One
of the most interesting sessions at last month’s
ASIPI Congress concerned nation
brands. As anyone who travels regularly knows, many
countries have stepped up their efforts to promote business,
investment and tourism in the press, online and on TV. Many of
them have created distinctive logos (see right) and even
annoying jingles (such as "Malaysia
– Truly Asia" which always seems to be playing on
hotel TVs when I’m travelling).
One of the questions raised at the ASIPI meeting was whether
there should be some sort of sui generis protection
for nation brands, on the basis that they cannot be effectively
protected under most national trade mark laws. I understand
ASIPI is setting up a committee to address this question, which
probably reflects its importance to many emerging markets in
the region.
Nation brands often of course incorporate country names,
which raises questions about both protection and prevention of
misuse. Jamaica has been pursuing this issue at
WIPO’s Standing Committee on Trademarks,
Industrial Designs and Geographical Indications in recent
years. The topic is again on the Committee’s
agenda for its meeting in March this year, and WIPO
published a
study on it in 2013.
According to its
latest proposal for an international agreement, published
in September last year, Jamaica’s recommendation
aims to promote harmonisation by "protecting country names
against conflicting marks, conflicting business identifiers and
conflicting domain names, preventing the use of indications
consisting of or containing country names in relation to goods
or services which do not originate in the country indicated by
the country name, and harmonizing the examination and
determination of applications for the registration of
trademarks which consist of or contain country names, in order
to promote consistent and comprehensive treatment and
protection of country names among Member States".
Specifically, it proposes that states shall "protect country
names against conflicting marks, business identifiers and
domain names and prevent use of indications consisting of or
containing country names in relation to goods or services which
do not originate in the country indicated by the country
name".
This (revised)
proposal is uncontroversial in many respects, though some
national representatives have raised
fundamental questions about it. The United States, for
example, expressed concern that it was based on the principle
that "governments owned and controlled their names including
nicknames, abbreviations, assigned ISO country codes, etc". The
US delegation also pointed out that the draft text placed a
burden on trade mark applicants to "rebut the presumption of
deception".
More fundamentally, the proposal raises a question about
whether countries should be given rights at the expense of
trade mark owners. Many well-known brands include country names
(notably in the transport and utility sectors) and with
globalisation many operate outside of their native territory:
would they be affected by Jamaica’s proposals? And
how far should protection be extended? What about country names
in different languages or adjectival versions – think
of brands such as French Connection or El Corte Inglés
– or abbreviations, historic names or nicknames (such
as Kiwi for New Zealand)?
There was considerable interest among the ASIPI audience in
this issue and clearly there are many questions relating to
nation brands and country names that need to be debated. We
look forward, as ever, to receiving your comments.