Geographical Indications and Trademarks: War or Peace? by Dietrich C. Ohlgart Warsaw, June 8, 2006

Transcription

1 Geographical Indications and Trademarks: War or Peace? by Dietrich C. Ohlgart Warsaw, June 8, 2006

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3 Today, there is a global market for goods and services Trademarks and GIs are territorial In the trans-border trade, conflicts between trademarks and GIs are inevitable Examples: Torres Budweiser 3

4 TRIPS provides mandatory rules for the protection of: trademarks (Art ) and GIs (Art ) 4

5 Art. 14 of EC Regulation 2081/92 on the protection of GIs provides: a prior GI trumps a later trademark a prior trademark trumps a later GI only if it has repute and renown (Art. 14 (3)) co-existence between prior trademarks and later GIs (Art. 14(2)) 5

6 Australia and US v. EU before the WTO Dispute Settlement Board EU: there is an inherent superiority of GIs over trademarks It would be unfair to deprive the population of the use of GIs for the exclusive benefit of an individual trademark owner, simply because he happened to register the name first as a trademark. That statement means war 6

7 Advocate General Francis Jacobs in the HAG II case Trademarks are no less important and do not deserve less protection than any other form of intellectual property; Trademarks are nothing more or less than the fundament of most marketplace competition 7

8 Without trademark protection there would be little incentive for manu- facturers to develop new products or to maintain the quality of existing ones 8

9 How can peace be reached in the conflict between trademarks and GIs? Priority rule ECJ: Priority is the basic principle of trademark law and more generally of all IP law Territoriality principle Co-existence causes dilution of the value of the prior right 9

10 Defences of the EU: Art. 24 (5) TRIPS It provides that the implementation of the GI provision of TRIPS shall not prejudice the validity or use of prior trademarks Art. 24 (5) does not mention the term co-existence Art. 24 (5) is a restriction of the protection of GIs and not an exception of the priority rule of Art. 16 TRIPS 10

11 Art. 17 exception to Art. 16 Limited exceptions to the right conferred by a trademark, such as fair use of descriptive terms provided that such exceptions take account of the legitimate interests of the owner of the trademark and third parties 11

12 The Dispute Settlement Panel interpreted Art. 17 very narrowly Art. 17 does not apply if there is a relatively high likelihood of confusion with the pre- existing trademark There is always a relatively high likeli-hood of confusion if the GI is identical to the trademark and used for the same goods 12

13 ECHR decision A-B v. Portugal A-B filed the Budweiser trademark in 1981 registered in 1995 in 1986, a bilateral treaty on the protection of GIs protected Ceskobudejovicke pivo 13

14 Court of Appeals held that Budweiser violates the bilateral treaty although consumers were not misled. Supreme Court upheld the decision 14

15 A-B claimed unlawful expropriation Possession (property) is protected in Art. 1 of Protocol No. 1 of the European Convention on Human Rights A finally registered trademark is protected as possession against unlawful expropriation Is a TM application also a protected right? 15

16 Dissenting judges say Yes It is a protected legitimate expectation amounting to a possession 16

17 WTO Ministerial Conference in Hong Kong in December 2005 Extended protection of GIs is on the agenda Art. 22 TRIPS protects GIs against the registration and use of trademarks misleading as to the geographical origin of the goods 17

18 Art. 23 TRIPS grants absolute protection for GIs for wines and spirits even if a conflicting trademark does not mislead absolute protection covers protection against the use of a sign in translation 18

19 Proposal discussed in Hong Kong Extension of Art. 23 providing protection of GIs for all goods not only wines and spirits Opposed by several members of the WTO including Argentina, Australia, Canada, Japan, USA No consensus has been reached 19

20 Discussion continues; there is doubt that a consensus can be reached by July 31,

21 Extended protection of GIs would be at the expense of trademarks There are more than 2 mio place names in the world All these names and their translations into more than 4,000 languages would no longer be available for use as a trademark (e.g. Philadelphia, Nokia) 21

22 Conclusion: The extended GI protection is based on the thinking that GIs are superior to trademarks Peace can only be reached if GIs are treated on the same footing as trademarks Conflicts between these signs should be resolved by the principles of priority and territoriality 22