Official Journal of the International Trademark Association

Transcription

1 Official Journal of the International Trademark Association Geographic Trademarks and the Protection of Competitor Communication By Robert Brauneis and Roger E. Schechter The Impact of European Geographical Indications on National Rights in Member States By Lionel Bently and Brad Sherman The Asian Consciousness and Interests in Geographical Indications By Min-Chiuan Wang An Interdisciplinary Approach to Brand Strength By Jerre B. Swann Vol. 96 July-August, 2006 No. 4

2 EDITOR S NOTE On January 6, 2006, the International Trademark Association presented the Second Learned Professors Trademark Symposium in Washington, D.C., at The National Press Club. This program was designed to provide an academic perspective on trademark issues for professors of trademark law, jurists hearing and deciding important cases dealing with trademark disputes and novel legal arguments, and legal practitioners specializing in trademark law who want to enhance their knowledge of international and comparative trademark law. Three prominent professors presented comprehensive examinations of global and comparative leading-edge issues and concerns of trademark law and policy Roger Schecter based on the paper co-authored with Robert Brauneis, Lionel Bently based on the paper co-authored with Brad Sherman, and Min-Chiuan Wang from a European, North American, and Asian perspective, respectively. The Trademark Reporter is proud to publish these three articles as presented at the Learned Professors Trademark Symposium. Vol. 96 TMR 781

3 906 Vol. 96 TMR THE ASIAN CONSCIOUSNESS AND INTERESTS IN GEOGRAPHICAL INDICATIONS By Min-Chiuan Wang I. INTRODUCTION Geographical indication is a legal norm originating in Europe and reflects to a large extent the view of the European countries. Through the WTO s TRIPS Agreement, this norm has been transplanted to nations around the world, including the countries of Asia. Many Asian countries hardly had their own legal consciousness of geographical indications before the norm migrated from the WTO to them. Since accepting the norm, these countries have inevitably accrued their own consciousness of geographical indications. In the end, their focus of concern is no longer whether they comply with the European demands of protecting geographical indications rooted in Europe; instead, they are more conscious of their own geographical indications, and of how to delimit the rights and claims associated with indigenous indications. The claims of geographical indications have first arisen at home, and then gained momentum while expanding outward to the international markets. By consciousness I mean three things. First is that because the Asian countries, not having had their own geographical indication norm in the past, have to implement the TRIPS Agreement in their domestic laws, they are trying to understand what geographical indication means and how these rules concern them. This is basically a passive process of accepting transplantation of norms. Second is that, after having incorporated the laws of other peoples 1 in their own laws and protected other peoples rights, the Asian countries inevitably have to reflect on whether they have things similar to CHAMPAGNE sparkling wine or ROQUEFORT cheese. At work here are their indigenous interests in geographical indications. Third is that the Asian countries have not yet taken positions in the ongoing North- North debates over the implementation of TRIPS provisions on geographical indications. They have to decide which side to take, or whether to remain neutral. Assistant Professor, Institute of Technology Law, National Chiao-Tung University, Taiwan. 1. Here the term peoples has the same sense as in John Rawls, The Law of Peoples (1999).

4 Vol. 96 TMR 907 The concept of geographical indication is diverse. 2 This article aims to evaluate the impact of the TRIPS Agreement on the legal norms of several WTO members in East Asia. It is based on the concept of geographical indication defined by the TRIPS Agreement a designation, indicating quality, reputation, or other characteristic, that is essentially attributable to its geographic origin. 3 Hence both direct and indirect geographical indications are included herein. 4 It has been acknowledged that this concept of geographical indications is narrower than the indication of source, as used in the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (Madrid Agreement), 5 but broader than yet deriving from the concept of appellation of origin, as used in the Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration (Lisbon Agreement). 6 The perspective of this article has been influenced by norm migration theories associated with the concept of epistemic community, exploring actors involved in the process of norm migration and their interests. 7 The article uses mainly the examples of China, Japan, and Taiwan to demonstrate explicitly that Asian countries, having accepted geographical indication 2. As one commentator says, There are few areas of intellectual property law where definitions are as diverse as in the area of geographical indications. Carlos M. Correa, Protection of Geographical Indications in CARICOM Countries, at 2 (2002), at 3. Agreement on Trade-Related Aspects of Intellectual Property Rights, Annex 1C to the General Agreement on Tariffs and Trade, Uruguay Round, World Trade Organization, done at Marrakesh, Apr. 15, 1994, art. 22(1), 33 I.L.M (1994) [hereinafter TRIPS Agreement or TRIPS]. 4. A direct geographical indication is a geographic name, while an indirect geographical indication consists of non-geographical names or symbols, if perceived by the public as identifying certain geographical origin. Correa, supra note 2, at 2. TRIPS s concept of geographical indication could encompass the concepts of protected designation of origin (PDO) and protected geographical indication (PGI) under Council Regulation (EEC) No. 2081/92 of July 14, 1992, on the protection of geographical indications and designation of origin for agricultural products and foodstuffs, 1992 O.J. (L208) 1 [hereinafter Regulation 2081/92]. Correa, supra note 2, at Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Apr. 14, 1891, as last revised at Lisbon on Oct. 31, 1958, 828 U.N.T.S. 163 [hereinafter Madrid Agreement]. 6. Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration, Oct. 31, 1958, as last revised Jan. 1, 1994, 923 U.N.T.S. 205 [hereinafter Lisbon Agreement], available at lisbon_agreement.htm. 7. See Peter Haas, Introduction: Epistemic Communities and International Policy Coordination, 46 Int l Org. 1 (1992); Nichole Schulte-Kulkmann & Sebastian Heilmann, U.S.-China Legal Cooperation Part I: The Role of Actors and Actors Interests (2005), Frederick Schauer, The Politics and Incentives of Legal Transplantation (2000), at cidwp/044.htm.

