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INDIA-WIPO NATIONAL ROVING SEMINARS ON GEOGRAPHICAL INDICATIONS

Protection of Geographical Indications in a Selection of Indian Export Markets

Miguel Angel Medina

ELZABURU, Spain, European Union

Chair of MARQUES Geographical Indications Team

Chennai, 29 and 30 January 2009

Bangalore, 2 and 3 February

Kolkata, 5 and 6 February 2009

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http://europa.eu/abc/maps/index.en.htm

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Systems of protection of GIs in the EU:

 

-         Agricultural products and foodstuffs

-         Wines, except wine vinegars

-         Spirit drinks

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 EU Regulations on GIs:  Agricultural products and foodstuffs

Council Regulation (EC) No 510/2006 (before: Council Regulation (EEC) No 2081/92)

Commission Regulation (EC) No 1898/2006 (laying down detailed rules of implementation of Council Regulation (EC) No 510/2006) (before: Commission Regulations (EEC) No 2037/93 and (EC) No 383/2004), amended by Commission Regulation (EC) No 628/2008, which amends the Community symbols contained in Annex V to Regulation No 1898/2006 (which in any case may be used until 1 May 2010).

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EU Regulations on GIs:

Wines:

*Council regulation (EC) No 479/2008 on the market in wine (before: Council Regulation (EC) No 1493/1999 of 17 May 1999 on the common organisation of the market in wine: QWPSR and Table Wines with Geographical Indication)

- Title III, Chapter III (arts. 33 to 53), which refer to GIs and DOs, apply from 1 August 2009.

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EU Regulations on GIs:

 Spirit drinks: 

Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labeling and protection of geographical indications of spirit drinks and repealing Council regulation 1576/89. Mainly arts. 6, 10, 15 and following.

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Council Regulation (EC) No. 510/2006 on the Council Regulation (EC) No. 510/2006 on the protection of geographical indications and protection of geographical indications and designations of origin for agricultural products and designations of origin for agricultural products and foodstuffs. (Art.2)foodstuffs. (Art.2)

“Designation of origin”“Designation of origin”: :

- name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff  - originating in that region, specific place or country, -  the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production, processing and preparation of which take place in the defined geographical area.  Triple PTriple P

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Council Regulation (EC) No. 510/2006 on the Council Regulation (EC) No. 510/2006 on the protection of geographical indications and protection of geographical indications and designations of origin for agricultural products and designations of origin for agricultural products and foodstuffs. (Art.2)foodstuffs. (Art.2)

Geographical indication:

- name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff - originating in that region, specific place or country, - and which possesses a specific quality, reputation or other characteristics attributable to that geographical origin, and the production and/or processing and/or preparation of which take place in the defined geographical area.

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Council Regulation (EC) No. 510/2006 on the Council Regulation (EC) No. 510/2006 on the protection of geographical indications and protection of geographical indications and designations of origin for agricultural products and designations of origin for agricultural products and foodstuffs. (Art. 2.3):foodstuffs. (Art. 2.3):  

Furthermore, certain geographical designations will be treated as DOs where the raw materials for the products concerned come from a geographical area larger than, or different from, the processing area, provided that: a)      the production area of the raw materials is definedb)      special conditions for the production of the raw materials existc)     there are inspection arrangements to ensure that the conditions referred to

in point (b) are adhered to.d)     The designations in question have been recognised as DOs in the country

of origin before 1 May 2004

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Council Regulation (EC) No. 510/2006 on the Council Regulation (EC) No. 510/2006 on the protection of geographical indications and protection of geographical indications and designations of origin for agricultural products and designations of origin for agricultural products and foodstuffs.foodstuffs.  

