WHAT IS ARTICLE 6ter?

Article 6ter of the Paris Convention for the Protection of Industrial Property protects the armorial bearings, flags and other emblems of the States party to the Convention, as well as the official signs and hallmarks of control and warranty adopted by them, against unauthorized registration and use as trademarks. The scope of this provision was extended in 1958 to include coats of arms, flags, other emblems, abbreviations and names of international intergovernmental organizations of which one or more States party to the Paris Convention are members.

What does Article 6ter cover?
Signs covered by Article 6ter | The list of signs is exhaustive.

State coats of arms, flags and other State emblems

State emblems generally constitute the symbol of the sovereignty of a State. They usually contain heraldic elements, such as a lion, an eagle or the sun. The category of "other State emblems" is understood to include the coats of arms of reigning houses, as well as the emblems of States that are part of a federal State. However, the said Article does not cover emblems of lower public bodies (such as municipalities) and signs adopted for a limited period of time (e.g., for the celebration of an anniversary by the State).

Official signs and hallmarks of control and warranty, adopted by States

The purpose of official control and guarantee signs and hallmarks is to certify that a State or an organization duly designated by a State for that purpose has verified that certain products meet specific standards or have a certain level of quality.

In a number of States, official control and guarantee signs and hallmarks exist with respect to precious metals or products such as butter, cheese, meat or electrical equipment. In principle, such official signs and hallmarks can also be applied to services, for example, those relating to education or tourism. Only signs and hallmarks adopted by the State itself are eligible for the application of Article 6ter.

Coats of arms, flags, emblems, names and abbreviations of intergovernmental organizations of which one or more States party to the Paris Convention are members.

Protection does not extend to the signs of intergovernmental organizations that have been the subject of international agreements in force designed to ensure their protection. Examples of such agreements include the Geneva Convention for the Amelioration of the Condition of the Wounded and Sick in Armed Forces in the Field (1949), which protects the emblems of the Red Cross, or the Nairobi Treaty on the Protection of the Olympic Symbol (1981).

Scope of the protection provided by Article 6ter

The protection provided by Article 6ter is not of a general nature. The purpose of this provision is to prohibit the registration and use of marks that are identical or similar to official emblems or signs.

The protection conferred on official control and warranty signs is more limited than the protection conferred on State emblems. Article 6ter(2) provides that, in the case of official control and warranty signs, the provision "shall apply only in cases where the marks containing them are intended to be used on goods of the same or a similar kind". Under Article 16 of the Trademark Law Treaty (TLT) and Article 16 of the Singapore Trademark Law Treaty (STLT), this provision extends to services.

Who is concerned by Article 6ter? Parties obliged to apply Article 6ter?

All States party to the Paris Convention, as well as Members of the World Trade Organization (WTO) that are not party to that Convention, are bound to apply Article 6ter.

States party to the Paris Convention, and international intergovernmental organizations (IGOs), of which one or more Member States are party to the Paris Convention may benefit from the application of Article 6ter.

In application of the Guidelines for the interpretation of Article 6ter(1)(b) and (3)(b) adopted in 1992 by the Assembly of the Paris Union, any program or institution established by an IGO and any convention constituting an international treaty may, under certain circumstances, benefit from the protection granted by Article 6ter(1)(b) of the Paris Convention.

The circumstances are as follows:

• the programs or institutions have been established by an IGO;
• the programs or institutions constitute a permanent entity within the IGO or are intended to do so;
• the agreements establish a permanent entity, or are intended to do so;
• the programs, institutions or agreements cannot be of a temporary nature;
• the objectives of the programs, institutions or agreements must be specified and clearly defined in the charter or articles of incorporation;
• the programs, institutions or agreements must have their own rights and obligations. In other words, the entity must be independent of the IGO (e.g., have its own executive secretary or director general, its own program and budget, staff, secretariat, or host country agreement), as detailed in the charter or enabling regulations.

The provisions of Article 6ter do not apply to the names, emblems and acronyms of non-governmental organizations.

How to apply Article 6ter
Procedure for requesting the application of Article 6ter

For the application of Article 6ter, the party requesting it must communicate, through the International Bureau, the sign or signs concerned to the parties bound to apply the said Article. This is done by means of a request for communication, transmitted to the International Bureau, which then communicates the signs concerned to the parties bound to apply Article 6ter in the form of a biannual electronic publication in the "Article 6ter Express" database on the WIPO website. The communication of State flags is not mandatory, although States may request it, if they so wish.

As a first step in the communication procedure, an informal exchange will take place with the International Bureau to ensure that the request for communication is complete. A draft request and a draft reproduction, in accordance with the requirements indicated below, should be submitted for comments by sending them to article6ter@wipo.int.

Once the International Bureau approves the drafts, the formal request should be sent to the International Bureau. A scanned copy can be sent (to the address article6ter@wipo.int

Source: WIPO