Non-conventional marks and the obstacle of functionality: WIPOs role in fleshing out the telle quelle rule

The body of international trade mark law has grown considerably since the 1883 text of the Paris Convention, and has developed into a complex web of procedural and substantive stipulations. This has created an efficient system for international registration of marks and resulted in more detailed international rules about eligibility for protection, scope and limitations of the rights conferred, conditions for rejecting or invalidating trade mark rights in the case of non-use, limits on encumbering use, and the conditions on which assignments and licenses may be granted. By contrast, rather limited attention has been paid at the international level to what is usually referred to as ‘absolute grounds’ for refusal, that is grounds for denying trade mark registrations because the registration sought would interfere with a public interest (as opposed to conflicting with an earlier private right). So far as any international norm on this subject is concerned, it is to be found Article 6quinquies(B) of the Paris Convention, but the interpretation and application of this provision – crafted in an era when trademarks were usually word marks, or at most signs containing pictorial elements – does not address what today is referred to as ‘non-conventional’ or ‘non-traditional’ marks. Article 6quinquies(B)(iii) of the Paris Convention also permits rejection of marks that inter alia are contrary to morality or public order. The relationship between those concepts and trade mark registration is not clear and courts in several countries recently have had to grapple with national provisions reflecting this ground for refusal. However, there has been no meaningful consideration of this issue at the international level, and the authors argue that this opens a field for WIPO activities. Rather than promulgating new treaty revisions or instruments addressing substantive provisions – a task that has proved notoriously difficult since 1967 – WIPO would be better pursuing the path already successfully explored around the turn of the century, when ‘Joint Recommendations’ were elaborated in the framework of the WIPO Standing Committee on Trademarks, Designs and Geographical Indications (SCT).