GEOGRAPHICAL INDICATIONS AND APPELLATIONS OF ORIGIN: AN OVERVIEW

1. GEOGRAPHICAL INDICATIONS AND APPELLATIONS OF ORIGIN: AN OVERVIEW Florence Rojal Legal Officer Lisbon Registry Brands and Designs Sector Tbilisi12 November2012

2. Distinctive Signs • Distinctive Signs for Individual Use • Trademarks (goods & services) • Distinctive Signs for Collective Use • Collective marks • Certification marks • Geographical indications • Appellations of origin • Indications of source

3. Subject-Matter of Protection (GIs and AOs) 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 The higher the reputation the higher the commercial value

4. Differences between GIs and AOs AOs (Lisbon, Art.2) Geographical denomination Refers to quality or characteristics of a specific product Due exclusively or essentially to the geographical environment (natural or human factors) AO= Special category of GI Only existing multilateral registration system for the protection of AOs GIs (TRIPS, Art.22.1) Indication Refers to quality, reputation, or other characteristic Essentially attributable to its geographical origin GI can also be a symbol referring to or associated with a particular geographical area (e.g. the cartographic outline of France with a red itinerary for Burgundy wines)

5. Different systems of protection worldwide • Multilateral Agreements • Protection of GIs under TRIPS • Protection of AOs under the Lisbon Agreement -Legal protection they provide is based on various means of protection on the national level: an act of public law (law, decree, administrative decision, ordinance), or a judicial decision • Regional Systems of Protection (EU, OAPI…) • Bilateral Agreements • Under such agreements two States or two trading partners agree to protect each other’s GIs • General laws focusing on business practices (unfair competition and consumer protection provisions) • Specific protection systems for GIs and AOs (sui generis) • Trademark law provisions devoted to collective marks and/or certification and guarantee marks • Administrative schemes of label control

6. Sui Generis Systems for GIs and AOs Legal protection is based on an act of public law (law, decree (ex: France), ordinance (Switzerland)…) adopted at the conclusion of an administrative procedure involving representatives of the producers concerned and the government administration A group or a natural or legal person may apply for the registration of a geographical indication or the promulgation of a decree establishing an appellation of origin The application process typically involves an oppositionprocedure

7. Collective Marks and Certification or Guarantee Marks Collective Marks Type of mark reserved for the use by the members of a collective body (ex: association or cooperative of manufacturers, producers or traders) Certification Marks Owned by a certification authority (local government entity or private association which is not itself engaged in the production or the trade of the product concerned) Agricultural Label Registered as a collective certification mark in the name of the entity that controls its use and certifies that a foodstuff or a non-transformed agricultural product (such as cereal seeds) possesses a combination of specific characteristics and a level of quality which is higher than that of similar products

8. Legal Regulation of Business Practices Unfair Competition Law Commercial practices which mislead the public with respect to the geographical origin of products constitute an act of unfair competition Administrative Regulations Administrative regulations of product labeling and food safety standards represent another means of ensuring fair trade and consumer protection

9. Regional systems of protection (EU) Pecorino Romano (PDO) Arroz del Delta del Ebro (PGI)

10. Examples of Certification Trademarks

11. Collective Marks

12. Protection of GIs in Foreign Markets • Possible exceptions to exclusive rights over a GI: • Prior rights (previous TM rights, or good faith use) • Generic terms • Homonymous indications

13. Geographical Indications (GI) and Appellations of Origin (AO)WIPO’s Role • Administration of several international agreementsrelevant for the protection of GIs/AOs • Forum for discussion of possible ways to improve the international protection of GIs/AOs • Standing Committee on the Law of Trademarks, Industrial Designs and GIs • Working Group on the Development of the Lisbon System • Provision of technical assistance

14. Technical Assistance Drafting Legislation Application Criteria for Establishment GI or AO Monitoring and Enforcement Procedures Protection under International Treaties

15. Overview of the international instruments related to the protection of GIs/AOs • Paris Convention (1883) • Madrid Agreement (1891) (repression of false and deceptive indications of source) • Madrid Agreement and Protocol (1891, 1989) (international registration of marks) • Lisbon Agreement (1958) • Bilateral Agreements • TRIPS Agreement (1994)

