Singapore Treaty takes effect March 2009
According to the Federal Minister for Innovation, Industry, Science and Research, Senator The Hon. Kim Carr, signing on “offers a positive example for
The Treaty is also intended to encourage national trade mark offices to take advantage of modern communication technologies. Most significantly, for the first time in any international instrument dealing with trade mark law, non-traditional marks are explicitely recognised.
Background
On 27 October 1994 the Trademark Law Treaty (TLT) was adopted by World Intellectual Property Organisation (WIPO) member States as part of an international effort to harmonise the administrative procedures of intellectual property offices around the world.
However, over time, technological advancements such as electronic filings and changes in the scope of trade mark protection have led to the need to update the TLT. Given these developments, it became necessary to review and update the TLT, resulting in the Singapore Treaty being formally adopted on 27 March 2006. This international treaty is the first treaty in Singapore’s history to bear the country’s name, as hosts of the final round of related negotiations. The Singapore Treaty does not supersede the TLT. WIPO’s aim was to make several technical and substantive changes to the TLT, whilst retaining the key provisions such as use of the Nice System for International Classification.
Singapore was the first country to finalise the ratification process in March 2007 followed by Switzerland, Bulgaria, Romania, Denmark, Latvia, Moldova and Kyrgyzstan and USA. The United Kingdom has signed but not ratified the Singapore Treaty. For the Treaty to take effect, ratification or accession by 10 member states and intergovernmental organisations is required, highlighting the significance of Australia's contribution as the 10th party to sign on.
Content of the Singapore Treaty
The Singapore Treaty covers the following key points:
Formation of an Assembly (Article 23): An Assembly of Contracting Parties has been created with the power to deal with matters concerning the development of the Treaty including amending the Regulations. By way of contrast, the TLT does not include an Assembly because of a lack of consensus over the rights of intergovernmental organisations at the time it was adopted.
Electronic Communications (Article 8): Contracting Parties can choose how they receive communications and whether they accept correspondence, including trade mark applications, by electronic means only, in paper only, or by either means. By comparison, the TLT provides that members have to allow paper filing of correspondence.
Expanded Scope of Trade Marks (Article 2): The Singapore Treaty provides for the wider range of signs that are gaining popularity and acceptance around the world. The TLT only covers visible signs but the Singapore Treaty refers to all signs that can be registered as marks in a given Contracting State, thus explicitly recognising that trade marks are no longer limited to two-dimensional labels on products. The treaty expressly mentions hologram marks, motion marks, colour marks, and non-visible signs such as sound and taste marks. According to Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog, experienced trade marks practitioners know how to represent unconventional trade marks in an application and says that under the treaty, contracting parties will be able to define relevant standards.
Licences (Article 17): Maximum administrative standards a trade marks office can require for recording, amendment and cancellation of licence interests are included. Non-recordal of a licence shall not affect the validity of the registration of the mark which is the subject of the licence. Recordal may not be required as a condition for the use of a mark by a licencee to be deemed to constitute use by the holder in proceedings a relating to the acquisition and enforcement of marks.
Relief Measures in case of failure to Comply with Time Limits (Article 14): In some instances, Contracting Parties must provide relief measures where a deadline is missed.
Impact
The Trade Marks Act (Cth) 1995 is consistent with the Singapore Treaty and no changes to the Australian Trade Marks Register are anticipated. As such, any benefits to Australia that stem from the Treaty will be to Australian exporters as a result of a more consistent, user friendly application process and potentially lower application costs due to reduced requirements for supporting documentation. Moreover, participation in the Assembly will allow Australia to influence future direction of the Treaty.
WIPO summary of the Singapore Treaty is available HERE.
