Citation: No. 184 Managing Intell. Prop. 42 2008
Content downloaded/printed from HeinOnline
Wed Oct 12 03:26:38 2016
-- Your use of this HeinOnline PDF indicates your acceptance
of HeinOnline's Terms and Conditions of the license
agreement available at http://heinonline.org/HOL/License
-- The search text of this PDF is generated from
uncorrected OCR text.
-- To obtain permission to use this article beyond the scope
of your HeinOnline license, please use:
Copyright Information
AGIDE GEGAPIA INDICATION
Your guide to geographical
indications worldwide
Managing IPasked correspondents in eight jurisdictions that provide some form of protection for
GIs or their domestically named equivalent to address the key questions for brand owners
Autai One-minute readAustralia
Oni October 30 and 31, WIPO
Availability and eNational Institute
1 As a member of the WTO, Australia has numerous obligations under of Industrial Propety INPI
TRIPs in relation to the protection of GIs. In meeting these obligations, of P c the
Australia relies on a combination of existing legislative provisions and the common 50th anniversary of the
law. Thus, with the exception of wine, there is no official register of GIs and pro- adoption of the Lisbon
tection is afforded where it is demonstrated that use of the term constitutes an act Agreement for the Protection of Appeations
of unfair competition. This rule applies both to Australian and international prod- o Origi and their International Registration.
ucts. With respect to wine, the relevant legislation is the Australian Wine and Brandy An appetlation of origins a special kind of GI
Corporation Act 1980 (Cth) (AWBC Act) which not only creates a procedure for which generally consistsof a gographica[
determining GIs but also creates a specific register of protected names. name oratraditional degnation usedon
products which have a specific quality or
2--Scope of protection characteristics that are essentiall dueto the
Australia does not subscribe to a single GI protection regime. Accordingly, geographical environment in which they are
domestic or foreign parties alleging misuse of a GI are free to determine the produced. Notable examples of appellations of
most appropriate method of pursuing their claim. Legal avenues include: origin registered under the Lisbon system
include Porto (Portugal), Habana (Cuba),
" The Trade Practices Act 1974 (Cth) (TPA) which prevents misleading or decep- Champagne (France), Tokay (Hungary),
tive conduct, including representations concerning the place of origin of goods. Prosciutto di Parma (Italy), Tequila (Mexico),
" The Trademarks Act 1995 (Cth) (TA) which allows for registration of trade Bqhemia Crystal (zech Republic) orBorjoml
marks, including GIs as trade marks, if certain criteria are met. mineral water (eorgia) The concept o aKGI
" The common law tort of 'passing off' which: prohibits one entity from misrepre- encompasses appellations Of Origin. Hbvever,
senting its goods as being the goods of another entity; and prohibits one entity aside fromnthe Lisb Agreement (in wih 26
from holding out its goods as having an association or connection with another states pnrtiCipate):there areno commonl
entity when this is not true. accepted methods of ptection worldide.
" The AWBC Act (as detailed above and considered further below). With the area fraught wih complfctions.
MdnaqinQ /Ptakes a timely looukat this area of
Further, the Australia New Zealand Food Standards Code imposes mandatory concern
country of origin labelling requirements for certain foods and beverages. The code
includes a standard in relation to spirits and specifies that "a geographical indication
must not be used in relation to a spirit.., unless the spirit has been produced in
the country, locality or region indicated."
, Listing
3 The AWBC Act creates a specific register -the Register of Protected Names
(Register) - for wine products. The Register, which is available for viewing
at www.wineaustralia.com, is maintained by a Registrar appointed under the AWBC
Act. The Register is divided into eight parts and includes: details of GIs relating to
wines manufactured in Australia (Section (a)); details of GIs relating to wines manufactured
in an "agreement country" (Section (c)); and details of GIs relating to
wines manufactured in foreign countries that are not agreement countries (Section
(g)). The information in Section (a) of the Register is broken down into state/zone,
region and sub-region and, collectively, there arc over 119 entries in Section (a) of
the Register. Section (c) of the Register details GIs relating to wines manufactured in
an "agreement country". Australia has one such agreement in place - the Agreement
between Australia and the European Community on Trade in Wine, and Protocol.
Consequently the Register contains details of GIs originating in countries of the EC.
There are no entries in Section (g) of the Register.
42 1 NOVEMBER 2008 WVWWMANAGINGIP. COM
3... .. ...
Registration
4 1 The GI Committee (established
under the AWBC
Act) is empowered to determine
the names and boundaries of
Australian GIs in relation to
wines, based on either its own initiative
or an application from a
third party. In making an application,
an applicant must specify the
area and the name of the proposed
GI together with any support
material showing that the application
satisfies the criteria detailed in
the AWBC Act. The applicant
must also pay an application fee of
A$5,500 (including GST). Upon
receipt of an application, the GIC
must consult with all declared
winemakers' organisations and
declared wine grape grower organisations.
In addition, an application
will not be considered until all
relevant trade mark owners have
been given the opportunity to
object to the proposed GI.
Following the consultation the
GIC will publish an interim determination
for comment. All comments
are then considered by the
GIC prior to it making a final
determination. Following the
GIC's final determination, interested
parties have 28 days to apply to
the Administrative Appeal
Tribunal (ATT) for a review of the
determination.
5. Conflicts
5o Registering trade marks
containing a GI - the TA
defines a trade mark as a sign,
used or intended to be used, to distinguish
goods provided in trade
from other goods - a trade mark
must be inherently distinctive. In
contrast, a GI cannot be created
merely by an intention to use the
indication and also is not inherently
distinctive. However, a trade
mark may incorporate all or part
of a GI. A trade mark incorporating
only be registered if the applicant esta
the extent to which they have used th
prior to the filing date of the appli
their specific product. While the TA
for third parties to oppose a trade
instance, on the grounds that it conta
that is a GI), such an opposition w
things, the applicant has used the p
good faith since before January 1 199
registered (whichever is the earlier).
considered is whether the proposed
mislead or deceive consumers.
The AWBC Act provides that the
Questions on GIs
Availability: Are geographical indications protected
inyour jurisdiction? Ifso, how are they
defined, who can apply and are they popular? If
not, are there any plans to introduce protection?
2 Scope of protection: What protection is given
to GIs and what rights does it provide? Isthere
any limit on goods/services that can be protect ed,
how long does protection last and is it subject to
renewal arrangements? Can foreign Ils be protected? Ifso,
to what extent if at all does this difter to local Is? Does it
depend on local recognition of the I, or on use - if the
latter, inwhich territory?
Listing: Isthere a list of Is that are protected?
3 Who keeps this list and how ,often isit updated?
How many are listed today? Where is it available
and isthere asystem for notifying the public of new
applications?
