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]