The WIPO Newsletter on Marks, Industrial Designs and Geographical Indications
TABLE OF CONTENTS[PDF]
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The Steady growth of the Madrid System |
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The Madrid system continues to grow at a steady pace. During the first half of the year 2005, the growth trend observed during 2004 was maintained. From January to June 2005, the International Bureau received 16,831 international trademark applications. At the same time, 13,190 international trademarks were registered by WIPO.
Germany topped the list of biggest users with 2, 941 international applications (17.5%), followed by France with 1,789 (10.6%), United States of America 1,434 (8.5%), Benelux 1,218 (7.3%), Italy 1,173 (7.0%), Switzerland 2,133 (6.6%) and the European Community 938 (5.6%).
The two largest newcomers to the system, the USA and the European Community already rank high in the list of major users. The USA now occupies the third rank and the European Community, only nine months after accession, the seventh rank. Statistics for the first half of 2005 also show an increase in the number of international trademark applications originating from China. With 592 applications, China has become the ninth biggest user of the system. Other major users are: Austria (640), Great Britain (540), Japan (472), Spain (422), Turkey (416), Australia (402), Russia (315), Czech Republic (275), as well as some emerging countries such as Republic of Korea and Singapore with 66 and 59 international applications, respectively.
With respect to the ownership of international trademarks, the top ten right-holders this year are: Henkel, Novartis, Janssen Pharmaceutica, LOréal, Unilever, Sanofi Winthrop, Societé des Produits Nestlé, Bayer, Siemens, ITM entreprises.
Launching of the on-line version of the WIPO Gazette of International Marks |
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As from September 1, 2005, the WIPO Gazette of International Marks (Gazette) is available on the WIPO website, free of charge, in addition to being available on paper or CD-ROM on a subscription basis. Each issue of the on-line edition is an electronic reproduction of the corresponding issue in the paper edition, but offers the advantage of full text search facilities. Past issues of the Gazette published in 2005 are also available on-line.
The Gazette, the official publication of the Madrid System, is published on paper by the International Bureau every week. It contains all relevant data on new international registrations, renewals, subsequent designations and changes and other entries affecting existing international registrations. The Gazette also contains information of general interest such as declarations and notifications made by Contracting Parties under the Agreement, the Protocol or the Regulations regarding particular requirements, the amounts of individual fees under Article 8(7) of the Protocol or information on the days on which the International Bureau is not scheduled to be open to the public.
The CD-ROM edition is published every four weeks and is cumulative, so that the first disc of each year contains the first four issues of the paper edition, the second disc contains the first eight issues, and so on. In addition to reproducing each issue of the paper edition in electronic form, the CD-ROM edition also includes a cumulative index, which allows simple searches to be made in one or more issues within a single year according to the name of the holder, the international registration number, any verbal element of the mark and the type of transaction published. The search result consists of a list of hits with links to the relevant issue and page of the Gazette.
Orders for the paper or CD-ROM editions of the Gazette may be placed at www.wipo.int/ebookshop or addressed to World Intellectual Property Organization, Marketing and Distribution Section, 34, chemin des Colombettes, 1211 Geneva 20 (Switzerland). It is possible to take out an annual subscription to the paper and CD-ROM editions and to buy individual issues of the paper edition.
INTA 127TH Annual Meeting |
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For five days each May, the Annual Meeting of the International Trademark Association (INTA) provides a unique opportunity to overcome the geographic and time-zone barriers that separate WIPO from the customers of its trademark-related services. See http://www.inta.org/annual.
This year, from May 14 to 18, 2005, a WIPO team headed by Assistant Director General Ernesto Rubio participated in the 127th INTA Annual Meeting, which took place in San Diego, California, USA. The members of the team included legal experts from the Sector of Trademarks, Industrial Designs and Geographical Indications, the WIPO Arbitration and Mediation Center and the WIPO Coordination Office in New York.
The mission of the WIPO team was fourfold: to participate in the INTA program as speakers in concurrent sessions and moderators of table topic discussions; to attend various INTA committee and subcommittee meetings with respect to programs and issues of mutual interest to INTA and WIPO; to organize private events of special interest to various attendees of the INTA Annual Meeting; and to operate a remote office in the Exhibition Hall where attendeeseither on a walk-in basis or by prior appointmentcould meet with legal experts on the Madrid System for the International Registration of Marks [www.wipo.int/madrid], the Hague System for the International Registration of Industrial Designs [www.wipo.int/hague], and the WIPO Arbitration and Mediation Center [www.arbiter.wipo.int].
Attendees of future INTA Annual Meetings are encouraged to take full advantage of WIPOs presence to have their questions answered and concerns heard whether at a concurrent session, in a table topic discussion or by private consultation at the WIPO booth in the Exhibition Hall. For more information regarding WIPOs participation at the 128th INTA Annual Meeting in Toronto, Canada from May 6 to 10, 2006, please contact the Information and Promotion Division of the Sector of Trademarks, Industrial Designs and Geographical Indications at: intreg.mail@wipo.int.