Registration: What are the procedures for
4 obtaining protection? Are any fees to be paid?
What documents/evidence if any must be filed
with the application? What are the criteria for registration?
Can a 1 be registered as atrade mark and ifso inwhat
circumstances? Isthe registration office a departmenrt of
an IPoffice or adepartment of agriculture?
Conflicts: What happens if there isa conflict
5 between atrade mark and a Ill? Are there any
examples of such conflicts? What pinciples are
applied to resolve issues of conflict between protected GIs
and trade marks?
Challenges: Inwhat circumstances can the reg-
6 stration of an existing protected GIbe challenged?
Does a GIacquire immunity from challenge
after aperiod of time and if so what period? DOprFvate
third parties have a right to oppose registration? If
so, what preconditions must third parties satisfy and what
grounds of opposition are recognised?
Refusal: What grounds exist for refusal Of reg-
7 stration? Do applicants for GIs have a right of
appeal against refusal to register? What institution
or body is responsible for determining appeals?
Enforcement: Who has standing to enforce
8 ights ina GI? Isthe enforcement process
administrative or judicial? What enforcement
remedies are available (e.g. injunclions, declarations, daamages,
account of profits etc.)?
all or part of a GI will
blishes that, because of
ie proposed trade mark
cation, it distinguishes
does provide grounds
mark application (for
ins or consists of a sign
ill fail if, among other
roposed trade mark in
6 or before the GI was
A further factor to be
trade mark is likely to
owner of a trade mark
may oppose a GI determination
on the grounds that the trade
mark is identical or confusingly
similar to the proposed GI. Upon
receiving such an objection, the
Registrar of Trade Marks must
decide whether or not the grounds
for the objection are made out and
may make a recommendation to
the GIC in relation to the proposed
determination. Any decision
by the Registrar of Trade
Marks can be appealed to the
Federal Court. If a GI is registered
then it places some limitation on
the use of a prior registered trade
mark incorporating the GI. For
example, wine bearing the trade
mark (and therefore also the GI)
must contain a minimum percentage
of wine made from grapes
emanating from the relevant geographical
area.
6 Challenges
Trade mark owners have
the opportunity to object
to a GI determination during the
application process and thus have
the capability of challenging the
introduction of a GI - both via
opposing the determination, and, if
this is not initially successful,
appealing any determination made
by the GIC. Once determined, there
are a limited number of ways to
challenge a GI. However, a GI can
be challenged on the grounds that it
is no longer in use or no longer
required.
7 Refusal
7 tThe GIC will consider a
large number of factors
in determining a GI application.
Such factors include the type of
area, the history of the area, the
existence of words used to indicate
the particular area, whether
the proposed GI is known to wine
retailers beyond the boundaries of
the area and the homogeneity of the product produced in
the area. Based on consideration of these factors, the GIC
may refuse an application for a GI. In addition, trade mark
owners have the right to oppose a GI determination. If a
trade mark owner makes out its grounds for objection, the
GIC may refuse a proposed GI. If an application for a proposed
GI is refused, the applicant can appeal the determination
to the ATT.
Enforcement
8 The Australian Wine and Brandy Corporation moni.
tors wine industry compliance on the use of GIs for
wine through its audit and export approval programmes. The
AWBC Act also provides for a wide range of interested parties
WWW.MANAGINGIP COM NOVEMBER 2008 143
O]A-GUID 0 *' - C-"BS- : I I[ TiO
to take action (such as seeking injunctions) to enforce GIs for
wine. In addition, domestic or foreign parties alleging misuse
of a GI are free to determine the most appropriate method of
pursuing their claim - whether this is through pursing a claim
under relevant legislation such as the TPA or through the tort
of passing off.
Greg Hipwell (left), partner, and Allison
I McLeod, lawyer, Deacons, Melbourne
Canada
F-----. Availability
1 In Canada, the Trade-marks Act (the Act) limits
GIs to wines and spirits of a WTO member where
quality, reputation or other characteristics of the wine or
spirit is attributable to its geographic origin and is protected
by the laws of the WTO member where it originates.
Any responsible authority in relation to the wine or spirit
may seek to have the applicable GI included on a list of GIs
that is kept by the Registrar of Trade-marks. There is no
plan to increase protection for GIs in Canada beyond wines
and spirits under the Act. However, Canada continues to
participate in the worldwide debate with respect to
increased protection for GIs. The definition of geographical
indication found in the Trade-marks Act does not explicitly
exclude products that are not wines or spirits as being
GIs. However, in order to have a GI added to the list, a
statement that the proposed GI identifies a wine or spirit is
required. Hence, trade marks and certification marks are
used to protect GIs concerning all other wares in Canada.
Additional protection may be available through other
Canadian laws and regulations, eg Cognac Brandy and
Cognac are regulated under the Food and Drug
Regulations.
-- Scope of protection
2 Once a GI for a wine or spirit has been entered on to
the list and is therefore protected as a GI in Canada
it may not be used in association with wines or spirits if it does
not originate in the place indicated by the GI even absent consumer
deception or unfair competition, a concept commonly
referred to as "enhanced protection". There is neither a time
limitation nor a renewal period for GIs on the list. GI rights
are limited in the following respects: (i) they cannot prevent a
person from using their own name (except where the name is
used in a manner as to mislead the public); (ii) if the GI is used
in comparative advertising; (iii) or if the GI has been used by
a Canadian in good faith before April 15 1994 or for at least
10 years before that date. Moreover, the Act provides specific
lists of names that are considered to be generic for wine and
spirits that may be adopted, used or registered as a trade mark
or otherwise in connection with a business, eg Champagne,
Porto. Protection for GIs through the use of certification
marks is provided in Canada without restriction as to the type
of product or service that is certified and which are identifiable
by words and/or symbols used in association with goods and
services that meet a defined standard; and may be licensed but
not be used by their owners. In Canada, certification marks
have been registered for such products as Stilton Cheese and
441 NOVEMBER 2008 WWW.MANAGINGIP. COM
Parmigiano Reggiano Cheese, both of which are recognised as
GIs in the EC. Certification marks are valid for a period of 15
years, and may be renewed upon the payment of the government
fee of C$350.
S Listing
j Section 11.12 of the Act creates a list of protected
GIs, to be maintained by the Registrar. A complete
list of GIs for wines and spirits is available on the Canadian
Intellectual Property Office website. There are 545 GIs on the
list, which was last modified on September 18 2008. Prior to
being added to the list, requests are published in the Canada
Gazetteto notify the public of the request and to provide interested
persons with an opportunity to object within three
months to their addition.