5 908 Vol. 96 TMR norms migrating from Europe and enacted domestic laws to implement their obligations under the TRIPS Agreement, have inevitably turned their focus to the indigenous interests of domestic geographical indications, which have mushroomed to vie for the economic interests associated with such names. However, these countries eventually have to turn to the global stage and decide whether and how they are going to take sides in the current debates on the development of international norms regarding geographical indications. At work at these several stages are several actors and their interests. II. CONSCIOUSNESS AT THE FIRST STAGE THE MIGRATION OF NORMS A. The Origin of Norms Regarding Geographical Indications The legal norms of geographical indications originated in Europe, 8 especially in France. The French law protecting and regulating appellations of origin can be traced back to the seventeenth century. As to the sources of law existing in international conventions, currently the major legal norm regarding geographical indications is Part II, Section 3 of the TRIPS Agreement. However, prior to TRIPS, several international agreements, including the Paris Convention for the Protection of Industrial Property (Paris Convention), 9 the Madrid Agreement, and the Lisbon Agreement, had all dealt with issues related to geographical indications; the first two have provisions on indications of source (the Paris Convention also mentions appellations of origin), while the last one specifically aims at protecting appellations of origin Christine Haight Farley, Conflicts Between U.S. Law and International Treaties Concerning Geographical Indications, 22 Whittier L. Rev. 73, 75 (2000) (observing that [s]ince the earliest days in Europe, geographical indications were used to protect certain industries ; in addition, geographical indications also served as a warranty for the quality of the goods ). 9. Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as last revised at Stockholm on July 14, 1967, 828 U.N.T.S. 305 [hereinafter Paris Convention]. 10. Among the three, indication of source is the broadest concept, encompassing geographical indication and appellation of origin. An indication of source can be either relevant or irrelevant to the product s quality, characteristic, and reputation. Geographical indication is the second broadest concept: it is contained by indication of source, but contains appellation of origin all appellations of origin are geographical indications, but some geographical indications are not appellations of origin. The concept of geographical indication under the TRIPS Agreement covers appellation of origin. Standing Committee on the Law of Trademarks, Industrial Designs & Geographical Indications, Geographical Indications: Historical Background, Nature of Rights, Existing Systems for Protection and Obtaining Protection in Other Countries, SCT/8/4, at 4 (May 27-31, 2002) [hereinafter SCT, Geographical Indications].

6 Vol. 96 TMR 909 However, the level of international protection for either one had been relatively weak before the TRIPS Agreement came into force in In the Paris Convention, several provisions Articles 1(2), 9, 10, 10bis, and 10ter involve indications of source or appellations of origin. The Paris Convention pronounced the protection of indications of source and appellations of origin, taking both under the umbrella of its objects of protection in Article 1(2), without providing a definition for either of them. 12 Article 10(1) provides protection against use of a false indication of source, 13 and applies the remedies prescribed by Article 9, including seizure upon importation and seizure inside the country. In case the domestic law of a country does not permit seizure either upon importation or inside the country, prohibition of importation or other domestically available mechanisms shall be used instead. 14 In addition, Article 10bis prohibits use of false, misleading, or confusing indications that constitutes an act of unfair competition. Article 10ter allows federations or associations representing producers and traders to bring an action to enforce the protection granted by Articles 9, 10, and 10bis. The Madrid Agreement is a special agreement under the Paris Convention. It was created because the original Paris Convention did not prevent the use of a false indication per se; therefore, some countries interested in stronger protection of indications of source formed this special union. 15 Indication of source, the subject of the Madrid Agreement s protection, is not defined in the Agreement, but it can be observed from Article 1(1) that an indication of source is a designation of a country or a place therein that is directly or indirectly indicated 11. Leigh Ann Lindquist, Champagne or Champagne? An Examination of U.S. Failure to Comply with the Geographical Provisions of the TRIPS Agreement, 27 Ga. J. Int l & Comp. L. 309, 315 (1999) (observing that [p]rior to the TRIPS Agreement, geographical indications received little international protection ). 12. Correa, supra note 2, at Article 10(1) of the Paris Convention, however, does not cover indications that mislead the public but are not false. Correa, supra note 2, at 4. See also Kevin M. Murphy, Conflict, Confusion, and Bias Under TRIPS Articles 22-24, 19 Am. U. Int l L. Rev. 1181, 1201 (2004) (noting that only absolutely false or misleading use of an indication of source is prohibited by the Paris Convention and this change from the original text of the Paris Convention took place in 1958 under pressure from the United States); Stacy D. Goldberg, Who Will Raise the White Flag? The Battle Between the United States and the European Union over the Protection of Geographical Indications, 22 U. Pa. J. Int l Econ. L. 107, (2001). 14. Paris Convention, supra note 9, Arts. 9(5), (6). For a summary of protections granted by the Paris Convention, see Correa, supra note 2, at 6; SCT, Geographical Indications, supra note 10, at SCT, Geographical Indications, supra note 10, at

