aaaml - xi international congress geographical indications and trademarks parma 15-16 march 2013...
TRANSCRIPT
AAAML - XI International CongressGeographical Indications and Trademarks
Parma 15-16 March 2013
oriGIn,the Global Alliance of GI Producers
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 Trademarks
Need of secondary meaning (except certification marks)
“First in time first in right” principle
Individual ownership (except collective and certification marks)
10-year protection + need to use
Name not shielded from “genericity”
Protection: likelihood of confusion approach
Registration costs + renewals
Private enforcement
Sui Generis
No need of secondary meaning
Possible coexistence (good faith)
Collective ownership
Indefinite protection
Registered names never “generic”
Covers protection translation + with expressions like « style » + evocation
No registration costs / single fee
Private and Public 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?
Trademark System
Sui generis system
Ministry of Agriculture
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
GI Protection Systems in China
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 finalizedAs of june 2009, 932 Chinese GIs (AQSIQ System )Foreing GIs registered: Cognac, Scotch Whisky, Napa Valley
GIs protected in RussiaGI Register in Russia: some 149 entriesForeign 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 oriGInand International Conference
Bordeaux, France 20-21 May 2013
