Geographical Indications (GIs) in Global Trade

Transcription

1 Geographical Indications (GIs) in Global Trade Jeeyoun Shin, J.D., Esq. Daesung Yang, Ph.D. Korea Institute of Intellectual Property

2 Questions in the first place Why Geographical Indications (GIs) matters in the context of global trade? sell Brooks Cheese Cheese produced in a local city named Brooks same level of protection as in my countries!

3 This presentation is about CAN & MUST, with your GI in global trade Global use of GI being subject to local protections such as: - TM - passing off -Sui generis, etc Thus, - With your GI, may get protection in your and foreign countries. - However, advised to (have to) consider local protections before you enter a specific foreign market

4 Contents Geographical Indications (GIs) in Global Trade 1 Some Backgrounds Definitions, Etc. 2 Types of Protection 3 4 This Protection is an example in APEC text. Members Go ahead (including and replace Korea) it Comparison : Trademark vs Sui Generis Korea Institute of Intellectual Property

5 Some Backgrounds General Concepts of GI Article 22(1) of WTO 1995 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) : "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. Some good characteristics of goods Brooks Cheese produced by someone in Brooks Philadelphia Cheese produced by KRAFT Inc. in somewhere

6 Some Backgrounds International Efforts to Protect GIs Paris Convention (1883) Madrid Agreement & Protocol (1891) for the Repression of False or Deceptive Indications of Source on Goods Lisbon Agreement (1958) for the Protection of Appellations of Origin and their International Registration TRIPS Agreement (1994) Minimum standards of protection National GIs protections (EU) Protected Designation of Origin (PDO) standard & Protected Geographical Indication (PGI) standard

7 Some Backgrounds Genesis of GIs A need of protection for famous products 1883 : Paris Convention for the Protection of Industrial Property 1891 : Madrid Agreement on Indications of Source First Steps in France : first law on GIs (appellations of origin) 1935 : creation of the current system of French GI(AOC) And after, in Europe union s : European regulations on wines 1992 : European regulation (EC) 2081/92 : GI for a wide range of agricultural products replaced by the Council Regulation EC 510/2006 as from 31 March 2006 In the World : definition of GI in the TRIPS agreements, in the WTO reference : Protection and Development ofgeographical Indications (GIs) in Asia, Conference on IP in Hong Kong and Mainland China, Best Practices and International Impact 22 March 2007,

8 Some Backgrounds Terms/ Definitions Appellation of origin (AO) Appellation Templates of origin (AO) Defined in the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (1958) the geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors G.I. Templates Geographical indication (GI) : this expression now has a specific legal meaning under the TRIPS Agreement (1994): 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 geographical origin

9 Some Backgrounds Terms/ Definitions Appellation of origin (AO) (Lisbon Agreement) Geographical indication (GI) (TRIPs Agreement) a geographical name an indication designates a product identifies a good no express reference to reputation reputation mentioned as possible characteristic link to geographical environment link to geographical origin clarification: natural and human factors no reference to natural and human factors

10 Some Backgrounds Terms/ Definitions 3 categories of terms that have been used to refer to indications of geographical origin Indication of Source G. I. Appellation of Origin 11 2 not formally defined in any international treaty a specific legal meaning under the TRIPS Agreement 33 2 defined in the Lisbon Agreement (Madrid agreement, Art. 1 ) All goods bearing a false or deceptive indication by which one of the countries to which this Agreement applies, or a place situated therein, is directly or indirectly indicated as being the country or place of origin shall be seized on importation into any of the said countries. (TRIPS, Art. 22 ) G.I. + quality link attributable to the origin Indication of source G.I. A.O. = G.I. + environment reference : Geographical indications and their use to promote local products, Octavio Espinosa, WIPO Damascus, May 2007

11 Lisbon Agreement TRIPs Agreement Term Appellations of Origin (AO) Geographical Indications What can be an Indication? geographical name of a country, region, or locality indications which identify a good as originating in the territory of a Member, or a region or locality in that territory Scope of protection Product Goods EU Council Regulation 2081/92 Geographical Indications (PGI) the name of a region, a specific place or, in exceptional cases, a country Agricultural product, foodstuff Relationship between geographical environment and the product the quality and characteristics of product are due exclusively or essentially to the geographical environment, including natural and human factors quality, reputation or other characteristic of the good is essentially attributable to its geographical origin a specific quality, reputation or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which take place in the defined geographical area

12 Contents Geographical Indications (GIs) in Global Trade 1 2 Some Backgrounds Definitions, Etc. Types of Protection 3 4 This Protection is an example in APEC text. Members Go ahead (including and replace Korea) it Comparison : Trademark vs Sui Generis

