Protection Of New Technological Designs, Country Names, GIs At WIPO This Week

New technological designs, such as symbols, visual metaphors, and pointing devices are on the menu of this week’s meeting of the World Intellectual Property Organization committee on trademarks. The protection of country names against registration as trademarks and their use on the internet, and geographical indications are also prominent topics, and an information session will be held tomorrow. Discussions on a potential industrial design treaty will be kept for the WIPO General Assembly this fall.

The 39^th session of the Standing Committee on the Law of Trademarks, Industrial Design and Geographical Indications (SCT) is taking place from 23-26 April. The agenda is here [pdf].

It is a fact that the normative work often lags behind technological advances, as legislators grapple with new concepts and have to define new boundaries, and adapt current laws.

At the SCT this week, delegates are expected to discuss if the SCT is to continue looking into the question of Graphical User Interface (GUI), Icon and Typeface/Type Font Designs, and on which aspects. According to World Trademark Review, “A graphical user interface (GUI) allows users to interact with graphics appearing on electronic devices (eg, smartphones, tablets and netbooks). The interaction will typically involve pressing (with a finger or thumb) or clicking on (using a mouse or other input device) the graphics that appear on a display screen.”

At the last session of the SCT, on 31 October, the WIPO secretariat organised an information session on graphical user interface (GUI), icon and typeface/type font designs.

The WIPO secretariat provided a summary [pdf] of the main points emerging from the information session. Those points include the increasing significance and value of “new technological designs,” and the significant growth of applications to protect them in some jurisdictions.

The document also notes that questions were asked during the information session about whether current designs systems are adequate to protect GIUs. In particular, the mode of representation of those designs, and whether or not they should be linked to a physical product arose during the session, the document says.

Discussions during the session also concerned the best ways for representing new technological designs, whether video files should be accepted for GUIs containing movement, for example, according to the WIPO summary.

After the information session, the chair of the SCT suggested that member states and other stakeholders propose aspects on which further work of the SCT on new technological designs could be conducted. A number of responses were received by the secretariat, which made a compilation [pdf].

China, South Korea, and Tunisia submitted proposals, as well as the European Communities Trade Mark Association, the International Association of the Protection of Intellectual Property, the International Chamber of Commerce, and Japan Trademark Association. All the submissions are here.

Separately, the International Chamber of Commerce published a new report on Design Protection for Graphical User Interfaces.

Geographical Indications, Questionnaire, Survey

The issue of geographical indications has been prickly at WIPO, with strong stance of both proponents of a sui generis system, such as used by the European Union on the one hand, and proponents of a protection through the trademark system, such as in the US, on the other hand.

At the last session of the SCT, delegates approved a workplan (annex to the summary by the chair) on geographical indications, which included for the WIPO secretariat to compile a list of questions proposed by members and intergovernmental IP organisations with observer status. The compilation of the 214 questions is here [pdf].

Ecuador, France, Mexico, Poland, Moldova and Switzerland, provided individual submissions, while Argentina, Australia, Chile, Panama, South Korea, United States, and Uruguay sent a joint reply. The European Union, “in its capacity as a special member of the SCT, also sent a submission to the Secretariat,” according to the WIPO compilation. After the closing date to reply, Brazil, Chile, Colombia, and Israel provided individual submission, it says. The full text of the submissions is posted on the SCT Electronic Forum webpage, according to the document.

Also in the list of documents for this session is a survey [pdf] of the Existing State of Play of Geographical Indications, Country Names, and Other Geographical Terms in the Domain Name System (DNS). The survey was put together by the WIPO secretariat, as instructed in the agreed workplan.

The meeting document [pdf] detailing the survey is organised into two parts: the first concentrates on the existing state of play of geographical indications, country names, and other geographical terms in generic top-level domains (gTLDs). The second part does the same exercise for country code top-level domains (ccTLDs).

Protection of Country Names

A longstanding agenda item at the SCT, the protection of country names against their use as a trademark or as a domain name is still active in the committee.

This week, an information session will be held on 24 April. A panel of experts is expected [pdf] to discuss examination practices regarding trademarks consisting of or containing country names.

In early April, Peru submitted a proposal [pdf] for the recognition and protection of nation brands. According to the document, the nation brand “constitutes a sui generis distinctive sign because, notwithstanding its name, it is not intended to be a trademark (ordinary, collective or certification) since it does not apply to a specific product or service of a particular company.”

“Nation brands do not operate under private law, as do trademarks, and should not be reduced to that level in their recognition and protection,” it says.

In March, Georgia, Iceland, Indonesia, Italy, Jamaica, Liechtenstein, Malaysia, Mexico, Monaco, Peru, Senegal, Switzerland and the United Arab Emirates submitted a proposal [pdf] to the SCT seeking to protect country names and geographical names “of national significance” (IPW, WIPO, 20 March 2018).

According to the proposal, “registering the name of a sovereign nation or geographical names of national significance by private owners results in a monopolisation of common assets by these private interests.”

Jamaica started bringing the issue of the protection of country names against their trademark registration since 2014 and has been updating [pdf] its initial proposal.

Industrial Design Law Treaty, No Discussion before General Assembly

A potential treaty allowing easier international submissions of industrial design applications has been stalling for some years over two unresolved issues. The first is the request by some developing countries to include an article about technical assistance in the body of the treaty. The second is the inclusion in the treaty of the possibility for countries to include a mandatory requirement of disclosure of origin in their national legislation.

Some countries this morning indicated their willingness to discuss the issues, while some underlined the decision at the last WIPO General Assembly in October to resume discussion at the next WIPO General Assembly in the fall.

The draft articles [pdf], and the draft regulations [pdf] of a potential industrial design law treaty have not been discussed at the SCT for a number of sessions.

 

Image Credits: WIPO