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Cdip/9/Inf/5 Original: English Date: March 14, 2012

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Cdip/9/Inf/5 Original: English Date: March 14, 2012 E CDIP/9/INF/5 ORIGINAL: ENGLISH DATE: MARCH 14, 2012 Committee on Development and Intellectual Property (CDIP) Ninth Session Geneva, May 7 to 11, 2012 STUDY ON MISAPPROPRIATION OF SIGNS* prepared by Mr. Martin Senftleben, Professor, VU University Amsterdam, The Netherlands including region and country reports prepared by Mr. Barton Beebe, Professor, New York University, New York, United States of America (report on Canada and United States of America) Ms. Tammy Bryan, Partner, George Walton Payne & Co., Bridgetown, Barbados (report on the Caribbean Region) Ms. Ksenia Fedotova, Member, UNESCO Chair of Copyright and Intellectual Property Rights Moscow, Moscow, Russian Federation (report on the Russian Federation) Mr. Dev Gangjee, Lecturer, London School of Economics, London, United Kingdom (report on India) Mr. Michael Handler, Associate Professor, University of New South Wales, Sydney, Australia (report on Australia and the South Pacific) Mr. Mauricio Jalife, Instituto de Propriedad Intelectual y Derecho de la Competencia (IPIDEC), Mexico City, Mexico (report on Central America) Mr. Pierre El Khoury, Professor, La Sagesse Law School, Beirut, Libanon (report on the Arab Region) * The views and opinions expressed in this Study are the sole responsibility of the authors. The Study is not intended to reflect the views of the Member States or the WIPO Secretariat. CDIP/9/INF/5 page 2 Ms. Nari Lee, External Research Associate, Max Planck Institute for Intellectual Property and Competition Law, Munich, Germany (report on Japan and Korea) Ms. Susanna H.S. Leong, Associate Professor, National University of Singapore, Singapore (report on ASEAN) Ms. Xiuqin Lin, Professor, and Ms. Huijuan Dong, Researcher, Xiamen University, Xiamen, China (report on China) Mr. Bernard Martin, Associate Professor, University of the Western Cape, Cape Town, South Africa (reports on ARIPO and South Africa) Ms. Ana María Pacón, Professor, Catholic University of Peru, Lima, Peru (report on the ANDEAN Community) Mr. Mariano Riccheri, Lecturer and Researcher, Universidad de Alcalá, Madrid, Spain (report on MERCOSUR) Mr. Martin Senftleben, Professor, VU University Amsterdam, Amsterdam, The Netherlands (report on the European Union) Mr. Dashaco John Tambouto, Professor, University of Yaoundé II, Yaoundé, Cameroon (report on OAPI) 1. The Annex to this document contains a Study on Misappropriation of Signs prepared under the project on Intellectual Property and the Public Domain (CDIP/4/3/REV). This Study has been prepared by Mr. Martin Senftleben, Professor, VU University Amsterdam, The Netherlands, in collaboration with a group of international experts who prepared country and region reports. The Study explores the notion of “public domain” in relation to trademark law and includes a fact-based analysis of the trademark laws in different regions and countries. The document also contains a summary of the main findings of the reports and offers an impact assessment and concluding remarks addressing the question which criteria can be applied to determine the preferable strategy to prevent the misappropriation of common patrimony signs and the abusive appropriation of signs that should remain available for the public. 2. The CDIP is invited to take note of the information contained in the Annex to this document. [Annex follows] CDIP/9/INF/5 ANNEX I. EXECUTIVE SUMMARY 3 II. INTRODUCTION 8 III. THE NOTION OF THE PUBLIC DOMAIN 9 A. Rationales of trademark protection 9 B. Mechanisms for preserving the public domain 11 C. Ineligibility for trademark protection 11 D. General exclusion from trademark protection 13 E. Inherent limits of exclusive rights 15 F. Limited exceptions 19 G. Public domain in relation to trademark law 21 IV. FACT-BASED ANALYSIS OF TRADEMARK LAWS 22 A. African Regional Intellectual Property Organization (ARIPO) 23 1. Scope of trademark protection in general 24 2. Misappropriation of signs belonging to a common patrimony 30 3. Abusive appropriation of signs that should remain usable 34 4. Conclusion 36 B. African Intellectual Property Organization (OAPI) 37 1. Scope of trademark protection in general 38 2. Misappropriation of signs belonging to a common patrimony 46 3. Abusive appropriation of signs that should remain usable 51 4. Conclusion 53 C. South Africa 54 1. Scope of trademark protection in general 55 2. Misappropriation of signs belonging to a common patrimony 61 3. Abusive appropriation of signs that should remain usable 65 4. Conclusion 68 D. Canada and United States of America 69 1. Scope of trademark protection in general 70 2. Misappropriation of signs belonging to a common patrimony 76 3. Abusive appropriation of signs that should remain usable 