the world intellectual property organization (wipo) and the turkish patent institute istanbul,...

WIPO TRAINING OF TRAINERS PROGRAM ON EFFECTIVE INTELLECTUAL PROPERTY ASSET MANAGEMENT BY

SMALL AND MEDIUM-SIZED ENTERPRISES (SMEs) organized by

the World Intellectual Property Organization (WIPO)the World Intellectual Property Organization (WIPO)and the Turkish Patent Instituteand the Turkish Patent Institute

Istanbul, September 13 to 15, 2011Istanbul, September 13 to 15, 2011

Intellectual Property, Branding and Marketing: Geographical Indications,

Appellations of Origin, Collective Marks, Certification Marks

international systems for legal protection

presented by Vladimir Yossifov, Consultant, IP Services

Terminology and Definitions – many expressions and even more definitions

Geographical indication - indication of geographical origin -географическое указание - protected geographical indication - Coğrafi göstergesi - Coğrafi kökeni göstergesi - korunan coğrafi işaret

geographical designation - coğrafi tanımı - protected designation of origin - koruma altına alınmış menşe

indication de provenance - denominación de origen - kaynak göstergesi - indication of source

appellation of origin - appellation d’origine controlée –AOC - kontrol edilen orijinal adlar - наименование места происхождения

Terminology and Definitions – many expressions and even more definitions

viticultural area - quality wine produced in a specified region - vin de pays - şarap ülke - table wine - sofra şarabı

denominación específica - özel isim - reserved description - ayrılmış açıklamasına

agricultural and food product certificate - tarım ve gıda ürün sertifikası

agricultural and food product label - tarım ve gıda ürün etiketi

Country Of Origin Labeling (COOL) - Kökeni Etiketleme Ülke (COOL)

What is a Geographical Indication - GI

A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that place of origin. Very often, a geographical indication includes the name of the place of origin of the goods.

Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil. Geographical indications may be used for a wide variety of products, whether natural, agricultural or manufactured.

Whether a sign is recognized as a geographical indication is a matter of national law

What means INDICATIONS OF PRODUCT ORIGINThe European Union – Regulation* on agricultural

products and foodstuffs (excluding all wine-sector products, except wine vinegar) from a defined geographical area.

A link between the characteristics of certain products and their geographical origin = may qualify for either a protected geographical indication (PGI) or a protected designation of origin (PDO).

Use of corresponding EU symbols on the labels of such products provides consumers with clear and concise information on their origin. *Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.

What means INDICATIONS OF PRODUCT ORIGINThe European Union – a Protected Designation of Origin (PDO) covers the term

used to describe foodstuffs which are produced, processed and prepared in a given geographical area using recognised know-how (such as Mozzarella di Bufala Campana),

a Protected Geographical Indication (PGI) indicates a link with the area in at least one of the stages of production, processing or preparation (such as the famous Spanish confectionery Turrón de Alicante ).

The link with the geographical area is therefore stronger for PDOs.

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

What means INDICATIONS OF PRODUCT ORIGINThe European Union

Directive 2000/13/EC* on labelling, presentation and advertising of foodstuffs requires obligatory indication of the place of origin or provenance of the product (to avoid misleading the consumers)

*see: Directive 2000/13/EC of the European Parliament and of the Council of 20 March 2000 on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs, as amended

What means INDICATIONS OF PRODUCT ORIGINTerm used in International Trade and Commerce COO – Country of origin is the country where goods

shipped were produced. Usually the country of origin is the same as the country of departure. Also called country of provenance.

In the United States- Country Of Origin Labeling (COOL) is a legal requirement under the 2002 Farm Bill* - This law requires retailers to provide country-of-origin labeling for many food products (fresh meat, fruits, nuts, vegetables).

*Title X of Farm Security and Rural Investment Act of 2002, as amended on 29 September 2008

Geographical Indications- subject-matter of protection

Indication of a Connection between Characteristics of Products and their Geographical Origin

Typicalityquality or characteristics of a product that make

the product unique and which allow the product to be identified geographically

Reputationdegree of recognition by consumers of the

typicality of products and the collective goodwill that they represent on

the market

Collective marks

Collective marks = signs which distinguish the geographical origin, material, mode of manufacture or other common characteristics of goods or services of different enterprises using the collective mark.