7 910 Vol. 96 TMR as being the country or place of origin. 16 An indication of source refers to the product s place of origin, not other types of origin, and it need not be related to the quality or characteristic of the product. 17 The Madrid Agreement proscribes use of false or deceptive indications of source. 18 The sanctions provided by the Agreement include seizure upon importation or within the country, and the prohibiting of the use of the indication in connection with the sale or display or offering for sale of any goods. 19 Under the Agreement, each country has the freedom to decide, by a judicial proceeding, what appellations have become generic; 20 absolute protection is granted to the appellations of products of the vine. 21 Because of its rather limited number of members, the Madrid Agreement has been considered of little significance in practice. 22 The Lisbon Agreement aims at establishing a system that registers and protects appellations of origin 23 a term defined as the geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors. 24 The Agreement s definition of appellation of origin, limited to a geographical name, therefore excludes indirect geographical indicators. 16. Madrid Agreement, supra note 5, Art. 1(1); SCT, Geographical Indications, supra note 10, at SCT, Geographical Indications, supra note 10, at Madrid Agreement, supra note 5, Art. 1; Correa, supra note 2, at 4; Murphy, supra note 13, at 1202 (noting that the Madrid Agreement s prohibition against use of misleading geographical indicators is unlike the Paris Convention in its original or post-1958 form the former prohibited fraudulent appropriation of geographic indicators, and the latter prohibits absolutely false or misleading use of geographical indicators). 19. Madrid Agreement, supra note 5, Arts. 1, 3bis. 20. Id. Art Id. (providing that it is the courts of a member country that shall decide what appellations, on account of their generic character, are excluded from the Madrid Agreement s protection; however, this exclusion cannot be applied to regional appellations concerning the source of products of the vine ); Correa, supra note 2, at 8; Murphy, supra note 13, at 1201 (observing that under the Madrid Agreement, [v]alid wine appellations may never lose protection ). 22. SCT, Geographical Indications, supra note 10, at 13; Albrecht Conrad, The Protection of Geographical Indications in the TRIPS Agreement, 86 TMR 11, 25 (1996); Lindquist, supra note 11, at 315 (noting that the Madrid Agreement has had minimal impact owing to the rather small number of signatories). 23. The Lisbon Agreement is the latest multilateral agreement for the protection of geographical indicators before TRIPS. Murphy, supra note 13, at 1202 (characterizing the Lisbon Agreement as the latest attempt to protect geographical indicators multilaterally prior to TRIPs ). 24. Lisbon Agreement, supra note 6, Art. 2(1).

8 Vol. 96 TMR 911 The Lisbon Agreement has created an international registration system for appellations of origin. 25 Conditioned upon its having received protection in the country of origin, and by the request of the competent office of the country of origin, an appellation of origin can obtain a centralized registration at the International Bureau of WIPO. 26 Another member, if it has not declared its rejection of protection within one year, will be obliged to protect the registered appellation for unlimited duration, 27 unless the appellation falls out of protection in its country of origin or has been cancelled by the International Bureau at the request of the competent authority of its country of origin. 28 The Lisbon Agreement provides a protection of strong prohibition against use that a general law is inadequate under the Agreement; a distinct and express protection, stemming from a specific official or administrative act is required. This has made it difficult for countries that protect appellations of origin in different ways to join the Agreement. 29 Few countries have joined the Lisbon Agreement, making it less important in the current debates over the protection of geographical indications under TRIPS. 30 The TRIPS Agreement gives a specific definition of geographical indications, 31 which derives from and is similar to the definition of appellations of origin in the Lisbon Agreement, with the addition of reputation as one of the conditions for obtaining protection. 32 Unlike the Lisbon Agreement, which limits the scope of appellations of origin to geographic names, the TRIPS Agreement includes both direct and indirect geographical indications. The protection is available for any goods including goods of production, but not explicitly including services, which the members may voluntarily contain in its coverage of 25. SCT, Geographical Indications, supra note 10, at Lisbon Agreement, supra note 6, Art. 1(2); Murphy, supra note 13, at (the Lisbon Agreement contemplates a system whereby Member states register geographical indicators with a central bureau ). 27. Lisbon Agreement, supra note 6, Arts. 5(3), 6 (a protected appellation shall not be considered generic in a country giving it protection); id. Art. 7 (no need for extension). 28. Id. Art. 6. Thus, for other member states, this is an anti-genericism provision. See Murphy, supra note 13, at 1203 (observing that Article 6 of the Lisbon Agreement prevents the degeneration of registered appellations of origin into genericism ). 29. Correa, supra note 2, at 8-9 (citing the opinion of Professor Michael Blakeney). 30. Id. at TRIPS Agreement, supra note 3, Art. 22(1). 32. Goldberg, supra note 13, at 118 (stating that Article 22(1) is derived from the Lisbon Agreement ); mere reputation, without a quality attributable to the place of origin, is not within the coverage of the Lisbon Agreement s protected subject matter. The Lisbon Agreement requires quality and characteristics attributable to the place of origin. SCT, Geographical Indications, supra note 10, at 3-4.

