aaaml - xi international congress geographical indications and trademarks parma 15-16 march 2013...

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

Thank you!

Ida Puzone , Project Manager@ ida@origin-gi.com

http://www.origin-gi.com

@oriGInNetwork