Country Names As IP, Geographical Indications, Industrial Designs At WIPO Next Week

What can you do if you are a country and a private company has registered your name as a trademark, preventing even your own companies from using your name? The issue is expected to be discussed at next week’s World Intellectual Property Organization’s committee on trademarks. The meeting also includes a special session illustrating practices of national and regional protection of geographical indications. However, the question remains whether or not delegates will discuss a draft treaty text on industrial designs, after that conversation was pushed back in the fall.

The 37th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is taking place from 27-30 March.

The agenda [pdf] includes a document [pdf] containing comments by member states about the protection of country names against registration and use as trademarks, in particular on areas of possible convergence in the discussions.

According to the document, from June 2009 to November 2015, the SCT considered a number of working documents on the protection of country names against trademark registration. During past sessions, six areas of convergence were defined: the notion of country name; the fact that the name is non-registrable if it is considered descriptive; non-registrable if it is considered misleading, deceptive or false; consideration of other elements of the mark; invalidation and opposition procedures; and use as a mark.

Some 25 WIPO members sent submissions to the WIPO secretariat, which are summarised in the meeting document. According to this document, the full text of all submissions is here. Countries having submitted comments are: Argentina, Belarus, Canada, Colombia, Costa Rica, Finland, France, Georgia, Germany, Greece, Iceland, Ireland, Peru, Philippines, Poland, Portugal, Singapore, South Africa, Spain, Sweden, Switzerland, Tajikistan, Ukraine, United States, and Uzbekistan.

Iceland: A Case Illustrating the Issue

Iceland submitted a note [pdf] for this session of the SCT. According to the note, “In recent years, Iceland has had to allocate considerable time and resources to protect the name of the country from trade mark registrations in almost all corners of the world.”

The note describes the particular notorious case of Iceland Foods Ltd, which has registered the word mark “Iceland” in the United Kingdom and the European Union.

“Iceland Foods Ltd. has actively enforced its exclusive rights to the word mark Iceland and opposed the registration of a number of trademarks containing the word Iceland by Icelandic businesses,” the note explains, adding that the supermarket chain opposed the registration of “Inspired by Iceland,” a “national branding scheme partly sponsored and endorsed by the government of Iceland.”

“It is unacceptable that a single private party can exclude Icelandic companies and producers, and even a national branding program sponsored by the Icelandic government, from referring to Iceland when identifying their products,” the note said.

On 14 November, according to the note, the Iceland Ministry for Foreign Affairs, SA-Business Iceland, and Promote Iceland filed an invalidity claim against the EU trademark word mark registration with the EU Intellectual Property Office (EUIPO) on the grounds that the word mark is descriptive and lacks distinctiveness as it is merely an indication of geographical origin. The process at the EUIPO is ongoing, the note said.

“It is an issue of public interest that country names remain available and that no one natural person or legal entity can acquire exclusive rights to country names,” as country names are a prominent part of nation branding identifiers, the note adds.

Information Session on Geographical Indications

On 28 March, the SCT will host an information session [pdf] on geographical indications. The session is organised in two parts. The first part deals with “the features, experiences and practices of the different national and regional geographical indication protection systems,” while the second part is about the protection of geographical indications on the internet, and geographical indications and country names in the domain name system.

Geographical indications (GIs) are names on products that have specific geographical origin and derive particular qualities or a reputation due to that origin. Famous GIs are gruyere cheese and tequila.

The way to address GIs at the SCT found no consensus at the last committee meeting in October, and the information session was agreed upon as a mean to find a way forward to decide on how to further discuss GIs in the committee.

Several proposals are on the table from past sessions: by the US, SCT/30/7 [pdf] and SCT/31/7 [pdf]; the Czech Republic, France, Germany, Hungary, Italy, Poland, Portugal, Republic of Moldova, Romania, Spain and Switzerland, SCT/31/8 Rev.6 [pdf]; and France, SCT/34/6 [pdf].

The subject is touchy at the SCT. After years of dormancy in the committee, the topic was hastily reintroduced by some countries, as discussions on GIs were revived by other countries in parallel discussions at WIPO which incorporated GIs into a new act to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. The Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, adopted in May 2015, was disputed by some WIPO members, mainly because it was adopted by only a fraction of WIPO membership (28 members of the Lisbon Agreement), leaving out other members who would have opposed it.

Most active opponents of the new act includes the US, which has said that the Geneva Act was discriminatory towards countries protecting their geographical indications through a trademark system, as opposed as a sui generis system, such as in Europe. This was supported by countries such as Australia, and South Korea (IPW, WIPO, 11 May 2015).

Separately, on 27 March the industry group called organisation for an International Geographical Indications Network (oriGIn) will hold a side event to present the progress of its compilation of all GIs currently protected in the world.

Industrial Design: It Takes Two to Tango

At the last session of the SCT in October, delegates did not discuss a potential industrial design treaty. The draft text of the treaty has been completed a couple of years ago, and deemed ready for a high-level negotiating meeting (diplomatic conference) by some developed countries. However, some developing countries have considered that two pending issues in the text had to be addressed before going to the next step. One of those issues is the request to have a disclosure of traditional knowledge and traditional cultural expressions by the applicants of industrial designs (IPW, WIPO, 19 October 2016).

Some countries have said at the WIPO General Assembly and in the October session that the draft text should not be discussed any further in the context of the SCT, but rather left for the 2017 General Assembly.

The draft articles of the potential treaty are here [pdf], and the draft regulations are here [pdf].