Country Name Designation and International Ip Protection of National Competitive Identities

• Natalie G. S. Corthésy, PhD (QMUL), LLM (UCL), LLB (UWI) is Associate Dean of Outreach and Continuing Legal Education at the Faculty of Law, The University of the West Indies, Mona Campus, Jamaica.

This article

• Country names are incomparable value creators, synonymous with a State’s national competitive identity, and deserve sui generis protection. Three broad approaches to amplifying protection of country names against misuse and free riding in international commerce have emerged. First, the ‘Swissness’ model, which is a national statutory framework for the protection of the appellation ‘Swiss’. It is characterized by co-branding regulations,¹ and supplementing intellectual property (IP) protection with diplomacy through bilateral and plurilateral trade agreements.²

• Secondly, French jurisprudence affirmed—in France Atout v France.com³—that the appellation ‘France’ constitutes for the French government a reference to its economic, geographic, historic, political and cultural identity, and is understood by the public as signifying goods and services made in France.

• Thirdly, the multilateral approach, whereby the World Intellectual Property Organization (WIPO) Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) mechanism is being used to sift through divergent views of member states on protection of country names and coalesce recommendations into a norm setting instrument, has made some incremental cede way.

• The critical question that continues to provoke debate is whether member states should adopt an instrument modifying international IP policy to embrace increased IP protection of country names in keeping with the vicissitudes of modern global trade. The article highlights the recommendations made by the international community on this issue. A new IP classification, ‘country name designation’, is considered to encompass the extended function of country names as well as the author’s proposal for the creation of a sui generis multilateral IP framework. Exceptions and limitation to the scope of protection are also explored.

The rationale for IP protection generally is that the ability to exclude others and to grant licences for use will provide incentives for rights holders to share their creative intellectual output. In turn, this is beneficial to society, because it adds to the bank of information in the public domain and/or it augers well for increased trade and investment. Gervais suggests that this is the underlying issue that must be grappled with when considering the justification for geographical indication (GI) protection—GIs are not the intellectual creation of an identifiable author, rather they are premised on terroir.⁴ The international GI regime can provide a near impregnable barrier to third parties wishing to use a country name when branding particular goods where that country name is a geographical indication in respect of those goods.⁵

There is an unprotected zone in relation to country names, that is the non-existence of a positive proprietary right exercisable by States in respect of their country names. Consider Figures 1 and 2 below. Heightened protection of country names is of interest to consumers who may be confused about origin, undertakings who rely on co-branding to augment the value of their goods and services, and States who view country names as their national competitive identity.⁶ The desire for a multilateral solution is a pragmatic response as protection is only as strong as its reciprocal enforcement mechanism. This requires acquiescence that country names are distinguishable from other geographic place names, given their primordial importance as indicia of sovereignty.

The allied push for protection of nation brands stems from the concept that country names function like brands. The value of nation brands can be calculated using economic methodologies.⁷ There are potentially several creators of a nation brand. Andy Pike posits a geography of brands model dubbed ‘origination’; by constructing geographical associations with goods and services, value is added to those commodities.⁸ Thus, when well-known companies co-brand with a country name famous for a particular commodity, this helps propagate the view that the country concerned supplies quality goods and services; Swiss Swatch watches are a good example.⁹ This may not always result if there is no genuine connection between the business undertaking and the national cultural identifiers being relied on as a spring board for economic success. ‘Old Jamaica’ ginger ale, not made in Jamaica, sold and distributed in Europe is an example.¹⁰

Un-coincidentally, Jamaican ginger is world renowned for its exceptional quality.

Governments contribute to the creation of a nation brand by adopting strategies that will attract more tourist arrivals, increase foreign investment and bolster international success of products originating from the country.¹¹ This has an umbrella effect on local businesses. Renowned for its headquarters in Switzerland, food giant Nestlé is a good example of a multinational company that does not need to co-brand the wide range of its products with the country name Switzerland. Mutual benefit is derived by the government and the company irrespective of that. Being a manufacturer of well-known quality goods not made in Switzerland does not diminish the perception that Nestlé’s location in Switzerland imbues the products with other desirable qualities which the government has promoted Swiss brands are reputed for.¹²

Entrepreneurs who expatriate and establish businesses overseas that rely on the country name or other cultural identifiers also contribute to the nation brand.¹³ The role of the diaspora is significant because they influence the nation brand as business entities as well as consumers. Through their patronage, consumers collectively convert purchasing choices into goodwill associated with goods and services from the country concerned. Arguably, this thrusts a responsibility on undertakings to ensure the information provided to consumers about their product is not false.¹⁴ The author supports the view that, because consumers associate brands with cultural meanings, brands can be cultural icons of national, regional or global identities.¹⁵ Consequently, a false association might be deemed morally reprehensible and in certain instances misappropriation of culture. However, the concern is not misappropriation of culture to create brands.¹⁶ Rather, it is postulated that nation brand is an allied issue to the central concern of international IP protection of country names when used in a competitive global market place. The notion being advanced is not that authorship of the nation brand gives rise to ownership of the country name. Rather, that heightened IP protection of country names is necessary to take cognizance of nation States as rightful stakeholders in the use of their country name by third parties;¹⁷ this is particularly so because IP does not protect products or the wider concept of brand:¹⁸ it protects their reputation.¹⁹

Co-creation of a nation brand is dynamic, because it emerges and evolves out of the deliberate acts of public and private actors within and without the geographic boundaries of the country itself to project a certain image of the nation.²⁰ Creation of a country name, on the other hand, is the result of a conscious political decision which, though not immutable, generally enjoys longevity.²¹ A country name is important because it is synonymous with, or is the primary constituent element of, the nation brand.²² Both are inextricably linked in the realm of trade, culture and IP, because they each have a bond with the same geographic location.²³ However, as with all IP, authorship and ownership do not always coincide; individual ownership, community ownership or no ownership of country names is thus a going concern.²⁴

The Paris Convention²⁵ was intended inter alia to regulate consumer confusion, deception and unfair competition.²⁶ However, with the effluxion of time, trade practices that exploit country names to gain a competitive advantage in the global market place have shifted international attention to regulatory questions and policy issues regarding the use of country names in the IP system. The term ‘argotisation’ is coined by the author to reflect a more global definition of these trade practices.²⁷ It refers to behaviours encompassed by unfair competition in the strict sense, as well as unfair competition in the extended sense;²⁸ thus akin to parasitism²⁹ associated with free riding and moral turpitude.³⁰ Argotisation ‘denotes both the informal unregulated appropriation of country names in commerce, and the corresponding “swift” accumulation of goodwill and reputation that this can engender … which means distinctiveness in IP terms’.³¹ The debate on the intended definitional scope of ‘country names’ to be protected must necessarily exclude geographical names of national significance, and nation brands. A brand new IP nomenclature, ‘Country Name Designation’, considered below, may just be the maverick.

There is no homogeneity in how WIPO Member States treat with country names in their national IP systems.³² There is no requirement in most WIPO Member States to have or to make reference to a list of country names in their examination of trade mark applications.³³ The definition of ‘country names’ might include the official name of the State, its translation, transliteration, abbreviation, acronym, historical name, nick name, and other variations.³⁴ Trade mark examiners will usually be required to search various sources to determine whether the application under review incorporates a country name. These include UN databases, the WIPO database, national trade mark guidelines, gazettes and dictionaries.³⁵

The terms ‘country name’, ‘official name of state’ and ‘nation brand’ are not interchangeable...