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REPERTORY OF APPELLATE BODY REPORTS

Paris Convention (1967)


ON THIS PAGE:

Article 6(1) — Trademarks
Article 6quinquies — Trademarks
Article 8 — Trade names


P.2.1 Article 6(1) — Trademarks     back to top

P.2.1.1 US — Section 211 Appropriations Act, paras. 130, 132-133
(WT/DS176/AB/R)

 

Before examining the text of Article 6quinquies, we note that the Paris Convention (1967) provides two ways in which a national of a country of the Paris Union may obtain registration of a trademark in a country of that Union other than the country of the applicant’s origin: one way is by registration under Article 6 of the Paris Convention (1967); the other is by registration under Article 6quinquies of that same Convention.

 

 

Article 6(1) states the general rule, namely, that each country of the Paris Union has the right to determine the conditions for filing and registration of trademarks in its domestic legislation. This is a reservation of considerable discretion to the countries of the Paris Union — and now, by incorporation, the Members of the WTO — to continue, in principle, to determine for themselves the conditions for filing and registration of trademarks. Thus, in our view, the general rule under the Paris Convention (1967) is that national laws apply with respect to trademark registrations within the territory of each country of the Paris Union, subject to the requirements of other provisions of that Convention. And, likewise, through incorporation, this is also now the general rule for all WTO Members under the TRIPS Agreement.

 

Therefore, an applicant who chooses to seek registration of a trademark in a particular foreign country under Article 6 must comply with the conditions for filing and registration specified in that country’s legislation. Such an applicant is not obliged to register a trademark first in its country of origin in order to register that trademark in another country of the Paris Union. However, that applicant must comply with the conditions of that other country where registration is sought.

 
P.2.2 Article 6quinquies — Trademarks     back to top

P.2.2.1 US — Section 211 Appropriations Act, paras. 135-136
(WT/DS176/AB/R)

 

This alternative way of seeking acceptance in another country of the Paris Union of a trademark registered in the applicant’s country of origin, afforded by Article 6quinquies A(1), is subject to two prerequisites. First, that trademark must be duly registered according to the domestic legislation of the country of origin, and, second, it must be registered in the applicant’s country of origin, as defined in Article 6quinquies A(2) …

 

By virtue of Article 6quinquies A(1), WTO Members are obliged to confer an exceptional right on an applicant in a Paris Union country other than its country of origin, one that is over and above whatever rights the other country grants to its own nationals in its domestic law. …

 

P.2.2.2 US — Section 211 Appropriations Act, paras. 137, 139
(WT/DS176/AB/R)

 

The participants to this dispute disagree on the scope of the requirement imposed by Article 6quinquies A(1) to accept for filing and protect trademarks duly registered in the country of origin “as is”. Looking first to the text of Article 6quinquies A(1), we see that the words “as is” (or, in French, “telle quelle”) relate to the trademark to be “accepted for filing and protected” in another country based on registration in the applicant’s country of origin. The ordinary meaning of the words “as is” is “in the existing state”. The French term “telle quelle” can be defined as “sans arrangement, sans modification”. This suggests to us that the requirement of Article 6quinquies A(1) to accept for filing and protect a trademark duly registered in the applicant’s country of origin relates at least to the form of the trademark as registered in the applicant’s country of origin. The question before us is whether the scope of this requirement also encompasses other features and aspects of that trademark as registered in the country of origin.

 

 

… We find that there is considerable contextual support for the view that the requirement to register a trademark “as is” under Article 6quinquies A(1) does not encompass all the features and aspects of that trademark. …

 

P.2.2.3 US — Section 211 Appropriations Act, para. 147
(WT/DS176/AB/R)

 

… We also agree that the obligation of countries of the Paris Union under Article 6quinquies A(1) to accept for filing and protect a trademark duly registered in the country of origin “as is” does not encompass matters related to ownership.

 
P.2.3 Article 8 — Trade names     back to top

P.2.3.1 US — Section 211 Appropriations Act, para. 338
(WT/DS176/AB/R)

 

Article 8 of the Paris Convention (1967) covers only the protection of trade names; Article 8 has no other subject. If the intention of the negotiators had been to exclude trade names from protection, there would have been no purpose whatsoever in including Article 8 in the list of Paris Convention (1967) provisions that were specifically incorporated into the TRIPS Agreement. …

 

P.2.3.2 US — Section 211 Appropriations Act, para. 341
(WT/DS176/AB/R)

 

… we reverse the Panel’s finding in paragraph 8.41 of the Panel Report that trade names are not covered under the TRIPS Agreement and find that WTO Members do have an obligation under the TRIPS Agreement to provide protection to trade names.

 


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