WIPO Design Treaty Proposal Still On Horizon; Key Points Bared

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Members of the World Intellectual Property Organization (WIPO) are working to stage a diplomatic conference on the adoption of a new industrial design treaty at the earliest opportunity. The treaty, at the minimum, could harmonise certain aspects in design law, an area in intellectual property marked by stark differences in national procedures.

The target to have a diplomatic conference as outlined in the WIPO program and budget for 2012-2013, however, can be met only if “sufficient progress” is made on the preparation of the proposed design treaty, Marcus Höpperger, WIPO director of trademark and design law division, told Intellectual Property Watch in a recent interview.

“Where we stand now is we already have a set of draft provisions in a two-tier structure,” Höpperger said, referring to draft articles and draft rules.

Despite having a target of a diplomatic conference – the highest level of negotiations at WIPO – for the proposed treaty, Höpperger said that in reality it remains difficult to gauge the speed of the process of turning what have been slow-moving discussions into a treaty.

“It is also a political process and everything has to fall into place. But so far nobody [no country] has come out and said we disagree with the idea of a treaty – although some have reserves as regards the timing,” Höpperger said.

An industrial design “constitutes the ornamental or aesthetic aspect of an article. A design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color,” according to WIPO.

Design laws vary from one country to another, despite it being covered by international treaties.

The treaty for industrial protection, the Paris Convention for the Protection of Industrial Property (Article 5 quinquies) asks member states to protect industrial designs but gives no details on the subject and duration of protection.

The World Trade Organization Trade-Related Aspects of Intellectual Property Rights (TRIPS) (Articles 25 and 26) sets protection for designs that are new or original and prescribes a duration of 10 years. Under TRIPS, member states can set exceptions and limitations for design protection, only in special cases.

The Berne Convention for the Protection of Literary and Artistic Works, the international agreement governing copyright, also lists works of applied art as a category of works eligible for protection.

In Europe, a design can be protected against imitation under copyright through national copyright laws; trademark law through the Trademark Directive and Community Trademark Regulations; industrial design law through the Community Design Regulations; and unfair competition law.

Under the EU design law, a design must be novel and have individual character. Registered design has a term of protection of five years with the possibility of extending it to a maximum of 25 years, while unregistered community design has a protection against copying for three years.

In the US, a design can also be protected through copyright, trademark and patent law. A design patent protection is given to new and non-obvious ornamental designs with the applicant required to show that the design is not functional. Aside from this, the US has the Vessel Hull Design Protection Act that protects design of boat hulls.

A Logical Development

Marshall Leaffer, an intellectual property law lecturer at the Maurer School of Law at Indiana University (US), said the design treaty is “not critical but will be helpful.”

“The cost of filing for world wide IP rights in patents, trademarks, and design is an exceedingly expensive proposition,” Leaffer said. “The treaty is a logical and useful development in the facilitation of filing for design rights world-wide.”

Design is seen as a promising area in intellectual property as activities in this field remain low, particularly in the area of international application and with most of the activities are still concentrated in a few countries in Europe and in the United States. The rest of the world, even China, is yet to be very active in filing international design applications.

To illustrate, the number of design applications filed under the Hague Agreement Concerning the International Registration of Industrial Design last year stood at 2,521, a low compared to the 42,270 applications filed under the Madrid international trademark system and to the 181,900 applications filed under the Patent Cooperation Treaty (PCT) for the same period. But each design application can seek protection for more than one design.

According to the latest available data from WIPO, countries with the most international design applications last year were Germany, Switzerland, the US, France, Netherlands, and Italy.

The Hague Agreement which is administered by WIPO is a system for international registration of industrial designs. It was later updated by the Geneva Act. Under the agreement, a design must be protected for at least 15 years. The Hague Agreement has 60 member states and intergovernmental organisations to date.

WIPO also manages the PCT and the Madrid filing systems.

Focus of WIPO Discussions

At this stage, Hopperger said, the ongoing discussions are mostly about procedures. They do not touch on complicated areas such as the subject of protection; whether cumulative protection should apply to design or whether a design can be protected by other intellectual property tools such as copyright or patent; duration of protection; and ownership for commissioned or work-for-hire works. For all of these, it is most likely that countries will continue to be guided by their own design laws.

“The [proposed] design treaty is not about forcing countries to change their systems or to introduce another system. It’s more of trying to identify areas where you can introduce certain harmonisation and simplification,” Höpperger said. As proof of this, he said the proposed treaty carries the working title of “Treaty on the Work of Design Law and Practice.”

Once successfully turned into a treaty, it will follow earlier treaties that touch on procedural issues such as the Singapore Treaty of 2006 and the Patent Law Treaty of 2000, which have helped streamline the application process and harmonised formalities to reduce the costs for applicants and right holders.

The most sensitive area in the ongoing discussions is the definition of grace period or the allowance for disclosure prior to the filing of application. At present, grace period is anywhere from six months to 12 months.

“I think everybody is happy with the idea of grace period, the question is how long. We are in between six months or 12 months. It would be preferable to agree on a uniform standard although those with 12 months don’t want to go back to six months and those with six months do not necessarily not want to go to 12 months,” Höpperger said.

The rest of the provisions being discussed in the proposed design treaty concern formalities and procedures such as: filing date requirement, which is the basis in determining novelty and grace period; creating a standard for applications with multiple designs; and creating a uniform standard in showing the design in the application.

“Obviously the national differences persist to some degree, but it is also thought that once you create a standard that people [can] adhere to, even though it is a minimum standard, over time that will bring people together and it will become more aligned in a way,” Höpperger said.

During the last session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications in February, it was agreed to have an impact study on the costs and effects of such a treaty (IPW, Trademarks/Geographical Indications/Domains, 4 February 2012).

“They can make informed decisions based on the study,” said Höpperger. “Whether it has a bearing [on the proposed design treaty] I don’t know, but it was requested so we are preparing the study.”

Maricel Estavillo, an intern at Intellectual Property Watch, is an LL.M. in Intellectual Property and Competition Law Candidate at the Munich Intellectual Property Law Center (MIPLC). A former business journalist in Manila, Philippines, she is currently working on research on copyright in digital media for her Master’s thesis.

Maricel Estavillo may be reached at maricelestavillo@gmail.com.

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