wipo - ceda regional roving symposium on intellectual property for smes paramaribo, suriname;...

WIPO - CEDA REGIONAL ROVING SYMPOSIUM ON INTELLECTUAL

PROPERTY FOR SMES Paramaribo, Suriname; Castries, St. Lucia; Kingston,

Jamaica; and Santo Domingo, Dominican RepublicJuly 16 - 29, 2005

Overcoming the Challenges of Size: The Use of Collective Marks, Certification Marks and

Geographical Indications

Christopher M. Kalanje, Consultant SMEs Division, WIPO

Overview

Trademarks

GeographicalIndications

Protection ofTM and GI

Use of TM andGI for Business

Trademark

Trade/Service Mark

Collective Mark Certification Mark

Trademark• A trade or service mark is a distinctive

sign identifying certain products or services as those produced or provided by a specific person, enterprise or a group of persons/enterprises. – one or a combination of words, letters, and

numerals.

– drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors used as distinguishing features.

Trademark• Trademark protection may be obtained

through– Registration (most countries)– Through use (in some countries). – Through notoriety (well-known marks)

• Advisable to register• To be registered Trademark must be

– Must be distinctive,

– Must neither mislead nor deceive customers

– Must not violate public order or morality.

Trademark Contd.

• Characteristics of a good trademark include,– it should be inherently distinctive– should be easy to memorize and

pronounce– should fit the product or image of

business– should have no legal restrictions– should have a positive connotation

Trademark Contd.

• Trademark ≠ Trade name• Trade name is the full business

name (identifies a company)• Registering a trade name does not

protect a trademark• When using trade name as

trademark register for trademark protection

Trademark Contd.

• Trademark registration can be rejected– On absolute grounds

• Generic terms; descriptive terms; deceptive trademarks; marks considered to be contrary to public order or morality; Flags, armorial bearings, official hallmarks and emblems of states and international organizations

– Relative grounds• The trademark is in conflict with prior

trademark rights

Trademark Contd.

• WIPO administers a system of international registration of marks

Trademark Contd.

Madrid Agreement Concerning the International

Registration of Marks(1891 several amendments

latest 1979)

Madrid Protocol(1989)

System of InternationalRegistration of Marks

(Madrid Union)71 Members (52 MA & 58 MP)

Geographical Indications

GeographicalIndications

Appellation ofOrigin

• Tequila is a unique cultural product that can only be called by that name if fermented from the blue agave plant indigenous to a specific climactic region of Mexico. Even domestically it is illegal to distill Tequila outside the state of Jalisco and a few surrounding areas.

• http://www.american.edu/TED/tequila.htm

• In October 2003, the government, under President Luis Inacio Lula da Silva, issued another decree with greater specifications on cachaça and the caipirinha.

• Brazil is currently involved in bilateral negotiations with the European Union to ensure that the cachaça name will be used only with Brazilian products within member states.

• http://www.american.edu/TED/cachaca.htm

• Mezcal is the most authentic Mexican distilled spirit, since it can only be exported in bottle (Mexico)

• http://www.american.edu/ted/mezcal.htm

Geographical Indications Contd.

• A a sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin

• Most commonly, consists of the name of the place of origin of the goods. – Agricultural products (qualities influenced by

specific local factors, such as climate and soil)

– Manufactured products (qualities due to human factors such as specific manufacturing skills and traditions.

Geographical Indications Contd.

• Appellation of origin is a special kind of indication of origin– used on products that have a specific

quality that is exclusively or essentially due to the geographical environment in which the products are produced

• Examples include Bordeaux (wine), Noix de Grenoble (nuts), Tequila (spirit drinks), Jaffa (oranges)

Geographical Indications Contd.

• Denote the origin and the quality of products

• Protection is in accordance with national laws for example,– Laws against unfair competition

– Consumer protection laws

– Laws for the protection of certification marks

– Special laws for the protection of geographical indications or appellations of origin.

Geographical Indications Contd.

• At international level GI is protected by– The Paris Convention for the Protection of

Industrial Property of 1883

– The Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration (20 member states as 15/04/03)

– TRIPS Agreement

– Bilateral agreements

• Jamaica has established the Jamaica Coffee Industry Board to oversee the production and processing.

• Most Blue Mountain coffee beans are grown by small farmers

• http://coffeetea.about.com/library/weekly/aa020403bluemount.htm

Use of TM and GI for Business

• Differences between TM and GI – TM distinguish goods and services from

those of other enterprises by reference to manufacturing source

– GI distinguish products with reference to the place where they were made

Use of TM and GI for Business Contd.

– TM gives its owner the right to exclude others from using the trademark on similar products

– GI may be used by all producers who make their products in the place designated by a geographical indication and whose products share typical qualities.

Use of TM and GI for Business Contd.

• TM can be chosen arbitrarily

• GI are not chosen arbitrarily and the reference to geographical origin cannot be substituted

Use of TM and GI for Business Contd.

• Similarities between:– Principle of territoriality– Protection is only for the kind of products

on which they are actually used (except products/marks with reputation)

– Symbolizes consistency in quality– Facilitate identification and recognition in

the marketplace– Symbolizes consumer’s trust and

satisfaction

Use of TM and GI for Business Contd.

– Facilitates acquisition of valuable reputation hence strong market position

– Stand risk of abuse by dishonest commercial operators

Use of TM and GI for Business Contd.

• Marketing tool– TM Business promotion is at the heart

of marketing activity – Promotional activities attempt to

appeal to the mind of its current and potential customers and develop trust as regards good quality of product(s)

Use of TM and GI for Business Contd.

– Useful in the marketing of diversified products and services (TM/Branding)

– powerful tool in facilitating customers’ differentiation of similar products

– In most cases customers’ decisions on their choice of products is influenced by the belief that the chosen brand is of higher quality

Use of TM and GI for Business Contd.

• TM and GI facilitate acquisition and retention of customers– instill confidence and trust regarding

good quality of a product (product preference)

– attract a customer to continue buying a product (loyal client)

Use of TM and GI for Business Contd.

• Income generation– through the licensing, sale, or

franchising

• Better business deals– In the event of a sale, merger or

acquisition

• GI Promotes national identity

Conclusion

Thus, function of collective mark is to INFORM the customers :

About the origin of the products

About a level of quality or accuracy, geographical origin, or other features set by the association

Certification marks

http://encyclopedia.laborlawtalk.com/Certification_mark

FINALLY

• THANK YOU FOR YOUR KIND ATTENTION