INDIAWIPO NATIONAL ROVING SEMINARS ON GEOGRAPHICAL INDICATIONS Protection

INDIA-WIPO NATIONAL ROVING SEMINARS ON GEOGRAPHICAL INDICATIONS Protection of Geographical Indications in a Selection of Indian Export Markets Miguel Angel Medina ELZABURU, Spain, European Union Chair of MARQUES Geographical Indications Team Chennai, 29 and 30 January 2009 Bangalore, 2 and 3 February Kolkata, 5 and 6 February 2009 1

http: //europa. eu/abc/maps/index. en. htm 2

Systems of protection of GIs in the EU: - Agricultural products and foodstuffs - Wines, except wine vinegars - Spirit drinks 3

EU Regulations on GIs: Agricultural products and foodstuffs Council Regulation (EC) No 510/2006 (before: Council Regulation (EEC) No 2081/92) Commission Regulation (EC) No 1898/2006 (laying down detailed rules of implementation of Council Regulation (EC) No 510/2006) (before: Commission Regulations (EEC) No 2037/93 and (EC) No 383/2004), amended by Commission Regulation (EC) No 628/2008, which amends the Community symbols contained in Annex V to Regulation No 1898/2006 (which in any case may be used until 1 May 2010). 4

EU Regulations on GIs: Wines: *Council regulation (EC) No 479/2008 on the market in wine (before: Council Regulation (EC) No 1493/1999 of 17 May 1999 on the common organisation of the market in wine: QWPSR and Table Wines with Geographical Indication) Title III, Chapter III (arts. 33 to 53), which refer to GIs and DOs, apply from 1 August 2009. 5

EU Regulations on GIs: Spirit drinks: Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labeling and protection of geographical indications of spirit drinks and repealing Council regulation 1576/89. Mainly arts. 6, 10, 15 and following. 6

Council Regulation (EC) No. 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. (Art. 2) “Designation of origin”: - name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff - originating in that region, specific place or country, - the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production, processing and preparation of which take place in the defined geographical area. Triple P 7

Council Regulation (EC) No. 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. (Art. 2) Geographical indication: - name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff - originating in that region, specific place or country, - and which possesses 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. 8

Council Regulation (EC) No. 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. (Art. 2. 3): Furthermore, certain geographical designations will be treated as DOs where the raw materials for the products concerned come from a geographical area larger than, or different from, the processing area, provided that: a) the production area of the raw materials is defined b) special conditions for the production of the raw materials exist c) there are inspection arrangements to ensure that the conditions referred to in point (b) are adhered to. d) The designations in question have been recognised as DOs in the country of origin before 1 May 2004 9

Council Regulation (EC) No. 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. - Furthermore, traditional (geographical or not) names designating an agricultural product or a foodstuff which fulfil the conditions set for DOs or GIs shall also be considered as DOs and GIs 10

Foodstuffs: Agricultural products: Wine vinegar (Annex I) (Annex II) (Art. 1. 1) R 510/2006 and 417/2008) -beers -beverages made from plant extracts -bread, pastry, cakes, confectionery and other baker´s wares, -natural gums and resins, -mustard paste, -pasta -salt - hay - essential oils, - cork, - cochineal (raw product of animal origin), - flowers and ornamental plants, - wool - wickery - scutched flax. - cotton 11

Annex I to EC Treaty (art. 32 EC Treaty) -live animals -Eat and edible meat offal -Fish crustaceans and molluscs -Live trees and other plants -Coffee, tea and spices, excluding maté -Cereals -Cocoa beans, whole or broken, raw or roasted -Cocoa shells, husks, skins and waste -Natural cork, unworked cork, wasted cork -Unmanufactured tobacco, tobacco refuse. . . -etc. . . 12

Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs Common features of PDO/PGI: - same level of legal protection - same registration procedure - practically same legal requirements - registration is a sine qua non requirement - cannot become generic - can be cancelled if compliance with the conditions no longer ensured *Difference: the definition which implies that the link between product and place is stronger in PDO and they are considered as more appreciated by consumers 13

Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs Exclusion from registration: * Generic names * Names which are misleading for the consumer 14

Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs 1. - Exclusion of generic names: Criteria to assess genericness: existing situation in the Member States and in areas of consumption (Feta cheese) relevant national or Community Laws 15

Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs 2. - Exclusion of geographical names if liable to mislead the consumer in relation to: - - names which conflict with the name of a plant variety or an animal breed total or partially homonymous names with that of a name already registered under this Regulation, unless there is sufficient distinction in practice (Jambon sec et noix de jambon sec des Ardennes, France, and Jambon d’Ardenne, Belgium) trademarks in the light of a trademark’s reputation and renown and the length of time it has been used - 16

Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs Who can apply? - only a “group” (namely, any association of producers or processors with any legal form or composition, working with the same agricultural product or foodstuff) A natural or legal person may be treated as a group if: - only producer in the area willing to submit an application the defined “geographical area”/”product” possesses characteristics which differ appreciably from “those of”/”those produced in” neighbouring areas 17

Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs Content of the application (at least): - identification of the applicant - product specification (name, description of the product, definition of geographical area, evidence that originates there, method of obtaining the product, labelling and packaging requirements, the link between the geographical origin or environment and the name and the characteristic, reputation, etc. , product any requirements laid down by national or EU Law; Identify the authorities or bodies verifying compliance with the provisions of the specifications and their specific tasks ) - single document (a doc. which contains the most relevant information of the specification and a description of the link between the geographical origin and the good) proof of protection in the country of origin (in the case of third countries) 18

Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs Where to file? Non-EU applications: Geographical area outside the EU Optional: Direct filing with the Commission or Filing with their own country authorities. In both cases: evidence of protection in the country of origin must be given 19

Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs EU application procedure: National phase: ((only for geographical areas located in member states) Filing with the national authorities scrutiny by the Member State of the compliance with the conditions of the regulations if approved, then publication for opposition purposes national opposition procedures (only nationals or residents in that Member State). Reasonable period - possible provisional national protection - possible transitional adjustment period at national level (for undertakings that have legally marketed the products in question, using the names concerned continuously for at least the past 5 years and have made that point in the national opposition procedure). it forwards to the Commission a conformity declaration of the memberr state of origin , the single document, identification of the applicant and reference to the publication of the application. Community phase: Common to EU and non-EU member states Scrutiny by the Commission (“should not exceed 12 months”) publication for possible EU opposition procedure (for those non established or resident in the country of origin). Opposition deadline: 6 months. Decision. Publication of decision 20

Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs Controls (for GIs relating to a geographical area in a third country): Verification of compliance with the specifications, before placing the product on the market, shall be ensured by: • one or more public authorities (objectivity and impartiality) designated by the third country and/or • one or more product certification bodies. They shall comply with European standard EN 45011 or ISO/IEC Guide 65 (General requirements for bodies operating product certification systems) The Commission shall make public the said authorities and bodies. 21

Third countries’ applications for GIs in the EU • • • CAFÉ DE COLOMBIA (PGI) – registered DARJEELING (PGI) KANGRA TEA (PGI) LONGIING CHA (PDO) JINXIANG DA SUAN (PDO) LONGKOU FEN SI (PGI) and 7 more Chinese GIs applications 22

Rights “to (do)” conferred by a registered (R 510/2006, Art. 8) PGI/PDO: - use the name protected as PGI/PDO by any operator marketing agricultural product or foodstuffs conforming to the corresponding specification - use of the corresponding indications and their respective symbols * in the case of agricultural foods and foodstuffs originating in the Community marketed under a name registered in accordance with this Regulation, the indications “protected designation of origin” and “protected geographical indication” (in any EU language) or the Community symbols associated with them shall appear on the labelling (a right, but a duty too) * in the case of agricultural products or foodstuffs originating in third countries marketed under a name registered in accordance with this Regulation the above indications and symbols associated with them may appear on the labeling. 23

GIs? Trademarks? 24

Community Symbols Protected Designation of Origin Protected Geographical Indication 25

Rights “against” conferred by a registered PGI/PDO: (R 510/2006, Art. 13. 1 and 13. 2) (a) any direct or indirect commercial use of a registered name in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or in so far as using the name exploits the reputation of the protected name; (b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar; (c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin; (!) (d) any other practice liable to mislead the consumer as to the true origin of the product. (*) vulgarisation: “protected names may not become generic” (art. 13. 2) 26

