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 in paragraphs 2 and 3 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 transmit the communication to the other States party to the Paris Convention. Nevertheless, such a communication is not obligatory in respect of flags of States.

Any State receiving the communication of an emblem or other official sign may, within a period of twelve months from the receipt 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.

The protection offered by Article 6ter to any emblem or other official signs mentioned in paragraphs 2 and 3 above, communicated as indicated in paragraph 4, and which has not been the subject of an objection as indicated in paragraph 5, is not of a general nature. The purpose of Article 6ter is only 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 officials 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), member States of that Treaty are obliged to extend protection to 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."

States party to the Paris Convention are free not to grant protection to armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organizations to the prejudice of the owners of rights acquired in good faith before the entry into force, in that State, of the Paris Convention.

States party to the Paris Convention are also free not to grant protection where the use or registration of a trademark against which the protection is invoked does not suggest a connection with the intergovernmental organization concerned, or where such use or registration is probably not of such a nature to mislead the public as to the existence of a connection between the user and the organization.

A distinction has to be made between, on the one hand, flags of States and, on the other hand, State emblems other than flags, official signs and hallmarks, and emblems, including flags, names and abbreviations of intergovernmental organizations. In the case of the first category, the protection under Article 6ter will apply only to marks registered after November 6, 1925, that is, the date of the signature of the text of the Convention as revised at The Hague. In the case of the second category, this protection will apply only to marks registered more than two months after receipt of the communication made by the International Bureau of WIPO.

A general exception is made in cases of bad faith, where the member States even have the right to annul marks incorporating State emblems, signs and hallmarks, which were registered before November 6, 1925. Bad faith will probably be held to exist if the trademark has been registered in the knowledge that it incorporated the emblem, sign or hallmark concerned.

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.