13 Types of Protection Protections under TRIPs requires for GI protection Protection against unfair competition (passing off) National laws Administrative systems of protection (certificates of label approval for alcoholic beverages) Sui Generis Through TM system

14 Types of Protection Level of Protection under TRIPS Illegal only when misleading of the public, or unfair competition Occurs. Absolute protection illegal to use a GI for wines and spirits not originating in the place indicated, in all cases. Outside TRIPS Minimum level of protection (Art. 22) - Misleading confusion test - Unfair competition Higher level of protection (Art. 23) - Wine and spirits - national laws -bilateral, regional & other multilateral agreements

15 Types of Protection TRIPs & EU : comparing levels of protection Unfair Competition TRIPs Limited IP (forbids style of~ ) EU Full IP (forbids evocations like imitation of shapes) reference : TRIPs Standards of Protection and New Developments, DG Trade & DG Markt for the European Commission, ASEM Meeting on geographical Indications, Bangkok, 30 June 2006

16 Types of Protection Sui Generis System No uniform approach Legal framework Regional systems : EC Regulation 510/2006 (formerly Regulation 2081/1992) National systems Malaysia: Geographical Indications Act 2000 (Act 602) Indonesia: Chapter VII of the Law on Marks (Law n15/2001 on Marks) Thailand: Act on Protection of Geographical Indication in 2003 (B.E.2546) Vietnam: the Intellectual Property Law No. 50/2005

17 Types of Protection Trademark Geographical signs which has acquired a secondary meaning Certification marks Collective marks

18 Types of Protection Trademark (Collective Mark) A mark adopted by a "collective" (i.e., an association, union, cooperative, etc.) for use only by its members who in turn use the mark to distinguish their goods or services from those of nonmembers identifying the geographical origin, material, mode of manufacture or other common characteristics of goods or services A collective mark may be used to embody such features and as the basis for the marketing or other promotional programs of the said products, thus benefiting all producers. Collective marks may be used together with the individual trademark of the producer of a given good. reference : USPTO,

19 Types of Protection Trademark (Certification Mark) A mark certifies that the product meets certain required standards; thus giving consumers an indication that their product has been checked by an organization considered competent to certify the product and has met the necessary requirements : - Characteristics of a certification mark - Its owner does not use it. - A certification mark does not indicate commercial source nor distinguish the goods or services of one person from those of another person. This means that any entity, which meets the certifying standards, is entitled to use the certification mark. reference : USPTO,

20 Types of Protection Differences b/w Collective & Certification Marks Collective marks Collective Templatesmarks only be used by a specific group of enterprises e.g., members of an association Certification marks Certification Templatesmarks may be used by anybody who meets certain standard. Quality-controlling function. For GI purposes, both may serve very similar functions, (although certification marks is more focused on quality control)

21 Contents Geographical Indications (GIs) in Global Trade 1 Some Backgrounds Definitions, Etc. 2 Types of Protection 3 4 This Protection is an example in APEC text. Members Go ahead (including and Korea) replace it Comparison : Trademark vs Sui Generis

22 Protection in APEC Members Overview Options Your Choice in consideration of TM Collective Mark Certificate Mark 11 Protection domestically available Sui A.O. Like (limited to agricultural, natural products) More Extensive 22 Protection available abroad (in trade partner countries) Dual TM + Sui Different requirements for protection b/w the EU and the US!

23 GI Protection in APEC Members : Diverse Legal Tools APEC Members Types of Protectio n Scope of Protection Sui Generis Trademark System Sui Generis How to Protect a GI Trademark System CHINA Dualism Agricultural & handicraft, but not services all goods & services Registration Collective or Certification marks JAPAN Dualism Only Liquors SINGA -PORE AUST -RALIA CANADA Dualism Dualism TM all goods & services any natural or agricultural Apparently product dualism or all goods & any But product more like of TM bc : services handicraft or industry With regard to most goods all goods & Wine or products & Brandy, TM applies. (no S.G for agricultural, services natural products) all goods & services Frequent disputes all goods bw EU & USA Dualism Wines & Spirits and the US. services RUSSIA TAIWAN MEXICO Sui Generis TM Sui Generis (US TMs don t qualify as GI in the EU) Agricultural & handicraft, but not services all goods but not services all goods & services No registration; JPO has the list of specific names of liquors No registration; Automatic protection once GIs meet requirements The Alcohol and Tobacco Tax and Trade Bureau (TTB) regulates & registers GIs Russian Patent Office examines applications to register Registration Collective marks Collective or Certification marks Collective or Certification marks Certification marks Collective or Certification marks (additionally Common Law protection) Certification marks

