The Singapore Treaty on the Law of Trademarks

The Singapore Treaty on the Law of Trademarks

KievMarch 152011

Noëlle Moutout

Assistant Legal Officer

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

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

Article 9:

Indication of G/S by their names, grouped by class(es) of the Nice Classification, in orderClasses are not criteria for determining similarity or dissimilarity of G/S

Circumstances have to be considered

The Singapore Treaty

Principles

Exclusively for trademark registration

Obligation for Member States:indication of the classes in official titles and publications

AlsoObligatory for organizations IB – BOIP – OHIM – AOPI – ARIPO Other countries not party to the Nice

Agreement

The Nice Classification – 1957

Contents

34 classes for goods and 11 classes for services [9th edition]

alphabetical list of 11000 indications

Authentic texts in French and English

+ official version in Spanish

The Nice Classification

Legal effect

attributed by each party (Art. 2 – Nice

Agreement)

does not bind its Members in respect of

the extent of the protection afforded to any

given mark

The Nice Classification

Single registration

A multi-class application will result in a multi-class 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

Or at any time for commercial reasons

Singapore Treaty

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

Singapore Treaty

Prohibition of other requirements

Certificate or extract from register of commerce

Indication of industrial or commercial activity

Activity corresponding to the G/S Evidence of registration or renewal in

another country Advertisement of a change Reproduction for renewal

Singapore Treaty

Prohibition of other requirements

However:

Possibility to require additional info: Registrability of the mark (consent, compliance

w/ Article 6ter of the PC) Ability to file (minor, person under tutelage)

Evidence in case of doubt concerning the veracity of any element

Singapore Treaty

Thank [email protected]