[Gnso-igo-ingo-crp] Relevant language from Article 6ter and the US' Trademark Manual of Examining Procedure

[Mary Wong]

Dear WG members,

Following the discussions on the WG call earlier today, we thought it might
be helpful to reproduce for you the partial text of Article 6ter of the
Paris Convention and the extract from the United States¹ Trademark Manual of
Examining Procedure (TMEP) that were highlighted on the call.

Partial text of Article 6ter:
* 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.
* 1(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.
* 1(c) - Š The countries of the Union shall not be required to apply the
said provisions when the use or registration Š 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.
* 3(b) - Š this Article shall apply only to such armorial bearings, flags,
other emblems, abbreviations, and names, of international intergovernmental
organizations as the latter have communicated to the countries of the Union
through the intermediary of the International Bureau.
* 4 - Any country of the Union may, within a period of twelve months from
the receipt of the notification, transmit its objections, if any, through
the intermediary of the International Bureau, to the country or
international intergovernmental organization concerned.
How one country (here, the USA) deals with IGOs who have communicated their
6ter protections, duly notified by WIPO to all relevant countries, where no
objection was made within the requisite 12-month period; extract from the
USPTO TMEP (S. 1205(2)):
* When the USPTO receives requests for protection under Article 6ter from
the [International Bureau (WIPO], they are assigned serial numbers in the
"89" series code, i.e., serial numbers beginning with the digits "89," and
are sometimes referred to as "non-registrations." The USPTO searches its
records for conflicting marks, but the requests are not subjected to a full
examination by an examining attorney or published for opposition. Copies of
the designations are filed in the paper records of the Trademark Search
Library, and pertinent information is entered in the automated search
records of the Office and should be discovered in an examining attorney's
search.
* The Paris Convention requires that the United States refuse to register
designations that have been deposited pursuant to Article 6ter and to which
the United States has transmitted no objections. Depending on the nature and
use of the mark, §§2(a) and 2(b) of the Trademark Act, 15 U.S.C. §§1052(a)
and 1052(b), may bar registration of these marks. A refusal under §2(d) of
the Trademark Act is not appropriate. The issue is not whether the marks are
confusingly similar, but whether registration of the mark would violate
§§2(a) or 2(b) of the Trademark Act.
* For example, it may be appropriate for the examining attorney to refuse
registration under §2(a) of the Act on the ground that the mark comprises
matter that may falsely suggest a connection with a national symbol of a
member country or an international intergovernmental organization. See TMEP
§1203.03(e). Other §2(a) bases for refusal could also apply. See TMEP §§1203
et seq. It may be appropriate to refuse registration under §2(b) of the Act
if the proposed mark comprises a flag, coat of arms or other similar
insignia. See TMEP §1204. In some instances, it may be appropriate to refuse
registration under §§1, 2 (preamble) and 45 of the Trademark Act, 15 U.S.C.
§§1051, 1052 and 1127, on the ground that the subject matter would not be
perceived as a trademark. (For service mark applications, §3 of the Act, 15
U.S.C. 1053, should also be cited as a basis for refusal.)
Note also that there have been cases in the United States before the
Trademark Trial and Appeals Board (TTAB) concerning attempted registrations
and/or refusals of registrations by the USPTO in respect of some
6ter-protected designations, e.g. flags. The questions raised in these
administrative cases included matters such as the correctness of a USPTO TM
examiner¹s decision on whether to permit the registration of a TM
application that contained state flags and other 6ter-protected emblems that
have (per the TMEP) been recorded by the USPTO.

We hope the above is helpful.

Cheers
Mary

Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names & Numbers (ICANN)
Telephone: +1 603 574 4892
Email: mary.wong at icann.org











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