WIPO TRAINING OF TRAINERS PROGRAM ON EFFECTIVE INTELLECTUAL PROPERTY ASSET MANAGEMENT BY SMALL AND MEDIUM-SIZED ENTERPRISES (SMEs) organized by the World Intellectual Property Organization (WIPO) and the Turkish Patent Institute Istanbul, September 13

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WIPO TRAINING OF TRAINERS PROGRAM ON EFFECTIVE
INTELLECTUAL PROPERTY ASSET MANAGEMENT BY SMALL
AND MEDIUM-SIZED ENTERPRISES (SMEs) organized by
the World Intellectual Property Organization
(WIPO)and the Turkish Patent InstituteIstanbul,
September 13 to 15, 2011Intellectual Property,
Branding and Marketing Geographical Indications,
Appellations of Origin, Collective Marks,
Certification Marksinternational systems for
legal protection

• presented by Vladimir Yossifov, Consultant, IP
  Services

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Terminology and Definitions many expressions
and even more definitions

• Geographical indication - indication of
  geographical origin -?????????????? ???????? -
  protected geographical indication -
  Cografi göstergesi - Cografi kökeni göstergesi - 
  korunan cografi isaret
• geographical designation - cografi tanimi -
  protected designation of origin - koruma altina
  alinmis mense
• indication de provenance - denominación de
  origen - kaynak göstergesi - indication of source
  
• appellation of origin - appellation dorigine
  controlée AOC - kontrol edilen orijinal adlar -
  ???????????? ????? ?????????????

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Terminology and Definitions many expressions
and even more definitions

• viticultural area - quality wine produced in a
  specified region - vin de pays - sarap ülke -
  table wine - sofra sarabi
• denominación específica - özel isim - reserved
  description - ayrilmis açiklamasina
• agricultural and food product certificate - tarim
  ve gida ürün sertifikasi
• agricultural and food product label - tarim ve
  gida ürün etiketi
• Country Of Origin Labeling (COOL) -
  Kökeni Etiketleme Ülke (COOL)

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What is a Geographical Indication - GI

• A geographical indication is a sign used on goods
  that have a specific geographical origin and
  possess qualities, reputation or characteristics
  that are essentially attributable to that place
  of origin. Very often, a geographical indication
  includes the name of the place of origin of the
  goods.
• Agricultural products typically have qualities
  that derive from their place of production and
  are influenced by specific local factors, such as
  climate and soil. Geographical indications may be
  used for a wide variety of products, whether
  natural, agricultural or manufactured.
• Whether a sign is recognized as a geographical
  indication is a matter of national law

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What means INDICATIONS OF
PRODUCT ORIGIN

• The European Union Regulation on agricultural
  products and foodstuffs (excluding all
  wine-sector products, except wine vinegar) from a
  defined geographical area.
• A link between the characteristics of certain
  products and their geographical origin may
  qualify for either a protected geographical
  indication (PGI) or a protected designation of
  origin (PDO).
• Use of corresponding EU symbols on the labels of
  such products provides consumers with clear and
  concise information on their origin.
• Council Regulation (EC) No 510/2006 of 20 March
  2006 on the protection of geographical
  indications and designations of origin for
  agricultural products and foodstuffs.

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What means INDICATIONS OF
PRODUCT ORIGIN

• The European Union
• a Protected Designation of Origin (PDO) covers
  the term used to describe foodstuffs which are
  produced, processed and prepared in a given
  geographical area using recognised know-how (such
  as Mozzarella di Bufala Campana),
• a Protected Geographical Indication (PGI)
  indicates a link with the area in at least one of
  the stages of production, processing or
  preparation (such as the famous Spanish
  confectionery Turrón de Alicante ). The link
  with the geographical area is therefore stronger
  for PDOs.
• see Council Regulation (EC) No 510/2006 of 20
  March 2006 on the protection of geographical
  indications and designations of origin for
  agricultural products and foodstuffs.