-A-- Registration
.f Although GIs are administered by the Registrar,
. requests for protection of a GI are submitted to
Agriculture and Agri-Food Canada care of the Canadian
Intellectual Property Office. A request must include details
of the GI such as whether the indication identifies a wine or
a spirit, the WTO Member Territory where the wine or
spirit is identified as originating (including a description
and address), name of responsible authority (including
address), reference to applicable law(s), description of the
quality, reputation or other characteristic of the wine or
spirit that is attributable to its geographical origin, and the
date upon which the GI was officially recognised and protected
in the WTO member territory. Additional information
may also be provided, such as data on production,
sales and historical exports to Canada, a copy of labels, and
references in authoritative publications regarding the wine
or spirit. A separate request must be submitted for each GI,
including sub-regions of a GI, together with the government
fee of C$450.
5 Conflicts
5 To date, the majority of disputes relating to GIs in
Canada have occurred as oppositions to trade mark
applications or as expungement proceedings before the
Registrar to applications for registration or registered marks
that may include a GI. These decisions may be appealed to the
Federal Court of Canada. In determining such disputes the
main principle applied has been whether the average consumer
would be misled by the mark with respect to the origin of its
wares. In Institut National des Appellations d'Origine v
PepperidgeFarm, Inc (1997) 84 CPR (3d) 540 (TMOB), the
Opposition Board rejected the opposition against the word
Bordeaux for cookies since it was unlikely that the average
consumer would be misled into believing they originated in the
Bordeaux region of France and were associated with
Bourdeaux wine. In Consorzio del Prosciutto di Parma v
Maple Leaf Meats Tnc (2001) 11 CPR (4th) 48 (FCTD), the
Federal Court dismissed the application for the expungement
of Maple Leaf's Parma mark since the Consorzio was not able
to prove that Parma was understood in Canada to signify meat
products as originating from Parma, Italy. More recently, in
Scotch Whisky Association v Glenora Distillers International
Ltd (2008), 65 CPR (4th) 441, the Federal Court overturned a
decision of the Opposition Board to allow an application for
Glen Breton for single malt whisky made in Nova Scotia,
Canada. On Appeal, the Federal Court found that confusion
arose from the word "glen" and not from the fact that Glen
Breton is a single malt whisky.
&AGIDE GEGAPI AL 3 6ZTI
from the potato fields
DCommission's Patrick J Kole is a long-time member of INTA's
mark system
SChallenqesOnce a GI is on the protected list, its use or misuse in
Canada by a third party may be challenged by the
responsible authority of the GI in court. A responsible authority,
as defined by the Act, is a person or entity by reason of
state or commercial interest that is sufficiently connected with
the GI to be a party to the proceedings. Presumably GIs remain
open to challenge at any time if a third party can find sufficient
grounds for judicial review of the decision by the Registrar and
can explain the delay in challenging the decision to add the GI
to the list.
* Refusal
7 Agriculture and Agri-Food Canada can refuse to add
-.. a GI to the protected list if the substantive evidentiary
requirements, as previously discussed, are not met. The Act
provides that a person may file a Statement of Objection within
three months from the date of publication in the Canada
Gazette of a statement detailing the GI that is to be added to
the list. The sole ground that may be alleged in a Statement of
Objection is that the indication is not a GI. The government
fee is C$1,000. The objector must demonstrate that the
applied for indication is deceptively misdescriptive of a geographical
locality. The Registrar is responsible for the administration
of the objection procedure, which is similar to that of
an opposition proceeding, with pleadings, evidence and a
hearing and is vested with the authority to decide that the indication
is not a GI or reject the objection. The decision of the
Registrar may be appealed to the Federal Court of Canada
within two months from the date of the decision.
- Enforcement
B GIs are to be enforced by their owners (the responsible
authority). Enforcement may be either administrative
or judicial. If the GI owner is enforcing its mark against
an applied-for trade mark application they may launch an
opposition proceeding as previously discussed. There are no
cost consequences in these proceedings and each party must
bear their own costs. If the GI owner believes that another
individual is using a mark, trade name or word, then the GI
may launch an action in the Federal Court of Canada to
restrain that party and seek various remedies including injunctions,
declarations, damages and/or an accounting of profits.
Parties in these proceedings are subject to costs being awarded
against them.
Keri AF Johnston, partner, and Andrea Long, associate, and Alpesh
Patel, student-at-law, Johnston Wassenaar, Toronto
WWW.MANAGINGIP.COM NOVEMBER 2008 145
I & GUDE GORPIAL INICTIN
Chile
Availability
IGIs and denominations of origin are protected by our
legislation in title IX of law 19.039 concerning IP, in
Supreme Decree 464 of the Ministry of Agriculture and
18.455 of the law of alcohol. Law 19.039 gives the following
definition:
a) It is understood by geographic indication that which identifies
a product as originating from a country or from a
region or locality of the national territory, when the quality,
reputation or other characteristic of the same are imputed,
fundamentally, to their geographic origin.
b) It is understood as a denomination of origin that which
identifies a product that originates from the country, from
a region or from a locality of the national territory, when
the quality, reputation or another characteristic of the same
is imputed fundamentally to its geographic origin, taking
into consideration also other natural and human factors
that influence that characterization of the product.
Any person, natural or legal, can request the registration of
a GI or a denomination of origin, as long as it represents a significant
group of products, fabricants or artisans, whose fields
or establishments of extraction, production, transformation or
elaboration are to be found within the zone of delimitation
established by the GI or denomination of origin requested and,
that fulfil the other requirements indicated by the law. We
could say that the GIs and denominations of origin have not
reached a significant degree of popularity but, by all means, its
recognition and importance have increased with time. Also
recognition of a GI or denomination of origin can be requested
by national, regional, provincial or communal authorities,
when the GI or denominations of origin are located within its
respective territories.
.... Scope of protection
2 The law gives owners of GIs and denominations of
origin a civil action (compensation for damages), a
criminal action (fine for malicious use) and a special protection
akin to those of trade marks, when an expression that
contains or is confusing with a denomination of origin or GI
is attempted to be registered. The law gives owners a restricted
and non-exclusive right to use. Owners cannot exercise faculties
of disposition with regards to a GI or denomination of
origin (transfer or tax) and they only have a right to an excluding
use with regards to those that use GI or denomination of
origin in an illicit manner. GIs and denominations of origin
only protect wine-growing, agricultural or food products.
Within these three, the greatest amount of protection falls generally
over the first. Industrial and artisans' products that are
not agricultural are accompanied by indications of origin.
Services are not the object of protection in this field. The protection
that is given by the registration of a GI or denomination
of origin is unlimited, except in two cases: 1) that it is a
foreign GI or denomination of origin and that it loses its quality
as such in its country of origin; 2) that the nullity of the registration
be declared. Despite this, registration must be modified
when the circumstances indicated by the law change. GIs
and denominations of origin can be registered in Chile but
cannot be protected or they will lose their protection (if they
461 NOVEMBER 2008 WWW MANAGNGP COM
had any) when they seize being protected or fall into disuse in
their country of origin.
