WIPO makes progress towards TLT revision

The World Intellectual Property Organization (WIPO) Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) has approved some proposals to amend the Trademark Law Treaty (TLT) in the areas of communications, signatures and deadlines.

The TLT, which came into force in 1996 and became effective in the United States in 1999, streamlines and simplifies formal trademark procedures on a worldwide basis. The revision is intended, among other things, to further simplify and streamline procedures for obtaining and maintaining trademarks in member states throughout the world.

The SCT approved the following proposals:

• Contracting countries should be able to choose the means by which filings may be received (ie, electronically, on paper or both).
  
  
• The requirements regarding the language of communications for applicants should be simplified.
  
  
• Electronic signatures and other types of identification should be accepted.
  
  
• Contracting countries should provide at least one of three possible types of relief for failure to meet deadlines. Suggested relief includes an extension of the deadline, continued processing or reinstatement of rights.

A proposal to harmonize the formal requirements for recording trademark licences was tabled and will be discussed further at a future session.

The SCT also resolved certain issues relating to the protection of country names in domain names. These issues had been identified by WIPO in September 2002 as worthy of further discussion, and, if appropriate, recommendation to Internet Corporation for Assigned Names and Numbers (ICANN) for adoption. After discussion, however, the SCT decided not to recommend that ICANN:

• extend Uniform Domain Name Dispute Resolution Policy protection to names by which countries are commonly known;
  
  
• establish an arbitral appeal mechanism for country name disputes; and
  
  
• retroactively protect country names.

The question of protecting geographical indications against their abusive registration as domain names will be discussed further at a future SCT session.

The next SCT session is scheduled for April 2004.

Timothy J Kelly and Victoria JB Doyle, Fitzpatrick Cella Harper & Scinto, New York