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The Singapore Treaty on the Law of Trademarks
KievMarch 152011
Noëlle Moutout
Assistant Legal Officer
Scope and Characteristics
Application
The Resolution Supplementary to the Treaty
The Singapore Treaty
Trademark Registration
Variety of international requirements Inconsistencies generate additional costs
Excessive complexityCould be an obstacle to trade
Certainty is a key element
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
Background
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
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
Singapore Treaty
Harmonization
Definition of maximum requirements forapplicationsrequests for
changes of names or addresses changes of ownership corrections of mistakes renewal
Term of registrationApplication of PC to service marks
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
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
Singapore Treaty
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]
Which Trademark Offices?
Offices of the Contracting Parties
Offices of International Intergovernmental Organizations mentioned by the Treaty– ARIPO: African Regional Intellectual Property
Organization– OHIM: Office for Harmonization in the
Internal Market– AIPO: African Intellectual Property
Organization
[Not the International Bureau]
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
Singapore Treaty
Approved by a Diplomatic Conference
Singapore, March 13 to 28, 2006150 States and Intergovernmental Organizations + observers andNon-Governmental Organizations
In force on March 16, 2009
Singapore Treaty
Entry into force: March 16, 2009
Australia
Bulgaria
Denmark
Kyrgyzstan
Latvia
Republic of Moldova
Romania
Singapore
Switzerland
United States of America
Contracting Parties (24)
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
Ukraine May 2010
Italy September 2010
Macedonia October 2010
Serbia November 2010
Croatia April 2011
2Contracting Parties
Main Characteristics of the SG Treaty
Singapore Treaty
Abbreviated Expressions – Article 1
New specific expressions:
Communication
Procedure before the Office
License, licensee
Diplomatic Conference
Assembly
TLT 1994
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
Singapore Treaty
General structure of the provisions
Singapore Treaty
List of maximum requirements
Prohibition of other
requirements
Evidence in case of doubt
Provisions relating to requirements
Scope of the Treaty
Presentation of applications
Communications
- form and means
- types
Relief measures
Inscription of licenses
Singapore Treaty
Administrative clauses
So-called “constitutional” provisions
In each international treaty
Treaty law rather than trademark law
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…
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
Singapore Treaty
Assembly – Article 23
Amendment of the Regulations
Innovation: TLT does not have a body in charge of amendments (“irregular”)
Singapore Treaty
Assembly
Composition: one delegate for each Contracting Party
Mission:Deal with matters concerning the
development of the TreatyAmend the Regulations and Model
International Forms
Advantage: simplifies the future revision of the Regulations
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 forRule 3(4) a (6)
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
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
Singapore Treaty
ReservationsArticle 29
Special kinds of marksMulti-class registrationsubstantive examination on the occasion of renewal (service marks)certain rights of the licensee
accompany the instrument of ratification or accession withdrawn at any time
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
Singapore Treaty
The Resolution by the Diplomatic Conference Supplementary to the Singapore Treaty and the Regulations
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
Singapore Treaty
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)
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
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
Resolution
New types of marks andelectronic 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
Resolution
Technical Assistance
with a view to facilitating implementation of the treaty in developing countries and LDCsto take full advantage of the Treaty
WIPO and CPs provide adequate technical assistance comprising:
technological;legal and other support
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
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”
Resolution
Acknowledging special situationand needs of LDCs
Special and differential treatment
LDCs are primary and main beneficiaries of technical assistance provided
by Contracting Partiesby WIPO
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
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
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
Resolution
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
Benefits of the SG Treaty
Thank [email protected]
