Transcript How Patents, Trademarks and Geographical Indications

“Collective Marketing: Adding Value
through Geographical Indications,
Certification Marks and Collective
Marks”
Mboya Rose
Dar es Salaam, Tanzania
22-26TH AUGUST, 2011
PRESENTATION OUTLINE
• Brief introduction to trademarks
• Certification marks and collective marks
• Geographical indications and their
economic significance
• The Case of Developing Countries
• Enforcement of GIs
objectives
• The participants should be able to differentiate
between trademarks, collective marks,
certification marks and Geographical indications
• Importance of the above on economic
development
• Differentiate between GIs, Indication of source
and appellation of origin
• International Treaties for the protection of above
• Identify local certification and collective marks
• Identify some of the products that can be
protected as GIs in your country
1. Introduction to Trade Marks
• What is a Trademark?
–is a distinctive sign, used by a
merchant to identify its goods or
services and to distinguish them
from those produced or provided
by others.
II. The Role of Trademarks in Economic
Development
Functions of Trademarks
• To the producers:
– Enables companies to differentiate their products
– Is a marketing tool and the basis for building brand
image and reputation
– Encourage companies to invest in maintaining product
quality
– a valuable business asset
– May be licensed to provide a direct source of revenue
through royalties
– is a critical element in franchising agreements
– Can be use as collateral for obtaining financing
Functions of Trademarks
• To the Consumers:
– Ensure that consumers can identify the origin of
products
– Aid consumers in distinguishing between products
from different manufacturers
– Acts as an indication of quality
– Acts as an assurance of genuineness
– Source of information
– The Number and Quality of Billboards a
long the road is a reflection of the level of
commercial activity in the country
Words
“Yes” is a registered mark of Kencell “JOGOO” is a registered mark of
Unga Limited
Communications Limited.
Device
The device is a registered mark of
Nation Media Group.
The wind mill device is a registered
mark of Unga Limited
Combinat
ions
Of letters Courtesy: Eastman
with
Kodak Company
devices
Threedimens
ional
marks:
The contour device of a bottle
registered mark of Coca
Company
“KCB” is a registered mark of
Kenya Commercial Bank
is a
Cola
MY COUNTRY MY BEER
Slogan
“MY COUNTRY MY BEER” is a
“the pride of Africa” is a mark of
mark
of
East
Africa
Kenya Airways.
Breweries Limited.
Numerals
504
“504” is a mark of Automobiles
“0722” is a registered mark of
Peugeot of France
Safaricom limited
iii) Term of protection
• In Tanzania, first registration seven (7) years.
• Registration can be indefinitely renewed for
further ten (10) years after expiry of original
registration or of the last renewal of registration.
• In Zanzibar, first registration fourteen (14) years.
• renewed indefinitely for further fourteen (14)
years after expiry of original registration or of the
last renewal of registration.
• .
2.
Collective Marks and Certification
Marks
A)
Collective marks are marks used to
distinguish products or services provided by a
group of enterprises, generally members of an
association.
• Collective marks are often used to show
membership in such an association, union or
organization
(e.g. UAW
for United Auto
Workers).
Collective Marks
•
•
•
•
•
•
Collective mark -owned by an association or
cooperative
The association establishes set criteria e.g.
quality standards
Permit individual enterprises who are members
of the Association and who comply to use
Members use the collective mark to market
their products domestically and occasionally
internationally,
Allows the member SMEs to benefit from a
reputation acquired.
The use of a collective mark may foster an
alliance or facilitate cooperation with other
SMEs so as to take full advantage of common
resources.
ii)
Difference between collective
marks and individual marks
• Collective marks is allowed to be used in
relation to products of different enterprises
which are members of an association, and
all of which produce or provide the same
or very similar products,
• whereas an individual trademark is used
for a product or service provided by just
one enterprise
iii) Why are collective marks relevant
for collective marketing
a) It is not always easy for individual enterprises
to gain consumer recognition and loyalty.
b) Gaining access to retail stores, local markets
and distribution networks and making their
products known among consumers require a
significant investment that may exceed an
individual enterprises capacity
c) A collective mark denotes the common origin
of the products and services from those
individual producers or enterprises who use it.
d) Important for bulk orders that an individual
cannot supply
iv) Relevance of collective marks to
collective marketing
d)
e)
f)
Collective marks are often used to show membership
in union, organization.
Because the owners of a collective marks is
responsible for ensuring compliance with certain
standards by its members, the function of the collective
mark is also to inform the public about certain features
of the product which collective mark signifies
Collective marks are often used to promote products
that are characteristic of a given region. Use of a
collective mark helps to market such products
domestically and occasionally internationally, but also
provides a framework for co-operation between local
producers
v)
Who can apply
• An association of producers which will authorize
its members to use the collective mark in relation
to certain products or services
• Collective marks are protected through
registration
• The costs, duration and scope of protection are
similar to those of an ordinary trademarks.
• Since the cost gets distributed over the entire
membership of the association, it becomes
much cheaper for an individual member.
