Revision of International Trademark Law Treaty
Negotiations to revise the Trademark Law Treaty (TLT) are gathering pace at WIPO. Participants at a meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) from October 25 to 29 made significant progress in fine-tuning legal texts to bring the Treaty into line with the technological advances of the past decade. This follows on the heels of a decision by WIPO Member States at their annual Assemblies in October 2004 to convene a Diplomatic Conference on the revision of the TLT in March 2006.
The SCT reached consensus on a number of articles and rules including:
- the marks to which the treaty applies;
- questions relating to communications;
- measures in case of failure to comply with time limits;
- duration and renewal of registration; and
- questions relating to requests for recordal, amendment or cancellation of a license.
Survey on Member States’ trademark law and practice
The SCT also discussed a provisional summary of responses from Member States to a questionnaire on national trademark law and practice. The survey, containing a large number of questions on national trademark law and practice, was circulated to SCT members in August 2003. To date, 69 countries and 3 intergovernmental organizations have submitted some 22,000 responses, which have been compiled in the provisional summary document. Member States and intergovernmental organizations that have responded to the questionnaire had until the beginning of 2005 to review and submit comments on their inputs. Thereafter, the final version of the document, taking into account all comments received, will be submitted to the SCT. The document could serve as a basis for future work of the SCT.
Internet domain names and geographical indications
The SCT also considered the issue of the abusive registration of geographical indications as Internet domain names. Without entering into a substantive discussion, the SCT decided to keep this item on its mid-term agenda.
The SCT was attended by 83 Member States, 3 intergovernmental organizations and 11 non-governmental organizations. The next session of the SCT will be held from April 18 to 22.
Representatives from 104 Member States, 20 intergovernmental organizations (IGOs) and 45 NGOs attended the November IGC.
Member States Tackle Protection of Traditional Knowledge and Folklore
WIPO Deputy Director General Francis Gurry explained that the proposals were distilled from views expressed by Member States and a wide range of indigenous and local communities, as well as drawing on a number of national and regional laws. The proposals “served as a springboard for a concentrated, focussed debate on the appropriate content of international protection of traditional knowledge and traditional cultural expressions” said Mr. Gurry. While acknowledging that significant issues were yet to be resolved by Member States, he expressed satisfaction with the promising progress made in the IGC meeting.
IGC delegates explored a range of policy and legal issues raised by these initial drafts. These included:
- the relation of specific TK or TCE protection to the existing intellectual property (IP) system, and possible reforms of the IP system, such as strengthened patent disclosure requirements for TK and genetic resources; how to determine the beneficiaries of protection;
- the need to take account of the underlying rights of indigenous peoples;
- the appropriate legal form of protection;
- how to set the appropriate boundary between international and national legal measures,; and
- the relationship of protection with other legal systems and policy areas.
The IGC also considered to what extent a system to protect TK against misuse should retrospectively cover past use. The Committee placed strong emphasis on the need for a holistic approach, including close coordination with other international systems and processes.
The Committee agreed to invite written comments on the existing draft proposals to supplement the already extensive commentary and amendments proposed during the meeting. The deadline for submission of these comments is February 25. The updated proposals would then be circulated for further consultation in advance of the next session of the IGC in June. (Texts of the initial proposals are available as Annex I of documents WIPO/GRTKF/IC/7/3 and WIPO/GRTKF/IC/7/5.)
Participation of indigenous communities
Building on past steps to enhance the indigenous and local community perspective in its work, the Committee agreed on a range of procedural measures to increase this involvement and to give representatives a greater voice in the IGC. The Committee also agreed to develop plans for a voluntary fund to facilitate the involvement of these communities. A full proposal on this question will be considered at the June meeting. As an interim step, the Committee urged voluntary donors to provide funding to support the participation of indigenous communities.
The Committee was also updated on the process adopted by the WIPO General Assembly in response to the invitation by the Convention on Biological Diversity to address certain questions relating to disclosure requirements in IP systems for genetic resources and associated TK. The European Union introduced a proposal, and Switzerland updated the Committee on its related proposal within the Patent Cooperation Treaty (PCT), but no decision was reached on future work by the IGC itself on this topic.
|WIPO-UNEP Joint Publication on Benefit Sharing|
|On November 1, WIPO and the United Nations Environment Programme (UNEP) launched a study on the role of intellectual property (IP) rights in the sharing of benefits arising from the use of biological resources and associated traditional knowledge. The study was presented by Mr. Klaus Töpfer, UNEP Executive Director, and Mr. Francis Gurry, WIPO Deputy Director General.
The study highlights the need for a clear understanding of IP issues when genetic resources are first accessed. Agreement on how IP derived from access to genetic resources is used, and how the benefits are shared, is an important part of the exercise of prior informed consent. It is also a practical way of ensuring that access and benefit-sharing is fruitful, equitable and mutually acceptable, and that it becomes a true partnership between custodian and user of the genetic resource. The study investigates the potential for achieving this, while underscoring the practical and legal obstacles that traditional communities have encountered in the three cases discussed in the study.
UNEP and WIPO made available a pre-publication version of the study to ministers at the Seventh Meeting of the Conference of the Parties to the Convention on Biological Diversity in Kuala Lumpur in February 2004. The publication (No. 769(E)), which includes detailed case studies from India, Mali and Nigeria, may be ordered from the WIPO Electronic Bookshop.
WIPO Deputy Director General Rita Hayes, SCCR Chairman Jukka Liedes and WIPO Legal Counsel Edward Kwakwa during the SCCR (Photo Mercedes Martínez Dozal)
Work on the Protection of Broadcasting Organizations Accelerates
Noting the central role of broadcasting in developing countries, SCCR Chairman Mr. Jukka Liedes of Finland said: "Broadcasters are motors of social, economic and cultural development. The progress in the SCCR session is quite promising, as Member States’ positions showed increased flexibility and a will to move forward towards the formal treaty negotiation process."
In accordance with the Chair’s conclusions, consultation meetings will be organized by the Secretariat over the next few months in Geneva and in regions where requested by Member States. The Chair will prepare a second Revised Version of the Consolidated Text and a working paper to address whether and how protection should extend to webcasters, entities that transmit over the Internet either directly or as an adjunct to traditional broadcasting activities.
Consensus was also sought on the scope and duration of rights under the treaty. Some delegations would prefer to limit protection to those rights needed to fight signal piracy. On duration, while there was some support for a term of protection of 20 years, the proposals of most Member States call for a 50-year term.
WIPO Deputy Director General Rita Hayes said: "Most Member States are confident that differences on these key issues can be narrowed in the final negotiating process. The next session of the Standing Committee will take into account the progress made in regional consultations, paving the way for the adoption of a new treaty."
Work aimed at updating the IP rights of broadcasters, currently provided by the 1961 Rome Convention on the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, began at WIPO in 1997. A growing signal piracy problem in many parts of the world, including piracy of digitized pre-broadcast signals, has made the need to update the Treaty more acute.
In a move applauded by consumer and user groups, the SCCR agreed to place on the agenda of its next session an item proposed by Chile concerning exceptions and limitations to rights for the purposes of education, libraries and disabled persons.
Before the SCCR, an information session on the protection of audiovisual performances took place. This featured a presentation by Professor André Lucas from University of Nantes, France, on the transfer of audiovisual performers’ rights to producers. Many Member States, intergovernmental and non-governmental organizations expressed interest in making headway on outstanding issues left over from the Diplomatic Conference on the protection of audiovisual performances in December 2000.