Signs of the times – Article 6ter enters the e-communication era

June 2009

The first electronic publication of signs protected under Article 6ter of the Paris Convention for the Protection of Industrial Property went live on March 31 on WIPO’s website. Signs – emblems, flags and armorial bearings – of States party to the Paris Convention and signs, names and abbreviations belonging to international intergovernmental organizations – all protected under Article 6ter – are now no longer being communicated individually and on paper but by means of grouped, biannual electronic publication in the “6ter Express” database.

Unlike trademarks, which have a commercial purpose and are owned by individual persons, companies and entities, State signs or the signs, names and abbreviations of international intergovernmental organizations cannot be the subject of individual property rights. The use of “World Health Organization” or “WHO” as a trademark, for example, would be highly misleading as to the origin or endorsement of any goods or services to which it was affixed. Article 6ter, therefore, prohibits the registration or use of such signs, names and abbreviations as trademarks. The provision also covers official signs and hallmarks indicating control and warranty, adopted by States.

The intention of Article 6ter is not to create a special form of intellectual property right for States and international intergovernmental organizations, but to prevent the signs, names and abbreviations associated with them from being used or appropriated as trademarks without proper authorization. The provision was first introduced into the Paris Convention in 1925 – then further extended and interpreted in 1958 and 1992 – and is binding on all 173 States party to the Convention and on all 153 members of the World Trade Organization (WTO) bound by the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).

The first Article 6ter electronic publication on March 31 concerned 59 signs of five States and 59 signs of six
international intergovernmental organizations, including the above.

Communication under the provision

With the exception of State flags, the protection of signs under Article 6ter is subject to reciprocal communication – through the intermediary of WIPO – of the sign for which protection is requested. In the past, this meant that a State or organization had to send paper copies of the sign to be protected to WIPO, which, in turn, sent it to all other States party to the Paris Convention or members of the WTO.

Protection under Article 6ter is not immediate but subject to a 12-month objection period, which starts on the date of the receipt of the sign communicated by WIPO. Since signs were communicated by mail, each receiver had to determine individually the start and end date of the 12-month period, for which there was no central record.

To help resolve those difficulties, and make better use of modern communication technology, member States of the Paris Convention decided at their autumn 2008 meeting to replace individual paper communication by a periodic (half yearly) electronic communication, the first of which took place on March 31.

The date of the electronic publication is considered the general starting point of the 12-month objection period. In addition to the enhanced legal security resulting from this procedure, it is no longer necessary to send paper copies back and forth. This new publication procedure uses the “6ter Express” database, which contains 2,416 individual records, is fully accessible and searchable online, and is free of charge. Updated versions of the database are also being made available on CD-ROM, and can be ordered from WIPO. The next e-publication of Article 6ter protected signs will be on September 30.

By Marcus Höpperger, WIPO, Sector of Trademarks, Industrial Designs and Geographical Indications

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