9 912 Vol. 96 TMR protection. 33 As to the means of protection, the members are given rather broad room. 34 The definition in Article 22(1) requires a link ( essentially attributable ) between the quality, reputation, or characteristics of the good and the natural or human condition of its origin, yet TRIPS does not specify the standard used to determine the link. 35 Article 22(2) protects geographical indications against false or misleading uses, or uses that constitute acts of unfair competition. Article 22(3) weighs conflicting geographical indications and trademarks in favor of the former; 36 but the validity or availability of a trademark registered, applied for, or acquired through prior use in good faith will not be affected. 37 If a geographical indication has fallen out of protection in its the country of origin, other WTO members are not obliged to protect it. 38 If a geographical indication has become a generic term in a member country including the customary name of a grape variety then that member is not obliged to protect it. 39 Article 22(4) extends the coverage of the standard protection to situations where a geographical indication is literally true but misleads the public regarding the origin of the goods. 40 Article 23 provides enhanced or additional protection to wines and spirits that satisfy the definition of geographical indication under Article 22(1). The enhanced protection includes the permissibility of dispensing with proof of misleading the public or unfair competition, 41 excluding delocalizing additions such as type, style, or imitation ; 42 a stronger provision regarding cancellation and invalidation of trademarks; 43 and a built-in agenda for future negotiations to establish a multilateral system of 33. Goldberg, supra note 13, at 119 (the definition of geographical indications in Article 22(1) of the TRIPS Agreement excludes services). 34. Correa, supra note 2, at The natural or human conditions can include soil, climate, fauna, and flora, or the cultural heritage. Goldberg, supra note 13, at TRIPS Agreement, supra note 3, Art. 22(3); Goldberg, supra note 13, at 119 ( TRIPS protects geographical indications even when in direct conflict with trademark law. ). 37. TRIPS Agreement, supra note 3, Art. 24(5); Correa, supra note 2, at 11; Goldberg, supra note 13, at TRIPS Agreement, supra note 3, Art. 24(9). Goldberg, supra note 13, at TRIPS Agreement, supra note 3, Art. 24(6). 40. Id. Art. 22(4); Goldberg, supra note 13, at 191 (exemplifying with PARIS for clothing even if the designer is from Paris, Texas). 41. TRIPS Agreement, supra note 3, Art. 23(1); Goldberg, supra note 13, at 120 (using California Chablis and California-style Chablis as examples). 42. Correa, supra note 2, at TRIPS Agreement, supra note 3, Art. 23(2) (setting forth the relation between geographical indications and trademarks).

10 Vol. 96 TMR 913 notification and registration of geographical indications for wines. 44 Article 23 also addresses the issue of homonymous geographical indications for wines by allowing concurrent use. 45 Article 24 provides several important exceptions. A grandfather clause deals with parallel use and acquired rights: if an ongoing use of a similar geographical indication for wines or spirits has existed for ten years prior to the conclusion of the WTO Agreement or in good faith, then continuous use of such geographical indication is permitted. 46 Two provisions in Article 24 deal with the relation of geographical indications and genericide, 47 extending also to names of grape varieties which can be considered as a kind of indirect geographical indications. 48 As one commentator says, TRIPS has made a great effort not to disturb the status quo as much as possible. 49 B. The Legislative Models TRIPS initiated migration of the norm regarding geographical indications. Before the WTO, Asian countries might have had the facts of geographical indications each country has had its famous products associated with geographic names but they did not have the legal consciousness of geographical indications. To implement the obligations under TRIPS, reference to the protection models already established by the European countries or the United States is a practical and necessary way to establish one s own new system of protection. Several modes of protection for geographical indications already exist in some domestic or regional laws. These models, arguably, are all congruent with TRIPS s provisions on geographical indications. 50 The models are not mutually exclusive; 44. Id. Art. 23(4). 45. Id. Art. 23(3); Goldberg, supra note 13, at Correa, supra note 2, at 11-12; Goldberg, supra note 13, at 121 (noting that the TRIPS Agreement did not intend to reverse past developments in the field of geographical indications ); Murphy, supra note 13, at 1223 (calling Article 24(4) another example of systemic bias that favors older, established producers over relative newcomers ). 47. TRIPS Agreement, supra note 3, Arts. 24(6), (9). Article 24(6) deals with the geographical indication that has become generic in a member other than the country of origin; Article 24(9) deals with the geographical indication that has become generic in its country of origin. 48. Id. Art. 24(6); Goldberg, supra note 13, at 123; Murphy, supra note 13, at 1221 (describing Article 24(6) as a commonsensical measure ). 49. Goldberg, supra note 13, at Correa, supra note 2, at 4. But note that some commentators have argued that the American system has failed to fully implement its obligations under the TRIPS Agreement. Becki Graham, TRIPS: Ten Years Later: Compromise or Conflict over Geographical Indications, 2005 Syracuse Sci. & Tech. L. Rev. 4.

