Delegation of the European Union to Malaysia

Fifty-Ninth Series of Meetings of the Assemblies of the Member States of WIPO - Agenda Item 17: Report on the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT)

Geneva, 08/10/2019 - 00:00, UNIQUE ID: 191016_42
Statements on behalf of the EU

Fifty-Ninth Series of Meetings of the Assemblies of the Member States of WIPO Geneva, 30 September – 9 October 2019 Agenda Item 17: Report on the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT)

Chair,

The EU and its Member States welcome the continued progress made by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) during its last two sessions. We note with appreciation that the SCT moved forward on all key topics and delegations maintained a constructive spirit. As to trade marks, we held intense discussions and made some progress in seeking a compromise solution on the topic of country names. As regards designs, we agreed on a more defined scope of future work concerning Graphical User Interface designs and embarked on exploring the topic of international exhibitions. We are hopeful that in the end, step-by-step progress on geographical indications can also lead to clear and tangible results within the SCT mandate and framework that have a positive impact on stakeholders. We would like to reiterate that the SCT should not aim to interpret or revise provisions of the Lisbon Agreement or the Geneva Act.

With regard to trademarks, the Committee has been discussing the protection of country names against registration and use as trademarks. At its 40th session the SCT processed the conclusions reached on the basis of a fruitful information session on divergent office practices. Discussions started on a new compromise proposal by 12 countries, and continued at SCT 41 on the basis of revised proposals prepared by the co-sponsors. Discussions also started on another proposal on “nation brands”, and we can expect two revised proposals for the next SCT session. We remain open to participate in continued discussions on all proposals on the table, in particular as regards the policy rationales as set out in document SCT/41/6. We look forward to providing our comments at the next session of the committee.

We appreciate the valuable updates regarding trademark-related aspects of the domain name system as well as trademarks and international non-proprietary names for pharmaceutical substances (INNs) that have been shared in the SCT.

In relation to industrial designs, we reiterate our position that the DLT should not be discussed in the SCT. Rather, this General Assembly should continue to pave the way towards the convening of a diplomatic conference for the adoption of the Treaty on the basis of a draft text that can lead to consensus.

An issue discussed more successfully in the area of industrial designs has been Graphical User Interface, icon and type face/type font designs (GUIs). At the 40th session a Questionnaire was finalised, with a focus on the requirement for a link between GUIs and the article or product, and the methods allowed by offices for the representation of animated designs. SCT 41 discussed a compilation of all returns to that Questionnaire. We expect the finalisation of the compilation for the next session and look forward to discussions on future work on this issue. We share common understanding that currently existing divergences should be directly addressed and further work on these issues can pave the way for a more harmonised approach. Similarly, progress has been made on the topic of temporary protection provided to industrial designs at certain international exhibitions under Article 11 of the Paris Convention. We await the discussion of a compilation of returns to the Questionnaire at the next session.

As to geographical indications (GIs), the EU and its Member States welcomed the compilation of the replies to the two Questionnaires for the 40th SCT session and its finalisation for the 41st session. We reiterate our view that this process has so far been a valuable and constructive exercise in advancing the international debate on GIs. We continue to share the understanding that the exercise should be advanced by agreeing a limited number of topics to be addressed in information sessions in future SCT meetings. Such topics should, in our view, address significant challenges confronting the global IP community, as they pertain to GIs. They should be issues of wide interest across the membership and should be confined to subjects under the scope of the SCT. The EU and its Member States believe that the treatment of geographical indications as IPR on the internet is one such area where there are significant lacuna, unjustified divergences from treatment of other forms of IPR, and of global significance. We therefore recommended our list of topics at the 41st session accordingly. We welcomed agreement on holding a half-day information session at the next meeting of the SCT as well as consensus reached on the programme for that information session, comprising three panels on a selected set of three topics. The EU looks forward to giving its own contribution on the topic of “Geographical indications as intellectual property titles in the operation of DNS and in the dispute resolution policies”. We also look forward to participating constructively in discussions of the other two topics on the programme. We await the discussion on the topics of further information sessions and encourage the wider membership to table proposals for debate on GIS on subjects of concern.

Highly appreciative of such positive tendencies, the EU and its Member States remain actively engaged in continuing work in all three key areas of the SCT.

Thank you.

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