01st July, 2019
Jurgen Buchhold represented FICPI on behalf of CET Group 2 and Toni Polson Ashton was present as Special Reporter for Trademarks and Industrial Designs at the 41st Session of the Standing Committee on the Law of Trademarks, Industrial Designs and GI’s in Geneva, April 2019.
While the Design Law Treaty (DLT), dealing with the harmonization of filing requirements for design registrations remains “technically” on the SCT agenda, the work is now restricted to the General Assembly.
The DLT is a proposed treaty to achieve a multi-national system to simplify industrial design registration and protection worldwide. However, the General Assembly remains politicized over two primary issues namely, disclosure of source in design applications (including traditional knowledge), and “technical assistance”, which appears to be directed to establishing infrastructure, staff, policies, etc. in the IP offices of developing countries that are not currently equipped to handle design applications.
In the past, FICPI identified to the SCT that the key formal issue for users was the ability to file one set of drawings for all applications globally.
New Age Designs
WIPO has a questionnaire on GUIs, Icon and type face/type font designs open for delegation responses. The Secretariat will compile the returns to present to SCT 42 this Fall.
Interestingly, some delegations feel the current copyright and patents/designs framework provides adequate protection.
Temporary Protection Provided to Industrial Designs at Certain International Exhibitions under Article 2 of the Paris Convention
As the FICPI membership is aware, what constitutes an “officially recognized” international exhibition varies from jurisdiction to jurisdiction, and is often narrowly defined. This short exemption is a manifestation of Article 11 of the Paris Convention for patents. Industrial Designs face a patchwork landscape. For example, Article 44 of the EPO Community Design Regulation contains a right of priority for official or officially recognized international Exhibitions falling within the terms of the Convention on International Exhibitions; whereas, China for example, looks at GUIs, fonts or typeface as filling under copyright protection.
Thus, an agreed upon questionnaire will be circulated to SCT members and inter-governmental IP organizations with Observer Status (FICPI does not qualify) for return by July 31, 2019. The compilation of responses will be reported to SCT 42. Once a global picture is available, discussions can start.
This topic is of interest to all member states and IP professionals. Long standing discussions are still in process.
Country names has developed into including formal and short country names, country codes, “relevant” variations, abbreviations, translations, UNESCO regions and names of national significance (for example, capital cities in all language versions; states in federal countries, provinces, etc.)
There is a divergence of opinion, as to what should be protected and how. Is this subject a matter of public domain, or is there a property right? If it is the latter, who has the right to control the use of the name? (for example should it be a quasi-administrative system; a private group, or a legal regime, etc.?)
The discussion concerning the protection of country names and geographical names of national significance also now extends to the domain name system (DNS).
This is a topic that FICPI must, stay on top of, as inter alia, extensive protection has a potential for an anti-competitive effect on client trademark rights already in existence and in the future, as well as the right to use geographic terms as descriptive elements.
In view of the diversity of opinions on the protection of GIs in the DNS, WIPO agreed to hold a half day information session on GIs at the next SCT meeting.
The topics will be:
- Evaluation of genericness (US request)
- Geographical indications as intellectual property titles in the operation of the DNS and in the dispute resolution policies (EU request)
- notions of identity, similarity and imitation between geographical indications and trademarks in the context of registration and commercial use (Swiss request)