 - Furthermore, traditional (geographical or not) names designating an agricultural product or a foodstuff which fulfil the

conditions set for DOs or GIs shall also be considered as DOs and GIs

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Foodstuffs:Foodstuffs: Agricultural products: Wine vinegar Agricultural products: Wine vinegar(Annex I)(Annex I) (Annex II) (Annex II) (Art. 1.1) (Art. 1.1) R510/2006 and 417/2008)R510/2006 and 417/2008)

-beers-beers - hay - hay-beverages made from plant extracts -beverages made from plant extracts - essential oils, - essential oils,-bread, pastry, cakes, confectionery -bread, pastry, cakes, confectionery - cork,- cork,and other baker´s wares,and other baker´s wares, - cochineal (raw product of animal- cochineal (raw product of animal-natural gums and resins,-natural gums and resins, origin), origin),-mustard paste,-mustard paste, - flowers and ornamental plants, - flowers and ornamental plants,-pasta-pasta - wool- wool-salt-salt - wickery- wickery

- scutched flax.- scutched flax.- cotton- cotton

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Annex I to EC Treaty (art.32 EC Treaty)

-live animals

-Eat and edible meat offal

-Fish crustaceans and molluscs

-Live trees and other plants

-Coffee, tea and spices, excluding maté

-Cereals

-Cocoa beans, whole or broken, raw or roasted

-Cocoa shells, husks, skins and waste

-Natural cork, unworked cork, wasted cork

-Unmanufactured tobacco, tobacco refuse...

-etc...

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Regulation (EC) No 510/2006 of 20 March 2006 Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications on the protection of geographical indications and designations of origin for agricultural and designations of origin for agricultural products and foodstuffsproducts and foodstuffs

Common features of PDO/PGI:Common features of PDO/PGI:  -                     same level of legal protection-                     same level of legal protection-                     same registration procedure-                     same registration procedure-                     practically same legal requirements-                     practically same legal requirements-                     registration is a -                     registration is a sine qua nonsine qua non requirement requirement-                     cannot become generic-                     cannot become generic-                     can be cancelled if compliance with the conditions no longer ensured-                     can be cancelled if compliance with the conditions no longer ensured  *Difference: the definition which implies that the link between product and place *Difference: the definition which implies that the link between product and place is stronger in PDO and they are considered as more appreciated by consumersis stronger in PDO and they are considered as more appreciated by consumers

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Regulation (EC) No 510/2006 of 20 March 2006 on the protection of Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural geographical indications and designations of origin for agricultural products and foodstuffsproducts and foodstuffs

Exclusion from registration:Exclusion from registration:   * * GenericGeneric names names * * NamesNames which are which are misleadingmisleading for the consumer for the consumer

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Regulation (EC) No 510/2006 of 20 March 2006 on the protection of Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural geographical indications and designations of origin for agricultural products and foodstuffsproducts and foodstuffs

1.-1.- Exclusion of generic names:Exclusion of generic names:

   Criteria to assess genericness: Criteria to assess genericness:

-- existing situation in the Member States and in areas of existing situation in the Member States and in areas of consumption (Feta cheese)consumption (Feta cheese)

-        -         relevant national or Community Lawsrelevant national or Community Laws

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Regulation (EC) No 510/2006 of 20 March 2006 on the protection Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for of geographical indications and designations of origin for agricultural products and foodstuffsagricultural products and foodstuffs

2.-2.- Exclusion of geographical names Exclusion of geographical names if liable to misleadif liable to mislead the consumer in the consumer in relation relation to:to:

- -  names which conflict with the name of a names which conflict with the name of a plant varietyplant variety or an or an animal breedanimal breed -- total or partially total or partially homonymous nameshomonymous names with that of a name already with that of a name already registered under this Regulation, unless there is sufficient registered under this Regulation, unless there is sufficient distinction in distinction in practicepractice

(Jambon sec et noix de jambon sec des Ardennes, France, and Jambon (Jambon sec et noix de jambon sec des Ardennes, France, and Jambon d’Ardenne, Belgium)d’Ardenne, Belgium) -  -   trademarkstrademarks in the light of a trademark’s in the light of a trademark’s reputationreputation and and renownrenown and the and the length of length of timetime it has been used it has been used

  

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Regulation (EC) No 510/2006 of 20 March 2006 on the protection Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for of geographical indications and designations of origin for agricultural products and foodstuffsagricultural products and foodstuffs   Who can applyWho can apply??  

