WIPO Members Urged To Overcome Differences On Disclosure Of Origin Of Designs

This week, World Intellectual Property Organization delegates are being urged to come closer on remaining issues in a potential treaty facilitating the registration of industrial designs for international applicants. This is easier said than done, though, as a number of WIPO members request that the treaty allows countries to request applicants to disclose the source of their designs, and other countries find this would defy the harmonising aim of the treaty.

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.

The draft Design Law Treaty (DLT) has been on the table for a few years (IPW, WIPO, 10 May 2014). In 2013, the issue that kept consensus elusive was whether or not an article on technical assistance should be part of the treaty text or remain outside, addressed in some other form such as a resolution.

Since then, the African Group has made a proposal requesting that a disclosure requirement be included in the treaty text, which was strongly opposed by some developed countries. A disclosure requirement is meant to prevent misappropriation of designs.

At the opening of the session, on 25 April, delegations made cases for both issues, reiterating known positions, and re-elected SCT Chair Adil El Maliki of Morocco called delegations to meet in an informal setting today to try to reach some consensual textual solution.

At the outset of the meeting, WIPO Director General Francis Gurry said “it should be made clear that no delegation is opposed” to the principles of technical assistance. If delegates are unable to complete their discussions, according to the General Assembly’s resolution, the matter should go back to the 2016 General Assembly (in October) and “one year would have been lost,” he said.

The General Assembly decision specifies that agreement needs to be found on those two issues before confirming the holding of a high-level negotiating meeting (diplomatic conference) expected to adopt the treaty. A preparatory committee for the diplomatic conference has been tentatively planned on 28-29 April.

“Now is the time to take a decision and make the compromises that would be necessary” to reach agreement, said Gurry, underlining the fact that the discussions on the DLT occur in the larger context of the normative programme of the organisation.

The DLT seems to be the most advanced and most promising normative process at WIPO in terms of outcome, he said, and an agreement on the treaty would reinforce the role of multilateralism, in a world where multilateralism is experiencing many challenges, he added.

Disclosure Requirement Rationales Sought from Both Sides

In the current draft articles [pdf] of the treaty, disclosure requirement, as proposed by the African Group, stands in Article 3.1 ix, which reads: “a disclosure of the origin or source of traditional cultural expressions, traditional knowledge or biological/genetic resources utilized or incorporated in the industrial design.”

Nigeria, on behalf of the African Group, said it was not in a position to withdraw its proposed article, and asked for the rationale for resistance to the inclusion of a paragraph on disclosure requirement, in the face of so many WIPO countries requesting it. The African Group includes 54 countries, and some individual countries such as Indonesia, Iran, and Oman have supported a disclosure requirement provision.

The Asia and Pacific Group includes countries with different levels of development, such as India, Indonesia, Japan, Iran, Malaysia, Thailand, and South Korea. India, for the group, said most of the group members are supportive of the principle of disclosure, on the grounds that countries should be given the flexibility to include disclosure requirement as a criteria for granting an industrial design within their own jurisdiction.

South Korea said a disclosure requirement runs counter to the aim of the treaty at harmonising formalities. Such a requirement could substantively affect the registrability of designs, and place undue burden on the applicants, the delegate said.

The European Union said it remained unconvinced that the proposal on disclosure requirement is relevant for industrial design. Disclosure, it said, is linked to the patent system. The issue of disclosure of genetic resources, and traditional knowledge associated with genetic resources, is already addressed in the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), the union said, and should remain in that committee.

Switzerland remarked that any national law could introduce substantive law on disclosure of source, running alongside the proposed treaty. Sources told Intellectual Property Watch that the current draft of the treaty does not prevent such measures to be taken by countries.

A delegate from Nigeria, in her national capacity, said the requirement would not change the spirit of the treaty but was merely a matter of preserving policy space at the national level. Design applications should be novel and new, and indicating a source of design is part of ascertaining that novelty, she said.

Answering the arguments from some countries that the DLT is a procedural treaty and not a substantive one, she remarked that every formalities treaty has substantive implications.

Mozambique supported that view and said several articles in the draft treaty could have substantive implications, such as Article 6 (Grace Period for Filing in Case of Disclosure), and Article 17 (Effects of the Non-Recording of a License). A disclosure requirement, the delegate said, would allow policy space to countries wishing to facilitate identification of designs that have been misappropriated or not properly attributed.

Technical Assistance and Capacity Building

The other prickly open issue of the DLT is how to address technical assistance and capacity building for developing countries.

Greece, for the Group B developed countries, said WIPO has been successfully delivering technical assistance to developing countries, irrespective of technical assistance provisions in the treaties the organisation is administering.

The African Group and the Asia Pacific Group supported the inclusion of an article in the main body of the treaty.

Protection of Country Names, Geographical Indications

The two other items on the agenda of the SCT this week were briefly discussed and were put off to the future. The protection of country names against registration and use as trademarks, on a geographical indications international filing system, and on protection of geographical indications on internet will be further discussed at the next session of the SCT to allow more time to focus on the two remaining issues of the DLT (IPW, WIPO, 25 April 2016).

 

Image Credits: WIPO