Design Treaty Not Discussed At WIPO Committee; Information Session On GIs To Be Held In Spring 19/10/2016 by Catherine Saez, Intellectual Property Watch Leave a Comment Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window)Fresh from intense discussions at the World Intellectual Property Organization General Assemblies earlier this month, delegates to a WIPO committee today agreed to hold an information session on geographical indications in the spring, and to further work on industrial designs. However, no further discussions to help break the deadlock on a proposed design law treaty could be arranged this week. SCT meeting at WIPO this week The 36th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) took place from 17-19 October. The agenda of the session is here [pdf]. Committee Chair Adil El Maliki, director general of the Moroccan Industrial Property Office provided a summary of the session [pdf], stating decisions taken by the SCT, which was swiftly adopted this morning. No Discussion on DLT Draft Text Opening the session on 17 October, WIPO Director General Francis Gurry commented on the “non-result” which came from the last WIPO General Assembly on a potential new treaty on industrial designs. Some countries have deemed the draft treaty text ready for a high-level negotiating meeting (diplomatic conference) to complete it. Other countries want two points cleared up before such a meeting, in particular on the disclosure of origin of traditional knowledge and traditional cultural expressions in design applications (IPW, WIPO, 12 October 2016). Some treaty proponent countries – such as those in the Group of Central European and Baltic States, as well as the European Union – said at the General Assemblies and again during this week’s SCT that draft treaty text should not be discussed any further in the context of the SCT but rather be left for the next WIPO General Assembly. Gurry warned that the 2017 General Assemblies will have a very full agenda, including discussions on the budget for the next biennium. The SCT did not open discussion on the Design Law Treaty during this session and it was agreed it would remain on the agenda for the next session of the committee in the spring. The 2016 General Assembly decision states that during its 2017 session, the Assembly will consider the convening of a diplomatic conference to take place at the end of the first half of 2018. Country Submissions on Design In Emerging Technologies Following a proposal [pdf] by the United States, Israel and Japan at the last session of the SCT earlier in 2016, on “Industrial Design and Emerging Technologies: Similarities and Differences in the Protection of New Technological Designs,” the WIPO secretariat had been tasked with the preparation of a questionnaire. The replies to that questionnaire were compiled in a document [pdf] presented this week at the SCT. The proposal by the US, Israel and Japan focuses on technological designs, including graphical user interface, typeface, type font, and icon designs. Although the protection of such designs has become mainstream in many jurisdictions around the world, variations exist in the protection provided and the associated eligibility requirements, according to the proposal. There is a lack of information available as to how jurisdictions are providing protection for those designs, as well as other new and emerging technological designs, it said. The SCT decided to invite member states to submit additional and/or revised replies to the questionnaire on graphical user interface, icon and typeface/type font designs. Accredited non-governmental organisations are also invited to submit comments and observations on the topic from the perspective of their experience. A stated in the summary by the chair, the secretariat is to compile all replies, comments, and observations received in a document for the next session of the SCT, and provide analysis of those replies, comments and observations. Protection of Country Names against Trademark Registration The SCT discussed the protection of country names against their registration and use as trademarks from 2009 to 2015, with a number of working documents, according to the SCT meeting document [pdf], prepared by the WIPO secretariat last spring. SCT Committee Chair Adil El Maliki, director general of the Moroccan Industrial Property Office The document suggested existing areas of convergence in regard of the protection of country names. The SCT decided that this topic of discussion would remain on the agenda for the next session and requested the secretariat to invite members to submit comments and observations on areas of convergence. These are: Notion of country names, non-registrable names if considered descriptive, invalidation and opposition procedures, and the use as a mark. Submissions should include practical examples of how these principles are applies in their jurisdictions. Information Session Planned to Discuss GIs How to address geographical indications (GIs) in the context of the SCT has been a difficult issue. For years, GIs were not discussed in the SCT despite being in the name of the committee. Discussions were revived as parallel discussions at WIPO led to a new act to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. The Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications adopted in May 2015, was disputed by some WIPO members, because it was adopted by only a fraction of WIPO membership (28 members of the Lisbon Agreement). Several delegations made proposals on how to address GIs at the SCT, none finding consensus. Two approaches to protecting GIs are at play in the world and reflected in WIPO discussions; GIs protected by a sui generis system, such as in Europe, and GIs protected through trademarks, such as in Australia and the US. The GI discussion has long been in a deadlock at the World Trade Organization Council on Trade-Related Aspects of Intellectual Property Rights (TRIPS). GIs are also a point of contention between Europe and the US in the bilateral Transatlantic Trade and Investment Partnership (TTIP) negotiations. After a day spent in informal discussions, the SCT decided that a one-day information session will take place at the next session of the SCT in the spring. The information session will focus on the one hand on the features, experiences and practices of the different national and regional GI protection systems, and on the other and on the protection of GIs on the internet, and GIs and country names in the domain name system. The committee decided to defer the decision on how to further discuss GIs in the SCT after the information session. A number of Lisbon members declared this week that they would not allow the SCT to discuss any amendment to either the Lisbon Agreement or the Geneva Act. Image Credits: WIPO Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) Related Catherine Saez may be reached at csaez@ip-watch.ch."Design Treaty Not Discussed At WIPO Committee; Information Session On GIs To Be Held In Spring" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.