11 914 Vol. 96 TMR instead, they are cumulative: in a country or region s legal system, several different categories of means of protection can, and often do, coexist. 51 Among these models, two major ones are the trademark model, associated primarily with the United States, and the French appellation of origin model. Besides these two major models, many countries are also devising regulatory schemes for business practices 52 for example, passing-off and unfair competition law, as well as regulations on marketing and labeling of products. 53 Within a country s legal system, these models usually coexist, and there is no clear-cut distinction among them. 54 Overall, they are all oriented toward a twofold purpose: on the one hand, preventing misleading use and misappropriation of collective goodwill, and hence, on the other, protecting consumers. 55 Different combinations in different countries may place emphasis on divergent, and even conflicting, normative aims, reflecting the historical and cultural divergences among these countries The Trademark Law Model The American protection of geographical indications is the quintessential trademark model. 57 The trademark law model 51. SCT, Geographical Indications, supra note 10, at Correa, supra note 2, at SCT, Geographical Indications, supra note 10, at For instance, the protection scheme in the United States is a combination of the trademark law, unfair competition law, and the regulations of the Bureau of Alcohol, Tobacco, Firearms and Explosives; in Europe, the law of the appellation of origin is added to the formula. Correa, supra note 2, at SCT, Geographical Indications, supra note 10, at Murphy, supra note 13, at (observing the different positions toward geographical indications: the American law leans toward consumer protection, while the trend in Europe reflects the interest of producers); Farley, supra note 8, at (the different attitudes of the United States and the European countries toward protection of geographical indications originate from their different history and different theoretical perspectives: Europeans tend to protect traditional industries, while the trademark law theory in the United States has tilted toward protecting consumers from confusion and deception). 57. Statement of Jon W. Dudas, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, Before the Committee on Agriculture, U.S. House of Representatives (July 22, 2003) (the United States protects geographical indications through the trademark system), available at Though the United States is widely acknowledged as the representative of the trademark model, some commentators have observed that the current American GI protection has not yet fully implemented the TRIPS Agreement s provisions on geographical indications. Farley, supra note 8, at 73; Lindquist, supra note 11, at 311, 343 (arguing that the United States should accept its responsibility [under the TRIPS Agreement] to provide greater protection for geographical indications ).

12 Vol. 96 TMR 915 subsumes the protection of geographical indications under the trademark law, especially by using certification marks and/or collective marks; meanwhile, the trademark law also prohibits registration and use of certain GIs as trademarks. 58 Though trademark laws generally do not allow trademark registration of geographic names because of their descriptiveness or deceptiveness, unless they are fanciful or have acquired a secondary meaning through use, such requirement is inapplicable to certification marks and collective marks. These two types of marks thus may be suitable to protect geographical indications. The qualities certified by certification marks may include geographic origin. 59 The owner of a certification mark must file its regulations of use together with the application for registering the certification mark. 60 But, in contrast to the appellation of origin system, trademark offices under the trademark law model generally do not examine the details of the regulations, nor are they involved in the administration of the owner s regulations. According to the anti-use by owner rule, the owner of a certification mark may not use the mark himself. 61 After the registration, a certification mark is protected under the trademark law in general, and enforced by actions brought by the certification mark owner. 62 Examples of geographical indications protected in the United States as certification marks include IDAHO, REAL CALIFORNIA CHEESE, NAPA VALLEY RESERVE, PRIDE OF NEW YORK, and OHIO RIVER VALLEY; 63 examples of foreign geographical indications protected as American certification marks 58. Correa, supra note 2, at 5 (trademark law provides two categories of protection against registration and use of geographical indications as trademarks, or active protection through collective, guarantee, or certification marks). Congress revised the Lanham Act in 1994 to create in Lanham Act Section 2(a) (15 U.S.C. 1052(a)) an absolute bar on registration of marks, prohibiting a geographical indication that is used on or in connection with wines or spirits [from] identif[ying] a place other than the origin of the goods.... This provision contains a grandfather clause exempting such geographical indications first used before December 31, 1995 ( on or after one year after the date on which the WTO Agreement [...] enters into force with respect to the United States ); Lindquist, supra note 11, at 324. See Eleanor K. Meltzer, Wine & Spirits, with Abandonment! GATT s Impact on U.S. Trademark Law, 78 J. Pat. & Trademark Off. Soc y 69, 70 (1996) (explaining the revisions to the Lanham Act by Public Law No ). 59. See 15 U.S.C (2000); Tunisia L. Staten, Geographical Indications Protection Under the TRIPS Agreement: Uniformity Not Extension, 87 J. Pat. & Trademark Off. Soc y 211, 236 (2005). 60. Staten, supra note 59, at 238; SCT, Geographical Indications, supra note 10, at Staten, supra note 59, at 237; SCT, Geographical Indications, supra note 10, at Staten, supra note 59, at 238; SCT, Geographical Indications, supra note 10, at Statement of Jon W. Dudas, supra note 57 (other examples include BANSHU SOMEN for noodles from Japan, COLOMBIAN for coffee from Colombia, and SWISS for chocolate from Switzerland); Correa, supra note 2, at 5.

