INTA Bulletin

November 1, 2010 Vol. 65 No. 19 Back to Bulletin Main Page

Amendments to Singapore Treaty Regulations Dealing with Nontraditional Marks

On September 24, 2010, the Assembly of the Singapore Treaty on the Law of Trademarks adopted, with effect from November 1, 2011, a number of amendments to Rule 3 of the Regulations under the Treaty. The purpose of these amendments is to align that rule, as far as possible, with areas of convergence of legislation and office practices regarding the representation of nontraditional marks identified by the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). The amendments as adopted by the Assembly appear in the Annex to WIPO document STLT/A/2/1.

Draft amendments prepared by the WIPO Secretariat were debated at a meeting on June 28–29, 2010, of an intergovernmental Working Group, established by the Assembly of the Singapore Treaty. INTA was represented in the Working Group by Roger Staub (Froreip Renggli, Switzerland), chair of INTA’s Nontraditional Marks Committee, and Bruno Machado, INTA Geneva Representative, who conveyed to the Working Group the views of trademark owners and trademark practitioners as expressed in contributions prepared by each of the regional subcommittees of INTA’s Nontraditional Marks Committee in response to the WIPO Secretariat’s draft.

Rule 3 of the Regulations under the Singapore Treaty deals with details concerning the application for trademark registration and, in particular, with the number and type of reproductions of the mark that can be required from applicants by the Contracting Parties. At the diplomatic conference that adopted the Treaty in 2006, however, most questions regarding the representation of nontraditional marks remained unresolved and left to the legislation of the Contracting Parties.

Even if they may fall short of more ambitious expectations, the work undertaken by the SCT to identify convergences in trademark law and practice and its translation into specific provisions in the Regulations under the Singapore Treaty constitute a significant and welcome addition to the harmonization of procedures under the Singapore Treaty.

Three-dimensional marks. New paragraph (4)(e) of Rule 3 requires only one view to be submitted on the filing date. The view must show the three-dimensional character of the mark (the requirement that the reproduction be “sufficiently clear” is already contained in Article 5(1)(a)(iv) of the Treaty).

Hologram marks. Unlike paragraph (4)(b), new paragraph (5) does not provide that the number of views to be submitted with the application is at the option of the applicant. It also does not spell out, as does paragraph (6), that such number is at the option of the office. It can, however, be deduced from the debates, as recorded in the report of the Working Group, that the Contracting Parties will interpret paragraph (5) as allowing them to require a single view or several views or to leave it to the applicant to submit either a single view or several views with its application. It should also be noted that paragraph (5) allows offices to require a description irrespective of whether the representation of the mark is considered as accurately representing the hologram—in other words, the description may be required with the application.

Motion marks. The use in paragraph (6) of “representation” instead of “reproduction” and the mention of moving images are meant to allow offices to accept a representation of the mark in the form of a video clip instead of (and not only in addition to) a graphic representation on paper. This indeed addresses most of INTA’s comments regarding the representation of motion marks. The second sentence is understood as allowing an office to require or permit the furnishing of a video recording of the movement at the examination stage. It can be regretted that multimedia marks are not addressed as such—several members of the Working Group objected that this notion was not understood.

Color marks. Paragraph (7) does not make it mandatory for offices to accept the indication of a color code at the option of the applicant but does subject the choice of a particular color code by the applicant (when such a code is required or allowed by the office) to acceptance of that code by the office.

Position marks. Paragraph (8) leaves out the manner in which matter for which protection is not claimed is to be indicated and therefore does not prevent the acceptance of other means besides broken or dotted lines (e.g., blurred photographs or written disclaimers, as suggested by INTA). It should be noted that a description can be required in all cases, and not solely where the representation is not considered sufficiently clear.

Gesture marks. These were left out, as the Working Group considered that, for the time being, they could be treated as a particular kind of motion marks, as least as far as the representation requirements were concerned.

Sound marks. This was certainly the area where one could have hoped for more audacious advances. Certain countries, however, were definitely opposed to abandoning their interpretation of the ECJ case law to the effect that sound marks can be adequately represented only as a musical notation on a staff—which excludes sound marks other than melodies. The compromise arrived at leaves it to the Contracting Parties to prescribe or allow a musical notation, a description, a recording or any combination of the above. Curiously, this excludes graphic representations other than musical notation or description in words (e.g., sonograms). At least this provision does not prevent jurisdictions that would be prepared to accept a digital recording of the sound as an alternative to a graphic representation from doing so.

As reflected in new paragraph (10), no consensus could be reached in the SCT or the Working Group on requirements for the representation of marks consisting in nonvisible signs other than sound marks (e.g., smell marks, taste marks, touch marks).

Finally, it should be recalled that the Singapore Treaty does not impose on the Contracting Parties any obligation to provide for the registration of nontraditional marks beyond their obligations, as the case may be, under Article 15.1 of the TRIPS Agreement.