Geographical Indications: ideal IP tool to protect local value AITOR POMARES origin LB&A Asociados Law Firm

Transcription

1 Geographical Indications: ideal IP tool to protect local value AITOR POMARES origin LB&A Asociados Law Firm June 23, 2010 Seoul (South Korea)

2 What is a GI? - GEOGRAPHICAL NAME - PROTECTING A PRODUCT - LINKED TO TERRITORY - QUALITY / REPUTATION / CHARACTERISTICS - IP RIGHT - Distinctiveness - Exclusive right - Has to be registered - Territoriality

3 Trademark system Problems to register a geographical name (except for collective and certification TMs) Priority for registered trademarks Individual ownership (except for collective and certification TMs) Limited protection: 10 years (plus renewals) if used. A product can become generic Does NOT cover translation or expressions like type style, etc. Fees for registration, class, renewals, etc. Private enforcement Comparison TM / GI systems Sui Generis GI system No problem to register and protect geographical names NO first in time first in right clause Collective ownership Indefinite protection Registered names never generic Covers protection in translation + use with expressions like «style», «type» No registration costs / Single fee Private and Public enforcement

4 Comparison TM / GI scopes of protection Trademarks Likelihood of confusion approach (even for collective and certification trademarks). Geographical Indications Misleading indications Translations Use of the GI accompanied by expressions such as kind, type, style, imitation or the like. Evocation (EU)

5 translation type

6 evocation? / P.D.O. / NON P.D.O.

7 Benefits of GIs for local value GI prevents the relocation of production GI Production rooted in a region = emphasis on the origin GI protection available to all producers of the area who meet recognized standards Probably only form of IP that local communities can own - Collective right - Allows for the protection of existing products - Does not require local communities to innovate TM Area of production not relevant = emphasis on the company holding the brand TM Protection only available to the company that owns the brand

8 G.I. Protection AT NATIONAL LEVEL Different systems: Unfair competition, consumer protection laws: Difficult, expensive and largely uncertain Certification / Collective TM system: unsuitable protection Sui generis GI system: most suitable protection for traditional products linked to their geographical origin.

9 G.I. Protection AT THE INTERNATIONAL LEVEL Bilateral agreements Reciprocity between two countries De minimis GI protection EU / Mexico (Council Decision 97/361/EC), only GIs for spirits. Ongoing negotiations: EU / South Korea, EU / Peru and Colombia Multilateral agreements LISBON AGREEMENT Registration (administered by WIPO) and protection Extension of protection to countries other than the country of origin 26 member states

10 G.I. Protection Multilateral agreements TRIPS AGREEMENT Pros: Large definition of GIs Wider scope of protection: applied by all 153 members of WTO Effective enforcement measures Cons: Uncoordinated implementation Enhanced protection only for wines and spirits Burden of proof on the GI holder (no registration system) = legal uncertainty No prevention of genericity No protection against prior trademarks

11 origin Organisation for an International Geographical Indications Network When? created in 2003 What? first international organisation (NGO) of GI producers Carry out advocacy campaigns for a more effective international legal system to protect GIs Help GI producers enforce their rights in foreign jurisdictions Promote GIs as a tool for sustainable development Act as a platform for worldwide GI producers and experts: exchange of best practices

12 origin Today Some 150 organizations of producers from 40 countries Representing more than 2-million producers Secretariat based in Geneva to closely follow the main multilateral negotiations on GIs

13 A decentralised structure: President and VPs President Ramón González Figueroa (Mexico) North Africa &Middle East Asia North America Elizabeth Barham Europe Z. Charrouf (Morocco) Sub-Saharan Africa Bernard Gichovi (Kenya) Zheng Weihua (China) K Subodh Kumar (India) (USA) Central America Adargelio Garrido de la Grana (Cuba) South America José Moquillaza (Peru) Leo Bertozzi (Italy) Tomislav Galovic (Croatia) J. Enrique Garrigós (Spain)

14 origin s position on international negotiations At the WTO Doha Round : The extension of art. 23 to all GIs (including the extension of the Register); The establishment of a Multilateral Register: - Binding for all WTO members; - Open to all products; - Producing meaningful legal effects (help producers enforce their rights in foreign jurisdictions as well as national offices to take sound decisions concerning the registration of GIs and trademarks). At WIPO: Enlarge the Lisbon Agreement base of Members States; Carry out joined technical assistance activities to promote the concept of GIs in developing countries.

15 ... and further benefits for members Legal advice origin Market Watch Innovative promotion for GIs Free of charge participation in international exhibitions First origin Art Culinary Award (General Assembly, Teruel, June 2009) XV Anniversary of CRT (free of charge stand for members) Guadalajara, Mexico 2009) Free subscription to online services (IP Watch) Partnerships: Habanos- Tequila, etc

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