TWN Info Service on Intellectual Property Issues (Mar14/08)
25 March 2014
Third World Network

WIPO: Mixed views over protection of country names in trademarks
Published in SUNS #7769 dated 24 March 2014

Geneva, 21 Mar (Alexandra Bhattacharya) -- A proposal to protect country names in the area of trademarks received mixed views among Member States of the World Intellectual Property Organisation (WIPO).

The 31st session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is meeting here on 17-21 March.

On its third day, the SCT tackled the topic of trademarks with divergent views on the Jamaican proposal (SCT/31/5) on the registration and use of trademarks containing country names.

The Jamaican proposal, which is in the form of a draft joint recommendation consisting of ten articles, aims to guide trademark examination manuals at the national and regional level, in order to promote consistent and comprehensive treatment on the protection of country names.

In particular, the draft joint recommendation aims to protect against the registration of country names that are done in bad faith and also against conflicting marks, business identifiers and domain names.

The interventions on the Jamaican proposal did not see a clear North/South divide, with a number of countries supporting the proposal, whilst others also calling for some textual revisions.

A number of countries (the US, Norway and South Africa) stated that they were not in a position to support the proposal.

[The genesis of the discussion on the protection of country names in the context of trademarks goes back to 10 sessions of the SCT where following a proposal made by the Delegation of Jamaica (SCT/21/6), the SCT decided to prepare a draft questionnaire concerning the protection of official names of States against registration or use as trademarks. Since then, the SCT has engaged with a number of reference documents and studies (SCT/24/2, SCT/24/6, SCT/30/4) prepared by the Secretariat which aimed to provide an overview of the law and practice of Member States with regard to the protection of country names against registration and use as trademarks.]

Jamaica, in introducing its proposal, said that the aim of the draft joint recommendation was to encourage the consistent and comprehensive treatment of country names in the context of trademarks. It added that this recommendation was not meant to prescribe rules or to impose additional obligations but to encourage a coherent and consistent framework and collective approach to registration of trademarks which contain or consist of country names.

Monaco said the Jamaican proposal was "extremely interesting" and it should be discussed. It added that it had specific comments on the articles but would engage on this "bilaterally".

Switzerland said that the proposal was an excellent basis to continue in a specific and substantive way on the issue. It said that the Jamaican proposal offered an opportunity to pass from theory to identify specific concrete measures which could be taken to implement regional/national and legal or administrative measures to protect country names.

The European Union said that it understood the importance of this issue but also thought it was important to examine the current uses of country names in the registration of trademarks to ensure that it would not upset business practice where the use of country names has become generic. It also stressed the importance of awareness-building activities in this area.

Trinidad and Tobago confirmed its support for the Jamaican proposal, noting the need for a more coherent and consistent framework for the protection of country names. It also said that the joint recommendation could be a reference guide and best practice for the protection of country names.

The Jamaican submission was also welcomed by Guatemala, El Salvador, Turkey, Colombia, Senegal and Hungary.

Japan said that for the discussion going forward, it was necessary to bear in mind the need to protect country names in a careful manner including the consideration of the possible impact on economic activities.

Italy supported the idea of adopting the joint recommendation, also noting that further work was needed to improve the document and streamline and clarify its provisions.

The United States said that the Jamaican proposal was based on the premise that governments were "brand owners". It added that this premise would require fundamental changes in the intellectual property (IP) system whereby governments would be required to take on private IP rights.

It said that the proposal would also require government action to acquire and enforce its rights which would entail hiring competent attorneys and licensing procedures. It said that this was not historically a role of governments.

It added that it was on the same page as to the goal of ensuring that county names were not misused in the context of trademarks, however, there was a need to take into account instances where a government may not wish to "assert rights". It also highlighted that "business may not wish to support such a work plan".

The US said there was need to explore further the impact of these ownership rights on governments and called for more information. In particular, it asked for further information on the questions such as whether governments could own these trademark names, the impact on specific goods, whether there would be conflicts with the country of origin labeling requirement, and how competent authorities could assert their rights over these trademarks.

