In the normal course of events, this Standing Committee meets twice a year in person in Geneva. Such meetings provide interaction between attending states through the use of formal public discussions before the WIPO Secretariat and the current elected Chair, as well as breakout discussions between various delegations as arise as a consequence of what transpires in the formal meeting.
This year, due to Covid-19, there was no spring meeting. The fall meeting was a hybrid of in-person (very few!) and virtual attendees. FIPCI was one of the virtual attendees of the fall meeting of SCT/43 (the Standing Committee meeting on trademarks, industrial designs and geographical indications) held at WIPO from November 23-26, 2020.
Mr. Alfredo Carlos Redon Algaro (Mexico) was elected as the Chair. Willie Mushayi (Zimbabwe) and Jan Techert (Germany) were elected as vice-chairs.
FICPI is a permitted Observer, with no voting right, but with the possibility to make comments on the record, and informally with delegation representatives during the course of the meeting. FICPI’s attendance serves the purpose of learning what might be coming down the pipe in terms of Treaty initiatives as well as providing the possibility to advance the interests of IP practitioners in terms of best practices. FICPI has in the recent past participated on an informational panel for all delegations on the protection of geographic names.
The highlights of the meeting are:
1. GUI, Icon/Typeface/Typefont designs
WIPO expanded the deadline for further delegations to file replies to a questionnaire on GUI, Icon/Typeface/Typefont designs to January 29, 2021 as the response rate to-date is low. From the replies filed to-date, the Secretariat noted the existing diversity in how this matter is treated in different countries. Discussion on this topic and proposals currently before the SCT will continue at the 44th Session.
2. Temporary Protection for Industrial Designs
Discussion stemming from the results of questionnaire on the topic of the Temporary Protection provided for Industrial Designs under Article 11 of the Paris Convention for Intellectual Property, has been deferred to SCT/44 to determine how to advance work on this topic.
3. Progress on WIPO DAS for industrial designs
The Secretariat noted the progress of implementation of the WIPO DAS for industrial designs by members and will revert for a further update at SCT/44. Inter alia, on July 1, 2020, Israel expanded DAS to include industrial designs.
4. Country names and names of national significance
There was a long discussion on country names and names of national significance. A co-sponsored proposal by inter alia, Iceland, Switzerland and Jamaica laying out a framework of principles/guidelines to help Offices examine this subject matter was identified, as well as the issue of enforcement raised. As Jamaica stated, its concerns about the lack of protection for country names was raised 40 years ago and has not yet been answered to that country’s satisfaction. On the other side of the ledger, the USA stated that it has the legal means contained in its national legislation to protect this subject matter, so is not yet convinced something more is necessary.
This discussion went on to raise the issue of preventing monopolization on the DNS of a country name and words of geographic significance, referencing the issuing of .AMAZON as a top level domain to a corporation. It was determined that discussion will continue at the 44th session, and as the Swiss stated, it should be an in-depth discussion in person. By that time, the Secretariat should have prepared a summary of the results of the Questionnaire on Nation Brands which is still open for responses until January 29, 2021.
5. Geographical Indications of Origin
It was agreed that WIPO should provide an informational session to the delegates. The delegations were asked to provide topics for the panel. For example, the USA asked that a panel inform as to how Offices weigh the various components of GIs in determining conflicts between GIs and GIs within trade marks. The Russian Federation wants to receive information on graphical or pictorial geographic elements. The Chair terminated the discussion by stating that all proposals for topics for such information session, will be discussed at SCT/44.
In addition to the meeting, informational sessions were held as follows:
A. GIs–including an evaluation of the conditions that create the basis for GI protection and the evaluation of any changes to these conditions, and, how to protect the GI.
Speakers from the Colombian GI office, the Swiss GI Registry and the New Zealand office participated.
B. GIs—-ways to prevent bad faith use of GIs including the intersection of GIs with Domain Names. A professor and a representative from ECTA spoke which led to many questions from delegates including a statement that this discussion was premature until we have an understanding of what constitutes bad faith. One delegate remarked that there is “free-riding” versus “actually harming”—–
C. Temporary Protection provided to Industrial Designs under Article 11 of the Paris Convention. The Secretariat moderated, pointing out at the outset the lack of/inadequacy of protection for industrial designs at international exhibitions had led to inclusion of a provision for protection. Paris members are obligated to take legislative measures to give protection. The result has been a variety of approaches. To illustrate, speakers from Germany, Canada and Moldava presented. Following this, a second panel provided the experience of users. Some comments were:
1. That the landscape is chaotic
2. Unintended consequences flow sometimes
3. Rarely invoked
4. Any disclosure prior to filing is risky as once you disclose, a whole host of things can happen
5. What are we trying to encourage with Article 11 now? This started in another era when it was more difficult to file a design right
6. Best practice is to file before public disclosure
7. People would be better served by being educated to file a design right
8. In 1960, AIPPI had a movement to abrogate Article 11. In 1963, at its World Congress, the issue arose again and while not proposing a pure abrogation, it seemed to be saying that there should be a rethink of this issue.
9. Can we “dare to dream” of an unregistered design right?
There remains a lot on the plate of the SCT in the subject areas.
FICPI’s view and involvement
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