. . Listing
3 The Department of Industrial Property is in charge of
overseeing the registration of GIs and denominations
of origin. It is updated every time a new registration is granted
or a new GI or denomination of origin is recognised by
international treaties or special laws. Every application is published
in the official newspaper. There are six applications
awaiting registration.
A---7 Registration
4. The procedure for registration consists in the presentation
of an application before the Department of
Industrial Property that must fulfil certain formal requirements
established by law. The applications must be accompanied
by: a technical study, elaborated by a competent professional
that gives precedents in the sense of characteristics or
qualities that are attributed to the product or exclusivity to its
geographic origin; and a project of specific rules of use and
control of the indication or requested denomination.
There is a registration fee of approximately $220. For a GI
or denomination of origin to be accepted by an authority, it
must adjust to the definition established by the law and fulfill
the requirements indicated in Art. 95 detailed below. Also, for
the approval of a GI or denomination of origin relating to
products of forestry, livestock and livestock development or
agro-industry a favourable report from the Ministry of
Agriculture is required, in accordance with the records supplied
by the applicant.
A GI or denomination of origin will not have protection as
such and will be registered as a trade mark when it has been
used continuously by nationals or residents in the national territory
to identify wines or spirits in Chile, in good faith, before
April 15 1994 or for 10 years, as a minimum, before this date
unless the contrary has been established by an international
treaty ratified by Chile. When the Department of Industrial
Property comes to the conviction that the co-existence
between trade marks and GIs or denominations of origin, or
of these among each other is possible, it will determine in its
resolution the conditions in which the GIs or denominations of
origin or trade marks are to be used, to avoid the induction of
error or confusion of the consuming public.
When one or more of the products has a characteristic as a
product of forestry, livestock and livestock development or
agro-industry, the Department, in order to form itsconviction
regarding the possibility of co-existence, must request a report
to the Ministry of Agriculture. The process or registration of a
GI or a denomination of origin is subordinate to the knowledge
or competence of the authority of industrial property.
However, this endeavour is also given support to by the
Ministry of Agriculture.
r Conflicts
3 Regulation only exists from the trade mark perspective;
in the sense no sign can be registered as a commercial
trade mark that can induce the consuming public into
error or confusion regarding the origin or attributes of the
product that pretends in Chile to distinguish a GI or denomination
of origin. Given that the number of GIs and denomination
of origins registered with the Department of Industrial
Property is zero (there are only six applications), there is no
jurisprudence regarding the incompatibility of registered GIs
or denominations of origin versus commercial trade marks. In
any case, the trade mark authority tends to reject trade mark
applications that contain expressions that, without constituting
a GI or denomination of origin, possess certain characteristics
that are similar to them and that, therefore, may tend to
induce errors or confusion regarding the origins of the product
or its essential qualities. An example of this was the recent
rejection of the trade mark Ruta Pica Sour required to distinguish
Pisco (a type of alcoholic beverage). Pica constitutes a
denomination of origin application in process to distinguish a
specific type of lemon (class 29). On the other hand, the application
Rutas Pica Sour, number 691915 was requested to distinguish
products in class 33. The authority signalled in its
judgment in first instance of September 5 2008, that while Pica
does not constitute a registered denomination of origin, its
social recognition was such that its incorporation in the
requested trade mark would be inductive of an error in regards
to the nature and origin of the products that it pretends to dis-
tinguish.
--.. Challenges
6 Specifically, industrial property law allows a GI or
denomination of origin application to be contested or
to void a GI or denomination of origin that has been registered
(cancellation), when the prohibitions for registration of the
latter are infringed as stated in article 95 of the Law of
Industrial Property (defined in answer 8). The actions can be
presented by any third party. In the case of oppositions, the
deadline to present the action is 30 days following the publication
of the application in the official gazette. In the case of
cancellation actions there is no deadline to initiate the action.
Refusal
7 The Law of Industrial Property establishes in its
Article 95 the causes of unregistrability or prohibition
of registration of GI or denomination of origin in Chile:
that they do not conform to the definitions established in the
law (defined in answer 1); that they are contrary to morals or
public order; that they induce the public to an error regarding
the GI, the nature, the mode of fabrication, the characteristics
or qualities, or the aptitude for employment or consumption
of the product; that they are common or generic indications to
distinguish the products that it deals with, understanding by
that those considered as such not only by those with special
knowledge, but also by the public in general; that they are the
same or similar to another GI or denomination of origin for
the same product.
It is in these prohibitions that opposition demands or cancellation
actions against an application or registration of a GI
or denomination of origin must be founded. If the judgment in
first instance by the Chief of the Department of Intellectual
Property rejects the registration of the GI or denomination of
origin, the applicant can appeal within 15 days at the Tribunal
of Industrial Property which constitutes the second instance
for such matters in Chile.
SEnforcement
8 The infraction of IP rights over a GI or denomination
of origin allows for the exercise of civil or criminal
actions against the offender. Among the measures that can be
requested to the Tribunals are: the culmination of the actions
that violate the protected rights; the naming of one or more
inspectors; the seizure of the products that are the object of the
alleged infraction and of the materials and mediums that
served principally to realise it; the prohibition to publish or
promote, by any means, the products that are the motive of the
alleged infraction; the retention, in the power of the establishment
of a credit or of a third party, or of goods, monies or values
that come from the sale or commercialisation of those
products, in whatever form; and the compensation for harms
and damages.
nJuanPablo Silva (left) and Arturo Covarrubias,
Silva &Cia, Santiago
WWVV.MANAG1NGIP. CM NOVEMBER 2008 47
Listing
j The listings kept by the EC are updated each time
that a new GI is registered. The database (DOOR) for
EU agricultural products and foodstuffs and the database for
wines (E-BACCHUS) are both available on the official website
Availability of the EU. There are about 3,000 GIs (including those already
| The EU has three systems of registration for GIs: for registered and those under examination). The system for noti.
. J, (1) agricultural products and foodstuffs, (2) wines fying the public of new applications is their publication in the
and (3) spirits. The expression GI includes the protected des- corresponding official gazette. In all cases the applications will
ignation of origin (PDO) and the protected GI (PGI). Both are be published in the official journal of the EU and in certain
available for wines and agricultural products and foodstuffs, cases also a previous publication at national level will take
but only PGIs for spirit drinks, place.
