[Gnso-igo-ingo-crp] IGOs

Thu Nov 6 15:08:26 UTC 2014

Paul,

Thanks for raising these many excellent points that get to the heart of the
challenge facing this WG.

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.

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?

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.

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.

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?

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.

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?

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?

How would an IGO CRM look any different from the UDRP, and how would the
analysis be different?

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-

"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.

30. As long as the objection stands, the State which raised the objection
is not obliged to protect the affected emblems or signs."

How would an IGO CRP address the lack of uniform protections across
signatories?

The Red Cross (and I expect the IOC) are specifically excluded from
coverage by Article 6ter as they are protected elsewhere-

"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."

"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."

Regards,

Nat

On Thu, Nov 6, 2014 at 6:14 AM, Paul Keating <paul at law.es> wrote:

> 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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