Discussions on Possible Industrial Design Treaty Stumble at WIPO

26 September 2012

Member countries found themselves at odds over whether the World Intellectual Property Organization (WIPO) was ready to pursue a new treaty on industrial designs, leaving the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) unable to reach a compromise on the matter at its meeting last week.

According to WIPO's definition, an industrial design refers to the aesthetic aspects of an item, such as its shape and colour. Industrial designs are applied to a large array of products, ranging from medical instruments to watches and household appliances.

The industrial design treaty is a "case in point" to test whether the WIPO normative agenda is being inspired by "the constructive spirit and engagement" that led to the adoption of the Beijing Treaty on Audiovisual Performances last June, WIPO Director-General Francis Gurry told delegates at the beginning of the SCT's twenty-seventh session, which met from 18-21 September. (See Bridges Weekly, 27th June 2012)

Discussions have been taking place at WIPO since 2009 on possible areas of convergence regarding industrial design law and practice. In 2010, negotiations began to centre on a potential legal instrument  that would harmonise  industrial design registration formalities at the international level. The convening of a diplomatic conference for the adoption of a treaty on industrial designs was established as one of WIPO's priorities at the organisation's General Assembly last year.

No consensus on diplomatic conference for industrial design treaty

Last week's session saw some developed country delegations eager to move discussions on industrial designs towards a diplomatic conference.

"We believe that the text is very close to an agreement, but without a specific impetus we will not make progress," the EU delegate said.

The EU request for a diplomatic conference was met with resistance by several developing countries, who called the move "premature."

Brazil, on behalf of the Development Agenda Group (DAG), noted that "the draft articles are a work in progress and there are many issues that need to be better addressed" before moving forward. "This exercise has started as a discussion involving few members and the outcomes of these early discussions reflect the laws, practices, and regulations of developed countries," the delegate said.

"We need to take into consideration the realities of developing countries and also their needs in terms of technical assistance," Brazil added.

The impasse regarding the committee's future work was reflected in a meeting summary released by Imre Gonda, Deputy Head of the Hungarian Intellectual Property Office and chair of the SCT. Even though "no delegation had expressed opposition to the possibility that this work could result in an international instrument," the document acknowledges that the SCT was unable to agree on whether to recommend that the WIPO General Assembly convene a diplomatic conference.

The decision on the matter will therefore be left to the upcoming Assembly, which is slated to meet on 1-9 October.

Developed, developing countries disagree over impact study

During the four-day talks, SCT members also discussed a study on the potential impacts of the draft instrument that had been requested by developing countries at the previous SCT on the grounds of the Development Agenda recommendations related to norm-setting. The study - prepared by the office of the Chief Economist - examines the potential impacts of the proposed changes to industrial design law and practice on applicants and offices, as well as the flexibilities contained in the draft provisions.

Some developed countries reiterated their call for a diplomatic conference, stating that the study "contributes to a better understanding of the benefits of convergence" of design formalities, and emphasising that the adoption of the treaty will ease the registration of industrial designs "by making it easier, cheaper, and quicker."

However the DAG noted that the implementation of the treaty would require "a good deal of effort by developing countries." Similarly, the African Group recalled the importance of observing the Development Agenda recommendations related to capacity building and the need to "take into account costs, benefits, and different levels of development."

Brazil, speaking on the DAG's behalf, noted that the study "can help members to have a better assessment." However, they continued, the study did not follow the country classification mandated in the terms of reference; they also mentioned the need for more analysis of developing countries' needs.

For its part, the African Group called upon the Secretariat "to improve the study in order to complete the terms of reference that were not or that were only partially addressed."

However, the EU - supported by other developed countries- said it does not support such  a proposal "for it means delaying further the prospective of concluding our work on the treaty on industrial designs."

Ultimately no agreement on the subject was reached.

Internet intermediaries deleted; protection of country names sees progress

Following last Monday's information meeting on trademark protection on the web and the role of internet intermediaries, members of the SCT agreed to remove the issue of internet intermediaries from the committee's agenda. (See Bridges Weekly, 19 September 2012)

At the same time, members agreed on a proposal by Jamaica and Barbados that would require the secretariat to prepare a study on the protection of country names. The study, which would be presented at the SCT's 29th session, would aim "to determine possible best practice for the protection of country names from registration as trademarks or as elements of trademarks." The proposal rises from the need to tackle the increased use of country names in goods and services which have no association to the country in question.

ICTSD reporting; "Decision on WIPO Design Treaty Left To General Assembly; Internet Issue Dropped," IP WATCH, 21 September 2012; "WIPO: Protection Of Country Names Inspires Delegates; Designs Conference Elusive," IP WATCH, 20 September 2012; "Hope To Advance Industrial Design Treaty At WIPO Meets Reluctance From Developing Countries," IP WATCH, 19 September 2012.

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