GEOGRAPHICAL INDICATIONS AND APPELLATIONS OF ORIGIN: AN OVERVIEW Florence Rojal Legal Officer Lisbon Registry Brands and Designs Sector Tbilisi 12 November 2012

Distinctive Signs Distinctive Signs for Individual Use Trademarks (goods & services) Distinctive Signs for Collective Use Collective marks Certification marks Geographical indications Appellations of origin Indications of source Collective Marks -Type of mark reserved for the use by the members of a collective body (ex: association or cooperative of manufacturers, producers or traders) -Collective mark is owned by a collective body (issues regulations governing the use of the mark/ quality standards) -Individual trademark can be used along with collective mark Certification Marks -Geographical Indications and Appellations of Origin (either protected under sui generis legislation, passing off/unfair competition law or administrative regulations) -Owned by a certification authority (local government entity or private association which is not itself engaged in the production or the trade of the product concerned) -A certification mark may normally be used by everybody whose products comply with the requirements set out in the regulation

Subject-Matter of Protection (GIs and AOs) Indication of a Connection between Characteristics of Products and their Geographical Origin Informs consumers of the uniqueness of the products derived from this connection (typicality) Represents the collective goodwill derived from this uniqueness (reputation) Value-added The higher the reputation the higher the commercial value -High risk of misappropriation and counterfeiting calls for protection on a national and international level. -Ex: Champagne, Cognac, Roquefort, Chianti, Porto, Tequila, Darjeeling…

Differences between GIs and AOs AOs (Lisbon, Art.2) Geographical denomination Refers to quality or characteristics of a specific product Due exclusively or essentially to the geographical environment (natural or human factors) AO= Special category of GI Only existing multilateral registration system for the protection of AOs GIs (TRIPS, Art.22.1) Indication Refers to quality, reputation, or other characteristic Essentially attributable to its geographical origin Art. 22.1 of TRIPS: Indications which identify a good as originating in the territory of a WTO 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. Art. 2 of Lisbon Agreement: The geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors. The TRIPS Agreement introduces an alternative (‘a given quality,reputation or other characteristic’/ one single criterion is sufficient). This helps to avoid disadvantaging those GIs that do not apply to agricultural or crafts products but to industrial products (difficult to establish a qualitative link between product and geographical environment in such case). An AO is a GI with stricter specifications. For example contrary to an AO, a country could allow, for example, producers to import a product from another place than the one designated by the GI but process the product at the place specified in the GI (indeed the development of the product does not have to be necessarily situated entirely in the defined geographical area) AOs must have ‘quality or characteristics’ determined by natural (climate, soil) or human factors (know-how) from a specific geographical area. Whereas ‘reputation’ derived from geographical origin is enough to protect a GI under TRIPS (the Lisbon model does not include reputation as a linkage factor connecting the product to the place/ instead the reputation of a geographical location results from the quality or characteristics of the product) ‘Indications’: GIs are not restricted to geographical names but may also include other signs such as symbols or emblematic images (ex: Eiffel tower for Paris, Matterhorn for Switzerland, the Swiss Cross…etc.) ‘Essentially attributable to its geographical origin’ (not restricted to products having a quality and characteristics due to natural and human factors associated with the geographical environment) GI can also be a symbol referring to or associated with a particular geographical area (e.g. the cartographic outline of France with a red itinerary for Burgundy wines)

Different systems of protection worldwide Multilateral Agreements Protection of GIs under TRIPS Protection of AOs under the Lisbon Agreement -Legal protection they provide is based on various means of protection on the national level: an act of public law (law, decree, administrative decision, ordinance), or a judicial decision Regional Systems of Protection (EU, OAPI…) Bilateral Agreements Under such agreements two States or two trading partners agree to protect each other’s GIs General laws focusing on business practices (unfair competition and consumer protection provisions) Specific protection systems for GIs and AOs (sui generis) Trademark law provisions devoted to collective marks and/or certification and guarantee marks Administrative schemes of label control At the national level, the type of definition given to the term ‘GI’ might differ from country to country. Prior to their adherence to the TRIPS Agreement, only few Member States had in place special systems for the protection of GIs. It is worth recalling that the term GI finds its origin in international treaty law (i) widespread adherence to the TRIPS Agreement has had the consequence of introducing legal obligations concerning GIs into national legislation around the world. (ii) the definition provided by Art. 22.1 of the TRIPS Agreement has been used by many countries as a basis for their national legislation (TRIPS definition has become the common denominator in this field of law, but differences remain between legislations) Exceptions to the protection of GIs: (a) for generics (when name has become the common designation for the product), and (b) for continuing use of ‘grandfathered’ IP rights, pre-existing trademark rights, or rights of use established in good faith. When countries do not have legislation on GIs, producers seek to trademark their products. This is the case in the US, where producers have a choice between a trademark, a certification mark or a collective mark, unless geographically misdescriptive. The following are some regional and multilateral agreements governing the protection of certain GIs: -Agreement between the European Community and the United Mexican States on the mutual recognition and protection of designations for spirit drinks, OJ L 152, 11/06/1997 pp. 16-26 -Agreement between the European Communities and Australia on trade in wine, OJ L 86, 31 March 1994 & second Agreement in 2009 -France-Ecuador Agreement for the Protection of CHAMPAGNE (1959)

