<div dir="ltr">Paul,<div><br></div><div>Thanks for raising these many excellent points that get to the heart of the challenge facing this WG.</div><div><br></div><div>Until you offered the example of "OlympicPeninsulaCampingSites.com", it had not occurred to me that there is no clearly defined group of domains that would be subject to any new IGO CRP. The key factor as to whether an IGO CRP would be applicable is not the nature of the domain name, but simply whether the Complaint was brought by an IGO.</div><div><br></div><div>This raises its own set of questions and problems. Assuming a new IGO CRP is adopted, a domain such as "OlympicBurgers.com" could be subject to the IGO CRP if the complaint was brought by the IOC, but would also be subject to the UDRP if the Complaint were brought by a burger restaurant named "Olympic Burgers". If an IGO CRP is adopted, would IGOs be required to use the IGO CRP, or would they have the option of applying to the standard UDRP if they wished? Would this create an opportunity for forum shopping where IGOs could choose whichever CRP was most in their favor?</div><div><br></div><div>We could therefore have the possibility of one domain being subjected to multiple CRPs with conflicting standards, and also the possibility of IGOs have a range of CRP options in targeting a particular domain. </div><div><br></div><div>Based on your discussion of Article 6ter, it appears that it grants to holders of symbols and emblems a "negative right" rather than an "affirmative ownership right". In other words, it grants a right to prevent others from using a similar symbol or emblem in a confusing fashion rather than granting to the user of the symbol or emblem any affirmative ownership right to that symbol or emblem.</div><div><br></div><div>Is there any discussion in Article 6ter as to whether the rights granted therein can be transferred or sold? Trademark rights can be sold and assigned. If an entity covered by Article 6ter ceases using a symbol or emblem, can the protections be transferred to another entity?</div><div><br></div><div>I've read that trademarks are intended primarily to benefit consumers, rather than the company that owns the trademark, as the goal is to prevent consumer confusion. It appears that the purpose of the Article 6ter protections are similar.</div><div><br></div><div>As Paul has raised, could Article 6ter protections be treated as common law trademark rights under the UDRP? It appears that the goals of Article 6ter, trademark protections, and the UDRP are all primarily to prevent consumer confusion. Given these similarities, wouldn't the Article 6ter protections fit under the concept of common law trademarks?</div><div><br></div><div>If Article 6ter protections are not equivalent to common law trademarks, then again as Paul has raised, what rights do they grant to IGOs beyond a commitment among the signatories to prevent confusingly similar uses? </div><div><br></div><div>How would an IGO CRM look any different from the UDRP, and how would the analysis be different?</div><div><br></div><div><br></div><div>Another wrinkle is that there is not necessarily consistency across those countries that are signatories of Article 6ter as to which signs and emblems deserve protection-</div><div><br></div><div>"29. Article 6ter does not provide for a procedure for resolving differences of opinion as to objections to emblems or signs communicated under that Article. To settle disputes between States, recourse may be had to the procedures on disputes contained in Article 28 of the Paris Convention, if the provision is applicable between the States involved.</div><div><br></div><div>30. As long as the objection stands, the State which raised the objection is not obliged to protect the affected emblems or signs."</div><div><br></div><div>How would an IGO CRP address the lack of uniform protections across signatories?</div><div><br></div><div><br></div><div>The Red Cross (and I expect the IOC) are specifically excluded from coverage by Article 6ter as they are protected elsewhere-</div><div><br></div><div><div>"However, signs of this kind are excluded from the scope of the provision if they are already the subject of international agreements in force which are intended to ensure their protection."</div><div><br></div></div><div>"See, for instance, Article 44 of the Geneva Convention for the amelioration of the condition of the wounded and sick in armed forces, of August 12, 1949. This provision protects the emblems of the Red Cross on a white ground, the words “Red Cross” or “Geneva Cross” and analogous emblems."