WIPO Discusses Industrial Design Treaty, Trademark Protection On InternetPublished on 30 March 2011 @ 9:52 pm
By Catherine Saez, Intellectual Property Watch
World Intellectual Property Organization members congregated this week to advance work on a potential treaty on industrial designs, and to look into trademark protection against infringement on the internet, including through social media. But they ended early after nominal progress in these promising new areas for the United Nations agency.
The 25th World Intellectual Property Organization Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is scheduled from 28 March to 1 April, but delegates finished work early and ended today. They will reconvene on 1 April to approve the chair’s report.
At the previous session of the SCT, in November, members discussed the concept of an international instrument for industrial design. This was considered at the annual WIPO General Assembly in September. In November, some countries appeared eager to set a target for negotiating a treaty on industrial designs while other countries requested more information before moving into negotiations. Industrial design refers to the aesthetic aspects of an item (IPW, WIPO, 7 November 2010).
The WIPO secretariat was charged with providing a revised text for consideration at this week’s session of the SCT, taking into consideration comments made at the November session.
The document entitled “Industrial Design Law and Practice-Draft Provisions,” [pdf] submitted to members, included a set of provisional articles to be discussed this week.
According to a developing country source, several delegations felt that some work still needed to be done before considering the convening of a diplomatic conference, which is a highest-level treaty negotiation at WIPO.
A source told Intellectual Property Watch that some countries, such as Japan and those in the Development Agenda Group (DAG), said in their opening statements that it was premature to call for a treaty. The DAG, launched about a year ago, consists of about 20 developing country governments such as Brazil, Egypt, India, Indonesia, and South Africa, including many members of the group that led the conclusion of the 2007 WIPO Development Agenda (IPW, WIPO, 26 April 2010).
In their statement [pdf], the Development Agenda Group said that the group participation in the discussion on the document provided by the secretariat “shall in no way imply accepting in advance any of the provisions or prejudging the outcome of these discussions in favour of legally binding instruments and norm setting.” Entering the discussion should be considered as a “constructive engagement,” the statement said.
“We are also aware that some [member states] want it [a treaty] sooner rather than later,” but “we expect discussions in this session to be inclusive, and essentially member-driven and take into account different levels of development and a balance between costs and benefits, as mandated by the Development Agenda Recommendation 15 on norm-setting.”
On norm setting, the DAG statement said that the SCT should follow the guidelines mandated by the Development Agenda. “In particular, it wishes to recall Development Agenda Recommendation 22 stating that ‘WIPO’s norm-setting activities should be supportive of the development goals agreed within the United Nations system, including those contained in the Millennium Declaration.”
The statement also says Recommendation 22 states that the WIPO secretariat “should address in its working documents for norm setting activities, as appropriate and as directed by Member States,” issues such as safeguarding national implementation of IP rules, potential flexibilities, exceptions and limitations, and the possibility of additional special provisions for developing countries and least developed countries.
A source from the Mexican mission said, “Mexico considers positively a treaty on industrial designs, as the international practice for registration is not uniform.” Brazil said that the issue was not only time-related but substance-related.
According to meeting Chair Park Seong-Joon, director of trademark examination policy at the Korean Intellectual Property Office, all member states agreed to pursue the discussion on a potential treaty. There was no clear objection to a diplomatic conference, he told Intellectual Property Watch.
Trademark Protection on the Internet, Social Media
Another issue discussed this week is the topic of trademark protection on the internet. At the last session, the secretariat was tasked to examine the WIPO Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property in Signs, on the Internet (Joint Recommendation), adopted in 2001, “with a view to determining, whether the types of trademark uses on the Internet,” are adequately addressed by that instrument, according to WIPO.
According to the SCT working document “Trademarks and the Internet,” [pdf] three main topics were looked into: the use of trademarks on Internet auction sites, the use of trademarks as keywords on search engines, and the use of trademarks in virtual worlds and social media, as representing the new types of trademark uses on the Internet.
The document says use of trademarks on the internet generally involves three categories of actors: trademark holders, internet intermediaries, such as operators of internet auction sites, search engines, and social media, and users of the services.
WIPO secretariat concluded that the Joint Recommendation “addresses to a certain extent the types of trademark uses on the Internet.” However, the Joint Recommendation would not ”address certain other issues – such as the liability of Internet intermediaries – that arise with regard to the current types of trademark uses on the Internet.”
A discussion on the prospect for, and methodologies of, an information session will be planned at the 26th meeting, Park told Intellectual Property Watch. Then if agreed upon, the informational session would be held in the following 27th session.
The secretariat will also prepare a document on the Internet Corporation for Assigned Names and Numbers (ICANN) for discussion at the next session, Park said. ICANN is the technical body overseeing the internet domain name system.
Protecting Country Names from Trademark
On the protection of country names against registration and use as trademark, no conclusion was reached, Park said. The document prepared by WIPO will be available for comments online on an electronic forum. The secretariat will then revise the document, and it will be considered at the next session of the SCT.
Catherine Saez may be reached at email@example.com.