INTERNATIONAL TRADEMARK ASSOCIATION MODEL FRAMEWORK FOR A GI REGISTRATION SYSTEM Paul W. Reidl Law Office of Paul W. Reidl Modesto, California, USA October 2009

Why is TRIPS Article 23 (4) so Controversial? Both Trademarks and GI’s are valuable assets. As governmental creations, GI’s are sometimes greeted with suspicion; perception that government can be coercive and arbitrary. Possibility of manipulation to produce an unfair competitive advantage. Which is superior: GI or TM? Under what circumstances? Transnational vs. National: TM and semigenerics

IS IT POSSIBLE TO RECONCILE THESE?

INTA’S BASIC PRINCIPLES Equality – both are valuable forms of intellectual property. First in time, first in right. The consumer should come first. Due process for both GI’s and TM’s. Equal access. Fairness.

ARTICLE 23 REGISTER Follow the Madrid Model: – Country of Origin Designation – WIPO registration – National Registrations – Due Process

Preliminary Steps Designation of a Domestic Article 23 Registrar and an entity responsible for the Registry. Notification to WIPO of same.

Stage 1: Country of Origin Recognition Application for registration on the Domestic Article 23 Registry Application must specify and define the GI to be protected Application must designate countries in which protection is to be extended.

Stage 2: Notification to WIPO The Domestic Article 23 Registrar will notify WIPO just as they do with Madrid trademark applications.

Stage 3: WIPO Review WIPO will make sure that the application satisfies the formalities, then it will notify the Article 23 Registrars in the designated countries.

Stage 4: Examination by the Article 23 Registrars in the Designated Countries Absolute grounds for refusal: generic, primarily misdescriptive, etc. Relative grounds for refusal, i.e., prior trademark or GI Ability of refused GI owner to challenge

Stage 5: Opposition or Cancellation Relative and absolute grounds Due process

Advantages Puts GI and TM on equal footing Uses a recognized and accepted procedure Adapted to national rules; preserves national sovereignty and protects the consumer – “Veracruz” example – Budweiser example

Advantages Easier and less expensive than a new system More feasible for TM holders because they do not have to persuade their government to do battle on their behalf to protect their private rights