Review of the TLT Changes

Adopted back in 1994, the TLT was only revised once - in 2006. So, let’s see why a revision was necessary, what new features were introduced & how they affected the procedure for registering a TM in Europe, Africa, Asia & America.

TM protection is based on the TM registration procedure. While unregistered marks can be protected in many jurisdictions, the best protection is achieved by registering a TM in the EU or US. TM registration in Europe & America makes sense because:

• TM registries are public; 
• registration applications are published regularly; 
• 3rd parties are notified that specific marks are TM-protected.

STLT

Since TMs are endowed with territorial rights (national or regional), individual states maintain national TM registries or organize regional administration through regional registries. As far as TM owners are concerned, the procedure for registering a TM is the same for all national & regional TM offices; hence, efficiency of administrative actions is increased &  transaction-related costs are cut substantially. What the TLT did was harmonize & simplify the procedure for registration of TMs in Europe & America, making it possible to apply it in all countries that signed the treaty.

Why Were Revisions Necessary?

The need for a revision became apparent shortly after the TLT’s adoption. This was largely due to the dot.com revolution & introduction of email & Internet communications. Such innovations were little known in 1994, when the fax machine remained the most advanced means of communication & TM registration in the EU or US was done mostly with its help. Consequently, the TLT contained provisions requiring all signatories to accept communications in paper form, without the possibility of e-communication.

Other aspects requiring revision included various types of TMs. The TLT applies only to obvious marks (e.g. registering a word as a TM in the EU or US), without any provision for registering non-traditional TMs in Europe or America (e.g. sounds or melodies) The contract had a two-tier structure & procedural details were discussed in the Rules. The idea behind was that these rules could be changed by a decision of the meeting of contracting parties. However, given the manner in which the TLT was adopted, no changes to the rules were possible after they were adopted. In addition, the treaty does not provide for a procedure for registering TM licenses in the EU or US or rendering assistance to TM owners when they miss deadlines. These are the exact areas that were affected by the changes

Assembly of Contracting Parties

The revised treaty provides for the creation of a meeting of contracting parties with the authority to amend the Rules. That enables the Treaty to keep pace with technological advances affecting important administrative procedures, such as the presentation of a mark in an application or the nature of e-authentication systems.

Types of Signs

The changes also covered registration of TMs in the form of motion, holographic, color, sound or taste marks in the EU or US. Currently, the Treaty doesn’t contain any standardized rules on how these marks should be presented in applications or registrations. But since they are mentioned in the Rules, the assembly of the contracting parties will be able to determine the appropriate standards once the treaty enters into force & an agreement on the substance of such standards is reached.

TM License

TM licensing in the US & EU is a common practice in the branded product industry & it is generally accepted that general rules in this area are highly desirable. As such, the TLT contains provisions regarding applying for TM licenses in Europe & America & changes or revocations of such licenses.