the developing world.” This echoed a phrase that Michael Ryan, a WIPO-funded technical assistance provider, used in a recent interview when he said his mission is to find supportive countries to become models in their regions.