C. Aptitude à constituer une marque
III. Representation of non-traditional trademarks – Areas of Convergence . 61
Subsequent to this first information gathering exercise, the WIPO Stand-ing Committee on the Law of Trademarks, Industrial Designs and Geo-graphical Indications («SCT») requested the WIPO Secretariat to pre-pare an issues paper on «new types of marks», which was presented to the 16thsession of the SCT.8The document was prepared using informa-tion from the Quesinforma-tionnaire, as well asad-hoccontributions offered by SCTmembers,9including examples of non-traditional trademarks, which are reproduced in the annex to that document.
Document SCT/16/2 organizes the information gathered according to subject matter of protection and identifies a number of cross cutting is-sues. The portion dealing with subject matter of protection follows the TRIPS Article 15 demarcation line between visible and non-visible signs.
The part for visible signs comprises eight categories, namely three-di-mensional marks, color marks, holograms, slogans, titles of films and books, motion or multimedia signs, position marks and gesture marks, whereas the part on non-visible signs lists four categories, namely sound marks, olfactory marks, taste marks and texture or feel marks.
The various kinds of trademarks are described in the document individu-ally with reference to their specific characteristics. This is followed by a summary of the questions that may arise in connection with the represen-tation of those trademarks, bearing in mind that the represenrepresen-tation of a trademark is of prime importance for the filing of a trademark applica-tion, is examinaapplica-tion, eventual registration and publication.10
Following the presentation of the various types of non-traditional trade-marks, document SCT/16/2 offers a number of general considerations on cross cutting issues related to this type of signs. It refers, in particular, to the potentially open-ended definition of trademarks in TRIPS Article 15.1, allowing for the free development of new types of marks that
ex-8 Document SCT/16/2.
9 See SCT E-Forum Comments on non-traditional marks (https://www.wipo.int/sct/
en/comments, last accessed on April 25, 2019).
10 This paper does not purport to reproduce in detail the characteristics of each kind of non-traditional trademark and the questions related to their representation. In this respect, a general reference is made to document SCT/16/2.
plore the availability and use of different subject matter in the branding of goods and services.11
Notwithstanding the extension of trademark rights to kinds of signs not covered under a traditional approach to trademarks, general trademark law principles, such as the need to keep certain signs available, remain ap-plicable. In that specific context, document SCT/16/2 identifies a number of trademark law principles that will apply to non-traditional trade-marks, such as the requirements of distinctiveness, compliance with pub-lic order and morality, or acquisition of distinctive character through use.
The overlap between non-traditional trademarks and industrial design and copyright protection is addressed, as subject matter that can be pro-tected by the latter two types of intellectual property rights may also be used for trademarks, bearing in mind that the conditions and scope of protection differ substantially.12 Finally, approaches to the representa-tion of non-tradirepresenta-tional trademarks are outlined and the connecrepresenta-tion with the Regulations under the Singapore Treaty on the Law of Trademarks is indicated. In doing so, the document charts a potential route for work by WIPO Member States on the representation and description of
non-tra-ditional marks, which was eventually pursued by the SCT subsequently to its 16thsession.
Thus, the 17thsession of the SCT considered in detail a working docu-ment outlining existing methods of representation and description of an overall of twelve new types of trademarks (eight types of visible and four types of non-visible signs), and identifying areas of convergence amongst SCT Members.13 The present contribution does not describe in detail the various aspects of the representation and description of non-traditional marks. In this respect, a general reference is made to documents SCT/17/2, SCT/18/2 and SCT/19/2.
The 20thsession of the SCT eventually agreed on a number ofAreas of Convergence concerning the representation of non-traditional marks, and decided that they should be published under document WIPO/
Strad/INF/3 and brought to the attention of the WIPO Assemblies.
ThoseAreas of Convergenceconstitute a form of international public soft law and define standards for the representation and description of a
num-11 Document SCT/16/2, para. 57.
12 Document SCT/16/2, para. 56 onwards.
13 Document SCT/17/2, para. 2.
ber of non-traditional trademarks, which trademark offices of Member States, through their participation and decision in the SCT, will apply.14 It is, however, understood that the relevant areas of convergence apply only to those types of non-traditional trademarks that can be registered and protected under the law of a particular WIPO Member State, and that they do not create obligations as to the registrability of specific types of signs. This follows from the wording of the Areas of Convergence, which describe the type of representation of a sign as part of an applica-tion for a trademark registraapplica-tion that a trademark office may require, without stipulating any obligation as to the acceptance for registration of those signs.
A total of seven Areas of Convergence for the representation and descrip-tion of seven non-tradidescrip-tional marks were agreed by the SCT, whereas no agreement could be found for three proposed Areas of Convergence.
For a detailed description of all Areas of Convergence Concerning the Representation of Non-traditional Marks, reference is made to docu-ment WIPO/Strad/INF/3. Following hereunder is a short description of the most important features in relation to the various types of signs covered by the Areas of Convergence.
Regarding three-dimensional marks (Area of Convergence No. 1), the main novelty consists of the agreement that a filing date for a trademark application containing a three-dimensional trademark should be granted upon the representation ofonesingle view of the trademark, even though a trademark office can require more views or a description of the trade-mark during the course of the examination of the application.
Concerning color marks (Area of Convergence No. 2) the possibility that trademark offices should allow the use of a recognized color code by the applicant is expressly foreseen. Area of Convergence No. 3 provides for a mode of presentation and description of hologram marks, thereby ex-pressly recognizing this this type of mark (without creating an obligation for registration).