-- only a “group” (namely, any association of producers or processors with only a “group” (namely, any association of producers or processors with any legal any legal form or composition, working with the same agricultural form or composition, working with the same agricultural product or foodstuff) product or foodstuff)

  A natural or legal person may be treated as a group if:A natural or legal person may be treated as a group if:

-- only producer in the area willing to submit an applicationonly producer in the area willing to submit an application-     -     the defined “geographical area”/”product” possesses characteristics the defined “geographical area”/”product” possesses characteristics

which which differ appreciably from “those of”/”those produced in” differ appreciably from “those of”/”those produced in” neighbouring areasneighbouring areas

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Regulation (EC) No 510/2006 of 20 Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications March 2006 on the protection of geographical indications and designations of origin for agricultural products and and designations of origin for agricultural products and foodstuffsfoodstuffs

Content of the application (at leastContent of the application (at least):):-        -         identification of the identification of the applicantapplicant-  -   product product specification specification (name, description of the product, definition of (name, description of the product, definition of

geographical area, evidence that originates there, method of obtaining the geographical area, evidence that originates there, method of obtaining the product, labelling and packaging requirements, the link between the product, labelling and packaging requirements, the link between the

geographical origin or environment and the name and the characteristic, geographical origin or environment and the name and the characteristic, reputation, etc., product any requirements laid down by national or reputation, etc., product any requirements laid down by national or EU Law; EU Law; Identify the authorities or bodies verifying compliance with the Identify the authorities or bodies verifying compliance with the provisions provisions of the specifications and their specific tasksof the specifications and their specific tasks ))-       -        single document (single document (a doc. which contains a doc. which contains the most relevant information of the most relevant information of

the specification and a description of the link between the geographical the specification and a description of the link between the geographical origin and the good)origin and the good)

-- proof of protection in the country of originproof of protection in the country of origin (in the case of third countries)(in the case of third countries)

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Regulation (EC) No 510/2006 of 20 Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications March 2006 on the protection of geographical indications and designations of origin for agricultural products and and designations of origin for agricultural products and foodstuffsfoodstuffs

Where to file?Where to file?

Non-EU applicationsNon-EU applications: Geographical area outside the EU: Geographical area outside the EU

Optional:Optional:Direct filing with the CommissionDirect filing with the Commission

ororFiling with their own country authorities.Filing with their own country authorities.

In both cases: In both cases: evidence of protection in the country of originevidence of protection in the country of origin must be given must be given

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Regulation (EC) No 510/2006 of 20 March 2006 on the Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations protection of geographical indications and designations of origin for agricultural products and foodstuffs of origin for agricultural products and foodstuffs

EU application procedureEU application procedure: :     National phase: (National phase: ((only for geographical areas located in member states)(only for geographical areas located in member states)Filing with the national authorities Filing with the national authorities -- scrutiny by the Member State of the compliancescrutiny by the Member State of the compliance with the conditions of thewith the conditions of the regulationsregulations-- if approved, then publication for opposition purposesif approved, then publication for opposition purposes-- national opposition procedures (only nationals or residents in that Member State). Reasonable periodnational opposition procedures (only nationals or residents in that Member State). Reasonable period-    -    possible provisional national protectionpossible provisional national protection-    -     possible transitional adjustment period at national level (for undertakings that have legally marketed the possible transitional adjustment period at national level (for undertakings that have legally marketed the

products in question, usingproducts in question, using the names concerned continuously for at least the past 5 years and have made that the names concerned continuously for at least the past 5 years and have made that point in the point in the national opposition procedure).national opposition procedure).-- it forwards to the Commission a conformity declaration of the memberr state of origin, the single document, it forwards to the Commission a conformity declaration of the memberr state of origin, the single document, identification of the applicant and reference to the publication of the application.identification of the applicant and reference to the publication of the application.