Sui Generis Systems for GIs and AOs Legal protection is based on an act of public law (law, decree (ex: France), ordinance (Switzerland)…) adopted at the conclusion of an administrative procedure involving representatives of the producers concerned and the government administration A group or a natural or legal person may apply for the registration of a geographical indication or the promulgation of a decree establishing an appellation of origin The application process typically involves an opposition procedure 6

Collective Marks and Certification or Guarantee Marks Type of mark reserved for the use by the members of a collective body (ex: association or cooperative of manufacturers, producers or traders) Certification Marks Owned by a certification authority (local government entity or private association which is not itself engaged in the production or the trade of the product concerned) Agricultural Label Registered as a collective certification mark in the name of the entity that controls its use and certifies that a foodstuff or a non-transformed agricultural product (such as cereal seeds) possesses a combination of specific characteristics and a level of quality which is higher than that of similar products 7

Legal Regulation of Business Practices Unfair Competition Law Commercial practices which mislead the public with respect to the geographical origin of products constitute an act of unfair competition Administrative Regulations Administrative regulations of product labeling and food safety standards represent another means of ensuring fair trade and consumer protection 8

Regional systems of protection (EU) Pecorino Romano (PDO) Arroz del Delta del Ebro (PGI) 9

Examples of Certification Trademarks 10

Collective Marks 11

Protection of GIs in Foreign Markets Possible exceptions to exclusive rights over a GI: Prior rights (previous TM rights, or good faith use) Generic terms Homonymous indications

Geographical Indications (GI) and Appellations of Origin (AO) WIPO’s Role Administration of several international agreements relevant for the protection of GIs/AOs Forum for discussion of possible ways to improve the international protection of GIs/AOs Standing Committee on the Law of Trademarks, Industrial Designs and GIs Working Group on the Development of the Lisbon System Provision of technical assistance

Technical Assistance Drafting Legislation Application Criteria for Establishment GI or AO Monitoring and Enforcement Procedures Protection under International Treaties

Overview of the international instruments related to the protection of GIs/AOs Paris Convention (1883) Madrid Agreement (1891) (repression of false and deceptive indications of source) Madrid Agreement and Protocol (1891, 1989) (international registration of marks) Lisbon Agreement (1958) Bilateral Agreements TRIPS Agreement (1994)

Overview of the Lisbon Agreement Established to facilitate the international protection of appellations of origin (AOs) through a single registration procedure AO definition: ‘The geographical denomination of a country, region, or locality,which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors’. Administered by WIPO, which keeps the International Register of AOs Full name: Lisbon Agreement for the Protection of Appellations of Origin and their International Registration Protection provided under Lisbon does not rule out any protection that might already exist in a member country by virtue of other international treaties, such as Paris Convention, Madrid Agreement, TRIPS Agreement, by virtue of bilateral or plurilateral agreements, or by virtue of national legislation or court decisions. Art.22.1, TRIPS GI definition: 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 charateristic is essentially attributable to its geographical origin. 16

Lisbon Union: 27 Member States Asia (4) Georgia Islamic Rep. of Iran Israel DPR of Korea Africa (6) Algeria Burkina Faso Congo Gabon Togo Tunisia Europe (11) Bulgaria Czech Rep. France Hungary Italy Moldova Montenegro Portugal Serbia Slovakia The FYR of Macedonia America (6) Costa Rica Cuba Haiti Mexico Nicaragua Peru

