Dawn Of WIPO Industrial Design Treaty Talks; Internet As Trademark Danger Zone

World Intellectual Property Organization members this week took early steps toward the possibility of a treaty to facilitate the registration of industrial designs, and urged WIPO to continue addressing potential new challenges to trademarks from the impending expansion of domain names on the internet.

“WIPO is in a norm-setting mode right now,” said a participant.

The 24th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications met from 1-4 November.

The concept of an international instrument for industrial designs emerged earlier this year, and was reinforced at the annual WIPO General Assembly in September, in particular by the European Union. The treaty would be aimed at facilitating industrial design registration at national level.

A marked copy of the draft summary of the meeting by the chair is available here [pdf].

Industrial design refers to the aesthetic aspect of an item. This can be three-dimensional features, such as a shape or a surface, or two-dimensional features, such as patterns, lines or colours, according to WIPO’s website.

The treaty could set a “ceiling” of possible administrative requests to grant registration, a diplomat said. In some countries, industrial designs are covered under patent laws and in others under copyright laws, a source said (IPW, WIPO, 30 September 2010).

But there was some concern about setting a fixed list of documents related to registration, another source said.

Some countries are eager to set a target for negotiating a treaty on industrial design while others would like more information before moving into full negotiations.

For the meeting, WIPO provided draft provisions on industrial design law and practice [pdf]. During the meeting, delegations reviewed it, and some countries asked for clarifications. The WIPO secretariat was asked to prepare a revised text, taking into account comments from the 24th session, for consideration at the next session of the committee, tentatively from 28 March to 1 April 2011.

According to the draft summary by meeting Chair Adil el Mabiki of Morocco, “a number of delegations called for the convening of a diplomatic conference for the adoption of a treaty on industrial design registration formalities.” Late changes were made to the chair’s draft stating that some members want the diplomatic conference be held in the next biennium, 2012-2013, while others were of the view that further discussions were needed on the revised text before considering the diplomatic conference.

Trademarks and the Internet

The committee also addressed the issue of the protection of intellectual property rights in the context of the Internet Corporation for Assigned Names and Numbers (ICANN) project to expand the domain name system, introducing new generic top-level domains. The chair’s draft also cited that concerns were expressed by several delegations regarding an initiative at ICANN to review and possibly amend the Uniform Domain Name Dispute Resolution Policy (IPW, Copyright Policy, 23 June 2010).

Protection of trademarks on the internet was also on the agenda of the meeting. The secretariat was asked to examine the Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs on the Internet, adopted by member states in 2001, almost 10 years after its adoption, in the face of new challenges.

According to the document on trademarks and the internet [pdf] prepared by the secretariat, “Practices such as the unauthorized use of trademarks as keywords by search engine operators or within listings for non-genuine goods on auction sites, or the use of trademarks on virtual objects that are traded in virtual worlds, constitute clear challenges to the traditional application of trademark law.” According to the chair’s summary, WIPO should examine the joint recommendation to determine if new challenges were addressed in the 2001 text, and member states were asked to carry out a similar analysis.

Separately, ongoing concerns by some governments about the unauthorised use of country names were also raised during the meeting. The WIPO secretariat was asked to draft a document on the situation, a participant said.

William New contributed to this story.