17 TRADEMARK LAW TREATY
(27221)
5260/06
SEC(05)1793
| Recommendation for a Council Decision authorising the Commission to open negotiations for Community participation in the Diplomatic Conference to be held in Singapore on 13 to 31 March 2006 by the World Intellectual Property Organisation (WIPO) to adopt the revised Trademark Law Treaty
|
| Legal base | Article 300(1)EC; — ; unanimity
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| Document originated | 11 January 2006
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| Deposited in Parliament |
23 January 2006 |
| Department | Trade and Industry
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| Basis of consideration |
EM of 3 February 2006 |
| Previous Committee Report |
None |
| To be discussed in Council
| No date set |
| Committee's assessment | Legally and politically important
|
| Committee's decision | Cleared
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Background
17.1 The Trademark Law Treaty concluded in Geneva on 27 October
1994 deals with procedural provisions intended to simplify the
administrative procedures relating to the registration of trade
marks. It does not address substantive issues relating to the
subsistence or exercise of trade mark rights but supplements the
Agreement on Trade-Related Aspects of Intellectual Property Rights
(the 1994 TRIPS Agreement).
17.2 A committee under the auspices of WIPO (World
Intellectual Property Organisation) has been considering a number
of additions and clarifications of procedural aspects of trademark
registration and has proposed a revision of the Treaty which is
to be considered at a WIPO Diplomatic Conference in March 2006.
The proposed revision concerns the scope of the Treaty, whether
the Treaty can be applied to non-visual trademarks (e.g. sounds
or scents) if national trademark law so provides, the electronic
filing of trademarks, relief measures in case of failure to comply
with time limits, licences and the creation of an Assembly of
the Contracting Parties (which would permit the Treaty to be amended
without having to convene a Diplomatic Conference).
The recommendation for a Council Decision
17.3 The recommendation is concerned with the means
whereby the Commission may take part in the Diplomatic Conference
on behalf of the European Community in relation to those matters
where the Community has competence. The draft Council Decision
would authorise the Commission to negotiate at the Singapore Diplomatic
Conference those aspects of the Trade Mark Treaty which are related
to the Community trademark and the participation of the Community
in the envisaged new Treaty.
17.4 The recommendation explains that the rules of
procedure for the Singapore Diplomatic Conference provide that
the States which are members of WIPO will be referred to as "Ordinary
Member Delegations", but that the European Community will
be referred to as a "Special Member Delegation" and
will have the same status as an Ordinary Member Delegation except
for having no right to vote or to participate in the credentials
committee.
17.5 By virtue of the Decision, the Commission would
be obliged to consult the Special Committee designated by the
Council, and would be required to observe the negotiating directives
set out in the annex to the Decision. These require the Commission
to ensure that the provisions of the new Treaty are compatible
with Council Regulation (EC) No 40/94 on the Community trade mark[30]
and with measures implementing that Regulation, and that the revised
Treaty contains provisions allowing the Community to become a
party and to exercise voting rights in the Assembly with a number
of votes equal to the number of Member States which are party
to the Treaty.
The Government's view
17.6 In his Explanatory Memorandum of 3 February
2006, the Parliamentary Under-Secretary of State for Science and
Innovation (Lord Sainsbury of Turville) explains that the existence
of the Community trademark justifies the exercise of Community
competence. The Minister recalls that the Community trademark
does not replace national trade marks but is an independent and
additional form of trademark which is valid throughout the Community
and that the Community trademark and national trademarks "coexist
and are legally separate and independent from each other with
regard to both the substantive and procedural rules which apply
and to the offices in charge of issuing them".
17.7 The Minister further explains that the planned
revised Treaty concerns the European Community in that its provisions
could apply to the Community trademark if the Community were to
decide to accede to the Treaty, but that it remains for Member
States to express themselves with regard to issues related to
national trademarks. The Minister adds that it will be necessary
for the Commission and the Member States closely to coordinate
their respective positions in the negotiations.
17.8 The Minister states that the proposed changes
are likely to be positive for business, allowing easier access
to international systems by UK users. This is expected to produce
cost savings for businesses and individuals who wish to register
their designs overseas, with particular benefits for small and
medium-sized enterprises which require international protection,
but find the current financial and administrative costs to be
too high. The involvement of the European Community arises from
the fact that Community and national trademark systems operate
concurrently.
Conclusion
17.9 We thank the Minister for his helpful Explanatory
Memorandum. In the light of the explanations provided by the Minister,
we are content to clear the document.
30 OJ No L 011 of 14.01.1994, p.1. Back
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