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What means INDICATIONS OF
PRODUCT ORIGIN

• The European Union
• Directive 2000/13/EC on labelling, presentation
  and advertising of foodstuffs requires obligatory
  indication of the place of origin or provenance
  of the product (to avoid misleading the
  consumers)
• see Directive 2000/13/EC of the European
  Parliament and of the Council of 20 March 2000 on
  the approximation of the laws of the Member
  States relating to the labelling, presentation
  and advertising of foodstuffs, as amended

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What means INDICATIONS OF
PRODUCT ORIGIN

• Term used in International Trade and Commerce
• COO Country of origin is the country where
  goods shipped were produced. Usually the country
  of origin is the same as the country of
  departure. Also called country of provenance.
• In the United States- Country Of Origin Labeling
  (COOL) is a legal requirement under the 2002 Farm
  Bill - This law requires retailers to provide
  country-of-origin labeling for many food products
  (fresh meat, fruits, nuts, vegetables).
• Title X of Farm Security and Rural Investment
  Act of 2002, as amended on 29 September 2008

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Geographical Indications- subject-matter of
protection

• Indication of a Connection between
  Characteristics of Products and their
  Geographical Origin
• Typicality
• quality or characteristics of a product that make
  the product unique and which allow the product to
  be identified geographically
• Reputation
• degree of recognition by consumers of the
  typicality of products and
• the collective goodwill that they represent on
  the market

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Collective marks

• Collective marks  signs which distinguish the
  geographical origin, material, mode of
  manufacture or other common characteristics of
  goods or services of different enterprises using
  the collective mark.
• The owner of a collective mark may be
• an association (of which those enterprises are
  members)
• any other entity, including for example, a
  public institution or a cooperative.

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Collective marks

• A collective trade mark or collective mark is
  a trademark owned by an organization (such as an
  association), whose members use them to identify
  themselves with a level of quality or accuracy,
  geographical origin, or other characteristics set
  by the organization.
• National trade mark laws in some countries (such
  as Finland, Germany, Hungary and Switzerland)
  provide for the filing of the regulations as an
  additional requirement for registration of the
  collective trade mark

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Collective marks

• The owner of a collective mark is responsible for
  ensuring the compliance with certain standards
  (fixed in regulations concerning the use of the
  collective mark) by its members. Hence, the
  function of the collective mark is to inform the
  public about certain particular features of the
  product for which the collective mark is used.
• Collective marks are used to promote products
  which are characteristic of a given region.

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Certification marks

• Certification marks are given for compliance with
  defined standards, but are not confined to any
  membership.
• Certification marks may be used by anyone who can
  certify that the products involved meet certain
  established standards.
• WOOLMARK famous certification mark which
  certifies that the goods on which it is used are
  made of 100 wool.

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Certification marks

• The main difference between collective marks and
  certification marks is that
• collective marks may only be used by a specific
  group of enterprises, e.g., members of an
  association,
• while
• certification marks may be used by anybody who
  complies with the standards defined by the owner
  of the certification mark.

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Certification marks

• Certification marks are given for compliance with
  defined standards, but are not confined to any
  membership.
• Certification marks may be used by anyone who can
  certify that the products involved meet certain
  established standards.
• WOOLMARK famous certification marks which
  certifies that the goods on which it is used are
  made of 100 wool.

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Basis and Justification for Protection

• Quality or Characteristics
• Reputation
• Link between the Geographical Origin and the
  Quality, Reputation or Other Characteristics of
  the Product

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Approach to GI Protection
Around the World

• Laws focusing on business practices
• no specific protection of GIs, prohibit business
  practices based on misuse of GIs, e.g. laws on
  the repression of unfair competition, the
  protection of consumers, the labeling of
  products, health protection or food safety.
• Sui generis legislation
• Laws on GI and/or AO rules on specifically
  defined characteristics of the products or
  methods of their production and related to their
  origin
• Trademark law
• provisions protecting GIs against the
  registration and use as trademarks.
• provisions protecting GIs by means of collective,
  certification or guarantee marks.

