"Country Name" protection moves closer
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The question of the convening of a high-level meeting to adopt the potential treaty was also discussed with dissension between developing and developed countries.
Protection of Country Names
On the table was a study that the WIPO secretariat issued at the request of the SCT at its 27th session from 18-21 September 2012. The study [pdf] concerned the “current legislative provisions and practices in national or regional legislation relating to the protection of country names in the field of registration of trademarks, as well as best practices related to the implementation of such provisions.”
Jamaica, which along with Barbados, had proposed [pdf] such a study at the 27th session, said the study, shows protection is available for country names through several alternative means but also clearly shows protection is often limited to particular circumstances which “leaves ample opportunity for persons and entities to nevertheless abuse and unfairly free ride on the good will and reputation of a country’s name,” the delegate said.
The reliance on opposition and observation for the protection of country names is insufficient and inadequate, the delegate said, adding, “Though many countries broadly interpret national laws to protect country names, such protection is not uniform and allow many exceptions.”
Opposition procedures have further hurdles to country name protection, the Jamaican delegate said, and would require substantial resources for states, in particular developing countries and small island developing states, “to police the trademark offices and registries of the world and to commence opposition proceedings” and maybe court litigation in foreign jurisdictions, he said An additional hurdle would be time limits to file such oppositions, as in most jurisdictions, opposition may only be raised within two or three months.
The study, he said, did not go far enough assessing the real and potential impact of weak protection of country names on nation branding schemes. He said country names ought to be protected within national laws, policies and procedures, through a manual or a joint recommendation of the WIPO General Assembly, and asked the WIPO secretariat to use the study to update the original reference document (Draft Reference Document on the Protection of Country Names Against Registration and Use as Trademarks) to be circulated ahead of the next SCT.
A number of countries supported further work of the SCT on the subject of the protection of country names. Switzerland said this issue was of high importance to the country and would be interested in the update of the original document. Barbados, El Salvador, Monaco, Morocco, Nepal, Turkey, Venezuela and Uruguay supported the Jamaica suggestions.
The European Union said it needed more time on the proposal to have a manual such as suggested by Jamaica and added the SCT needs to concentrate on industrial designs. Norway said the study might represent a natural conclusion of the work of the SCT on the topic, which was supported by Canada, which said the study could be used by IP offices around the world.
Extracted from Intellectual Property Watch May 30 2013
