Inter-governmental organizations (IGOs) are groups of sovereign member states collaborating on issues of mutual interest. The most common commercial identifiers of IGOs are typically abbreviations derived from their names. These abbreviations serve not only as concise identifiers but also as commercial symbols replacing the full names of these organizations. This article analyzes the protection mechanisms for abbreviations of international organizations under Article 6ter of the Paris Convention and the challenges in registering confusingly similar trademarks in Vietnam.
1. General Protection Mechanism for Abbreviations of International Organizations
Article 6ter of the Paris Convention for the Protection of Industrial Property safeguards coats of arms, flags, and other emblems of member countries, as well as official signs and emblems adopted by them, against unauthorized registration and use as trademarks. This provision was expanded in 1958 to include abbreviations and names of inter-governmental organizations (IGOs) of which one or more member states of the Paris Convention are members.
Article 6ter does not create trademark rights or any other intellectual property rights for the signs protected under this provision. However, it provides special protection for the symbols and names of inter-governmental organizations, including their abbreviations.
In 1992, the Paris Union Council adopted Guidelines clarifying that any program or organization established by an inter-governmental organization and any agreement constituting an international agreement may, under certain conditions, benefit from the protection provided by Article 6ter(1)(b) of the Paris Convention.
2. Protection Mechanism for Abbreviations of International Organizations in Vietnam
Under the provisions of Vietnam’s Intellectual Property Law, whether the abbreviation of an international organization is protected as a trademark or not, it has the right to prevent registration by any entity if such registration would cause confusion within the community. According to Article 73.2 of the Intellectual Property Law, signs not eligible for trademark protection include:
- Signs identical or similar to the extent that they cause confusion with symbols, flags, emblems, abbreviations, or full names of state agencies, political organizations, socio-political organizations, socio-professional political organizations, social organizations, and international organizations of Vietnam, unless permitted by the relevant authority or organization.
This means that any trademark identical to or confusingly similar to the abbreviation of an international organization will be immediately rejected for registration by the National Office of Intellectual Property of Vietnam (NOIP). A trademark is considered identical to the abbreviation if it consists solely of the abbreviation. A trademark is considered confusingly similar if the abbreviation, when combined with another distinctive element, still independently creates recognition within the community, leading to potential confusion.
The Vietnam Intellectual Property Office recognizes only one exception: if the trademark has received the written permission from the relevant international organization. This approval letter is essentially similar to a “Letter of Consent” from a trademark owner allowing another party to use their registered sign to form a trademark application and not opposing the filing of this trademark application. However, the main difference is that the abbreviation of an international organization does not need to be a registered trademark. It is inherently distinguishable based on the widely recognized reputation and prestige of the international organization. Due to the special nature of this subject and the strict “permission” mechanism required by the internal demands of international organizations, the Vietnam Intellectual Property Office will always agree to evaluate these signs for trademark registration as long as the applicant can prove the permission. In such cases, the Vietnam Intellectual Property Office will waive concerns about whether the use or registration of such abbreviations could potentially confuse the public, which is entirely different from the registration mechanism for trademarks refused on the basis of the prior cited trademarks, regardless of the presence of a “Letter of Consent” from the cited mark holder.
3. Considerations to Avoid Risks of Trademark Applications Confusingly Similar to Abbreviations of International Organizations
In line with Article 6ter, protection applies only to coats of arms, flags, other emblems, abbreviations, and names of inter-governmental organizations whose protection has been notified to member countries through the International Bureau.
Currently, some applicants only become aware that their trademark application is confusingly similar to the abbreviation of an international organization upon receiving a notice of rejection from the local office. This results in wasted time pursuing the application and may affect business strategies, especially given the lengthy examination period for trademark applications (typically 9-18 months on average).
This issue often arises due to limited information and the restricted scope of use of IGO abbreviations. Some IGOs operate regionally with membership limited to specific states or provinces within designated regions, thereby limiting the global recognition of their abbreviations beyond the applicant’s awareness.
To minimize the risk of having a trademark application rejected for being confusingly similar to an abbreviation protected under Article 6ter, applicants can consult two primary sources of information:
- Internal archives of the local National Office of Intellectual Property: To access this source, applicants need to conduct direct inquiries at the Intellectual Property Office where they intend to file the application.
- WIPO Article 6ter database: On the WIPO website (https://www.wipo.int/en/web/article-6ter/), applicants can preliminarily check whether the trademark they plan to register is confusingly similar to the abbreviation of an international organization currently or previously protected under Article 6ter.
Below are some abbreviations of international organizations that have been notified for protection under Article 6ter through the International Bureau:
| Details of Article 6ter sign[1] | ||||
| Article 6ter sign | 6ter Number | Organization | Address | Publication Date |
| OHIM | EM6 | Office for Harmonization in the Internal Market (Trademarks and Designs) | Rue de la Loi 200, Brussels, B-1049, Belgium | 20.01.1998 |
| ASEAN | QO780 | Association of Southeast Asian Nations | 70 A JL. Sisingamangaraja, Jakarta, 12110, Indonesia | 14.11.2003 |
| UNFCCC | QO565 | United Nations Framework Convention on Climate Change (New York, 1992) | P.O. Box 260124, Bonn, D-53153, Germany | 31.03.2000 |
| APEC | QO393 | Asia-pacific Economic Cooperation | 35 Heng Mui Keng Terrace, Singapore, 119616, Singapore | 13.12.1995 |
| INTERPOL | QO287 | International Criminal Police Organization | 200, quai Charles de Gaulle, Lyon, 69006, France | 22.01.1981 |
| UNICEF | QO151 | United Nations Children’s Fund | 3 U.N. Plaza, 13th floor, New York, N.Y. 10017, United States of America | 05.11.1975 |
| WHO | QO20 | World Health Organization | Avenue Appia 20, Geneva 27, 1211, Switzerland | 24.08.1962 |
| WCO | QO950 | World Customs Organization | 28.02.2006 | |
| OECD | QO693 | Organization for Economic Development | 20.03.2002 | |
[1] Source: https://6ter.wipo.int/
By Le Thi Dung
Trademark Department