Generally speaking, GI is a name describing a good that owes
its characteristics or its reputation to the geographical area from A-------Registration
which it originates. In the case of PDOs, all the steps of pro- t4 As a general rule, a group of producers in the EU files
duction must in principle take place in the geographical area and an application where the product is defined accordthe
product's characteristics must be exclusively or essentially ing to precise product specifications and which includes a "sindue
to its geographical origin, while for PGIs at least one step of gle document" (which sets out the main points of the specifiproduction
has to take place in the area, and the link to the area cation: name and description of the product, a definition of the
concerned can be justified by reason of a specific quality, repu- geographical area, and a description of the link between the
tation or other characteristic linked to the geographical area. product and that geographical area) with the competent
Wines have additional requirements (eg, the product must national authority in their country, who will check formal
be obtained from certain vine varieties). The above system for aspects and initiate a national objection procedure setting a
wines will be applied from August 1 2009. Until then, Quality term for oppositions.
Wines Produced in Specified Regions, or abbreviated as Once the national stage is passed, it is sent by the national
QWPSR (what in the future will be protected designations of authorities to the Commission, who will scrutinise the applicaorigin),
is the name used to differentiate certain wines of high- tion to check that it is justified and meets the conditions laid
er quality with a specific origin from others like table wines, down in the regulations and shall either reject or publish the sinOnly
a "group" (namely, any association, irrespective of its gle document concerning the corresponding GI in the official
legal form or composition, of producers or processors work- journal of the EU. Within six months from that publication in
ing with the good in question) shall be entitled to apply for the official journal of the EU any member state or third country
registration. A natural or legal person can be considered a may object to the registration. Also any natural or legal person
group under certain conditions. Other interested parties may having a legitimate interest established or resident in a member
participate. state other than that applying for registration or a third country
may object. The Commission will finally take a decision.
Scope of protection Producers outside the EU can file the application directly to
2 Registered GIs can be used for the goods for which the Commission or via their national authority. Member states
they are protected by any person who complies with may charge a fee to cover their costs. A GI can be registered as
the specifications. They are protected against any direct or a Community collective mark with the OHIM when it is capaindirect
commercial use in respect of products not covered by ble of distinguishing the goods or services of the members of
the registration in so far as those products are comparable to the association which is the owner of the mark from those of
other undertakings. Associations of
manufacturers, producers, suppliers of
The principles laid down by EC requlations are services or traders which have the capacthat
in cases where the GI is prior to a trade ity in their own name to have rights and
obligations of all kinds, as well as legal
mark, the GI prevails persons governed by public law, may
apply for Community collective marks.
the products registered under that name or in so far as using r Conflicts
the name exploits the reputation of the protected name. They 5 As a general rule, the principles laid down by EC regare
also protected against any misuse, imitation or evocation, ulations are that in cases where the GI is prior to a
even if the true origin of the product is indicated or if the pro- trade mark, the GI prevails. In case that the trade mark pretected
name is translated or accompanied by expressions such dates the GI, the result is coexistence, unless the prior trade
as "type". and against any other false or misleading indication mark has a reputation and renown and has been used for a
as to the provenance, origin or other qualities of the product. length of time that would make that the new GI is liable to
And finally against any other practice liable to mislead the mislead the consumer. An example at EU level is case Tconsumer
as to the true origin of the product. 291/03, in which the CFI declared that the registration of a
GIs and denominations of origin enjoy the same protection. CTM for Grana Biraghi infringed the rights deriving from the
The protection has no time limit and no need to be renewed. PDO Grana Padano.
The goods protected by the GIs are certain agricultural goods
and foodstuffs, wines and spirits. Foreign GIs can be protect- Challenges
ed in an equivalent way to the EU GIs. They have to be pro- 0 A GI registration can be cancelled where compliance
tected in their own countries in order to be apt to be protect- ___1 of the conditions of the specification for a product to
ed in the EU. be covered by the protected name is no longer ensured. No
48 1 NOVEMBER 2008 WWW.MANAGINGIP.COM
I OA GU GORPIA IN CATION
deadlines have been set for cancellation. Any legal or natural
person having a legitimate interest can challenge a registered
GI or oppose to its registration. The opposition grounds are
mainly generic nature, homonyms and trade marks. The
Regulation on agricultural products and foodstuffs also mentions
plant varieties and animal breeds.
Refusal
7 I The grounds for refusal are those for opposition and
_1 !the non-compliance with more formal requirements
(eg if the applicant fails to prove that the protection of the GI
is justified or to submit proper documents or fulfil the conditions
for its registration). At the national stage, applicants
have the appeals provided by national legislation. As to the
decision adopted by the Commission, it
must be understood that the general system
of appeals in the EU applies. An examp
r--- Enforcement filed by the
Mainly the owner has it. Some
L.___. examples are oppositions based
on GIs against trade mark applications
(administrative) or criminal actions in counterfeit proceedings
or civil actions for infringement (judicial). Furthermore, public
authorities or private certification bodies carry out checks
that the use of the GI complies with the product specification
and member states conduct administrative controls on the use
of registered names on products in distribution and retail
under specific legislation on wines and spirits and as part of
the official control of EU food law for other products.
A Miguel Angel Medina, partner, Elzaburu, Madrid
India
Availability
GIs in India are protected and governed under the
Geographical Indications of Goods (Registration and
Protection) Act, 1999 and Geographical Indications of Goods
(Registration and Protection) Rules, 2002. The Act came into
force with effect from September 15 2003. GIs are defined
under Section 2(e) of the Act, as an indication which is used to
identify agricultural, natural or manufactured goods originating
in an area. The said GI should originate from a definite territory
and should have a special quality or characteristic
unique to the geographical location.
Any association of persons or producers as defined under
Section 2 (k) of the Act or any organisation or authority, established
by or under the law, representing the interest of producers
of the concerned goods can apply to the Registrar for
the registration of GI [Section 11 of the Act]. Prior to the Act,
GIs in India were registered as certification marks falling
under the Trade Marks Act.
Scope of protection
Registration of a GI affords better legal protection to
facilitate an action for infringement. The registered
owner and authorised users can initiate infringement actions.
GIs under the Act can be registered under the classification of
goods detailed in The Fourth Schedule of the Act that classifies
goods from class 1 to 34. The registration of a GI is valid
for a period of 10 years and can be renewed from time to time
[Section 18]. The fee for renewal of registration of a GI at the
expiration of last registration is Rs 3,000 per class and the
related Form is GI-4 (first schedule). If the GI is not renewed,
it is liable to be removed from the Register.
GIs of foreign origin are also protected, under Section 84 of
the Act. Once registered, these GIs are given the same protection
as local GIs. An example of a foreign GI registered is Pisco filed
by the India Embassy of Peru. The GI falls under class 33 for
'alcoholic beverage'. Pisco is liquor made from Pisquera grapes,
obtained by distilling fresh must of recently fermented grapes in
accordance with traditional methods and maintaining qualities
of a foreign Gi registered is Pisco
India Embassy of Peru
established in the production areas. It must fulfil the requirements
established by the Peruvian technical standard. The production
zones are all located in Peru. The Peruvian origin of the
word Pisco has been at great length recognised worldwide.
