Country Names An Easier Road Than Technical Assistance For WIPO Trademark Committee

The protection of country names was discussed today by World Intellectual Property Organization members with a more amiable approach than on how to include technical assistance in a draft treaty text on industrial designs. The question of the convening of a high-level meeting to adopt the potential treaty was also discussed with dissension between developing and developed countries.

Unable to find consensus in plenary on the issue of technical assistance, the chair of the Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indication (SCT), meeting from 27-31 May, decided to set up a working group to try to find consensus (IPW, WIPO, 30 May 2013).

Today, Committee Chair Adil El Maliki, director general of the Moroccan Industrial Property Office, gave an account of the progress made in the working group, which he said included 26 countries. He said consensus could not be found on some of the six points enunciated in a non-paper [pdf] issued on 29 May.

Another non-paper, still in draft form, had been agreed upon, he said. This will be added to the draft treaty text, with a footnote stating that some countries prefer a resolution taken at the diplomatic conference rather than an inclusion of a specific article on technical assistance and capacity building into the treaty text.

Algeria on behalf of the African Group acknowledged the engagement of delegations in the discussions and said all delegations recognised the need for technical assistance and capacity building for developing countries and least-developing countries. The delegate said the African Group was happy that the six points in the non-paper reflected principles contained in the African Group proposal. However, the delegate said that at this point, there is still no clarity on whether an article on technical assistance would be included in the treaty text.

Some other developing countries, including the Development Agenda Group, asked that the article be included in the treaty text.

Developed countries asked that the non-paper by the chair stand separately from the draft articles, while the African Group said the draft articles and draft resolutions to be sent for assessment to the WIPO General Assembly in autumn should reflect all the positions of delegations and should include the non-paper without any distinctive quality (such as annex).

Different Perspectives on Progress

The summary by the chair is to be issued tomorrow, acknowledging progress this week. The African Group also requested that the summary include mention of the lack of concrete results on technical assistance, while developed countries who took the floor, including Hungary, Belgium on behalf of the Group B developed countries, the United Kingdom, and the European Union members, said the summary should highlight good progress forward on the draft treaty.

The African Group request was supported by South Africa. The South African delegate said the mandate of the 2012 WIPO General Assembly – which stated that “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”- had not been achieved.

Most developed countries would like the WIPO General Assembly in September to recommend the convening of a high-level meeting to conclude the industrial design treaty in 2014. Some said the SCT should recommend to the General Assembly that a diplomatic conference be convened, considering the maturity of the draft treaty texts.

Developing countries such as the African Group and South Africa said that the General Assembly had to assess the work of the SCT and then decide to recommend the convening of a diplomatic conference, and that a recommendation from the SCT to the General Assembly was beyond its mandate.

Developed countries such as Belgium, Canada, Japan, the United Kingdom, the United States, and Switzerland were of the view that the SCT could make a recommendation to the General Assembly, even if the final decision was the Assembly’s to take. A recommendation to the General Assembly is among the prerogatives of the SCT, they said.

South Korea said agreement on technical assistance could be reached during the period leading up to the diplomatic conference and during the diplomatic conference itself.

Protection of Country Names

On the table was a study that the WIPO secretariat issued at the request of the SCT at its 27th session from 18-21 September 2012. The study [pdf] concerned 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.”

Jamaica, which along with Barbados, had proposed [pdf] such a study at the 27th session, said the study, shows protection is available for country names through several alternative means but also clearly shows protection is often limited to particular circumstances which “leaves ample opportunity for persons and entities to nevertheless abuse and unfairly free ride on the good will and reputation of a country’s name,” the delegate said.

The reliance on opposition and observation for the protection of country names is insufficient and inadequate, the delegate said, adding, “Though many countries broadly interpret national laws to protect country names, such protection is not uniform and allow many exceptions.”

Opposition procedures have further hurdles to country name protection, the Jamaican delegate said, and would require substantial resources for states, in particular developing countries and small island developing states, “to police the trademark offices and registries of the world and to commence opposition proceedings” and maybe court litigation in foreign jurisdictions, he said An additional hurdle would be time limits to file such oppositions, as in most jurisdictions, opposition may only be raised within two or three months.

The study, he said, did not go far enough assessing the real and potential impact of weak protection of country names on nation branding schemes. He said country names ought to be protected within national laws, policies and procedures, through a manual or a joint recommendation of the WIPO General Assembly, and asked the WIPO secretariat to use the study to update the original reference document (Draft Reference Document on the Protection of Country Names Against Registration and Use as Trademarks) to be circulated ahead of the next SCT.

A number of countries supported further work of the SCT on the subject of the protection of country names. Switzerland said this issue was of high importance to the country and would be interested in the update of the original document. Barbados, El Salvador, Monaco, Morocco, Nepal, Turkey, Venezuela and Uruguay supported the Jamaica suggestions.

The European Union said it needed more time on the proposal to have a manual such as suggested by Jamaica and added the SCT needs to concentrate on industrial designs. Norway said the study might represent a natural conclusion of the work of the SCT on the topic, which was supported by Canada, which said the study could be used by IP offices around the world.