WIPO Committee Moves Ahead On Country Names, Tech Designs, Not GIs

Establishing a work programme on geographical indications at the World Intellectual Property Organization last week proved elusive. A tentative text and time frame by the chair of the committee on trademark and geographical indications (GIs) issued on the last day of the committee did not meet the approval of some member states. The committee did agree on a set of tasks for the WIPO secretariat on the protection of country names against registration as trademarks, and on the protection of new technological designs, such as icons and type fonts.

The 37th session of the Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications (SCT) met from 27-30 March.

Earlier in the week, a closed information session was held on 28 March on the experiences and practices of the different national and regional GI protection systems, the protection of GIs on the internet, and the protection of GIs and country names in the domain name system, Also, on 29 March, the SCT Chair Adil El Maliki of Morocco submitted a tentative work programme for the SCT on those subjects (IPW, WIPO, 30 March 2017).

On 30 March, after informal consultations the day before, a new version [pdf] of the tentative work programme with a time frame was tabled by the chair. However, it was not possible to adopt the chair’s version as some countries proposed to edit the language and El Maliki decided the time was too short to launch into a lengthy discussion on language at this session of the SCT, which ended on 30 March.

In particular, the United States in its proposed amendments [pdf] to the chair’s text asked for a change in the language so that there is no indication that the subjects would be discussed beyond the next session of the SCT, asking that only a first step be agreed on.

Switzerland also proposed amendments [pdf] to the chair’s text. In particular, Switzerland proposed a different timetable, extending the deadlines, and asked that only members send questions on the three subjects of the information session to the secretariat to be compiled.

The summary by the chair [pdf], issued on 30 March, and approved, mentions on the agenda item on GIs, that the information session, provided a basis to initiate an exchange of views, and the discussion is expected to continue at the next session on the proposal by the chair, and all proposed amendments.

Protection of Country Names as Trademarks

A few sessions ago, some “areas of convergence” were defined on which countries might find that their national laws converge on the protection of country names as trademarks. Comments were received and compiled [pdf] by the WIPO secretariat.

The areas of convergence were: 1) the notion of country name; 2) the fact that the name is non-registrable if it is considered descriptive; 3) non-registrable if it is considered misleading, deceptive or false; 4) consideration of other elements of the mark; 5) invalidation and opposition; 6) use as a mark.

The SCT decided to invite member states to submit further comments with priority to areas of convergence 1, 2, 5, and 6, produce a revised compilation document, and prepare an analytical document based on this revised document. This answers the wish of some delegations to have something more substantive than a compilation.

Graphical User Interface

The United States, Japan and Israel last year submitted a proposal [pdf] for discussion at the SCT on industrial designs and emerging technologies, which sought to launch a conversation about new creative technological designs, including graphical user interface (GUI), typeface/type font, and icon designs, used on internet, social media, smart phones and tablets.

According to TechTerms, a GUI is a “user interface that includes graphical elements, such as windows, icons and buttons.”

A questionnaire was subsequently prepared by the WIPO secretariat and sent to member states on issues such as: the systems of protection at national level; how GUIs are represented in an application for a design patent/industrial design registration; whether GUIs can be patented or registered as such, on which criteria; and the scope and duration of protection.

The SCT decided on a number of actions to be taken by the secretariat on the topic, and in particular to submit additional and/or revised replies to the questionnaire, invite accredited non-governmental organisations to submit additional comments and observations on the topic, compile all replies, and compile all replies and comments in a revised document for the next session of the SCT.

In addition, the WIPO secretariat is expected to organise an information session, to take place at the next session of the SCT, addressing the following topics: the practices of offices, and the experience of users with regard to GUI, icon and typeface/type font designs.

Design Law Treaty

No discussion was carried out on a potential design law treaty, which has been in the making for several years. The draft treaty text has been deemed ready by some delegations for a high-level negotiating meeting (diplomatic conference), where the last pending issues are expected to be solved. Some other delegations think that those issues have to be solved before the diplomatic conference.

The discussion on the draft Design Law Treaty has been pushed to the next WIPO General Assembly in the fall, where the decision on a diplomatic conference is expected to be taken.

Remaining issues are mainly the inclusion or not of an article on technical assistance in the body of the treaty, and the inclusion of an article allowing countries which choose do to so, to require a disclosure of the traditional knowledge utilised or incorporated in the industrial design.

 

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