WIPO Debate: Can – Or Should – Governments Own Their Country Names?

This week, Jamaica tabled a proposal at the World Intellectual Property Organization for a non-binding instrument that would provide a guideline on the protection of country names against misleading trademarks for intellectual property offices and trademark practitioners. The proposal was received with interest by some member states while others, like the United States and South Africa, raised strong concerns.

The issue has been discussed for a number of sessions of the WIPO committee on trademarks, but this was the first formal proposal. The WIPO Standing Committee on Trademarks, Industrial Designs and Geographical Indications (SCT) is meeting from 17-21 March.

According to the WIPO secretariat, work on the protection of country names goes back to the 21^st session of the SCT (22-26 June 2009). Several documents were issued by the secretariat since then, including the results of a questionnaire and a study, which was later revised [pdf].

The delegation of Jamaica tabled a proposal for this session of the SCT for a “Draft joint recommendation concerning provisions on the protection of country names.”[pdf].

In the proposal, it states that “for over thirty years, concerns have been expressed by states internationally regarding the lack of international protection of country names and that proposals have been repeatedly made over the years for a review of the Paris Convention [for the Protection of Industrial Property], in order to broaden the scope of Article 6ter to protect country names by including names of states within a special category of protected signs….”

According to the Jamaican delegate, the results of the WIPO study shows that the protection of country names is not uniform. The draft joint recommendation encourages member states to protect country names when a person used or acquired a right or filed an application to register a mark in bad faith (Article 2), it also addresses conflicting marks (Article 3), conflicting business identities (Article 4), and conflicting domain names (Article 5), the delegate said.

“The aim of the draft joint recommendation is not to prescribe rules that IP offices must follow nor to create additional obligations necessarily, but [to] establish a coherent and consistent framework to guide IP offices and trademark practitioners in their use of trademarks which consist of, or contain country names,” she added.

Jamaica’s joint recommendation was received in diverse ways by WIPO members. A number of delegations voiced support for the Jamaican proposal and considered it as a good basis for future discussions. This included Monaco, Italy, Switzerland, Trinidad and Tobago, and Senegal.

The European Union said it recognises that use of country names as trademarks in ways which are deceptive or misleading as to the country of origin adversely affects consumers. The EU concerns extend to the use of geographical names more broadly, the delegate said. Before considering a joint recommendation, the issue should be examined from different perspectives, he said, not only from the point of view of states and consumers, “but also from current users of country names in trademarks who may legitimately use a country name which has become well-known or even generic,” he said.

United States Questions Principle

The United States had a number of substantive questions about the principle on which the Jamaican proposal is based. The US has concerns, the delegate said, at considering governments as brand owners. For example, he said, the role of a government as a brand owner would necessitate that that government takes action to acquire, maintain and enforce its brands. It would also imply that this government act as a brand owner and use the existing IP system as other private rights holders do.

In order to do this, the delegate continued, the government would need to hire competent attorney representation both domestically and abroad, provide funding for those activities and ultimately use the nation’s brands in commerce and specific goods and services in export markets.

“This is has not historically been a role the governments have played,” he said, “and it is not clear if it is even possible for many to take on that role,” he added. Many governments might not want to have ownership over their public symbols, he remarked.

The US delegate put some “fundamental questions” to the committee, including “what rights are we asked to recognise and protect?”, “Do or can government own their names and if some do, how do they regulate their use domestically and internationally?”, and “Do they own their names in a commercial context or a non-commercial context?”

If a regulation of country names goes beyond addressing commercial harms, what is the regulatory justification for restricting speech in trademarks, he asked. The US delegation asked that further information on the topic be provided to understand the far-reaching implications of the Jamaican proposal before any text-based negotiations be undertaken. Norway supported the US.

South Africa also expressed strong reservations about the joint draft recommendation and said although the country had been a supporter of a non-binding mechanism in previous meetings it could not support the document. In particular, the delegate said, the reference to harmonisation of the examination process was a concern, as well as the “mandatory nature of the language” used in the draft text. “The language is classical treaty language,” she said, and not language associated with a non-binding instrument.

Jamaica said it would take comments on board in order to improve the draft recommendation for the next session of the SCT.