WIPO Trademark Committee Paves Way For Further Discussions

A shorter than usual World Intellectual Property Organization meeting of its committee on trademarks, designs and geographical indications closed yesterday with the prospect of keeping all items on the agenda for the next session. 

A revised version of a potential procedural treaty on designs is expected to be presented in the spring, and discussions will pick up again on the protection of country names and how the topic of geographical indications should be handled by the committee.

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

The summary by SCT Chair [pdf] Adil El Maliki of Morocco was adopted after some textual modifications.

Design Law Treaty

On the agenda this week was the draft text of a procedural design law treaty, which would facilitate international applications for designers. The text, by all accounts, has been near completion for some sessions of the SCT but two issues remained in the way. The first is the way to incorporate technical assistance in the treaty, whether it should be an article or be in the form of a recommendation.

The African Group has been intent on having an article dedicated to technical assistance for developing countries, as well as the Asia and Pacific Group, while the United States, drawing on examples from other treaties, thought a recommendation would serve the purpose better.  No agreement on the subject was found this week.

The discussions were essentially focused on a new proposal from the African Group to include a disclosure requirement in designs applications. The group had already submitted a proposal last year, which did not meet the agreement of developed countries. This week’s proposal (in the Annex 1 of the summary by the chair) has been reduced to a line in Article 3 (Application) (IPW, WIPO, 11 November 2015).

El Maliki also introduced a proposal (Annex 2 of the summary by the chair), drawn from existing WIPO treaties, as an “Article 1bis” (General Principles), which aims at confirming that the treaty leaves some policy space to contracting parties, but also that the treaty “shall not derogate from any obligations that contracting parties have to each other under any other treaties.”

Both annexes have footnotes attached to them indicating that the proposals were supported by some countries, while other countries did not approve of one or the other, or both.

The secretariat is expected to include both proposals between square brackets in the draft treaty text for the next session of the SCT.

Protection of Country Names

The SCT adopted a document [pdf] prepared by the secretariat on the protection of country names against registration and use as trademarks, as a reference document. A new document is expected to be prepared by the secretariat identifying different practices and approaches, and existing areas of convergence in the protection of country names in different WIPO member states.

Jamaica had submitted a proposal for a joint recommendation on the protection of country names some sessions ago, with a revised version [pdf] in November 2014.

Some countries considered that enough work had been carried out on the subjects, like Canada and Norway, while others supported ongoing work on the issue of the protection of country names, such as Monaco and Switzerland.

Geographical Indications: Survey Suggestion

The issue this week was how to bring back discussions on geographical indications (GIs) at the SCT. On 18 November, during informal consultations, delegations tried to define a work plan of the SCT for the next session on the subject.

In particular, the United States underlined the importance of understanding how GIs are protected under different national and regional systems. They suggested creating an environment in which countries can share their experiences. For example, they said, delegations could provide questions which could be compiled into a survey.

The US protects GIs through certification marks, under a trademark regime, like Japan, Canada, Australia and others. Some countries use a sui generis system, and a number of them are members of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, such as some European Union countries, Cuba, Mexico, and Iran.

A new act of the agreement, the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications was adopted in May by its 28 members, to the dismay of a number of members which felt excluded from the negotiations.

According to a source from that perspective, some of those countries that felt their concerns were not heard in May would like to bring the debate to the SCT.

France, a major proponent of GIs, said it was grateful to the US for their proposal, which was a sign that GIs could be discussed between them. The French delegate said the country could support the US proposal on the condition that it not involve too many questions leading to an unmanageable volume of information.

Further discussions are expected to be carried out at the next session of the SCT, both on the how to address GIs in the committee, and on the protection of GIs on the internet.

 

Image Credits: WIPO