international registration of geographical indications and appellations of origin matthijs geuze,...
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International Registration of Geographical Indications and
Appellations of Origin
Matthijs Geuze, WIPO
National Seminar on the Use of Industrial Property for the Protection of Iranian Handmade Carpets
Tehran, April 26-27, 2011
International Registration
Lisbon Agreement (Appellations of Origin)Madrid Protocol (Trademarks, Collective
Marks and Certification Marks)
Lisbon Union: 27 Member States
Africa (6)
Algeria
Burkina Faso
Congo
Gabon
Togo
Tunisia
Asia (4)
Georgia
Islamic Rep. of Iran
Israel
DPR of Korea
America (6)
Costa Rica
Cuba
Haiti
Mexico
Nicaragua
Peru
Europe (11)
Bulgaria
Czech Rep.
France
Hungary
Italy
Moldova
Montenegro
Portugal
Serbia
Slovakia
The FYR of Macedonia
Madrid Union85 members
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
Distinctive Signs
Distinctive Signs for Individual Use
Trademarks (goods & services)
Distinctive Signs for Collective Use
Collective marks
Certification marks
Geographical indications
Appellations of origin
The Madrid Protocol
Aim: to facilitate the international protection of trademarks, collective marks and certification marks through a single notification and registration procedure
Participation: any country party to the Paris Convention may accede
Administered by WIPO – International Register for Marks
Scope of protection: « Protection shall be the same as if the mark had been deposited direct with the Office of the Contracting Party»
No limitation as to product coverage and no distinction between categories of products in terms of scope of protection
Examples of Certification Trademarks
Collective Marks
The Lisbon Agreement
Aim: to facilitate the international protection of appellations of origin (AOs) through a single notification and registration procedure
Participation: any country party to the Paris Convention may accede
Administered by WIPO – International Register of AOs
Scope of protection: « Protection shall be ensured against any usurpation or imitation, even if the true origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as ‘kind’, ‘type’, ‘make’, ‘imitation’ or the like »
No limitation as to product coverage and no distinction between categories of products in terms of scope of protection
Legal Effect
Effect of international registration
Lisbon: extension of protection to countries other than the country of origin
Madrid: extension of protection to countries other than the country of origin, as designated
Lisbon: indefinite (in principle)
Madrid: renewable every 10 years
Except in a country that ...
issued a refusal (within the prescribed time-limit), or
invalidated the effect of the international registration in its territory
Exceptions
Generics
Prior Trademark Rights
Other Prior Use Use of One’s Own Name in Business
GI Not Protected in Country of Origin
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
“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
WIPO Standing Committee on Trademarks, Industrial Designs and Geographical Indications (SCT)
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 on Trademarks, Industrial Designs and Geographical Indications (SCT)
Document SCT/10/4, paragraphs 23-26
Reputation
history of the product
distinctive character of the product
consumer’s perception
WIPO Standing Committee on Trademarks, Industrial Designs and Geographical Indications (SCT)
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 on Trademarks, Industrial Designs and Geographical Indications (SCT)
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 areaSome protection systems require the delimited area just to differ in geological terms from surrounding areas
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
Basis for the Review of the Lisbon System
Survey to explore what changes to the Lisbon system might allow a wider membership
Study by WIPO on the:
• application of the Lisbon system in countries that are part of a regional protection system for GIs or AOs
• the possible introduction of provisions allowing for the accession to the Lisbon Agreement by IGOs administering such system
Working Group on the Development of the Lisbon System (August 30 to September 3, 2010)
The WG requested WIPO to prepare draft provisions on various topics, notably:
Definitions Scope of protection Prior users Applications for trans-border AOs or GIs Accession criteria for IGOs
Alternative versions Revision Lisbon Agreement? New treaty?
Study on the possibility of dispute settlement within the Lisbon system
