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

[Phil Corwin]

George:

Apologies for not replying much sooner, and many thanks for unearthing this important document (and Mary, can we make sure that this is added to our collection of base documents?).

So it was and presumably still is the position of the US that for Article 6ter rights held by "States and international intergovernmental organizations" in regard to an alleged violation in the US should be pursued via private lawsuit in US courts. 

The memo also says " the commentators on the Convention suggest that Member States enjoy wide latitude in determining how to implement its requirements" -- do we know how other countries have dealt with protection of article 6ter rights? If the US position has been adopted in other jurisdictions it would certainly tend to undermine the claim that providing access to a UDRP/URS with an appeals process involving a court of jurisdiction raises a valid immunity issue.

I note also the reference that ", 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)" -- who operates this International Bureau, how many IGOs have registered in it, and what accompanying data must they file?

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-----Original Message-----
From: gnso-igo-ingo-crp-bounces at icann.org [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of George Kirikos
Sent: Wednesday, November 05, 2014 6:57 PM
To: gnso-igo-ingo-crp at icann.org
Subject: [Gnso-igo-ingo-crp] Article 6ter and Enforcement -- US position

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/
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