• Collective marks cannot be licensed
B)
Certification Marks
• Are given for compliance with defined standards, but are
not confined to any membership. They may be used by
anyone who can certify that the products involved meet
certain established standards.
• The label used as a certification mark will be evidence
that the company's products meet the specific standards
required for the use of the certification mark.
• Tanzania Bureau of Standards (tbs)
• ISO compliance
Certification Marks
• The Woolmark symbol is the registered trade
(certification) mark of the Woolmark Company.
• The woolmark is a quality assurance symbol
denoting that the products on which it is applied,
are made from 100% new wool and comply with
strict performance specifications set down by the
Woolmark Company. It is registered in over 140
countries and licensed to manufacturers who are
able to meet quality standards in 67 countries
iii) Use of certification mark together
with individual mark
• Certification mark and individual mark can
be used concurrently
• The label used as a certification mark will
be evidence that the product meets the
prescribed quality and standards
3. Geographical Indications
cont
• Sign used on goods that have a specific
geographical origin and/or possess
qualities or a reputation that are due to that
place or origin.
• Interrelation between product and origin
Examples
• Champagne for sparkling wine (France)
• Bordeaux for wines (France)
• Tequila for alcohol (Mexico)
GIs cont..
• The term is intended to be used in its widest
possible meaning.
• It embraces all existing means of protection of
such names and symbols (Eiffel towers),
regardless of whether they indicate that the
qualities of a given product are due to its
geographical origin (appellation of origin) or they
merely indicate the place of origin of a product
(indication of source)
ii)
Appellation of Origin
• An appellation of origin is a special kind
of geographical indication.
• It generally consists of a geographical
name or a traditional designation used on
products which have a specific quality or
characteristics that are essentially due to
the geographical environment in which
they are produced.
iii) Indication of Source
• Any expression or sign used to indicate that a
product or service originates in a country, a
region or specific place.
• Indication of source on a given product is merely
subject to the conditions that this product
originates from the place designated by the
indication of source. e.g Made in Kenya
• In its general use, it has become rather a
designation for those indications of source which
are not considered to be appellation of origin.
Appellation of Origin cont..
• The use of appellation of origin requires a quality
link between the product and its area of
production. This qualitative link consists of
certain characteristics of the product which are
exclusively or essentially attributable to its
geographical origin such as climate, soil or
traditional methods of production
• The concept of a geographical indication
encompasses appellations of origin.
Examples of GIs cont..
• Example 1: Tequila (Mexico)
• Tequila, a Mexican drink, has acquired a distinct
identity.
• Means of Protection as GI
Through a presidential decree in 1977, and is
only produced Five Mexican states that have
exclusive right to produce the beverage.
In 1978, tequila registered under the Lisbon
Agreement and established its international
status.
The Mutual Recognition Agreement signed
between Mexico and the European Union for
the reciprocal recognition of GIs in 1998.
Tequila
• Protection –Its producers to market it worldwide
• No other product made with alternative
ingredients could be marketed as Tequila.
• Over 190 million liters of tequila sold annually
• because producers were able to guarantee the
quality of the product and they could avoid the
name being misused.
• Example 2. Swiss for watches Quality commonly
associated with Switzerland range from the
precision and reliability of its craftsmanship, to
the purity and health-giving properties of its
Alpine environment.
Examples of GIs Cont
• Example 3. “Tuscany” for olive oil produced in a
specific area of Italy (protected, for example, in
Italy by Law No. 169 of February 5, 1992),
• Example 4“Roquefort” for cheese produced
in France (protected, for example, in the
European Union under Regulation (EC) No.
2081/92 and in the United States under US
Certification Registration Mark No. 571.798).
iv) Difference between GIs and
Trademark
a) A trademark is a sign used by an enterprise to
distinguish its goods and services from those
of other enterprises.
It gives its owner the right to exclude others
from using the trademark. A trademark will
often consist of a fanciful or arbitrary name or
device.
a) A geographical indication tells consumers that
a product is produced in a certain place and
has certain characteristics that are due to that
place of production.
Difference between GIs and Trademark
cont..
c) It may be used by all producers who
make their products in the place
designated by a geographical indication
and whose products share specified
qualities.
d) Unlike a trademark, the name used as a
geographical indication will usually be
predetermined by the name of the place
of production.
iv) Legal frameworks for Protection of
GIs
International Treaties administered by
WIPO
Trade Related Aspects of Intellectual
Property Right (TRIPS) Agreement, They
are also covered under Articles 22 to 24
National laws
Other relevant methods
a) Treaties administered by WIPO
International Treaties administered by WIPO
• Paris Convention Article 1(2) deals specifically
with indications of source or appellation of origin
in the list of objects of industrial property. Others
include Articles 9 (provides for the sanctions for
false indications of source) and 10 (protection of
indications of source)
• Madrid Agreement for the Repression of False
or Deceptive Indications of Source on Goods
• Lisbon Agreement for the protection of
Appellation of Origin and their international
registration
Conditions of Article 1(2)
Appellation of origin must be recognized and
protected as such in the country of origin.