The owner of a collective mark may be: an association (of which those enterprises

are members) any other entity, including for example, a

public institution or a cooperative.

Collective marks

A collective trade mark or collective mark is a trademark owned by an organization (such as an association), whose members use them to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization.

National trade mark laws in some countries (such as Finland, Germany, Hungary and Switzerland) provide for the filing of the regulations as an additional requirement for registration of the collective trade mark

Collective marks

The owner of a collective mark is responsible for ensuring the compliance with certain standards (fixed in regulations concerning the use of the collective mark) by its members. Hence, the function of the collective mark is to inform the public about certain particular features of the product for which the collective mark is used.

Collective marks are used to promote products which are characteristic of a given region.

Certification marks

Certification marks are given for compliance with defined standards, but are not confined to any membership.

Certification marks may be used by anyone who can certify that the products involved meet certain established standards.

WOOLMARK = famous certification mark which certifies that the goods on which it is used are made of 100% wool.

Certification marks

The main difference between collective marks and certification marks is that

collective marks may only be used by a specific group of enterprises, e.g., members of an association, while

certification marks may be used by anybody who complies with the standards defined by the owner of the certification mark.

Certification marks

Certification marks are given for compliance with defined standards, but are not confined to any membership.

Certification marks may be used by anyone who can certify that the products involved meet certain established standards.

WOOLMARK = famous certification marks which certifies that the goods on which it is used are made of 100% wool.

Basis and Justification for Protection

Quality or CharacteristicsReputationLink between the Geographical Origin and

the Quality, Reputation or Other Characteristics of the Product

Approach to GI Protection Around the WorldLaws focusing on business practicesno specific protection of GIs, prohibit business practices

based on misuse of GIs, e.g. laws on the repression of unfair competition, the protection of consumers, the labeling of products, health protection or food safety.

Sui generis legislationLaws on GI and/or AO – rules on specifically defined

characteristics of the products or methods of their production and related to their origin

Trademark lawprovisions protecting GIs against the registration and

use as trademarks. provisions protecting GIs by means of collective,

certification or guarantee marks.

Bilateral Treaties and AgreementsBilateral treaties on GIs protect certain GIs (agreed list by product group)

against all illegal commercial use and against use of delocalizing expressions.

The names of countries and cities cantons are granted absolute protection.

General provision preventing uses of indications of source which mislead the public. They also specify that GIs must be used in conformity with the law of the country of origin (re- application of the law of the country of origin).

Prohibit the illicit appropriation of an indication of source as a trademark. Provision that an indication of source (GI) cannot be transformed into a

generic name in the country where it is protected.

Approach to GI Protection Around the World

Recognition and Protection of a GI in other countries

The basic criteria for protection of GI do not differ much at the national and regional levels

Obtaining protection abroad is always subject to recognition of the GI in the Country of Origin and the absence of earlier similar or identical registration of another distinctive sign – e.g. mark or denomination

Protection is not automatic - must be requested by interested party

Scope of Protection – what is prohibited by law

Use of a recognized GI by a person not authorized

to use it, without any test as to the nature of that use

which is "false", "incorrect", or "does not correspond to the place specified

which might mislead, deceive or create a false impression regarding the geographical origin of the products

Use damaging or exploiting the reputation, irrespective of whether the public is misled

on products which, while originating in the indicated area, do not meet the production or product requirements on which the use of the GI is conditional

Misuse, imitation or evocation, even with delocalising qualifiers

Acts contrary to "good practice" or "honest commercial practices“

Conduct liable to mislead or deceive the public

Non-authorized use of reputation or goodwill

International Protection of GIs Recognized and Protected in their Country of Origin

Paris Convention (1883) (Art 1 and 10)

Madrid Agreement (1891) (repression of false and deceptive indications)

Madrid Agreement and Protocol (1891, 1989) (international registration of marks)

Lisbon Agreement (1958)

Bilateral Agreements

TRIPS Agreement (1995)

Regional Agreements (European Union, OAPI, Andean Community, )

Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 195827 Member States – Africa (6) - Algeria, Burkina Faso, Congo, Gabon, Togo, Tunisia, America (6) - Costa Rica, Cuba, Haiti, Mexico, Nicaragua, Peru, Asia (3) - Democratic People's Republic of Korea, Iran (Islamic

