Should the names of the States be included in Article 6ter of the Paris Convention?

Article 6ter of the Paris Convention

• The purpose of Article 6ter is to protect the armorial bearings, flags and other State emblems of the States party to the Paris Convention of 1883

• The protection granted is also extended to other emblems, abbreviations and names of international intergovernmental organizations, of which one or more countries of the Paris Union are members

• Extend to include the names of the States?

Matters for Consideration

• Current Protection• Unfair Advantage• Scope of Protection• Language• Complexity• Disputes

Current Protection• A well established legal framework exists

that prohibits the misuse of geographical identifiers

• International- Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)

• EU- Council Regulation (EC) No. 207/2009• National- Irish Trade Marks Act 1996 or

equivalent

Other Protection• Section 8(1)(c) of the Trade Marks Act 1996,

equivalent to Article 7(1)(c) of Council Regulation, prohibits the registration of marks of descriptive character that designate the geographical origin of goods or services

• Section 8(3)(b) of the Trade Marks Act 1996, equivalent to Article 7(1)(g) of Council Regulation, prohibits the registration of marks of such a nature as to deceive the public of their geographical origin

Unfair Advantage

• Current registrations unlikely to be invalidated as protection under Article 6ter would be difficult to apply retroactively

• Unfair advantage to proprietors of existing registrations containing country names

Scope of Protection• Variants of Nation titles

• IRELAND

• REPUBLIC OF IRELAND

• REP. OF IRELAND

• R.O.I.

• EIRE

Language

• Would protection be afforded in the six Official Languages of United Nations?

• Automatic extension to all languages ?

• Option to extend protection to other languages upon application?

Complexity

• How would provision be operated?• Clear where case consists of State

name only• Complex in situations containing name• Bank of Ireland• Air France

Disputes A country designation claimed by one or

more parties that may be a source of domestic or international tension or dispute

Difficulties would arise for sovereign states in allowing an independent third party to form a legal determination to the proprietary rights to the title of their nation

Examples of Emblems protected in Ireland

Conclusion

• Extension of protection afforded by Article 6ter would be contentious

• Sufficient protection currently exists relating to unwarranted registration of country names

• Amendment to International Law not justified. Any such amendment would prove to be impractical

Thank You