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DE RUEHGV #1118/01 3421217
ZNR UUUUU ZZH
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FM USMISSION GENEVA
TO RUEHC/SECSTATE WASHDC 0523
INFO RUCPDOC/DEPT OF COMMERCE WASHINGTON DC

UNCLAS GENEVA 001118 
 
SIPDIS 
 
SECSTATE FOR EEB; COMMERCE FOR USPTO 
 
E.O. 12958: N/A 
TAGS: ECON KIPR WIPO
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 
(USPTO). 
 
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. 
 
GRIFFITHS#