Geographical Indications, Design Law Treaty Up Next At WIPO

The controversial issue of geographical indications returns to the World Intellectual Property Organization stage this week, as the WIPO trademark committee is expected to consider a new document put forward by the United States, and a proposal from France. The meeting comes just weeks after GIs dominated the annual WIPO General Assembly, nearly leading to suspension of the UN agency’s budget before an all-night session ended in agreement there.

Also on the agenda next week is a potential treaty on industrial designs that could be on its way to a final treaty negotiation (diplomatic conference) in 2017.

The 34th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is taking place from 16-18 November.

After being mostly absent from the WIPO committee on trademarks, GIs have gained a prominent place in the committee and their protection is expected to be a highlight of next week’s meeting.

The protection of geographical indications (GIs) is one of the rare topics in WIPO that divides developed countries from other developed countries and developing countries from developing countries. GIs are names of products which have a specific geographical origin and possess particular qualities or a reputation deriving from the origin.

GIs are protected in different ways across the world, with some jurisdictions applying a sui generis system, such as European Union countries, and other jurisdictions using a trademark-based protection, such as the United States and Australia.

The WIPO General Assembly last month decided [pdf] on a work schedule for the SCT that included the examination of “different systems for protection of geographical indications, within its current mandate and covering all aspects.”

New US Document

The United States tabled a proposal [pdf] on 15 October for several documents to be considered in the discussion about GIs.

The list includes a draft treaty [pdf] on the protection of GIs dating back to December 1975, which was issued then by a WIPO committee of experts on the international protection of appellations of origin and other indications of source.

Also listed in the US document is a proposed revision [pdf] of the Lisbon Agreement for the Protection of Appellations of Origin or a proposal for a new treaty, issued by the same expert committee in 1975. Among the proposed changes in 1975 was the change from appellations of origin to GIs. It also says that contrary to the Lisbon Agreement, in order to be registered, it does not require that a denomination be recognise and protected as such in the country of origin.

An SCT document from September 2000 is also included in the US proposal, on possible solutions for conflicts between trademarks and GIs, and for conflicts between homonymous GIs.

A recently adopted revision of the Lisbon Agreement (The Geneva Act [pdf] of the Lisbon Agreement for the Protection of Appellations of Origin and Geographical Indications, including GIs has raised concerns from countries, such as the US and Australia, in which protection of GIs is made through trademarks. Those countries have said that the revision did not address the difference between the two systems (IPW, WIPO, 20 May 2015) and may be detrimental to their economies.

France Proposal

France also tabled a proposal [pdf] on 9 November suggesting that the protection of GIs in national systems be studied. This includes a study of the terms and limitations for the protection of GIs in collective marks and certification marks, and a study of legislation and case law relating to marks that use geographical names.

Also in the French proposal is a discussion on the protection of GIs in the domain name system.

Design Law Treaty

The General Assembly in October agreed “that the text of the basic proposal for the Design Law Treaty should be finalized by the SCT at its thirty-fourth and thirty-fifth session.”

This means that delegates have to find a solution to two remaining issues in the draft text.

One is the possible addition of an article on technical assistance, which has been requested by a number of developing countries. The other is the request by some developing countries to have an article on the disclosure of the origin of the design, to avoid unlawful use of traditional knowledge (IPW, WIPO, 20 March 2015).

Developed countries have been opposing the disclosure requirement, arguing that the design law treaty would be a procedural treaty only dealing with technical details of international applications. The inclusion of an article on technical assistance has been resisted by the United States, which favours an agreement outside of the treaty text.

Protection of Country Names

Delegates are also expected to consider a draft reference document on the protection of country names against registration and use as trademarks. Some 50 SCT member states provided submissions on specific aspects of their law and practice concerning the protection of country names.

Submissions are available on the SCT electronic forum.

The WIPO Secretariat was requested to revise a preceding document to make it more descriptive of office practices in this area, according to the draft reference document.

Still on the table is a revised proposal [pdf] from Jamaica on the protection of country names, from September 2014.

Trademarks, GIs, Domain Name System

SCT delegates are also expected to take note of a document [pdf] prepared by the WIPO secretariat informing member states on future developments in the domain name system.

In particular, the document presents a number of rights protection mechanisms which have emerged from a series of meetings of the Internet Corporation for Assigned Names and Numbers (ICANN) in the context of new generic top-level domains (gTLDs), such as .brand, .language.

Also still on the table is a proposal [pdf] from March, which is a revision from an earlier document including additional cosponsors from Czech Republic, France, Germany, Hungary, Italy, Moldova, Portugal, Spain and Switzerland on the protection of GIs and country names in the domain name system.

According to the proposal, “the introduction of new gTLDs resulted in new undesirable possibilities for registration and use of domain names that violate intellectual property rights.”

The cosponsors propose that the SCT discusses the issue and makes a recommendation to modify the WIPO Uniform Domain Name Dispute Resolution (UDRP), so that it permits “complaints to be made concerning registration and use of domain names in violation of the protection of geographical indications and to confirm the need of the extension of UDRP to country names following the decision of the General Assembly in 2002.”

 

Image Credits: Catherine Saez