WIPO Committee Meets Next Week To Discuss Country Name Trademarks, Icons, GIs

The World Intellectual Property Organization committee on trademark, industrial designs and geographical indications meets next week. Among the issues expected to be discussed are whether and how country names should be protected in trademark applications and on the internet. The committee also will consider again deepening its understanding of how GIs are protected at national and regional level, whether through trademarks or a sui generis system. And on the agenda next week is an information session on new technology designs, such as icons and type fonts used on internet, social media, smart phones and tablets.

The 38th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) will take place from 30 October to 2 November. The agenda is here [pdf].

One of the subjects of discussion for the meeting is protection of country names in trademark applications. The issue is deemed as having an substantial economic importance for some countries, as a means of product differentiation on the global market.

The WIPO secretariat prepared an analysis [pdf] of practical examples provided by some member states on a set of areas which have been recognised as basis for discussion.

Countries’ practices and approaches have been shared in previous sessions and six areas of convergence on the protection of country names have been identified since 2014. Those areas regard the: (1) notion of country name; (2) whether the country name is non-registrable if it is considered descriptive; (3) whether the country name is not registrable because it is misleading, deceptive, or false; (4) whether other elements of the mark should be considered; (5) invalidation and opposition procedures; and (6) country names used as a mark.

The SCT next week is focusing on areas of convergence 1, 2, 5 and 6, for which member states were invited to provide comments and practical examples of how these principles are applied in their jurisdictions. Some 39 countries submitted comments [pdf]. which have been analysed [pdf] by the WIPO secretariat to be discussed.

According to the analysis provided by WIPO, in some member countries, country names do not constitute a separate or specific category of sign, but are rather included in the broader category of geographical terms, “which may be considered distinctive and therefore registrable as mark, or non distinctive and refused registration.”

Most submissions, according to the document, said that the determination of the descriptive character of a geographical term, including country names, is not done in isolation but should take into account other elements. The first element is whether the name is known or even well known to the local consuming public and if on this basis there would be any plausible connection between the name and the goods or services claimed in the application.

The discussions on the protection of country names were already ongoing in the SCT when Jamaica submitted a proposal [pdf] to amend the Paris Convention for the Protection of Industrial Property in 2009. Jamaica then formally proposed to expand Article 6ter of the convention, which protects flags and emblems of states, to country names. The proposal states that several efforts by some countries at revising the article had been going on prior to 2009, without success.

Jamaica later proposed to work [pdf] on a joint recommendation that would be non binding, and could serve intellectual property offices (IPW, WIPO, 20 March 2014).

Geographical Indications: Seeking Way Forward

During the last session of the SCT, in April, member states could not agree on a work programme for the committee on geographical indications (IPW, WIPO, 3 April 2017).

Two aspects of the topic are currently discussed in the SCT, the first relating to the different ways geographical indications are protected in the world, whether they are protected under a sui generis system, such as in the European Union, or through a trademark system, such as in the United States, Canada, and Australia. Some countries accommodate both systems, in part as a result of bilateral or regional trade agreements.

The other aspect relates to the virtual environment, with the protection of GIs on the internet and in the domain name system, and the protection of country names.

SCT Chair Adil El Maliki of Morocco had proposed a work programme [pdf] at the last session, to be further discussed this week for lack of agreement.

The work programme suggested that the WIPO secretariat compile a list of questions on the protection of GIs to form the basis of a questionnaire for member states and observers. Those questions would refer to topics such as definitions and basis for protection of GIs, entitlement to file, content of application, grounds for refusal, and the scope of protection.

On the internet issue, questions relate to developments in the domain name system that might affect the protection of GIs, geographical terms and country names; the protection of GIs under country code top-level domains, including the basis of protection and protection mechanisms; and unfair competition on the internet involving GIs.

Information Session on New Technology Designs

An information session on graphical user interface (GUI), icons and typeface/type font designs is scheduled for 31 October in the morning.

In 2016, 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.”

That proposal was followed by a questionnaire to member states on how they protect those new designs, conditions for application for a design/patent registration, the examination of the registration, and the scope and duration of the protection granted, which was analysed [pdf] by the WIPO secretariat for the previous SCT session.

The programme [pdf] of the information session is divided into two topics: the practices of offices with regard to GUI, Icons, and Typeface/Type Font Designs, and the experience of users on the same topics.

ICANN New Domain Names Watched

The SCT is also expected to take note of an update [pdf] provided by the WIPO secretariat on trademark-related aspects of the domain name system. The update particularly addresses the Internet Corporation for Assigned Names and Numbers (ICANN) implementation of its generic top-level domains (gTLD) programme approved in June 2011, and ICANN’s Rights Protection Mechanisms (RPM).

The new gTLDs “appear to have so far attracted over 27 million second-level registrations,” according to the update.

 

Image Credits: Catherine Saez