Transcript No Slide Title

International Legal Framework
for the Protection
of Geographical Indications
Warsaw, 26 April 2006
•Denis Croze
•Acting Director Advisor
•Economic Development Sector
•World Intellectual Property Organization
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Agreements/Terminology
• Indications of source
– Paris Convention (1883)
– Madrid Agreement (1891)
• Appellations of Origin
– Paris Convention
– Lisbon Agreement (1958)
• Geographical Indications
– TRIPS Agreement (1994)
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Indication of Source
“Indication referring to a country or to a
place situated therein as being the
country or place of origin of a product”
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Appellation of Origin
“The geographical name of a country,
region, or locality, which serves to
designate a product originating therein,
the quality and characteristics of which
are due exclusively or essentially to the
geographical environment, including
natural and human factors” (Lisbon)
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Geographical Indication
“Indication which identifies a good as
originating in the territory of a Member,
or a region or locality in that territory,
where a given quality, reputation or
other characteristic of the good is
essentially attributable to its
geographical origin” (TRIPS)
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Relationship
Indication of Source
Paris, Madrid
Geographical Indication
TRIPS
Appellation of Origin
Lisbon
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Relationship
Geographical Indication
[Indication of Geographical Origin]
Indications of Source
Geographical Indication
TRIPS
Appellation of Origin
Lisbon
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International Protection
• Bilateral Agreements
• Multilateral Agreements
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Multilateral Agreements
• Paris Convention for the Protection of
Industrial Property (1883)
• Madrid Agrement for the Repression of
False or Deceptive Indications of Source
on Goods (1891)
• Lisbon Agreement for the protection of
appellations of origin and their
international registration (1958)
• TRIPS Agreement (1994)
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Paris Convention for the Protection of
Industrial Property (1883)
• 169 Member States
• Indications of source or appellations of
origin are objects of IP protection (Art. 1.2)
• In case of “direct or indirect use of a false
indication of the source of goods” (Art 9)
• Goods bearing false indication shall be
subject to seizure upon importation [..] or
within the country; prohibition of
importation (Art. 10)
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Madrid Agreement for the Repression of
False or Deceptive Indications of Source
on Goods (1891)
• 34 Member States - 6 articles
• Repression of false or deceptive
indications of source, on or in connection
with goods
• Seizure, prohibition of importation + others
special sanctions
• National Courts decide what appelations
are generic (except products of the wine)
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Lisbon Agreement for the Protection of
Appellations of Origin and Their
International Registration
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For appellations protected as such
Definition of “appellation of origin”
Definition of “country of origin”
Registration and possible objection
24 Member States
835 registrations (766 valid)
TRIPS Agreement 1994
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149 Members
TRIPS Articles 22 to 24 (Section 3)
Definition of subject matter
Scope of Protection
International Negotiations; Exceptions
Built-in Agenda
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Article 22 TRIPS
• Definition of a GI: « Indication which identify a
good as originating in the territory of a
Member, or a region or locality in that territory,
where a given quality, reputation or other
characteristic of the good is essentially
attributable to its geographical origin »
• Minimum level of protection for all products
(except wines and spirits)
• Misleading test, unfair competition
• Homonymous GIs
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Article 23 TRIPS
• Higher protection for wines and spirits
• No use of de-localizers (kind, type, ..etc)
• Obligation to refuse or to invalidate a mark
consisting of GIs
• Homonymous GIs: « coexistence » under
certain conditions: differentiation; interest of
producers and consumers
• Negotiations/multilateral system of notification
and registration of GIs for wines
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Article 24 TRIPS
• Grand-fathering clause: use before date of
signature of WTO Agreement (15.04.94) for
10 years or use in good faith before that date
• Coexistence with prior trademarks
(registration or use) before the date of
application of the TRIPS Agreement
(transition periods) or before the GIs is
protected in country of origin
• Generics, grape variety
• Protection in the country of origin
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TRIPS
• Negociations concerning the establishment of
a multilateral system of notification and
registration of GIs for wines [and spirits]
eligible for protection in those Members
participating in the system
• Commitment to enter into negociations to
increase protection of individual GIs under
Article 23
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Existing Systems of Protection
• Protection against unfair competition (Passing
off)
• Protected appellations of origin
• Collective or certification marks
• Administrative systems of protection
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Protection
under unfair competition
• Article 10bis of the Paris Convention
• Unauthorized used of GIs should:
– be shown by plaintiff
– be misleading
– result in damages or likelihood of damages
• + Specific statutory provisions
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Protected Appellations of Origin
• Definition
• Legal protection
– based on an act of public law (Law,
Decree..)
– at the conclusion of an administrative
procedure
• Recognition
• Protection against unauthorized use
– Criminal and civil responsability
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Collective or Certification Marks
• Marks which indicate that the goods and
services on which they are used have specific
qualities which may also include geographical
origin
• Owner of the mark (not user) to ensure the
certified quality
• Enforcement under general trademark law
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Problems in Obtaining Effective
Protection in Other Countries
• Unfair competition versus statutory protection
point of view of users (not compliance with
international agreements)
• Generic character
• Conflicts between TMs and GIs
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Administratives
Schemes for Protection
• To ensure fair trade and consumer protection
• Administrative approval procedure to market
some goods
• Compliance of the product for which
marketing authorization is sough with relevant
legal requirements
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Standing Committee on the Law of
Trademarks, Industrial Designs and
Geographical Indications (SCT)
• Background Documents
– Possible solutions for conflicts between TMs
and Gis and between homonymous GIs
(SCT/5/3 - June 2000)
– Historical background, nature of rights,
existing systems of protection, obtaining
protection abroad .. (SCT/8/4 - April 2002)
– Definition of GIs (SCT/9/4 - Oct.2002) and
SCT/10/4 - March 2003)
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Geographical Indications
and the Internet
• Joint Recommendation on the Protection of
Industrial Property Rights in Signs
• Second WIPO Domain Name Process
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Thank you
•[email protected]
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