1

International Legal Framework for the Protection

of Geographical Indications

Warsaw, 26 April 2006

•Denis Croze

•Acting Director Advisor

•Economic Development Sector

•World Intellectual Property Organization

2

Agreements/Terminology

• Indications of source– Paris Convention (1883)– Madrid Agreement (1891)

• Appellations of Origin– Paris Convention– Lisbon Agreement (1958)

• Geographical Indications– TRIPS Agreement (1994)

3

Indication of Source

“Indication referring to a country or to a place situated therein as being the country or place of origin of a product”

4

Appellation of Origin

“The geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors” (Lisbon)

5

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” (TRIPS)

6

Relationship

A p p e lla tion o f O rig inL isb on

G e og rap h ica l Ind ica tionT R IP S

In d ica tio n o f S ou rce P aris , M a d rid

7

Relationship

Ind ications of Source G eographica l Ind icationTR IPS

Appella tion o f O rig inL isbon

G eographica l Ind ication[Ind ication of G eographica l O rig in ]

8

International Protection

• Bilateral Agreements

• Multilateral Agreements

9

Multilateral Agreements

• Paris Convention for the Protection of Industrial Property (1883)

• Madrid Agrement for the Repression of False or Deceptive Indications of Source on Goods (1891)

• Lisbon Agreement for the protection of appellations of origin and their international registration (1958)

• TRIPS Agreement (1994)

10

Paris Convention for the Protection of Industrial Property (1883)

• 169 Member States

• Indications of source or appellations of origin are objects of IP protection (Art. 1.2)

• In case of “direct or indirect use of a false indication of the source of goods” (Art 9)

• Goods bearing false indication shall be subject to seizure upon importation [..] or within the country; prohibition of importation (Art. 10)

11

Madrid Agreement for the Repression of False or Deceptive Indications of Source

on Goods (1891)

• 34 Member States - 6 articles

• Repression of false or deceptive indications of source, on or in connection with goods

• Seizure, prohibition of importation + others special sanctions

• National Courts decide what appelations are generic (except products of the wine)

Lisbon Agreement for the Protection of Appellations of Origin and Their

International Registration

• For appellations protected as such• Definition of “appellation of origin”• Definition of “country of origin”• Registration and possible objection• 24 Member States • 835 registrations (766 valid)

13

TRIPS Agreement 1994

• 149 Members

• TRIPS Articles 22 to 24 (Section 3)

• Definition of subject matter

• Scope of Protection

• International Negotiations; Exceptions

• Built-in Agenda

14

Article 22 TRIPS

• Definition of a GI: « Indication which identify 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 »

• Minimum level of protection for all products (except wines and spirits)

• Misleading test, unfair competition• Homonymous GIs

15

Article 23 TRIPS

• Higher protection for wines and spirits• No use of de-localizers (kind, type, ..etc)• Obligation to refuse or to invalidate a mark

consisting of GIs• Homonymous GIs: « coexistence » under

certain conditions: differentiation; interest of producers and consumers

• Negotiations/multilateral system of notification and registration of GIs for wines

16

Article 24 TRIPS

• Grand-fathering clause: use before date of signature of WTO Agreement (15.04.94) for 10 years or use in good faith before that date

• Coexistence with prior trademarks (registration or use) before the date of application of the TRIPS Agreement (transition periods) or before the GIs is protected in country of origin

• Generics, grape variety• Protection in the country of origin

17

TRIPS

• Negociations concerning the establishment of a multilateral system of notification and registration of GIs for wines [and spirits] eligible for protection in those Members participating in the system

• Commitment to enter into negociations to increase protection of individual GIs under Article 23

18

Existing Systems of Protection

• Protection against unfair competition (Passing off)

• Protected appellations of origin

• Collective or certification marks

• Administrative systems of protection

19

Protection under unfair competition

• Article 10bis of the Paris Convention

• Unauthorized used of GIs should:– be shown by plaintiff – be misleading– result in damages or likelihood of damages

• + Specific statutory provisions

20

Protected Appellations of Origin

• Definition• Legal protection

– based on an act of public law (Law, Decree..)

– at the conclusion of an administrative procedure

• Recognition• Protection against unauthorized use

– Criminal and civil responsability

21

Collective or Certification Marks

• Marks which indicate that the goods and services on which they are used have specific qualities which may also include geographical origin

• Owner of the mark (not user) to ensure the certified quality

• Enforcement under general trademark law

22

Problems in Obtaining Effective Protection in Other Countries

• Unfair competition versus statutory protection

point of view of users (not compliance with international agreements)

• Generic character

• Conflicts between TMs and GIs

23

Administratives Schemes for Protection

• To ensure fair trade and consumer protection

• Administrative approval procedure to market some goods

• Compliance of the product for which marketing authorization is sough with relevant legal requirements

24

Standing Committee on the Law of Trademarks, Industrial Designs and

Geographical Indications (SCT)

• Background Documents

– Possible solutions for conflicts between TMs and Gis and between homonymous GIs (SCT/5/3 - June 2000)

– Historical background, nature of rights, existing systems of protection, obtaining protection abroad .. (SCT/8/4 - April 2002)

– Definition of GIs (SCT/9/4 - Oct.2002) and SCT/10/4 - March 2003)

25

Geographical Indications and the Internet

• Joint Recommendation on the Protection of Industrial Property Rights in Signs

• Second WIPO Domain Name Process

26

Thank you

•Denis.croze@wipo.int