Listing
3 An index of registered/pending applications is kept
L___ i under the direction and supervision of the Registrar of
GI [Section 77 of the Act]. The list is also published in the
Geographical Indication Journal which is published from time to
time and made available to public in the form of a hard copy and
CD through a subscription fee. To-date a total numbers of
approximately 97 GIs have been registered and 141 applications
are pending at the GI Registry. These journals can also be viewed
the official web site of the Intellectual Property Office in India.
A Registration
4 Application for a GI is made under FORM GI-1 A and
FORM GI-1 B for a convention application, on a payment
of Rs5,000 per class. The application should include the
various requirements and criteria for processing a geographical
application as specified in Rule 32(1) which details inter alia:
how the indication serves to designate the goods as a GI; the
class of goods; the territory; the particulars of appearance; particulars
of producers; an affidavit of how the applicant claims to
represent the interest of producers; the standard bench mark or
other characteristics of the GI; the particulars of special characteristics;
textual description of the proposed boundary; the
growth attributes in relation to the GI pertinent to the application;
certified copies of the map of the territory; special human
skill involved, if any; number of producers; and particulars of
inspection structures, if any, to regulate the use of a GI.
On receipt of the application, a number is allotted.
Thereafter, the application is examined to check whether it
meets the requirements of the Act and Rules. For this purpose
the Registrar ordinarily constitutes a consultative group of
experts to ascertain the correctness of the particulars furnished.
After issuance of the examination report, submissions
are considered. If no objection is raised the GI would be
accepted and would be advertised in the Geographical
Indications Journal. An opposition can be lodged within a
maximum four-month period. If the opposition is dismissed,
the application will proceed to registration in Part A of the
WWW.MANAGINGIP.COM NOVEMBER 2008 149
1:AGIDE GEGRPHCA IDCTIN
Register unless the central government otherwise directs. After
a GI is registered any person claiming to be the producer of the
registered GI can file an application for registration as an
authorised user in Part B of the Register.
The procedure for registration as an authorised user is similar
to that for the registration of a geographical indication. A
GI cannot be registered as a trade mark but for an exception
provided under Section 26 of the Act which states:
* A trade mark which contains or consists of a GI which has
been applied for or registered in good faith under the trade
mark law or where such trade marks have been used in
good faith before the commencement of the proposed legislation
or before the date of filing of an application for registration
of a GI;
South Africa has ceased using GIs si
Champagne and Burgundy
" Where goods or class or classes of goods have become the
common name of such goods in India or on or before
January 1 1995;
" It protects the right of any person to use his name or the
name of his predecessor in business except where such
name is liable to cause confusion or mislead the public;
* No action in connection with the use of registration of a
trade mark shall be taken after five years from the date
from which such use or registration which infringes any GI
registered under the Act has become known to the registered
proprietor or the authorised user (acquiescence).
Applications for registration of a GI are filed at
Geographical Indication Registry in Chennai.
5. Conflicts
5 Section 25 of the Act stipulates that the Registrar shall
L_._. refuse the registration of a trade mark which contains a
GI. If an application for a GI is filed as a trade mark, the following
measures/principles are adopted: addressing a cease and desist
letter to the concerned party to refrain from using the GI as a
trade mark; a request for refusal or invalidation of a trade mark
shall be made in Form TM-73 or TM-74 of the Trade Marks Act
1999; a notice of opposition is filed under the Trade Marks Act.
Challenges
An existing registered GI can be challenged on the
ground of rectification petition under Section 27 of the
Act. The registration can either be challenged before the Registrar
or the Appellate Board for the contravention or failure to observe
the conditions entered on the Register or by an aggrieved party
who may have an interest in the registered GI. The main precondition
to file a rectification against a registered GI is that the party
must be able to establish that it is the "person aggrieved". Since
there is no statutory deadline to file the rectification, a GI does not
acquire immunity from challenge after it is registered.
Any person having an interest in the GI can oppose the GI.
The third party can oppose the GI either on the ground that it
has prior rights over the GI (common law and or statutory
rights) on the grounds laid down in section 9 of the Act:
" the use of which would be likely to deceive or cause confusion;
or
" the use of which would be contrary to any law for the time
being in force; or
501 NOVEMBER 2008 WWW.MANAGINGIP COM
* which comprises or contains scandalous or obscene matter; or
" which comprises or contains any matter likely to hurt the
religious susceptibilities of any class or section of the citizens
of India; or
" which would otherwise be disentitled to protection in a
court; or
• which are determined to be generic names or indication of
goods and are, therefore, not or ceased to be protected in
their country of origin, or which have fallen into disuse in
that country; or
" which although literally true as to the territory, region or
locality in which the goods originate, but falsely represent
to the persons that the goods originate in another territory,
region or locality. This objection is also taken by the
Registrar while accepting or rejecting the
registration of a GI.
ich as Refusal
7 The Registration of a GI is pro_
hibited on the grounds laid
down under Section 9 of the Act if the
application of GI is opposed, and the
Registrar is convinced by the grounds of objection, he may
refuse the application. The applicant has a right to appeal to
the Appellate Board under Section 31 of the Act.
8- Enforcement
8 1The registered owner and authorised user have standing
to enforce rights in a GI. The enforcement pro
ceedings are judicial and shall not be instituted in any court
inferior to a district court having jurisdiction to try the suit
[Section 66 of the Act]. Section 67 of the Act provides that the
relief which a court can grant in any suit for infringement or
for passing off includes an injunction and, at the option of the
plaintiff, either damages or account of profits.
/Shruttee Sondhi and Pravin Anand, Anand and
°Anand,Noida
South Africa
Availability
As a WTO member South Africa has an obligation to
provide means for the protection of GIs as set out in
the TRIPs Agreement. South Africa has not yet adopted specific
legislation aimed at the protection of GIs per se but GIs
are indirectly protected through certain provisions contained
in various other statutes and bilateral trade agreements, as
well as the common law remedy of unlawful competition.
GIs are indirectly protected by legislation such as:
" The Trade Marks Act 194 of 1993. GIs could be protected
by registering a collective or certification mark that relates
to a specific geographical area or incorporates a GI as part
of the trade mark. Furthermore, trade marks which may
mislead the public as to the true origin of the goods or services
are not registrable.
" The Merchandise Marks Act 17 of 1941 prohibits the
application of false trade descriptions, including indications
as to the country where the goods were produced, to goods
as well as the sale of such products.
IL 1J L7hU ELVJ
" According to the Liquor Products Act 60 of 1989, no liquor
product may be sold by using the name of any country, or a
word or expression containing such a name, in a manner that
indicates, or creates the impression, that the liquor product is
a product of a country other than its country of origin.
