Protection of Geographical Indications: The relationship between Geographical Indications and Trademarks: Case Studies

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1 Protection of Geographical Indications: The relationship between Geographical Indications and Trademarks: Case Studies Mr. Paul Bodenham Studio Legale Alma

2 Function of TMs and GIs Trademarks distinguish the goods of one undertaking from goods of other undertakings. It is distinctive and not descriptive. It is the exclusive right of the producer.

3 Function of TMs and GIs Geographical indications (GIs) refer to a geographical region, identifying products with quality/reputation given by their geographical origin. They refer to the collective right of all the producers of a given good that are located in the geographical area.

4 Different types of GIs There are several types of GIs,: GIs constituted only by a geographical name (Gruyère (CH), Bordeaux (F); GIs constituted only by a non-geographical name referring to a geographical origin: Tête-de-Moine (CH),; GIs constituted by a geographical or non-geographical name completed by a localizer, in some cases because the first has become generic: Camembert de Normandie (F), Fourme d Ambert (F), West Country Farmhouse Cheddar (UK), Parmigiano Reggiano;

5 Different types of GIs GIs constituted by the common name of the good and a localizing geographical name: Prosciutto di Parma/Parma Ham Regional name for wines, in addition to domain or village or sub-regional names: Beaujolais, Beaujolais Village (Beaujolais) Moulin-à-Vent. Local toponyms, family names, etc., can also be indirect references to a GI (or, at least, a geographical area of source).

6 Different types of GIs Limits of the consumers knowledge related to GIs; Industries and retailers also use (and sometimes create) trendy GI-like labels. Problems of translation / translitteration Parmigiano Reggiano / Parmesan; Different alphabets and languages: phonetic transcription?

7 Function of Trademarks Trademarks distinguish the goods of one producer from the goods of other producers Trademarks cannot be descriptive Difficulty to protect geographical names as trademarks on account of the descriptive nature of country/region of the goods/services they distinguish Geographical names often registered in combination with a distinctive sign (logo) Problem with the exclusivity right to use the name

8 Similarities and differences between TMs and GIs Both GIs and trademarks: are signs that serve the function of denoting the source and quality of a product, distinguishing them from similar products on the market; are forms of protection that seek to exclude unauthorized persons from using the sign and provide remedies and sanctions against unauthorized users.; are signs that can become generic through misuse, non-use or overuse by the public.

9 Similarities and differences between TMs and GIs TMs function distinguish a specific product from similar products in the market place and indicate a product s trade origin Ordinary trademarks may be transferred and owned by several different proprietors without external restriction or regulation.

10 Similarities and differences between TMs and GIs GIs point consumers to the geographical area of the product s origin and/or specific features of the product attributable to the origin. Under certain laws, a GI cannot be transferred by one proprietor in, for example, the USA to another, for example, in Italy as it is not the exclusive property of the producer or group of producers entitled to its use.

11 Similarities and differences between TMs and GIs GIs have more in common with collective or certification trademarks than with ordinary trademarks. Some countries (the United States, Canada and Australia), offer protection for GIs through the trademark system as collective or certification marks.

12 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

13 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

14 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 The function of the collective mark is, therefore, 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

15 Similarities and differences between TMs and GIs Similar to GIs, certification marks certify the nature or origin of the goods or services to which it has been applied Certification marks serve to distinguish goods or services that are certified by an undertaking (in respect of origin, material, mode of manufacture or performance of services, quality, accuracy or other characteristics) from those that are not certified

16 TMs and GIs: Two complementary rights with specific characteristics GIs Indicate the geographical origin of the goods Guarantee the geographical origin Collective approach Producers ownership of GI Production necessarily linked to a territory Often procedure of examination with public consultations Trademarks Distinctive (non-descriptive) signs may not guarantee the geographical origin Individual approach (principle) TM proprietor is exclusive owner May be produced everywhere Examination based on absolute or relative grounds

17 TMs and GIs Trade marks which have been registered before the registration of a PDO or a PGI may continue to be used, but the registration of an equivalent trade mark after the approval of a PDO or PGI is impossible

18 TMs and GIs The existence of a trade mark (registered or unregistered) may be a reason to refuse the registration of a PDO or a PGI [Art. 7(3)(c), Regulation (EC) No 510/2006] Hence the Polish geographical designation Herbal vodka from the North Podlasie Lowland aromatised with an extract of bison grass or Wódka ziołowa z Niziny Północnopodlaskiej aromatyzowana ekstraktem z trawy żubrowej, so to avoid infringing the trade mark Żubrówka

