[Gnso-igo-ingo-crp] IGOs

[Paul Keating]

Phil,

I want to add something to George's recent email regarding the need to privately enforce.

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.

This means several things.

1.  Use for non-trademark purposes is not prohibited,
2.  Registration or use of the trademark is prohibited only if it "suggest[s] to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names"; 
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."
4.  "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."
5.  The requirement is "heraldic".  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.

 So, the convention neither creates a right nor precludes registration in absolute terms.  

The operative language is as follows:
> “(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.
> 
> (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.
> 
> (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.
> 
> (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. "
> 


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 Heraldically identical sign for use AS A TRADEMARK.  And, even this blocking right is further limited as noted above (items listed 2-4).

IMPACT ON ANALYSIS.  This impacts,our analysis in several important aspects.

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, (http://www.wipo.int/article6ter/en) 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.

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.

Additional changes to the UDRP may be required as a result of:
   (a)    The absolute limitation of any right when complained of use is not as a trademark;
   (b)    Limitations 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);
   (c)    The Convention' somewhat inconsistent reference to registration OR use as a trademark;
   (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).

And, of course the above does not address the issues of costs and/or immunity.  :(

I attach a link to a very good review of the 6ter issue published in 2005 by the STANDING COMMITTEE ON THE LAW OF TRADEMARKS.  It includes the actual text of the Paris Convention AND the explanatory notes published there with.  See:http://www.wipo.int/edocs/mdocs/sct/en/sct_15/sct_15_3.pdf

Also, I note two added references which I have not been able to obtain thus far (Mary could you assist please).  These are,

1.    Bodenhausen, 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.

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.



Please ignore any typos etc.  I find it difficult to produce anything serious on an IPad.





Regards,

Paul Keating
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