By Marcus Höpperger, Senior Director, Brands and Designs Sector, WIPO, Marie-Paule Rizo, Head, Policy and Legislative Advice Section, WIPO, and Marina Foschi, Senior Legal Officer, WIPO
In November, WIPO member states, intergovernmental organizations and observers will meet in Riyadh, Saudi Arabia, to finalize and adopt a new design law treaty (DLT) set to facilitate design protection throughout the world.
In 2022, the WIPO General Assembly decided to convene a diplomatic conference to conclude negotiations on the DLT, which has been years in the making . But what is design? And what difference is the treaty expected to make to designers?
Design encompasses many fields, from furniture, fashion and packaging design to product, software and automotive design. At its most basic, design dictates an object’s look and feel. It is all around us, in the clothes we wear, the chair we sit on and the app we use to check the weather. Design also plays a key role in the market success of products – we buy things not only because we need them but also because we like their design.
The objective of the treaty is to make it easier for designers to protect their works around the globe and thereby make a more secure living.
Securing IP protection is key
Businesses invest time and money in design R&D because they know that design can influence consumers and give them a competitive edge in the marketplace. When not protected by IP rights, however, those investments may be for naught. Without protection, a design can be copied by free riders as soon as it is launched. That limits its creator’s competitive advantage and the design’s unique appeal to consumers. Securing IP protection is, therefore, a key step in any creative process, as it provides exclusive rights and makes available legal remedies to prevent others from copying and commercially exploiting designs without permission.
Business understands this. Statistics published by WIPO based on global data reveal that industrial design applications worldwide totaled 1.1 million in 2022 and showed a near-steady increase of designs contained therein between 2008 and 2022.
Protection procedures: a maze?
The process for protecting designs can seem like a maze and the hurdles today are twofold.
First, the means of protecting design vary from one country to another. In some countries, designs must be filed as “registered designs”. Registration systems may involve the examination of design applications by the IP office, and what that involves varies from country to country. In other jurisdictions, designs are protected under patent law as “design patents”, which are usually only granted after a thorough examination of the design application by the IP office.
Second, and regardless of whether protection is obtained via registration or through the grant of a design patent, designers generally must follow the filing procedures set by the IP office of the country in which they are seeking protection. Because design rights are territorial and thus limited to the country or region in which protection was obtained, designers must go through the same process in each country or region where they wish to protect their designs.
All of this makes it difficult and cumbersome for designers to protect their designs in multiple jurisdictions.
DLT to the rescue
The DLT, if adopted, will simplify and streamline protection procedures and eliminate red tape. This will help to make the framework for design protection procedures more predictable and make the procedures themselves less complex and more affordable. It will be easier for designers to file applications in several different jurisdictions.
What the treaty will do
- set a maximum list of indications or elements that designers must submit with an application. Establishing a closed list of elements will help to create a predictable framework for design protection procedures: designers wishing to file an application will know exactly what indications or elements may be required.
- allow applicants to choose how they represent the design in an application (drawings, photographs or, if admitted by the IP office, video).
- allow applicants to include several designs in a single application, under certain conditions.
- set out requirements for the granting of a filing date. Keeping the list of filing-date requirements for design applications to a minimum is crucial because, in the field of design, postponing the filing date can result in a definitive loss of rights.
- provide for a grace period of six or 12 months following a first disclosure of the design, during which such disclosure will not affect its novelty.
- allow applicants to keep their designs unpublished for at least six months after having secured a filing date.
- provide relief measures and offer some flexibility to applicants to prevent them from losing their rights if they miss a deadline. Without such measures, missing a time limit generally results in a loss of rights. In the case of designs, that loss is irreparable.
- simplify the procedure for requesting the renewal of a design registration.
The journey to the Diplomatic Conference
The goal of the Diplomatic Conference is to complete a journey that began in 2005, when, at its 15th session, the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) agreed to start working on design registration procedures.
Over the years, the Committee has scrutinized those procedures, which lie at the core of the treaty, and other related issues. It has also worked to ensure that the draft treaty’s provisions comply with the WIPO Development Agenda Recommendations, adopted by the WIPO General Assembly in 2007 to put development considerations at the heart of the Organization’s work.
The process leading up to the Diplomatic Conference has been inclusive, taking into account the different levels of development, interests and priorities of WIPO member states, and the viewpoints of other stakeholders. In its work on the draft treaty, the Committee has also taken into account the need for flexibility in international IP agreements, especially those of interest to developing and least-developed countries.
The Committee has had years to fine tune the draft articles of the treaty and the related draft regulations, which were prepared by the secretariat in addition to other documents, including a questionnaire on design formalities and procedures and a study of the potential impact of the Committee’s work. However, discussions on two outstanding issues had prevented agreement on convening a diplomatic conference until the breakthrough decision made in 2022.
The first issue concerns technical assistance and capacity-building. Several proposals in that regard were made as early as 2012 and 2013 by the African Group, the Delegation of the European Union, on behalf of the European Union and its member states, and the Delegation of the Republic of Korea. All delegations agree on the importance of such assistance for implementing the treaty. However, whether it should be enshrined in an article of the treaty or be addressed in a specific resolution will only be decided at the Diplomatic Conference.
The second issue relates to a proposal made in November 2015 by the African Group. To prevent the misappropriation of traditional designs, the African Group proposed including in Article 3(1)(a) of the draft treaty – which sets a maximum list of indications or elements to be included in a design application – a non-mandatory requirement to disclose the origin or source of traditional cultural expressions, traditional knowledge or biological/genetic resources used in or incorporated into the industrial design. Some delegations, however, did not support the proposal. In 2019, Ambassador Socorro Flores Liera from Mexico, acting as a facilitator for negotiations, proposed a compromise provision, which will also be discussed at the Diplomatic Conference.
It is now incumbent on the participants in the Diplomatic Conference to find agreement on the remaining unresolved issues and to adopt this new treaty, which would facilitate global design protection and constitute a breakthrough that has been many years in the making.
The Diplomatic Conference to Conclude and Adopt a Design Law Treaty takes place from 11 to 22 November 2024. Further information and all meeting documents are available on the WIPO website.
Any views expressed are those of the authors alone and do not necessarily reflect the views of WIPO or its member states.