14 For the use ofinternational soft lawin norm development for intellectual property, see MARCUSHÖPPERGER,Trademark Transactions and the normative framework of the World Intellectual Property Organization, in: Irene Calboli and Jacques de Werra (eds.),The Law and Practice of Trademark Transactions, Elgar Intellectual Property Law and Practice, 2016, 2.08; EDWARDKWAKWA,Some Comments on Rulemaking at the World Intellectual Property Organization, 12, DUKE J. COMPARATIVE AND INT’L LAW.
The representation of motion or multimedia marks (Area of Convergence No. 4) expressly mentions the possibility for trademark offices to require, in case electronic filing is available, the presentation of the mark in the form of an analog or digital recording. The representation of position marks (Area of Convergence No. 5), allows disclaiming of matter for which protection is not sought by use of broken or dotted lines.
For the representation of gesture marks (Area of Convergence No. 6), trademark offices may require, where electronic filing is available, the use of analog or digital recordings.
Again, the representation for sound marks (Area of Convergence No. 7), makes a reference to the possible submission of an analog or digital sound recording and suggest that, were electronic filing is available, applicants should have the possibility to submit those types of files.15
With regard to olfactory marks, taste marks and texture or feel marks (Areas of Convergence Nos. 8, 9 and 10), the SCT could not reach an agreement, with opinions remained divided as to whether those type of marks can be adequately represented by descriptions or not.
IV. Singapore Treaty on the Law of Trademarks
The Areas of Convergence Concerning the Representation of Non-tradi-tional Marks were noted by the WIPO General Assembly in 2009. At the same meeting of the WIPO Assemblies, the Singapore Treaty Assembly approved the initiation of a review of Rule 3(4) to (6) of the Regulations under the Singapore Treaty with a view to align that Rule with the Areas of Convergence. To that effect, the Singapore Treaty Assembly approved the convening of one session of a Working Group.16, 17
15 Note in this respect the different wording between Areas of Convergence No. 4 and 7, the former saying that offices may require the submission of analog or digital files, whereas the latter leaving this choice to the applicant–thereby implying that offices that operate e-filing should accept those types of files as part of the application. Note also an express reservation at the end of area of convergence No.6 that derogates from this general rule. This reservation was requested, at the time, by the European Union and its Member States, which operated a graphic representation requirement for trademarks.
16 Document STLT/A/1/4, para. 12.
17 On March 17, 2019, the Singapore Treaty had 48 Contracting Parties (see https://
www.wipo.int/export/sites/www/treaties/en/documents/pdf/singapore.pdf ).
The creation of an Assembly of the Contracting Parties of the Singapore Treaty with the power to amend the Regulations under that Treaty18was an important outcome of the revision of the Trademark Law Treaty of 1994, which had been adopted without such an Assembly. Rule 3 of the Regulations under the Singapore Treaty deals with the representation of trademarks that feature in applications. At the time of its original adop-tion in 2006, this Rule covered details for the representaadop-tion of trade-marks reproduced in standard characters, tradetrade-marks claiming color, and details concerning the reproduction of three-dimensional trade-marks.19Details concerning the reproduction of hologram, motion, color and position trademarks as well as the reproduction of non-visible trade-marks remained unresolved and were referenced to the applicable na-tional law.20
In its only session in June 2010, the Working Group reviewed the rele-vant Rules concerning the representation of marks and aligned those Rules with the Areas of Convergence. It then recommended to the Singa-pore Treaty Assembly the adoption of the revised Rules with a date for entry into force of November 1, 2011, which the Assembly followed.21 Rule 3(4) to (10) of the Regulations under the Singapore Treaty as in force on November 1, 2011, defines thus standards for the representation of three-dimensional, hologram, motion, color, position and sound trade-marks and for tradetrade-marks consisting of non-visible signs other than sounds. These rules follow largely the Areas of Convergence. In particu-lar, Contracting Parties to the Singapore Treaty shall grant a filing date to the application for a three-dimensional trademark, even if the trademark is presented in only one view.22
Concerning sound trademarks, trademark offices of Contracting Parties may require the filing of analog or digital recordings of the sound.23As regards motion trademarks, the possibility to require an analog or digital recording of the motion as well as the reference to multimedia trade-marks, as contained in Area of Convergence No. 6, is not expressly
re-18 Article 23(2)(ii) of the Singapore Treaty.
19 Rule (1), (2) and (4) of the Regulations under the Singapore Treaty on the Law of Tra-demarks.
20 Rule 3(5) and (6) of the Regulations under the Singapore Treaty on the Law of Trade-marks as adopted in 2006 and in force prior to November 1, 2011.
21 Document STLT/A/2/2, para. 8.
22 Rule 3(4)(e).
23 Rule 3(9).
tained in Rule 4(6) under the Singapore Treaty. Rule 4(6) merely refers to the reproduction of a motion by a series of still or moving images depict-ing movement.24With regard to color trademarks, trademark offices may require an indication of the color or colors by a recognized color code chosen by the applicant and accepted by the Office.25However, agree-ment for details for the representation of non-visible signs other than sound trademarks could not be found and this matter is left to the indi-vidual laws of Contracting Parties.26
The work of the SCT on non-traditional trademarks, starting with infor-mation gathering and leading to the adoption of the «soft law» Areas of Convergence eventually permitted the creation of «hard» international law binding the Contracting Parties of the Singapore Treaty as to the re-presentation of those types of trademarks. In the process, it also resulted in the first international recognition of non-traditional trademarks, although the «soft» and «hard» law instruments concerned do not fore-see an obligation to protect those types of marks. Nevertheless, this work is a good example for a flexible approach to international norm develop-ment in intellectual property, which can take place at different levels of the hierarchy of international norms. In particular, it enables all WIPO Member States to participate in the exercise and to influence its outcome in accordance with their own preferences as to the degree to which they are prepared to undertake binding commitments.