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Approach to GI Protection
Around the World

• Bilateral Treaties and Agreements
• Bilateral treaties on GIs protect certain GIs
  (agreed list by product group) against all
  illegal commercial use and against use of
  delocalizing expressions.
• The names of countries and cities cantons are
  granted absolute protection.
• General provision preventing uses of indications
  of source which mislead the public. They also
  specify that GIs must be used in conformity with
  the law of the country of origin (re- application
  of the law of the country of origin).
• Prohibit the illicit appropriation of an
  indication of source as a trademark.
• Provision that an indication of source (GI)
  cannot be transformed into a generic name in the
  country where it is protected.

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Recognition and Protection of a GI in other
countries

• The basic criteria for protection of GI do not
  differ much at the national and regional levels
• Obtaining protection abroad is always subject to
  recognition of the GI in the Country of Origin
  and the absence of earlier similar or identical
  registration of another distinctive sign e.g.
  mark or denomination
• Protection is not automatic - must be requested
  by interested party

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Scope of Protection what is prohibited by law

• Use of a recognized GI
• by a person not authorized to use it, without any
  test as to the nature of that use
• which is "false", "incorrect", or "does not
  correspond to the place specified
• which might mislead, deceive or create a false
  impression regarding the geographical origin of
  the products
• Use damaging or exploiting the reputation,
  irrespective of whether the public is misled

• on products which, while originating in the
  indicated area, do not meet the production or
  product requirements on which the use of the GI
  is conditional
• Misuse, imitation or evocation, even with
  delocalising qualifiers
• Acts contrary to "good practice" or "honest
  commercial practices
• Conduct liable to mislead or deceive the public
• Non-authorized use of reputation or goodwill

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International Protection of GIs Recognized and
Protected in their Country of Origin

• Paris Convention (1883) (Art 1 and 10)
• 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 (1995)
• Regional Agreements (European Union, OAPI, Andean
  Community, )

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Lisbon Agreement for the Protection of
Appellations of Origin and their International
Registration of 1958

• 27 Member States
• Africa (6) - Algeria, Burkina Faso, Congo, Gabon,
  Togo, Tunisia,
• America (6) - Costa Rica, Cuba, Haiti, Mexico,
  Nicaragua, Peru,
• Asia (3) - Democratic People's Republic of Korea,
  Iran (Islamic Republic of), Israel,
• Europe (12) - Bulgaria, Czech Republic, France ,
  Georgia, Hungary, Italy, Montenegro, Portugal,
  Republic of Moldova, Serbia, Slovakia, The
  former Yugoslav Republic of Macedonia,
• Note Greece, Morocco, Romania, Spain, Turkey
  have signed, but not ratified the Lisbon Agreement

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Lisbon Agreementwhat can be protected

• Article 1(2) - recognized and protected in
  the Country of Origin
• a product with a certain reputation, as defined
  in Article 2(2)
• whose appellation meets certain qualifications,
  as defined in Article 2(1) and
• is protected by virtue of some formal means (law,
  decree, judicial decision or registration)

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Lisbon Agreement - definition of Appellation of
Origin

• required qualifications (Article 2(1))
• The geographical denomination of a country,
  region, or locality, which serves to designate a
  product originating therein, of which the
  quality or characteristics are due exclusively or
  essentially to the geographical environment,
  including natural and human factors

Definition of Country of Origin (Article 2(2))
Requirement of Reputation 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
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Lisbon Agreement Duration of Protection

• The international registration of an appellation
  of origin assures its protection, without any
  need for renewal, for as long as the appellation
  is protected in its country of origin.
  (Articles 6 and 7)

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Lisbon Agreement Scope of Protection

• Unfair Competition (Article 4)
• Article 4 confirms the protection that may
  already exist in a member country by virtue of
  other international instruments, national law or
  court decisions
• Apart from usurpation or counterfeiting, there
  are a whole range of acts that may qualify as
  acts of unfair competition and are to be
  prohibited
• (Records Lisbon Conference 1958, p.816)

