WIPO to make industrial design registration easier

by Chakravarthi Raghavan

Geneva, 9 June -- A three-week diplomatic conference under the auspices of the World Intellectual Property Organization to forge a treaty to enlarge the geographical scope of the Hague System of international registration and protection of industrial designs begins here on 16 June.

The present membership of the Hague Union (countries that are parties to the 1934 Agreement for protection of industrial designs and the 1960 agreement for an international registration system) has only 29 members.

Many of the major countries, including the United States, the United Kingdom, Canada and Japan are not members. Except for Indonesia in Asia and Surinam in Latin America, other Asians and Latin Americans and Caribbean nations are not members.

Industrial designs are features concerning the look of an article -- for example, shape, ornamentation, pattern, configuration etc.

They are different from designs relating to functional utility of products -such as improvements in a machinery. In some countries these are protected as "utility models", but are essentially minor innovations.

The TRIPS Agreement of the World Trade Organization does not cover "utility models". But it requires protection for industrial designs, and members are to provide protection for a minimum period of ten years for industrial designs that are "new or original".

For industrial designs, the conditions to be satisfied to get protection are that they should be "independently created and should be new or original. Countries could provide against protection, on the ground of lack of novelty or originality if the design does not significantly differ from known designs.

The TRIPS also requires that in the industrial designs for textiles, the costs (in terms of fees etc) and examination or protection should not unreasonably impair the opportunity to get protection.

The new WIPO act would increase the scope and level of protection, providing for example for at least a minimum 15 years of protection.

Once protected, the owner is able to prevent unauthorized copying or imitation of the design by third parties. It adds to the commercial value of a product and facilitate its marketing, and secure a "fair return" on the investment.

While these help transnational trade in consumer products, a WIPO press release said that since such designs are relatively simple and inexpensive to develop and protect, they are reasonably accessible to small and medium enterprises, and even to individual artists and craftsmen of both industrial and developing countries.

"The system will not only benefit the industrialized nations, but also developing nations," a WIPO official said.

Under the Hague system as many as 100 designs could be included in a single international application. In 1998, WIPO registered about 4000 international deposits, each covering some 11 countries - or the equivalent of about 45,000 national applications protecting some 19,000 designs.

The draft articles before the diplomatic conference have been drawn up after several years of expert level meetings at the WIPO.

WIPO officials said that the new treaty to be negotiated would update the over sixty pears old original treaty, and the 40-year old Hague Act, and benefit trade and industry.

They also argued that it would not merely benefit the Transnational Corporations from industrial countries to get a one-stop protection to enter other markets and compete through advertising and other promotion of their particular product using the designs. It would also help developing country enterprises that want to export and compete, they argued.

The treaty would enable an applicant for industrial design protection to file an application with the WIPO and, subject to some rules and regulations, get protection for the design in the countries that will join the new treaty.

The proposed WIPO central registry system will only scrutinise the requests from procedural points of view, and not for example whether the designs are "new" or "original".

This task, and refusal to give protection on the ground of the design not being new or not being original will vest with the authorities of those countries whose system provide for this.

The WIPO secretariat which will receive applications and, after checking the procedural requirements, will give registration in all member countries, subject to Contracting Parties, particularly those where the national system requires verification and/or ability of others to object, doing so and notifying the WIPO within a maximum one year period.

The onus thus would be on the member-country raising objections and notifying the WIPO (thus blocking registration in the country, but not elsewhere).

One of the problems coming up in this area of industrial design has been of corporations in industrial countries -in textiles or clothing designs or in other areas - evolving "new designs" based on existing folk lore or art in particular countries, registering them as industrial designs and prevent imports or competition.

Asked how the system would deal with the problem of corporations in the North "appropriating" folk art and indigenous art designs, or even designs from ancient cultural artifacts, and registering them as industrial designs and thus monopolise markets, the WIPO officials said that it was for each country to assess the claim and within the period stipulated and refuse to register, or under another provision revoke the registration.

Country 'A', for example, refusing to register or revoke protection, could only prevent such "appropriation" and monopoly rights within its own jurisdiction, but would be unable to do so in other jurisdictions, where exports from A could be hit on the basis of "piracy" of the registered design.

However, as in the case of patents for pharmaceutical based on traditional medicine and community knowledge, while a country where such traditional or community knowledge is viewed as the state of the art (and thus not patentable) or already in public domain, there is nothing to prevent authorities in other countries allowing it. (SUNS4452)

The above article first appeared in the South-North Development Monitor (SUNS) of which Chakravarthi Raghavan is the Chief Editor.

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