Protection of Geographical IndicationsInterregional Workshop for OIC countries, AnkaraApril 3 and 4, 2008: Protection of Geographical Indications Interregional Workshop for OIC countries, Ankara April 3 and 4, 2008 Matthijs Geuze, WIPO


GIs in WIPO : GIs in WIPO International Registration Technical Assistance to Member States Protection of Traditional Knowledge Symposia Standing Committee on the Law of TMs, IDs and GIs Arbitration (Domain Names)


Geographical Indications- subject-matter of protection: Geographical Indications - subject-matter of protection 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


WIPO Standing Committee: WIPO Standing Committee Document SCT/10/4, paragraphs 10-13 Quality legal criterion, allowing a product to be identified qualitative link different for GI than for AO ? disadvantage for countries whose GIs are industrial products ?


WIPO Standing Committee: WIPO Standing Committee Document SCT/10/4, paragraphs 23-26 Reputation history of the product distinctive character of the product consumer’s perception


WIPO Standing Committee: WIPO Standing Committee Document SCT/10/4, paragraphs 27-30 Characteristics other than quality and reputation natural and human factors (“terroir”) any element that contributes to the typicality of the product


WIPO Standing Committee: WIPO Standing Committee Document SCT/10/4, paragraphs 31-36 Link with the geographical origin explains the relationship between the geographical area and one or more elements of the definition Critical element for determining the delimitation of the geographical area Some systems only require delimited zones to differ in geological terms from others


Definition- TRIPS: Definition - TRIPS Geographical Indication Indication which identifies 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 characteristic of the good is essentially attributable to its geographical origin


Definition - Lisbon: Definition - Lisbon Appellation of Origin The geographical denomination of a country, region, or locality, which serves to designate a product originating therein, of which the quality/characteristics are due exclusively or essentially to the geographical environment, including natural and human factors


Definition - Lisbon: Definition - Lisbon “country of origin” The country whose name, or in which is situated the region or locality whose name, constitutes the appellation of origin which has given the product its reputation


Slide11: AO R QC D GE P


Means of Protection: Means of Protection Laws focusing on business practices Trademark law Sui generis legislation concerning specifically defined characteristics of the product or methods of their production Other special protection


International Protection ofGeographical Indications: International Protection of Geographical Indications Paris Convention (1883) Madrid Agreement (1891) (repression of false and deceptive indications) Madrid Agreement and Protocol (1891, 1989) (international registration of marks) Lisbon Agreement (1958) Bilateral Agreements TRIPS Agreement (1994)


TRIPS Agreement (1994) - WTO: TRIPS Agreement (1994) - WTO Incorporation of the Provisions of the Paris Convention Definition Norms for Protection Enforcement Procedures and Remedies Dispute Settlement Built-in Agenda Doha Declaration


TRIPS Agreement: Protection of Geographical Indications: TRIPS Agreement: Protection of Geographical Indications Incorporation of provisions Paris Convention (Art.2.1) Definition (Article 22.1) Basic level of protection (Article 22.2-4) Additional protection for wines and spirits (Article 23) National treatment and MFN (Article 3-5) Procedures (Article 62) Enforcement (Part III) Dispute settlement Exceptions (Article 24.3-9) Negotiations (Article 24.1)


Art. 2.1 TRIPSIncorporation of Paris Provisions: Art. 2.1 TRIPS Incorporation of Paris Provisions Collective Marks (Article 7bis) False Indications of Source (Articles 9 and 10) Protection Against Acts of Unfair Competition (Art. 10bis - see also Art. 22.2(b) TRIPS) Definition of Interested Parties and Who Can Represent Them in Enforcement Proceedings (Article 10ter – see also footnote 11 to Article 42 TRIPS)


Standards of Protection (Article 22.2­4): Standards of Protection (Article 22.2­4) Any GI shall be protected against … Any use in the designation or presentation of a good which misleads the public as to its geographical origin Any use which constitutes an act of unfair competition within the meaning of Art.10bis of the Paris Convention Registration of trademarks which can mislead the public as to the geographical origin of products Deceptive geographical indications


Standards of Protection (Article 23): Standards of Protection (Article 23) GIs for wines or spirits shall benefit from additional protection against ... Any use of the GI which identifies a wine or a spirit not originating in the area indicated footnote 4 to Article 23.1 Registration of trademarks not having the geographical origin indicated Homonymous GIs (for wines)