19 TMs and GIs Complementary Example of Tête de Moine (AOC)

20 TMs and GIs Complementary Example of Tête de Moine (AOC) Tête de Moine is a Swiss cheese. Its name, which means Monk's Head, is derived from its invention and initial production by the monks of the abbey of Bellelay, located in the community of Saicourt, district of Moutier, in the mountainous zone of the Bernese Jura, the French-speaking area of the Canton of Bern The cheese is eaten in an unusual way: it must be carefully scraped with a knife in order to develop its scented flavors

21 TMs and GIs Complementary Example of Tête de Moine (AOC) Tête de Moine is currently produced by fewer than 10 cheese dairies of the Jura Mountains area of Porrentruy, District of Franches-Montagnes, both situated in the Canton of Jura, as well as in Moutier and Courtelary, in the Bernese Jura. Since May 2001, it has enjoyed an Appellation d'origine contrôlée (AOC). Exported throughout the world, it is the name card of the cheese-making tradition of Swiss Jura.

22 TMs and GI s Complementary Example of Champagne (AOC) CHAMPAGNE French GI Several Trademarks used by the different producers

23 Case Studies: Darjeeling Tea Darjeeling tea is a premium quality tea produced in the hilly regions of the Darjeeling district West Bengal - a state in the eastern province of India. Among the teas grown in India, Darjeeling tea offers distinctive characteristics of quality and flavor, and also a global reputation for more than a century. Broadly speaking there are two factors which have contributed to such an exceptional and distinctive Taste, and namely geographical origin and processing.

24 Case Studies: Darjeeling Tea The Geographical Indications of Goods (Registration and Protection) Act, 1999 protect GI s in India. While registration of GIs is not mandatory in India, Section 20 (1) of the GI Act states that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered GI. The Indian central government has established the Geographical Indications Registry with all-india jurisdiction, at Chennai, where right-holders can register their GIs

25 Case Studies: Darjeeling Tea Around 65 GI s of Indian origin have already been registered with the GI Registry. These include GIs such as: Darjeeling (tea) Pochampalli Ikat (textiles) Chanderi (sarees) Kancheepuram silk (textiles) Kashmir Pashmina (shawls)

26 Case Studies: Darjeeling Tea An adequate legal protection is necessary for the protection of legitimate right holders of Darjeeling tea from the dishonest business practices of various commercial entities. For instance, tea produced in countries like Kenya, Sri Lanka or even Nepal has often been passed off around the world as Darjeeling tea. Appropriate legal protection of this GI can go a long way in preventing such misuse.

27 Case Studies: Darjeeling Tea The first attempt on the part of the Tea Board of India towards protection of the DARJEELING brand was undertaken way back in 1983, when the DARJEELING logo was created In the absence of a separate law dedicated exclusively to GIs in India during that time, the word DARJEELING was also registered under the Trade and Merchandise Marks Act 1958 in class 30 in the name of Tea Board in 1998

28 Case Studies: Darjeeling Tea When the Geographical Indication Act in India was enacted in September 2003, the Tea Board applied for GI protection of DARJEELING in October In October 2004, Darjeeling was granted the GI status in India to become the first application to be registered in India as a GI.

29 Case Studies: Darjeeling Tea The tea board tried to prevent unauthorized use or attempt or actual registration of Darjeeling word/ logo brought to its notice. [ For example Bulgari, Switzerland agreed to withdraw the legend Darjeeling Tea fragrance for men pursuant to legal notice and negotiations by the Tea Board. The Tea Board has fought almost 15 cases in the last four years against infringement and misuse of the word Darjeeling Tea worldwide which includes Russia, USA, Japan, France, Germany, Norway and Sri Lanka.

30 Case Studies: Darjeeling Tea While the Tea Board has made strides in its quest for international recognition of Darjeeling tea as a trademark, recognition of Darjeeling Tea as a Geographical Indicator in the international arena is still to be achieved Article23 of TRIPS gives good protection to Wines and Spirits, but currently not for other products

31 Case Studies: Darjeeling Tea The Tea Board has stated that a lack of a multilateral system of notification and registration for products like Darjeeling Tea - which is instead available for wines and spirits - is jeopardizing the international protection of thereof and that it would be important to seek extension of GI protection to other products by amending Article 23 of the TRIPS

32 GIs and TMs: The Swiss Legislative Framework On July 1, 1997, the ordinance on the protection of appellations of origin and geographical indications for agricultural products and processed agricultural products of 28th May 1997 (Ordinance on PDOs and PGIs) came into force, establishing a register for protected designations of origin (PDOs/AOC) and protected geographical indications (PGIs/IGP) for agricultural and processed agricultural products except wines.

