[Gnso-igo-ingo-crp] Article 6ter and Enforcement -- US position

[George Kirikos]

Hi folks,

In doing some research, I found a very interesting and informative
telegram on the US State Department website:

http://www.state.gov/s/l/38648.htm

I think it's important enough to reproduce in full below:

------ start telegram -----------
26. U.S. Mission to the United Nations, Note on the Enforcement of
Obligations under the Paris Convention for the Protection of
Industrial Property (June 2002)

June 07, 2002
NotesTele
UNCLASSIFIED

TELEGRAM

To: USMISSION USUN N Y - PRIORITY

Origin: L

From: SECSTATE WASHDC (STATE 110717 - PRIORITY)

TAGS: OFDP

Captions: None

Subject: UNIFEM"/PARIS CONVENTION REPLY TO CORELL

Ref: None

1. This is an action message. USUN is requested to send the note in
para 2 to the UN Legal Counsel in response to his inquiry regarding
the domain name registration for an INTERNET site.

2. begin text.

The (Mission) (Permanent Representative of) the United States to the
United Nations refers to the December 28, 2001, note from the Legal
Counsel of the United Nations regarding the domain name registration
for an INTERNET site. In the United States' note of February XX, 2002,
the United States indicated that it would explore further with
relevant agencies the obligations of the United States under article
6ter of the Paris Convention for the Protection of Industrial
Property. Having now done so, the United States now provides the
following additional response.

While practice on implementation of article titer appears to be
limited, the commentators on the Convention suggest that Member States
enjoy wide latitude in determining how to implement its requirements.
The United States does not consider that Paris Union Members assumed
obligations under article titer to pursue enforcement actions on
behalf of third parties. In the United States, enforcement of
intellectual property rights in specific cases, including in cases
involving alleged infringement of rights under article 6ter, is a
private matter for the party concerned. In satisfaction of its
obligation under the Convention to prohibit by
Page 1


NotesTele
appropriate measures the use without authorization of emblems,
abbreviations and names of international intergovernmental
organizations communicated through the intermediary of the
International Bureau, World Intellectual Property Organization, the
United States has adopted laws which prohibit unauthorized use of
infringing trademarks.
For example, the Trademark Act of 1946, as amended, 15 U.S.C. u 1051
et seq., offers the possibility for interested parties to challenge
use of marks in commerce based on theories, inter alia, of likelihood
of confusion, false association and unfair competition. These laws
satisfy U.S. obligations under article 6ter by providing the
opportunity for States and international intergovernmental
organizations to pursue remedies for the unauthorized use of names and
other insignia listed in article 6ter, including in cases involving
use on the INTERNET. Responsibility for evaluating potentially
infringing use of trademarks and other intellectual property, and for
taking enforcement action when deemed appropriate, however, rests with
the party whose interests are affected.

Moreover, the United States notes that with respect to international
intergovernmental organizations, obligations under article titer arise
only after receipt of a request for extension of protection through
the International Bureau, in accordance with the procedures in
articles 6ter(3)(b) and
(4). The United States is not aware, at this time, of a notification
under article 6ter with respect to the name or abbreviation "UNIFEM."
Once notified pursuant to article titer, United States authorities
would refuse registration, or invalidate, conflicting trademarks
consistent with the terms of that article, and would be under an
obligation to prohibit by appropriate measures unauthorized use of the
notified emblem, abbreviation and name. But, as noted in the preceding
paragraph, the latter obligation would be met under the laws of
general application that the United States has enacted, and it is the
responsibility of the party claiming than an infringement has occurred
to take action under U.S. law to challenge perceived unlawful use in
commerce.

The United States regrets, therefore, that it is unable to provide the
direct enforcement assistance requested in this matter. end text.
POWELL

Additional Addressees: None
----- end telegram -------------

I believe the most important paragraphs are these ones (with asterisk
highlights):

"For example, the Trademark Act of 1946, as amended, 15 U.S.C. u 1051
et seq., offers the possibility for interested parties to challenge
use of marks in commerce based on theories, inter alia, of likelihood
of confusion, false association and unfair competition. These laws
satisfy U.S. obligations under article 6ter by providing the
opportunity for States and international intergovernmental
organizations to pursue remedies for the unauthorized use of names and
other insignia listed in article 6ter, including in cases involving
use on the INTERNET. ****Responsibility for evaluating potentially
infringing use of trademarks and other intellectual property, and for
taking enforcement action when deemed appropriate, however, rests with
the party whose interests are affected.****"

****But, as noted in the preceding paragraph, the latter obligation
would be met under the laws of general application that the United
States has enacted, and it is the responsibility of the party claiming
than an infringement has occurred to take action under U.S. law to
challenge perceived unlawful use in commerce.****

This informs our discussion, making it very clear that IGOs and states
who claim to have "rights" under Article 6ter still need to enforce
them in real courts, under real laws. That is the "status quo", namely
that they have no special immunity or short-cuts.

I don't believe the prior working group was aware of the above
document (e.g. zero matches in Google for: site:icann.org "USMISSION
USUN").

I believe it would be incorrect, and a departure from established law,
to offer a procedure to IGOs where they'd have immunity, when in the
real world they have no such immunity when taking enforcement
measures. While IGOs might have concerns with the mutual jurisdiction
clause in the UDRP, the same issues arise *at all times* they seek to
enforce Article 6ter rights.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/