Standstill On Industrial Design Treaty, Country Names, GIs In WIPO Committee

Hopes to gain ground in discussions toward a procedural treaty on industrial design applications were not met this week at the World Intellectual Property Organization. Meanwhile, proposals on the protection of geographical indications on the internet and on a potential international GI filing system were put on hold until the next session of the committee.

At issue is a request from the African Group to include a provision on disclosure requirements for genetic resources and traditional knowledge in industrial design applications to prevent misappropriation of traditional industrial designs. This is strongly opposed by developed countries.

Industrial design applicants are mainly from developed countries, and the treaty is considered by some developing countries as serving mainly their interests, while creating an additional burden on their resources. Developed hold the view that the treaty would serve all interests.

Industrial designs relate to the ornamental or aesthetic aspect of an item, and may consist of shapes, patterns, lines or colours.

The 33rd session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) took place from 16-19 March. A summary [pdf] by Chair Adil El Maliki from Morocco was swiftly adopted today, ending the meeting one day early.

At the last session of the SCT, in November, the African Group introduced a request that a provision be added to Article 3 (Application) of the draft articles [pdf].

The provision reads as follows: “[(ix) 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, each party shall require applicants to: (1) disclose the country of origin, or if unknown, source of the genetic resources or their derivatives, traditional knowledge, or one or more traditional cultural expressions; (2) provide relevant information, as required by the national law of the Intellectual Property Office, regarding compliance with access and benefit sharing requirements, including prior informed consent; (3) if the source and or country of origin is not known, make a declaration to that effect.”

This is a new development in the discussion, after several sessions were spent on the issue of whether or not to include technical assistance in the treaty text. Neither issue was resolved this week, technical assistance not being discussed at all, according to sources.

However, if the technical assistance issue pitted mostly the African Group against the United States, with the other countries showing more flexibility, the issue of disclosure requirement drew a clear line between proponents of the African Group proposal and developed countries, as developed countries refused to discuss it.

The African Group explained in the previous session that the disclosure requirement is essential to fend off misuse and misappropriation of traditional designs. According to African Group sources, the request to include a disclosure requirement also stems from the fact that some countries already have that feature in their national legislation.

This week, no work was carried out on the draft treaty text or draft regulations [pdf]. Some informal “lunch time” discussions were initiated by the European Union with no positive conclusions, according to sources.

In its final statement, the EU, a strong proponent of the current version of the draft treaty, conveyed its “continued sense of disappointment at the insistence of the African Group to include new provisions on a disclosure requirement in the draft Design Law Treaty.”

“After formal and informal dialogue” with the African Group, the EU delegate said, “Nothing we have heard so far allows us to believe that we will be in a position to find the common ground that would allow us to move forward towards our common objective of simplifying design registration formalities.”

The summary by the chair notes that “the situation remained unchanged and that all open issues would be considered at the next sessions of the General Assembly and the SCT.”

Lisbon Members Prefer No Discussion in SCT

The proposed revision of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration once again was a matter of discussion at the SCT.

The revision of the 28-member Lisbon treaty, expected to be approved at a diplomatic conference (high-level negotiating treaty negotiation) of the 28 members in May, has drawn the ire of some non-Lisbon members. They maintain that the revision, bringing geographical indications to the same level of protection currently enjoyed by appellations of origin in the treaty, will impact members and non-members of the treaty, and thus the whole WIPO membership ought to be able to participate in the diplomatic conference.

Geographical indications (GIs) are signs which identify the specific geographical origin of a product and the specific quality, reputation, and characteristics that are derived from that specific location. Examples are Roquefort cheese and Georgian wine. Appellations of origin (AOs) are GIs with more stringent requirements.

GIs are a standing agenda item in the SCT but has mostly remained dormant for years, having been revived last year. Two proposals were put forward at the 31st session of the SCT in 2014 on work on GIs to be carried out by the committee.

US: SCT Could Address Gaps in Lisbon Revision

The United States previously put forward a proposal [pdf] asking that the WIPO secretariat undertake a study of national GI systems with the goal of launching a dialogue regarding a possible international GI filing systems.

The US delegate further explained on 17 March that the US had concerns that the Lisbon system as newly envisaged by Lisbon members might not “be in a position to accommodate GI registration systems that do not operate” like the appellation of origin systems of the Lisbon system, according to their statement.

“The SCT must consider what the Lisbon revision ultimately does and does not do, and then consider whether the SCT must take action to fill the gaps left.”

In particular, the US delegate explained that “the United States views the Lisbon Agreement as a reciprocal protection arrangement for governments to exchange lists of appellations of origin, that is, a specific type of geographic source identifier that is created, administered, and enforced by governments.” That model, the US said, is not compatible with the fee-funded GI registration systems of many countries, which require private party applications, publication and opposition, and private party civil enforcement actions.