Exceptions: Exceptions Generics (Article 24.6) Prior Trademark Rights (Article 24.5) Other Prior Use (Article 24.4) Use of One’s Own Name in Business (Article 24.8) GI Not Protected in Country of Origin (Article 24.9)


“Country of origin”: “Country of origin” Paris Convention - Article 6quinquies Paris Convention - Article 7bis Paris Convention - Article 10ter? Madrid Agreement Madrid Agreement and Protocol Lisbon Agreement: The country whose name, or in which is situated the region or locality whose name, constitutes the appellation of origin which has given the product its reputation


WTO SECRETARIAT SUMMARY (IP/C/W/253): WTO SECRETARIAT SUMMARY (IP/C/W/253) Overview of means of protection available Definitions and criteria for recognition Procedures for recognition Eligible/authorized users and monitoring Protection against those not eligible/authorized to use or using improperly Enforcement Relationship to trademarks


WIPO Standing Committee: WIPO Standing Committee Definition of GIs Protection in Country of Origin Protection Abroad Generic Terms Conflicts Between Trademarks and GIs Homonymous GIs Link Between Product and Origin


Registration Requirements: Registration Requirements Nationally Covered product Conform definition Demarcated area Who can apply Who can use Formalities Fees Internationally (in addition) Legal basis recognition in country of origin Language requirements Challenge/Refusal


TRIPS Agreement: TRIPS Agreement Article 23.4 In order to facilitate the protection of GIs for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of GIs for wines eligible for protection in those Members participating in the system. (Spirits added by the Doha Ministerial)


Doha Declaration: Doha Declaration Paragraph 18 completion of the work started in the TRIPS Council on the implementation of Article 23.4 negotiate the establishment of a multilateral system of notification and registration of GIs for wines and spirits by the 5th Ministerial Conference issues related to the extension of Article 23 protection to other products will be addressed in the TRIPS Council pursuant to paragraph 12 of this Declaration


Doha Declaration: Doha Declaration Paragraph 12 negotiations on outstanding implementation issues shall be an integral part of the Work Program “where we provide a specific negotiating mandate, the relevant implementation issue shall be addressed under that mandate” “the other outstanding implementation issues shall be addressed as a matter of priority by the relevant WTO bodies, which shall report to the TNC by the end of 2002 for appropriate action”


WTO Dispute Settlement - Panel Report on GI Issues : WTO Dispute Settlement - Panel Report on GI Issues Two cases concerning EC Regulation 2081/92 US vs EC (wt/ds174) Australia vs EC (wt/ds290)


Attempts in WIPO to Revise the Multilateral System of Protection after 1958: Attempts in WIPO to Revise the Multilateral System of Protection after 1958 Draft Treaty on the Protection of GIs (1974/1975) Broader definition than Lisbon Limited number of possible grounds for refusal Maintenance fees Draft Article 10quater (1984) WIPO Committee of Experts on the International Protection of GIs (1990) What should be the subject-matter of protection? What should be the general principles of protection? Should there be a system of international registration?


International Registration of GIsThe Existing Systems:Lisbon and Madrid: International Registration of GIs The Existing Systems: Lisbon and Madrid


26 Member States: 26 Member States Africa (6): Algeria, Burkina Faso, Congo, Gabon, Togo, Tunisia America (6): Costa Rica, Cuba, Haiti, Mexico, Nicaragua, Peru Asia (4): Georgia, Islamic Rep. of Iran, Israel, DPR of Korea Europe (10): Bulgaria, Czech Rep., France, Hungary, Italy, Moldova, Montenegro, Portugal, Serbia, Slovakia


Madrid Union: Madrid Union 82 members


Substantive Requirements: Substantive Requirements Protection in the country of origin Ex ante recognition “Appellation of origin” as defined “Country of origin” as defined Demarcation of the area of production


Legal Effect: Legal Effect Effect of international registration extension of protection to countries other than the country of origin indefinite (in principle) Except in a country that ... issued a refusal (within the prescribed time-limit), or invalidated the effect of the international registration in its territory


Lisbon: 884 registrations - 810 in force: Lisbon: 884 registrations - 810 in force France 508 Czech Rep. 76 Bulgaria 51 Slovakia 37 Hungary 28 Italy 28 Georgia 20 Cuba 19 Mexico 11 Algeria 7 Portugal 7 Tunisia 7 DPR of Korea 4 Peru 3 Montenegro 2 Moldova 1 Israel 1


Slide45: THANK YOU Matthijs Geuze WIPO