China Around, IP Focused



Experts Discuss IP in Trade Deals and WIPO Classifications


A former United States trade negotiator and a top World Intellectual Property Organization official responsible for mark and design classifications revealed their insights to a gathering of INTA members last month.


The Harmonization of Trademark Law Practice Committee (HTLPC) monthly call was made special in June by the participation of two speakers: Jenny McDowell, INTA’s Director of Government Relations in Washington, D.C., and Alison Züger, Head, Mark and Design Classifications Section, World Intellectual Property Organization (WIPO) International Classification and Standards Division.


The discussion, held on June 4, was moderated by Winnie Tham (Amica Law LLC, Singapore), Chair of the HTLPC. The HTLPC has three subcommittees, one on free trade agreements, another on international classification, and the last on international cooperation. The speakers touched upon the first two items.


Ms. McDowell, a former U.S. trade negotiator, shed light on the role of strong intellectual property protection in free trade agreements (FTAs). Based on her previous experience in negotiating FTAs on behalf of the U.S. government, she mentioned the various touchpoints that stakeholders can have with the government. To be a particularly effective advocate on FTAs, she noted, INTA is utilizing its deep base of specialized knowledge, and presenting that information in ways that are helpful to the government. She highlighted opportunities for members to get involved in INTA’s advocacy efforts and encouraged those interested to reach out for more information.


Ms. Züger gave a general outlook of the WIPO International Classification and Standards Division. She also delved into the work of the Committee of Experts of the Nice Union, which decides on all changes and amendments in the Classification. This includes the annual updating of the alphabetical list and the recent project to harmonize the explanatory notes across all 45 classes, as well as the transfer of goods and services between various classes. Ms. Züger addressed issues raised by INTA members on the harmonization of different local practices related to the Nice Classification of retail and wholesale services, and the sale of goods within Class 35. The participants also exchanged on the European General Court judgment in Sky v. Skykick vis-à-vis the topic of classification in Class 9.


In line with HTLPC objectives, members inquired about ways to further harmonize since a handful of jurisdictions have not yet joined the Nice Agreement. It is worth noting that the Nice Classification is also applied in a number of countries not party to the Nice Agreement.


Of utmost importance to INTA members was the suggestion by INTA of organizing a side event during a future Nice Committee of Experts meeting. INTA could present a recent paper released by the HTLPC International Classification Subcommittee.


Through the International Classification Subcommittee, INTA regularly provides inputs to proposals submitted and discussed by WIPO member states.


Source: International Trademark Association