Decision on WIPO Design Treaty Left To General Assembly; Internet Issue DroppedPublished on 21 September 2012 @ 8:09 pm
By Catherine Saez, Intellectual Property Watch
World Intellectual Property Organization delegates today were unable agree to recommend to the upcoming WIPO General Assembly to convene a high-level treaty negotiation on industrial designs. Work on draft treaty articles demonstrated good spirit, according to the committee chair, but experts could not agree on the timeframe. The committee, meanwhile, reached agreement on further work on the protection of country names, and quietly dropped the role of internet intermediaries in trademark protection from the meeting agenda.
The 27th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) took place from 18-21 September.
At the beginning of the week hopes were high for some countries that the SCT would forward a recommendation to the WIPO General Assembly at the beginning of October to convene a diplomatic conference to agree on a treaty on industrial designs.
However, following a week of discussions, delegates were not able to decide on a recommendation, as noted in the meeting summary [pdf] of the SCT chair, Imre Gonda.
In particular, delegates could not agree on further work on a study [pdf] provided by WIPO to this session of the SCT.
The Development Agenda Group and the African Group said that the study did not meet all the requests of the terms of reference adopted by the SCT and asked that the study be extended (IPW, WIPO, 19 September 2012).
The European Union and other Group B developed countries considered that the study adequately fulfilled its mission and need not be extended.
Most countries acknowledged that the study was a valuable source of information on the potential impact on developing countries of the work of the SCT on industrial designs, and said a treaty on industrial designs would be useful, but disagreement arose on the timeframe of such an instrument. Extending the study and pursuing further work on it in the SCT would likely postpone the convening of a diplomatic conference, which is the highest-level negotiation.
Developing countries said that the SCT should take into account the different levels of development of its member states, that the study should be extended and the questionnaire simplified, in particular to allow more applicants and IP offices in developing countries to provide answers. Some developing countries have also said that a premature decision on a treaty could lead to a situation where only a handful of countries become members of this new instrument.
According to a Group B source, the EU initiated talks on a potential treaty on industrial design, which explains why the EU member states have a firmer position on the advancement of work at the SCT towards a treaty. As shown by the study and comments on the draft provisions during the SCT, the source said, interest in a treaty exists in various regional groups, and the requests to extend the study seem to be attempts to prevent the conclusion of work on industrial design at the SCT.
The apparent impatience of the EU for the 1-9 October General Assemblies to convene a diplomatic conference comes from the fact that work on a potential treaty has spanned over several years and has reached the desired level of maturity to justify going to the next level, the source said. Delaying that decision for another year just seems a waste of time as the SCT would meet twice before the diplomatic conference which could be convened at the end of 2013, the source added.
On the relative silence of Group B as a whole this week on the potential treaty, the source said that since the SCT is a technical committee, Group B considered group positions were not necessary, and preferred that each of its members contribute to the discussions on an individual basis on technical questions such as drafts articles and draft regulations.
At the close of the session, Gonda, the chair, told Intellectual Property Watch that progress had been accomplished on the draft articles and regulations, with countries willing to compromise and that if experts could not agree on a diplomatic conference this week, the General Assembly members might find an acceptable solution for all parties.
Protection of Country Names: A Step Forward
Informal discussions took place yesterday (IPW, WIPO, 20 September 2012), between Barbados, Jamaica and the European Union to try to find a common position on a proposal by the two Caribbean countries for a study on the protection of country names.
This morning, Barbados and Jamaica issued a revised version of their study proposal (which stands as an annex to the chair’s summary) which met the approval of the plenary. The revised version trimmed out reference to a work programme on the protection of country names that appeared in the proposal they submitted to the SCT [pdf].
The WIPO secretariat is to provide a study on the protection of country names, and the results of the study are due to be presented to the SCT at its 29th session, instead of its 28th session as initially requested by Barbados and Jamaica.
Quiet Exit for Internet Intermediaries
Meanwhile, delegates unanimously decided to delete from the SCT agenda the item relating to the role and responsibility of internet intermediaries in the field of trademarks. Delegates praised the information meeting on the subject which took place on 17 September (IPW, WIPO, 18 September 2012).
For Nick Ashton-Hart, Geneva representative of the Computer and Communications Industry Association, the decision to remove this agenda item without any comments or decisions, which itself is a rare occurrence in WIPO committees, shows that “member states wisely recognised that there is not really any international work to be done relating to intermediaries and trademarks, and it was better to focus on other work areas.”
The topic, which according to Ashton-Hart was not requested by any member state, was proposed by the chair of the 23rd session of the SCT, in November 2010.
Contribution of SCT to Development Agenda
This item was added to the draft agenda at the opening of the session at the request of the Development Agenda Group and supported by a number of developing countries, such as the African Group. Both groups recalled the importance of developmental considerations in all WIPO committees and praised efforts made in the SCT to implement the WIPO Development Agenda recommendations. They called for a sustained effort, and in the context of industrial designs insisted on the need for technical assistance and that the SCT take into consideration the different levels of development of member countries.
The DAG and the African Group, joined by India and Algeria, asked that the contribution of the SCT to the implementation of the Development Agenda recommendations be a standing item on the SCT agenda. Group B countries, the EU, and the Central European and Baltic States countered that it should not be a standing item.
Nonproprietary Names for Pharmaceutical Substances
In the morning, the World Health Organization gave a presentation of the WHO Global Data Hub for International Nonproprietary Names for Pharmaceutical Substances (INNs). The WHO INN programme assigns INNs to medicinal substances through a consultative process. WHO INN provides names for pharmaceutical substances to help understand and identify them, attributing one single name worldwide that is recognisable by all and places them in the public domain, said Raffaella Balocco Mattavelli, from the INN programme, giving the presentation.
INNs can thus never be registered as trademarks, such as paracetamol, a well-known pain killer, for example, but are identifiable everywhere. The WHO INN programme works closely with regulatory authorities and IP offices around the world. INNs should be distinctive so as not to be confused with a common name and as part of the public domain can be used without restriction to describe pharmaceutical products, she said.
Catherine Saez may be reached at email@example.com.