Community phaseCommunity phase:: Common to EU and non-EU member states Common to EU and non-EU member states -- Scrutiny by the Commission (“should not exceed 12 months”)Scrutiny by the Commission (“should not exceed 12 months”)-- publication for possible EU opposition procedure (for those non established or resident in publication for possible EU opposition procedure (for those non established or resident in the country of origin). Opposition deadline: 6 months. Decision. Publication of decisionthe country of origin). Opposition deadline: 6 months. Decision. Publication of decision

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Regulation (EC) No 510/2006 of 20 March 2006Regulation (EC) No 510/2006 of 20 March 2006on the protection of geographical indications on the protection of geographical indications

and designations of origin for agricultural products and foodstuffsand designations of origin for agricultural products and foodstuffs

Controls (for GIs relating to a geographical area in a third country):

Verification of compliance with the specifications, before

placing the product on the market, shall be ensured by:

• one or more public authorities (objectivity and impartiality) designated by the third country and/or

• one or more product certification bodies.

They shall comply with European standard EN 45011 or ISO/IEC Guide 65 (General requirements for bodies operating product certification systems)

The Commission shall make public the said authorities and bodies.

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Third countries’ applications for GIs in the EU

• CAFÉ DE COLOMBIA (PGI) – registered• DARJEELING (PGI) • KANGRA TEA (PGI)• LONGIING CHA (PDO)• JINXIANG DA SUAN (PDO)• LONGKOU FEN SI (PGI) and 7 more Chinese GIs

applications

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  Rights “to (do)” conferred by a registered Rights “to (do)” conferred by a registered PGI/PDO:PGI/PDO:

(R 510/2006, Art.8)(R 510/2006, Art.8) - use the name protected as PGI/PDO by any operator marketing agricultural

product or foodstuffs conforming to the corresponding specification - use of the corresponding indications and their respective symbols * in the case of agricultural foods and foodstuffs originating in the Community

marketed under a name registered in accordance with this Regulation, the indications “protected designation of origin” and “protected geographical indication” (in any EU language) or the Community symbols associated with them shall appear on the labelling (a right, but a duty too)  

* in the case of agricultural products or foodstuffs originating in third countries marketed under a name registered in accordance with this Regulation the above indications and symbols associated with them may appear on the labeling.

  

 

 

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GIs? Trademarks?

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Community Symbols

Protected Designation of Origin

Protected Geographical Indication

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Rights “against” conferred by a registered Rights “against” conferred by a registered PGI/PDO:PGI/PDO:

(R 510/2006, Art.13.1 and 13.2)(R 510/2006, Art.13.1 and 13.2)

(a) any direct or indirect commercial use of a registered name in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or in so far as using the name exploits the reputation of the protected name;

 

(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar;

 

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;

(!)

 

(d) any other practice liable to mislead the consumer as to the true origin of the product.

(*) vulgarisation: “protected names may not become generic” (art. 13.2)

  

 

 

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 More rights “against” conferred by a registered PGI/PDO:More rights “against” conferred by a registered PGI/PDO:

-- General Customs ActionGeneral Customs ActionCouncil regulation (EC) No. 1383/2003 relating to action by the Customs Council regulation (EC) No. 1383/2003 relating to action by the Customs authorities against merchandise that they suspect infringes certain intellectual authorities against merchandise that they suspect infringes certain intellectual property rightsproperty rights

Art. 2.1, c, iv, understands as “goods infringing and intellectual property right” Art. 2.1, c, iv, understands as “goods infringing and intellectual property right” those which infringe the those which infringe the designations of origin or geographical indicationsdesignations of origin or geographical indications protected the law of that Member State or the legislation laid down in the EU protected the law of that Member State or the legislation laid down in the EU Council Regulations.Council Regulations.

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Limits to the rights conferred by the PDO/PGI:Limits to the rights conferred by the PDO/PGI:(R 510/2006, Art.13.3 and 13.4: Coexistence)(R 510/2006, Art.13.3 and 13.4: Coexistence)    

Transitional periods of up to 5 or up to 15 years, depending on the case, can be Transitional periods of up to 5 or up to 15 years, depending on the case, can be provided for allowing those who have been legally using a name or products entirely provided for allowing those who have been legally using a name or products entirely or partially “identical” to a new PDO/PGI to keep on using said names under certain or partially “identical” to a new PDO/PGI to keep on using said names under certain circumstances.circumstances.

