The International Association for the Protection of Intellectual Property (AIPPI) plays a crucial role in shaping intellectual property law worldwide with its diverse range of Standing Committees and its unique resolutions. Among these, resolutions on trade marks stand out for their impact on global trade mark law harmonisation and development.
The Journey Begins: Study Questions
The process of creating an AIPPI resolution starts with the formulation of a Study Question. These questions are carefully crafted to address specific issues or gaps in trade mark law that require international attention and consensus.
Study Questions are often proposed by National Groups within AIPPI or by individual members and are subjected to rigorous evaluation before being accepted for further study.
Once a Study Question is approved and the Study Guidelines are prepared, National and Regional Groups are invited to hand in a National Study Question report. All these reports give a broad perspective of the topic within the various jurisdictions and where harmonisation efforts are needed. The responsible Reporter, as part of the Reporter General Team, consolidates all the various views into a summary report that functions as a basis for the Study Question Committee to formulate a draft resolution.
AIPPI, over the past number of years, has considered various aspects of conflicts of trade marks by way of numerous resolutions, including topics such as Descriptive use as a defence in trade mark proceedings (online 2020), Conflicts between Trademarks and Company and Business Names (Melbourne 2021), Evaluation of confusion in Trademark Law (Montreal 1995), Trademarks: Conflicts with prior rights (Tokyo 1992).
Drafting the Resolution on Trade Marks
This year, the Study Question on Trade Marks focuses on ‘Conflicts between composite trade marks including non-distinctive elements’.
In the Study Guidelines to prepare for filling in the National and Regional survey, the following is stated:
A composite trade mark refers to a trade mark which is a combination of various types of constituent elements, such as words, numbers, devices, colours, sound, video, etc., or a trade mark, though consisting of a same type of elements, elements of which include both distinctive and non-distinctive elements.
Non-distinctive elements of a trade mark could include generic names, shapes of the designated goods themselves or their containers, terms descriptive of the characteristics of the designated goods/services (such as quality, quantity, value, purpose, provenance, etc.), terms/images commonly used in the trade for those goods/services, and so on.
The issue of conflicts between trade marks is a key issue in both trade mark prosecution and enforcement. Whether two trade marks are similar to each other is an essential factor to consider in deciding whether the later trade mark can be registered or whether trade mark infringement can be established.
Consensus Building
Once the draft resolution is finalised, it is presented for discussion and debate at AIPPI’s annual World Congress where attendees have the opportunity to provide feedback, propose amendments, and raise objections based on their respective legal traditions and practical experiences. Consensus building is a central aspect of this phase, with the goal of achieving broad support for the resolution across different jurisdictions and legal systems.
During the AIPPI World Congress, after the draft resolution prepared by the Study Committee Leadership is discussed, debated and approved by the Study Committee, there is first a Plenary Session on the specific Study Question and then a first Executive Committee to discuss the Draft Resolution. During the second Executive Committee, the resolution is put to a vote. If approved by a majority of members present, it becomes an official AIPPI resolution. While non-binding, these resolutions carry significant weight in the global intellectual property community and often influence legislative reforms, judicial decisions, and policy initiatives in member countries.
This year, the AIPPI World Congress will take place in Hangzhou from 19-22 October 2024! Dive into hot topics like IP examination and protection in China, the UPC Pulse: one year in, a Patent Infringement Trial, Pharma Day with discussions on Drug Discovery and AI, Trade Mark Use in Pharmaceuticals, Patenting Microbiomes, and more. With a wide range of sessions and workshops to choose from, there is something for everyone at the in-person AIPPI World Congress.
For further information on the annual World Congress and the programme, please visit the congress website: www.aippicongress.org. Check the AIPPI Library on Trade Marks and previous Resolutions.
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