On 27 March 2006 the Singapore Treaty on the Law of Trademarks was adopted. However, it has taken some time for the Treaty to be ratified. Following Australia’s ratification on 16 December 2008, the Treaty will come into force on 16 March 2009.

BACKGROUND

The Singapore Treaty, which updates the 1994 Trademark Law Treaty, is mainly concerned with procedural aspects of trade mark registration and licensing and introduces greater flexibilities and efficiencies into the delivery of trade mark registration services. The ten countries willing to ratify the treaty were Australia, Bulgaria, Denmark, Kyrgystan, Latvia, Republic of Moldova, Romania, Singapore, Switzerland and the United States. According to the World Intellectual Property Organization (WIPO), benefits of this the Treaty will occur through “eliminating red tape, enabling trade mark authorities to take advantage of modern communications technologies, and further simplifying and standardizing trade mark office procedures”. As such it “promises to reduce transaction costs for brand owners”.

NEW TYPES OF MARK

The Treaty explicitly recognises that trade marks are not limited to two-dimensional labels on products and specifically mentions new types of marks, such as hologram marks and motion marks. Although such marks are relatively uncommon at the moment, WIPO is optimistic that these unconventional marks will grow in popularity as companies seek novel promotional ideas for their products in a changing marketplace.

COMMON RULES

The Treaty also establishes common rules for the recording, amendment and cancellation of trade mark licences. It is hoped that the common standards will ultimately result in greater legal certainty, cost savings and efficiencies—especially important in post-corporate transactions where a multitude of trade mark authorities must be informed of new terms, ownership, etc,. In brief, recordal of a licence may not be required as a condition for the use of the mark by a licensee to be deemed to constitute use by the holder in proceedings relating to the acquisition, maintenance and enforcement of marks. Recordal of a licence may also not be required as a condition for a licensee to join infringement proceedings initiated by the trade mark holder or to obtain infringement damages. However, any state or intergovernmental organisation may still declare through a reservation that it requires licensee recordal as a condition. The Treaty also introduces new mandatory relief measures for trade mark office procedures in order to alleviate procedural mistakes by trade mark applicants, notably missed time limits.