Norway said that it was important that the Committee reflected on what it wanted to achieve on this topic. In particular, whether it wanted to create norms as part of a national branding strategy or whether it wanted to create an efficient or flexible system which users could use. It said that it was important to create an efficient and flexible system for users which would not hinder business. It stated that the usage of country names in trademarks was fine as long as it did not monopolize or mislead the public.

Norway further stated that the creation of norms in this area would put users at a great disadvantage if applicants were required to provide additional documentation to prove that the goods were connected to the mentioned country name. It added that this would make the applications procedure more burdensome, and therefore work on a joint recommendation in this context was not necessary.

The Russian Federation said that it did not face any problems with country names and their usage in the trademark system. It said that there was currently "balanced legislation" in place and the problems are well understood by experts. It noted that it was more important for the Committee to focus on the proposed Designs Law Treaty where there was a direct mandate from the WIPO General Assembly.

South Africa stated that in previous sessions it had expressed support for a non-binding reference document which would serve as a useful working tool on the issue of protection of country names. It stated that it had a number of concerns with the text of the draft joint recommendations and could not support it.

South Africa's main concern related to the mandatory nature of the language used in the text and with the references to harmonization of trademarks' registration procedures. It stated that the language as currently found was "classical treaty language" and was not in accordance with what was envisaged in previous sessions.

The SCT Chair attempted to steer the discussion to focus on specific articles of the joint recommendation; however, the US and Norway pointed out that they were not in a position to go into textual discussions at this time.

It is expected that Jamaica will resubmit its proposal for the next session of the SCT taking into account all the comments made by Member States.

TRADEMARK-RELATED ASPECTS OF THE DOMAIN NAME SYSTEM

As in the past few sessions, the WIPO Secretariat provided an update on the future developments in the domain name system and its implications on the intellectual property system based on the document (SCT/31/6).

This document covers issues pertaining to: (i) uniform domain name dispute resolution policy; (ii) country code top-level domains (ccTLD); and (iii) policy developments in the domain name systems such as the introduction of new generic top-level domains.

There has also been considerable interest on the issue of domain names and their implications on the trademarks protection as there are ongoing policy developments in the system.

The most important is the introduction of more than 1,400 new "generic top-level domains" (gTLDs) to the existing 22 names as part of ICANN's Generic Top-Level Domain Name Program. The idea of the Program is to allow new domains beyond the current standard ending such as ".com", ".edu and ".org". This also includes more than 100 internationalized domains such as Cyrillic, Chinese and Arabic.

(ICANN is the Internet Corporation for Assigned Names and Numbers, a US-based non-profit which has the key role in dealing with issues relating to cyberspace governance, including the granting of new gTLDs.)

The WIPO Arbitration and Mediation Center currently provides mechanisms to resolve internet domain name disputes, without the need for court litigation. This service includes the WIPO-initiated Uniform Domain Name Dispute Resolution Policy adopted by ICANN, under which the WIPO Center has processed over 27,000 cases.

WIPO also provides for Pre-(TLD) Delegation Dispute Resolution Procedure
(which allows trademark owners to lodge Legal Rights Objections to new gTLD applications at the top level) and imminently for Post-(TLD) Delegation Dispute Resolution Procedure (that would allow for the filing of a complaint with respect to an approved new gTLD alleged to cause or materially contribute to trademark abuse).

Japan, Hungary, Switzerland and Italy underlined the need to ensure that the introduction of new gTLDs should not prejudice the legitimate rights of the trademark owners and called on the Secretariat to continue providing regular updates on these developments.

The Chair, in conclusion, informed the Committee that informal consultations were still on-going regarding the technical assistance provision in the proposed Designs Law Treaty.

The second version of the Chair's non-paper is expected to be circulated on Friday. (See SUNS #7766 dated 19 March 2014.)