Madrid waits for Mexico |
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Sam Mamudi from Managing Intellectual Property interviewed Mr. José Graça Aranha, Director of the Information and Promotion Division of the Sector of Trademarks, Industrial Designs and Geographical Indications of WIPO with regard to the increasing interest of Mexico and the rest of Latin America towards joining the Madrid Protocol. Read this interview in full at: http://www.managingip.com/ (Note: the Managing Intellectual Property website is for subscribers only, but non-subscribers can sign up for a 3-months free trial.)
Ad Hoc Working Group on the Legal Development of the Madrid System for the International Registration of Marks |
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The Ad Hoc Working Group on the Legal Development of the Madrid System for the International Registration of Marks met in Geneva from July 4 to 8, 2005, and 44 Contracting Parties of the Madrid Union participated in that meeting. Also 3 States, one international intergovernmental organization and 9 international non-governmental organizations were represented as observers. The discussions of the Working Group were based on a document prepared by the International Bureau (IB) concerning the Review of the Refusal Procedure and the Safeguard Clause of the Madrid Protocol and Possible Amendments to the Common Regulations. The Working Group was convened to prepare these reviews, which are due by the Madrid Union Assembly in 2006.
The delegations agreed that there was no need to modify the refusal procedure under the Madrid Protocol (Article 5(2)). However, there was agreement to simplify the drafting of Article 5(2)(c). With respect to the review of the safeguard clause, consensus was reached on the restriction of the scope of the safeguard clause regarding the following features: transformation, required basis for the filing of an international application, cascade and presentation to the International Bureau of subsequent designations and requests for the recording of cancellations and renunciations. There was no agreement, however, as to whether the scope of the safeguard clause should also be restricted with regard to the refusal period and the fee system. In case the review would eventually result in a restriction of the safeguard clause, the Working Group recommended that an interpretative statement be adopted by the Madrid Union Assembly to the effect that further reviews of the safeguard clause could be undertaken at any point in time. A similar interpretative statement was recommended for further reviews of the refusal period.
Other features were also considered in conjunction with these reviews. For example, with respect to the language regime (English, French and Spanish), the recommendation was to submit to the Assembly of the Madrid Union a proposal to amend the Common Regulations so as to provide for the trilingual regime to apply also in the mutual relationships between States bound by both the Agreement and the Protocol. The Working Group also agreed that a proposal to amend Rule 3(1) giving greater freedom to appoint a representative before the IB (not necessarily with an address in a Contracting Party to the Madrid system), be submitted to the Assembly for adoption.
A number of proposed amendments required further discussion, which is likely to take place at a second meeting of the Working Group early next year.
Worldwide Forum on Marks & Designs (September 8-9, 2005, Vancouver, Canada) |
The World Intellectual Property Organization (WIPO) and the International Trademark Association (INTA) organized jointly the Worldwide Forum on Marks & Designs that was held in Vancouver, Canada, on September 8 and 9, 2005. The conference ventured beyond the realm of trademarks into industrial designs, taking an integrated look at these evolving intellectual property rights, including concerns unique to each as well as overlapping issues. Attendees gained a basic understanding of the most common protection systems, which in the case of industrial designs may differ dramatically from one country to the next, and of the international registration systems that tie the various national and regional systems together. All this will be presented within the context of the underlying business reality that inextricably entwines these legal specialties, namely, bringing a product to market.
WIPO Member States Agree Basic Text for Revised TLT |
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The Trademark Law Treaty (TLT) was concluded in 1994 with a view to streamlining and simplifying, on a worldwide basis, administrative procedures relating to national and regional trademark applications and the maintenance of trademark registrations. The TLT currently has 33 member countries. Companies seeking trademark protection must, as a first step, meet certain formality requirements in order to avoid rejection of their application and a consequent loss of rights. These formalities generally vary from one country to another and the TLT has successfully introduced standard requirements to be followed in procedures before trademark offices.
In order to keep pace with developments in electronic communications and to create an institutional framework allowing the adaptation of certain administrative details regulated under the treaty, the revision of the TLT will allow greater freedom for Offices in respect of the electronic filing of trademark applications and associated communications, the formalities for the representation of all types of marks, including non-visible signs, provisions on the recording of trademark licenses, relief measures when certain time limits have been missed, and the establishment of an assembly of the contracting parties.
Efforts to revise this key international treaty in the field of trademarks made significant headway as the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), which met from April 18 to 22, 2005, agreed on a text to be proposed as a basis for negotiations at the Diplomatic Conference for the Adoption of the Revised Trademark Law Treaty (TLT), which will be convened in March 2006. Also, at a twoday session of the Preparatory Meeting for the Diplomatic Conference, Singapore made an official offer to host the diplomatic conference on the revision of the TLT.
