12th April 2019 - ADMIN

Member states of the World Intellectual Property Organisation (WIPO) adopted the Singapore Treaty on the Law of Trademarks (STLT) on 27 March 2006, updating the 1994 Trademark Law Treaty (TLT). It was signed by Australia on 26 March 2007.

The purpose of the STLT was to keep pace with technological advancements and to promote international trade and harmonise trademark procedures to benefit global business and brands.

Key changes to the TLT include the following:

Expanded scope to Non-Conventional Trademarks

WIPO contracting members may expand the scope of trade marks to not only visible marks but also non-visible marks that includes sounds and smells and “new” types of marks such holograms, three-dimensional marks, colour, movement, taste and feel marks.

The same principles and requirements apply for more unusual trademarks in that these marks perform the trademark function of identifying the commercial origin of goods or services.

Electronic Communications

Trademark applications can be filed in paper or electronically.

Time Limits and Relief

A set of rules to provide relief for procedural mistakes by trademark applications, notably missed time limits.

Licenses

Formalities are harmonized for filing licenses and for amending or canceling recorded licenses.

Assembly of Contracting Parties

The STLT provides for the establishment of an Assembly of the contracting parties which has the power to modify the regulations to respond to future developments.

Moving Marks, Holograms and Sound Marks

To come within the meaning of a trademark, a hologram or movement mark must be a “sign” which is capable of distinguishing the goods or services of a trader from another.

A movement mark application must contain a graphical representation of the motion of the mark by providing a series of still images showing the sequence of movement.

A hologram mark application must clearly represent each view formed by the hologram when it is moved by showing a graphical representation of each view from different angles.

You will need to provide a sound file when submitting an application for a sound trademark.

Examples

Metro Goldwyn Mayer’s lion roar is registered and protected as a trademark.

Tarzan’s yell is a registered and protected as a trademark.

Bega Cheese Limited was granted trademark protection for the “Happy Little Vegemites” tune.

Nokia was granted trademark protection on its handshake motion.

Microsoft was granted trademark protection for its animated sequence of four coloured dots swirling to form the Microsoft Windows logo.

Take Away Points:

• The STLT was adopted to update the TLT to provide a modern and dynamic international framework for trade mark applications and procedures.
• The STLT is the first international instrument dealing with trade mark law to explicitly recognise non-conventional marks including marks such as holograms, three-dimensional marks, color, position and movement marks, and non-visible marks such as sound, olfactory or taste and feel marks.
• Entrepreneurs are constantly searching for new ways to make their brand stand out. Get ready for a new generation of trade marks for holograms and moving marks!

 

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au.

Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.