Article 6ter of the Paris Convention for the
Protection of Industrial Property of 1883 (which is amended and revised
time to time), was introduced into the convention by the Revision Conference of
The Hague in 1925. The purpose of Article 6ter of the Paris Convention
is to offer a degree of legal protection to armorial bearings, flags
and other state emblems as well as official signs of States
and hallmarks indicating control and warranty adopted by them who are
party to the Paris Convention. This protection extends towards the registration
or use of trademarks that are in whole or in part identical to such emblems, abbreviations,
and names of International Intergovernmental organizations of which one
or more countries are members with the exception of armorial bearing, flags and
other state emblems, emblems, abbreviations, and names which are already the
subject of International Agreements, in force intended to ensure their
protection, but also trademarks that fall within a specific sphere of
similarity, namely imitation “from a heraldic point of view”.
As per the Guidelines for the Interpretation
of Article 6ter (1) (b) and (3) (b) any program or institution
established by an international intergovernmental organization, and any
convention constituting an international treaty may, under certain conditions, stand
to benefit from the protection offered under Article 6ter.
In accordance with this provision, member countries
of the Union are required to refuse or invalidate such trademark
registrations and to prohibit by appropriate measures the use of such marks. The
protection of State emblems falling under Article 6ter (1) (a) extends to any
imitation “from a heraldic point of view”. The provision excludes State emblems
from registration or use as trademarks or as elements of trademarks.
In accordance with Article 6ter (3) (a), the
countries of the Paris Union communicate reciprocally, through the
intermediary of the International Bureau, the lists of emblems and signs for
which protection is requested under Article 6ter (1). The same procedure
applies in respect of international intergovernmental organizations under
Article 6ter (3) (b). Thus, the International Bureau enables such communication
by transmitting the relevant notifications to the members of the Union as well
as to the Members of the WTO not party to the Paris Convention.
The purpose of this protection is the
indication of control and warranty of certification that a State or an
organization duly appointed by the State has checked the standards and quality
of the goods under their banner. These marks exist in many States with respect to
products such as butter, cheese, meat,
electrical equipment, etc. In principle, official signs and hallmarks
indicating control and warranty may also apply to services, for instance those
relating to education, tourism, etc.
Country names and identities often function as brands
which indicate the origin of the goods and services so advertised, as a result
of which the country’s name, flag, emblem or coat of arms can be said to be a
signal to the public that there is a relationship between the nation and the
products and services in respect of which it is being used. Not only does this
become problematic for a nation, which may or may not have control over the
goods being distributed using its identity and goodwill, it may also damage the
reputation and brand value which a nation has very tediously built.
The spirit of this article is followed thoroughly
in international circles. However, there are certain exceptions where few
companies register trademarks that resemble or infringe upon member states. United
States of America has on several occasions refused marks that seem to be
replicating foreign flags, an example of which would be In re Certa ProPainters, Ltd., 2008, where the Logo was
refused registration because the applied-for mark “contains a simulation of a
flag of a foreign nation, specifically Canada, and/or displays the
official national insignia of Canada, namely the Canadian maple leaf.”
However, there are some registered trademarks
resembling State emblems. These registrations can have been done due to
negligence. Some examples of these type of marks are:
India is one of the few countries that seems
severely against the practice of registering trademarks resembling State
emblems protected under Article 6ter of Paris Convention, to the extent of
having serious consequences for those who try to replicate the flag and/or
national emblems onto commercial items. In addition to the prohibition under
Article 6ter of the Paris Convention, India has codified specific legislations,
which prohibit the use of flag and/or national emblems. These legislations are:
v Emblems
and Names (Prevention of Improper Use) Act, 1950: This Act prevents the
improper use of any emblem, seal,
flag, insignia, coat-of-arms or pictorial representation and names, mentioned
in the Schedule of the Act, for professional
and commercial purposes.
v Prevention
of Insults to National Honor Act, 1971: This Act prohibits the desecration of or insult to the
country's national symbols, including the National Flag, The Constitution, and
the National Anthem.
v Trade
Marks Act, 1999:
Section 9 of the Trade Marks Act, 1999 specifically prohibits trademark registration
of any mark whose use is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950
v Several Central
and State Government notifications prohibiting the use of emblems,
national symbols, national flag.
However, in a time of changing value and
increased commercialization, it becomes essential to examine ones
position and determine whether association of local brands and companies
with the national flag would really harm the country, or would it have the
country benefit from such association.
Globally, to get the benefits of trademark
registration, many state official authorities got their logos registered as
trademarks. Below are some examples of existing registered trademarks owned by official
state authorities of different countries:
Therefore, the member states of Paris Convention
follow Article 6ter of the Convention to legally protect their armorial
bearings, flags and other state emblems as well as official signs of States and
hallmarks.
