WIPO: New Proposal On Disclosure Requirement In Design Applications

On the first day of the World Intellectual Property Organization committee on trademarks and designs the focus was on a proposal from the African Group to include a disclosure requirement in international industrial design applications. Up to now the stumbling block preventing delegates from moving to a high-level treaty negotiation has been technical assistance. This additional parameter might come in the way of swift agreement.

The thirty-second session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is taking place from 24-26 November. The group has been working on a draft text of a design law treaty.

WIPO Director General Francis Gurry explained the unusual length of the meeting, which normally spans over a week. He said the secretariat had integrated in their sessions planning the possibility of a positive decision of the General Assembly on the diplomatic conference (high-level negotiating meeting), which would have alleviated the work of the SCT for this session.

Gurry underlined the main advantage of a design law treaty, which is easier access to design registration formalities. He also said that according to the WIPO Intellectual Property Indicators report, industrial design applications throughout the world have been on a constant rise over the last eight years, and most of those applications are domestically filed.

African Group Proposal for Disclosure Requirement

The African Group proposed the addition of a new item in Article 3 (Application) of the draft treaty text [pdf]. The proposal – which several delegations told Intellectual Property Watch took them by surprise – is a request to include in the industrial design treaty a disclosure requirement in industrial design applications.

The proposal [pdf] asks that “where the subject matter claimed in the industrial design application includes utilization of, or is directly based on genetic resources, their derivatives and the associated traditional knowledge, traditional knowledge, or one or more traditional cultural expressions,” in particular, the country of origin, or if unknown, the source of such materials be disclosed.

Kenya for the African Group said the group includes 54 countries and requested that its proposal on disclosure requirement be included in the draft articles.

Article 3 of the current draft treaty text currently contains a list of indications or elements that members of the treaty could require in an application, such as a request for registration, and the name and address of the applicant.

If the industrial design treaty was adopted as it stands now, with a closed list of requirements, the Kenya delegate said, it would preclude any member of the treaty requiring information on the origin of the designs, when applicable. This has particular importance in the context of stalled negotiations at the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), the delegate said.

An example of the relationship between genetic resources and industrial designs is that some textiles use enzymes, which come from certain countries and constitute genetic resources, an African Group delegate told Intellectual Property Watch.

Iran supported the African Group proposal and India said they had flagged the issue before and is supportive of further discussing the idea.

Several countries, including India, said they had to consult the African Group proposal with their capitals and discussions on the issue were suspended until the second day of the meeting.

Technical Assistance Still Unresolved

Japan on behalf of the Group B developed countries said further substantive progress on the text can only be done at the General Assembly, and expressed concern as the proposal on a new concept comes so late in the process with the risk of undermining the achievements acquired so far.

The Japan delegate also submitted a language proposal [pdf] for a recommendation to the General Assembly. The proposed language says in particular that the WIPO General Assembly decides on the convening a diplomatic conference for the adoption of the design law treaty in 2015. The document also states that “the Diplomatic Conference could consider the inclusion of an article on technical assistance.”

The issue of technical assistance has been a stumbling block in the discussions as some countries, such as the African Group, want an article in the treaty text dealing with technical assistance and capacity building, and said that agreement on that point would condition the convening of a diplomatic conference.

“Technical assistance of course is a priority of this organisation,” Gurry said, adding that some 21 percent of WIPO resources are devoted to technical assistance and capacity building in developing countries.

The Asia and Pacific Group in their opening statement said it “attaches great importance to ensure the provision of technical assistance in the proposed Design Law Treaty through an article in the main body.”

In previous sessions of the SCT, the United States has voiced its opposition to an article and proposed that technical assistance be the object of a separate resolution. Some other countries have said they are flexible on either solutions (IPW, WIPO, 21 March 2014). Group B also said that the issue of technical assistance could be solved at the diplomatic conference and should not condition the convening of a diplomatic conference.

Developed Countries: No More Substantive Discussions on Text

In their opening statements, developed countries maintained that no further substantive discussions are necessary on the draft articles and draft regulations [pdf].

At the outset of the meeting, Germany suggested that the agenda [pdf] be amended so that the item on the industrial design treaty be removed. The delegate said Germany saw no merit in further discussion on the text, given its maturity and any remaining issues should be dealt with at the diplomatic conference. The European Union and Group B also said no further substantive work on the text should be done during this session.

Kenya on behalf of the African Group opposed the deletion of this agenda item. The agenda was adopted as proposed.

The European Union said the design law treaty would provide the alignment and simplification of design registration formalities for all users, “in particular for SMEs [small and medium enterprises], the driving force for economic growth for developed and developing countries alike.”

Protection of Country Names: No Agreement

Separately, Jamaica had submitted a draft joint recommendation for the protection of country names against misleading trademarks for intellectual property offices and trademark practitioners at the last session of the SCT. This raised concerns for several countries, in particular the United States, which questioned the principle of the joint recommendation, and said it has concerns at considering governments as brand owners. South Africa also said the mention of harmonisation of the examination process in the joint recommendation was of concern, as well as the mandatory nature of the language of the text (IPW, WIPO, 20 March 2014).

It was agreed that Jamaica would submit a revised draft joint recommendation [pdf] for the current session of the SCT, taking into account comments made at the last (31^st) session.

The revised version did not get approval from some countries, in particular the United States and South Africa. The latter said it still did not address their concerns. South Africa said the draft document contains text contrary to their national rules and said the Paris Convention for the Protection of Industrial Property, and national legislations provided sufficient protection of country names.

Some other countries supported the revised draft joint recommendation, such as the EU, Italy, and Switzerland.

SCT Chair Adil El Maliki of Morocco proposed that the WIPO secretariat organise for the next session of the SCT a half-day or a day of discussion on this particular topic, taking the Jamaican document as a basis for discussion.

 

Image Credits: WIPO Flickr