24 GI Protection in APEC Members : Diverse Legal Tools APEC Members Types of Protectio n Registration Fees (Only) Sui Generis Trademark System Sui Generis Timeframe Trademark System CHINA Dualism No fixed amounts; Translation costs 450 Registration: 12~15 M Protection: Unlimited Registration: 10 M Protection: 10 Yr/renewable JAPAN Dualism Registration: 1-3 M Protection: 10 Yr/renewable SINGA -PORE Dualism Case by case AUST -RALIA Dualism Registration: No timeframes Protection: 10 Yr CANADA TM - Up to USA Dualism - Up to Registration: No timeframes Protection: 15 Yr/renewable Registration: M Protection: 10 Yr/renewable RUSSIA Sui Generis 200 for application & 300 for registration - Registration: M Protection: Unlimited (a certificate to use the GI for 10 Yr) - TAIWAN TM Registration: N/A Protection: 10 Yr/renewable MEXICO Sui Generis 60 - Registration: 2-3 Yr Protection: Unlimited -

25 Protection in APEC Members Two Major Systems of GI in Korea Trademark Act Trademark Templates Act Definitions : Art. 2(1)(3-2): the term geographical indication means an indication that identifies goods as being produced, manufactured or processed in a specific region where a given quality, reputation or other characteristic of the good is essentially attributable to that region. Scope : All products Agricultural Product Quality Control Act Agricultural Templates Product Quality Control Act Definitions : Article 2(7): the term geographical indication means an indication that serves to designate a agricultural product or a processed agricultural product (excluding processed fishery products used as a principal material or main ingredient) originating therein, the reputation, quality and characteristics of which are essentially attributable to the specific region. Scope : Agricultural products and their processed products among those given a notice by the Minister for Food, Agriculture, Forestry and Fisheries

26 Protection in APEC Members Two Major Systems of GI in Korea Trademark Act Trademark Templates Act Requirements : GIs that conform to the definition stipulated in TRIPS article 22 in addition to common requirements of collective marks. Members only are allowed to use the mark, use being subject to some control of the organization. Agricultural Product Quality Control Act Agricultural Templates Product Quality Control Act Requirements : GIs that conform to the definition stipulated in TRIPS article 22 and additional elements (Art. 15 of the Enforcement Decree) : 1.Products of which the fame of its quality is well-known within and beyond Korea; 2.Products of which the reputation, quality or other characteristics of that product is essentially attributable to a certain region s productive-environment or human factors. 3.Product should have been cultivated in the area or processed in the area using the product cultivated in the area; or 4.Products that meet other criteria that the Minister of Agriculture and Forestry regards as necessary to acquire protection as geographical indications

27 Protection in APEC Members Two Major Systems of GI in Korea Trademark Act Trademark Templates Act Legal Effect of Registration : Protection against illegal use (civil & criminal remedies) Effective for 10 yrs, renewable Agricultural Product Quality Control Act Agricultural Templates Product Quality Control Act Legal Effect of Registration : Protection against illegal use (administrative, criminal, civil remedies) Effective permanently

28 Contents Geographical Indications (GIs) in Global Trade 1 Some Backgrounds Definitions, Etc. 2 Types of Protection 3 4 This Protection is an example in APEC text. Members Go ahead (including and replace Korea) it Comparison : Trademark vs Sui Generis

29 Comparison : Trademark vs Sui Generis Benefits of Sui Generis System Benefits Templates of Sui Generis System Russia, Mexico, Thailand, Vietnam Malaysia, Indonesia, Potentiality of GIs development Prevention from the relocation of production Facilitate the protection of GIs Benefits of Trademark System Benefits Templates of Trademark System Canada, Taiwan, Japan Employing the existing trademark regime which is already familiar to businesses, both foreign and domestic(predictability/ Certainty). Self-policing WTO & TRIPS Seems to requires more genuine and stronger tie to a place. ( essentially..geographical environment..) If reference your GI : is Perspectives not as strong for Geographical in its tie to Indications, the Mrs. Ester place Olivas Cáceres, it indicates, Secretary may General not of OriGIn, get Alicante, a Spain, registration.

30 Comparison :Some implications in global trade? sui generis TRIPS trademark a country s discretion Protection domestically available Protection available abroad

31 Thank you! Please send your questions at : jyshin@kiip.re.kr or dsy@kiip.re.kr Korea Institute of Intellectual Property