Global adoption of new IP treaties, guidelines, and rules
Design Law Treaty
November 22, 2024 saw the adoption of the Riyadh Design Law Treaty (DLT) by the member states of the World Intellectual Property Organization (WIPO).
The Treaty was developed and implemented to simplify and streamline the process of registering industrial design rights across member states of the WIPO. In particular, it is set to benefit a range of applicants, with an emphasis on individuals, and micro, small, and medium-sized enterprises who wish to expand their operations to cover multiple jurisdictions.
With the process for applying for and registering industrial design rights varying extensively from country to country, the DLT is set to help applicants apply for design rights in several countries simultaneously, ensuring that the procedures for design protection are more predictable, affordable, and less complex than filing in multiple jurisdictions separately.
In order to achieve its aims, the DLT has implemented multiple elements pertaining to a new industrial design application process, including allowing applicants to submit multiple drawings in a single application in certain circumstances, setting a maximum list of indications or elements that can be included in a design application, and allowing applicants to represent their design by way of drawings, photographs, or in some instances, video files.
Further procedures that have been established by the Treaty include the introduction of 12 month grace period from the initial disclosure of the design, which will ensure that any disclosure within the grace period will not affect the novelty of the design. Moreover, applicants will be able to keep an industrial design unpublished for at least 6 months following the obtaining of a filing date when filed by way of the Riyadh Treaty.
With the Hague System for industrial design co-existing with the new Treaty, it is uncertain how the landscape will change for international registration of designs going forward, particularly as some elements of the respective treaties may conflict with one another. One example of such conflict lies within the fact that the Riyadh Treaty is set to create restoration provisions in instances whereby the six-month priority term is exceeded, whereas the 1999 Geneva Act of the Hague Design system does not expressly allow for such restoration provisions.
The Riyadh Design Law Treaty will enter into force 3 months after at least 15 Member States or intergovernmental organizations ratify the same. Despite potential conflicts with the Hague System, the implementation of a new system for international design registration is set to benefit a wide range of applicants across the WIPO.
Costa Rica
The end of last year marked a landmark agreement between Costa Rica and the European Patent Office (EPO), signed on December 13, 2024.
As per the signing of the Validation Agreement, Costa Rica marks the first Central American country to allow for the validation of European patents within its jurisdiction. Costa Rica also marks the seventh country to have signed a validation agreement with the EPO, following Morocco, Moldova, Tunisia, Cambodia, Georgia, and Laos.
European Patent Validation (EP Validation) is the overall process through which an EP can be converted into a national patent within the Member States of the European Patent Convention. Once an EP has been validated in a designated State, the patent will have legal effect in that jurisdiction as if it had been filed in that country initially.
Once the Validation Agreement is enforced, European patents validated in Costa Rica will therefore have the same effect as a national patent registered in Costa Rica, and be subject to the same legal conditions.
The signing of the Validation Agreement marks a pivotal agreement for the EPO and Costa Rica, which is hoped to strengthen international collaboration and help to streamline access to the Costa Rican market for European patent holders. This, in turn, is set to further encourage industry and technology trade, alongside foreign investment.
Brazil
On November 27, 2024, a new set of rules for the registration of trademarks including advertising elements was published with respect to Brazil, following a meeting at the Brazilian Patent and Trademark Office (BPTO). As per the implementation of the amended rules, the BPTO now accepts trademark applications for marks that include advertising elements, such as slogans and the like, so long as they comply with the guidelines.
The allowance of registrations for trademarks containing advertising elements in Brazil signifies a less restrictive approach compared to the previous system.
The previous legislation and trademark guidelines provided for a stricter application of the Brazilian IP law, which prohibited the registration of marks that were intended to be used for advertising purposes. A sign was deemed to have been designed for advertising purposes when the mark consisted of either statements recommending a product or service; adjectives or expressions highlighting a product or service; or phrases and expressions aimed at attracting consumer attention.
The changes in rules to the Brazilian trademark legislation have been heavily influenced by those contained within the Paris Convention, allowing flexibility when it comes to the types of marks allowed for registration.
The new guidelines also provide for a new definition of what constitutes an “advertising function” as to trademarks. As such, a sign will be considered to be an advertising mark if it does any of the following:
- Recommends products/services;
- Promotes qualities of products/services;
- Conveys the company's mission and values;
- Persuades the audience to take action; or
- Differentiates the product/service from competitors.
This now means trademarks composed of both distinctive elements and advertising elements, or those capable of simultaneously serving as both a distinctive and an advertising function, may be registered. Slogans that lack a minimum level of novelty, or advertising expressions that are common-place in the market, remain prohibited from being registered as trademarks.
The update to Brazilian trademark law marks a significant advancement in the jurisdiction which is set to assist applicants across the jurisdiction and those wishing to obtain rights within Brazil. With the allowance of advertising elements in trademark registration, Brazil has joined the majority of countries that have ceased to prohibit slogans with advertising elements.