Hope To Advance Industrial Design Treaty At WIPO Meets Reluctance From Developing Countries

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World Intellectual Property Organization Director General Francis Gurry set the tone at the 18 September opening of a WIPO committee on industrial designs, calling on countries to keep the treaty-signing momentum built up last June with the adoption of the Beijing Treaty on Audiovisual Performances. However, developing countries have been reluctant to engage in an international treaty on industrial designs and this week delegates will have to agree on how to pursue discussions on the subject.

The 27th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is taking place from 18-21 September. The highlight of the agenda is the further discussions on draft articles of a potential treaty on industrial designs, and a study put together by WIPO on request of member states to evaluate potential negative effects of such a treaty on developing countries.

“The General Assembly last year set as one of the targets the convening of a diplomatic conference for the adoption of an international treaty on the law of industrial designs, subject to sufficient progress in the preparatory work,” said Gurry. This committee, he said, successfully completed the Singapore Treaty on the Law of Trademarks, encouraging delegates to follow suit.

Industrial design refers to the aesthetic aspects of an item.

The instrument meant to be discussed this week is considered by developed countries merely as a way to simplify registration procedures and help in particular individuals and small- and medium-sized companies applying for registration worldwide, a harmonisation they say would serve innovation and economic growth.

Developing countries, meanwhile, have said that such a treaty is premature, would primarily serve rights holders in developed countries, and would generate extra cost and a need for developing countries to amend their current legislations.

WIPO Study Welcomed but with Reservations

At the 26th session of the SCT, the Development Agenda Group (DAG) and the African Group, supported by a number of other developing countries, asked that a study be prepared by the WIPO secretariat with the involvement of WIPO Chief Economist Carsten Fink on the impact of the draft articles and draft regulations on industrial designs law and practice on developing countries. In particular, developing countries were interested in finding out the ratio between costs and benefits.

On the first day, delegates discussed the study [pdf] after a presentation by Fink and the WIPO secretariat, with mixed reactions. Some developing countries, such as the DAG and the African Group, said the study was lacking key elements of the terms of reference and needed to be extended. A number of other countries said it was an interesting and useful tool for discussions at the SCT. The study found that in order to implement the treaty, should it be adopted, developing countries would need legal support, and support in information technology and infrastructure.

Among the questions directed to the secretariat were: the World Bank classification of countries used by WIPO in the study, the comparison with other treaties, the hiring of a consultant for the study without consultation with member states, and the lack of description of specific needs of developing countries and some estimation of the costs involved by the changes proposed in the draft articles and regulations.

Also mentioned was the relative low number of complete answers to the questionnaire WIPO used to collect data from IP offices around the world for the study, and the complexity of the questionnaire which might have prevented applicants from providing answers.

WIPO replied that resource constraints had led to the hiring of an outside consultant to do the study and help the secretariat with presentation of the results. An experienced consultant who had published similar research was chosen. The comparison with other treaties, WIPO said, was destined to provide a benchmark to help IP offices to evaluate potential consequences linked to the implementation of a potential new treaty, based on their experience of previous treaties.

On the World Bank classification, Fink said that there was no adequate UN country classification list for the purpose and the secretariat felt it would be inappropriate to decide itself which country belonged to which group, so it was decided to use the income-based World Bank classification.

The questionnaire was, according to Fink, “the most complex survey ever conducted by WIPO.” But trying to avoid that level of complexity might have created a risk of not meeting the terms of reference of the study, Marcus Höpperger, WIPO director of trademark and design law division, said.

In the afternoon, delegates began the arduous work on the two elements of the potential treaty: draft articles [pdf] and the draft regulations [pdf].

“The two-tier structure is inspired by similar instruments, namely the Patent Law Treaty and the Singapore Treaty on the Law of Trademarks,” Höpperger told Intellectual Property Watch. “The main purpose of this structure is to establish a dynamic framework whereby a future assembly of future contracting parties will have the possibility to amend the regulations, but not necessarily the articles, adapting to an evolving environment.”

Protection of Country Names

Also on the agenda of this week’s meeting is the protection of country names against registration or use as trademarks. Two documents are on the table: a proposal by the delegations of Barbados and Jamaica [pdf], and a proposal by the delegation of Jamaica [pdf]. Jamaica on its own is proposing a work programme to be carried out by the WIPO secretariat, including “an empirical review of the status of the legitimate and illegitimate use, as well as all available protection” of country names.

The SCT should also address the trademark-related aspects of the expansion of the internet domain name system (DNS). The WIPO secretariat was tasked at the 26th session of the SCT with the preparation of an update [pdf] on developments in the context of the expansion of the DNS planned by the Internet Corporation for Assigned Names and Numbers (ICANN). Of particular concern are the introduction of over one thousand new generic top-level domains and the introduction of internationalised domain names at the top level, according to WIPO.

ICANN has requested [pdf] to be an observer in sessions of the SCT and its application was successfully accepted by member states today.

Finally, a World Health Organization representative this week is scheduled to give a presentation of the WHO global data hub for International Nonproprietary Names for Pharmaceutical Substances (INNs).

“Work on International Nonproprietary Names for Pharmaceutical Substances in the SCT goes back to the first session of the SCT and it aims at a better diffusion of INN-related information to trademark registration authorities of WIPO Member States in order to prevent the registration of INNs as trademarks,” Höpperger said.

“The SCT secretariat collaborates with the WHO secretariat in making available to trademark administrations updated lists of WHO approved INNs,” he said.

At the onset of the session, Imre Gonda of the Hungarian Intellectual Property Office was reelected as chair of the SCT. Andrés Guggiana from the permanent mission of Chile and Ahlem Sara Charilehi from the permanent mission of Algeria were elected as vice-chairs.

Catherine Saez may be reached at info@ip-watch.ch.

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