    (i.e., French PDO “Munster” or “Munster Géromé” and unregistered (i.e., French PDO “Munster” or “Munster Géromé” and unregistered

German name “Münster Käse”)German name “Münster Käse”)  

  

  

 

 

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RELATIONS (OR “CONFLICTS”) BETWEEN TRADEMARKS AND DOs RELATIONS (OR “CONFLICTS”) BETWEEN TRADEMARKS AND DOs and GIs and GIs (R510/2006 Art. 14.1)(R510/2006 Art. 14.1) (I)(I)

WHERE THE REGISTERED PDO/PGI IS OLDER:WHERE THE REGISTERED PDO/PGI IS OLDER:  -- Art 14.1: The Art 14.1: The PDO/PGI prevailsPDO/PGI prevails  Where a PDO/PGI is registered, the application for registration of a trademark Where a PDO/PGI is registered, the application for registration of a trademark

corresponding to one of the corresponding to one of the situations referred to in Article 13situations referred to in Article 13 and and relating to the same class of relating to the same class of productsproducts shall be refused if the application for registration of the trademark is submitted after shall be refused if the application for registration of the trademark is submitted after the the date of submissiondate of submission of the registration application of the registration application to the Commissionto the Commission

  Trademarks registeredTrademarks registered in breach of the above shall be invalidated. in breach of the above shall be invalidated.

  

 

 

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  RELATIONS (OR “CONFLICTS”) BETWEEN TRADEMARKS AND DOs RELATIONS (OR “CONFLICTS”) BETWEEN TRADEMARKS AND DOs AND GIs AND GIs (R510/2006, Arts. 3.4 and 14.2)(R510/2006, Arts. 3.4 and 14.2) (II)(II)

  WHERE THE TRADEMARK IS OLDER:WHERE THE TRADEMARK IS OLDER:  

-        -         Art. 3.4: Art. 3.4: When the trademark prevails… and the GI cannot be registeredWhen the trademark prevails… and the GI cannot be registered

A DO or GI shall not be registered where, in the light of a trademark’s A DO or GI shall not be registered where, in the light of a trademark’s reputation and and renownrenown and the and the length of time it has been it has been used, registration registration is liable to misleadis liable to mislead the consumer as to the true identity of the product. the consumer as to the true identity of the product.

-       -         Art. 14.2:  Art. 14.2: CoexistenceCoexistence::

  A trademark the use of which corresponds to one of the A trademark the use of which corresponds to one of the situations in article 13situations in article 13 -namely, exploits the reputation, -namely, exploits the reputation,

misuse, imitation or evocation, false or misleading any other practice liable to mislead… - has been applied for, misuse, imitation or evocation, false or misleading any other practice liable to mislead… - has been applied for, registered, or established by use, if that possibility is provided for by the legislation concerned, registered, or established by use, if that possibility is provided for by the legislation concerned, in good faithin good faith within within

the Community, the Community, before the date of protection of the DO or GI in the country of originbefore the date of protection of the DO or GI in the country of origin oror

before 1 January 1996before 1 January 1996 and and no grounds for its invalidation or revocation existno grounds for its invalidation or revocation exist as specified by the as specified by the First Directive 89/104 (now 2008/95 of 22 October) or CTMR 40/94.First Directive 89/104 (now 2008/95 of 22 October) or CTMR 40/94.

