WIPO Trademark Committee Agrees On Work Programme For GIs, Action On Country Names

Statements were praiseful at the close of the World Intellectual Property Organization committee on trademarks, industrial designs, and geographical indications meeting today. After a number of unsuccessful past sessions, delegates agreed on a work programme on geographical indications. They also decided on a half-day information session on the examination by trademark offices of requests including country names, during the next session of the committee.

The 38^th session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) was held from 30 October to 2 November.

Following informal discussions this week, delegates agreed on a work programme on geographical indications for the SCT. The work programme detailed in the summary by the chair [pdf] has two prongs. The first seeks to explore experiences and practices of different national and regional geographical indication protection systems.

Geographical indications (GIs) are collective intellectual property rights protecting products that have a specific geographical origin and possess qualities or a reputation resulting from that origin.

GIs are protected under the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), Article 22. GIs are protected either through a sui generis system (like in the European Union for non-food products), or through trademarks, and certification marks (like in the United States, Australia, or Japan). Some countries accommodate both systems due in part to their engagement in bilateral or plurilateral trade agreements.

The second aspect of the work programme is about the protection of GIs on the internet, and GIs and country names in the domain name system (generic top-level domains [gTLDs] and country code top-level domains [ccTLDs]).

The WIPO secretariat is tasked with the compilation of a list of questions to be proposed by member states and intergovernmental IP organisations with observer status at the SCT, for consideration at the next session of the SCT. The date of the next session is not yet known. The SCT usually meets twice a year, once in the spring and once in autumn.

The questions will be structured around a list of topics including the basis of GI protection provided by national and regional systems, the application and registration conditions, the scope of protection, and enforcement measures.

Questions will also refer to the use and misuse of GIs, country names and geographical terms on the internet and in the domain name system.

The secretariat is expected to receive the questions by 6 February 2018, and should issue by end of February a document compiling the questions for consideration at the 39^th session of the SCT.

After considering the document, the 39^th session of the SCT will aim to issue a questionnaire for members and intergovernmental IP organisations with observer status, so that at its 40^th session, the secretariat can present a document compiling the answers to the questionnaire.

At the last session of the SCT in April, Chair Adil El Maliki had proposed a work programme [pdf], but it could not be agreed upon (IPW, WIPO, 3 April 2017).

The approved work programme is based on the one submitted in April, with some changes. For example, the adopted document includes the enforcement of GIs protection, while the April draft does not.

Also, the April draft mentions the protection of GIs and geographical terms and country names in the DNS, while the adopted document focuses on the use and misuse of GIs, country names and geographical terms on the internet and the DNS, and the basis for protection “where appropriate.”

The mention of “unfair competition on the internet involving” GIs, which was in the April draft, is not longer in the adopted work programme.

Protection of Country Names Against Trademarks Registration

Delegates at the SCT also agreed on the convening of a half-day information session at the next session of the SCT. This information session will focus on the examination by trademark offices of trademarks consisting or containing country names, according to the summary by the chair.

The information session will focus on several areas, in particular on the issue of public domain versus distinctiveness, specific legislation, word mark versus composite mark, the perception of what is considered as a country name, and limitations and exceptions, it says.

Six areas of convergence on the protection of country names have been identified in the SCT since 2014: (1) the 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 is currently focused on areas of convergence 1, 2, 5 and 6 and member states were invited to provide comments and practical examples on how these principles are applied in their jurisdictions. Some 39 countries submitted comments [pdf].

According to the summary by the chair, member states are invited to continue submitting contributions.

Design Law Treaty

Still on the agenda of the SCT, the potential treaty on design law was not discussed. The inability to find agreement at the annual WIPO General Assembly in October on whether to convene a high-level negotiating meeting (diplomatic conference) to adopt the treaty led to a decision to push discussions on the subject until the 2018 WIPO General Assembly.

Constructive Atmosphere, Good Omen

At the close of the session, country groups expressed satisfaction with the result of the week’s work, underlining the constructive atmosphere conducive to agreement. Most of them also said they hoped it would be a good omen for the next WIPO committee meetings.

The next WIPO committee meetings are the 35th session of the Standing Committee on Copyright and Related Rights (SCCR), from 13-17 November, and the 20th session of the Committee on Development and Intellectual Property (CDIP), from 27 November to 1 December.

 

Image Credits: WIPO. Photo: Emmanuel Berrod