November 13, 2002
Sponsoring Committee: Trademark Affairs & Policies Group
WHEREAS, INTA supports adherence to the Trademark Law Treaty (TLT), which contains a prohibition on certification requirements of signatures in trademark application and renewal procedures; and
WHEREAS, such restrictions do not specifically apply to notarization and legalization requirements for evidence submitted during administrative appeals; and
WHEREAS, notarization and legalization requirements for evidence in administrative appeals are unnecessary, unreasonable and contrary to the spirit of the TLT;
BE IT RESOVLED, that it is the position of the International Trademark Association that notarization or legalization of evidence submitted in administrative appeals or other proceedings should not be required.
BE IT FURTHER RESOLVED, that the Trademark Law Treaty be amended so that the prohibition on certification requirements specifically applies to evidence submitted in administrative appeals or other proceedings.
INTA played a significant role in ensuring that the Trademark Law Treaty, concluded in October 1994, contained a prohibition on certification of signatures during the trademark application and renewal process. Specifically, Article 8 (4) of the TLT stipulates “[Prohibition of Requirement of Certification] No Contracting Party may require the attestation, notarization, authentication, legalization or other certification of any signature or other means of self-identification referred to in the preceding paragraphs, except, if the law of the Contracting Party so provides, where the signature concerns the surrender of a registration.” The purpose of this stipulation is to simplify procedures in trademark practice and to ensure that trademark owners can obtain trademark protection in a timely and cost effective manner.
To date only 29 countries have joined the TLT. As a result, many countries still have onerous certification requirements for signatures on trademark applications and renewals. More recently, some countries, even one that is a signatory but not a member of the TLT, have considered requiring notarization and legalization of evidence submitted during administrative appeals to their trademark review and appeals boards. Such requirements will impose undue burdens on trademark owners, particularly for those who do not reside in that jurisdiction. Depending on the local practice of each country, it could take weeks or even months to have documents notarized and legalized, which will not only inevitably disadvantage foreign trademark owners but will greatly increase costs in such proceedings. A strong statement on this issue through a Board resolution would bolster INTA’s efforts to either eliminate or block certification requirements for submitted evidence in administrative appeals.
Despite the reluctance of countries to join the TLT, INTA continues to press for compliance with various provisions of the TLT through many forums. These include regional organizations like ASEAN, APEC, ARIPO, OAPI and the FTAA. The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) of the World Intellectual Property Organization is considering proposing additional provisions to the TLT such as protection of well-known marks and trademark licensing. This provides a perfect opportunity for INTA to recommend that the SCT expand the current TLT restrictions on certification requirements for signatures to evidence submitted during administrative appeals and other procedures.