WIPO Mulls Industrial Designs Treaty, Examines Internet Trademark Protection

6 April 2011

Members of the World International Property Organization (WIPO) met in Geneva last week to discuss a potential treaty that would harmonise formalities surrounding the protection of industrial designs at the national and international levels. They also discussed trademark protection on the internet, particularly as it relates to intermediaries such as EBay, Google and social media sites, which are part of an industry that generates upwards of US$200 billion in annual revenue and is used by hundreds of millions of people daily.

The WIPO Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications (SCT) concluded its twenty-fifth session with members considering the possibility of holding a diplomatic conference, the highest level of treaty negotiations at WIPO, to conclude an international agreement in the area of industrial designs.

As for trademarks and the internet, members endorsed a proposal to hold fact-based information sessions to better inform discussions before any further action.

Possible Industrial Designs Treaty

According to WIPO, industrial design denotes the aesthetic characteristics of an item, whether the features are three-dimensional, like shape, or two-dimensional, like patterns or colour. The concept applies to products like medical instruments, household appliances, and even textile designs.

Since 2009, the SCT has been discussing possible areas of convergence for industrial design law and practice in WIPO member states.  In November 2010, it considered draft provisions dealing with industrial design registration formalities, such as paperwork requirements for detailed descriptions of the items and three-dimensional drawings, along with classification and nomenclature.

Last week's session saw some governments like the European Union eager to move discussions on industrial designs towards a diplomatic conference. Others countries, meanwhile, felt that was premature and requested more information.

The SCT first advanced the notion of an international instrument for industrial designs at the WIPO General Assembly in September 2010. The European Union and the United Kingdom stated that they "considered the time to be ripe to bring the issue of designs to the forefront of public attention". Negotiations since have been moving slowly but steadily. At a press briefing last week, WIPO Director General Francis Gurry stated that such a treaty would harmonise industrial design registration formalities, making it easier for applicants to navigate different national systems.

There are already similar treaties for the harmonisation of formalities in the area of patents and trademarks, respectively the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks (TLT), he added.

Certain countries such as Japan and members of the Development Agenda Group (DAG) cautioned that more work is needed before a diplomatic conference on industrial designs can be convened. The DAG, which consists of around 20 developing country members like Brazil, Egypt, India, and Indonesia, aims to integrate development into WIPO's work. In their statement, they reminded the committee that any norm-setting process in WIPO "should be supportive of the development goals agreed within the United Nations system" and must "take into account different levels of development and a balance between costs and benefits," as mandated by Development Agenda recommendation 15.

In his summary of the proceedings, Chair Park Seong-Joon (Republic of Korea) stated that a diplomatic conference aimed at moving ahead with adoption of an industrial design treaty could be an option "once sufficient progress has been made and the time [is] ripe for recommending the holding of such a diplomatic conference."

Trademarks and the Internet

The SCT also discussed legal issues relating to the use of trademarks on the internet, focusing their work on three types of internet intermediaries: auction sites such as Ebay, search engines such as Google, and social media sites such as Facebook and Twitter. The document prepared by the Secretariat noted that in some cases both intermediaries and users of services are liable for alleged trademark infringement, while in other situations, it has been argued that only internet intermediaries "should be held liable for acts of the users of their services allegedly constituting trademark infringement".  Internet intermediaries are distinct from other websites because they serve as platforms for users to host and transmit content that may have been generated by third parties.

So far, according to the document, such ‘secondary liability' has been the subject of contrasting legal rulings on whether the sites themselves are liable for trademark infringement committed by users of their services. EBay lost a lawsuit over counterfeit Moet Hennessy Louis Vuitton (LVMH) items in France, but won a similar lawsuit in the United States regarding counterfeit Tiffany jewelry.

Despite the objections of certain members such as Australia, the committee agreed to hold fact-based information sessions to better understand the interplay of trademark protection on the internet. SCT Members were invited to present proposals for an information meeting on liability of Internet intermediaries to the WIPO Secretariat before the end of the month of May 2011. The Secretariat was requested to compile all suggestions received and to present them to the twenty-sixth session of the SCT for consideration, scheduled for October. The chair highlighted the importance of listening to all relevant stakeholders and reaffirmed that these information meetings would host perspectives from academia, users, intermediaries, and governments alike.

The Computer & Communications Industry Association (CCIA) said in a statement that they welcome the decision by the SCT to hold such a fact-based discussion, "and only afterwards discuss what, if anything, needs to be done beyond established legal norms and commercial practice in the protection of trademarks on the Internet." CCIA's Geneva representative, Nick Ashton-Hart, added that the services which the Secretariat implies need regulation are "used daily by hundreds of millions of people and generate hundreds of billions of dollars in economic activity... Any action which could impact the daily life of a sizable portion of the world's population, as well as significant international trade, should be taken only with extreme care and only after impacts and unintended consequences are clearly understood."

Members agreed to discuss rules for the information discussions at the next session of the SCT, tentatively scheduled for 24-28 October. If they manage to agree, the information meeting would likely take place during the twenty-seventh session of the SCT in 2012.

ICTSD reporting; "WIPO Assembly Considers Paths For Possible New Treaties", IP WATCH, 30 September 2010; ‘‘Ebay Case: Tiffany Knocked Out Over Knock Offs'', JCK Online, 15 July 2008.

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