Intellectual Property and Competitive Law
GEOGRAPHICAL INDICATIONS
AND
COLLECTIVE MARKS
Matteo Pegoretti
Alessandra Rauccio
Chi XI
Geographical Indications
• “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
geographic origin.” (TRIPs Art. 22)
• Examples: Idaho potatoes, Napa Valley wine,
Melinda apples.
Geographical Indicators
U.S., Australia, Canada and
others:
• Private rights to be enforced by right
holder.
• Subject to priority rules (a later-in-time GI
cannot trump an earlier established
trademark)
European view:
• Monitored and enforced by the
government.
• Trump pre-existing trademarks containing
the terms. (would repatriate generic
terms).
Geographical Indications as Certification Marks
•
Geographical Indications are a subset of trademarks
because they are source-identifiers, guarantees of quality,
and business interests.
Geographical Indications as Certification Marks
•
Geographical indications can be protected through a
trademark system:
•
As certification marks or;
•
As collective marks.
Certification Marks
A certification mark is a type of trademark
which indicates to consumers:
1) geographic origin of a product;
2) materials used, quality, method of manufacture, and
accuracy; or
3) products made under the auspices of, or by
members of, a specific trade union or organization.
Certification Marks
Given for
compliance with
defined standards,
but are
NOT
CONFINED
to any
membership
Used by
ANYONE who
can certify that the
products involved
meet certain
established
standard
Protection and
certainty for
consumers
“Egyptian Cotton”
 Application Serial No.
76-229673
 For (a variety of
products made wholly
or substantially of
Egyptian cotton)
 “The certification mark,
intended to be used by
authorized persons, is
intended to certify that the
products identified above
contain 100% Egyptian
Barbadense cotton.”
“Parmigiano Reggiano”
 U.S. Trademark
Registration Nos.
1,754,410; 1,892,496;
1,896,683; 2,320,595
 For “Cheese”

“The certification mark, as used by
person authorized by the certifier,
certifies that the goods originate in
the Parma-Reggio region of Italy,
specifically the zone comprising the
territory of the provinces of Parma,
Reggio Emilia, Modena and
Mantua on the right bank of the
river Po and Bolgona on the left
Bank of the river Reno.”
Collective Marks
Signs which distinguish the geographical
origin, material, mode of manufacture,
quality or other common characteristics of
goods or services of different enterprises.
The owners: associations, public
institutions, cooperatives.
Proprietors of collective marks can exclude
people from using the mark.
Collective Marks
The owner of the
collective mark is
responsible for
ensuring the
compliance with
certain standards
Information for the
public about certain
particular features of
the product for which
the collective mark is
used
Application for
registration
Characteristics
enhance product
recognition
develop of certain
standards and
criteria and a
common strategy
add powerful tools
for local
development
provide a framework
for cooperation
between local
producers
promote
products which
are
characteristic
of a given
region
overcome some
challenges
associated with
small size and
isolation in the
market
Collective Mark and Trademark
CM can be used
together with the
individual trademark
of the producer of a
given good
benefit from the trust of
the consumers in the
collective mark
differentiate their own
products from those of
competitors
Protection
•
“Members shall ensure that enforcement procedures
… are available under the law to permit effective
action against infringement of intellectual property
rights…”
•
“expeditious remedies”
•
“constitute a deterrent”
Regulation of Collective
Mark in Italy

1.The persons who assume the function of guaranteeing the origin, nature or quality
of specific goods or services may obtain registration for relevant marks as collective
marks and shall have the right to authorize producers and merchants to use such
marks.

Who can apply collective mark?

2.The regulations governing the use of collective marks, their supervision and the
relevant sanctions shall be attached to the application for registration; any
amendment to such regulations shall be communicated by the proprietors to the
Italian Patent and Trademark Office referred to in Article 52, below, for inclusion in
the documents attached to the application.

Core part of application of collective mark
Regulation of Collective
Mark in Italy

3.The provisions of paragraphs 1 and 2 shall also apply to foreign collective marks
registered in their countries of origin, provided that such country affords reciprocal
treatment to Italy.

Available for foreign application

4. In such case, however, the Office may refuse a registration, by means of a decision
stating its grounds, if the marks applied for could create a situation of unjustified
privilege or be otherwise detrimental to the development of other similar initiatives in
the region

Refuse to registration of collective mark
Melinda®
 “Consorzio Melinda” cooperatives association: smallscale local producers (over 5,000 members) organized in
16 cooperatives
 strongly related to the specific geographical origin: Val di
Non
 same material, mode of manufacture and other common
characteristics of goods and services involved in the
production
 the same production techniques: the integrated
production process
Product specifications
a strict regulation
rules governing producers and growing techniques:
 to quality control and packaging
The regulation indicates
 the guidelines for producing superior quality apples
 while respecting the standards dictated by the consumer
and calls for explicit control measures to verify that
producers observe the standards.
which all members must respect in order to use the Melinda brand
on their apples
Madrid system trademark
registration
 To protect the trademark in several countries by simply
filing one application directly with the national or
regional trademark office
 equivalent to an application or a registration of the same
mark effected directly in each of the countries
 it is possible to record subsequent changes or to renew
the registration through a single procedural step.
Melinda®
 The brand awareness of Melinda® gives the Consortium
the chance to differentiate these apples from the others in
order to gain a premium price.
 Melinda is the most famous and most often acquired
apple brand in Italy.
….representing over 60% of apple production from the
Trentino region, 10% of Italian production, and 5% of
European production.
Melinda® products:
 Melinda Apples: Golden, Gala, Red Delicious, Renetta
[...]
 Melinda Juice
 Melinda Snacks
 Melinda Mousse
 Melinda vinegar
Using Melinda®
 overcome the challenges associated with small size and
isolation in the market place
 local development
“Over the years, Melinda has been able to combine traditional
production with modern marketing techniques to better compete
with a quality product with a distinctive identity, reputation
and image in the domestic and export markets”