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Effect of Lisbon registration

• Other countries will know the precise appellation
  of origin to be protected
• These countries will be required to take position
  with regard to the appellation
• They may refuse protection but, if they dont,
  they should, in principle, prevent the
  appellation from becoming generic (Records
  Lisbon Conference 1958, p.816-818)
• Procedure for notification of invalidation
• (Rule 16 Lisbon Regulations)

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The TRIPS Agreement of 1995153 Member States

• Section 3 Geographical IndicationsArticle 22 -
  Protection of Geographical IndicationsArticle 23
  - Additional Protection for Geographical
  Indications for Wines and SpiritsArticle 24 -
  International Negotiations Exceptions
• Definition - Art. 22.1
• Geographical indications are indications 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

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The TRIPS Agreement Level of protection

• Minimum level - Art. 22
• - Misleading/confusion test
• - Unfair competition
• Higher level of protection - Art. 23
• wines and spirits
• Outside TRIPS national laws, bilateral,
  regional and other multilateral agreements

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The TRIPS Agreement Standards of Protection
(Article 22.24)

• Basic Level of Protection - Art. 22.2-3
• Interested parties must have legal means to
  prevent any use of GIs in the designation or
  presentation of a good which
• misleads the public as to the geographical origin
  of the good
• constitutes an act of unfair competition
  (Art. 10bis Paris Convention)
• Refusal or invalidation of the registration of
• a trademark which can mislead the public as to
  the geographical origin of products
• deceptive geographical indications

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The TRIPS AgreementStandards 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
• even where the true origin of the good is
  indicated and
• even where the GI is accompanied by expressions,
  e.g. kind, type, style, imitation
• Countries allowed to opt for enforcement by
  administrative action only no requirement to
  show misleading of the public or act of unfair
  competition
• Registration of trademarks not having the
  geographical origin indicated
• Homonymous GIs (for wines)

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The TRIPS Agreement Exceptions Art. 24

• Generic terms (customary) (Art. 24.6)
• For goods or services
• For products of the vine for which indication is
  identical with name of a grape variety customary
  before 1995
• Prior trademark rights (Art. 24.5)
• Good faith before date of application of TRIPS in
  the WTO Member
• Before the GI has obtained protection in its
  country of origin

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The TRIPS Agreement Exceptions Art. 24

• Certain other prior use (Art. 24.4) (grand-father
  clause)
• Goods or services used at least 10 years before
  signature of the TRIPS Agreement or in good faith
  preceding that date
• Personal names (Art. 24.8)
• GIs not protected or used in their country of
  origin (Art. 24.9)

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The TRIPS AgreementMultilateral Register (Art.
23.4)

• Mandate and Objectives
• In order to facilitate the protection of
  geographical indications for wines, negotiations
  shall be undertaken in the Council for TRIPS
• concerning the establishment of a multilateral
  system of notification and registration of
  geographical indications for wines eligible for
  protection in those Members participating in the
  system

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The ANDEAN COMMUNITY

• ANDEAN COMMUNITY DECISION 486 on Common
  Intellectual Property Regime of (14.09.2000)
• TITLE XII - GEOGRAPHICAL INDICATIONS, CHAPTER I
  - APPELLATIONS OF ORIGIN and CHAPTER II
  INDICATIONS OF SOURCE
• 4 Member States - Bolivia, Colombia, Ecuador and
  Peru
• country party to the Lisbon Agreement

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The ANDEAN COMMUNITYANDEAN COMMUNITY DECISION
486 on Common Intellectual Property Regime
(14.09.2000)

• No independent or central regional registration
  office
• Domestic Registration in Member States on the
  Basis of Common Legislation
• Registration procedure (verification of the
  fulfillment of requirements both under Decision
  486 of the Andean Community and under the
  domestic legislation) is undertaken by the
  competent national Office of each Andean
  Community member State.

