General Information on Article 6ter
Article 6ter of the Paris Convention for the Protection of Industrial Property of 1883 (1967 Stockholm Act) was introduced into the Paris Convention by the Revision Conference of the Hague in 1925. It underwent some minor modifications, as to form, at the Revision Conference of London in 1934, and was more thoroughly revised by the Revision Conference of Lisbon in 1958.
The purpose of Article 6ter is to protect armorial bearings, flags and other State emblems of the States party to the Paris Convention as well as official signs and hallmarks indicating control and warranty adopted by them.
This protection was extended to armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organizations by the Revision Conference of Lisbon in 1958.
Any emblem or other official sign mentioned above for which a State party to the Paris Convention or an international intergovernmental organization wishes to obtain protection has to be communicated to the International Bureau of WIPO, which will then communicate it to the other States party to the Paris Convention. As of March 31, 2009, this communication is made in the form of a semi-annual publication in an electronic database on the website of the World Intellectual Property Organization. Nevertheless, such a communication is not obligatory in respect of flags of States.
The Paris Union Assembly, on the occasion of its 40th Session, which took place in Geneva from September 22 to October 1, 2008, based on the recommendation of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, decided to modernize the Article 6ter communication procedure through the introduction of electronic means of communication.
Under the revised communication procedure, individual communications of signs for which protection under Article 6ter is requested by States and IGOs are replaced by a periodical electronic publication in the Article 6ter Express database. The nature of the signs concerned as well as the entity (State or IGO) having requested their protection, is published, in English and French, together with the individual reproductions of the signs concerned.
The electronic publication is made on a semi-annual basis, on the last working day of the months of March and September, respectively, according to the WIPO calendar, starting in March 2009. A link to the most recent communications is inserted into the database, which indicates the communications that were received by the International Bureau during the six months previous to the publication. The date of publication is considered to constitute the date of receipt of the communication by individual States party to the Paris Convention and any other party bound to apply Article 6ter of the Paris Convention.
Consequently, the time periods provided for in Article 6ter(4) and (6) of the Paris Convention are calculated as of that date of publication for all receiving States party to the Paris Convention. By consequence, this date is identical for States concerned.
Any party that is bound to apply Article 6ter may, within a period of twelve months from the date of publication of that communication, transmit its objections, if any, through the intermediary of the International Bureau, to the State or international intergovernmental organization at the request of which the communication was made.
Scope of Protection
The protection offered by Article 6ter to any emblem or other official signs mentioned above, is not of a general nature. The purpose of Article 6ter is to prohibit the registration and use of trademarks which are identical to, or present a certain similarity with the above–mentioned emblems or official signs.
Article 6ter is only applicable to trademarks and does not oblige States party to the Paris Convention to refuse or to invalidate the registration, and to prohibit use of State emblems or other officias signs as a service mark or as an element of a service mark. States are nevertheless free to do so, and under Article 16 of the Trademark Law Treaty (TLT) and Article 16 of the Singaporte Treaty on the Law of Trademarks, States party to those Treaties are obliged to provide Article 6ter protection against registration of use as service marks.
The list of the items which can be the subject of a communication under Article 6ter of the Paris Convention, at the request of a State party to that Convention comprises: armorial bearings, flags and other State emblems, as well as official signs and hallmarks indicating control and warranty adopted by the State itself. The expression "other State emblems" is rather vague. It is generally understood as referring to any emblems constituting the symbol of the sovereignty of a State. A State emblem frequently contains heraldic elements, such as a lion, an eagle, the sun.
It is to be noted that the intention of the Revision Conference of the Hague, in 1925, was to include in the protection of State emblems the escutcheons of reigning Houses, as well as emblems of States included in a Federative State which is party to the Paris Convention. However, it was not intended to include emblems of lower public bodies.
The purpose of official signs and hallmarks indicating control and warranty is to certify that a State or an organization duly appointed by a State to that effect has checked that certain goods meet specific standards or have a given level of quality. Official signs and hallmarks indicating control and warranty exist in several States with respect to precious metals or products such as butter, cheese, meat, electrical equipment, etc. In principle, officials signs and hallmarks indicating control and warranty may also apply to services, for instance those relating to education, tourism, etc.
The protection as an official sign indicating control and warranty is more limited than a protection as a State emblem. Article 6ter(2) provides that such protection "shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or similar kind." Under Article 16 of the TLT, this provision extends to services.
The protection afforded by Article 6ter was extended by the Revision Conference of Lisbon in 1958, not only to armorial bearings, flags and other emblems, but also to names, and abbreviations of such names of intergovernmental organizations of which one or more States party to the Paris Convention are members. However, the protection under Article 6ter did not extend to armorial bearings, flags, other emblems, names and abbreviations of intergovernmental organizations which are already the subject of international agreements in force, intended to ensure their protection, such as the Geneva Convention for the amelioration of the condition of the wounded and sick in armed forces, of August 12, 1949, Article 44 of which protects the emblems of the Red Cross on a white ground, the words "Red Cross" or "Geneva Cross, and analogous emblems."
In order to clarify certain aspects of the Article 6ter(1)(b) and (3)(b), the Assembly of the Paris Union adopted the Guidelines for the Interpretation of Article 6ter(1)(b) and (3)(b) in 1992.
In application of these Guidelines, any program or institution established by an international intergovernmental organization, and any convention constituting an international treaty may, under certain conditions, benefit from the protection granted by Article 6ter(1)(b) of the Paris Convention.
- Article 6ter of the Paris Convention: Legal and Administrative Aspects document SCT/15/3