-- REST OF THE CASES: DO/GI PREVAILSREST OF THE CASES: DO/GI PREVAILS

  

 

 

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    OTHER POSSIBLE WAYS OF PROTECTION OF GEOGRAPHICAL NAMES:OTHER POSSIBLE WAYS OF PROTECTION OF GEOGRAPHICAL NAMES:  EU Trademark regulations: - Art. 15 First Council Directive 89/104/ ECC of 21 December 1988 to approximate the

laws of the Member States relating to trade marks (now renamed as 2008/95) authorizes Member States to provide for collective marks, guarantee marks and certification marks which may consist on signs or indications to designate the geographical origin of the goods or services. NATIONAL TRADEMARKSNATIONAL TRADEMARKS

 - Art. 64 of CTMR admits that signs or indications which may serve in trade, to designate the geographical origin of the goods or services may constitute Community collective marks. (E.g., TURRON DE ALICANTE, TEQUILA, BAYERISCHES BIER, DRESDNER CHRISTSTOLLEN) . COMMUNITY TRADEMARKSCOMMUNITY TRADEMARKS

  WARNING for INDIA:WARNING for INDIA:A great advantage: it can give additional protection to GIs in the trade by protecting them A great advantage: it can give additional protection to GIs in the trade by protecting them

as they are really used in trade, or for goods out of the EU scheme (e.g. handicraft ) in as they are really used in trade, or for goods out of the EU scheme (e.g. handicraft ) in addition to variations of the geographical name or different overalls or versions with words addition to variations of the geographical name or different overalls or versions with words and devices, etc. And can be a solution when a PDO/PGI is not possibleand devices, etc. And can be a solution when a PDO/PGI is not possible

  

 

 

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    Community Trade Mark Regulation (CTMR 40/94) Arts. 7 (1) (j) and 7 (1) (k). The following shall not be registered: -  Art. 7 (1) (j): trade marks for wines which contain or consist of a geographical indication

identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin. Applied by OHIM only to Class 33

 -  Art. 7 (1) (k): trade marks which contain or consist of a DO or GI registered in accordance

with Regulation (EEC) No 2081/92 (now No 510/2006) when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the DO or GI. Applied by OHIM only to Classes 29 to 32

 The goods must be restricted to those for which the PDO/PGI is protected

  

 

 

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    Community Trade Mark Regulation (CTMR 40/94)Community Trade Mark Regulation (CTMR 40/94)  The following shall not be registered:The following shall not be registered:  Art. 7 (1) (c): - trade marks which consist exclusively of signs or indications which may serve, in

trade, to designate the ... quality...geographical origin .... or other characteristics of the goods or service.

 This will not apply if the trade mark has become distinctive in consequence of the use

made of it. Art. 7 (1) (g):- trade marks which are of such a nature as to deceive the public, for instance as to

the ... geographical origin of the goods or service

  

 

 

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Some EU Court decisions on conflicts between geographical Some EU Court decisions on conflicts between geographical names/PDOs/PGIs and Trademarks:names/PDOs/PGIs and Trademarks:

  -         C-108/97 CHIEMSEE-         C-108/97 CHIEMSEE-         -         C-87/97 CAMBOZOLA vs. (PDO) GORGONZOLAC-87/97 CAMBOZOLA vs. (PDO) GORGONZOLA-         T-291/03 GRANA BIRAGHI vs (PDO) GRANA PADANO-         T-291/03 GRANA BIRAGHI vs (PDO) GRANA PADANO-         C-132/05 PARMESAN vs (PDO) PARMIGIANO REGGIANO-         C-132/05 PARMESAN vs (PDO) PARMIGIANO REGGIANO  An interesting OHIM case:An interesting OHIM case:  ROQUEFORT vs. RONCARIFORT (opposition/invalidation)ROQUEFORT vs. RONCARIFORT (opposition/invalidation)

  

 

 

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Some Some protectingprotecting Spanish Court decisions: Spanish Court decisions:

(IGP) TERNERA GALLEGA vs trademark “Terga, Ternera de Galicia” (AP La (IGP) TERNERA GALLEGA vs trademark “Terga, Ternera de Galicia” (AP La Coruña, 13/5/2002)Coruña, 13/5/2002)

(PDO) JAMÓN DE HUELVA vs Company name Origin Jabugo, S.L.(PDO) JAMÓN DE HUELVA vs Company name Origin Jabugo, S.L.(PDO) CHAMPAGNE vs BAR CHAMPAGNE(PDO) CHAMPAGNE vs BAR CHAMPAGNE  Some Some protectingprotecting SPTO decisions: SPTO decisions:  BORDEAUX vs BORDEAUX (Class 9) BORDEAUX vs BORDEAUX (Class 9) CHAMPAGNE vs Chamespagne, Chamspain, Champcava, Champenoise 92´, CHAMPAGNE vs Chamespagne, Chamspain, Champcava, Champenoise 92´,