81 4. Conclusion 84 E. Caribbean Region 84 1. Scope of trademark protection in general 85 2. Misappropriation of signs belonging to a common patrimony 89 3. Abusive appropriation of signs that should remain usable 92 4. Conclusion 96 F. Central America 97 1. Scope of trademark protection in general 97 2. Misappropriation of signs belonging to a common patrimony 104 3. Abusive appropriation of signs that should remain usable 107 4. Conclusion 109 G. ANDEAN Community 110 1. Scope of trademark protection in general 111 2. Misappropriation of signs belonging to a common patrimony 118 3. Abusive appropriation of signs that should remain usable 124 4. Conclusion 129 H. MERCOSUR 130 1. Scope of trademark protection in general 131 2. Misappropriation of signs belonging to a common patrimony 140 3. Abusive appropriation of signs that should remain usable 146 4. Conclusion 154 I. Arab Region 156 1. Scope of trademark protection in general 157 CDIP/9/INF/5 Annex, page 2 2. Limitations on the scope of trademark protection 164 3. Conclusion 168 J. China 169 1. Scope of trademark protection in general 169 2. Misappropriation of signs belonging to a common patrimony 174 3. Abusive appropriation of signs that should remain usable 176 4. Conclusion 179 K. India 181 1. Scope of trademark protection in general 183 2. Misappropriation of signs belonging to a common patrimony 192 3. Abusive appropriation of signs that should remain usable 196 4. Conclusion 198 L. Japan and Korea 200 1. Scope of trademark protection in general 200 2. Misappropriation of signs belonging to a common patrimony 207 3. Abusive appropriation of signs that should remain usable 214 4. Conclusion 219 M. ASEAN 221 1. Scope of trademark protection in general 221 2. Misappropriation of signs belonging to a common patrimony 226 3. Abusive appropriation of signs that should remain usable 227 4. Conclusion 231 N. Australia and the South Pacific 231 1. Scope of trademark protection in general 233 2. Misappropriation of signs belonging to a common patrimony 239 3. Abusive appropriation of signs that should remain usable 245 4. Conclusion 248 O. Russian Federation 249 1. Scope of trademark protection in general 250 2. Misappropriation of signs belonging to a common patrimony 255 3. Abusive appropriation of signs that should remain usable 260 4. Conclusion 263 P. European Union 264 1. Scope of trademark protection in general 265 2. Misappropriation of signs belonging to a common patrimony 269 3. Abusive appropriation of signs that should remain usable 274 4. Conclusion 279 V. SUMMARY OF FINDINGS 280 A. General exclusions from protection 280 1. Common patrimony signs 280 2. Signs that should remain usable by the public 283 B. Regulation on the basis of the requirement of distinctiveness 284 1. Common patrimony signs 284 2. Signs that should remain usable by the public 285 C. Breathing space resulting from inherent limits of exclusive rights 286 D. Exceptions keeping certain forms of use free 288 VI. IMPACT ASSESSMENT AND CONCLUSION 289 A. Differences in the application of the legal instruments 289 B. Impact assessment 290 1. General exclusions from protection 290 2. Regulation on the basis of the requirement of distinctiveness 291 3. Inherent limits of and exceptions to trademark rights 292 C. Conclusion 294 CDIP/9/INF/5 Annex, page 3 I. EXECUTIVE SUMMARY Notion of “public domain” In relation to trademark law, the public domain can be understood to consist of all signs that are ineligible for, or excluded from, trademark protection. Moreover, the public domain can be understood to comprise forms of using trademarked signs that remain unaffected by the exclusive rights of the trademark owner. This notion is examined with reference to the appropriation of signs that should remain freely available to the public, and to the misappropriation of signs owned by specific collectivities. Legal instruments offered by trademark law Trademark law offers different legal instruments to keep signs and certain forms of use free. Firstly, signs may be kept free by generally excluding them from registration and protection as trademarks, for instance, on the grounds that the sign is contrary to morality or public order, that it is not visually perceptible or incapable of graphical representation, or that the grant of trademark protection would amount to awarding exclusive rights to the product itself rather than protecting a source identifier attached to the product. Exclusions of this kind have an absolute effect in the sense that the acquisition of trademark rights is generally impossible, even if the sign concerned is inherently distinctive or has acquired distinctive character as a result of use in trade. Secondly, signs incapable of satisfying the basic protection requirement of distinctiveness remain free of trademark rights. This second legal instrument has
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