13 916 Vol. 96 TMR include COLOMBIA, DARJEELING, PARMA, PARMIGIANO- REGGIANO, and ROQUEFORT. 64 Collective marks may also be used to protect geographical indications. The nature of collective marks is quite similar to that of certification marks. 65 A registered collective mark is also protected under general trademark law, and to be enforced by the owner of the collective mark by bringing an infringement action The Appellation of Origin Model The French appellation of origin (Appellation d origine contrôlée, or AOC) model deals with both the indication of origin and the quality of the goods. This model relies on domestic acts and regulations specifically dedicated to the protection of indications, and thus can be seen as a kind of sui generis protection. 67 The French law of May 5, 1919, was the first modern law on appellations of origin, and prescribed the preconditions for protection. 68 Followers of this model include the Lisbon Agreement, EC Council Regulation No. 2081/92, 69 and Article 23 of the TRIPS Agreement. This model can be considered as an absolute protection, because its protection against unauthorized use will be effected regardless of whether the use will mislead the public. 70 Generally speaking, the protection of an appellation of origin involves an administrative procedure through which the protected appellation is recognized, and the product or products on which it is used, the geographical area of production and the conditions of use are defined. 71 The appellation of origin protection is 64. Steven A. Bowers, Location, Location, Location: The Case Against Extending Geographical Indication Protection Under the TRIPs Agreement, 31 AIPLA Q.J. 129, 136 (2003). 65. Staten, supra note 59, at 239 (noting that the difference between certification marks and collective marks is one of form rather than substance ). 66. SCT, Geographical Indications, supra note 10, at 9; Staten, supra note 59, at Correa, supra note 2, at Correa, supra note 2, at 4; Conrad, supra note 22, at Jenny Mosca, The Battle Between the Cheeses Signifies the Ongoing Struggle to Protect Designations of Origin Within the European Community and in the United States in Consorzio per la Tutela del Formaggio Gorgonzola v. Kaserei Champignon Hofmeister GmbH & Co. KG, 8 Tul. J. Int l & Comp. L. 559, (2000) (calling the French AOC laws the legal French equivalent of Regulation 2081/92 on designations of origin ). 70. Correa, supra note 2, at SCT, Geographical Indications, supra note 10, at 7; Marcus Hopperger, Introduction to Geographical Indications and Recent Developments in the World Intellectual Property Organization, WIPO/GEO/SFO/03/1, at 6 (2003), available at

14 Vol. 96 TMR 917 sanctioned by civil and criminal responsibilities, and such procedures often are initiated by a government agency. 72 The French AOC system and EC Regulation No. 2081/92 are generally considered to be representative of the appellation of origin model. The French AOC system is a combination of trademark law and trade regulation. It protects an appellation of origin against misappropriation, dilution, and genericide. 73 The French law has devised an administrative procedure, charged by the Institut National des Appellations d Origine (INAO), to enforce the protection of AOCs: a protected producer may apply for an injunction against unauthorized uses. It has been acknowledged that the AOC system confers a monopoly power over clearly segmented markets for certain fine foods. 74 EC Regulation No. 2081/92 distinguishes between protected designations of origin (PDOs) and protected geographical indications (PGIs). The way the two terms are defined basically mirrors the French law s definition of appellation of origin 75 requiring at least an essential link between the quality or characteristics of the agricultural product or foodstuff and the region indicated, in terms of production, processing, and preparation. Both natural and human factors are recognized. The PDO requires a stronger association between the defined geographic area and the product s quality or characteristics than the PGI does. 76 The regulation provides protection against any direct or indirect unauthorized use, and against registration of conflicting trademarks; 77 it also lays out a registration procedure for effecting Community-wide protection for PDOs and PGIs. 78 This registration system may also be available to non-eu countries on the condition of reciprocity that the non-eu country provide protection equivalent to that of the EU. 79 The registration procedure of Regulation No. 2081/92 is implemented by 72. Hopperger, supra note 71, at Jim Chen, A Sober Second Look at Appellations of Origin: How the United States Will Crash France s Wine and Cheese Party, 5 Minn. J. Global Trade 29, 32 (1996); Staten, supra note 59, at Chen, supra note 73, at (the French Code de la Consommation equips farmers with certain powers and privileges); Philippe Zylberg, Geographical Indications v. Trademarks: The Lisbon Agreement: A Violation of TRIPS? 11 U. Balt. Intell. Prop. L.J. 1, 5-6 ( ). 75. Chen, supra note 73, at 39; Regulation 2081/92, supra note 4, art. 2(2)(a). 76. See Terrence Prime, European Intellectual Property Law (2000). 77. Regulation 2081/92, supra note 4, arts. 13(1)(a), 14; Goldberg, supra note 13, at 143; Zylberg, supra note 74, at Goldberg, supra note 13, at ; Zylberg, supra note 74, at Regulation 2081/92, supra note 4, art. 12; Zylberg, supra note 74, at 11.

