Trade Marks, Country Names and Misappropriation of National Identity
| DOI | 10.1093/jiplp/jpx005 |
| Date | 05 April 2017 |
| Pages | 297-306 |
| Year | 2017 |
| Published By | Oxford University Press |
Trade marks, country names and
misappropriation of national identity
Natalie GS Corthe´sy*
The significance of country names
‘Who am I?’ is the universal question that every person
poses in an attempt to understand their national iden-
tity and cultural DNA. There is increasing evidence of
traders attempting an emotional appeal to consumers
in order to elicit the purchase of goods and services
based on their national pride, or promote goods and
services from a foreign country because of their well-
known reputation for quality. Coca-Cola’s marketing
campaign in Switzerland which boasts an image of the
Swiss cross on the bottle cap accompanied by the words
‘Made in Switzerland’, is a case in point.
1
When branding products with country names, the
moral compass guiding the management of industrial
property has been ‘Thou shalt not lie’.
2
Article 6ter of
the Paris Convention
3
has clearly incorporated this per-
spective by providing for the protection of national em-
blems and like indicators from a heraldic point of view.
As a corollary, Article 10 therein implements safeguards
against unfair competition.
4
However, there is no spe-
cific mention of protection of official count ry names.
The Agreement on Trade-related aspects of Intellectual
Property (TRIPS Agreement),
5
is also silent on this ques-
tion but does buttress the earlier Madrid Agreement
6
on
the protection to be extended to appellations of origin
and geographical indications and the Lisbon Agreement
for the Protection of Appellations of Origin.
7
This conundrum is illustrated in the current dispute
between Iceland (the UK supermarket chain) and Iceland
(the country).
8
Since registering its trade mark in the UK
in 1970, Iceland (the undertaking) has successfully
The author
Natalie GS Corthe´sy is a PhD Candidate, CCLS,
Queen Mary University of London; she holds and
LLM (UCL) and LLB (UWI). Natalie is a Lecturer
in Law, The University of the West Indies, Mona
Campus, Jamaica and Attorney-at-Law qualified
to practise in Jamaica.
This article
Country names function like biometric data that
help consumers identify not only the authenticity
of the source of goods and services in the global
market place, but also their perceived reputation
for quality. The practice of co-branding with
country names to heighten the distinctiveness of
local brands, as well as their adoption as marks
for unconnected goods and services has left con-
sumers confused and countries disgruntled.
Historically, an unfair competition prevention
approach has been adopted vis-
a-vis international
IP protection of official country names. This art-
icle considers the extent to which broader issues
of sovereignty and nation branding have not been
given due credence in the debate on the legitimate
use of country names in trade.
It is argued that there has been a paradigm shift in
the significance of country names in international
commerce, which has prompted discussion of the
need for increased IP protection to embrace nation
brands as a unique genus of property, rather than
mere descriptors of origin or indications of quality.
* Email: n.g.s.corthesy@qmul.ac.uk.
1 Coca-Cola was invented in the USA in 1886, and came to Switzerland in
1936. The company asserts that today it is the top-selling soft drink in
Switzerland, possibly because 95% of the ingredients needed to make the
beverage are sourced from Swiss suppliers: see Coca-Cola’s public rela-
tions page on their official website in Switzerland, http://www.coke.ch/fr/
article-2/ (accessed 30 January 2017).
2 J Simon, More than banks, watches, cheese and tunnels - The new
approach to the “made in” question, and why you might be concerned,
Focus Europe, Lenz & Staehelin, July 2016, pp 56–57.
3 Paris Convention for the Protection of Industrial Property (adopted
20 March 1883, entered into force 3 June 1984, as amended on
28 September, 1979, (hereafter referred to as ‘Paris Convention’).
4 GHC Bodenhausen ‘Guide to the Application of the Paris Convention for
the Protection of Industrial Property’, WIPO Publication No 611 (2004).
5 Adopted 15 April 1994, entered into force 1 January 1995, 1869 UNTS
299 (TRIPS Agreement). See generally C Correa Trade Related Aspects of
Intellectual Property Right (Oxford University Press Oxford 2007).
6 Madrid Agreement for the Repression of False or Deceptive Indications
of Source on Goods (adopted 14 April 1891, entered into force 26 April
1970 as amended on 14 July 1967 (hereafter referred to as ‘Madrid
Agreement’).
7 Lisbon Agreement as amended 28 September 1979, entry into force 5
November 1983. (Stockholm Revision, 14 July 1967, as amended 28
September 1979) 923 UNTS 205.
8 See ‘Can a Brand Say “Product of Iceland”? UK Store: “No.” Iceland’s
Government: “Not so fast.” ’ Trademarks þBrands BLOG (30
September 2016), available at http://trademarksandbrands.corsearch.
com/can-a-brand-say-product-of-iceland-uk-store-no.-icelands-govern
ment-not-so-fast (accessed 5 February 2017).
V
CThe Author(s) 2017. Published by Oxford University Press. All rights reserved. doi:10.1093/jiplp/jpx005
Journal of Intellectual Property Law & Practice, 2017, Vol. 12, No. 4 297ARTICLE
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