Protection of the official names of States and prevention of their registration and use as trademarks have been the focus of attention of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications at the World Intellectual Property Organization (the “SCT”) for over six years (since June 2009). Each of the WIPO Member States has both its own national procedures with their peculiarities and some coinciding positions on the subject.
For an objective overview, it should be noted that the expression “names of States” may cover:
- the short name of the State or the name that is in common use, which may or may not be the official name,
- the formal name used in an official diplomatic context,
- translation and transliteration of the name, as well as
- use of the name in abbreviated form and as an adjective.
Following an analysis of the information provided by the WIPO Member States, it may be concluded that protection of country names may be:
- either individually considered as a ground for refusal of registration of marks consisting of or containing country names,
- or found as a sub-item of the more general ground according to which it is possible to refuse the registration of marks that consist exclusively of signs or indications which may serve, in trade, to designate, inter alia, the place of origin of the goods claimed in the application.
Generally speaking, when performing the examination, the competent national authority examines the sign applied for registration as a trademark and consisting of or containing the name of a State in light of formal and substantive legal requirements, like any other sign.
The scope of examination by offices and, in particular, the nature of the possible grounds for refusing the application that are examined by the office may be divided into several major categories:
Category 1. General Exclusion from Protectable Subject-matter
This approach has been followed in the laws of certain countries, by creating an absolute bar to the registration of signs which consist of or contain country names, independently of any other consideration regarding the nature of the sign (e.g., whether it is misleading as to the geographical origin of the goods or services).
In particular, these are the following countries: Albania, Australia, Azerbaijan, Bangladesh, Belarus, Bulgaria, Canada, Chile, China (and Hong Kong SAR), Dominican Republic, Estonia, Georgia, Germany, Greece, Iran (Islamic Republic of), Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lithuania, Malaysia, Montenegro, New Zealand, Nigeria, Norway, Oman, Poland, Portugal, Republic of Korea, Republic of Moldova, Serbia, Singapore, Slovakia, South Africa, Spain, Sri Lanka, Syrian Arab Republic, Trinidad and Tobago, Turkey, Ukraine, United Republic of Tanzania and Uruguay.
In such countries, it is possible to avoid refusal of registration by providing proof of consent to the use of the sign by the competent authorities of the country named in the application.
However, even where authorization is produced, the mark would still need to be assessed against other grounds for refusal contemplated in national law, such as: lack of distinctive character or non-conformity of the mark with public policy or morality.
Generally, national laws do not contain specific references to an official list of country names, and few of them include additional precisions as to whether protection is given to official names only, or also to common names or abbreviated versions of State names.
Thus, for example, in Cambodia and Bangladesh, marks which are identical or similar with, or contain as an element, a name or abbreviation or initials of the name of any State cannot be registered.
In Iran (Islamic Republic of) and Oman, a mark cannot be registered if it is identical with, or is an imitation of, or contains as an element, a name or abbreviation or initials of the name of any State.
The national laws of Lithuania expressly provide that a specific ground for refusal is to exclude from registration the name of the national State only, however they remain silent in relation to the names and other denominations of foreign countries.
Since an association between goods and services and a country can result from use of signs other than the official name of the country, certain national laws have extended the exclusion from registration as trademarks to the short name, translation of the name, abbreviation, international code, adjective indicating nationality, etc. Thus, for example, the laws of Chile provide that, when the name of a country is expressed differently in different languages, a trademark application including any those variations should be refused registration. This provision was applied when the composite trademark “HANGUK” was refused registration on the grounds that it contained the name of the Republic of Korea in the Korean language.
The Industrial Property Law of Poland also clearly prohibits registration of any sign that incorporates the name or abbreviated name of the Republic of Poland and the abbreviated names of other countries. This provision was applied by the Patent Office of Poland, when refusing the registration of a trademark containing the letters “ID” and surrounded by an ellipse on the ground that it consisted of the letter code of Indonesia. The Patent Office took the view that the assessment of the trade mark must be made in respect of the trademark as a whole, but where the letters are the dominant component, the sign must be analyzed taking into account the semantic meaning of the letters. In the present case, the abbreviation “ID” attracts the attention of consumers, being in the central part of the trademark.
In the Republic of Moldova, where the official or historical name of the State (Republic of Moldova), the country name (Moldova), or abbreviations, as well as translations of those names are intended to be registered or used as trademarks, either by themselves or in combination with other verbal or figurative elements, an authorization needs to be sought and granted by a Government-appointed Committee.
In Ukraine, registration is denied to marks containing either the official name of this State (implying the use of either the official name of the State – “Ukraine” – written in letters of the Ukrainian and/or any other alphabet, or Ukraine’s international code “UA”, or an imitation of the official name of the State – “Ukraine” – written in letters of the Ukrainian and/or any other alphabet) or the official names of other countries.
The authorization to use the country name “Ukraine” as a component of a trademark is issued by the Commission for Approval of the Use of Signs Incorporating the Official Country Name “Ukraine” as Trademarks, a standing body of the State Intellectual Property Service of Ukraine.
