Destination Paris

The Paris Convention 1883 is an international treaty that facilitates the registration of trade marks outside an applicants's home country.  Chief among its provisions is the right of foreigners to be teated the same as nationals.  As a general rule it provides that a trade mark registered in one country should be registrable in other countries.  Because countries modified their domestic trade mark legislation to accommodate accession to the treaty, trade mark laws around the world are very similar.  The Convention has been frequently revised.  At the 1911 Conference of Revision Article 6 was modified such that Article 6 2º read:

Les marques dépourvues de tout caractère distinctif, ou bien composées exclusivement de signes ou d'indications pouvant servir, dans le commerce, pour designer l'espèce, la qualité, la quantité, la destination, la valeur, Ie lieu d'origine des produits ou l'époque de production, ou devenus usuels dans le langage courant où les habitudes loyales et constantes du commerce du pays où protection est réclamée;

Through various revisions this became Article 6quinquies (B)(ii) which now reads:

lorsqu’elles sont dépourvues de tout caractère distinctif, ou bien composées exclusivement de signes ou d’indications pouvant servir, dans le commerce, pour désigner l’espèce, la qualité, la quantité, la destination, la valeur, le lieu d’origine des produits ou l’époque de production, ou devenus usuels dans le langage courant ou les habitudes loyales et constantes du commerce du pays où la protection est réclamée;

The official English translation of this provision states that trade marks cannot be refused unless (among other exceptions) :

when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;

Similar provisions found their way into EU Trade Mark Directives and Regulations.  Article 7 (1) of the EU Trade Mark Regulation includes prohibitions on the registration of:

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

The provision for refusal of signs that designate the intended purpose of the goods is interesting.  It is not clear why la destination in the original French text came to be translated as intended purpose in the official English translation, rather than the more prosaic destination.  The plain meaning of la destination is the destination.  While it may seem unusual now that goods might be marked with their destination, it is not unusual at all in the context of early 20th Century revisions of a treaty governing the international trade.  The raison d'être of the Paris Convention was to ensure that exporters could use the same mark for their goods abroad as they did in their home markets.  It is not unreasonable to imagine that the provision was intended to ensure that words designating the destination of exports could not be registered as trade marks.  That la destination appears so close to place of origin in the list also suggests that the plain meaning may be the correct one.  

The first official English translation was provided at Stockholm in 1967.  This used intended purpose.  A guide published by the BIRPI in the same year also used intended purpose. [1]  But prior to this, legislators and commentators were required to translate under their own initiative.  Many favoured destination.

Earlier translations of the Paris Convention and of national legislation that implemented its provisions suggests that there was a significant period of time for which la destination was translated simply as destination.  A US text detailing Trade Mark Laws of the World translated the provision in the Convention using the plain meaning.[2]  The same text translated provisions of the German Law of 12 May 1894 as Amended 31 March 1913 (presumably to incorporate the 1911 revisions to the Convention) as preventing registration of signs:

That consist exclusively of figures, letters, or of such words as contain information as to the manner, time and place of manufacture, as to the quality, as to the destination, or as to the price, quantity or weights of the goods. 

In 1943 an Austrian author, Heinrich Reif, writing from the United Kingdom noted that the: 

German Law for the Protection of Trade-Marks, as amended by the decree of June 14, 1932, in section 4, that the following are unregistrable: 

a. Free symbols ("Freizeichen").


b. Marks that consist exclusively in figures, letters, or such words, as contain statements about the kind, time or place of production, the quality, destination, price, quantity, or weight of the article.
 [3]

As a trade mark attorney with some twenty years experience, "Former Member of the Vienna Bar", and a native speaker of German there is no reason to suspect that he did not fully understand the meaning of the  German law.  Since this law clearly gave effect to the relevant provisions of the Paris Convention and was presumably translated directly from the French, it suggests that the German translators understood la destination to have its plain meaning.

North American translators routinely translated the provision using its pain meaning.  Destination appears in discussions in 1952, 1953, 1955 & 1956. [4,5,6,7] A 2005 discussion of the legislation of Venezuela in English translates the Spanish using the plain meaning.[8]

Although these translations of translations of the Paris Convention French text demonstrate how it might have been understood, Canadian law provides some first-hand insights.  As one of the countries with both English and French as official languages Canadian translations of the Paris Convention are instructive.  Canadian Law has always used the plain meaning of destination and still does.  It could be argued that in this respect Canada is not meeting its Paris Convention treaty obligations, since it has deviated from the English language text.  Although it is a brave commentator that would tell Canadian legislators that their translations from the French are inaccurate.

So it is not at all clear the language used in European legislation is an accurate translation of the provisions in the Paris Convention.  However, it cannot be argued at this stage that the legislature did not know what it was doing.

[1] G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property, BIRPI, Geneva, 1967 

[2]  John H. Ruege & W.B. Graham, Trade Marks Laws of the World, Trade Mark Law Publich Co., New York, 1922

[3] Heinrich Reif, Some Thoughts on the Selection of Trade-Marks, 33(6) The TradeMark Reporter 77 [1943], 98

[4] John Dashiell Myers, Recent Proposals for Revision of the International Trade-Mark Convention, 42 Trademark Reporter 516 (1952)

[5] John Dashiell Myers, Recent Activities of the International Association for the Protection of Industrial Property , 43 Trademark Reporter 557 (1953), 560

[6] Ex Parte Societe Fromageries Bel Commissioner of Patents-May 27, 1955, 45 Trademark Reporter 846 (1955), 850

[7] L. A. Ellwood, The Industrial Property Convention and the Telle Quelle Clause, 46 Trademark reporter 36 (1956)

[8] Venezuela, 95 Trademark Reporter 573 (2005), 473