Overcoming the Challenges of Size: The Use of Collective Marks, Certification Marks and Geographical Indications

1. WIPO - CEDA REGIONAL ROVING SYMPOSIUM ON INTELLECTUAL PROPERTY FOR SMESParamaribo, Suriname; Castries, St. Lucia; Kingston, Jamaica; and Santo Domingo, Dominican RepublicJuly 16 - 29, 2005 Overcoming the Challenges of Size: The Use of Collective Marks, Certification Marks and Geographical Indications Christopher M. Kalanje, Consultant SMEs Division, WIPO

2. Overview Trademarks Geographical Indications Protection of TM and GI Use of TM and GI for Business

3. Trademark Trade/Service Mark Collective Mark Certification Mark

4. Trademark • A trade or service mark is a distinctive sign identifying certain products or services as those produced or provided by a specific person, enterprise or a group of persons/enterprises. • one or a combination of words, letters, and numerals. • drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors used as distinguishing features.

5. Trademark • Trademark protection may be obtained through • Registration (most countries) • Through use (in some countries). • Through notoriety (well-known marks) • Advisable to register • To be registered Trademark must be • Must be distinctive, • Must neither mislead nor deceive customers • Must not violate public order or morality.

6. Trademark Contd. • Characteristics of a good trademark include, • it should be inherently distinctive • should be easy to memorize and pronounce • should fit the product or image of business • should have no legal restrictions • should have a positive connotation

7. Trademark Contd. • Trademark ≠ Trade name • Trade name is the full business name(identifies a company) • Registering a trade name does not protect a trademark • When using trade name as trademark register for trademark protection

8. Trademark Contd. • Trademark registration can be rejected • On absolute grounds • Generic terms; descriptive terms; deceptive trademarks; marks considered to be contrary to public order or morality; Flags, armorial bearings, official hallmarks and emblems of states and international organizations • Relative grounds • The trademark is in conflict with prior trademark rights

9. Trademark Contd. • WIPO administers a system of international registration of marks

10. Trademark Contd. Madrid Agreement Concerning the International Registration of Marks (1891 several amendments latest 1979) Madrid Protocol (1989) System of International Registration of Marks (Madrid Union) 71 Members (52 MA & 58 MP)

11. Geographical Indications Geographical Indications Appellation of Origin

12. Tequila is a unique cultural product that can only be called by that name if fermented from the blue agave plant indigenous to a specific climactic region of Mexico. Even domestically it is illegal to distill Tequila outside the state of Jalisco and a few surrounding areas. • http://www.american.edu/TED/tequila.htm

13. In October 2003, the government, under President Luis Inacio Lula da Silva, issued another decree with greater specifications on cachaça and the caipirinha.

14. Brazil is currently involved in bilateral negotiations with the European Union to ensure that the cachaça name will be used only with Brazilian products within member states. • http://www.american.edu/TED/cachaca.htm

15. Mezcal is the most authentic Mexican distilled spirit, since it can only be exported in bottle (Mexico) • http://www.american.edu/ted/mezcal.htm

16. Geographical Indications Contd. • A a sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin • Most commonly, consists of the name of the place of origin of the goods. • Agricultural products (qualities influenced by specific local factors, such as climate and soil) • Manufactured products (qualities due to human factors such as specific manufacturing skills and traditions.

17. Geographical Indications Contd. • Appellation of origin is a special kind of indication of origin • used on products that have a specific quality that is exclusively or essentially due to the geographical environment in which the products are produced • Examples include Bordeaux (wine), Noix de Grenoble (nuts), Tequila (spirit drinks), Jaffa (oranges)

18. Geographical Indications Contd. • Denote the origin and the quality of products • Protection is in accordance with national laws for example, • Laws against unfair competition • Consumer protection laws • Laws for the protection of certification marks • Special laws for the protection of geographical indications or appellations of origin.

19. Geographical Indications Contd. • At international level GI is protected by • The Paris Convention for the Protection of Industrial Property of 1883 • The Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration (20 member states as 15/04/03) • TRIPS Agreement • Bilateral agreements

20. Jamaica has established the Jamaica Coffee Industry Board to oversee the production and processing. • Most Blue Mountain coffee beans are grown by small farmers • http://coffeetea.about.com/library/weekly/aa020403bluemount.htm

21. Use of TM and GI for Business • Differences between TM and GI • TM distinguish goods and services from those of other enterprises by reference to manufacturing source • GI distinguish products with reference to the place where they were made

22. Use of TM and GI for Business Contd. • TM gives its owner the right to exclude others from using the trademark on similar products • GI may be used by all producers who make their products in the place designated by a geographical indication and whose products share typical qualities.

23. Use of TM and GI for Business Contd. • TM can be chosen arbitrarily • GI are not chosen arbitrarily and the reference to geographical origin cannot be substituted

24. Use of TM and GI for Business Contd. • Similarities between: • Principle of territoriality • Protection is only for the kind of products on which they are actually used (except products/marks with reputation) • Symbolizes consistency in quality • Facilitate identification and recognition in the marketplace • Symbolizes consumer’s trust and satisfaction

25. Use of TM and GI for Business Contd. • Facilitates acquisition of valuable reputation hence strong market position • Stand risk of abuse by dishonest commercial operators

26. Use of TM and GI for Business Contd. • Marketing tool • TM Business promotion is at the heart of marketing activity • Promotional activities attempt to appeal to the mind of its current and potential customers and develop trust as regards good quality of product(s)

27. Use of TM and GI for Business Contd. • Useful in the marketing of diversified products and services (TM/Branding) • powerful tool in facilitating customers’ differentiation of similar products • In most cases customers’ decisions on their choice of products is influenced by the belief that the chosen brand is of higher quality

28. Use of TM and GI for Business Contd. • TM and GI facilitate acquisition and retention of customers • instill confidence and trust regarding good quality of a product (product preference) • attract a customer to continue buying a product (loyal client)

29. Use of TM and GI for Business Contd. • Income generation • through the licensing, sale, or franchising • Better business deals • In the event of a sale, merger or acquisition • GI Promotes national identity

31. Conclusion

33. Certification marks http://encyclopedia.laborlawtalk.com/Certification_mark

34. FINALLY • THANK YOU FOR YOUR KIND ATTENTION