</div><div><br></div><div>Regards,</div><div><br></div><div>Nat</div><div><br></div><div class="gmail_extra"><br><div class="gmail_quote">On Thu, Nov 6, 2014 at 6:14 AM, Paul Keating <span dir="ltr"><<a href="mailto:paul@law.es" target="_blank">paul@law.es</a>></span> wrote:<br><blockquote class="gmail_quote" style="margin:0 0 0 .8ex;border-left:1px #ccc solid;padding-left:1ex"><div dir="auto"><div><span></span></div><div><div><span></span></div><div><div><span></span></div><div><div><span></span></div><div><div><span></span></div><div><div><span></span></div><div><div><span></span></div><div><span>Phil,</span><br><span></span><br>I want to add something to George's recent email regarding the need to privately enforce.</div><div><br><span>I believe there may be a common misconception in the WG that the names etc of IGOS are trademarks just because they are referenced in the Paris Convention. This is not the case. 6ter of the Convention does not create TM rights. Rather the Paris Convention merely provides that members will not allow registration or use of identical symbols by others for use AS TRADEMARKS. Art 6ter was subsequently expanded to apply to and benefit all WTO members.</span><br><span></span><br><span>This means several things.</span><br><span></span><br><span>1. Use for non-trademark purposes is not prohibited,</span><br><span>2. Registration or use of the trademark is prohibited only if it "</span><span style="background-color:rgba(255,255,255,0)">suggest[s] to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names"; </span></div><div><span style="background-color:rgba(255,255,255,0)">3. Registration or use of the trademark is allowed if it "is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization."</span><br>4. "<span style="background-color:rgba(255,255,255,0)">Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind."</span></div><div>5. The requirement is "heraldic". <span style="font-family:Times;font-size:12pt">As State emblems frequently comprise common symbols, such as a lion, an
eagle or the sun, imitations are forbidden only if they reproduce the heraldic characteristics of
the State sign concerned. In consequence, the symbol as such remains free and may be used in the composition of trademarks.</span></div><div><span style="font-family:Times;font-size:12pt"><br></span></div><div><span style="font-family:Times;font-size:12pt"> So, the convention neither creates a right nor precludes registration in absolute terms. </span></div><div><span style="font-family:Times;font-size:12pt"><br></span></div><div>The operative language is as follows:<br>
<div title="Page 17">
<div>
<div>
<p></p><div><p></p><blockquote type="cite"><p><span style="font-size:12.000000pt;font-family:'Times'">“(1) (a) The countries of the Union agree to refuse or to invalidate the registration,
and to prohibit by appropriate measures the use, without authorization by the competent
authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and
other State emblems, of the countries of the Union, official signs and hallmarks indicating
control and warranty adopted by them, and any imitation from a heraldic point of view.
</span></p>
<p><span style="font-size:12.000000pt;font-family:'Times'">(b) The provisions of subparagraph (a), above, shall apply equally to armorial
bearings, flags, other emblems, abbreviations, and names, of international intergovernmental
organizations of which one or more countries of the Union are members, with the exception
of armorial bearings, flags, other emblems, abbreviations, and names, that are already the
subject of international agreements in force, intended to ensure their protection.
</span></p>
<p><span style="font-size:12.000000pt;font-family:'Times'">(c) No country of the Union shall be required to apply the provisions of
subparagraph (b), above, to the prejudice of the owners of rights acquired in good faith before
the entry into force, in that country, of this Convention. The countries of the Union shall not
be required to apply the said provisions when the use or registration referred to in
subparagraph (a), above, is not of such a nature as to suggest to the public that a connection
exists between the organization concerned and the armorial bearings, flags, emblems,
abbreviations, and names, or if such use or registration is probably not of such a nature as to
mislead the public as to the existence of a connection between the user and the organization.
