Free trade agreement will strengthen trademark protection

The Singapore government has signed a free trade agreement with the United States that will have far-reaching effects on the protection of intellectual property (IP) rights, in particular by establishing a 'national treatment' principle that will give Singaporean IP rights owners the same rights in the United States as their US counterparts (and vice versa). The agreement repeats some principles established in both countries for the protection of trademark rights and creates new obligations. For instance, the agreement requires that both countries:

• partake in the Madrid Protocol system, which Singapore acceded to in July 2001 and the United States will accede to in November 2003;
  
  
• join the Trademark Law Treaty, which the United States signed in August 2000 and Singapore has yet to sign; and
  
  
• adopt Articles 1 to 6 of the 1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks.

Under the agreement, both countries will have to ensure that, among other things:

• service, collective and certification marks, geographical indications and marks that are not visually perceptive (eg, scent marks) may be registered;
  
  
• protection afforded to well-known marks used in connection with similar goods and services under Article 6bis of the Paris Convention for the Protection of Industrial Property is extended to the use of the marks on dissimilar goods and services. However, use of a well-known mark in this context has to indicate that (i) there is a connection between the goods or services and the owner of the well-known trademark, and (ii) such use is likely to damage the interests of the owner of the well-known mark; and
  
  
• the validity of any licence of a trademark shall not be contingent on the registration of that licence.

The agreement provides two obligations regarding domain names. First, both governments have to participate in the Governmental Advisory Committee of the Internet Corporation for Assigned Names and Numbers (ICANN). Second, both countries have to ensure that domain name registrars in their territory adopt a dispute resolution procedure modelled on ICANN's Uniform Domain Name Dispute Resolution Policy. The Singapore Network Information Centre, the entity in charge of managing the '.sg' country-code top-level domain name, adopted the Singapore Domain Name Dispute Resolution Policy in 2001.

The bilateral free trade agreement is expected to come into force early next year.

Ai-Leen Lim and Edward A Madden, Colin Ng & Partners, Hong Kong