" The Wine of Origin Scheme, promulgated under the Liquor
Products Act, is an administrative tool for the protection of
GIs for wine.
-- 7 Scope of protection
2 As mentioned above, GIs are indirectly protected
through statutes, including the Trade Marks Act and
the Liquor Products Act, and bilateral trade agreements. The
rights obtained by the registration of collective and certification
trade marks are protected under the Trade Marks Act and
the marks are renewable every 10 years. Furthermore, these
rights are protected against infringement as provided for in the
Trade Marks Act with regard to all trade marks.
The Wine of Origin Scheme protects geographical wine
producing areas. According to the regulations promulgated
under the Liquor Products Act, no claims to origin may be
made in respect of wine, unless the claim has been verified and
certified by the Wine & Spirits Board. Where a producer
intends producing a wine of origin, it is obliged to notify the
Board of its intention to do so before harvesting grapes and to
give the relevant officials of the Board the opportunity to verify
the origin of the grapes concerned. There are also strict regulations
as to the labelling of wines.
Foreign GIs are mainly protected through bilateral trade
agreements. South Africa has recognised GIs since the 1930s
when it entered into an agreement (the Crayfish agreement) with
France in terms of which South Africa agreed to protect certain
appellations of origin. South Africa has subsequently further
ceased using GIs such as Champagne and Burgundy. In 1999, the
EC and South Africa signed an Agreement on Trade,
Development and Cooperation. In terms of this agreement South
Africa may not use the words Port and Sherry for exports to the
EC. For the domestic market, South Africa may use the names
Port and Sherry until January 1 2012. In terms of this agreement
provision was also made for the phasing out of words such as
Grappa and Ouzo. In 2002, the EC and South Africa negotiated
a further agreement for the protection of GIs for wines and spirits.
The Trade Marks Act, the Merchandise Marks Act, the
Liquor Products Act and the Wine of Origin Scheme include provisions
excluding the unauthorised use of recognised GIs.
International GIs not recognised by South Africa include
Parma ham, Calamata olives, Feta and Parmesan cheese (these
GIs are all used customarily/generically in South Africa).
Listing
3 South Africa does not have a register of protected GIs.
_ J1A list of the registered production areas under the
Wine of Origin Scheme is however available from SA Wine
Industry Information & Systems at http://www.sawis.co.za. The
Wine of Origin Scheme is administered by the Wine and Spirit
Board of South Africa. South African wines are certified under
the Wine of Origin Scheme in respect of specific areas of production
and cultivars, which areas are divided into regions, districts,
wards or estates. Collective or certification trade marks
that indirectly offer protection of GIs are reflected on the Trade
Marks Office register, which can be accessed by the public.
F I Registration
As pointed out before, only indirect protection can be
obtained. Under the Wine of Origin Scheme, a wine
producer must apply to the Wine and Spirits Board for classification/certification
of his wine. Wines can be certified as
wines of origin of a particular production area only if the
grapes were harvested in that area. The fees associated with an
application are minimal.
The Demarcation Committee of the Wine and Spirits Board
investigates applications relating to the definition and amendment
of production areas (geographical units, regions, districts, wards)
and units for the production of estate and single vineyard wines.
The fees associated with an application are minimal. Under the
Trade Marks Act, protection can be obtained through registration
of a certification or collective trade mark at the Trade Marks
Office in the usual manner in which trade marks are registered.
A collective trade mark is owned and used by a group of
producers - generally the members of an association. The
group that owns the mark may not use the trade mark directly,
but only through its members. Application for registration
of a collective trade mark is similar to the procedure for registering
an ordinary trade mark. The application must be
accompanied by rules governing the use of the mark. The rules
must specify the persons authorised to use the mark, the conditions
of membership of the association and, where applicable,
the conditions of use of the mark, including any sanctions
against misuse. If acceptable, the trade mark is registered in
the ordinary way after having been published for opposition
purposes.
A certification trade mark may not be registered in the
name of a person who carries on a trade in the goods or provides
the services in respect of which registration is sought.
The application must be accompanied by a statement by the
applicant that it does not carry on a trade in the goods and
services in respect of which registration is sought and by rules
governing the use of the mark. The rules must specify the conditions
of use of the mark as well as the circumstances and
characteristics of certification.
Conflicts
5 There are no specific provisions relating to the conflict
between a GI and a trade mark and any conflict
would be treated in terms of legislation such as the Trade
Marks Act and Liquor Products Act.
- Challenges
6 A GI protected through registration as a collective or
certification mark could generally be challenged on
the same grounds as an ordinary trade mark. The Trade Marks
Act provides that any entry wrongly made or remaining on the
register, or any error or defect in an entry made in the Register
may be challenged on application to the Registrar of Trade
Marks.
Section 27 of the Trade Marks Act further provides for
removal of a registered trade mark on three grounds:
" where there was no bona fide intention to use the trade
mark when the application for registration was made;
* where there was no use of the trade mark for a continuous
period of five years up to the date three months before the
application for removal is made; or
* where a trade mark registered in the name of a body corporate
or natural person has not been assigned to a new
proprietor for a period of two years after the date of dissolution
of the body corporate or death of the natural person.
The grounds listed above cannot be invoked against a trade
mark in respect of which protection may be claimed under the
Paris Convention as a well-known trade mark. Section 21 of
the Trade Marks Act provides that any interested person may
WWW.MANAGINGIP.COM NOVEMBER 2008 151
AGIDE GEGAPIA IDIATON
oppose a trade mark application. The South African courts
have held that an interested person must be more than simply
the general interests of a member of the public. A real or direct
interest in the mark or the subject matter of the application is
required in order to qualify as an interested person.
7. Refusal
7 1An application to register a certification or collective
L _... mark to protect a GI is examined in terms of the
Trade Marks Act. Section 10(2), (12) and (13) of the Trade
Marks Act provides that a mark (and by implication a GI)
shall not be registrable if it is a mark which:
a) is not capable of distinguishing, or
b) consists exclusively of a sign or an indication which may
serve, in trade, to designate the kind, quality, quantity,
intended purpose, value, geographical origin or other characteristics
of the goods or services, or the mode or time of
production of the goods or of rendering of the services; or
c) consists exclusively of a sign or an indication which has
become customary in the current language or in the bona
fide and established practices of the trade;
d) is inherently deceptive or the use of which would be likely
to deceive or cause confusion, be contrary to law, be contra
bonos mores, or be likely to give offence to any class of per-
sons;
e) as a result of the manner in which it has been used, would
be likely to cause deception or confusion.
However, an exception to (b) above applies to collective
trade marks as geographical names or other indications of geographical
origin may be registered as collective marks.
