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presented by Vladimir Yossifov, Consultant, IP Services

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presented by Vladimir Yossifov, Consultant, IP Services

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  1. 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

  2. Terminology and Definitions – many expressions and even more definitions • Geographical indication - indication of geographical origin -географическое указание- protectedgeographical indication - Coğrafigöstergesi- Coğrafikökenigöstergesi -korunancoğrafiişaret • geographical designation - coğrafitanımı- protecteddesignation of origin - korumaaltınaalınmışmenşe • indication de provenance - denominación de origen - kaynakgöstergesi - indication of source • appellation of origin- appellation d’origine controlée –AOC - kontroledilenorijinaladlar- наименование места происхождения

  3. Terminology and Definitions – many expressions and even more definitions • viticultural area - quality wine produced in a specified region - vin de pays - şarapülke- table wine - sofraşarabı • denominaciónespecífica - özelisim- reserved description - ayrılmışaçıklamasına • agricultural and food product certificate - tarımvegıdaürünsertifikası • agricultural and food product label - tarımvegıdaürünetiketi • Country Of Origin Labeling (COOL) - KökeniEtiketlemeÜlke (COOL)

  4. What is a Geographical Indication - GI • Ageographical 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

  5. 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 aprotected 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.

  6. What means INDICATIONS OF PRODUCT ORIGIN The European Union – aProtected 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), aProtected 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.

  7. 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

  8. 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

  9. 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

  10. 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.

  11. 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

  12. 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.

  13. Certification marks Certification marksare given for compliance with defined standards, but are not confined to any membership. Certification marksmay 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.

  14. 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.

  15. Certification marks Certification marksare given for compliance with defined standards, but are not confined to any membership. Certification marksmay 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.

  16. Basis and Justification for Protection Quality or Characteristics Reputation Link between the Geographical Origin and the Quality, Reputation or Other Characteristics of the Product

  17. 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.

  18. 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.

  19. 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

  20. Scope of Protection – what is prohibited by law Use of a recognized GI • by a person not authorizedto use it, without any test as to the nature of that use • which is "false", "incorrect", or "does not correspond to the placespecified • which mightmislead, deceive or create a false impressionregarding the geographical origin of the products • Usedamaging or exploiting the reputation, irrespective of whether the public is misled • on productswhich, while originating in the indicated area,do not meet the production or product requirementson 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

  21. 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, )

  22. 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

  23. 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)

  24. Lisbon Agreement- definition of Appellation of Origin 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 required qualifications (Article 2(1)) The geographical denominationof 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

  25. Lisbon AgreementDuration 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)

  26. Lisbon AgreementScope 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)

  27. 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 don’t, 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)

  28. 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 attributableto its geographical origin

  29. The TRIPS AgreementLevel 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

  30. 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

  31. 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 spiritnot 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 trademarksnot having the geographical origin indicated • Homonymous GIs(for wines)

  32. 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

  33. 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)

  34. The TRIPS AgreementMultilateral Register (Art. 23.4) Mandate and Objectives In orderto facilitatethe protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of amultilateral systemof notification and registrationof geographical indications for wineseligiblefor protection in those Membersparticipating in the system

  35. 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 andPeru* * country party to the Lisbon Agreement

  36. 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.

  37. 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 d’Ivoire, Equatorial Guinea, Gabon*, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal and Togo*. * 4 countries party to the Lisbon Agreement

  38. 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.

  39. 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 onagricultural 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 aprotected geographical indication (PGI) or aprotected designation of origin (PDO). PGIindicates 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

  40. 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.

  41. 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.

  42. 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 Systems:Lisbon and Madrid

  43. 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

  44. 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

  45. THANK YOU Vladimir Yossifov, Consultant, IP Services vladimir@yossifov.com

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