THE Jamaica Intellectual Property Office (JIPO) continues to press its case against misuse of the name Jamaica by producers who sell goods on the international market seeking to benefit from the brand value inherent in the name, although having no connection to the country.

So far it has been a mission impossible, with presentations made on the protection of country names to the World Intellectual Property Organization (WIPO) Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) so far failing to reach the stage of support and resolution.

Article six of the Paris Convention on the Protection of Industrial Property protects armorial bearings, flags and other State emblems of the States party convention. It protects such against unauthorised registration and use as trademarks and also prohibits unauthorised use and registration as trademarks of abbreviations and names of international intergovernmental organizations.

No protection for names of states

However, JIPO indicates, the Paris Convention does not protect the names of states. In a written presentation made to WIPO, and shared with the Jamaica Observer, JIPO states, “At present, there is no holistic legal protection available to states internationally to stop the unauthorised use of the name of the State in relation to goods or services.”

JIPO insists, as outlined in its presentation, “There is no logical justification for international, inter-governmental organisations being afforded such protection but not sovereign states who are members of the Paris Convention and of the international legal order in their own right. From an international law perspective, the right and responsibility of sovereign states to own, control, protect and manage their country name is a fundamental part of the sovereignty of states, consistent with the right to self-determination of peoples.”

The struggle for name protection is over three decades old.

JIPO indicates that, for over thirty years, concerns have been expressed by states internationally regarding the lack of international protection for country names.

Since 2009 Jamaica has advocated within the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) for more consistent, adequate and effective protection for the names of states, similar to equally important symbols of statehood such as flags and armorial bearings that are already protected under the Paris Convention.

JIPO states in its written presentation: “Our consistent view and the view of a growing number of other members of the SCT is that, although protection is available in theory for country names through trademark laws such protection is often limited to particular circumstances, leaving ample opportunity for persons and entities to nevertheless abuse and unfairly free-ride on the goodwill and reputation of a country’s name.

“In practice therefore, the protection that theoretically exists internationally for country names is not comprehensive, is inadequate and is insufficient in practice.”

JIPO states, “Jamaica has suffered and stands to suffer and lose much more economically in the future if the Government of Jamaica is not enabled and empowered by international trademarks law to prevent the unauthorised use of the name ‘JAMAICA’ in relation to products and services, whether as trademarks, trade names, or domain names, which do not originate in or are not genuinely connected to Jamaica.”

Shortcomings of existing IP system

The intellectual property office notes that the fact is, in the vast majority of WIPO member states a trademark applicant who wants to register a trademark which comprises or contains a country name – thereby unfairly free-riding on the goodwill and reputation of a country’s name – “can simply stylise the country name or add other words and/or figurative elements in the trademark.

“Going further, it is even possible for private entities to obtain word mark registration of country names, as exemplified by Iceland. The 2016 case of Iceland v Iceland brings home clearly the threat which is posed to the sovereignty and autonomy of states by the continuing problem of lack of adequate protection of country names.”

The case concerns the British frozen goods supermarket chain, Iceland, which is being sued by Iceland the State over the trademark of its name because the supermarket chain stopped several Icelandic companies from using the word “Iceland” to describe themselves and from registering their trademarks which legitimately have the country name therein.

JIPO indicates, “The Iceland case exposes the current state of inadequate and ineffective protection for country names and demonstrates the inherent vulnerability and legal handicaps of WIPO member states in responding to such challenges internationally, in the absence of international protection for country names.”

Trademarks

JIPO has revised its proposal over time from the bid to block goods or services which do not originate in the country, to the 2020 revised proposal that it recognises that there are certain circumstances when a country name may be used legitimately in a trademark although the goods or services do not originate in the country. The proposal has also been narrowed to apply to trademarks only and not to business identifiers and domain names, as the original proposal did.

Many trademark laws offer inadequate protection, hence JIPO’s pursuit of a more suitable regulation which will reduce economic loss due to the absence of name protection.

The draft proposal for name protection

JIPO asserts that, in practice therefore, the protection that theoretically exists for country names by existing trademark law interpretation and practice is “incomprehensive, inadequate and insufficient in practice”.

Since the 32nd Session of the SCT (Standing Committee on Trademarks) in 2014, Jamaica has placed on the table at the SCT a draft Joint Recommendation of the Paris Union and the WIPO Assembly for the protection of country names so as to facilitate within the SCT more focused discussion on possible solutions to the problem.

Under the revised Proposal for a Draft Joint Recommendation, marks shall be deemed to be in conflict with country names where the mark, or a part thereof, constitutes a reproduction, an imitation, a translation, a transliteration, or an abbreviation of a country name, and where at least one of the following conditions is fulfilled:

— (i) the use of that mark would indicate a false connection between the goods and/or services for which the mark is used, is the subject of an application for registration, or is registered, and the relevant member state identifiable by the country name;

— (ii) the use of that mark is likely to impair or dilute the distinctive character, reputation, country name and/or nation brand of the relevant member state identifiable by the country name;

— (iii) the use of that mark would take unfair advantage of the distinctive character, reputation, country name and/or nation brand of the relevant member state identifiable by the country name.

JIPO notes that if the draft joint recommendation is accepted by member states at WIPO, then country names would be protected against registration as trademarks in intellectual property offices around the world, unless there is some genuine connection to the country.

Such a genuine connection, it is indicated, would be established by (i) documentary evidence that the goods or services for which the mark is registered originate from the country named in the trademark or (ii) and documentary evidence of authorisation by the competent authority or authorities.

It should also be supported by (iii) evidence of the applicant’s compliance with established national law and/or policy of the relevant member state named in the trademark regarding use of the country name or other related designation; and (iv) evidence that the mark is not liable to be perceived by the public as misleading, deceptive or false as to the origin of the goods and/or services for which registration is sought.

JIPO notes that “Jamaica is seeking more consistent, adequate and effective protection for the names of states, similar to symbols of statehood, such as flags and armorial bearings protected under the Paris Convention.”

The practical realities of the trademark system and the practice of states show that the protection of country names is neither uniform nor comprehensive, it is noted.

JIPO states, “Many loopholes exist in trademark law and practice, both pre-grant and post-grant, which permit the possibility of country names being registered as part of trademarks. Alternative procedures of protection such as oppositions and observation are financially and logistically burdensome on states, especially developing countries.”

It concludes, “There is therefore a need for stronger, more comprehensive and internationally consistent protection for country names, through consistent and agreed approaches to examinations of trademarks with country names.”

JIPO states, “The aim of the revised proposed draft joint recommendation we have on the table at the WIPO SCT is not to prescribe rules that IP offices must follow, nor to create additional obligations necessarily, but to establish a coherent and consistent framework to guide IP offices and other competent authorities and international traders in their use of trademarks, domain names, and business identifiers which consist of or contain country names.”