Move over country names: protection of Well-known Marks raised; plus possible new international treaty for Rep. of Korea.

Country Names/Nation Branding have been an issue for some countries and states for over 30 years. 

If the results of the last Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) meeting [add link] are any indication, resolution is still a long way off. Some countries continue not to support a general prohibition as such which, inter alia, raises many concerns for existing businesses that use a Country Name to denote the source, or in a context that is not misleading.

After continued discussion in the World Intellectual Property Organization (WIPO) SCT meeting in November, it was concluded that the delegation from Peru would send a draft questionnaire on Nation Brand protection in Member States of WIPO to the Secretariat of the SCT. Other Member States can also send questions they wish to be included in the draft questionnaire. The Secretariat will then compile all the questions for consideration for a questionnaire at the next SCT session to be held in 2020.

On the topic of Well-known Marks, the delegation from the Republic of Korea informed us that protection for these marks requires an expansion of trade mark rights, perhaps going so far as to result in a new international treaty. Discussion of how this could be achieved raised many issues, including what should happen where a Well-known Mark only has a reputation in a state without use. Where is the impact when a trade mark owner has no use rights in another state?

This is a new frontier for the SCT. In the spirit of cooperation, the Republic of Korea agreed to take into consideration the comments from other delegations, including the USA, which raised the issue of bad faith in the context of Well-known Marks. The Republic of Korea therefore will return to the SCT next spring with a revised suggestion as to how to move forward on this topic. It may include a recommendation on how the SCT could conduct a fact-finding survey on Member State protections for these marks.

Geographical indications

The lively discussion at the SCT meeting in November, 2019 indicates that this topic is not going away. More countries see advantages in registering Geographical Indications (GIs). However, this expansion runs contrary to, for example, the US position, which is not in favour of lists of denominations in trade agreements. No matter what side of the argument one sits on, if the expansion of GIs continues, for example, through bilateral trade agreements, what does this do to trade mark rights? Trade mark rights have been under attack, for example in the tobacco industry. Food for thought…

In this context, it was agreed that next spring, the SCT would hold one half-day information session on GIs for the Member State delegations. The focus would be on, inter alia, evaluating the conditions that create the basis for GI protection and evaluation of any changes to those conditions. It is expected that this session will lead to a further information session at the SCT fall meeting in 2020.

Physics and the Design Law Treaty 

We all know what happens if no force is exerted on a moving object. It will eventually slow down and come to a rest. Has this happened to the Design Law Treaty (DLT)?

At the recent Assemblies of the Member States of WIPO, no positive recommendation was accepted to have a Diplomatic Conference to conclude the DLT. Furthermore, at the 42nd Session of the SCT in November, despite the obvious efforts from the Chair, no delegation offered something constructive enough to move it along. It does, though, remain on the agenda for the Assemblies in 2020.

It appears therefore, that unless a political imperative arises, a Design Law Treaty may regrettably not be in the immediate IP landscape.

Graphical User Interface (GUI), Icon and Typeface/Typefont designs
update from the SCT Meeting in Geneva, November 

In view of emerging technologies, GUI, icon and typeface/typefont designs have become an important issue for WIPO. It is working on preparing an analysis of Member States’ current protection policies. In the meantime, the United States of American and Japan took the initiative and presented a joint proposal to protect GUI designs as Industrial Designs. The proposal would, inter alia, give applicants discretion with respect to the format of representations; would not require that the entire product be claimed, and would require that applications for GUI designs be examined under the same criteria as to form, and substance where applicable, as other types of industrial design applications. The delegations agreed to look at the joint proposal in light of how their Offices work and to return to the next SCT meeting to further consider this matter.

In the meantime, FICPI’s CET 2 group will also study this proposal.

FICPI’s view and involvement 

FICPI’s presence at meetings such as the WIPO SCT ensures that insights can be gathered and shared with the FICPI community, and that FICPI representatives can sit on platforms such as this as they are recognised and respected by the IP authorities as the voice of the IP professional worldwide.

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