World Intellectual

Property Organization

INTERNATIONAL FORUM ON DISTINCTIVE SIGNS FOR COLLECTIVE USE

Versailles, June 12 and 13, 2008

Existing Approaches on the National and International Levels

Marcus Höpperger

Distinctive Signs

• Trademarks– Owned individually– Distinguish goods and services

• Trademark Functions– Source indication (abstract)– Distinguishing function– Guarantee function (abstract)– Communication function (“branding”)

Collectively Used Signs

• Collective ownership– Who is the collectivity?– How is the ownership expressed?– What is the function of collectively used

distinctive signs?

• Examples

Distinctive Signs for Individual Use

• Trademarks (goods & services)– Registered– Unregistered (passing off)

Distinctive Signs for Collective Use

• Collective marks• Certification marks• Guarantee marks• Geographical indications

– Sui generis (appellations of origin, indications of source, registered geographical indications0

– Tort law (passing off, unfair competition)– Administrative law (labeling regulations)

MEMBERS OF THE PARIS CONVENTION (173)

Paris Convention

• Article 1(2) and (3)– Indications of source or appellations of

origin– “manufactured or natural products, for

example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour.”

• Article 6ter (State emblems)• Article 7bis (Collective marks)• Article 10 (Indications of source)• Article 10bis (Unfair competition)

MADRID AGREEMENT (Indications of Source ) (35)

Madrid Union82 members

Agreement only 7Protocol only 26

Agreement and Protocol 49(Including EC)

STATES PARTY TO THE LISBON AGREEMENT (26)

The TRIPS Agreement

• WTO Members (152)• Protection of Geographical Indications

– TRIPS Article 22 to 24• Negotiations

– Article 23.4– Doha Round

Preliminary Conclusion

• Individually owned distinctive signs– Trademarks– Broad common ground

• Collectively owned distinctive signs– Different legal categories– Variety of approaches

• Indication of geographical origin– Big emotional potential

Emotion

• Geographical Indication = Emotion

• Branding = Emotion

• Branding with Geographical Indication = readily available emotion

• Second layer– Quality– “terroir”

The Issue

• Distinctive signs for collective use– How is the use attributed?– Who has the right to administer

attribution?– Can it be monopolized by an individual?

• Collective use– Who defines conditions of use?– Who looks after it?

• Quality control?• Enforcement?

The Specification

• Boundaries of use• Conditions of use

– Raw materials– Processing

• Control of use• Investment

• Emotion– Positive– Negative

The Big Challange

• Regulation of collective use at local, national and international levels– Fair and equitable manner– Prior users– Prior rights

• Enable producers– To trade on emotion– To improve products

• Important spin-off effects– Gastro tourism, regional identification,

preservation of traditional knowledge

Conclusion

• Collectively used signs– Present challenges and potential

• Signs indicating geographical origin: Room for policy making– multifunctionality

• Potenial– Readily available emotion– Emotion is the basis for reputation– Reputation needs stewardship

• Reputation = Intangible Asset = (collective) Intellectual Property

World Intellectual

Property Organization

INTERNATIONAL FORUM ON DISTINCTIVE SIGNS FOR COLLECTIVE USE

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