WIPO Members Look At Protection Of Country Names, GIs, Icons

A number of countries are voicing concerns about their country name being used by trademark applicants with no relation to the country, riding on the country’s reputation or geographical relevance. They are also worried about their country name being used as an internet top-level domain name. Those are among the issues being discussed this week at the World Intellectual Property Organization committee on trademarks, along with questions on the protection of geographical indications, and of icons and typeface on the internet.

The 40th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is taking place from 12-16 November.

The agenda [pdf] includes a number of proposals and documents, mainly from previous SCT sessions, on trademarks, industrial designs, and geographical indications. Major questions to be addressed this week include the protection of country names against improper trademark registration and in the domain name system, and how countries currently protect geographical indications.

Spain tabled a new proposal [pdf] for a study on the protection of industrial designs at trade shows in WIPO member states. Spain is asking that the WIPO secretariat establish and conduct a survey among WIPO members to determine how Article 11 of the Paris Convention for the Protection of Industrial Property is implemented in their jurisdiction. Article 11 of the Paris Convention provides for temporary protection at some international exhibitions for inventions, utility models, industrial designs, and trademarks, according to the proposal.

Industrial Design Treaty: Developed Countries Say No Debate

Discussion about a possible convening of a high-level negotiating meeting (diplomatic conference) on an industrial design treaty was shot down from the start today. At the opening, Group B developed countries declared that following the failure to reach consensus at last month’s WIPO General Assemblies (IPW, WIPO, 13 October 2018) on the issue means the next negotiation on the subject will be the General Assemblies in autumn 2019, and not the SCT.

Canada speaking on behalf of Group B said since some countries at the General Assembly “were not prepared to accept the facilitator’s proposal,” talk about a potential diplomatic conference would resume in 2019 at the General Assemblies.

In their opening statement, the African Group and the Asia and Pacific Group both hinted at bridging the gaps between countries to reach a consensus acceptable for all. At issue is the request by some developing countries to have an article devoted to technical assistance in the body of the treaty, and that countries be allowed to request a disclosure of origin as part of their national examination procedure on industrial design applications.

Examination Practices for Trademarks and Country Names

Following an information session on country names organised during the meeting of the SCT last April, the secretariat produced a document [pdf] summarising the various examination practices regarding trademarks consisting of, or containing, country names.

The document is organised around a number of questions, such as determining whether the sign in the application concerns a country name: approaches that rely on a pre-defined list of country names; and others which do not rely on such a list.

Also addressed by the document are questions on the refusal of country names as such; and assessing the distinctive, descriptive or deceptive character of the sign.

National, Regional Systems for GI Protection

The WIPO secretariat was requested to send a questionnaire on the national and regional systems providing protection to geographical indications. This week, a compilation [pdf] of the replies to the questionnaire is on the agenda. Some 39 countries answered the questionnaire at the closing date of 10 September.

Numerous questions attempted to explore different ways countries protect geographical indications, such as which means for the identification and protection of GIs are available in their jurisdiction, whether it is sui generis, through trademarks, collective marks, certification marks, specific laws or other means.

Another question asks countries which are the required conditions to obtain protection of a GI in their jurisdiction, while another asks if the available protection mechanism requires the causal link between a given quality, the reputation or other characteristics of the product on the one hand, and its geographical origin on the other, to be expressed and documented.

The questionnaire also seeks to understand if reputation is required to be demonstrated as a condition for obtaining protection; and who can apply for the protection of a GI, whether it is a legal person, a group, a public institution, a national, regional, or provincial authority.

Further questions focus on the procedure for the protection of a GI in countries’ jurisdictions, what are the fees for such protection, and the grounds for refusing such protection, for example because of “genericness” and prior trademark rights. The questionnaire also asks for how long the protection for GI is granted, whether an unlimited period, a renewable limited period, or a non-renewable limited period.

GIs, Country Names on the Internet and DNS

Similarly, WIPO was requested to devise a questionnaire on the use and misuse of GIs, country names, and geographical terms on the internet and in the domain name system. A compilation [pdf] of the 28 answers is for delegates’ consideration this week.

Among the questions are: how countries define a “geographical term”; if national legislation provides for the protection of geographical indications, country names and geographical terms against infringements on internet; and what types of acts can be prevented.

The questionnaire also asks what legal and/or technical means are available in the country’s jurisdiction to identify an owner of a domain name; and if there is any rule, legal measure, remedy or legal basis in its jurisdiction to prevent the delegation as top-level domains of GIs, country names and names of geographical significance.

A number of proposals by member states are still on the table from previous sessions of the SCT. Two were issued at the last session in April.

Georgia, Iceland, Indonesia, Italy, Jamaica, Liechtenstein, Malaysia, Mexico, Monaco, Peru, Senegal, Switzerland, and the United Arab Emirates submitted a joint proposal [pdf] to protect country names and geographical names of national significance against their delegation as top-level domain names in the domain name system and their registration as distinctive signs, such as trademarks, if the sign consists exclusively of such names, or if it would amount to a monopolisation of the name concerned.

Peru also tabled a proposal [pdf] in April for the recognition and protection of nation brands.  The proposal includes a draft “Nation Brand Regime” for a nation brand recognition and protection system.

Regional groups this morning in their opening statements underlined the need for protection of country names. These included Morocco for the African Group, Indonesia for the Asia and Pacific Group, and El Salvador for the Group of Latin American and Caribbean countries.

Icon, Typeface, Font Designs

Following an information session on graphical user interface (GUI), icon, typeface/type font designs which took place on 31 October 2017, and proposals by member states, the WIPO secretariat was requested to prepare a draft questionnaire [pdf] on questions relating to the protection of GUI.

A graphical user interface is an interface through which a user interacts with electronic devices such as computers, hand-held devices and other appliances, according to Techopedia.

The draft questionnaire explores the demand for GUI protection. It includes questions concerning: the requirement for a link between GUI and the article or products; the methods allowed by IP offices for the representation of animated designs; the infringement criteria for GUI compared to other types of designs; and if a single design registration could cover the use of the design in a physical environment and in a virtual or computer environment.

 

Image Credits: WIPO