AAAML - XI International Congress Geographical Indications and Trademarks Parma March 2013 oriGIn, the Global Alliance of GI Producers

GIs: a global reality  EU: some GIs (not including non-agri GIs), 54 billion EUR worldwide  Several third-country GIs protected in the EU  Some 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 enforcemen t

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 recently finalized  As of june 2009, 932 Chinese GIs (AQSIQ System )  Foreing GIs registered: Cognac, Scotch Whisky, Napa Valley  GIs protected in Russia  GI Register in Russia: some 149 entries  Foreign 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 oriGIn and International Conference Bordeaux, France May 2013

Thank you! Ida Puzone, Project