The World Intellectual Property Organisation (WIPO) held a meeting in Geneva recently to discuss the possibility of creating a treaty to harmonise protection of industrial designs at the national and international levels. The protection of trademarks on the Internet was another topic of discussion. These discussions were held at the 25th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT).
The Development Agenda Group consisting of 20 members like Brazil, India and Egypt also proposed the addition of a new item to the draft Agenda entitled “Work of the SCT”, under which SCT could discuss its contribution to the implementation of the Development Agenda Recommendations. In 2007, the WIPO general assembly had adopted 45 development Agenda recommendations out of the 111 that were submitted.
Some of the members who support a treaty on industrial designs like the European Union were of the view that there is a need to have a diplomatic conference at the highest level to conclude such a treaty. However, a number of countries including Japan were of the view that there is a need to study the matter further before moving to conclude a treaty. The developing countries group pointed out that there was a need to look at the developmental dimension before concluding any such treaty. The Chair Park Seong-Joon from the Republic of Korea in the summary suggested that a diplomatic conference for the adoption of a design law treaty could be convened only after sufficient progress has been made and the time was ripe for recommending the holding of such a diplomatic conference.
The Chair requested the WIPO secretariat to prepare a working document for consideration at the next session of SCT in October, 2011. That document, the Chair said, should reflect all comments made at the present session and highlight the issues that needed more discussion. Furthermore, delegations were requested to consult extensively with national user groups in order to obtain their views and to inform the work of the Committee.
The protection of industrial designs is not new to countries. The TRIPS agreement of the World Trade organisation (WTO) requires protection for industrial designs, and members are to provide protection for a minimum period of 10 years for industrial designs that are “new or original”.
The conditions that need to be satisfied to get protection for industrial designs are that they should be “independently created and should be new or original”. Countries could provide against protection, on the ground of lack of novelty or originality if the design does not significantly differ from known designs. The TRIPS also requires that in the industrial designs for textiles, the coasts and examination or protection should not unreasonably impair the opportunity to get protection.
The new WIPO treaty will look at expanding the scope and commitment of countries on industrial designs. It is, therefore, important to understand these proposals completely to analyse the impact for companies in developing countries like India.
Another important area for developing countries was the discussion on trademarks on the Internet. This also requires close analysis by industry since the WIPO is looking at a joint recommendation that aims to provide a clear legal framework for trademark owners who wish to use their marks on the Internet and to participate in the development of electronic commerce.
The paper prepared by the secretariat for the meeting states that the “recommendations are intended to facilitate the application of existing laws relating to marks, and other industrial property rights in signs, on the Internet, and to be applied in the context of: determining whether, under the applicable law, use of a sign on the Internet has contributed to the acquisition, maintenance or infringement of a mark or other industrial property right in the sign, or whether such use constitutes an act of unfair competition; enabling owners of conflicting rights in identical or similar signs to use these signs concurrently on the Internet; and determining remedies.”
Different aspects of protecting intellectual property will soon become an important issue for Indian industries with several bilateral agreements on trade coming into force. Indian industries will need to follow the developments at WIPO closely to understand new issues on intellectual property that future FTA partners are considering.
(The author is Principal Adviser APJ-SLG Law Offices)