WIPO Slowly Advances Industrial Design Treaty, Eyes ISP Liability For Trademarks

Governments meeting last week to discuss a possible new treaty on industrial design harmonisation snagged slightly at the end over how to chart a course to a treaty negotiation, but otherwise reported a smooth week of talks. Officials also agreed to plan a meeting on internet service provider liability.

The 25th World Intellectual Property Organization Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) was scheduled from 28 March to 1 April, but delegates finished work on 30 March and reconvened on 1 April to approve the chair’s summary of the session.

Most of the work of the session this week was to advance work on a potential treaty on the national registration of industrial designs, and to look into trademark protection on the internet.

“A potential treaty would set some standards at the national level for industrial design procedures, such as the content of the application, how the industrial design is represented in the application, its publication, and the definition of the minimum elements contained in the applications to set a filing date,” Marcus Höpperger, acting director of WIPO Trademark and Design Law Division, told Intellectual Property Watch after the meeting.

“This instrument would aim at harmonising and simplifying procedures for applying for industrial design registrations, in a uniform manner,” he said.
The chair’s summary as adopted is available here [pdf].

Formalities Treaty, Director General Says

WIPO already oversees the Hague System for the International Registration of Industrial Designs. At a 30 March press briefing, WIPO Director General Francis Gurry said that the treaty under discussion at the SCT would be only on “formalities”.

In the area of patents, there is the Patent Cooperation Treaty (PCT), and the Patent Law Treaty (PLT), Gurry said. The PLT harmonises the formalities in the patent area, he said. “To the extent that a person, or enterprise, does not use the PCT, then the function of the PLT is to make it easier to navigate through the various national systems because the formalities are harmonised,” he said.

In the area of trademarks, there is something similar, he said. There is the Madrid System for the International Registration of Marks, he said, and outside the Madrid system, to have a harmonisation of formalities, there is the Singapore Treaty on the Law of Trademarks, he said.

“We think it would be quite a desirable thing to have the parallelism of that in the design area,” he said. “You can go through the Hague system, but outside the Hague system, let’s make it easier for applicants to navigate the formalities. It’s a formalities treaty,” Gurry said.

Some members, such as the United Kingdom – which put the idea of a treaty forward – followed by the full European Union, are saying that a treaty would facilitate industrial design registration in different countries. Other countries, such as the Development Agenda Group, are resisting the idea of a treaty negotiation (called a diplomatic conference) until they have more information (IPW, WIPO, 30 March 2011).

At midweek, meeting Chair Park Seong-Joon, director of trademark examination policy at the Korean Intellectual Property Office, told Intellectual Property Watch that all member states agreed to pursue the discussion on a potential treaty, and that no clear objection to a diplomatic conference was made.

On the final day, members did not agree on some of the wording of the chair’s draft summary [pdf], which had to be amended. In particular, the first version of the summary said, “The Committee was in agreement that a diplomatic conference for the adoption of a design law treaty could be convened once sufficient progress has been made and the time was ripe for recommending the holding of such a diplomatic conference.”

Some countries requested that the language be changed to: “The Committee was in agreement that as a possible path to move ahead, a diplomatic conference for the adoption of a design law treaty could be convened once sufficient progress has been made and the time was ripe for recommending the holding of such a diplomatic conference.”

According to a source, some countries may have reservations about the treaty because they feel it could tie them into compliance, but only countries which ratify the treaty would have to amend their national laws.

Meeting to be held on ISP Liability

The protection of trademarks on the internet was also part of the main discussions of the session during the week According to the chair’s summary, “SCT Members are invited to present proposals for the modalities of an information meeting on liability of Internet intermediaries to the Secretariat before the end of the month of May 2011. The Secretariat was requested to compile all suggestions received and to present them to the twenty-sixth session of the SCT for consideration.”

The suggestion of an information meeting was mentioned [corrected] by the Washington, DC-based Computer & Communications Industry Association (CCIA), during an intervention [pdf] at the SCT on 29 March, proposing “a work plan on trademarks and the internet.”

After the meeting the CCIA said in a release that it welcomed “the WIPO member states’ endorsement of fact-led discussion of internet intermediaries and trademarks.”

Member states generally concurred with the idea of an information meeting gathering different stakeholders, according to several sources.