1 xi int. congress aaaml a comparison of the three gi schemes in the eu a trade mark practioner’s...
TRANSCRIPT
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XI INT. CONGRESS AAAML
A comparison of thethree GI schemes in the EU
A trade mark practioner’s perspective…
Benjamin FontaineParma, March 2013
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« trade mark » « trademark » « trade mark »
« product specification » « product specification » « technical file »
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Definition PDO (1) Definition PDO (1) Not available
… whose quality or characteristics are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors
… its quality and characteristics are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors
Not available
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Definition PDO (2) Definition PDO (2)
… the production steps of which all take place in the defined geographical area
Exception: larger area for raw materials, limited to live animals, meat and milk
… its production takes place in this geographical area
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Definition PGI Definition PGI Definition PGI
… whose given quality, reputation or other characteristics is essentially attributable to its geographical origin.
… it possesses a specific quality, reputation or other characteristics attributable to that geographical origin
… where a given quality, reputation or other characteristic of that spirit drink is essentially attributable to its geographical origin
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Opposition deadline Opposition deadline Opposition deadline
3 months 2 months 6 months
Mandatory discussions between the parties,
and decision if necessary
Acceptance or refusal of the GI
Acceptance or refusal of the GI
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GIs -v- trade marks; GI not registered…
Where, in the light of a TM’s reputation and renown and the length of time it has been used, registration of the name (…) would be liable to mislead the consumer as to the true identity of the product
Where, in the light of a TM’s reputation and renown, protection is liable to mislead the consumer as to the true identity of the wine
Where, in the light of a TM’s reputation and renown and the length of time is has been used in the Community, registration is liable to mislead the consumer as to the true identity of the product
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« Door » « E-Bacchus » Annex III reg. 110/2008+
« e-Spirit-Drinks »
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Scope of protection (1)
Indirect or direct commercial use of a registered name in respect of products not covered by the registration where those products are comparable to the products registered under that name or where using the name exploits the reputation of the protected name
Including when those products are used as an ingredient
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Scope of protection (2)
Any misuse, imitation or evocation, even if the true origin of the products or services is indicated (…)
Any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product that is used on the inner or outer packaging, advertising material, (…)
Any other practice liable to mislead the consumer as to the true origin of the product
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GIs -v- trade marks; Refusal or cancellation of trade marks…
the use of which would contravene art. 13(1) and which relates to a product of the same type
Corresponding to one of the situations referred to in Article 45(2) and relating to a product falling under one of the categories listed in Annex IV
If its use would lead to any of the situations referred to in Article 16.
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Gis -v- Trade marks; Coexistence
… a TM the use of which contravenes Article 13(1) which has been applied for, registered, or established by use if that possibility is provided for by the legislation concerned, in good faith within the territory of the Union, before the (application date) of the GI, may continue to be used and renewed for that product (…) provided that no grounds for its invalidity or revocation exist
Also valid for TMs applied for before1 April 1996 + no mention of renewals
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GIs -v- trade marks in the current CTM Regulation
Art. 7.1(k)7.1(k),, express reference to Reg. 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”
Article 7.1(j)7.1(j), “The following shall not be registered: (…) 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”.
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GIs -v- trade marks in the future CTM Regulation
The « GI Leaks »
Art. 7.1(j), « the following shall not be registered: trade marks which are excluded from registration and shall not continue to be used pursuant to Union legislation or international agreements to which the Union is party, providing for protection of designations of origin and geographical indications. »
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The future of GIs in the EU???
Commun tool: Single Regulation, single concept, single proceeding, single registry, single relationship with trade marks
Specific rules for foodstuff
Specific rules for wine
Specific rules for spirits
Specific rules for aromatized wines
Specific rules for hand crafted goods
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