New Proposal For Inclusion Of Disclosure Requirement In Design Treaty; Group B Still Not Takers

The draft text of a treaty to help international designers apply for protection has been on the table at the World Intellectual Property Organization for some time, and has been under discussion again this week. Two questions have prevented its completion. One is whether technical assistance for developing countries should be part of the text, and the other is how to accommodate a request for a provision allowing countries to ask for disclosure of the origin of the design, to prevent misappropriation.

The 34^th session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is taking place from 16-18 November.

Most delegations or regional groups in their opening statements yesterday strongly condemned the terrorist attacks in Paris last week and expressed support. These included the African Group, Group B developed countries, the Group of Central European and Baltic States, the Asia and Pacific Group, China, the European Union, and Iran.

After informal consultations yesterday on the issue, the African Group issued a new textual proposal [pdf] for the inclusion of disclosure requirement into the draft treaty text.

Disclosure Requirement, Not Mandatory, Proponents Say

The disclosure requirement in the potential Design Law Treaty (DLT) was requested by the African Group, which introduced a proposal in November 2014 session of the SCT to be added to Article 3 (Application) of the draft articles [pdf] (IPW, WIPO, 25 November 2014).

The proposed provision in the current draft articles reads as follows: “where the subject matter claimed in the industrial design application includes utilization of, or is directly based on genetic resources, their derivatives and the associated traditional knowledge, traditional knowledge, or one or more traditional cultural expressions, each party shall require applicants to: (1) disclose the country of origin, or if unknown, source of the genetic resources or their derivatives, traditional knowledge, or one or more traditional cultural expressions; (2) provide relevant information, as required by the national law of the Intellectual Property Office, regarding compliance with access and benefit sharing requirements, including prior informed consent; (3) if the source and or country of origin is not known, make a declaration to that effect;]”

The new proposal is a single line saying that a contracting party may require that an application contain “a disclosure of the origin or source of traditional cultural expressions, traditional knowledge or biological/genetic resources utilized or incorporated in the industrial design.”

Nigeria, on behalf of the African Group, explained this week that the provision would provide policy space to countries which have that disclosure requirement as part of their eligibility criteria for industrial designs in their legislation. She cited members of the African Regional Intellectual Property Organization (ARIPO), whose Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore just entered into force. The Nigerian delegate further said that the provision would not be mandatory.

Mozambique said that the Swakopmund Protocol addressed the issue of disclosure in several places, in particular in Section 10 (Recognition of knowledge holders) and Section 19 (Protection of expressions of folklore against unlawful acts).

Developed countries in general disagree that a disclosure requirement should be added as a provision in Article 3. According to some developed country sources, this requirement could introduce legal uncertainty for applicants, as requirements would differ from country to country, and would represent an additional burden while the main purpose of the treaty is to facilitate design applications for international applicants.

Developed countries would consider something to be added to the rules attached to the potential treaty, which are more flexible and amendable. Group B suggested Rule 2 (Details Concerning the Application) of the Draft Regulations [pdf] as an appropriate place to insert a mention on disclosure. The group held the view that this where policy concerns of contracting parties are accommodated, the Greek delegate said on behalf of the group.

Meanwhile, the discussion on technical assistance did not find consensus yet.

SCT Chair Adil El Maliki of Morocco said at the end of the morning session today that some informal consultations might be organised this afternoon to pursue discussion on the disclosure requirement.

 

Image Credits: Catherine Saez