WHO International Nonproprietary Names for Pharmaceutical Substances |
International Nonproprietary Names (INN) identify pharmaceutical substances or active pharmaceutical ingredients. Each INN is a unique name that is a globally recognized generic name. The system of INNs as it exists today was initiated in 1950 under the auspices of the World Health Organization (WHO) by World Health Assembly resolution WHA3.11 and began operating in 1953, when the first list of INNs for pharmaceutical substances was published. The cumulative list of INNs stands now at some 8000 published INNs. The aim of the INN system is to provide health professionals with a unique and universally available designated name to identify each pharmaceutical substance.
With the growing number of INNs and trademarks, the possibility of conflicts between them has gradually increased. The main source of conflict is usually an attempt by a manufacturer to adopt a new trademark containing one or more stems established in the INN system to indicate the relationship between pharmacologically related substances. By the use of common stems the medical practitioner can recognize that the substance belongs to a group of substances having similar pharmacological activity. To prevent conflicts between INNs and trademarks World Health Assembly resolution WHA46.19 was issued in 1993, requesting the Member States to develop policy guidelines on the use and protection of INNs, and to discourage the use of names derived from INNs, and particularly names including established INN stems as trademarks.
The WHO collaborates closely with INN experts and national nomenclature committees to select a single name of worldwide acceptability for each active substance that is to be marketed as a pharmaceutical. The INN Expert Group convened by WHO rejects any proposal that could result in a conflict with known trademarks. Selected names are published in a WHO periodical (WHO Drug Information) as proposed INNs and interested parties are given a period of four months to raise an objection to a proposed INN. An objection may be based, for example, on similarity between the proposed INN and a trademark in which the interested party has proprietary rights. When an objection has been raised, WHO will actively pursue an arrangement to obtain the withdrawal of such an objection or will reconsider the proposed name. As long as the objection exists, WHO will not publish it as a recommended INN.
Two proposed and two recommended lists of INNs are published every year. The lists are trilingual, in English, French and Spanish, and include Latin INNs. All INNs are published in a cumulative list of INNs, which is updated periodically and includes INNs also in Arabic, Chinese and Russian, as well as reference to other common names. More information on INNs and a free of charge INN database (Mednet The Medicines Information Service) is available at the WHO website at http://www.who.int/medicines/organization/qsm/activities/qualityassurance/inn/orginn.shtml.
Worldwide Symposium on GIs |
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The International Bureau of WIPO organized jointly with the Ministry of Productive Activities of Italy a Worldwide Symposium on GIs, that was held in Parma, Italy on June 27 to 29, 2005. The three-day program of the symposium consisted of two days presentations and discussions divided over six panel sessions and a half-day visit organized by the Associations for the protection of Parmigiano Reggiano and Prosciutto di Parma. The turnout of participants and speakers was most satisfactory, as a total of 32 speakers and moderators addressed some 242 participants coming from 39 countries, five intergovernmental organizations (IGOs) and six non-governmental organizations (NGOs). All papers presented at the symposium are published on the WIPO web site at: http://www.wipo.int/meetings/en/2005/geo_pmf/
The program had been designed so as to allow participants:
(i) to be updated on the state of play on GI issues in the international arena by representatives from WIPO, the WTO, the International Wine and Vine Organization (OIV) and the International Centre for Trade and Sustainable Development (ICTSD);
(ii) to hear from producer representatives of various food and non-food GI products as to how GI protection helped them in the fight against unfair competition in their own countries (Parmigiano Reggiano, Prosciutto di Parma, Café de Colombia, Australian wines, An Xi tea from China, Iranian carpets, Solingen cutlery from Germany and Talavera ceramics from Mexico) and what difficulties they were facing in foreign countries in this respect;
(iii) to learn from the experience of three countries (Georgia, India and Jamaica) that had recently established GI registration systems;
(iv) to witness a debate on the theme trademarks, geographical indications and generics between three speakers (from OHIM, the Champagne producers and the German dairy producers) approaching this each from a different angle;
(v) to be informed of the options already available today for the international registration of GIs and what missing elements might be the subject of negotiations, by representatives from WIPO, the International Trademark Association (INTA) and the Organization for an International Geographical Indications Network (ORIGIN); and, finally,
(vi) to witness a political debate on the theme The Way Ahead - What Future for GIs between representatives from six countries involved in the WTO negotiations on GIs and with opposing positions in those negotiations (the United States of America, Australia and Paraguay, on one side, and the EC, Switzerland and Kenya, on the other side).
The Symposium allowed all national and international administrations, producers and other interested stakeholders to exchange their views and ideas in a good atmosphere of dialogue, which was clearly appreciated as being useful for the pursuit of the on-going discussions in the international arena. As on the occasion of the previous Symposium (San Francisco, 2003), the pending GI issues in the WTO also this time bore heavily on the proceedings.
Upcoming Events |
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Seminar on the Hague System of International Registration of Industrial Designs (in English/French), Geneva, Switzerland, November 2, 2005
Seminar on the Madrid System of International Registration of Marks (in English) Geneva, Switzerland, November 3 and 4, 2005
