[At-Large] R: IGO names: is this worth war?

[bzs at TheWorld.com]

On November 5, 2016 at 10:35 johnl at iecc.com (John R. Levine) wrote:
 > Barry is wrong, IGO names are not trademarks because they're not used to 
 > identify goods or services used in commerce.  But I think they do merit 
 > protection similar to that provided to trademarks.  As others have noted, 
 > it's not surprising that the IGOs and their government sponsors are not 
 > eager for a rerun of the same process that blew them off last time.  So 
 > since what they want is at worst harmless to the at-large users, just give 
 > it to them.

You're somewhat right, I was somewhat wrong.

In the spirit of questioning all my own assumptions I did a little
research and found for example a document from UNICEF:

  UNICEF Guidelines and Manual for Working with the Business Community

dated 2001, a short, 4 page, pdf, I saved the pdf but not the link
sorry, I could retrace:

In it is the following text:

  12. The UNICEF name, logo, and emblem are not trademarks.  They are
  not registered as trademarks or protected under trademark laws.
  They are protected under a special international convention, the
  Paris Convention.  The UNICEF name, logo and emblem may not be
  registered as trademarks by any UNICEF office or National Committee,
  and they should not be referred to as trademarks in any legal or
  other documents.

A little more research reveals this letter to ICANN (specifically Rod
Beckstrom, Heather Dryden, et al) dated 13-Dec-2011 (4 pages):

  https://www.icann.org/en/system/files/files/igo-counsels-to-beckstrom-et-al-13dec11-en.pdf

Which is all relevant but here is some specific text:

  The names and acronyms of IGOs are protected within the scope of
  Article 6ter of the Paris Convention for the Protection of
  Industrial Property (with 173 Contracting Parties), as further
  referred to in Article 16 of the Trademark Law Treaty and Article 2
  of the WTO Agreement on Trade Related Aspects of Intellectual
  Property Rights. We also note that the “GAC Principles Regarding New
  gTLDs” of ICANN’s Governmental Advisory Committee call on ICANN to
  make proper allowance for IGO protection in the domain name system.

and this 13 page document whose date I don't see, more research:

  WIPO Briefing Note: The Second WIPO Internet Domain Name Process 

  http://archive.icann.org/en/committees/JWGW2/WIPO2-note.pdf

with the following interesting text (again, it's all relevent):

  The existing basis for protecting the names and acronyms of IGOs in
  international intellectual property law is summarized in paragraphs
  128 to 137 of the WIPO II Report:

  128. The existing international legal framework contains clearly
  expressed and widely accepted (through applicable constitutional
  processes) principles prohibiting the unauthorized commercial use,
  as trademarks, of the names and acronyms of IGOs.

  129. Article 6ter of the Paris Convention for the Protection of
  Industrial Property (the Paris Convention), to which 162 States
  [now: 168 States] are party, provides, inter alia:

    ‘(1)(a) The countries of the Union agree to refuse or to
    invalidate the registration, and to prohibit by appropriate
    measures the use, without authorization by the competent
    authorities, either as trademarks or as elements of trademarks, of
    armorial bearings, flags, and other State emblems, of the
    countries of the Union, official signs and hallmarks indicating
    control and warranty adopted by them, and any imitation from a
    heraldic point of view.

    ‘(b) The provisions of subparagraph (a), above, shall apply
    equally to . . .  abbreviations, and names, of international
    intergovernmental organizations of which one or more countries of
    the Union are members, with the exception of . . .  abbreviations,
    and names, that are already the subject of international
    agreements in force, intended to ensure their protection.’

   ...

   131. The Paris Convention, (Article 6ter (1)(b)), accordingly
   prohibits the registration and use of, inter alia, the names or
   abbreviations of IGOs as trademarks or elements of trademarks. The
   Trademark Law Treaty of 1994 (Article 16) extends the same
   protection against registration and use with respect to service
   marks.

There's more, better if you read it for yourselves.

My barely educated take:

The IGOs (et al) assert by international treaty a higher or alternate
force -- than the usual common and legal use of the term "trademark"
-- embedded in international law to protect their marks.

So, we're dealing with a very different kettle of fish here and
reference to one's understandings of "trademark" as used in other
contexts is largely irrelevant in this case.

Start all over again!

-- 
        -Barry Shein

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