WIPO Talks On Industrial Design Treaty, Internet Intermediaries, Suspended Till 2012

A meeting on trademarks and industrial designs at the World Intellectual Property Organization was cut short by an electrical fire last week. Before the unexpected interruption, delegates advanced work on a possible treaty on industrial designs and discussed the role and responsibility of internet intermediaries in the field of trademarks.

The 26th session of the World Intellectual Property Organization Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) was supposed to be held from 24 -28 October but was adjourned on 27 October after a fire at midday led to a two-day closure of WIPO. The 26th session of the SCT will resume in early 2012 to formally conclude the session, according to WIPO. The exact dates are to be announced later.

At the 25th session of the SCT, from 28 March-8 April, member states advanced work on a treaty on the national registration of industrial designs and considered a set of draft provisions. Industrial design refers to the aesthetic aspects of an item. According to WIPO, “a number of delegations suggested splitting the revised working document into two documents,” which were prepared for the 26th session. The first document containing a set of draft articles [pdf] and the second document the draft regulations [pdf].

The WIPO secretariat, under request from members at the 25th session, also prepared an information document [pdf] on the work of the SCT on industrial design law and practice in relation to the WIPO Development Agenda recommendations.

At the last session, the Development Agenda Group (DAG) voiced reservations about a treaty being premature and called for the SCT to follow the guidelines mandated by the Development Agenda. The DAG consists of about 20 developing country governments such as Brazil, Egypt, India, Indonesia, and South Africa (IPW, WIPO, 30 March 2010).

Some developed country members such as in the European Union have said that a treaty would facilitate industrial design registration in different countries.

According to Marcus Höpperger, director of WIPO Trademark and Design Law Division, last week delegates “had a full discussion of all draft articles and draft rules” and also examined the document prepared by WIPO on SCT work on industrial designs in relation with the WIPO Development Agenda Recommendations.

The African Group and the DAG “proposed the preparation of a study with the involvement of the WIPO Chief Economist that would, broadly speaking, address the potential effects of the SCT work on industrial design formalities, with particular reference to developing and least developed countries,” he told Intellectual Property Watch, adding that other countries agreed in principle to the study “subject to mutually agreed terms of reference.” The terms of reference could not be agreed on account of the unexpected adjournment of the meeting.

A treaty on industrial design “would aim at standardising and simplifying the procedural requirements for the filing of industrial design applications as well as their maintenance and certain post-registration administrative procedures, such as the recording of licenses, security interests or assignments,” Höpperger said. “It would potentially result in reducing administrative obstacles to industrial design registration, thereby making it easier for applicants (residents and non-residents) to file for industrial design registration.”

Role of Internet Intermediaries

Another item on the agenda of the 26th session was the role and responsibilities of internet intermediaries in the field of trademarks. At the 25th session, according to a document [pdf] presented last week to delegates, “SCT Members were invited to submit to the Secretariat proposals for the modalities of an information meeting on the liability of Internet intermediaries.”

During the 26th session, according to Höpperger, the committee agreed to hold an information meeting on the subject that would take place back-to-back with a future SCT session. “Informal consultations concerning the program for such a meeting were under way,” when the session was adjourned, he said.

The Washington, DC-based Computer and Communications Industry Association (CCIA) delivered a statement on the proposal for an information session on the liability of internet intermediaries. In its statement [pdf], CCIA said that they believed in “evidence-based policy-making, not policy-based evidence making.” That is the reason why CCIA proposed at the last SCT meeting that a series of information sessions should be organised.

CCIA said it is unable to “discern any insufficiency in the international legal framework with respect to the protection of trademarks online,” adding, “What actually happens in the marketplace is best known to those who operate commercial services or who have extensive prior experience in doing so.”

CCIA said that “in order to understand how trademarks are used online, the experience of consumers in interacting with trademarks online is essential – which consumer representatives are best able to provide.” They also said that a balance of perspectives from developed and developing countries was essential.

The meeting was chaired by Imre Gonda, from the Hungarian Intellectual Property Office, who was elected vice-chair for the SCT in 2011. He chaired the meeting in the absence of the elected chair, according to WIPO. The chair did not issue a report, considering the circumstances.