An applicant seeking such authorization must provide the Commission with documents evidencing, for instance, that:
– the use of the official country name “Ukraine” will promote national interests and will not mislead the general public as to the product manufacturer or service provider;
– the applicant has been active in the Ukrainian or global market for the respective products and/or services for at least five years;
– the products and services intended to be covered by such trademark have industrial, educational, scientific, cultural or artistic value;
– the types of the products and/or services manufactured and/or provided by the applicant are unique and can be found only in Ukraine;
– the applicant engages in foreign economic activities and holds a dominant position in the context of its group of products and/or services associated with foreign economic activities;
Category 2. Consideration of Other Elements of the Mark
In countries whose laws do not envisage a general exclusion, examination practice usually differentiates between applications in which the country name is the sole element of the mark and applications including additional matter (both word and composite marks).
In some countries, for example, in Australia, a refusal can be raised if the country name is the sole element of the mark. However, if the country name is part of a composite mark, the prominence of this element in the mark would need to be analyzed against other grounds for refusal, such as lack of distinctive character or likelihood of deception. If the other elements of the mark are sufficiently distinctive, the mark as a whole may be acceptable in principle, and in certain jurisdictions, such as Jamaica and Belize, the office might require the applicant to disclaim the country name.
Category 3. Lack of Distinctive Character
The lack of distinctive character is the most commonly used ground for refusal of trademarks consisting of or containing country names. As with other descriptive terms more generally, there is a public interest that such indications are not the subject of trademark rights and remain available for use by any interested party.
However, in Norway, for instance, the law provides that it is, in principle, possible to register a descriptive mark consisting of a country name based on acquired distinctiveness. This may apply if the sign in question has become well-known as the applicant’s indication of commercial origin in the relevant market.
However, in reality this would be hard to prove for the applicant in respect of trademarks which exclusively consist of a country name, as the relevant public will often perceive the mark as the name of a country, not exclusively as the applicant’s indication of commercial origin.
Category 4. Misleading, Deceptive, False (Incorrect) or Otherwise Not Registrable
This approach assumes that a false representation (through a trademark) that goods or services originate from a particular place may expose that trademark to refusal, if in fact the goods or services have no connection with the country name. Below are several examples.
In the United Kingdom, geographical terms or names, as well as abbreviations thereof, and figurative trademarks indicating geographical origin, as well as variations of these, where the geographical place has a reputation for the goods or services applied for, are objected. The reason for such an objection is that the use of a geographical place name in circumstances where it has a reputation creates an “expectation” in the mind of the consumer which could lead to deception if that expectation is not fulfilled.
An illustrative example can be refusal of registration of the trademark SWISSTEX for goods of Class 9, namely watches, because Switzerland is famous for its high quality watches.
In such countries as the Czech Republic, Slovakia and the United States of America, the exclusion of geographical indicators from registration as trademarks receives a particular consideration when the application concerns such goods as alcoholic beverages, including wines and spirits. In those cases, the trademark registration of signs which include country names is prohibited if the goods do not originate in the relevant geographic location.
An example may be taken from the attempt to register the mark NEDERLAND (the primary significance of this word is geographic and it is synonymous with “the Netherlands”) for a sort of beer in the USA. The mark was refused as primarily geographically deceptively misdescriptive.
On the same grounds, registration was denied for the mark KUBA KUBA (for cigars, tobacco and related products). According to the results of its examination, in the present case, the evidence is sufficient to establish a reasonable predicate that a substantial portion of relevant consumers would understand that KUBA KUBA refers to Cuba, and thus we may infer from the evidence showing that Cuba is famous for cigars, that a substantial portion of relevant consumers would be deceived.”
Under the laws of several States, such as, for example, Mexico, Canada and Brazil, it is not only geographical terms or names, but also abbreviations thereof, that cannot be registered as trademarks where such indications are likely to mislead the consumers or create confusion concerning the origin of the goods or services. In addition, the national offices of Poland and Ukraine refer to an international standard to determine the official names of States.
Category 5. Excluded from Registration for Other Reasons
In certain jurisdictions names of States are excluded from registration as a trademark for reasons other than those mentioned above. Other grounds for refusal of registration that are applied to all kinds of trademarks inter alia are:
- a conflict with other existing signs, generic character or bad faith;
- a conflict with public order or morality (as a universally accepted ground for refusal of registration);
- the use of the name of a State in the trademark may be interpreted as criticizing, insulting or being likely to defame, a nation (Republic of Korea);
- the registration of a trademark would be detrimental to the image of the country concerned (Italy);
- the duty to respect and safeguard the honor of other nations (Colombia);
- the applied-for mark disparages national symbols or brings them into contempt or disrepute, although no specific mention is made of any country names (under the laws of Trinidad and Tobago and the United States of America).
The last sub-category can be illustrated by the following example: Application for the mark “NOT MADE IN CHINA” was refused by the United States Patent and Trademark Office (USPTO) on the ground that the mark consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols of China.
The above analysis of the existing examination procedures shows that the regulations protecting country names from registration as a trademark have been quite clearly developed, and applicants should carefully study the peculiarities of national procedures before taking the decision to apply for registration of a trademark consisting of or containing a country name. But in any case, the use of country names and their protection against misuse should be viewed not only in the context of trademarks, but also as a prominent part of nation branding identifiers.