GAC Geographic Protections Would Lead To Uncertainty, Inconsistent with Current Law

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By Joseph Wright

Jan. 6 — Increased protections for geographic names would create too much uncertainty for future generic top-level domain (gTLD) applicants, according to multiple comments received on a Governmental Advisory Committee subgroup proposal.

The proposed protection of a broader swath of geographic names also contravenes established international law, the comments said, which recognizes trademark protection but not the protection of geographic identifiers beyond the boundaries of individual nations.

The comments of the Business Constituency (BC), U.S. Chamber of Commerce, Intellectual Property Constituency (IPC), Domain Name Association (DNA) and International Trademark Association (INTA) each reflect these themes.

The changes proposed by the GAC would apply to subsequent gTLD rounds, which the Internet Corporation for Assigned Names and Numbers has said will likely get underway in 2017 or 2018.

Current Language and Proposed Changes

Under the current gTLD Applicant Guidebook, country names were explicitly excluded, while national capital names, geographic national subdivisions such as states or provinces required documentation of support or non-objection from the relevant national authority. City names require the same documentation to the extent the plans for the gTLD are primarily associated with the city itself. All gTLD applications are reviewed to determine whether the applied-for string is a geographic name under these definitions, and the guidebook suggests consultations with relevant authorities if there is any doubt about whether the string is a geographic name.

The GAC proposal, released Aug. 29, 2014, would expand the definition of geographic names under guidebook section to require agreement with relevant government and public authorities for any country, territory or place name as well as regional language or people descriptions.

Multiplicity and Uncertainty

The IPC said that the GAC proposal mischaracterizes geographic names by claiming they unavoidably evoke the geographic site and population to which they refer. The IPC provided numerous examples of terms that have one or more geographic meaning as well as a common non-geographic meaning.

For instance, “Cordoba” refers to a major city in Argentina, the province in which that city is located, a region of Andalusia in southern Spain, three different municipalities in Colombia, a city in Mexico and three historical Islamic states. It also refers to a particular brand of guitar, a musical work and the currency of Nicaragua.

Because of such multiple uses, the BC said, businesses seeking to apply for gTLDs would face uncertainty when conducting a search for geographic uses of a potential name. The proposal does not provide a comprehensive list of where applicants must search, the BC said, meaning businesses have no way of knowing when the required search has been satisfactorily completed.

“If business users are required to look beyond the list of prohibited strings in the Applicant Guidebook, then the purpose of such a list becomes unclear and potentially confusing,” the BC said.

Priority Under International Law

The GAC proposal asserted the primacy of geographic name protections over other competing interests. “The national community and geographic meaning of the requested strings as new gTLDs must prevail above any other interest,” the GAC said.

Not so, according to interests representing trademark owners and other stakeholders.

“It is well established as a matter of international law that there are no governmental or sovereignty rights attached to geographical names (and as such there also is no basis for enhancement of any rights),” the DNA said. “This has been debated through the World Intellectual Property Organization, an international treaty organization, and other fora without affording any rights to governments for geographical or place names.”

The INTA said that the balance between geographic name protection and trademark protection has been debated for over 100 years and is the subject of well-settled international law.

“For 130 years since the Paris Convention for the Protection of Industrial Property in 1883, through the WTO TRIPS Agreement of 1994, the global community has debated how to best balance these national concerns with legitimate protection of trademarks, many of which have some form of geographical significance,” INTA said. “Through the long line of global treaties, national statutes, bilateral and multilateral investment agreements, and court decisions since 1883, a vast body of international law has developed on how best to balance the sometimes competing interests of trademark owners and governments in this area of the law.”

That balance has been consistently weighed in favor of trademark interests, the IPC said, and governmental interests in geographic mark names are no different than private interests.

“Article 6ter of the Paris Convention part 1(b) makes clear that geographic names are not excluded from trademark registrability, and thus not subject to government consent requirements or exclusivity,” the IPC said. “No provision is made elsewhere in international law for the prioritization of government interests in geographic names over trademark rights.”

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