WIPO takes further step towards TLT revision

The member states of the World Intellectual Property Organization (WIPO) have called a diplomatic conference for the revision of the Trademark Law Treaty (TLT). The conference will take place in March 2006. It aims to (i) update the TLT in order to keep pace with technological advances in telecommunications, and (ii) simplify procedures for the registration of trademarks.

Originally required to harmonize substantive as well as procedural aspects of the trademark laws of the member states, the TLT was concluded in 1994. The TLT now has 33 member states, including Australia, Germany, Japan, the United Kingdom and the United States.

The TLT has successfully introduced standard requirements and procedures for trademark registrations before the trademark offices of the member states. In addition, WIPO has issued model international forms for, among other things:

• trademark applications;
  
  
• powers of attorney; and
  
  
• requests for the recordal of changes.

The model international forms are a useful tool for multinational companies that handle numerous trademark applications and registrations.

The WIPO Standing Committee on the Law of Trademarks, Industrial Designs Geographical Indications (SCT) held a meeting from April 26 to 30 2004 and put forward a number of matters for discussion at the diplomatic conference. They include the following topics:

• Electronic filing of trademark applications and associated communications: the originally paper-based approach of the TLT should be modified. The contracting parties should be free to choose their preferred method of communication, including electronic communication. This means that the trademark office of any contracting party may choose whether to accept hand copy filings only, electronic filings only or both.
  
  
• Recording of trademark licences: the SCT discussed the introduction of provisions that aim to harmonize and simplify the recordal of the licensing process by setting out a maximum list of factors and conditions that may be required by national or regional authorities. However, there are divergent opinions on this issue since many member states impose very strict conditions.
  
  
• Relief measures when certain time limits have been missed: there is a general understanding that member states should at least provide one form of reinstatement of rights. They should be made available in situations in which rights were lost due to non-compliance with a time limit, in spite of due care on the part of the person who missed the time limit.
  
  
• Assembly of the member states: an assembly of the member states shall be established. The assembly would have the power to change the regulations under the TLT allowing it to adapt regularly to changing circumstances and new developments in trademark registration procedures.

The SCT fine-tuned the revision text at a meeting in Geneva in late October.

Gabriela Kennedy and Florian Bottenschein, Lovells, Hong Kong