33 GIs and TMs: The Swiss Legislative Framework The commercial use of PDOs and PGIs is prohibited for all comparable products which do not meet the specifications as well as any other non-comparable product if it exploits the reputation of the protected indication.

34 Gis and TMs: The Swiss Legislative Framework Examples: Swiss trademark Sbrinz (N ) could be registered for dairy products only with a limitation of the product list: dairy products, namely cheese complying with the prescriptions of the PDO Sbrinz;

35 Gis and TMs: The Swiss Legislative Framework The use of the name GRUYENTAL for cheese from Argentina is not authorized as this could be confused with the PDO Gruyère The use of the traditional name Goron for wine from the Canton of Vaud is illegal. The name GORON is a geographical indication that can be used only in the Canton of Valais (Federal Court decision published in ATF 124 II 398)

36 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. In producers of Prosciutto di Parma (Parma Ham) from the town of Parma entered into a voluntary Consortium for safeguarding the genuine Parma Ham product, which is an air-cured ham produced in the vicinity of the town of Parma

37 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. The Consorzio's main aim was to protect not only their product mark which was known as Ducal Crown Mark, but also to provide protection to the producers, stockbreeders & traders who were involved in processing the ham product against the fraudulent use and misappropriation thereof In 1996 Parma Ham was registered as Protected Denomination of Origin (PDO) on June 12, 1996

38 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. In 1997 Consorzio Prosciutto di Parma commenced proceedings before the Canadian Federal Court against Maple Leaf Meats so that the PARMA Canadian trademark registered by the latter be expunged on account of such mark being deceptively misdescriptive (article 22 TRIPS requires the public to be misled as to geographical origin of the good) or lacking distinctiveness The Judge of first instance dismissed the Consorzio s application on both counts

39 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. The Judge of first instance held that - on the basis of survey evidence demonstrating that 68% of Canadians associated nothing with the term PARMA - the ordinary Canadian consumer would not have associated in 1971 (when the application for registration of PARMA was filed) the name PARMA with hams from a particular Italian region

40 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. The Judge also held that the mark PARMA lacked distinctiveness since the consumers to whom the Consorzio refer were held not to be representative of the Canadian market

41 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. It can be argued that the proper test should have been whether an average Canadian consumer with particular knowledge of the foodstuff in question would consider such foodstuff as originating from the town of Parma

42 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. Article 24(5) TRIPS also provides that: Where a trademark has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith either: (a) before the date of application of these provisions in that Member as defined in Part VI; or.

43 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. (b) before the geographical indication is protected in its country of origin; measures adopted to implement this Section shall not prejudice eligibility for or the validity of the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication.

44 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. On this basis, the Consorzio could still not rely on any possible recourse to international obligations under TRIPS The Consorzio was, in fact, only formed in 1963, whereas the PARMA trademark had been used since at least 1963

45 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. Consorzio del Prosciutto di Parma filed a complaint under Article4 of Trade Barrier Regulation in order to submit certain allegations about how export sales of Prosciutto di Parma to Canada had been adversely affected 32

46 Consorzio del Prosciutto di Parma / Maple Leaf Meats, Inc. The Consorzio stated that the Canada had kept the restrictions for exporting the ham product to their country because it could not register the Prosciutto di Parma as a Collective Trademark or a Certification Mark. The Ducal Crown mark had been registered as a Collective Mark not only in Italy but also in the United Kingdom, Belgium and the United States of America.

47 Sandwich and Champagne The case concerns the conflict between the trademarks SANDWICHS ET CHAMPAGNE with the PDO CHAMPAGNE The action was commenced by Comité Interprofessionel du Vin de Champagne (CIVC) dated May 9, 2001

48 Sandwich and Champagne CIVC stated that: The contested trademark was null and void on the basis of French Law The contested trademark was an unlawful appropriation as well as a weakening of the reputation of the Champagne P.D.O

49 Sandwich and Champagne The Court held that CHAMPAGNE has been a protected denomination since December , by virtue of a Decree which reserves the use thereof exclusively on wines produced exclusively in Marne and Aisne As a result thereof, the Court held that: - the term CHAMPAGNE is a protected denomination;

50 Sandwich and Champagne - the term CHAMPAGNE was the part of the contested trademark that had the greatest distinctive capacity; - in the case at hand, the use of the term CHAMPAGNE was likely to weaken the notoriety of the protected denomination pursuant to article L of the Consumer Code; - the contested trademark had to be declared null and void

