The Singapore Treaty on the Law of Trademarks Kiev March 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 complexity  Could be an obstacle to trade  Certainty is a key element Background

The Trademark Law Treaty TLT 1994 Approved by a Diplomatic Conference Geneva, October 10 to 28, 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 H armonize 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 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 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

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, States and Intergovernmental Organizations + observers and Non-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)

SpainMay 2009 EstoniaAugust 2009 France November 2009 Russian Federation December 2009 Malinot yet in force * MongoliaMarch 2011 Netherlandsnot yet in force * PolandJuly 2009 LiechtensteinMarch 2010 SlovakiaMay 2010 UkraineMay 2010 ItalySeptember 2010 MacedoniaOctober 2010 SerbiaNovember 2010 CroatiaApril Contracting 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 Treaty Amend 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 for Rule 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

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 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 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 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 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 situation and needs of LDCs Special and differential treatment LDCs are primary and main beneficiaries of technical assistance provided by Contracting Parties by 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 you