I. As many here know, four or five years ago Watch Tower Society of Pennsylvania tried to register JW.ORG and JW LIBRARY trademarks in US, but USPTO refused registration due to likelihood of confusion with JW PLAYER trademark. But it was not the end. WTS petitioned for cancellation of registration for the latter mark, and later have settled with its owner: both parties agreed that the JW PLAYER registration and the JW.ORG and JW LIBRARY Marks can co-exist without a likelihood of confusion. Then WTS could obtain the registration - and on Aug. 25, 2015 it was granted. Now Watch Tower Pennsylvania owns the following registered trademarks (in addition to the old "Watch Tower", "Awake!" and "Watch Tower Library" ones):
JW.ORG - registered on Aug. 25, 2015 and Jan. 24, 2017;
JW LIBRARY - registered on Aug. 25, 2015;
JW - registered on Oct. 31, 2017 (the second application; the first one was refused).
The US registration extends to all US states and possessions, including Puerto Rico, Guam, the US Virgin Islands, the Northern Mariana Islands, and American Samoa.
II. Watch Tower Society also moved to extend the JW.ORG trademark protection. On Nov. 2, 2015 it obtained international registration under the WIPO's Madrid System. The international application was based on the second US application (filed on May 13, 2015; registered by USPTO on Jan. 24, 2017). It should be noted that international registration doesn't automatically extend to all Madrid System member states but only to designated by applicant; a national trademark office has also power to refuse protection within the prescribed time limit (generally 12 or 18 months from receiving notification of international registration; see article 5(1) and (2) of the Madrid Protocol). Such refusal is provisional, it may be overturned or confirmed by national office. Caribbean Netherlands (3 territories: Bonaire, Sint Eustatius and Saba (BES)) is the only jurisdiction in which protection is granted automatically with the designation.
Watch Tower
Society designated all the Madrid Union jurisdictions (excluding EU member
states because it designated the EU itself). For example, the Society requested
for extension of protection to, among others, Bahrein, Iran, Singapore, Syria, Turkmenistan, and Uzbekistan.
The move was generally successful.
First, the EU, the OAPI (African Intellectual Property Organization), 36 countries [1], including Australia, China, Israel, Japan, Mexico, Singapore and Switzerland, and two Dutch territories (Curaçao and Sint Maarten) sent to the WIPO's International Bureau statements of grant of protection. The EU protection extends to all 28 EU member states (and probably to Vatican), 11 (including 10 inhabited) French territories [2], and some British dependencies [3]. OAPI designation covers its 17 member states [4]). Australian protection extends to the Cocos Islands, Norfolk Island, and Christmas Island.
Second, 21 countries [5] neither have explicitly granted nor have refused protection within the prescribed time limit; since art. 5(2)(c) of the Madrid Protocol and Rule 5 of the Common Regulations are likely inapplicable, JW.ORG trademark is protected or should be protected in these countries.
On other hand, some countries and regions (mainly in Africa) failed to implement their international obligations as members of Madrid Union into national law. They "have not yet enacted domestic legislation so as to explicitly provide protection for marks designated under the International Registration system. It is therefore doubtful that designations will be enforceable in these countries".
Third, only two countries (Russia and South Korea) have confirmed their provisional refusals, and only five countries (Antigua and Barbuda, Columbia, India, Syria, Uzbekistan) have still neither confirmed nor reversed ones. There is high probability that some refusals will have been canceled as had already happened 7 times.
So, thanks to the WIPO's Madrid System, JW.ORG trademark is now protected (or should be protected) in up to 103 countries and 15 - 17 (or slightly more) inhabited territories.
III. Almost all Central and Southern American countries as like as many African, Asian, Caribbean and Pacific states and territories are still not members of the Madrid System; that's why WTS had to file national applications on JW.ORG trademark. I know about the applications filed in Argentina (registered), Brazil (pending [6]), Canada (pending), and Hong Kong (registered). Finally, JW trademark is now registered in Australia, EU, and New Zealand (the cancelled international registration was successfully transformed into the national applications, and JW trademark’s protection wasn’t damaged by so-called “central attack”); the application before Canadian IP Office is pending.
Information about status of trademarks is available in WIPO GBD and TMview international databases:
I would be
grateful for any further information or clarification.
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[1] Albania, Algeria, Armenia, Australia, Belarus, Bhutan, Cambodia, China, Cuba, Georgia, Iceland, Israel, Japan, Kazakhstan, Kyrgyzstan, Liechtenstein, Madagascar, Mexico, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, New Zealand, Norway, Oman, Philippines, San Marino, Serbia, Singapore, Switzerland, Tajikistan, Turkey, Turkmenistan, Ukraine.
[2] French Guiana, French Polynesia, French Southern and Antarctic Lands, Guadeloupe, Martinique, Mayotte, New Caledonia, Réunion, Saint Martin (French part), Saint Pierre and Miquelon, as well as Wallis and Futuna.
[3] Probably Gibraltar, Island of Man, and Jersey; there are conflicting statements and opinions on this point: link 1, link 2, link 3; link 4.
[4] Benin,
Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, The Republic
of Congo, Côte d'Ivoire, Gabon, Guinea, Guinea Bissau, Equatorial Guinea, Mali,
Mauritania, Niger, Senegal and Togo.
[5] Azerbaijan, Bahrein, Bosnia and Herzegovina, Botswana, Egypt, Ghana, Iran, Kenya, Lesotho, Liberia, Macedonia, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Vietnam, Zambia, Zimbabwe.
[6] Interestingly, there also is a history of JW.ORG trademark applications filed by Associação Torre de Vigia de Bíblias e Tratados (WTS Brazil). One application was refused; another was successful but WTS Brasil later petitioned to cancel the registration.
