AAAML - XI International Congress
Geographical Indications and Trademarks
Parma 15-16 March 2013

 EU: some 3.000 GIs (not including non-agri GIs) , 54 billion
EUR worldwide
 Several third-country GIs protected in the EU
 Some 1.000 GIs protected in China and 150 in India (growing phenomenon in Asia)
 Dynamism in Central and South America more than 300 GIs !
 Technical assistance projects in Africa : First 3 GIs registered at OAPI
 Producers’ interest in “skeptical” countries (US, Argentina,
Chili)

 oriGIn: the organisation of GI producers’ groups
 Established in 2003 as a non-for profit organisation
 Some 350 members from 45 countries
 Secretariat based in Geneva
 Presidency: Mr. Ramón González Figueroa, Director
General, Consejo Regulador del Tequila (CRT)
 VPs in each continent

 Strengthen the protection of GIs at the national, regional and international level
 Promote GIs as a tool for sustainable development
 Facilitate exchange of “best practices” among GI producers and specialists

How do the USA, China and Russia protect Geographical Indications?

 Promoted a debate on American origin products
 oriGIn Handbook : AOP Potential &
Shortfalls
 Support to the establishment of the
American Origin Products Association

 Traditional commercial trademarks
 Collective marks
 Certification marks
 American Viticultural Areas (AVAs) and Political
Appellations for US wines with GIs

 “Marks used by a person other than its owner… to certify regional or other origin, material, mode of manufacturing, quality…”
 Exemption from the need of names to have acquired a secondary meaning
 The owner cannot use the certification mark
 Owner authorizes producers to use the certification mark and carries out controls

 No list of GIs (issue of transparency)
 Preexisting marks?
 Registration costs: 10,000 US$ in the US
 “Non-participatory approach”: Kona Coffee registered as CM by the State of Hawaii (10% Kona Coffee requirement)
 Monitoring the use of the certification mark (including license requirements): more 200,000 US$ per year spent by the Idaho Potato Commission (IPC)

 Protecting TMs from dilution and becoming generic as well as preventing the registration of confusingly similar marks (USPTO approach in dealing with TM requests containing CMs)
 An opposition proceeding can excess 100,000 US$
(FNC spent over 500,000 US$ in oppositions only in
2007)
 Litigation: more than 1,000,000 US$ spent by the IPC in enforcement cases in NY over the past 12 years

The GI wine sector: a sui generis system
 Administered by the Alcohol and Tobacco Tax and Trade Bureau
(TTB)
 AVAs (a delimitated grape growing region distinguishable by geographical features, the boundaries of which have been recognized and defined by the TTB): some 200 exist today
 Political Appellations (name of country, states and counties)
 Criteria to use an appellation of origin in wine labels (75% of grapes grown in the area for political appellations and 85% for
AVAs)

Sui Generis
 No need of secondary meaning
 Possible coexistence (good faith)
 Collective ownership
 Indefinite protection
 Registered names never “generic”
 Covers protection translation + with expressions like « style » + evocation
 No registration costs / single fee
 Private and Public enforcemen t
Trademarks
 Need of secondary meaning (except certification marks)
 “First in time first in right” principle
 Individual ownership (except collective and certification marks)
 10-year protection + need to use
 Name not shielded from “genericity”
 Protection: likelihood of confusion approach
 Registration costs + renewals
 Private enforcement

 Protecting GIs in the most important markets export is a priority
 oriGIn’s practical manual for GI producers’ groups

Sui generis system
Trademark System
Ministry of Agriculture

Sui Generis (AQSIQ)
 GI Protection - Decree N.78/2005 (Ministerial rules)
 Special Origin Label to distinguish a “PGIP” product with GI
 GI definition applies to any kind of goods, including handicrafts and traditional Chinese medicines, no services
Trademark regime (SAIC)
 GIs protected trough Certification Marks or Collective Marks according to the Trademark Law (2001) (Legislation)
 Mesure for special sign for GIs under TM system 2007
 All kind of goods and services
Sui Generis Agri Products (MoA)
 Mesures for GIs of Agri Products 2008 (Ministerial rules)
 Primary products & products obtained in agricultural activities
 GI= name of the geographical area + general name of the agri product

Protecting GIs in the
Russian Federation
 In 2008, IP Legislation Reform
 Part IV of the Civil Code - Sui Generis System
 GI definition applies to any kind of goods
 Trademark System – Obligation to disclaim the geographical name in the application
 Competent authority for GIs Registration: Rospatent

Protecting GIs in the Russian Federation
 The principle of ‘joint titles’: sum of individual titles on the same GI
 Each producer has to prove to meet requirements established by the law
 Legal protection 10 years + renewal
 Foreign GIs : ownership over the right in the country of origin
 Single collective right-EU System /Certification marks

Some conclusions

GIs protected in China
 EU-China project 10+10 recently finalized
 As of june 2009, 932 Chinese GIs (AQSIQ System )
 Foreing GIs registered: Cognac, Scotch Whisky, Napa Valley
 GIs protected in Russia
 GI Register in Russia: some 149 entries
 Foreign GIs protected: Prosciutto di Parma and Tequila
 BRICs have established Sui Generis Systems to protect GIs
 Foreign GIs can be protected under those systems

Bordeaux, France
20-21 May 2013

Ida Puzone , Project Manager
@ ida@origin-gi.com
http://www.origin-gi.com
@ oriGInNetwork