Technical Assistance A Challenge For WIPO Treaty On Industrial Designs

Another World Intellectual Property Organization committee opened with the prospect of achieving progress on a potential treaty text this week. The committee is trying to establish an instrument that would simplify the international registration of industrial designs.

Developed countries are anxious for a high-level meeting to be convened next year, while developing countries hold the view that what they consider as fundamental issues, such as technical assistance and capacity building, should be solved before committing to recommend such a high-level meeting.

The 29th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), is taking place from 27-31 May.

At the outset of the meeting, the Development Agenda Group (DAG) asked that a report on the contribution of the SCT to the implementation of the 2007 WIPO Development Agenda under the coordination mechanism be added to the agenda of the session. No one opposed the request, and elected Chair Adil El Maliki, director general of the Moroccan Industrial Property Office, said an item 7.1 would be added to the draft agenda.

An industrial design is the aesthetic aspect of an item. Developed countries have been pushing for a treaty that would facilitate international registration formalities and procedures for industrial designs, in particular for small and medium-sized companies and individual creators, they have said.

Two such treaties providing harmonisation of procedures are already being administered by WIPO, one is the Singapore Treaty on the Law of Trademarks, and the other one is the Patent Law Treaty.

The main focus of the week’s work is a set of draft articles [pdf] and draft regulations [pdf] on industrial design law and practice. In their current state, the draft documents show a number of options, notes on articles, and a series of footnotes. As explained by the WIPO secretariat, footnotes correspond to individual proposals by member states that have not been supported by other member states.

Technical Assistance Key for Developing Countries

Developing countries underlined in opening remarks the need for the potential instrument to include provisions on technical assistance and capacity building for developing countries and least-developed countries (LDCs).

The mandate of the 2012 WIPO General Assembly on the work for the SCT notes that “the General Assembly urges the SCT to expedite in a committed manner work with a view to advance substantially the basic proposals for a Design Law Treaty.”

“In its work, consideration will be given to include appropriate provisions regarding technical assistance and capacity building for developing countries and LDCs in the implementation of the future Design Law Treaty,” the Assembly decided, further saying, “The General Assembly in 2013 will take stock of and consider the text, progress made, and decide on convening a diplomatic conference.”

Algeria on behalf of the African Group said that at the end of the week, the draft treaty should be inclusive and answer the interests of all member states. The work of the committee should be comprehensive, taking into account the different levels of development and seek to strike a balance between costs and benefits. The draft articles also should follow Cluster B of the Development Agenda recommendations, the delegate said. Cluster B of the Development Agenda deals with norm-setting, flexibilities, public policy and public domain.

At this stage, Algeria said, “it is difficult for our countries to assess whether the benefits of harmonised procedures for registration of industrial designs outweigh the price to be paid for the implementation of the treaty in terms of changing national laws, setting up infrastructures and technologies for handling applications, and so on,” the delegate said.

At the 28th session of the SCT, from 10-14 December 2012, the committee requested the secretariat to reopen for two months a survey. The survey had served as the basis for a WIPO study on the potential impacts of the work of the SCT on industrial design law and practice, so as to gain more answers and add more data to the study (IPW, WIPO, 15 December 2012).

According to the updated study, an additional eight responses were sent by offices, to make a total of 27 responses from high-income countries, and 32 from middle and low-income countries. Algeria said the study clearly shows that low and middle-income countries need administrative assistance, and legal skills and training.

Several Proposals on the Table

The African Group tabled in the previous session a proposal for articles focusing on technical assistance and capacity building, reduction of fees, and exchange of information, the delegate said. Inclusion of these items will help develop an international instrument that will respond to realities and priorities of all member states, she said, also welcoming proposals on technical assistance put forward by the European Union and South Korea.

South Korea said technical assistance should be provided for developing countries and LDCs, and acknowledged that there are differences among members states on this issue. The delegate said the South Korean proposal, issued on 8 April, might provide a middle way between the African Group proposal, and the EU proposal.

The Dominican Republic on behalf of the Group of Latin American and Caribbean countries also underlined the importance of technical assistance and capacity building.

The Development Agenda Group said it agrees that discussions have reached a higher level of maturity but member states should focus first on overcoming major differences between positions before a recommendation can be made to hold a diplomatic conference.

India, speaking on behalf of the Asian Group, said that any norm-setting process should be inclusive and member-driven. The aim “should be to ensure that the treaty lays out minimalist and not maximalist standards and ensure national level flexibilities in the implementation whenever applicable,” the delegate said.

Technical assistance and capacity building are crucial for many developing countries and LDCs for the adoption and the implementation of the treaty, India added.

Eager Group B Seeks Diplomatic Conference in 2014

The Group B developed countries urged the committee to further expedite its work on the draft treaty so that a diplomatic conference can be convened for the adoption of the treaty.

The European Union also urged the committee to expedite work, to be able to recommend to the 2013 WIPO General Assembly the convening of a diplomatic conference in 2014. The EU gives great importance to aligning and simplifying industrial designs registration formalities and procedures, the delegate said. South Korea is giving consideration to hosting the diplomatic conference, the South Korean delegate said.

The African Group proposal sets out four articles to be included in the treaty text, in particular on “Special and Differential Treatment for Developing and Least – Developed Countries,” and “Technical, Financial Assistance and Capacity Building.” The European Union proposal provides a resolution supplementary to the potential treaty.

Other Documents to be Considered

In addition to the draft articles, draft resolutions, and the three proposals on technical assistance, SCT members will also consider a study on the protection of country names. At the 27th session of the SCT, from 18-21 September 2012, the committee considered an updated proposal of Barbados and Jamaica’s for a study “on the current legislative provisions and practices in national or regional legislation relating to the protection of country names in the field of registration of trademarks, as well as best practices related to the implementation of such provisions,” and requested the WIPO secretariat to produce such a study (IPW, WIPO, 20 September 2012) (IPW, WIPO, 21 September 2012).

Also on the table for this session is an update on trademark-related aspects of the expansion of the domain name system, and an overview of provisions regarding technical assistance and capacity building in treaties administered by WIPO.