Discussion Of Treaty On Industrial Designs, Role Of ISPs Resumed At WIPO

After being adjourned in November in the mists of a fire at the World Intellectual Property Organization, a meeting on trademarks and industrial designs resumed today in icy Geneva.

Delegates are resuming their work on a possible treaty on industrial designs, and will try to find agreement on the terms of reference of an information meeting about the responsibility of internet intermediaries in relation to trademark infringements. They also will address the issue of the protection of country names.

The 26th session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) supposed to be held from 24 -28 October, was unexpectedly adjourned after a fire led to a two-day closure of WIPO on 27 October (IPW, WIPO, 2 November 2011). The session is resumed from 1-3 February.

At the opening of the session today, according to sources, WIPO Director General Francis Gurry encouraged delegates to adopt a pragmatic view on the treaty and reach an agreement. He said that industrial design is an underestimated area and that he hopes for a positive result.

Gurry also said that concerns of some countries that arise about the patent system and access issues are “simply not present in the case of industrial designs.”

Potential Treaty on Industrial Designs

Industrial design refers to the aesthetic aspects of an item. According to WIPO, “the design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color.”

Discussions about the draft articles and draft rules of a potential treaty occurred in October and will not resume during this session. Delegates have to agree on the terms of reference of a study that was requested by developing countries.

During the last session of the SCT, the African Group and Development Agenda Group (DAG) proposed that a study be prepared with the involvement of WIPO chief economist. The study would measure the potential effects of the SCT work on industrial design formalities, with particular reference to developing and least developed countries.

“The principle of a study has been broadly accepted by delegations, but the scope was not clear,” Chair Imre Gonda of the Hungarian Intellectual Property Office told Intellectual Property Watch. According to Gonda, countries now need to agree on the terms of reference of that study.

Developing countries have concerns about a new legal instrument that they say could have negative and costly effects on national legislations and administrations, and would like to estimate the cost/benefit ratio. Those countries include the African Group, the DAG, the Asian Group and the Group of Latin American and Caribbean Countries (GRULAC), he said.

On the other hand, he added, the European Union and the Group B developed countries consider that a study could delay the procedure as they would like to make a proposal to the annual General Assembly in September to convene a diplomatic conference. They would like the study to be completed by the next SCT meeting, which should take place in June, he said.

According to a developed country source, the treaty would simplify industrial design registration formalities by putting a ceiling to the requests of a country signatory to the treaty concerning the registrations. This appears to be in the interest of all applicants from all countries, since industrial designs are registered and used internationally, the source said.

Marcus Höpperger, director of the WIPO Trademark and Design Law Division, told Intellectual Property Watch previously that, “according to the 2010 WIPO World Intellectual Property Indicators, national industrial design applications continued to grow constantly over the last fifteen years.” For example, he said, “the total number of resident and non-resident applications filed in 2008 is estimated at 550,300 for resident applications and 105,700 for non-resident applications. Evidence is “strongly suggesting” that the industrial design registration system “is largely used by national filers and benefitting domestic design industries.”

Protection of Country Names

This morning the session opened with the discussion on the protection of names of states against registration and use as trademarks. The delegations of Barbados and Jamaica had issued a proposal [pdf] in October 2011, to be discussed at the 26th session of the SCT.

This proposal follows a previous proposal [pdf] by Jamaica, made at the 21st session of the SCT in June 2009. The 2011 proposal states that “the Paris Convention for the Protection of Industrial Property does not prescribe specific rules for the protection of country names, allowing the parties to adopt varied approaches to the matter.”

In the June 2009 proposal, Jamaica suggested the amendment of Article 6ter of the Paris Convention for the Protection of Industrial Property, so that the “protection of country names be added to the categories under Article 6ter(1)(a).”

The October joint proposal by Barbados and Jamaica suggests that the protection of country names should be done in a “holistic manner and take into account the socioeconomic and legal implications.” The absence of protection of country names has implications “not only for the value of trademarks but also for a country’s ability to effectively protect its intellectual property rights generally, and particularly in third countries.”

The proposal calls for a work programme in three phases, with the final one stating, “the elaboration of a guide or a manual and/or a joint recommendation on the protection of country names which would guide WIPO Member States in developing (….) a common approach to the appropriate and effective protection of country names.”

A delegate from Barbados told Intellectual Property Watch that this proposal had won much wider support than the first one, in particular from developing countries. The fact that the new version of the joint proposal does not propose to amend Article 6ter of the Paris Convention for the Protection of Industrial Property, but rather to create a soft law, probably led many countries to support the proposal, including the African Group, Asian Group and GRULAC, Gonda told Intellectual Property Watch. Most of the Group B countries were more reluctant, in particular the European Union, Gonda said.

Role and Responsibility of Internet Intermediaries

Delegates are also to consider the role of internet intermediaries in the field of trademarks and Gurry said that this was an issue of fundamental importance. In particular, at the twenty-fifth session of the SCT, held from 28 March-1April 2011, SCT members were invited to submit proposals to the secretariat about the possible modalities of an information meeting on the liability of internet intermediaries, according to WIPO [pdf].

Three countries submitted proposals, the United States [pdf], Denmark [pdf], and Russia [pdf].

On 25 January, Chair Irme Gonda issued a non-paper [pdf] on a possible information meeting on the role and responsibility of internet intermediaries in the field of trademarks. The non-paper summarises the proposals on the table and provides a draft proposal for modalities of the information meeting.

Of particular concern, according to the non-paper, is the choice of speakers who would participate in the meeting. The non-paper provides a programme for the information meeting and stipulates that “the information meeting should remain within the scope of work of the SCT and should mainly focus on issues of use of trademarks on the Internet.” The proposed programme covers the point of view of brand owners, internet intermediaries, academia and users, and includes national and regional experiences.

According to a developed country source, the issue of the role of internet intermediaries in the context of trademark protection, generally speaking, is being put forward by developed countries and only has moderate interest from developing countries.

Gonda told Intellectual Property Watch that a second non-paper would be available for the delegates tomorrow, as the subject would be discussed at that time in plenary.

This afternoon delegates examined two proposals on the terms of reference of the study on industrial designs. One proposal was put forward by the European Union, available here [pdf], and the other one by the African Group and DAG [pdf]. According to Gonda, they should go into informal meetings and resume discussion in plenary tomorrow.

Also on the programme tomorrow is the information meeting about the role of internet intermediaries, Gonda said.