GEOGRAPHICAL INDICATIONS AND GEOGRAPHICAL INDICATIONS AND APPELLATIONS OF ORIGIN: AN OVERVIEWAPPELLATIONS OF ORIGIN: AN OVERVIEW

Florence RojalLegal OfficerLisbon Registry Brands and Designs Sector

Tbilisi12 November

2012

Distinctive SignsDistinctive Signs

Distinctive Signs for Individual Use

Trademarks (goods & services)

Distinctive Signs for Collective Use

Collective marks

Certification marks

Geographical indications

Appellations of origin

Indications of source

Subject-Matter of Protection (GIs and AOs)Subject-Matter of Protection (GIs and AOs)

Indication of a Connection between Characteristics of Products and their Geographical Origin

Informs consumers of the uniqueness of the products derived from this connection (typicality)

Represents the collective goodwill derived from this uniqueness (reputation)

Value-addedThe higher the reputation the higher the commercial value

Differences between GIs and AOsDifferences between GIs and AOs

AOs (Lisbon, Art.2)Geographical denominationRefers to quality or characteristics of a specific productDue exclusively or essentially to the geographical environment (natural or human factors)

AO= Special category of GIOnly existing multilateral registration system for the protection of AOs

GIs (TRIPS, Art.22.1)

Indication

Refers to quality, reputation, or other characteristic

Essentially attributable to its geographical origin

GI can also be a symbol referring to or associated with a particular geographical area (e.g. the cartographic outline of France with a red itinerary for Burgundy wines)

Different systems of protection worldwideDifferent systems of protection worldwide Multilateral Agreements

Protection of GIs under TRIPSProtection of AOs under the Lisbon Agreement

-Legal protection they provide is based on various means of protection on the national level: an act of public law (law, decree, administrative decision, ordinance), or a judicial decision

Regional Systems of Protection (EU, OAPI…)

Bilateral AgreementsUnder such agreements two States or two trading partners agree to protect each other’s GIs

General laws focusing on business practices (unfair competition and consumer protection provisions)

Specific protection systems for GIs and AOs (sui generis)

Trademark law provisions devoted to collective marks and/or certification and guarantee marks

Administrative schemes of label control

Sui Generis Systems for GIs and AOsSui Generis Systems for GIs and AOs

Legal protection is based on an act of public law (law, decree (ex: France), ordinance (Switzerland)…) adopted at the conclusion of an administrative procedure involving representatives of the producers concerned and the government administration

A group or a natural or legal person may apply for the registration of a geographical indication or the promulgation of a decree establishing an appellation of origin

The application process typically involves an opposition procedure

Collective Marks and Certification or Guarantee MarksCollective Marks and Certification or Guarantee Marks

Collective MarksType of mark reserved for the use by the members of a collective body (ex: association or cooperative of manufacturers, producers or traders)

Certification MarksOwned by a certification authority (local government entity or private association which is not itself engaged in the production or the trade of the product concerned)

Agricultural Label Registered as a collective certification mark in the name of the entity that controls its use and certifies that a foodstuff or a non-transformed agricultural product (such as cereal seeds) possesses a combination of specific characteristics and a level of quality which is higher than that of similar products

Legal Regulation of Business PracticesLegal Regulation of Business Practices

Unfair Competition Law

Commercial practices which mislead the public with respect to the geographical origin of products constitute an act of unfair competition

Administrative Regulations

Administrative regulations of product labeling and food safety standards represent another means of ensuring fair trade and consumer protection

Regional systems of protection (EU)Regional systems of protection (EU)

Pecorino Romano (PDO)Pecorino Romano (PDO)

Arroz del Delta del Ebro (PGI)

Examples of Certification TrademarksExamples of Certification Trademarks

Collective MarksCollective Marks

Protection of GIs in Foreign MarketsProtection of GIs in Foreign Markets

Possible exceptions to exclusive rights over a GI:

Prior rights (previous TM rights, or good faith use)

Generic terms

Homonymous indications

Geographical Indications (GI) and Appellations of Geographical Indications (GI) and Appellations of Origin (AO)Origin (AO)

WIPO’s RoleWIPO’s Role

Administration of several international agreements relevant for the protection of GIs/AOs

Forum for discussion of possible ways to improve the international protection of GIs/AOs

Standing Committee on the Law of Trademarks, Industrial Designs and GIs Working Group on the Development of the Lisbon System

Provision of technical assistance

Technical AssistanceTechnical Assistance

Drafting Legislation

Application Criteria for Establishment GI or AO

Monitoring and Enforcement Procedures

Protection under International Treaties

Overview of the international instruments Overview of the international instruments related to the protection of GIs/AOsrelated to the protection of GIs/AOs

Paris Convention (1883)

Madrid Agreement (1891)

(repression of false and deceptive indications of source)

Madrid Agreement and Protocol (1891, 1989)

(international registration of marks)

Lisbon Agreement (1958)

Bilateral Agreements

TRIPS Agreement (1994)

Overview of the Lisbon AgreementOverview of the Lisbon Agreement

Established to facilitate the international protection of appellations of origin (AOs) through a single registration procedure

AO definition:‘The geographical denomination of a country, region, or

locality,which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors’.

