WIPO Industrial Design Treaty In Hands Of December Assembly; GI Debate Returns

There appears to be consensus at the World Intellectual Property Organization on establishing a procedural treaty to facilitate the international registration of industrial designs. But a weeklong committee meeting last week could not solve the issue of how to include technical assistance in the treaty. The WIPO General Assembly in December will decide on whether to convene a high-level meeting next year to finalise the treaty.

Meanwhile, the United States proposed resuscitating discussions on geographical indications (GIs) in the committee, which stirred resistance and divided delegations in a different way than usual. That’s because protection of GIs is currently under discussion in a working group seeking to extend to GIs the current protection of appellations of origin under the Lisbon System.

The WIPO Standing Committee on the Law of Trademark, Industrial Designs and Geographical Indications (SCT) met from 4-8 November. Industrial designs are a form of intellectual property that creators can pursue on the ornamental or aesthetic aspect of an article.

The summary by the chair [pdf] of the SCT, Adil El Maliki of Morocco, was issued on the final day and adopted without modification.

During the week, delegates worked on a set of draft articles [pdf] and draft regulations [pdf]. The decision to convene a high-level treaty negotiation (diplomatic conference) was debated at length during the last WIPO General Assembly in September, but no decision was reached (IPW, WIPO, 28 September 2013).

The General Assembly did not conclude and will reconvene in a special session in December (IPW, WIPO, 4 November 2013).

A particular issue in the discussion was the manner in which to include technical assistance and capacity building in the future treaty. Developing nations insist that this be included in an article, while some developed countries favoured a resolution. The inclusion of an article would make the decision on technical assistance mandatory The draft articles of the treaty included a draft Article 21 on technical assistance and capacity building.

After informal consultations, a new draft article/resolution [pdf] was issued on 7 November.

That document, as in the previous version, includes bracketed text, showing divergences, such as the paragraphs relating to the financing of technical assistance. The paragraph on fee reduction for developing countries and least-developed countries is also bracketed. A footnote indicates that the African Group proposes that this provision be the object of a separate article in the draft treaty.

Technical Assistance, US Stands Apart

On 7 November, El Maliki hailed the progress made on the draft article/resolution. The WIPO secretariat is to prepare a revised working document for the consideration of the SCT or a possible preparatory conference, which will reflect all comments made during the present session, and include the new draft Article 21/resolution, according to the chair’s summary.

However, the decision on whether the topic of technical assistance and capacity building should be an article or a resolution could not be agreed upon. Developing countries such as the African Group, the Development Agenda Group (DAG), and the Group of Latin American and Caribbean Countries (GRULAC), stood firm on their request that it become an article and conditioned the convening of a diplomatic conference to this request.

A number of developed countries that took the floor during the week said they could adopt a flexible position on the issue, such as Singapore, the Group of Central European and Baltic States, and the United Kingdom. The European Union said its member countries preferred to defer the responsibility of the draft article to a diplomatic conference set in 2014.

The United States was the only country that took the floor to voice opposition to an article and support a resolution. The US supports moving toward a diplomatic conference with the text as it was worked on during the week, the delegate said, and it believes that the debate on the topic is unnecessary at this point and best left for the diplomatic conference.

The US gave some arguments why it favours a resolution and said that from a precedent perspective, the Singapore Treaty on the Law of Trademarks has a resolution dealing with technical assistance and the Patent Law Treaty has an agreed statement. Both are “formality” treaties, such as the one discussed this week, the delegate said.

In addition, he said, a resolution is the appropriate solution as it would provide “many benefits,” one of which is that technical assistance could start “flowing” immediately. If technical assistance and capacity building were enshrined in an article, there would be a delay in those services as ratification of the treaty would be necessary, he said.

The matter of convening a diplomatic conference is now left to the General Assembly in December, El Maliki told Intellectual Property Watch.

US Calls for GIs in SCT, Not to the Taste of All

A new proposal by the United States was sent to the WIPO secretariat on 31 October and submitted to the SCT. The purpose of this new proposal is to reopen discussions on geographical indications (GIs).