16. Overview of the Lisbon Agreement Established to facilitate the international protection of appellations of origin (AOs) through a single registration procedure AO definition: ‘The geographical denomination of a country, region, or locality,which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors’. Administered by WIPO, which keeps the International Register of AOs

17. Lisbon Union: 27 Member States • Asia (4) • Georgia • Islamic Rep. of Iran • Israel • DPR of Korea • Africa (6) • Algeria • Burkina Faso • Congo • Gabon • Togo • Tunisia • Europe (11) • Bulgaria • Czech Rep. • France • Hungary • Italy • Moldova • Montenegro • Portugal • Serbia • Slovakia • The FYR of Macedonia • America (6) • Costa Rica • Cuba • Haiti • Mexico • Nicaragua • Peru

18. 905 registrations – 800 in force • France 508 • Czech Rep. 76 • Bulgaria 51 • Italy 31 • Hungary 28 • Georgia 20 • Cuba 19 • Mexico 14 • Peru 8 • Algeria 7 • Total registered since 1995: 170 • - of which since 2003: 55 • Portugal 7 • Tunisia 7 • DPR of Korea 6 • Slovakia 6 • FYR of Macedonia 4 • Serbia 3 • Montenegro 2 • Costa Rica 1 • Israel 1 • Moldova 1

19. The Lisbon Agreement • Substantive Requirements • Possible Responses by Other Contracting Parties • Legal Effect

20. Substantive Requirements (1) • Protection in the country of origin. Ex ante recognition required (different means of protection allowed) • Protectionin other Lisbon countries is subject to the Lisbon definition of “Appellation of origin” (Art. 2(1)) • All categories of products can be protected under Lisbon (food, beverages, handicrafts…)

21. Substantive Requirements (2) • Entitlement to file applications • The competent authority of the country of origin • Registration shall be effected in the name of those having, under their national legislation, a right to use the appellation

22. Possible Responses by Other Contracting Parties • Declaration of refusal (Art. 5(3) and Rule 9) • -Within one year • -indication of the ground of refusal (any ground) • Statement of grant of protection (Rule 11bis) • Advice of grant of a transitional period to third parties(Art. 5(6) and Rule 12) • Invalidation (Rule 16)

24. Example of a refusal(1) Ground for refusal: existence of 2 prior registered TMs using ‘Parma’ in Mexico

25. Example of a refusal(2) Ground for refusal: risk of confusion as to geographical origin of the product

26. Legal effect of an international registration under Lisbon • Ensures simultaneousprotection against any usurpation or imitation of the registered AO in the other Lisbon countries (except: those that have refused or invalidated) • Protects the registered geographical denomination against becoming generic in any of those Member States (Art.6) • Provides standing for taking legal action • (Art.8)

27. Scope of Protection (Art. 3) usurpation imitation even if true origin is indicated even if used in translated form even if accompanied by terms such as “kind”, “type”, “make”, “imitation”

28. Main objective • WG Mandate: Improve the Lisbon system to make it more attractive to users and potential new members of the Lisbon Agreement, while preserving the principles and objectives of the Agreement. • In sum: • Attract new members (i.e. through accession by IGOs) • Increase the number of international registrations • In particular, through the establishment of an international registration system for GIs

29. For further information… Lisbon system web page: http://www.wipo.int/lisbon/en/

31. Registered Appellations of Origin The LISBON EXPRESS database The AO Bulletin The Bulletin “Appellations of origin” is the official publication of the Lisbon system. It is issued by WIPO for the publication of new registrations and other recordings in the International Register as well as information concerning changes in the legal framework of the Lisbon system. In addition, the Bulletin contains statistical information concerning registered appellations of origin.

32. Example of an International Registration under Lisbon: Huile d’Olive de la Vallée des Baux de Provence (AO No. 806) • Registered on 29.06.98 • Holder:Producers and groups of producers enjoying the appellation of origin in question • Area of Production:Delimited territory within the department of Bouches-du-Rhône • Legal Basis:Decree of August 27, 1997

33. Examples of Registered AOs under Lisbon

34. Interactive Lisbon World Map

36. THANK YOU E-mail: florence.rojal@wipo.int