More rights “against” conferred by a registered PGI/PDO: - General Customs Action Council regulation (EC) No. 1383/2003 relating to action by the Customs authorities against merchandise that they suspect infringes certain intellectual property rights Art. 2. 1, c, iv, understands as “goods infringing and intellectual property right” those which infringe the designations of origin or geographical indications protected the law of that Member State or the legislation laid down in the EU Council Regulations. 27

Limits to the rights conferred by the PDO/PGI: (R 510/2006, Art. 13. 3 and 13. 4: Coexistence) Transitional periods of up to 5 or up to 15 years, depending on the case, can be provided for allowing those who have been legally using a name or products entirely or partially “identical” to a new PDO/PGI to keep on using said names under certain circumstances. (i. e. , French PDO “Munster” or “Munster Géromé” and unregistered German name “Münster Käse”) 28

RELATIONS (OR “CONFLICTS”) BETWEEN TRADEMARKS AND DOs and GIs (R 510/2006 Art. 14. 1) (I) WHERE THE REGISTERED PDO/PGI IS OLDER: - Art 14. 1: The PDO/PGI prevails Where a PDO/PGI is registered, the application for registration of a trademark corresponding to one of the situations referred to in Article 13 and relating to the same class of products shall be refused if the application for registration of the trademark is submitted after the date of submission of the registration application to the Commission Trademarks registered in breach of the above shall be invalidated. 29

RELATIONS (OR “CONFLICTS”) BETWEEN TRADEMARKS AND DOs AND GIs (R 510/2006, Arts. 3. 4 and 14. 2) (II) WHERE THE TRADEMARK IS OLDER: - Art. 3. 4: When the trademark prevails… and the GI cannot be registered A DO or GI shall not be registered where, in the light of a trademark’s reputation and renown and the length of time it has been used, registration is liable to mislead the consumer as to the true identity of the product. - Art. 14. 2: Coexistence: A trademark the use of which corresponds to one of the situations in article 13 -namely, exploits the reputation, misuse, imitation or evocation, false or misleading any other practice liable to mislead… - has been applied for, registered, or established by use, if that possibility is provided for by the legislation concerned, in good faith within the Community, before the date of protection of the DO or GI in the country of origin or before 1 January 1996 and no grounds for its invalidation or revocation exist as specified by the First Directive 89/104 (now 2008/95 of 22 October) or CTMR 40/94. - REST OF THE CASES: DO/GI PREVAILS 30

OTHER POSSIBLE WAYS OF PROTECTION OF GEOGRAPHICAL NAMES: EU Trademark regulations: - Art. 15 First Council Directive 89/104/ ECC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (now renamed as 2008/95) authorizes Member States to provide for collective marks, guarantee marks and certification marks which may consist on signs or indications to designate the geographical origin of the goods or services. NATIONAL TRADEMARKS - Art. 64 of CTMR admits that signs or indications which may serve in trade, to designate the geographical origin of the goods or services may constitute Community collective marks. (E. g. , TURRON DE ALICANTE, TEQUILA, BAYERISCHES BIER, DRESDNER CHRISTSTOLLEN). COMMUNITY TRADEMARKS WARNING for INDIA: A great advantage: it can give additional protection to GIs in the trade by protecting them as they are really used in trade, or for goods out of the EU scheme (e. g. handicraft ) in addition to variations of the geographical name or different overalls or versions with words and devices, etc. And can be a solution when a PDO/PGI is not possible 31

Community Trade Mark Regulation (CTMR 40/94) Arts. 7 (1) (j) and 7 (1) (k). The following shall not be registered: - Art. 7 (1) (j): trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin. Applied by OHIM only to Class 33 - Art. 7 (1) (k): trade marks which contain or consist of a DO or GI registered in accordance with Regulation (EEC) No 2081/92 (now No 510/2006) when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the DO or GI. Applied by OHIM only to Classes 29 to 32 The goods must be restricted to those for which the PDO/PGI is protected 32

