The Singapore Treaty on the Law of Trademarks

The Singapore Treaty on the Law of Trademarks Kiev March 15 2011 Noëlle Moutout Assistant Legal Officer

The Singapore Treaty Classification of Goods and Services and Multi -class Application Division of Application and of Registration Prohibition of Other Requirements

The Singapore Treaty Multi-class application Ø Article 3(2): One and the same application may relate to several G/S, irrespective of whether they belong to classes

The Singapore Treaty Multi-class application Ø Article 9: Indication of G/S by their names, grouped by class(es) of the Nice Classification, in order Classes are not criteria for determining similarity or dissimilarity of G/S Circumstances have to be considered

The Nice Classification – 1957 Principles Exclusively for trademark registration Obligation for Member States: indication of the classes in official titles and publications Also ü Obligatory for organizations ü IB – BOIP – OHIM – AOPI – ARIPO ü Other countries not party to the Nice Agreement

The Nice Classification Contents 34 classes for goods and 11 classes for services [9 th edition] alphabetical list of 11000 indications Authentic texts in French and English + official version in Spanish

The Nice Classification Legal effect Ø attributed by each party (Art. 2 – Nice Agreement) Ø does not bind its Members in respect of the extent of the protection afforded to any given mark

Singapore Treaty Single registration A multi-class application will result in a multiclass registration [Article 6] The application can not be subsequently split into two or more registrations Unless application divided under Article 7

Singapore Treaty Division – Article 7 Relating to one or more of the G/S (single or multi-class application) When objection concerns part of the list of G/S

Singapore Treaty Division Of the application - until the decision on the registration of the mark - during any opposition proceedings - during any appeal proceeding against the decision divisional application proceeds to registration

Singapore Treaty Division Of the registration - during any proceeding challenging the validity of the registration - during any appeal proceeding against the decision Ø Or at any time for commercial reasons

Singapore Treaty Division Ø Contracting parties are free to: - establish requirements for application division, including fees - exclude division if pre-registration opposition exists

Singapore Treaty Prohibition of other requirements Structure of the provisions: list of maximum requirements: exhaustive list other permitted requirements prohibition of additional requirements

Singapore Treaty Prohibition of other requirements Articles: ü 3 ü 4 ü 5 ü 8 ü 10 ü 11 ü 12 ü 13 ü 14 ü 17 Application Representation; address for service Filing Date Communications Changes in name or address Change of ownership Correction of a mistake Duration and renewal of registration Relief measures Recordal of a license

Singapore Treaty Prohibition of other requirements ý Certificate or extract from register of commerce ý Indication of industrial or commercial activity ý Activity corresponding to the G/S ý Evidence of registration or renewal in another country ý Advertisement of a change ý Reproduction for renewal

Singapore Treaty Prohibition of other requirements However: ü Possibility to require additional info: Ø Registrability of the mark (consent, compliance w/ Article 6 ter of the PC) Ø Ability to file (minor, person under tutelage) ü Evidence in case of doubt concerning the veracity of any element

Thank you noelle. moutout@wipo. int