 (each appellation must benefit from a distinct
and express protection, deriving from a specific
official act- a legislative or administrative
provision, or a judicial decision, or a registration)
such an official act is required because the
specific elements of the object of protection (the
geographical area, the lawful users and the
nature of the product)
The appellation of origin must be registered with
the International Bureau of WIPO
b)
Bilateral Agreements
• Bilateral agreements between two states
for the protection of their GIs
• List of GIs prepared by contracting states
• The agreement specifies type of protection
that is granted
• Disadvantages
• Requires multiplicity of negotiations and
thus inevitable diversity of standards
c)
i.
National laws for Protection of GI
Special laws for the protection of geographical
indications or appellations of origin
ii. trademark laws in the form of collective marks
or certification marks
iii. laws against unfair competition (Any Act of
competition which are contrary to honest
practices)
iv. consumer protection laws, or
v. specific laws or decrees that recognize
individual geographical indications.
v)
Term of protection
Protection is unlimited in time
Protection cannot become generic
There is no renewal of registration required
Fees paid once
Application lodged by the member country and
not individual
vi) Economic Significance of GIs
• Initial calls for protection were by the wine
producing countries
• The basic economic function of
trademarks and geographical indications is
to protect the goodwill of products to
which they relate
• Developing countries show an increasing
interest in gaining market access for their
products by using geographical indications
such as Basmati Rice, Jasmin Rice, or the
like.
Economic significance of GIs cont..
• In Europe, a number of patterns have emerged
in connection with the use of geographical
indications.
• First, legal certainty due to the registration
system has led to an increased investment and
marketing of GIs
• This has resulted in markedly increased exports,
particularly into other countries.
• Quality controls that are necessary under the
European Regulation have helped customer
confidence and quality in the products as such.
• Beyond the European region, developing
geographical indications it seems will take time.
Economic Significance of GIs
• Since Geographical indications still attach
most importance to wines and spirits.
• The use of geographical indications may
also offer promising perspectives for
marketing and sale of herbal medicine or
cosmetics originating in tropical or semitropical countries.
vi) Licensing of GIs
• GIs by their very nature cannot be subject
matter of licensing.
• Technology and know-how for producing
Champagne or Cognac may be, in principle,
transferred to a person producing sparkling wine
or brandy outside the region of Champagne or
Cognac,
• but the right to label the licensed product to
be champagne or cognac of course cannot be
transferred as well. This is the reason why in
reality such a license is very unlikely.
• However, the point here is that even if such a
transaction takes place, it cannot comprise the
license for use of licensor’s geographical
indication.
Licensing of GIs..
• On the other hand, a person entitled to use a
geographical indication obviously does not need
a license for it even if such a person obtains
the know-how from another person in the
region also entitled to use of the same
geographical indication.
• The economic function of GIs is much the same
as that of trademarks. First, there exist
related goodwill.
• Second, they establish and protect market
identity, by distinguishing the goods bearing a
GI from same or similar goods of a different
geographical origin, though this distinctiveness
is on a collective rather than on individual
level.
4. The Case of Developing
Countries
• The vast majority of products that are
eligible for GIs are agricultural products,
foodstuffs, wines and spirits.
• It goes almost without saying that
developing countries and also countries
in transition are the major geographical
source.
Examples of products that could be
sold as geographical indications
• for most of such products which are sold
worldwide – cloves, coffee, tea, cacao, rice,
bananas, coconuts, mango, papaya, tapioca,
spices, flowers, alcoholic and nonalcoholic local
drinks….
• However, protection of geographical
indications has been seldom applied to the
extent available in many of those countries.
• By implication, economic benefits possibly
gained on this basis have not been realized, or
at least not to the appropriate extent.
Need for GIs in Africa: The Case of
Ethiopian Coffee
• Well known brands of Ethiopian gourmet coffee
• Yirgachefe
• Sidamo
All are place names
• Harar
• Starbucks and others have been marketing at
premium price using these names. Considered
the finest quality coffee, attributable to the
ecological conditions of these places. (therefore,
qualifying for Geographical Indications under
TRIPS.)
The Case of Ethiopian Coffee
• Studies show retail price to average $26 a
pound, while the amount trickling to the
country from each pound is max. of a mere
$1. (around 60 cents).
• Despite coffee being the second most traded
commodity (next to oil) farmers all over the
world esp. in Africa have been suffering. One
of the worst hit: Ethiopian coffee growers
(some 11 million of them).
Jaffee Oranges from Israel
• After all, Israel only joined the Lisbon
Agreement for the Protection of
Appellations of Origin in order to have its
famous Jaffee oranges protected.
• Tanzania and Zanzibar Products that can
be considered for protection as GIs
include cloves and sisal respectively
mainland just to mention a few
5. Enforcement of GIs
• In essence, unauthorized parties may not
use a geographical indication in respect of
products that do not originate in the place
designated by that indication.
• Applicable sanctions range from court
injunctions preventing the unauthorized
use to the payment of damages and fines
or, in serious cases, imprisonment.
Exercise
• Identify products that can be protected as
GIs in the country
• Identify products that can utilize collective
marks as marketing strategies
• Identify some certification marks in your
country
THANK YOU
FOR YOUR ATTENTION