Because governments hold greater power than non-governmental applicants, the delegate said, “There is a significant likelihood that this asymmetry will undermine the careful balance of interests built into IP registration systems.”

According to the US, the current revision draft does not provide the policy space for national GI systems to operate according to principles of territoriality, due process, and GIs as private property.

The US also suggested that the Lisbon System collect individual fees, including maintenance and renewal fees at the national level, and that the international application fee be raised.

The European Union said in its statement [pdf] the study would add nothing new, and “would in essence only reiterate the obvious fact that there are some countries which protect GIs through the trade mark system, and others, including the EU, through sui generis systems.”

“The best way to accommodate this diversity of national systems is through the expansion of the relevant registration systems run by WIPO: namely the Lisbon and Madrid Systems,” the delegate said.

This was echoed by the group of Central European and Baltic States (CEBS), France, Hungary, Italy, Iran, Portugal, Spain and Switzerland.

On the other hand, Chile, Australia, Argentina, Japan, Russia, South Korea, and Canada supported the US proposal.

Brazil said the diplomatic conference should be opened to the whole WIPO membership, following the prescription of Recommendation 15 of the WIPO Development Agenda (norm-setting activities). The lack of participation of the entire WIPO membership on an equal footing in the upcoming diplomatic conference would depart from an established practice in WIPO, the Brazilian delegate added.

The EU delegate said that a side event to the upcoming WIPO Committee on Development and Intellectual Property (CDIP) (20-24 April) would be organised on 22 April on the added value of GIs and Appellations of Origin for developing countries.

At the request of the US, a closed one hour briefing session was organised today by the WIPO secretariat on the differences between the current Lisbon Agreement and the proposed amended version, according to a source.

Protecting GIs on the Internet: Necessary?

Also on GIs, a separate proposal [pdf] by Czech Republic, France, Germany, Hungary, Italy, Moldova, Spain and Switzerland, cosponsored this week by Portugal relates to issues raised by the introduction of new generic top-level domains (gTLDs) for GIs and country names.

The proponents propose to extend the scope of the WIPO Uniform Domain Name Dispute Resolution Policy (UDRP) to country names and GIs, and that the WIPO secretariat prepare a working document presenting the difficulties of protection of GIs against wrongful registration and use of domain names “with a view to adopt a joint recommendation to revise the ICANN [Internet Corporation for Assigned Names and Numbers] Application Guidebook.”

This was supported by the EU, the CEBS group, Monaco, Iran and Jamaica. Countries not supporting the proposal included Australia and the US, both of which said that sufficient safeguards already exist in the domain name system to address the issue.

An ICANN representative, speaking at the SCT, said the organisation currently has a list of country names that are protected on the first and second level names. Discussions are ongoing in ICANN on whether this list should be amended in any form, he said. This is undertaken by a sub-group (on geographical names) of the ICANN Governmental Advisory Committee (GAC). A draft document was submitted on 16 October 2014 by the GAC sub-group, during a meeting of the GAC in Los Angeles.

Protection of Country Names

Meanwhile, Jamaica explained the rationale of its revised proposal [pdf], submitted at the last session of the SCT, for a proposal for a potential joint recommendation protecting country names against misuse by third parties. Current standards of protection are not comprehensive and as such inadequate, the delegate said. The proposed joint recommendation was not aiming at prescribing rules that national IP offices must follow but at establishing a coherent and consistent framework in the use of country names, the delegate added.

The EU said from the European trademark law perspective the proposed joint recommendation “poses some difficulties,” in particular because of the broad protection and a strict interpretation of the grounds for refusal.

For instance, as regards descriptiveness, Article 3 ‘Conflicting marks’ as revised by Jamaica indicates that “Irrespective of the goods and/or services for which a mark is used, is the subject of an application for registration, or is registered, that mark shall be deemed to be in conflict with a country name where the mark, or a part thereof, consists of or contains a country name, and the mark is being used or intended to be used in relation to goods or services which do not originate in the country indicated by the country name.” This article contradicts European case law, the delegate said.

The EU argued that the issue should be looked at from all perspectives, including current users of country names in trademarks, “who may legitimately use a country name which has become well-known and recognised in the market place.”

The US said that some parts of the Jamaican proposal suggest a right for countries to own their name, and establishes a presumption of deceptive use. The US delegate said not all countries agree on the ownership right of a country over its name.

Jamaica’s proposal was supported by Monaco and Switzerland, which said more and more “nation brands” are used in advertising, conveying values and attributes concerning countries’ reputation.

A side event [pdf] on the protection of country names and nation branding was held on 17 March. Presentations by the four speakers are available on the WIPO website.

In his summary, the chair indicated that both proposals on GIs would be considered again at the next session. It was unclear at press time when that next session will be.

 

Image Credits: FLickr – NLc Taylor