905 registrations – 800 in force France 508 Czech Rep. 76 Bulgaria 51 Italy 31 Hungary 28 Georgia 20 Cuba 19 Mexico 14 Peru 8 Algeria 7 Total registered since 1995: 170 - of which since 2003: 55 Portugal 7 Tunisia 7 DPR of Korea 6 Slovakia 6 FYR of Macedonia 4 Serbia 3 Montenegro 2 Costa Rica 1 Israel 1 Moldova 1

The Lisbon Agreement Substantive Requirements Possible Responses by Other Contracting Parties Legal Effect

Substantive Requirements (1) Protection in the country of origin. Ex ante recognition required (different means of protection allowed) Protection in other Lisbon countries is subject to the Lisbon definition of “Appellation of origin” (Art. 2(1)) All categories of products can be protected under Lisbon (food, beverages, handicrafts…) -The protection of the AO must have first been formalized by means of legislative or administrative provisions, or a judicial decision or any other form of registration, in the country of origin.

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

-indication of the ground of refusal (any ground) Possible Responses by Other Contracting Parties Declaration of refusal (Art. 5(3) and Rule 9) -Within one year -indication of the ground of refusal (any ground) Statement of grant of protection (Rule 11bis) Advice of grant of a transitional period to third parties (Art. 5(6) and Rule 12) Invalidation (Rule 16)

Example of a refusal(1) Ground for refusal: existence of 2 prior registered TMs using ‘Parma’ in Mexico

Example of a refusal(2) Ground for refusal: risk of confusion as to geographical origin of the product

Legal effect of an international registration under Lisbon Ensures simultaneous protection against any usurpation or imitation of the registered AO in the other Lisbon countries (except: those that have refused or invalidated) Protects the registered geographical denomination against becoming generic in any of those Member States (Art.6) Provides standing for taking legal action (Art.8) Art.3: Protection shall be 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 ‘type’, etc. Art. 6 establishes the presumption that a registered appellation cannot be deemed to have become generic as long as it is protected as an appellation of origin in the country of origin. Indefinite protection (in principle). Art 8: Legal action can be initiated by competent authorities or any interested party (natural persons or legal entity).

Scope of Protection (Art. 3) usurpation imitation even if true origin is indicated even if used in translated form even if accompanied by terms such as “kind”, “type”, “make”, “imitation”

Main objective WG Mandate: Improve the Lisbon system to make it more attractive to users and potential new members of the Lisbon Agreement, while preserving the principles and objectives of the Agreement. In sum: Attract new members (i.e. through accession by IGOs) Increase the number of international registrations In particular, through the establishment of an international registration system for GIs

For further information… Lisbon system web page: http://www.wipo.int/lisbon/en/

THE LISBON WEBPAGE

Registered Appellations of Origin                                       Registered Appellations of Origin The LISBON EXPRESS database The AO Bulletin The Bulletin “Appellations of origin” is the official publication of the Lisbon system. It is issued by WIPO for the publication of new registrations and other recordings in the International Register as well as information concerning changes in the legal framework of the Lisbon system. In addition, the Bulletin contains statistical information concerning registered appellations of origin. -Since January 2012 (Issue No. 40) the distribution of the Bulletin only takes place electronically by means of its publication on the Lisbon system website (discontinuation of the paper version). 31

Example of an International Registration under Lisbon: Huile d’Olive de la Vallée des Baux de Provence (AO No. 806) Registered on 29.06.98 Holder: Producers and groups of producers enjoying the appellation of origin in question Area of Production: Delimited territory within the department of Bouches-du-Rhône Legal Basis: Decree of August 27, 1997 The olive oil from the Valley of Baux de Provence is produced in a small territory which is only 7km wide and 25km long, located on the east side of the Rhône River. Such a rocky soil gives a characteristic aroma to the olives that are later used for the preparation of olive oil. Recognition of this unique characteristic became the basis of a French appellation of origin granted to the olive oil from Baux de Provence in 1996. The protection of the olive oil concerns 2.300 producers and represents 20% of the national production (400.000 liters per year). The list of specifications governing the use of the appellation contains strict requirements such as the authorized plantation density, the size of the olive trees, or the delay within which an olive must be processed after it has been picked up. To benefit from international protection, the French AO was later registered with WIPO by the French competent authorities (INAO), under the Lisbon Agreement, on June 29, 1998.

Examples of Registered AOs under Lisbon                                                                                                                                           

Interactive Lisbon World Map

Informative Brochure on the Lisbon System (WIPO publication No.942)

E-mail: florence.rojal@wipo.int THANK YOU E-mail: florence.rojal@wipo.int 36