WIPO Magazine, Issue No. 2, 2002

EFFORTS TO HARMONIZETRADEMARK LAWMOVE AHEAD5WIPO Magazine/February 2002By filing a patent application underthe PCT, an applicant may applyfor patent protection in anyor all of the 115 PCT memberstates. This significantly reducesthe time and money invested inobtaining patent protection. ThePCT does not grant patents, butit contributes significantly to theprocess of seeking patent protectionin multiple countries.Initial statistics also show a significantincrease in use of thePCT by nationals from developingcountries. Last year’s largestnumber of users from developingcountries came from the Republicof Korea, China, South Africa,and India.A comprehensive effort at reformof the PCT has been underwayduring the last four years, includingefforts towards automation,lowering of fees, and simplificationof the treaty. Fee reductionshave been implemented for fiveconsecutive years, leading to atotal 45 percent reduction in feessince 1998.¨WIPO member States have agreedto move forward with a comprehensiveprogram of harmonization oflaws for the protection of marks. Ata meeting of the Standing Committeeon the Law of Trademarks, IndustrialDesigns and GeographicalIndications (SCT) in Geneva inDecember, negotiators committedto a program of work that aims tofurther simplify and streamline thetrademark procedures and to initiateharmonization of substantivetrademark law.The decision to move ahead withfurther harmonization efforts followsthe adoption of the Joint Recommendationon the Protection of Well-Known Marks (1999), the Joint Recommendationon TrademarkLicenses (2000) and the Joint Recommendationon the Protection ofMarks on the Internet (2001).Trademark formality requirementsare currently governed by theWIPO Trademark Law Treaty (TLT),concluded in 1994, which servesto harmonize and simplify the formalrequirements involved in trademarkprocedures. The SCT agreedto build on the TLT and to furthersimplify and expand the harmonizationof formalities by introducingprovisions for electronic filing,incorporating provisions containedin the WIPO Joint Recommendationon Trademark Licenses or offeringrelief in regard to variousformal mistakes and time limits.Photo: Mercedes Martínez DozalThe SCT also decided to initiatework on harmonization of substantivetrademark law, particularlyconcerning non-traditional marks(for instance, color marks, smellmarks, three-dimensional marks) orconflicts with prior rights. Themember States stressed the need foran evaluation of the interferencebetween trademark law and industrialdesigns law or copyright law.The SCT also engaged in a fruitfulexchange of views on issues concerningthe definition of geographicalindications, systems of protectionand the underlying policy considerations,the relationship betweengeographical indications andtrademark rights and the economicimpact of various systems of protection(see http://www.wipo.int/eng/document/sct/index_6.htm).¨Ms. Debbie RØNNING(center), Chair of the SCT,and the two Vice-Chairs,Mrs. Graciela ROADD’IMPERIO (at her right)and Mrs. María TeresaYESTE LÓPEZ (at her left)