WIPO: ISP-Trademark Meeting Agreed; Industrial Design Treaty, Country Names Still On Table

Delegates at the World Intellectual Property Organization this week resumed an adjourned October meeting and agreed to continue exploring the possibility of a treaty on industrial design by commissioning an impact study on the costs and effects of such a treaty. They also found consensus on the modalities of an information meeting on the role and responsibility of internet intermediaries in the context of trademarks, and decided to explore further the question of the protection of country names.

The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) has been discussing about a possible treaty on industrial designs, principally championed by developed countries. During the 25th session of the SCT, from 28 March – 1 April 2011, the African Group and Development Agenda Group (DAG) proposed that a study be prepared with the involvement of WIPO chief economist to evaluate potential effects of the SCT work on industrial design formalities, with particular reference to developing and least developed countries.

After lengthy discussions on the terms of reference for this study, which kept them in informal meetings in the evening yesterday, delegates agreed this afternoon on a common text.

Yesterday, after considering the two proposals put forward by the European Union, and the African Group and the Development Agenda countries, delegates went to informal meetings to find common ground to bring together the content of the two proposals.

This morning, the chair issued a new document [pdf] aggregating the two proposals, with only two items left in brackets to be agreed on today. During the morning session, all delegations concurred to delete the texts in brackets and approved the proposed terms of reference for a “Study by the WIPO Secretariat on the Potential Impact of the Work of the SCT on Industrial Design Law and Practice.” The final adopted text is the second annex of the draft summary by the chair [pdf], which was also adopted late this afternoon, after being consistently amended.

Issues on Format of Chair’s Summary

In particular, issues arose around agenda item 4 on industrial designs. This afternoon, which concluded the 26th session of the SCT, some countries voiced concern about the format of the chair’s summary of the meeting. Chair Imre Gonda of the Hungarian Intellectual Property Office had included his conclusions after each of the articles and rules that had been discussed in October, before the meeting was unexpectedly adjourned after a fire broke out at WIPO. In the conclusion on each article and rule, the chair noted proposals by countries without offering further particulars.

Algeria, speaking on behalf of the Development Agenda Group, said that the format of the chair’s report was not in the tradition of chair’s reports, according to participants. The group, he said, did not see the interest of having those proposals noted in detail in the core of the document, and he suggested deleting all the points detailing articles and rules.

Egypt, for the African Group, said that the group was also surprised by the unusual format that might create a systemic application in other committees. It did not seem useful to risk opening discussions again on already discussed articles, he said.

The United States said it was the chair’s document, and presented a very good summary of the discussions, but in the interest of time, the delegate suggested to remove the incriminated paragraphs. The deletion of the paragraph was supported by Paraguay, speaking on behalf of the Group of Latin American and Caribbean Countries (GRULAC), and by India.

Gonda said that an important question was about the legal value of the chair’s summary and said it had no legal or binding effect, in his opinion, and the format of the chair’s summary was not stipulated in the rules of procedure. He said that according to his notes from October, he had been asked to produce a conclusion after each article and rule, and that those articles and rules were still a proposal. He also said that his summary had been drafted in this format so as “not to lose the results achieved after a long discussion,” but he did not oppose the deletion.

At the end, after some deliberation among group members, it was agreed by the plenary that the details on the articles and the rules would be deleted from the chair’ s summary to be included as a summary in the final report to be provided by WIPO later. It was also agreed to add a sentence to point 6 of the summary: “The SCT discussed all draft articles and rules contained in documents SCT/26/2 and SCT/26/3.

The secretariat, with the involvement of the chief economist, is to provide a study on the impact of the draft articles and draft rules on developing countries, according to the terms of reference included in annex 1 of the chair’s summary.

Role and Responsibility of ISPs, Concerns about ICANN

At the start of this resumed 26th session, which took place from 1-3 February, the chair had issued a non-paper (IPW, WIPO, 1 February 2012) on a possible information meeting on the role and responsibility of internet intermediaries in the field of trademarks.

On 2 February, Gonda issued a second non-paper [pdf]. The document was the same as the first non-paper but included a mention about the programme of the information meeting. It said the programme should “be informed by relevant WIPO development recommendations and allow to cover significant developments in related areas.”

According to the chair’s non-paper it appeared agreement was reached that a one-day informational meeting held immediately prior to the next SCT should focus on trademarks on the internet (within the scope of the SCT). It will be separate from the SCT and not be a negotiating forum. The chair’s non-paper said it should include a balance in geography and business area and interests, and include internet intermediaries, trademark owners, trademark professionals, academia, civil society, and governments. It should cover positions of internet intermediaries and online service providers, academia, users, and national and regional experiences including experience with alternative dispute resolution.

According to the chair’s summary, “the SCT emphasized the need for the envisaged trademark rights protection mechanisms in ICANN’s [Internet Corporation for Assigned Names and Numbers] new gTLD [generic top-level domain] Program to be effective, and expressed concern about ICANN processes which risk destabilizing the WIPO-initiated UDRP [Domain Name Dispute Resolution] as an existing, globally relied-upon mechanism.”

Discussion on Country Names Ongoing

In October, the delegations of Barbados and Jamaica had submitted a proposal about the protection of country names against usurpation. This follows a previous proposal made by Jamaica in 2009 (IPW, WIPO, 1 February 2012).

The proposal called for a work programme that would conclude with the elaboration of guidelines or a joint recommendation, which would encourage WIPO member states to have a common approach to the protection of country names.
Yesterday, Jamaica submitted a draft document presenting terms of reference [pdf] for the proposed work programme.

Included in this proposal was the preparation by the secretariat of “an empirical review of the status of the legitimate and illegitimate use, as all available protection, of country names,” It also asks the secretariat , or an independent consultant, to “conduct a study on the current legislative provisions and practices in national or regional legislations relating to the protection and legitimate use of country names, as well as the experiences and best practices related to the implementation of such provisions.”

A source told Intellectual Property Watch that the ultimate goal was to have a non-binding set of guidelines or a manual or joint recommendation for trademark offices to consider when they grant a trademark that includes a country name, and maybe consult the country in question for approval before granting the trademark. That would not take away any sovereign rights of countries delivering the trademark to follow their own trademark legislation.

According to the chair’s summary, “a number of delegations had expressed support for the proposal of the delegations of Barbados and Jamaica. Other delegations expressed the need for more information and time for reflection.” The SCT then “requested all members to communicate to the Secretariat cases and case studies relevant to the protection of names of States, as well as information on any nation branding scheme in which they have engaged, including problems encountered in their implementation.”

The protection of country names will be an agenda item in the next session of the SCT, Gonda told Intellectual Property Watch. Also on the agenda of the next session will be more discussions on a possible treaty on industrial designs to be considered in the light of the results of the study.

GIs – All but a Word in the Committee Title

According to the chair’s summary, no intervention was made under the agenda item 6, which was devoted to geographical indications.

Gonda told Intellectual Property Watch that geographical indications were addressed during the first four meetings of the SCT but some countries remarked then that there are ongoing discussions at the World Trade Organization in the context of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) on an international register of wines and spirits GIs. Those countries indicated that there would be a risk of duplicating the discussion at the SCT.

The date of the next meeting of the SCT was not known at press time.