Transcript Ida Puzone
oriGIn,
the Global Alliance of GI Producers
AAAML - XI International Congress
Geographical Indications and Trademarks
Parma 15-16 March 2013
GIs: a global reality
EU: some 3.000 GIs (not including non-agri GIs) , 54 billion
EUR worldwide
Several third-country GIs protected in the EU
Some 1.000 GIs protected in China and 150 in India (growing
phenomenon in Asia)
Dynamism in Central and South America more than 300 GIs !
Technical assistance projects in Africa : First 3 GIs registered
at OAPI
Producers’ interest in “skeptical” countries (US, Argentina,
Chili)
oriGIn: Unity is Strenght !
oriGIn: the organisation of GI producers’ groups
Established in 2003 as a non-for profit organisation
Some 350 members from 45 countries
Secretariat based in Geneva
Presidency: Mr. Ramón González Figueroa, Director
General, Consejo Regulador del Tequila (CRT)
VPs in each continent
oriGIn goals
Strengthen the protection of GIs at the national,
regional and international level
Promote GIs as a tool for sustainable development
Facilitate exchange of “best practices” among GI
producers and specialists
How do the USA, China and Russia
protect Geographical Indications?
The growing interest for GIs in the US
oriGIn’s campaign in the US
Promoted a debate on American
origin products
oriGIn Handbook : AOP Potential &
Shortfalls
Support to the establishment of the
American Origin Products Association
How does the USA protect GIs?
Traditional commercial trademarks
Collective marks
Certification marks
American Viticultural Areas (AVAs) and Political
Appellations for US wines with GIs
Certification marks (Lenham Act)
“Marks used by a person other than its owner… to
certify regional or other origin, material, mode of
manufacturing, quality…”
Exemption from the need of names to have acquired a
secondary meaning
The owner cannot use the certification mark
Owner authorizes producers to use the certification
mark and carries out controls
Shortfalls
No list of GIs (issue of transparency)
Preexisting marks?
Registration costs: 10,000 US$ in the US
“Non-participatory approach”: Kona Coffee registered as CM
by the State of Hawaii (10% Kona Coffee requirement)
Monitoring the use of the certification mark (including
license requirements): more 200,000 US$ per year spent by
the Idaho Potato Commission (IPC)
Shortfalls
Protecting TMs from dilution and becoming generic as
well as preventing the registration of confusingly
similar marks (USPTO approach in dealing with TM
requests containing CMs)
An opposition proceeding can excess 100,000 US$
(FNC spent over 500,000 US$ in oppositions only in
2007)
Litigation: more than 1,000,000 US$ spent by the IPC in
enforcement cases in NY over the past 12 years
The GI wine sector: a sui generis system
Administered by the Alcohol and Tobacco Tax and Trade Bureau
(TTB)
AVAs (a delimitated grape growing region distinguishable by
geographical features, the boundaries of which have been
recognized and defined by the TTB): some 200 exist today
Political Appellations (name of country, states and counties)
Criteria to use an appellation of origin in wine labels (75% of
grapes grown in the area for political appellations and 85% for
AVAs)
Sui generis v. TM systems
Sui Generis
Trademarks
No need of secondary meaning
Need of secondary meaning (except
certification marks)
Possible coexistence (good faith)
“First in time first in right” principle
Collective ownership
Individual ownership (except collective and
certification marks)
Indefinite protection
10-year protection + need to use
Registered names never “generic”
Name not shielded from “genericity”
Covers protection translation + with
expressions like « style » + evocation
Protection: likelihood of confusion
approach
No registration costs / single fee
Registration costs + renewals
Private and Public enforcement
Private enforcement
Emerging economies,
an opportunity for GIs
GIs in the BRICs
Protecting GIs in the most important markets export is
a priority
oriGIn’s practical manual for GI producers’ groups
Do you understand Chinese?
Sui generis system
Trademark System
Ministry of Agriculture
GI Protection Systems in China
Sui Generis (AQSIQ)
GI Protection - Decree N.78/2005 (Ministerial rules)
Special Origin Label to distinguish a “PGIP” product with GI
GI definition applies to any kind of goods, including handicrafts and
traditional Chinese medicines, no services
Trademark regime (SAIC)
GIs protected trough Certification Marks or Collective Marks according
to the Trademark Law (2001) (Legislation)
Mesure for special sign for GIs under TM system 2007
All kind of goods and services
Sui Generis Agri Products (MoA)
Mesures for GIs of Agri Products 2008 (Ministerial rules)
Primary products & products obtained in agricultural activities
GI= name of the geographical area + general name of the agri product
Protecting GIs in the
Russian Federation
In 2008, IP Legislation Reform
Part IV of the Civil Code - Sui Generis System
GI definition applies to any kind of goods
Trademark System – Obligation to disclaim the
geographical name in the application
Competent authority for GIs Registration: Rospatent
Protecting GIs in the Russian Federation
The principle of ‘joint titles’: sum of individual titles on
the same GI
Each producer has to prove to meet requirements
established by the law
Legal protection 10 years + renewal
Foreign GIs : ownership over the right in the country of
origin
Single collective right-EU System /Certification marks
Some conclusions
GIs protected in China
EU-China project 10+10 recently finalized
As of june 2009, 932 Chinese GIs (AQSIQ System )
Foreing GIs registered: Cognac, Scotch Whisky, Napa Valley
GIs protected in Russia
GI Register in Russia: some 149 entries
Foreign GIs protected: Prosciutto di Parma and Tequila
BRICs have established Sui Generis Systems to protect GIs
Foreign GIs can be protected under those systems
VI General Assembly of oriGIn
and International Conference
Bordeaux, France
20-21 May 2013
Thank you!
Ida Puzone , Project Manager
@ [email protected]
http://www.origin-gi.com
@oriGInNetwork