Republic of), Israel, Europe (12) - Bulgaria, Czech Republic, France , Georgia,

Hungary, Italy, Montenegro, Portugal, Republic of Moldova, Serbia, Slovakia, The former Yugoslav Republic of Macedonia,

Note: Greece, Morocco, Romania, Spain, Turkey have signed, but not ratified the Lisbon Agreement

Lisbon Agreementwhat can be protected

Article 1(2) - “recognized” and “protected” in the Country of Origin

a product with a certain reputation, as defined in Article 2(2);

whose appellation meets certain qualifications, as defined in Article 2(1); and

is protected by virtue of some formal means (law, decree, judicial decision or registration)

Lisbon Agreement - definition of Appellation of Origin

required qualifications (Article 2(1))The geographical denomination of a country, region, or locality, which serves to designate a product originating therein, of which the quality or characteristics are due exclusively or essentially to the geographical environment,

including natural and human factors

Definition of “Country of Origin” (Article 2(2))

Requirement of Reputation

The country whose name, or in which is

situated the region or

locality whose name, constitutes

the appellation of origin which has given the

product its reputation

Lisbon Agreement Duration of Protection

The international registration of an appellation of origin assures its protection, without any need for renewal, for as long as the appellation is protected in its country of origin.

(Articles 6 and 7)

Unfair Competition (Article 4)Article 4 confirms the protection that may already exist in a member country by virtue of other international instruments, national law or court decisions

Apart from usurpation or counterfeiting, there are a whole range of acts that may qualify as acts of unfair competition and are to be prohibited

(Records Lisbon Conference 1958, p.816)

Lisbon Agreement Scope of Protection

Effect of Lisbon registrationOther countries will know the precise

appellation of origin to be protectedThese countries will be required to take

position with regard to the appellationThey may refuse protection but, if they don’t,

they should, in principle, prevent the appellation from becoming generic

(Records Lisbon Conference 1958, p.816-818)

Procedure for notification of invalidation (Rule 16 Lisbon

Regulations)

The TRIPS Agreement of 1995153 Member States

Section 3 Geographical IndicationsArticle 22 - Protection of Geographical Indications

Article 23 - Additional Protection for Geographical Indications for Wines and Spirits

Article 24 - International Negotiations; Exceptions

Definition - Art. 22.1Geographical indications are indications

which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin

The TRIPS Agreement Level of protection

Minimum level - Art. 22 - Misleading/confusion test - Unfair competition

Higher level of protection - Art. 23wines and spirits

Outside TRIPS: national laws, bilateral, regional and other

multilateral agreements

The TRIPS Agreement Standards of Protection

(Article 22.2 4)Basic Level of Protection - Art. 22.2-3“Interested parties” must have legal means to prevent

any use of GIs in the designation or presentation of a good which:misleads the public as to the geographical origin of the

goodconstitutes an act of unfair competition

(Art. 10bis Paris Convention)

Refusal or invalidation of the registration of a trademark which can mislead the public as to the

geographical origin of productsdeceptive geographical indications

The TRIPS AgreementStandards of Protection

(Article 23)GIs for wines or spirits shall benefit from additional

protection against ... Any use of the GI

which identifies a wine or a spirit not originating in the area indicated

even where the true origin of the good is indicated; andeven where the GI is accompanied by expressions, e.g.

kind, type, style, imitationCountries allowed to opt for enforcement by administrative action only; no

requirement to show misleading of the public or act of unfair competition

Registration of trademarks not having the geographical origin indicated

Homonymous GIs (for wines)

The TRIPS Agreement Exceptions – Art. 24

Generic terms (“customary”) (Art. 24.6) For goods or servicesFor products of the vine for which indication is

identical with name of a grape variety customary before 1995

Prior trademark rights (Art. 24.5):Good faith before date of application of TRIPS

in the WTO Member;Before the GI has obtained protection in its

country of origin

Certain other prior use (Art. 24.4) (grand-father clause): Goods or services used at least 10

years before signature of the TRIPS Agreement or in good faith preceding that date

Personal names (Art. 24.8)

GIs not protected or used in their country of origin (Art. 24.9)

The TRIPS Agreement Exceptions – Art. 24

The TRIPS AgreementMultilateral Register

(Art. 23.4)

