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42nd Session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) - EU Statement - Agenda Item 5

05.11.2019
Geneva

42nd Session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT)
Geneva, 4-7 November 2019
EU Statement - Agenda Item 5

Chair,

On the topic of country names, we discussed a number of proposals at the last session of the SCT. As regards the joint proposal contained in document SCT/41/6, the EU and its Member States would like to thank the delegation of Switzerland and other proponents for preparing a non-paper for the informal discussions at SCT 4

As we commented before, we welcome the separation of two distinct policy objectives that were both covered in the previously discussed proposal in SCT/39/8 Rev. The policy objective of protecting country names and geographical names of national significance against their delegation as top-level domain names in the DNS is addressed by the proposal in document SCT/41/6. In our opinion, by means of this clear divide the original Joint Proposal has been further improved in the right direction.

As regards the proposal in document SCT/41/6, in general we remain supportive of the underlying rationale as explained on pages 1 to 3, of the document. We can associate ourselves with the principles endorsed in the Report of the Second Special Session, supported by the SCT in 2002, as contained in document SCT/S2/8.

At our previous SCT session, the proponents elaborated a revised version of the text in document SCT/41/6 which was subject to informal discussions. We reiterate our appreciation of the spirit of seeking consensus that is reflected in this joint proposal and we stand ready to participate in continued discussions to address certain technical issues in the context of the latest wording as proposed by co-sponsors.

Turning to the proposal in document SCT/39/8 Rev. 3 addressing the policy objective of protecting country names and geographical names of national significance against their registration as distinctive signs such as trademarks, we continue to have concerns about a general prohibition of the registration of country names and geographical names of national significance as distinctive signs such as trademarks if the sign consists exclusively of such a name or if it would amount to the monopolisation of such a name.

In respect of both of the joint proposals discussed, we appreciate that these proposals would not imply any legislative exercise, nor do they envisage any disruption of existing practices on descriptiveness and distinctiveness. We remain of the opinion that the creation of a new “norm setting” instrument may not be the most appropriate way to address this issue.

Chair, we note that Peru has submitted a new proposal in document SCT/42/4 concerning a survey among Member States to determine how they treat, develop and protect nation brands both inside and outside of their respective jurisdictions. The EU and its Member States recall that in the context of a previous proposal by Peru concerning the recognition and protection of nation brands, we voiced a number of concerns at SCT 40. We reiterate our view that the concept of “nation brands” covers not only signs consisting of country names but could include, for example, any figurative elements, in any combination therewith. Therefore, it appears that the concept would significantly extend the scope of aspects to be taken into account when protecting symbols of sovereignty in the strict sense. For that reason, we remain unconvinced that further work in that direction would benefit the success of ongoing discussions on this topic. In our view, the SCT should rather focus its efforts on proposals already on the table and try to seek consensual solutions on that basis.

As to European trade mark practice relating to country names, we would like to inform the SCT that the EUIPO has further developed its practice in respect of geographical names, with special regard to some judgments of the Court of Justice of the European Union. In respect of country names in particular, it will be assumed that the name of a country is, in principle, associated with the relevant goods and/or services and that the public will accordingly perceive a country name as an indication of the geographical origin of the goods and/or services.

Thank you.

Additional statement on Item 5 (Trade marks) delivered in SCT plenary

 

Peruvian proposal (SCT/42/4)

  • Thank Peru for its presentation to introduce proposal.
  • Previously, we voiced concerns and were not ready to support proposal to conduct survey.
  • After having heard interventions in plenary, we recognise the majority of delegations are supportive.
  • In the spirit of compromise and cooperation, we stand ready to give our support to the Chair’s proposal to move forward. We can endorse the preparation of a Questionnaire to be prepared by Peru which will be discussed at the next session, giving the opportunity to SCT members to participate in drafting the Questionnaire.

Korean proposal (SCT/42/5)

  • Thank Korea for proposal.
  • We can support a fact-finding exercise but without the expecations of norm-setting (limited to Phase 2 of Action plan, page 5 of document SCT/42/5).