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Model Design Law Guidelines



Policy & Advocacy


November 7, 2017

Sponsoring Committee: International Designs Harmonization Subcommittee of the Designs Committee

RESOLUTION:

WHEREAS, the International Trademark Association from time to time needs to analyze and comment on national and regional design laws and regulations; and 

WHEREAS, the Designs Committee has recommended Model Design Law Guidelines to serve as a baseline standard by which INTA could analyze or comment on national and regional design laws and regulations;

BE IT RESOLVED, that the International Trademark Association adopts attached Model Design Law Guidelines to serve as a baseline standard by which INTA could analyze or comment on national and regional design laws and regulations.

BACKGROUND:

As design rights is a relatively new area of intellectual property within INTA’s mission, very few policy positions have been taken by the Association on designs matters prior to the establishment of the Designs Committee in 2016. Up until then, INTA policy was formulated based on the perspective of how designs impact trademark law and practice. The new Committee’s agenda has therefore been ambitious – to try to develop a framework on which INTA would take positions purely on design law and practice without the nexus to trademarks. 

The Association has had Model Trademark Law Guidelines for many years. The proposed Model Design Law Guidelines are based primarily on the Model Trademark Law Guidelines. They attempt to suggest a minimum set of standards for design laws for, for example, a jurisdiction looking at implementing design law for the first time, or a jurisdiction amending its design law.

In addition to the Model Trademark Law Guidelines, the International Designs Harmonization Subcommittee has been assisted by a good number of recent legislative studies and amendments in design law that reflect current design law thinking, including in Singapore, Canada, Australia, Israel and the EU. The Subcommittee also has been influenced by the draft Design Law Treaty currently being negotiated within WIPO’s Standing Committee on Trademarks, Industrial Designs and Geographic Indications.

The Model Design Law Guidelines are aimed at being non-contentious. Accordingly, there are a number of contentious aspects of design law that have purposefully not been addressed (for example, the protection of spare parts) and others that have been addressed neutrally (such as whether an examination or deposit system is to be preferred). It may take some time for the Association to agree to a position on these issues. Rather than waiting to develop a comprehensive set of Guidelines addressing such its, the Subcommittee recommended a more limited interim set of guidelines so that INTA may begin to build a framework for weighing in on design law and practice. 

Impact of Limited Term IP Rights in the U.S. on TM Rights

The Guidelines deal with one issue carried over from the work of the Design Rights Subcommittee of the Related Rights Committee (2014/2015). That Subcommittee drafted a Board resolution titled “Impact of Limited Term Intellectual Property Rights in the U.S. on Trademark Rights.” In short, the resolution proposed that, in relation to the United States, the availability of design patents should not impact on the availability of trademark protection. The Advocacy Group Council requested that the Subcommittee consider including in the resolution jurisdictions outside the United States. However the Subcommittee’s term ended before that could be done. Considering the draft resolution therefore became one of the objectives of the new Designs Committee. 

Rather than a separate resolution with a global slant, this issue has now been included in the proposed Model Design Law Guidelines. This was considered to be neater, and more appropriate, than a separate resolution. Moreover, with the broadening of the Association’s scope, and its new and current focus on design rights per se, it is possible and more appropriate to include the issue in the Model Design Law Guidelines. It has been done in a jurisdictionally neutral way (i.e. not just for the U.S.).


In conclusion, the International Design Harmonization Subcommittee of the Designs Committee recommended that the Board of Directors passed a resolution adopting the Model Design Law Guidelines as currently drafted.