European Union External Action

42nd Session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) - EU Statement - Agenda Item 4

Geneva, 05/11/2019 - 00:00, UNIQUE ID: 191115_36
Statements on behalf of the EU

42nd Session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) Geneva, 4-7 November 2019 EU Statement - Agenda Item 4

Chair,

As to the topic of Graphical User Interface (GUI), icon and type face/type font designs at recent SCT sessions, most delegations including the EU and its Member States have been in favour of further work, in particular on the tie between the product and the design and on how that affects the scope of protection, as well as on representation of animated GUIs. We shared 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.

At our last session, following the launch of a Questionnaire, we welcomed document SCT/41/2 Prov. setting out responses in a clear, coherent and appropriately detailed manner. We also endorsed the extension of the deadline to submit additional responses by 31 July 2019. We would like to thank SCT members for further contributions and the Secretariat for compiling all responses received in document SCT/41/2, including replies with further information on the common practice developed by the European Union Intellectual Property Office.

We reiterate our view that while this is not the first such survey, it is certainly the most up-to-date and detailed. This new survey explores, by means of specified and additional questions, issues such as, in particular, the link of these types of designs to the product indication; the use and effect of disclaimers; prior art searches; and viewing requirements including animated designs. In all the responses we see a wealth of information which will no doubt prove useful in further debates on GUIs, icons and typefaces in the committee. Therefore, we can fully support the compilation to be used as reference for further work on selected pertinent issues for such designs.

 

As regards future work on this topic, with particular reference to the invitation by the SCT Chair to present proposals on this matter, we note with much interest the proposal submitted by the delegations of Japan and the United States of America in document SCT/42/6. We welcome this new initiative and support the aim of adopting this joint recommendation as a practical way forward to achieve a more harmonised approach in relation to industrial design protection for GUI designs. We fully endorse the rationale to provide for at least a base line standard of protection for GUIs and we look forward to discussing this proposal with other delegations. We wish to make more detailed suggestions on the text of the draft recommendations in a later stage.

Although we acknowledge that issues concerning novel technological designs are interesting and relevant, we wish to reiterate our view that we should first focus on solving already-existing problems in the field of currently known forms of graphical user interface and icon designs. We continue to believe that we should have a phased approach and first channel discussions around existing and well perceptible differences that can, and should be, immediately addressed. However, we also remain interested in hearing more about other novel technological designs from user associations

As regards the proposal submitted by Spain on the protection provided for by Article 11 of the Paris Convention, how it is implemented and how the term “official or officially recognized international exhibitions” is interpreted, we supported the launch of the Questionnaire finalised at our last session. We would like to thank the Secretariat for preparing a compilation of responses to the Questionnaire in document SCT/42/2 Prov. The compilation reveals that there exist considerable divergences in practices on a number of pertinent questions, and most importantly, on the criteria established to determine what qualifies as an “official or officially recognised international exhibition”. We support the continuation of discussions on this issue. We would like to propose the organisation of an information session on that matter to explore users’ needs and national experiences, and to share best practices among offices.

Thank you.

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