Cablegate: Wipo Standing Committee On the Law of Trademarks,


DE RUEHGV #1118/01 3421217
R 081217Z DEC 09




E.O. 12958: N/A
SUBJECT: WIPO Standing Committee on the Law of Trademarks,
Industrial Designs, and Geographical Indications (SCT), November
23-26, 2009

1. SUMMARY: The 22nd session of the WIPO Standing Committee on the
Law of Trademarks, Industrial Designs, and Geographical Indications
(SCT) continued constructive discussions on topics remaining from
the 21st session. Work on most of these issues is coming to a
conclusion and thus the SCT members may need to plan for future
work. This session generally served as an opportunity for Members to
clarify points and submissions in their working documents as well as
an opportunity for Members to ask for clarification from other
Members on their policy rational for such positions. The USDEL
sought specific information from the Committee members on how
national offices are handling applications for marks which refer to
President Barack Obama or consist of the President's name. In
general, discussions at this session were productive and
non-controversial, and with the strong leadership of the Chair, the
meeting was conducted at an efficient pace. END SUMMARY

2. The Twenty-Second session of the World Intellectual Property
Organization's Standing Committee on the Law of Trademark,
Industrial Designs, and Geographical Indications (SCT) was held from
November 23 - 26, 2009, in Geneva. Mr Adil El Maliki (Kingdom of
Morocco) was elected as Chair of the Twenty Second Session of the
SCT at the prior session. The United States was represented by John
Rodriguez and Janis Long, United States Patent and Trademark Office

Industrial Designs
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
discussed document SCT/22/6 which identified possible "areas of
convergence" which could evolve into an eventual basic text for a
design formalities treaty. The document reflected earlier input on
design formalities which the SCT members had provided at the
previous session.

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 constructive as SCT members were
given the opportunity to state their agreement or objections as to
whether the identified areas of convergence were actual "areas of
convergence." Many Members indicated that some of "areas of
convergence" did not take into account their national practices.
Based upon the comments and proposals made at this session, the
Chair requested the Secretariat to revise the current "areas of
convergent" document and outline those areas where there does
continue to be "areas of convergence," then indicate where there are
general tendencies in the law and practice of SCT members and
finally identify those areas where no concrete convergence could be
established at this time. A revised paper will be considered at the
next session of the SCT.

6. In regards to whether the working paper evolves into a text for
a design formalities text, 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 U.S. 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.

Digital Access Service for Priority Documents
7. The Digital Access Service (DAS) for Priority Documents is
currently available for submitting priority documents related to
patent filings, and the SCT considered whether to extend the service
to priority documents relating to industrial designs and trademarks.
Discussion focused on working document SCT/22/7 which provided
information on how the DAS currently works for submitting priority
documents in patent filings while outlining how the service could be
extended to industrial designs and trademarks. At this session, the
International Bureau (IB) provided a live demonstration of the DAS
to illustrate the step by step process that an applicant currently
encounters when submitting priority documents to national offices
which have joined the system. (NOTE: The USPTO joined the system in
July 2009. Other offices include the Japan Patent Office, the PCT
Office of the International Bureau, the UK Patent Office and the
Spanish Patent Office.)

8. Most Members believe that the DAS will be a useful tool in
facilitating the transmission of priority documents and will enhance
efficiency within their national IP offices. Translation of
documents appeared to be an important element of the DAS that many
Members identified as being particularly beneficial. A few Members
had questions as to the cost of implementing the system within their
own National Offices as well as whether such a system would be
compatible with their existing national practices. The IB indicated
that the DAS was only meant to provide simplicity to the current
framework and would be an option for applicants to take advantage of
if they were interested. The Chair indicated that all comments
would be taken into account and requested the Secretariat to advance
work on the establishment of a Digital Access Service for Priority
Documents for industrial designs and for trademarks in a way that
would ensure the largest possible participation of interested
offices in such a service.

Trademark Grounds of Refusal
9. The SCT discussed document SCT/22/2 which consisted of
submissions about national office practices. The committee focused
on specific cases and examples of refusals submitted by the Members.
Many Members expressed appreciation for the document and indicated
that it is a helpful tool to improve their own office practice and
looked forward to an enhanced paper with additional examples that
could be used for training and education. As Members expressed
interest in supplementing the paper with additional information and
examples, the Chair requested that input be provided by the end of
January 2010, with a revised paper to be considered at the next
Session and ultimately adopted by the Committee and published on the
SCT website soon thereafter.

10. The USDEL inquired how national offices handle applications
containing the term: OBAMA. Many countries indicated they have
existing legislation which would permit refusal of an application
during ex parte examination for a mark that consisted of a person's
name (famous or non-famous) when there is no authorization or
consent from the identified individual. Other members indicated
that an application could only be rejected via an opposition or
cancellation commenced by the identified individual or his/her
agent/representative. These Members conceded that such practice was
not always efficient and they are reviewing how to amend their
trademark laws to allow for refusals during ex parte examination.
(NOTE: USPTO will continue to advance and raise awareness of this
issue through bilateral meetings with foreign trademark officials as
well as provide additional training on the issue to foreign
trademark examiners at USPTO programs).

Certification and Collective Marks
11. The SCT considered document SCT/22/3. As an earlier and almost
identical draft was discussed in detail at the previous session and
with Members attempting to avoid a repeat discussion, discussion was
very limited. A few members made comments indicating their national
systems did not provide for certain formalities as indicated in the
paper. Some members indicated they had yet to provide information
regarding their national practice on the procedural and technical
aspects of certification and collective marks and wanted to do so.
The Chair indicated that Members will have an opportunity to make
additional comments until the end of January 2010, at which time the
Secretariat will revise the current paper and present a revised
paper for consideration by the Committee at the next session.

Questionnaire concerning Official Names of States
--------------------------------------------- ----
12. Discussion focused on document SCT/22/4 which is a draft
questionnaire concerning the protection of official names of States
against registration or use as trademarks. At the previous session
of the Committee, Jamaica had introduced a proposal to reopen the
Paris Convention 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. As there was no support for such proposal within
the SCT but recognizing sensitivities for Jamaica to achieve
progress at the SCT as well as to avoid this issue in other forums,
the Committee agreed to have the IB prepare a questionnaire
soliciting input from delegations as to how trademark applications
containing or consisting of country names would be handled at the
national level.

13. Numerous delegations provided comments to the draft

questionnaire, making suggestions to modify existing questions or to
add new questions. A few delegations raised questions concerning
what constitutes an official name of a State. Jamaica introduced
edits to request information on how non-commercial uses of official
names of States is being handled within national trademark systems.
As there were many proposals for edits, the Chair requested the
Secretariat to revise the existing draft questionnaire, taking into

account the comments of the Committee made at this session. The
revised questionnaire will be posted on the SCT website
intersessionally where members can provide additional comment. The
SCT will review the subsequent questionnaire at the next session
with that expectation that it be adopted and circulated.

14. The Twenty-Third Session of the SCT is scheduled for the week
of April 19 - 23, 2010, in Geneva.


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