Administered by WIPO, which keeps the International Register of AOs

Lisbon Union: 27 Member StatesLisbon Union: 27 Member States

Africa (6)Algeria

Burkina Faso

Congo

Gabon

Togo

Tunisia

Asia (4)Georgia

Islamic Rep. of Iran

Israel

DPR of Korea

America (6)Costa Rica

Cuba

Haiti

Mexico

Nicaragua

Peru

Europe (11)Bulgaria

Czech Rep.

France

Hungary

Italy

Moldova

Montenegro

Portugal

Serbia

Slovakia

The FYR of Macedonia

France 508

Czech Rep. 76

Bulgaria 51

Italy 31

Hungary 28

Georgia 20

Cuba 19

Mexico 14

Peru 8

Algeria 7

Total registered since 1995: 170

- of which since 2003: 55

Portugal 7

Tunisia 7

DPR of Korea 6

Slovakia 6

FYR of Macedonia 4

Serbia 3

Montenegro 2

Costa Rica 1

Israel 1

Moldova 1

905 registrations – 800 in force905 registrations – 800 in force

The Lisbon AgreementThe Lisbon Agreement

Substantive Requirements

Possible Responses by Other Contracting Parties

Legal Effect

Substantive Requirements (1)Substantive Requirements (1)

Protection in the country of origin. Ex ante recognition required (different means of protection allowed)

Protection in other Lisbon countries is subject to the Lisbon definition of “Appellation of origin” (Art. 2(1))

All categories of products can be protected under Lisbon (food, beverages, handicrafts…)

Substantive Requirements (2)Substantive Requirements (2)

Entitlement to file applications

The competent authority of the country of origin

Registration shall be effected in the name of those having, under their national legislation, a right to use the appellation

Possible Responses by Other Contracting Possible Responses by Other Contracting PartiesParties

Declaration of refusal (Art. 5(3) and Rule 9)-

Within one year

-indication of the ground of refusal (any ground)

Statement of grant of protection (Rule 11bis)

Advice of grant of a transitional period to third parties (Art. 5(6) and Rule 12)

Invalidation (Rule 16)

Ground for refusal: existence of 2 prior registered TMs using ‘Parma’ in Mexico

Ground for refusal: risk of confusion as to geographical origin of the product

Legal effect of an international registration under Legal effect of an international registration under LisbonLisbon

Ensures simultaneous protection against any usurpation or imitation of the registered AO in the other Lisbon countries (except: those that have refused or invalidated)

Protects the registered geographical denomination against becoming generic in any of those Member States (Art.6)

Provides standing for taking legal action (Art.8)

usurpation imitation

Scope of Protection Scope of Protection (Art. 3)(Art. 3)

even if true origin is

indicated

even if used in translated

form

even if accompanied by terms such as “kind”, “type”, “make”, “imitation”

Main objectiveMain objective

WG Mandate: Improve the Lisbon system to make it more attractive to users and potential new members of the Lisbon Agreement, while preserving the principles and objectives of the Agreement.

In sum:

Attract new members (i.e. through accession by IGOs)

Increase the number of international registrations

In particular, through the establishment of an international registration system for GIs

For further information…For further information…

Lisbon system web page: http://www.wipo.int/lisbon/en/

Registered Appellations of OriginRegistered Appellations of Origin                                      

The Bulletin “Appellations of origin” is the official publication of the Lisbon system. It is issued by WIPO for the publication of new registrations and other recordings in the International Register as well as information concerning changes in the legal framework of the Lisbon system. In addition, the Bulletin contains statistical information concerning registered appellations of origin.

The LISBON EXPRESS database The AO Bulletin

Example of an International Registration under Lisbon: Example of an International Registration under Lisbon: Huile d’Olive de la Vallée des Baux de Provence Huile d’Olive de la Vallée des Baux de Provence

(AO No. 806)(AO No. 806)

Registered on 29.06.98

Holder: Producers and groups of producers enjoying the appellation of origin in question

Area of Production: Delimited territory within the department of Bouches-du-Rhône

Legal Basis: Decree of August 27, 1997

Examples of Registered AOs under LisbonExamples of Registered AOs under Lisbon

                                                                                       

   

   

               

                            

   

             

                              

Interactive Lisbon World Map

THANK YOU

E-mail: florence.rojal@wipo.int