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 States’ 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) - … The countries of the Union shall not be required to apply the said provisions when the use or registration … 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) - … 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 examiner’s 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@icann.org