Champenedese, Champinette, Champanella Robla, Pancham, Champ…any 4, Txampana Champenedese, Champinette, Champanella Robla, Pancham, Champ…any 4, Txampana Arzuaga and device (Class 33)Arzuaga and device (Class 33)

  

 

 

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Some Some protectingprotecting SPTO decisions (some more): SPTO decisions (some more):

BASMATI vs THE BASMATI RICE and deviceBASMATI vs THE BASMATI RICE and deviceVALENCAY vs Valency VALENCAY vs Valency BOURGOGNE vs Borgoñón GranateBOURGOGNE vs Borgoñón GranateCASSIS vs Cassis D´aranCASSIS vs Cassis D´aranMUSCAT DE LUNEL vs LunelMUSCAT DE LUNEL vs LunelMINERVOIS vs Minerva;MINERVOIS vs Minerva;

EAU-DE-VIE DE LA MARNE vs Duc de Marne (claiming Class 32)EAU-DE-VIE DE LA MARNE vs Duc de Marne (claiming Class 32)

MEDOC vs Medoc Alavés (Class 21) MEDOC vs Medoc Alavés (Class 21)   CHAMPAGNE vs Champagne (Class 43), Tele-Champagne y Bonbones Rojo y Alcon CHAMPAGNE vs Champagne (Class 43), Tele-Champagne y Bonbones Rojo y Alcon

(Class 39) and vs Colección Champagne and device (Class 14)  (Class 39) and vs Colección Champagne and device (Class 14)  

  

 

 

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The protection of GIs in China

A double (or triple?) system

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Geographical Indications in China

• Trademark Office

(State Administration for Industry and Commerce) - SAIC

• General Administration of Quality Supervision, Inspection and Quarantine

AQSIQ

• Ministry of Agriculture

• Trademark Act PRC (amended 2001) and implementing regulations

• Regulation on the protection of Geographical Indication products (2005)

• Measures for Administration of Geographical Indications of Agricultural Products (2008)

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Summarising:

• Protection as a “GI Certification/Collective Trademark” by the Trademark Act

• Protection as a GI by administrative regulation and as a GI for specific (only agricultural) products by another administrative regulation

BUT, without coordination between Systems...

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As a result:

• Conflict of competence• Homonymous geographical names belonging to different owners*• Abnormal situations• Overlapping • Situation of lack of certainty

*Jing Hua Ham

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GI label - AQSIQ

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GI label – Trademark Office

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Product coverage:

GI Certification/Collective Mark: any good

GI label - AQSIQ: It is not exactly stated in the regulations, but it is generally accepted that at least it encompasses: agricultural products, including primary and processed products in the field of agriculture, forestry, animal, fisheries, and wine

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The definition of GIs

According to the Regulation on Protection of Geographical Indication Products (art. 2):

“The products of geographical indication mentioned in these provisions shall refer to products that originate from a particular geographical region with the quality, reputation or characteristics substancially attributable to the natural and human factors of the region and denominated with the name of the region upon examination and approval”

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The definition of GI – Certification/Collective Mark

According to the Trademark Law (art. 16.2):

“Geographical Indication identifies a particular good as originating in a region where a given quality, reputation or other characteristics of the good are essentially attributable to its natural or human factors”

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How to protect third countries’ GIs in China?:

• In theory, both, Trademark Office and AQSIQ systems, clearly provide that foreign GIs can be registered, but the corresponding implementing administrative regulations have not been promulgated for the latter

• So, in practice, certification and collective marks are the only way available to foreign GIs

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Trademark application for a collective or certification mark consisting on a GI from a foreign country

Special requirements:

Evidence of:- the GI being protected in home country by the applicant- the characteristic indicated by the GI- the link between the characteristic and the natural and human factors of the region- the boundary of the territoryThe rest of the procedure is as a regular trademark

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Protection obtained for the GI through its registration as a Certification/Collective Mark

• It will be included in the TMs database and be taken into account in the examination of later applications

• It will be protected by administrative and criminal Law against infringement

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The Protection of Geographical Indications in the United States

A trademark system

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Geographical Indications as Trademarks(An American View)

• A “subset” of trademarks• As TMs, GIs are:

– Source-identifiers– Guarantees of quality– Valuable business interests

• Generic cannot be registered • Administrative trademark structure can be used

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Advantages of using a TMs System for GIs

• The system is already working and known by those who intervene• Respectful with the rights of the prior owners• Geographical Indications as trademarks can be protected for any kind of product

or service• Governments do not have to commit additional enforcement resources to ensure

compliance. The owner can determine when to take action.• Easier to accommodate GIs which are not merely names (but “signs”: e.g.,

designs, slogans, designs, 3-D, colors, or even sounds)

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Some examples of possible GIs

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Some examples of possible GIs (II)

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Means of protection of GIs in the U.S.

- Protection: the use of false designations of origin and false descriptions are prohibited (Section 43)

- Means of protection:• As Certification Marks• As Collective Marks• As Individual Trademarks• As Common-Law Marks• Alcoholic Beverage Labelling Act 1998+The Alcohol and Tobacco Tax and Trade

Bureau (TTB) regulates the use of GIs on alcoholic beverages (incl. wines and spirits)

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Features of US Certification Marks (I)Concept: Any word, name, symbol, or device that certifies a particular aspect of specific goods/services.

This includes a distortion, an abbreviation, or a combination of geographical terms

3 Types: - regional or other origin- material, mode of manufacture, quality, accuracy or other characteristics of the goods/services- that the work or labour on the goods/services was performed by a member of a union or other organization.

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Features of US Certification Marks (II)

• Control by their owner of use in accordance with the use requirements (owners are usually a government agency or authorized body)

• Their owner is not allowed to use the mark • All those who comply with the requirements are entitled to

use and cannot be excluded from use

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Features of US Certification Marks (III)

• Procedure:- Prosecution as any trademark: Exception: it can be registered despite of being descriptive as to the geographical origin.

- Filing at the USPTO, ...Examination ex officio as to formal requirements (current use in the U.S./home country registration) and intrinsic grounds for refusal (and the evidence of its use, if applicable) with special focus on its geographical claim (basically its possible genericness or deceptiveness, and the systems of control), publication, possible opposition stage, decision, possible appeal to the TTAB, and later either to the corresponding Federal District Court or directy to the Court of Appeals of the Federal Circuit and finally to the Supreme Court.- FONTINA (“generic” for cheese)

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Some examples of US geographical Certification Marks

• ROQUEFORT (in Europe: mark and PDO)• BRUNELLO DI MONTALCINO• LIEBFRAUMILCH• MOSEL• DARJEELING• JAMAICA BLUE MOUNTAIN COFFEE• COGNAC (unregistered – under Common-Law)

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Protection as an individual or collective trademark

• In principle, GIs are descriptive, but they can be registered as individual or collective trade marks (or service marks) if they have acquired a:

“secondary meaning”

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GIs as Common-Law (non-registered) Trademarks

As consumers or purchasers in the U.S. primarily understand COGNAC as a designation to refer to brandy originating in the French region with that name, and not elsewhere and since there is a control and limitation of use of the designation which meets certain standards of geographical origin, the TTAB held that COGNAC was a common-law certification mark.

INAO v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998)

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Some disadvantages of protecting GI as trademarks

• Trademarks can become generic• Limited duration: 10 years (therefore, they need a

watch service for renewal).• They can lapse or be cancelled based on lack of use• Registration and renewal cost money• Usually, there is a public action, and this is stronger, in

the systems where there is provision for registration of GIs as such (“sui generis”)

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Miguel Angel Medina

ELZABURU, Spain, European Unión

Chair of MARQUES Geographical Indications Team