15 918 Vol. 96 TMR Commission Regulation No. 1107/96, 80 which lists the protected designations of origin and protected geographical indications of the EU members. 3. The Unfair Competition Law Model The unfair competition law model, and the administrative regulation model mentioned below, are two forms of regulation on business practices, in which, according to Correa s description, the basic issue is not whether the geographical indication as such is eligible for protection but, rather, whether a specific act involving the use of a geographical indication has contravened standards contained in laws covering such acts. 81 The major objective of unfair competition law is to maintain the business order, devising effective remedies against dishonest, unlawful commercial practices, but sometimes it has a concomitant function of consumer protection. 82 Under the unfair competition law model, protection of the producer s goodwill is somehow indirect. 83 Article 10bis of the Paris Convention provides a source of general international rules for protection against unfair competition. 84 Pursuant to this article (as well as Article 9), use of a false indication of source, or commercial acts or practices that cause or are likely to cause confusion or are likely to mislead the public, constitute an act of unfair competition. 85 As to the example at the national level, prior to 1995, German law solely relied upon unfair competition law to protect geographical indications a protection available to both direct and indirect geographical indications. 86 To prove an act of unfair competition, the plaintiff 80. Commission Regulation (EC) No. 1107/96 of June 12, 1996, on the registration and designations of origin under the procedure laid down in Article 17 of Council Regulation (EEC) No. 2081/92, 1996 O.J. (L148) 1; Mosca, supra note 69, at Correa, supra note 2, at SCT, Geographical Indications, supra note 10, at 5 (unfair competition law provide[s] those in trade with an effective remedy against unlawful and dishonest business practices, and, in certain countries, also fulfill[s] the function of consumer protection ). The purpose of the German Unfair Competition Act s protection of geographical indications is to safeguard the integrity of trade as well as the reliance of consumers on true representations concerning origin. Conrad, supra note 22, at 15; Staten, supra note 59, at For instance, before 1995, German law did not provide producers with an exclusive right to use geographical indications. Conrad, supra note 22, at The Paris Convention defines unfair competition as [a]ny act of competition contrary to honest practices in industrial or commercial matters. Paris Convention, supra note 9, art. 10bis(2). 85. SCT, Geographical Indications, supra note 10, at 5; TRIPS Agreement, supra note 3, art. 22(2)(b). 86. E.g., Unfair Competition Act art. 3 (Germany), cited in Conrad, supra note 22, at 15. After 1995, partially as a result of the influence of Regulation No. 2081/92, German law was changed to permit geographical indications to be registered in the European Register of

16 Vol. 96 TMR 919 must establish a given statement is misleading the consumers, and causing damages or a likelihood of damages The Administrative Regulation Model If administrative regulations of a country impose the requirement of approval by government agencies on labeling or marketing of a product, these regulations can be appended with the rules controlling use of geographical indications. 88 For example, in the United States, the regulations of the Bureau of Alcohol, Tobacco, Firearms and Explosives (BATF) indirectly protect geographical indications through its power to regulate labeling of alcoholic beverages. 89 The BATF regulations prohibit false or misleading claims in the labeling or advertising of alcoholic beverages, and require the prior approval of all labels used on alcoholic beverages. 90 The BATF classifies regional appellations for wines into several groups: generic, semi-generic, and non-generic, 91 among which semi-generic appellations may be used on wines not coming from the area indicated by the name, so long as the true place of origin is labeled. The semi-generic category contains famous appellations like Burgundy, Chablis, and Champagne, and has been bitterly contested by Europeans. 92 C. Selected Reviews of Legislation In enacting their geographical indication laws, many Asian countries have relied primarily on trademark law, unfair competition law, and supplemental laws and regulations that provide indirect protection. To this extent, the influence of the Geographical Indications or as collective marks under the German Trademark Act. Conrad, supra note 22, at 15 n.16; Staten, supra note 59, at SCT, Geographical Indications, supra note 10, at 5-6; Staten, supra note 59, at SCT, Geographical Indications, supra note 10, at 10; Hopperger, supra note 71, at Farley, supra note 8, at 80 ( the B.A.T.F. indirectly figures into U.S. compliance with international protections for geographical indications ); Lindquist, supra note 11, at 324 (the BATF uses its labeling power to regulate use of geographical indications on alcoholic beverages). 90. Farley, supra note 8, at C.F.R (2000); Kevin H. Josel, New Wine in Old Bottles: The Protection of France s Wine Classification System Beyond Its Borders, 12 B.U. Int l L.J. 471, 475 (1994). 92. The U.S. Congress enacted a statute in 1997 to codify the semi-generic terms in the BATF regulations, converting them into semi-generic terms in the statute, and to explicitly allow the use of semi-generic names so long as the true places of origin are disclosed. 26 U.S.C (1997). See Lindquist, supra note 11, at (commenting that this codification makes it more difficult for the U.S. Trade Representative to trade away the semi-generic names during trade negotiations; the EU, however, considers this law to be contravening the TRIPS Agreement).

