The Protection of Geographical Indications

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The Protection of Geographical Indications
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Definition

• Geographical name which identifies a product
  originating from that place, the quality,
  reputation or other characteristic of which is
  essentially attributable to its geographical
  origin
• ?Indication of a Connection between
  Characteristics of Products and their
  Geographical Origin

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Definition (contd)

• Characteristics due to natural and human factors
• product made from particular species/breed
  feeding method used method of storage etc.
• skills specific equipment etc.
• conditions/length of the maturing process

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Examples of GIs

• CHAMPAGNE for sparkling wine (France)
• BORDEAUX for wines (France)
• TEQUILA for alcohol (Mexico)
• CAMEMBERT for cheese (France)

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Standards of Protection (Article 22 of TRIPS)

• Any GI shall be protected against
• Any use in the designation or presentation of a
  good which misleads the public as to its
  geographical origin
• Any use which constitutes an act of unfair
  competition within the meaning of Art.10bis of
  the Paris Convention
• Registration of trademarks which can mislead the
  public as to the geographical origin of products
• Deceptive geographical indications
• Homonymous GIs (for wines)

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Means of Protection

• Laws focusing on business practices
• Trademark law
• Sui generis legislation

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Laws focusing on business practices

• Protection against general standards contained in
  laws relating for example to unfair competition,
  consumer protection, trade descriptions, food
  standards...
• i.e. against specific acts involving use of a GI
  that is not in accordance with honest practices
  in industrial or commercial matters

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Trademark Law

• Collective Mark
• specific sign belonging to a group of
  enterprises
• used by its members for their goods or services

• Certification Mark
• specific sign belonging to an entity supervising
  standards for certain goods or services
• used for goods or services that are in conformity
  with such standards

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Sui generis protection

• Specific legislation on Gis
• recognition through statutory Acts (for example
  Regulations)

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The Lisbon Systemfor theNotification and
Registration of Appellations of Origin
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Purpose of the Lisbon Agreement (1958)

• to facilitate the international protection of
  appellations of origin

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Lisbon Agreement (1958)

• 25 Member States Algeria, Bulgaria, Burkina
  Faso, Congo, Costa Rica, Cuba, Czech Republic,
  Democratic Peoples Republic of Korea, France,
  Gabon, Georgia, Haiti, Hungary, Iran, Israel,
  Italy, Mexico, Moldova, Nicaragua, Peru,
  Portugal, Serbia and Montenegro, Slovakia, Togo,
  Tunisia.
• 854 registrations (781 in force)

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Lisbon Agreement (1958)

• Requirement to file an international application
  Ex ante recognition of protection in the country
  of origin
• country of origin defined as the country in
  which is situated the region or locality whose
  name constitutes
• the appellation of origin

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Substantive Requirements (2)

• Entitlement to file applications
• The competent authority of the country of origin
• Registration shall be effected in the name of
  those having, under their national legislation, a
  right to use the appellation

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Formal Requirements

• Official form
• Fees 500 CHF (registration)
• Language E, F or S
• Translation
• Transliteration
• Indication of the product
• Area of production

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Registration procedure

• Formal examination by WIPO
• Notifications to all other countries of the
  Lisbon Union
• Publication

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Legal Effect(1)

• Effect of international registration
  protection in countries of the Lisbon Union...
  except in countries that issued a refusal of
  protection within the prescribed time-limit (one
  year)

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Grounds of refusal

• As available at the domestic level, in
  particular
• does not meet the definition of GIs
• conflict with an earlier right (trademark or GI)
• the name is generic in the territory concerned

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Legal effect

• Required level of protection (at a minimum)
• - If no refusal issued, protection is ensured
  against any usurpation or imitation, even if the
  true origin of the product is indicated or if the
  appellation is used in translated form or
  accompanied by terms such as kind, type,
  make, imitation, or the like
• - cannot be deemed to have become generic

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Duration of protection

• The international registration ensures protection
  for as long as the appellation is protected, as
  such, in the country of origin
• No renewal required.