WIPO meeting on Trademarks, Industrial Designs, and

UNCLAS GENEVA 000559

SIPDIS

SECSTATE FOR EEB
COMMERCE FOR USPTO

E.O. 12958: N/A
TAGS: ECON KIPR WIPO
SUBJECT: WIPO meeting on Trademarks, Industrial Designs, and
Geographical Indications


1. SUMMARY: The 21st session of the Standing Committee on
Trademarks (SCT) was productive and collegial, even though the
Committee was somewhat split over a Jamaican proposal to add country
name protection to the provisions of Article 6ter of the Paris
Convention, as symbols of national sovereignty. Having learned
lessons from other WIPO standing committees, the SCT agreed to
continue discussion on the Jamaican proposal--even though there were
some who were adamantly opposed to further discussion--giving the
Jamaicans "due process" instead of cutting off debate entirely.
Many delegations were concerned that cutting off debate would merely
send the issue to another WIPO or WTO forum. END SUMMARY


2. The Twenty-First session of the World Intellectual Property
Organization's Standing Committee on the Law of Trademarks,
Industrial Designs, and Geographical Indications (SCT) was held from
June 22-26, 2009, in Geneva. Mr. Park Seong-Joon (Republic of
Korea) was elected as Chair of the SCT for the 21st session while
Mr. Adil El Maliki (Morocco) was elected as Chair of the
Twenty-Second session of the SCT. The United States was represented
by Amy Cotton, John Rodriguez, and Janis Long, United States Patent
and Trademark Office (USPTO),Nancy Omelko, IP Attache at the US
Mission to the WTO, and Deborah Lashley-Johnson, IP Attache at the
US Mission to the UN.

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Industrial Designs
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3. Several sessions ago, Norway proposed that the SCT begin work on
industrial design formality issues with the potential goal of a
Diplomatic Conference for a design law treaty (DLT),similar to the
Patent Law Treaty (PLT) or the Trademark Law Treaty (TLT). The SCT
began discussions on a document, SCT/21/4, which outlined possible
"areas of convergence" that might be ripe for an eventual basic text
for a design formalities treaty.


4. The United States protects industrial designs, as identified in
the WTO Agreement on Trade Related Aspects of Intellectual Property
Rights (TRIPS),via the U.S. design patent system. Many other
countries around the world protect designs through a sui generis
design registration system with little to no examination as to
novelty--at least until a claim of infringement is made - and with
minimal time to registration, as well as a relatively short term of
protection, with possible renewals.


5. Discussion of the document was tedious, as the new Chair
struggled to find common ground amongst the various regimes. Areas
of particularly divergent practice include: specimens; filing date
requirements; deferment of publication and secret design; grace
period in the event of disclosure; term of protection; and
attestation or authentication of communications. The delegations
struggled to determine whether the existing text could be rewritten
to accommodate all systems, or whether a new document should be
drafted that better reflected the areas where no convergence was
possible.


6. From the perspective of the United States, it is potentially
premature to work on design formalities when the United States and
many others have yet to implement the Geneva Act of the Hague
Agreement for the Registration of Industrial Designs. Implementing
the Hague Agreement will necessitate various changes to U.S. law and
practice that will likely harmonize international practice in some
areas. However, until the United States has further consultations
with U.S. industry and Congress, there is little incentive or
flexibility for the USDEL to fully engage in any in-depth
harmonization discussions on this issue. The IB will prepare a
revised working document on possible areas of convergence to be
considered at the next session.

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Trademark Grounds of Refusal
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7. The SCT discussed document SCT/21/2, based on submissions by
delegations as to national practice. As this is such a broad topic,
it was difficult to determine an appropriate way to structure these
discussions so as to continue the lively and informative dialogue
amongst delegates without a real harmonization deliverable.
Delegations are invited to share further information as to specific
grounds of refusal that would be of most interest to them, including
specific cases of office practice as well as examples. The document
will be revised to reflect these submissions.

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Certification and Collective Mark Formalities
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8. Discussions on this document, SCT/21/3, were a bit strained as
it appeared that many delegations had limited experience in handling


certification and collective mark applications. The USDEL began the
discussion by asking specific questions on national policy and
practice relating to 5 areas that U.S. stakeholders have identified
as problematic when filing for registration in other countries: a)
what to apply for if a country does not register certification
marks; b) how to establish "proof of authority" for purposes of
demonstrating whether the applicant has governmental sanction to run
a certification program; c) how to classify certified goods; d) what
sort of regulations or standards are necessary to satisfy national
offices; and f) what constitutes an applicant, a producer group or a
certifier who does not produce the goods. The Secretariat will
prepare a revised paper based on the discussions for the next
session.

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Article 6ter of the Paris Convention
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9. The delegation of Jamaica introduced its proposal to reopen the
Paris Convention in order to extend Article 6ter's protection for
symbols of state sovereignty to include country names, including in
translation, in abbreviated or adjectival form, as well as in any
homonymous forms. The Jamaican delegation argued that there is a
loophole in Article 22 of the TRIPS Agreement which does not provide
for geographical indication protection for services, only for goods.
Therefore, the delegation wanted to address that loophole with this
extension of Article 6ter to country names. The delegation
referenced development discussions at WIPO in its opening
intervention.


10. An informal polling of various delegations indicated that
Jamaica was fairly isolated in its position, with the exception of
Switzerland. However, there was sensitivity to the fact that the
delegation from Jamaica needed to achieve some progress at the SCT
or it would be likely to raise the issue in other committees, where
the debate and the outcome would likely be less substantive and more
political.


11. Ultimately, the SCT agreed to the preparation of a draft
questionnaire soliciting input from delegations as to how trademark
applications containing or consisting of country names would be
handled at the national level. The USDEL indicated a desire to
broaden the questionnaire to touch on the broader issue of
geographic deceptiveness, in an effort to advance the SCT
discussions of grounds of refusal and to more properly focus the
Jamaican proposal.


12. The Twenty-Second session of the SCT is tentatively set for
November 23-26, 2009, in Geneva.

GRIFFITHS #



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