51 Sandwich and Champagne The contested trademark SANDWICHS ET CHAMPAGNE (n filed on June 14, 2000) was declared null and void on November 19, 2002 by the Cour de Grande Instance di Parigi

52 Duque de Villena The Spanish company René Barbier, S.A filed on June 21, 1999 a Community application for registration for the trademark DUQUE DE VILLENA in class 33 (wines) The examiner held with a decision dated October 13, 2000 that: the application was to be rejected on absolute grounds pursuant to article 7 paragraph 1 letter j) of the Community Trademark Regulation

53 Duque de Villena The company appealed to the OHIM Appeals Board The Appeals Board held that: VILLENA was an Protected Denomination of Origin identifying wines coming from Villena in Spain The contested trademark infringed the VILLENA geographical indication since the products distinguished by the said trademark did not come from the Villena area

54 Parmigiamo / Parmetta On 8 June 2010, the Cologne Court upheld the preliminary injunction granted inaudita altera parte on 26 January 2010 against the German Fuchs Gewürze Group, preventing the latter from marketing seasonings and cheese mixes under the name PARMETTA.

55 Scotchijto Registration of the Community trademark no SCOTCHIJTO in classes 16, 25, 28 e 33 (alcoholic drinks excluding beer) The Scotch Whisky Association appealed to OHIM requesting that the trademark in question be declared null and void for having infringed article 7(1), letters j), g) and c)

56 Scotchijto Ist claim of nullity (Breach of article 7 (1) letter j) of the Community Trademark Regulation): the contested trademark contained a geographical indication (SCOTCH) used in order to identify wines coming from a given region (SCOTLAND) when the contested wines did not come from such region.

57 Scotchijto 2nd claim of nullity (Breach of article 7 (1) letter g) of Community Trademark Regulation): Consumers could be misled into believing that every product bearing the SCOTCHIJTO trademark was a Scotch Whisky The contested trademark was null and void on account of being deceptive, insofar as it was likely to mislead the public on the geographic origin of the Products

58 Scotchijto 3 rd claim of nullity (Breach of article 7 (1) letter c) RMC): The trademark was composed exclusively of a sign that in commerce was used to designate the origin of a product (SCOTCH)

59 Scotchijto OHIM Decision: The registration of the Community mark no SCOTCHJITO was declared null and void with reference to class 33 for alcoholic beverages (excluding beer) not coming from Scotland

60 Whisky Blended The Italian company AGIRA s.r.l bottled and commercialized a product called WHISKY BLENDED The contested product was found not to comply with the production regulations for Scotch Whisky The label omitted to state what was the place of origin, but showed the likeness of a golf player wearing Scottish attire

61 Whisky Blended The Court of Naples held that the depiction of a typically Scottish landscape (with a golf player wearing Scottish attire) led the average consumer to think of Scotland In Scottish tradition the term Whisky Blended is used exclusively for blends of various distillations, with the result that Whisky blended should be used exclusively with reference to the well-known Scottish alcoholic beverage The Court held, therefore, the use of WHISKY BLENDED to be misleading

62 Parmigiano Reggiano / Parmesan True Parmesan cheese comes from Italy. The five regions around Parma, in northern Italy, to be exact. It is made only from raw milk (with no additives) and is aged at least one year.

63 Parmigiano Regiano / Parmesan In Commission v. Germany, C-132/05, the European Court of Justice held that Parmesan cheese was deemed to be an imitation. In so ruling, the court rejected Germany s argument that the name was generic for a type of hard, crumbly cheese that is often grated over food.

64 Parmigiano Reggiano / Parmesan ECJ stated that: It is legitimate to infer from this that consumers in that Member State perceive Parmesan cheese as a cheese associated with Italy, even if in reality it was produced in another Member State

65 Parmigiano Reggiano / Parmesan The Federal Republic of Germany was also unable to provide information on the quantity of cheese produced in Italy under the PDO PARMIGIANO REGGIANO into Germany, making it impossible for the Court to use the factors relating to the consumption of that cheese as indicators of the generic character of the name PARMESAN

66 Parmigiano Reggiano / Parmesan Given that the Federal Republic of Germany failed to show that the name PARMESAN had become generic, use of the word PARMESAN for cheese not complying with the specification for the PDO PARMIGIANO REGGIANO was to be regarded as infringing the protection provided for that PDO under Article 13(1)(b) of Regulation No 2081/92

67 Thanks for the attention! Mr. Paul Bodenham