Community Trade Mark Regulation (CTMR 40/94) The following shall not be registered: Art. 7 (1) (c): - trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the. . . quality. . . geographical origin. . or other characteristics of the goods or service. This will not apply if the trade mark has become distinctive in consequence of the use made of it. Art. 7 (1) (g): - trade marks which are of such a nature as to deceive the public, for instance as to the . . . geographical origin of the goods or service 33

Some EU Court decisions on conflicts between geographical names/PDOs/PGIs and Trademarks: - C-108/97 CHIEMSEE - C-87/97 CAMBOZOLA vs. (PDO) GORGONZOLA - T-291/03 GRANA BIRAGHI vs (PDO) GRANA PADANO - C-132/05 PARMESAN vs (PDO) PARMIGIANO REGGIANO An interesting OHIM case: ROQUEFORT vs. RONCARIFORT (opposition/invalidation) 34

Some protecting Spanish Court decisions: (IGP) TERNERA GALLEGA vs trademark “Terga, Ternera de Galicia” (AP La Coruña, 13/5/2002) (PDO) JAMÓN DE HUELVA vs Company name Origin Jabugo, S. L. (PDO) CHAMPAGNE vs BAR CHAMPAGNE Some protecting SPTO decisions: BORDEAUX vs BORDEAUX (Class 9) CHAMPAGNE vs Chamespagne, Chamspain, Champcava, Champenoise 92´, Champenedese, Champinette, Champanella Robla, Pancham, Champ…any 4, Txampana Arzuaga and device (Class 33) 35

Some protecting SPTO decisions (some more): BASMATI vs THE BASMATI RICE and device VALENCAY vs Valency BOURGOGNE vs Borgoñón Granate CASSIS vs Cassis D´aran MUSCAT DE LUNEL vs Lunel MINERVOIS vs Minerva; EAU-DE-VIE DE LA MARNE vs Duc de Marne (claiming Class 32) MEDOC vs Medoc Alavés (Class 21) CHAMPAGNE vs Champagne (Class 43), Tele-Champagne y Bonbones Rojo y Alcon (Class 39) and vs Colección Champagne and device (Class 14) 36

The protection of GIs in China A double (or triple? ) system 37

Geographical Indications in China • Trademark Office (State Administration for Industry and Commerce) - SAIC • General Administration of Quality Supervision, Inspection and Quarantine AQSIQ • Ministry of Agriculture • Trademark Act PRC (amended 2001) and implementing regulations • Regulation on the protection of Geographical Indication products (2005) • Measures for Administration of Geographical Indications of Agricultural Products (2008) 38

Summarising: • Protection as a “GI Certification/Collective Trademark” by the Trademark Act • Protection as a GI by administrative regulation and as a GI for specific (only agricultural) products by another administrative regulation BUT, without coordination between Systems. . . 39

As a result: • Conflict of competence • Homonymous geographical names belonging to different owners* • Abnormal situations • Overlapping • Situation of lack of certainty *Jing Hua Ham 40

GI label - AQSIQ 41

GI label – Trademark Office 42

Product coverage: GI Certification/Collective Mark: any good GI label - AQSIQ: It is not exactly stated in the regulations, but it is generally accepted that at least it encompasses: agricultural products, including primary and processed products in the field of agriculture, forestry, animal, fisheries, and wine 43

The definition of GIs According to the Regulation on Protection of Geographical Indication Products (art. 2): “The products of geographical indication mentioned in these provisions shall refer to products that originate from a particular geographical region with the quality, reputation or characteristics substancially attributable to the natural and human factors of the region and denominated with the name of the region upon examination and approval” 44

The definition of GI – Certification/Collective Mark According to the Trademark Law (art. 16. 2): “Geographical Indication identifies a particular good as originating in a region where a given quality, reputation or other characteristics of the good are essentially attributable to its natural or human factors” 45

How to protect third countries’ GIs in China? : • In theory, both, Trademark Office and AQSIQ systems, clearly provide that foreign GIs can be registered, but the corresponding implementing administrative regulations have not been promulgated for the latter • So, in practice, certification and collective marks are the only way available to foreign GIs 46