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AFRICAN INTELLECTUAL PROPERTY ORGANIZATION (OAPI)

• Bangui Agreement of February 24, 1999 revising
  the Bangui Agreement of March 2, 1977 Title I,
  Section II, Article 12 and Annex VI
  Geographical Indications
• 16 Member States Benin, Burkina Faso, Cameroon,
  Central African Republic, Chad, Congo,
  Côte dIvoire, Equatorial Guinea, Gabon, Guinea,
  Guinea Bissau, Mali, Mauritania, Niger, Senegal
  and Togo.
• 4 countries party to the Lisbon Agreement

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AFRICAN INTELLECTUAL PROPERTY ORGANIZATION (OAPI)
Revised Bangui Agreement of February 24, 1999

• Central Registration Office (OAPI)
• Regional Registration on the basis of Unified
  Legislation
• The sub-regional legal and regulatory framework
  established under the Revised Bangui Agreement
  enables products of a designated origin to be
  officially recognized with immediate effect
  across all the OAPI member States.

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EUROPEAN UNION (EU) Council Regulation (EC) No
510/2006 of 20 March 2006 on the protection of
geographical indications and designations of
origin for agricultural products and foodstuffs

• Provisions on agricultural products and
  foodstuffs (excluding all wine-sector products,
  except wine vinegar) from a defined geographical
  area.
• If there is a link between the characteristics of
  certain products and their geographical origin,
  they may qualify for either a protected
  geographical indication (PGI) or a protected
  designation of origin (PDO).
• PGI indicates a link with the area in at least
  one of the stages of production, processing or
  preparation.
• PDO applied for foodstuffs which are produced,
  processed and prepared in a given geographical
  area using recognised know-how

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EUROPEAN UNION (EU) Council Regulation (EC) No
510/2006 of 20 March 2006 on the protection of
geographical indications and designations of
origin for agricultural products and foodstuffs

• Applications for registration of PDO or PGU may
  only be made by a group of producers or
  processors or, in exceptional cases, natural or
  legal persons.
• Applications are made to the Member State on
  whose territory the geographical area is
  situated.
• Where the Member State deems the application to
  be acceptable, it forwards the single document to
  the Commission together with a declaration
  stating that all the necessary conditions have
  been met.
• Where an application for registration concerns a
  geographical area in a third country, it has to
  be sent to the Commission either directly or
  through the authorities of that country.

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EUROPEAN UNION (EU) Council Regulation (EC) No
510/2006 of 20 March 2006 on the protection of
geographical indications and designations of
origin for agricultural products and foodstuffs

• Within 12 months the Commission checks that the
  application is justified and that it meets all
  the necessary conditions. If the conditions are
  met, it publishes in the Official Journal of the
  European Union (OJ) the single document and the
  publication reference of the product
  specification.
• Objections
• Within six months from the date of publication in
  the OJ, any Member State, third country, natural
  or legal person having a legitimate interest may
  object to the registration proposed by lodging a
  duly substantiated statement.
• Where there are no objections, the PDO or PGU
  will be registered.

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WIPO manages two international registration
systems that facilitate protection abroad of
intellectual property rights in respect of
products with value-added from their geographical
origin, namely- the Lisbon System - designed
to facilitate the protection of appellations of
origin for products with unique characteristics
resulting from their geographical origin and
forming the collective goodwill and reputation
and - the Madrid System - which provides the
same facility for trademarks including collective
and certification marks consisting of or
containing a geographical indication.Lisbon and
Madrid Systems - applicable to all categories of
products
International Registration of GIs The Existing
SystemsLisbon and Madrid
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Renewed Interest in the Lisbon System

• Increased in Membership since 1997
• The WIPO Assembly established Working Group
• to explore possible improvements to the
  procedures under the Lisbon Agreement
• three meetings March 2009, September 2010 and
  May 2011

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Lisbon 887 registrations - 813 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 6
• Peru 4
• Montenegro 2
• Moldova 1
• Israel 1

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• THANK YOU
• Vladimir Yossifov, Consultant, IP Services
• vladimir_at_yossifov.com