[Guest post] An insight into international law-making: Third Special session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications of WIPO

Between 2 and 6 October 2023, delegates of 104 Member States, 6 IGOs and 17 NGOs convened at the World Intellectual Property Organization (WIPO) in Geneva to finalize the drafting of the long-awaited Design Law Treaty (DLT). They constitute the “SCT”, referring to the Committee covering design law issues within WIPO.

Among the participating NGOs was ELSA International, an association of law students and young practitioners from all over the world. The author of this article was given the opportunity to represent ELSA at the event, and is happy to report about it.

Suitably styled to attend the Diplomatic Conference

The DLT has been a long time coming. Already in 2016, the SCT drafted the document that would constitute the basis of the negotiations. Intended to be tweaked and transposed into a final draft by the same committee, the agreement would (as any WIPO Treaty) have to be found and adopted by a ‘Diplomatic Conference’.

Initially, the Diplomatic Conference to adopt the DLT was scheduled to take place in 2017. This proved too optimistic, however. Especially the following remain the subject of complex negotiations until today:

• Should a national office be allowed to oblige applicants to disclose if the design makes use of traditional knowledge, traditional cultural expressions or genetic resources? (Article 3)
• Is it part of the WIPO mandate to provide technical/financial assistance to Developing Countries and Least-Developed Countries? If so, what should that entail? (Article 22)
• The length of the minimum period for keeping the design unpublished (Rule 6)

Inclusion of the traditional knowledge-requirement was proposed in 2015 by the African Group of Member States. Last week, the SCT had yet to negotiate about whether to allow national IP offices to require disclosure of any use of traditionally developed value.

The Western countries where reluctant to include such a provision, while other countries (e.g., India, Iran, Venezuela and Thailand) expressed their support for the African Group’s request.

Proponents would perceive an international design law-system without safeguards for indigenous communities as keeping up a standard of “willful blindness”, reaffirming age-old injustices against tradition-rich native peoples and continue their systemic neglect.

The opposing part of the Committee feared that a clause as the one proposed would curtail the purpose of the DLT, namely, to streamline and simplify the processes of filing for design rights across Member States. Requiring designers to disclose information about any matter in their design entailing traditional knowledge would give rise to legal uncertainty and unpredictability, at least since they may not even be aware of it themselves. This would precisely go against the DLT purpose, creating unnecessary burdens instead of minimizing them. Also, the question remains what relevance the information at issue would have in the examination process.

Similar parallels underpinned the debate on technical assistance: many countries that defended the need to protect indigenous communities also happened to be developing countries. Naturally, they hold strong interests in assistance with setting up the harmonized DLT-system.

The Treaty would indeed probably require some advanced technical infrastructure, e.g., to connect to the global design database, to use Model International Forms or for electronic priority document exchange. Again, the group defending a strong technical assistance-provision viewed the issue from a mainly principal perspective. They consider it crucial to see willingness of the Committee to meet the needs of (L)DC’s. Without technical support, these could essentially be excluded from meaningful participation in the UN-framework.

Countries not sharing these same interests again reasoned from a more functional and structural point of view. Importantly: to what extent is the Committee actually meant to impose obligations regarding such assistance onto WIPO? It was further stressed that, should the provision be included, the practical execution must be well-defined and thought through. Along these lines: how should the expenses be divided (should WIPO bear them all?).

Before the beginning of the SCT, the text of Rule 6 provided for a minimum period of 6 months from the filing date or from the priority date, in which the design should be kept unpublished.

Such period of non-publication is meant to protect the applicant against imitation by a third party (and therefore, loss of “novelty”) in case the applicant needs some time before making a subsequent application. It should allow designers to control the timing of publication of their designs, in line with their broader design strategy-goals.

JTA, a Japanese independent IP-attorneys association, stressed that creators (especially SMEs) are statistically reluctant to act in countries where the designs could be published before they want to release their product onto the market.

As the initial text of Rule 6 would not have prevented this situation, the Japanese delegation proposed to eliminate the part “or from the priority date”. This would ensure the 6 month-period to always be calculated from the filing date. The proposal included illustrations to clarify the reasoning behind this:

The Committee generally agreed with Japan’s reasoning. Nonetheless, full consensus was not reached on this point yet since some countries preferred more flexibility instead of a fixed rule (e.g. China and Brazil).

It was extraordinarily interesting to witness the SCT in action. No doubt, my fellow ELSA delegates (An, Martina, Niklas, Doriana) will agree.

Great respect goes out to the experts representing their nations who, year by year, keep putting in the effort to conclude a DLT. Despite their often seemingly incompatible jurisdictions, legal infrastructures and overall (sometimes political) interests, in the end all parties are driven by a common aim to improve the global IP law system.

The purposeful character of the Committee is indeed noteworthy. Sure, there are recurring methodical rules and practices and a proposed agenda. But when it is, along the way, considered more conducive to the common goal to handle a certain topic at another moment or in another fashion, the Committee is willing to adjust.

Despite the hard work, some gaps remain and full consensus is yet to be achieved. So it is up to the Diplomatic Conference to bring certainty and closure. After that, the DLT will be a reality.