Trademark application for a collective or certification mark consisting on a GI from a foreign country Special requirements: Evidence of: - the GI being protected in home country by the applicant - the characteristic indicated by the GI - the link between the characteristic and the natural and human factors of the region - the boundary of the territory The rest of the procedure is as a regular trademark 47

Protection obtained for the GI through its registration as a Certification/Collective Mark • It will be included in the TMs database and be taken into account in the examination of later applications • It will be protected by administrative and criminal Law against infringement 48

The Protection of Geographical Indications in the United States A trademark system 49

Geographical Indications as Trademarks (An American View) • A “subset” of trademarks • As TMs, GIs are: – Source-identifiers – Guarantees of quality – Valuable business interests • Generic cannot be registered • Administrative trademark structure can be used 50

Advantages of using a TMs System for GIs • • • The system is already working and known by those who intervene Respectful with the rights of the prior owners Geographical Indications as trademarks can be protected for any kind of product or service Governments do not have to commit additional enforcement resources to ensure compliance. The owner can determine when to take action. Easier to accommodate GIs which are not merely names (but “signs”: e. g. , designs, slogans, designs, 3 -D, colors, or even sounds) 51

Some examples of possible GIs 52

Some examples of possible GIs (II) 53

Means of protection of GIs in the U. S. - Protection: the use of false designations of origin and false descriptions are prohibited (Section 43) - Means of protection: • • • As Certification Marks As Collective Marks As Individual Trademarks As Common-Law Marks Alcoholic Beverage Labelling Act 1998+The Alcohol and Tobacco Tax and Trade Bureau (TTB) regulates the use of GIs on alcoholic beverages (incl. wines and spirits) 54

Features of US Certification Marks (I) Concept: Any word, name, symbol, or device that certifies a particular aspect of specific goods/services. This includes a distortion, an abbreviation, or a combination of geographical terms 3 Types: - regional or other origin - material, mode of manufacture, quality, accuracy or other characteristics of the goods/services - that the work or labour on the goods/services was performed by a member of a union or other organization. 55

Features of US Certification Marks (II) • Control by their owner of use in accordance with the use requirements (owners are usually a government agency or authorized body) • Their owner is not allowed to use the mark • All those who comply with the requirements are entitled to use and cannot be excluded from use 56

Features of US Certification Marks (III) • Procedure: - Prosecution as any trademark: Exception: it can be registered despite of being descriptive as to the geographical origin. Filing at the USPTO, . . . Examination ex officio as to formal requirements (current use in the U. S. /home country registration) and intrinsic grounds for refusal (and the evidence of its use, if applicable) with special focus on its geographical claim (basically its possible genericness or deceptiveness, and the systems of control), publication, possible opposition stage, decision, possible appeal to the TTAB, and later either to the corresponding Federal District Court or directy to the Court of Appeals of the Federal Circuit and finally to the Supreme Court. FONTINA (“generic” for cheese) 57

• • Some examples of US geographical Certification Marks ROQUEFORT (in Europe: mark and PDO) BRUNELLO DI MONTALCINO LIEBFRAUMILCH MOSEL DARJEELING JAMAICA BLUE MOUNTAIN COFFEE COGNAC (unregistered – under Common. Law) 58

Protection as an individual or collective trademark • In principle, GIs are descriptive, but they can be registered as individual or collective trade marks (or service marks) if they have acquired a: “secondary meaning” 59

GIs as Common-Law (non-registered) Trademarks As consumers or purchasers in the U. S. primarily understand COGNAC as a designation to refer to brandy originating in the French region with that name, and not elsewhere and since there is a control and limitation of use of the designation which meets certain standards of geographical origin, the TTAB held that COGNAC was a common-law certification mark. INAO v. Brown-Forman Corp. , 47 USPQ 2 d 1875 (TTAB 1998) 60

Some disadvantages of protecting GI as trademarks • Trademarks can become generic • Limited duration: 10 years (therefore, they need a watch service for renewal). • They can lapse or be cancelled based on lack of use • Registration and renewal cost money • Usually, there is a public action, and this is stronger, in the systems where there is provision for registration of GIs as such (“sui 61 generis”)

Miguel Angel Medina ELZABURU, Spain, European Unión Chair of MARQUES Geographical Indications Team 62