TRADE/WP.7/GE.1/2002/INF.10 (Secretariat)

USE OF TRADE MARKS IN UNECE STANDARDS

(1)	DISCUSSION AT THE 57TH SESSION OF THE WORKING PARTY:

Background

There were numerous exchanges between the secretariat and the United Nations Office of Legal Affairs, with representatives of Sun World and with other trademark holders and organizations which had helped to better understand the subject matter. It was identified as the main problem that in the UNECE lists of varieties the distinction between synonyms to the generic variety name and trademarks was not clear enough and might be misunderstood.

The main goal of the solution developed with the Legal Office was thus to clarify this distinction in a way that could be used in all relevant standards. This was done in an introductory note. For the actual mention of the trademarks two versions were proposed:

-	the first, maintaining the present two column list of varieties and other names with the inclusion of trademarks in endnotes to the relevant varieties;

-	the second, adding a third column and including trademark names there.

(see TRADE/WP.7/2001/9/Add.13 for the complete text of the legal advice)

Text to be included

The Working Party decided to follow the second version because the first would become too complicated for lists which contain many trademarks. However, for practical reasons, e.g. in the case of a reduced number of trademarks involved, the specialized sections may consider the first version, with footnotes rather than endnotes for specific standards.

The Working Party decided further that (based on the second version) the text clarifying the distinction between trademarks and varieties should be included at the beginning of the list of varieties as follows:

"Introductory note:	Some of the varieties listed in the following may be marketed under names for which trademark protection has been sought or obtained in one or more countries.

Names known by the United Nations to be trademarks for such varieties are not included in the list of varieties (first column) nor in the list of other names by which such variety may be known (second column). References to trademark names have been included (third column) for informational purposes only."

The Working Party agreed further that a disclaimer (possibly in a footnote) would be added to state the position of the United Nations:

"Disclaimer:

(1)	Some of the varietal names listed in the first column may indicate varieties for which patent protection has been obtained in one or more countries. Such proprietary varieties may only be produced or traded by those authorized by the patent holder to do so under an appropriate license therefor. The United Nations takes no position as to the validity of any such patent or the rights of any such patent-holder or its licensee regarding the production or trading of any such variety.

(2)	The United Nations takes no position as to the validity of any such trademarks or the rights of any such trademark owners or their licensees to mark such varieties under such trademarks.

(3)	The United Nations endeavoured to ensure that no trademark names are listed in the following. However, it is the responsibility of any trademark owner to notify the United Nations promptly if a trademark name has been included in the following listing and to provide the United Nations with an appropriate varietal, or generic, name for the variety as well as adequate evidence of the validity of any applicable patent or trademark regarding such variety."

The Working Party decided further that (based on the second version) the column headings of the list varieties should be as follows:

Variety	Other names by which the variety is known	Known trademarks which may only be used under license
...	...	...

Marking requirements

The Working Party discussed the question if trademark names could be used (by trademark holders) to fulfil the marking requirement under VI B. of the standards or if the varietal name (column 1) would always have to be marked. There were different opinions in the group.

Some delegations said that in many cases the varietal name was a code of numbers and letters and they preferred the trademark to be marked which would be more relevant information for the consumer/inspector. They stated the additional problem that for some produce the varietal name was not known but only the trademark (e.g. Pluot, Apriot, Plumcot).

The delegation of France said that in their country the marking of the variety was mandatory.

The Working Party decided that the question of marking should be discussed in the Specialized Section.

A comment from France on this question is available in INF.14

(2)	REACTION FROM SUN WORLD COMMUNICATED BY THE INTELLECTUAL PROPERTY ATTACHE OF THE UNITED STATES MISSION ON 14 NOVEMBER 2002

Reaction of Sun World to the decision of the Working Party

"Sun World advises us that like the PTO and the International Trademark Association (INTA), the firm remains strongly opposed to the use of trademarks in UNECE standards. But, if UNECE refuses to eliminate the trademarks, then Sun World has no choice but to accept one of the options. Sun World does not feel comfortable with either of them. However, if it is forced to choose, Sun World reluctantly chooses option 1, with the following modifications, since Sun World is adamantly opposed to option 2."

(Note by the secretariat: The proposal from Sun World has been put into the format of the text adopted at the Working Party).

Change the Introducotry note to read as follows:

"Introductory note:	Some of the varieties listed in the following may be marketed under names for which trademark protection has been sought or obtained in one or more countries.

"

Names believed by the United Nations to be varietal names are listed in the first column. Other names by which the United Nations believes the variety may be known are listed in the second column. Neither of these two lists are intended to include trademarks. References to trademarks have been included as endnotes for informational purposes only.

Change part (3) of the Disclaimer as follows:

"(3)	The United Nations endeavoured to ensure that no trademark names are listed in the following. However, it is the responsibility of any trademark owner to notify the United Nations promptly if a trademark name has been included in the following listing and to provide the United Nations with an appropriate varietal, or generic name for the variety as well as adequate evidence ownership of any applicable patent or trademark regarding such variety.

SunWorld proposes that the endnotes should read as follows:

"Fruit from this variety may only be marketed using the proprietary trademark .......... with the express authorization of the trademark owner."

(3)	REACTION FROM THE UN OFFICE OF LEGAL AFFAIRS

The Office of Legal Affairs believes that the changes proposed by Sun World are reasonable and sees no legal impediment to accept them. The Office of Legal Affairs affirms that ultimately it is up to ECE to determine precisely how the standards should be worded.

(4)	PROPOSAL FROM THE SECRETARIAT FOR THE WORDING OF THE LIST OF VARIETIES FOR TABLE GRAPES

Taking into account the decisions under (1) and the comments under (2) and (3) it seems at present reasonable and practical to propose option one (reference to trademarks in notes) because only two trade marks are mentioned in this standard.

The Working Party decided that if option 1 was chosen then it should be done with footnotes rather than endnotes.

The text changes proposed by Sun World were cleared by the UN Office of Legal Affairs and are thus included in the text. The secretariat proposes only to word the foonotes even clearer to avoid any misunderstanding.

No proposal is made for the marking requirements.

"	LIST OF VARIETIES NON EXHAUSTIVE1

"Introductory note:	Some of the varieties listed in the following may be marketed under names for which trademark protection has been sought or obtained in one or more countries.

Names believed by the United Nations to be varietal names are listed in the first column. Other names by which the United Nations believes the variety may be known are listed in the second column. Neither of these two lists are intended to include trademarks. References to trademarks have been included as footnotes for informational purposes only.

I.	Table grapes grown under glass

...(no change)

II.	Open-grown table grapes

(a)	Large berry varieties

......(no change)........

Salba

Schiava grossa	(Black Hambourg - Frankenthal - Gross Vernatsch -Imperator - Lamper Schiavone - Trollinger)

Sonita

Sugraone2

Sugrafive3

Sunred Seedless

Tchaouch (Chaouch - Parc de Versailles - Tsaoussi)

Verico

Victoria

(b)	Small-berry varieties

....(no change)..."