GIs are used to indicate that goods have a specific geographical origin from which they derive particular qualities, reputation or characteristics.

The US suggests two avenues of work: “1) to explore the feasibility of a geographical indications filing system that would be inclusive for all national law protection mechanisms; and 2) to request the Secretariat to undertake a study, or a series of studies, to examine the various national law approaches to specific geographical indications topics where there is a lack of international understanding. For example, the Secretariat could research and solicit input from WIPO Members as to the tests for evaluating whether an applied for geographical indication is generic in a territory.”

During plenary on 6 November, the US said the SCT agreed some years ago to suspend work on GIs as some delegations were concerned that this work could prejudice positions on GIs in other fora, such as at the World Trade Organization. But now there is an inconsistent treatment of GIs, the delegate said.

The US is interested in exploring the feasibility of a GI filing system administered by WIPO, that would be neutral as to the type of GI system that a contracting party maintains at the national level, he said. The US protects its geographical indications under a certification mark system.

At the heart of the concerns of the US are ongoing discussions in the Working Group on the Development of the Lisbon System (The International System of Appellations of Origin), which is working on a review of the Lisbon System to attract more members and now is contemplating extending the protection of the system to GIs.

At the September WIPO General Assemblies, a decision was made by the Lisbon Assembly to endorse a roadmap towards the approval of a revised version of the Lisbon Agreement, which includes a diplomatic conference in 2015 (IPW, WIPO, 1 October 2013).

The US said this revision exceeds the mandate of the working group, which was tasked to explore possible improvements to the procedures under the Lisbon Agreement. The US is not party to the agreement. The delegation said the US alarm comes from the fact that the revision requires contracting parties to implement a sui generis system to provide universal, automatic and perpetual protection for GIs instead of limiting this protection to appellations of origin (appellations of origin are GIs with more stringent obligations).

The systems for the protection of GIs, such as the one implemented by the US, “are entirely absent from the system currently represented in the draft text,” the delegate said, adding that the US is “excluded from the treaty on principle but we are asked to fund this very specific provision of TRIPS and other trade obligations.”

“It appears that there is no mechanism whereby a member of the WIPO SCT can successfully oppose the funding of a diplomatic conference for WIPO treaty that clearly exceeds its mandate,” he deplored.

It is not clear, the US said, how a new right under the Lisbon Agreement would operate along with the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) GI obligations, or whether it might lead to a risk of conflicts between the two regimes.

The proposal to reopen discussions on GIs on the terms of the US proposal was frostily received by some delegations, proponents of a specific protection for GIs. Many delegations said the proposal was received only at the start of this session of the SCT and they needed more time to consider it.

Some delegations, such as Italy – a prominent holder of GIs – voiced concern that the US proposal could be an attempt at blocking or delaying work of the Lisbon working group.

The EU asked that the consideration of the proposal be deferred to a further session of the SCT, joined by Chile, Greece, Portugal, Poland, Brazil and Mexico. Switzerland also said it saw no added value in the US proposal as compared to the work done by the SCT in the past. Hungary supported Italy and Switzerland and said it does not support any further work of the SCT on GIs.

Japan, Canada, South Korea, Australia, and South Africa supported the general idea of the SCT being the appropriate forum to discuss GI issues.

Some countries asked that GIs be discussed in the context of the protection of GIs in the domain name system, as did the Organization for an International Geographical Indications Network, a GI industry group.

The chair’s summary indicates that a large number of delegations were of the view that the SCT should pursue work on GIs. The summary says that all delegations are invited to present their proposals for the GI agenda item before the next session of the SCT.

Protection of Country Names

Delegates also considered the Revised Draft Reference Document on the Protection of Country Names Against Registration [pdf].

According to the summary by the chair, “a large number of delegations expressed support for continuing work on this item.” Some countries suggested that the SCT work on a possible future joint resolution, while other countries asked for a further study on specific aspects of the topic, such as the role of countries as brand owners. Delegations are invited to submit their proposals before the end of the year.

No tentative date was put forward for the next session of the SCT since the date of the next session depends on the potential convening of a diplomatic conference and preparatory meeting.