Furthermore, a mark capable of distinguishing the geographical
origin of goods or services may be registered as a certification
trade mark. If an application for registration of a collective
or certification mark containing a GI is refused, an applicant
may, in terms of section 53 of the Trade Marks Act, apply
to the High Court of South Africa within three months of such
decision being made, for relief. The Court has the power to
consider the merits of any matter, receive further evidence and
make any order it sees fit. An appeal against a decision made
by the Wine and Spirits Board is dealt with by the
Management Committee of the Wine of Origin Scheme.
B Enforcement
8 !Subject to the fact that no direct protection for GIs
exists in South Africa, the Trade Marks Act provides
that the owner of a trade mark, which could include a GI, may
institute infringement proceedings. In addition, a person
recorded as registered user may, subject to any agreement
between the parties, call upon the owner to institute infringement
proceedings, and if the owner refuses or neglects to do
so, the registered user may institute infringement proceedings
in his own name as if he were the owner. The owner is then
cited as a co-defendant in the action. The enforcement process
is judicial and is dealt with in the High Court.
The Trade Marks Act 194 of 1993 provides for the following
remedies in respect of trade mark infringement: an interdict
against the defendant; an order for removal of the mark
or delivery up of the goods; a claim for damages or an alternative
claim for damages in the form of a reasonable royalty;
a cost order.
1 - Eben van Wyk, director, Cliffe Dekker Hofmeyr, Cape Town
52 1 NOVEMBER 2008 WWW.MANAGINGIP.COM
United States
1 Availability
There is not a separate national scheme for protection
of GIs, as such, in the US. Rather, GIs are protectable
under the Federal Trademark Act as trade marks, certification
marks, and/or collective marks. A certification mark may be registered
by an entity which controls the characteristics and
requirements of the products. Certification marks may be owned
by governmental entities or by non-governmental organisations
that set standards and exercise supervision over the certified
products of others. However the registrant may not itself produce
the products sold under the mark. A collective mark may be
registered by an organisation such as a co-op or union for use
only by its members. Where a GI has acquired secondary meaning,
it may also be registered as a trade mark by any entity that
controls the goods and services provided under the mark.
In addition to rights based on registration, in the US, common
law trade mark rights also may be arise through use and acquired
reputation. This principle applies to certification marks and collective
marks as well as trade marks and service marks. For
example, Cognac was held to be a valid common law regional
certification mark for brandy originating in the Cognac region of
France. There are also numerous state laws in the US protecting
various geographical terms within the jurisdictions of particular
states, often for agricultural products. Many of those terms also
are federally registered as certification marks. In addition, there
are extensive federal regulations related to alcoholic beverages
which, inter alia, prescribe nomenclature requirements for beer,
wine and spirits that have geographical connotations.
The owner of a registered or common law certification
mark, collective mark or trade mark also may prevent misleading
or deceptive use of similar geographical terms
through actions for false advertising and unfair competition
under both federal and state laws in the US. Collective and
certification marks protecting GIs are not extremely popular
in the US and the number of applications for such registrations
is relatively small.
. Scope of protection
2 A registered collective mark or certification mark
I- may cover any goods or services for which it is used.
Registration is for a 10-year term. Foreign GIs are entitled to
the same protection as local GIs. An application for registration
may be based on intent-to-use the mark; however, proof
of actual use is a perquisite to registration unless the applicant
is the owner of a registration for a corresponding collective
mark or certification mark in its home country. In order to
maintain the registration, the mark must be used in the US.
Listing
3 There is no separate listing of protected GIs.
However, individual registrations and applications
may be found by searching the USPTO database at
www.uspto.gov.
A Reqistration
4 The procedures for obtaining protection are essenL_
tially the same as those for registering a trade mark.
The application is filed in the USPTO. The filing fee is $345
per class, and the application may be filed electronically or on
paper. No documents must be submitted with the application
I & GUDE GEGAPIA IDCTOSI
except for a drawing if the mark includes a design and a specimen
of use if the application is based on use.
Unlike a geographical trade mark, which can only be registered
if the applicant shows "secondary meaning" acquired
through use, under the US Trademark Act, indications of
regional origin may be registered as certification marks without
any showing of secondary meaning in the US. The USPTO
processes such applications in the same way as all other applications
for trade marks, service marks, collective marks and
certification marks. The application is examined for formalities,
inherent registrability and on relative grounds. If the
application is not based on use, either proof of use in the US
or evidence of a home country registration must be filed before
a registration may issue. There is no separate registration
office for GIs.
5 Conflicts
A conflict between a trade mark and a GI would be
resolved in accordance with general trade mark law
principles.
THE GLOBAL MAG/
FOR IP OWNERS
* News - In-depth features a Interviews
Industry surveys a Regulatory overviews
Challenges
6 An application to register any mark in the US is pubt___.
lished for opposition after it is approved by the
Trademark Examining Division of the USPTO. Any persons
who believe they may be damaged by the registration may file
an opposition. Grounds for opposition include confusing similarity
to a prior common law or registered mark of the opposer,
as well as all grounds of inherent registerability including
that the mark is descriptive or deceptively misdescriptive or
that it is a generic term. For example, the Court of Appeals for
the Federal Circuit has held that the Scotch Whiskey
Association had standing to seek cancellation of a trade mark
registration that allegedly implied Scottish origin of a whiskey
made in Canada. Such cases arise only rarely, however. GIs
enjoy no special protection against claims of genericness.
r- ' Refusal
7 I ma be refused on all of the usual grounds for
refusal of trade marks except that a geographical name
may be registered as a certification mark despite being geographically
descriptive, unlike a
trade mark consisting of a geographical
term which can not be
registered without a showing of
secondary meaning. If an applicaZ1NE
tion is refused, an ex parteappeal
may be taken to the Trademark
Trial and Appeal Board (TTAB)
of the USPTO which is the same
body that hears inter partes
oppositions and cancellation
actions. Subsequent appeals from
TTAB decisions may be filed in
any Federal District Court having
jurisdiction or directly to the
Court of Appeals for the Federal
Circuit.
Case studies
Firm rankings
~ niLorcenenvRights in a registered GI
' may be enforced by the
registrant and rights in a common
law GI may be enforced by
any party that can demonstrate a
legitimate legal interest in the
common law right. Judicial
enforcement actions can be
brought in either federal or state
courts and the available remedies
include injunctions, declarations
of rights, damages, accounting
for profits, and in exceptional
cases of wilful infringement,
awards of attorneys' fees. In
addition, as noted above, oppositions
to published applications or
cancellation actions against registered
marks may be filed with the
TTAB.
Virginia STaylor, partner,
Kilpatrick Stockton, Atlanta
WWW.MANAGINGIP.COM NOVEMBER 2008153
Maagn
intleta
ippet