Industrial Design Draft Treaty Does Not Make It To Last Mile At WIPO

Designers wanting to protect their industrial designs at the international level will have to wait some more before the application procedures can be harmonised after hopes to breach differences on a draft treaty were dampened yesterday at the World Intellectual Property Organization.

In the corridors of WIPO, disappointment was expressed by many, at the close of the three-day meeting, in particular on the ability of the multilateral system to produce normative instruments, and the fact that the Design Law Treaty (DLT) was considered as “low-hanging fruit” (IPW, WIPO, 26 April 2016).

The 35^TH Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) took place from 25-27 April.

A tentative preparatory committee meeting planned for 28-29 April to prepare for a possible diplomatic conference was cancelled.

Vice-Chair of General Assembly: Sad Day for WIPO

Although some delegations said the door is still open for further discussions at the October WIPO General Assembly, and for a future agreement on the treaty, the vice-chair of the WIPO General Assembly, Latvian Ambassador Jānis Kārkliņš said, “it is a sad day for the organisation.” The SCT failed to meet the decision of the General Assembly and failed to agree on things which seemed to be within reach, he added.

There are no winners, those who think they defended principles are wrong, everybody loses, he said – designers, WIPO, every delegation, and the working atmosphere. The main achievement of the last General Assembly was the considerable improvement of the atmosphere and the fact that delegations reached agreement on topics they could not agree on for years.

“The earth will keep turning,” he said, “but damage has been done to the organisation.” The General Assembly will assume its responsibility and will try to find a solution in order to convene a diplomatic conference in 2017, but it will be more difficult than if agreement had been reached today, he said.

Latvia is currently speaking on behalf of the group of Central European and Baltic States at WIPO. The group was in strong support of the treaty.

A summary by the chair [pdf] was swiftly adopted in the late evening, after the chair had to resign himself to conclude that no agreement could be reached on the DLT, and further discussions about the convening of a high-level negotiating meeting (diplomatic conference) have to be left to the October General Assembly.

The main purpose of the SCT session this week was to find agreement on two outstanding issues that had been preventing the convening of a high-level negotiating meeting (diplomatic conference) to adopt the DLT, and a preparatory committee had been tentatively organised on 28-29 April.

The most difficult issue was on the potential inclusion in the treaty of a disclosure requirement, according to sources.

The African Group in previous sessions had requested that an article mentioning the possibility for countries to request disclosure of origin in designs applications be part of the treaty, which was strongly opposed by some developed countries, and supported by some developing countries, such as Iran, and Indonesia.

The African Group has been saying that a request for disclosure would protect their traditional knowledge and folklore from misappropriation, thus the need for the policy space to request disclosure of origin from the designs applicants.

Developed countries have countered that nothing in the proposed treaty would prevent national law from instituting a disclosure requirement, and such a provision on disclosure is a substantive issue that does not belong in a procedural treaty.

The other WIPO committee where disclosure requirement of origin is being discussed is the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), and the matter is not doing well there either (IPW, WIPO, 22 February 2016). Some sources have indicated in the past a strong influence on the DLT of discussions in the IGC.

Chair’s Textual Efforts

SCT Chair Adil El Maliki of Morocco tried to propose different sets of language to bring consensus on the disclosure requirement.

In his first attempt, he borrowed language from the draft regulation [pdf] (Rule 2) on the sharing of information by the applicant which could have an effect on the eligibility for registration of the industrial design, and include this in the current draft articles as Article 3bis, combined with an agreed statement mentioning disclosure, according to sources.

El Maliki said no agreement was found on this proposal, as some delegations opposed the agreed statement.

His second proposal was to revert to a solution he had suggested at the last session of the SCT, which had been added to the draft articles as Article 1.bis (General Principles) and bracketed to indicate the lack of agreement on this suggestion. Article 1.bis stated:

“(1) [No Regulation of Substantive Industrial Design Law] Nothing in this Treaty or the Regulations is intended to be construed as prescribing anything that would limit the freedom of a Contracting Party to prescribe such requirements of the applicable substantive law relating to industrial designs as it desires.

(2) [Relation to Other Treaties] Nothing in this Treaty shall derogate from any obligations that Contracting Parties have to each other under any other treaties.]”

The Group of Latin American and Caribbean countries, the Asia and Pacific Group, and the Group B developed countries said they could go along with this second proposal but the African Group said it favoured the first.

Late on 27 April, El Maliki issued an ultimate paper [pdf] with both options as a proposal which could be the basis for further discussion at the diplomatic conference.

But the consensus was not to be found as some groups disagreed with part of the language. For example, Group B asked to delete a note to one of the proposed articles, mentioning disclosure of information on source of expressions of tradition.

The African Group said no consensus was found on the proposal within the group and more work is needed before a diplomatic conference is convened. Nigeria, on behalf of the group, said there is no convergence on fundamental questions. The African Group wants to see the mention of traditional knowledge, folklore and genetic resources in the text, and Group B and other regions do not want to see it at all, the delegate said.