Mandate and ObjectivesIn order to facilitate the protection of

geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS

concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system

The ANDEAN COMMUNITY

ANDEAN COMMUNITY DECISION 486 on Common Intellectual Property Regime of (14.09.2000)

TITLE XII - GEOGRAPHICAL INDICATIONS, CHAPTER I - APPELLATIONS OF ORIGIN and CHAPTER II – INDICATIONS OF SOURCE

4 Member States - Bolivia, Colombia, Ecuador and Peru*

* country party to the Lisbon Agreement

No independent or central regional registration office

Domestic Registration in Member States on the Basis of Common Legislation

Registration procedure (verification of the fulfillment of requirements both under Decision 486 of the Andean Community and under the domestic legislation) is undertaken by the competent national Office of each Andean Community member State.

The ANDEAN COMMUNITYANDEAN COMMUNITY DECISION 486 on

Common Intellectual Property Regime (14.09.2000)

AFRICAN INTELLECTUAL PROPERTY ORGANIZATION (OAPI)

Bangui Agreement of February 24, 1999 revising the Bangui Agreement of March 2, 1977: Title I, Section II, Article 12 and Annex VI – Geographical Indications

16 Member States: Benin, Burkina Faso*, Cameroon, Central African Republic, Chad, Congo*, Côte d’Ivoire, Equatorial Guinea, Gabon*, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal and Togo*.

* 4 countries party to the Lisbon Agreement

Central Registration Office (OAPI)Regional Registration on the basis of Unified

LegislationThe sub-regional legal and regulatory

framework established under the Revised Bangui Agreement enables products of a designated origin to be officially recognized with immediate effect across all the OAPI member States.

AFRICAN INTELLECTUAL PROPERTY ORGANIZATION (OAPI)

Revised Bangui Agreement of February 24, 1999

Provisions on agricultural products and foodstuffs (excluding all wine-sector products, except wine vinegar) from a defined geographical area.

If there is a link between the characteristics of certain products and their geographical origin, they may qualify for either a protected geographical indication (PGI) or a protected designation of origin (PDO).

PGI indicates a link with the area in at least one of the stages of production, processing or preparation.

PDO applied for foodstuffs which are produced, processed and prepared in a given geographical area using recognised know-how

EUROPEAN UNION (EU) Council Regulation (EC) No 510/2006 of 20 March 2006 on the

protection of geographical indications and designations of origin for agricultural products and foodstuffs

Applications for registration of PDO or PGU may only be made by a group of producers or processors or, in exceptional cases, natural or legal persons.

Applications are made to the Member State on whose territory the geographical area is situated.

Where the Member State deems the application to be acceptable, it forwards the single document to the Commission together with a declaration stating that all the necessary conditions have been met.

Where an application for registration concerns a geographical area in a third country, it has to be sent to the Commission either directly or through the authorities of that country.



Within 12 months the Commission checks that the application is justified and that it meets all the necessary conditions. If the conditions are met, it publishes in the Official Journal of the European Union (OJ) the single document and the publication reference of the product specification.

Objections Within six months from the date of publication in the OJ,

any Member State, third country, natural or legal person having a legitimate interest may object to the registration proposed by lodging a duly substantiated statement.

Where there are no objections, the PDO or PGU will be registered.



WIPO manages two international registration systems that facilitate protection abroad of intellectual property rights in respect of products with value-added from their geographical origin, namely:

- the Lisbon System - designed to facilitate the protection of appellations of origin for products with unique characteristics resulting from their geographical origin and forming the collective goodwill and reputation; and

- the Madrid System - which provides the same facility for trademarks including collective and certification marks consisting of or containing a geographical indication.

Lisbon and Madrid Systems - applicable to all categories of products

International Registration of GIsThe Existing Systems:

Lisbon and Madrid

Renewed Interest in the Lisbon System

Increased in Membership since 1997

The WIPO Assembly established Working Group

to explore possible improvements to the procedures under the Lisbon Agreement

three meetings: March 2009, September 2010 and May 2011

Lisbon: 887 registrations - 813 in force

France 508Czech Rep. 76Bulgaria 51Slovakia 37Hungary 28Italy 28Georgia 20Cuba 19Mexico 11

Algeria 7Portugal 7Tunisia 7DPR of Korea 6Peru 4Montenegro 2Moldova 1Israel 1

THANK YOU

Vladimir Yossifov, Consultant, IP [email protected]