17 920 Vol. 96 TMR United States has gained the upper hand. China is a major exception that adopts both the trademark law model and the appellation of origin model. The problem is that, in China, juxtaposition of the two models has caused serious conflicts between the two series of rights. The following reviews the legislation of China, Japan, Taiwan, Korea, and Singapore. 1. China To prepare for joining the WTO, China had revised its trademark-related laws several times in order to comply with the TRIPS provisions on trademarks and geographical indications. During this process, five laws or regulations had been enacted or revised. 93 In the end, China has adopted both the trademark law model and the appellation of origin model: on the one hand, it uses collective marks and certification marks as a means of active protection; on the other hand, it has devised agencies to manage appellations of origin. Though it is said that this special approach reflects China s long history and immense geographic expanse, it also reveals China s relatively unrefined legislative quality, which caused serious conflicts that have to be reconciled in the later stage. 94 China has three major branches of GI legislation. The first group, based on the trademark law model, consists of the Trademark Law and its related regulations. The second group, founded on the appellation of origin model, is composed of the Regulations on the Protection of Products with an Appellation of Origin (1999) and the Regulations on the Administration of Appellations of Origin (2000), both combined into the Regulations on the Protection of Products with a Geographical Indication in The third branch is the Law against Unfair Competition (1993). China s Trademark Law, after the revision in 2001, disallows registration of geographic names at or above the county level, except in three situations: where the name is to be registered as a collective trademark or a certification trademark, where the name 93. These include the Regulations on Registration and Administration of Collective Marks and Certification Marks (promulgated by the State Administration of Industry and Commerce in 1994), the Regulations on the Protection of Products with an Appellation of Origin (promulgated in 1999), the Regulations on the Administration of Appellations of Origin (promulgated in 2000), the Trademark Law (revised in 2001), and the Implementation Rules for the Trademark Law (promulgated in 2002). The Regulations on Registration and Administration of Collective Marks and Certification Marks were revised in See Wen Xue et al., Registration and Protection of Trademarks in China (2003). 94. Jenwei Wu, Protection of Geographical Indications in China and Taiwan Under the WTO Structure (unpublished LL.M. thesis, Fu-Jen Catholic University, 2003) (on file with Fu-Jen Catholic University Library).

18 Vol. 96 TMR 921 has acquired a secondary meaning, or where the name had been registered prior to the revision. 95 It also implements Article 22 of TRIPS by disallowing registration of a trademark containing or consisting of a geographical indication with respect to goods not originating in the area indicated and likely to mislead the public with regard to the origin of the goods. 96 If a registered trademark violates this provision, the trademark owner or an interested party may, within five years of the registration, request the Trademark Review Board to cancel the registration. 97 The Chinese Trademark Law defines a geographical indication as an indication identifying a good as originating in a specific area, where a given quality, reputation or other characteristic of the good is essentially attributable to the natural or human factors of the area. 98 The Trademark Law also provides collective trademarks and certification trademarks as the mechanism for the active protection of geographical indications. Supplementing the Trademark Law s permission to register geographical indications as collective trademarks and certification trademarks, 99 the Regulations on Registration and Administration of Collective Trademarks and Certification Trademarks set forth the registration procedure for these two types of trademarks. Under the regulations, an applicant for registration of a collective trademark must be an association or an organization composed of members from the area designated by the geographical indication at issue. 100 The applicant must submit documents showing its qualification and explicating its capacity including professional personnel and professional testing equipment to supervise the quality of the products. 101 In addition, the applicant must submit documents of approval by the local people s government of the indicated area or by an administrative agency in charge of the business. 102 The applicant must also make explicit the quality or reputation of the product, the relation of such quality or reputation to the area s natural and human factors, and the geographic scope 95. Trademark Law Art. 10 (China). 96. Id. Art Id. Art Id. Art. 16(2). 99. Id. Arts. 3 (defining certification trademarks), 16(2) (defining geographical indications); Implementation Rules for the Trademark Law Art. 6(1) (geographical indications, provided for in Article 16 of the Trademark Law, can be registered as certification trademarks or collective trademarks, pursuant to the provisions of the Trademark Law and its Implementation Rules) Regulations on Registration and Administration of Collective Trademarks and Certification Trademarks Art Id. Art Id. Art. 6.

19 922 Vol. 96 TMR of the area. 103 A foreign applicant (natural person or business) must also submit documents showing that the geographical indication at issue is protected in its name by the country of origin 104 a requirement deriving from Article 24(9) of TRIPS and Article 5(1) of the Lisbon Agreement. The same requirements apply to the application for registration of a geographical indication as a certification trademark. The Regulations on Registration and Administration of Collective Trademarks and Certification Trademarks also provide for rules implementing the enhanced protection for geographical indications for wines and spirits. Registration as a collective trademark and a certification trademark is available for such geographical indications. In addition, the regulations provide that, for geographical indications for wines and spirits, the registration should be rejected so long as the geographical indication at issue is untrue, even if its use will not mislead the public with regard to the true place of origin. 105 The second branch of protection, analogous to the French AOC system, is stipulated by two regulations Regulations on the Protection of Products with an Appellation of Origin and Regulations on the Administration of Appellations of Origin. In 2005, these two regulations were consolidated into the Regulations on the Protection of Products with a Geographical Indication, to be administered by the State Bureau of Quality and Technical Supervision. This system was influenced by France s technical assistance, and has been described as having a connection with the Lisbon Agreement. It was previously known as the protection for appellations of origin; in 2005 it was renamed as the protection for geographical indications. The State Bureau of Quality and Technical Supervision is in charge of the protection for products with a geographical indication, which is defined by the new regulations as product[s] that [are] produced at a specific region, with the quality, reputation, or other characteristics essentially attributable to the natural and human factors of the region, and [are] approved to be identified by the geographical name. 106 This protection is considered to be an indication of quality, representing the product s quality and reputation, as well as the promises and 103. Id. Art Id. Art. 6(2) Id. Art Regulations on the Protection of Products with a Geographical Indication Art. 2 (China).