</span></p>
<p><span style="font-size:12.000000pt;font-family:'Times'">(2) Prohibition of the use of official signs and hallmarks indicating control and
warranty shall apply solely in cases where the marks in which they are incorporated are
intended to be used on goods of the same or a similar kind. "</span></p></blockquote></div>
</div>
</div>
</div><div><span><br></span></div><div>In looking at the language (and the relevant language of 15 USC 1152), it thus does not appear that IGO names, etc are in fact provided the status of trademarks. Rather, any "right" is limited to a right to prevent any person from registering a <u><b><i>Heraldically identical</i></b></u> sign for use <b><u><i>AS A TRADEMARK</i></u></b>. And, even this blocking right is further limited as noted above (items listed 2-4).</div><div><span><br></span></div><div>IMPACT ON ANALYSIS. This impacts,our analysis in several important aspects.</div><div><br></div><div>Standing. For those IGOs that have no trademark registration (in any country), the absence of registration rights means that standing under current CRPs requires establishment of common law trademark rights. Although the Paris Convention established a centralized Database of covered symbols etc, (<span style="font-family:Times;font-size:12pt"><a href="http://www.wipo.int/article6ter/en" target="_blank">http://www.wipo.int/article6ter/en</a></span>) It is clear that registration with the "international bureau" does not create rights. This is evident in the objection process which allows any state to simply object to a proposed name/symbol but does not require resolution of the objection. There have in fact been objections in the past to both state and IGO communications.</div><div><br></div><div>If the common law approach is felt to be insufficient, the only way I see around the issue would be to either amend the UDRP (and each NewgTLD policy) to include State and IGO names/symbols appearing in the WIPO database as "trademarks" under the 1st Element f the Policy, or create an entirely new CRP system.</div><div><br></div><div>Additional changes to the UDRP may be required as a result of:</div><div> (a) The absolute limitation of any right when complained of use is not as a trademark;</div><div> (b) <span style="background-color:rgba(255,255,255,0)"> L</span>imitations on the blocking right which go beyond or are arguably different from the language of the Policy relative to legitimate rights and bad faith (non TM use and no confusion);</div><div> (c) <span style="background-color:rgba(255,255,255,0)"> The Convention' somewhat inconsistent reference to registration OR use as a trademark;</span></div><div> (d) The absolute limitation of any restriction to prospective application only (meaning no enforcement as against marks that pre-dated the particular State or IGO name or symbol).</div><div><br></div><div>And, of course the above does not address the issues of costs and/or immunity. :(</div><div><br></div><div>I attach a link to a very good review of the 6ter issue published in 2005 by the <span style="font-family:Helvetica;font-size:15pt;font-weight:700">STANDING COMMITTEE ON THE LAW OF TRADEMARKS. </span><span style="font-family:Helvetica;font-size:15pt"> It includes the actual text of the Paris Convention AND the explanatory notes published there with.<b> See:</b></span><a href="http://www.wipo.int/edocs/mdocs/sct/en/sct_15/sct_15_3.pdf" target="_blank">http://www.wipo.int/edocs/mdocs/sct/en/sct_15/sct_15_3.pdf</a></div><br>Also, I note two added references which I have not been able to obtain thus far (Mary could you assist please). These are,</div><div><span style="font-family:Times;font-size:11pt"><br></span></div><div><p><span style="background-color:rgba(255,255,255,0)">1. </span><span style="background-color:rgba(255,255,255,0)"> Bodenhausen</span><span style="font-family:Times;font-size:11pt">, Guide to the Application of the
Paris Convention for the Protection of Industrial Property, WIPO Publication No. 611, WIPO,
Geneva, 2004, pp. 94-103 - a detailed legal analysis to Article 6ter.</span></p></div><div><div title="Page 15"><div><div>
<p><span style="font-size:11.000000pt;font-family:'Times'">2. Document P/A/XIX/4, Report adopted by the Assembly of the Paris Union which appears to be a 1992 memorandum outlining the basic requirements that each 6ter symbol/name must meet to qualify.</span></p><p><span style="font-size:11.000000pt;font-family:'Times'"><br></span></p><p><span style="font-size:11.000000pt;font-family:'Times'">Please ignore any typos etc. I find it difficult to produce anything serious on an IPad.</span></p></div></div></div></div><div></div></div><div></div></div><div></div></div><div></div></div><div></div></div><div></div></div><div></div></div><br><div dir="auto"><div></div><div><div></div><div><div></div><div><div></div><div><div></div><div><div></div><div><div></div><div><span></span><br><span></span><br><span></span><br><span>Regards,</span><br><span></span><br><span>Paul Keating</span></div></div></div></div></div></div></div></div><br>_______________________________________________<br>
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