WIPO Members Set To Decide On Industrial Design Treaty Negotiation

A potential treaty to facilitate international applications for industrial designs for creators is on the agenda of a meeting next week at the World Intellectual Property Organization. Also on the meeting agenda is the protection of country name registration and use as trademarks, and a proposed geographical indications filing system.

The 35^th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is taking place from 25-27 April.

Two open issues have held up the decision to move to a high-level final negotiation on a design law treaty.

The SCT has been trying to agree on a set of draft articles [pdf] and draft regulations [pdf] for the treaty on industrial design. Two issues have prevented a consensus. The first one is whether an article on technical assistance and capacity should be included, as favoured by developing countries, or if technical assistance and capacity building should be dealt with through a resolution, which is the option supported by most developed countries.

The second issue is whether a requirement for disclosure of the origin of industrial design should be included in the treaty. The African Group has put forward a proposal for “disclosure of the origin or source of traditional cultural expressions (folklore), traditional knowledge or biological/genetic resources utilized or incorporated in the industrial design.” This is resisted by a number of developed countries.

If enough consensus is found on those two issues, a Preparatory Committee of the Diplomatic Conference of the Adoption of a Design Law Treaty (DLT) is expected to take place from 28-29 April. According to several sources from developed and developing countries, the issue of disclosure of origin is expected to be difficult this week.

According to the agenda [pdf] of the preparatory committee, the committee is expected to consider the Draft Rules [pdf] of Procedure of the Diplomatic Conference; and the draft agenda, dates, and venue [pdf] for the Diplomatic Conference.

The proposed date for the high-level treaty negotiation, or diplomatic conference, is from 12-22 June 2017, and the proposed venue is Geneva.

The United States and Japan have submitted a new proposal [pdf], which suggests discussions on the protection of new technological designs “in light of the current varied laws and practices regarding the protection of new technological designs and the clear absence of readily accessible information on this same topic.”

Protection of Country Names

The agenda [pdf] of the SCT meeting further includes discussions on the protection of country names against registration and use as trademarks.

In particular, delegates are expected to consider a document [pdf] prepared by the WIPO secretariat identifying different practices and approaches. Also on the table is a revised version of a 2014 proposal [pdf] by Jamaica on the protection of country names.

Geographical Indications

The SCT is also expected to consider several proposals dating back to previous sessions of the SCT on geographical indications.

In particular, a 2013 proposal [pdf] and a 2014 proposal [pdf] by the US suggesting to explore the feasibility of a geographical indications filing system “that would be inclusive for all national law protection mechanism.” It also asks the secretariat to undertake a study “to examine the various national law approaches to specific geographical indications topics where there is a lack of international understanding.”

Those proposals came in reaction to the work on an update of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration to include geographical indications. The 2015 Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications was adopted amidst strong protests from non-members of the Lisbon Agreement prevented from a voting right in the diplomatic conference establishing the new act.

Another document on the agenda is a 2015 proposal [pdf] by France requesting the examination of national legislation and procedures relating to the protection of geographical indications.

Also on the agenda a 2015 proposal [pdf] of the Czech Republic, France, Germany, Hungary, Italy, Poland, Portugal, Moldova, Spain and Switzerland on the protection of geographical indications and country names in the domain name system.