WIPO NATIONAL SEMINAR ON THE PROTECTION OF TRADEMARKS AND GEOGRAPHICAL INDICATIONS

Transcription

1 WIPO /TM/BEY/ 03/12 ORIGINAL: English DATE: February 2003 E REPUBLIC OF LEBANON WORLD INTELLECTUAL PROPERTY ORGANIZATION WIPO NATIONAL SEMINAR ON THE PROTECTION OF TRADEMARKS AND GEOGRAPHICAL INDICATIONS organized by the World Intellectual Property Organization (WIPO) in cooperation with the Ministry of Economy and Trade Beirut, March 17 to 19, 2003 PROTECTION OF GEOGRAPHICAL INDICATIONS: THE EUROPEAN UNION EXPERIENCE Prepared by Mrs. Susana Perez Ferreras, Administrator, Industrial Property Unit, European Commission, Brussels

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3 around the World Second level Fourth level» Fifth level Slide 3/16 3

4 in a global context. The TRIPs Agreement as part of the the WTO framework GATT GATS (General Agreement (General Agreement on Tariffs Fifth & Trade) on Trade in Services) level GOODS (Imports and Exports) SERVICES (Cross-border financial and telecommunications services) TRIPS (Agreement on Trade-related Aspects of Intellectual Property Rights) INTELLECTUAL PROPERTY (Patents, Geographical Indications) Slide 4/16 4

5 ...effectively: The Good Points TRIPs: GIs are getting teeth... All Click WTO tomembers edit Master (some 145 text countries) styles shall give a minimum protection Second to level GIs in their legislation. If WTO countries so wish, they can give more protection than the minimum (e.g., EU) Nevertheless, Third levelprotection of EU GIs is not automatic. Registration Fourth level in that WTO country may be required. Also, WTO countries may claim that the EU name is, e.g., generic. That Fifthobligatory level minimum protection is higher for wines and spirits than for other products like agri-food products. Compliance is verified by other country Members via the several review mechanisms. Rogue countries may be brought to a WTO court. 5 Slide 5/16

6 TRIPS Protecting Geographical Indications... TRIPs & EU: comparing levels of protection Full IP (forbids Click to editevocations Master via, text e.g., styles shapes ( tetilla ) + comp. prod.) Limited IP (forbids style of Manchego or translation like Parmezan ) Unfair Competition (allows Parmezan of Australia) Euro pean Unio n Slide 6/16 6

7 in an effective manner around the world protection); or Fifth decisions level (negative protection); EU Producers seem to face several PROBLEMS: Protection available in WTO countries is TOO LOW; They may need to register their GIs in each WTO country before they benefit from any type of protection (positive They may need to go to courts and then be subject to divergent Defending EU GIs abroad entails lengthy and costly procedures Two SOLUTIONS: Extension of protection A multilateral register for GIs Slide 7/16 7

8 Improving Protection of GIs abroad on the ground A Multilateral Register for Geographical Indications Today for Wines & Spirits. tomorrow... Slide 8/16 8

9 TRIPS MANDATE Protecting Geographical Indications... PARTICIPATING Click to MEMBERS edit Master text styles MULTILATERAL FACILITATING GI PROTECTION NOTIFICATION REGISTRATION Slide 9/16 9

10 The need for multilateral register for Geographical Indications Diversity of national systems of protection: Producers may need to deal with many different systems before they start being Second protected. level This is costly. Presumption of Validity: Notified GIs will be presumed valid in WTO countries that do not oppose registration. Usurpers will have to prove that notified names are not a true GIs. Foreclosure of Future Markets: EU producers may not be able to protect their names because usurpations began long before they arrive and names have become generic. Non Availability of certain exceptions: E.g., notified GIs will not become generic abroad unless opposed. Slide 10/16 10

11 Notification by the EU: BORDEAUX Opposition by: U.S.; Chile; Morocco; New Zealand; China. Effects for Bordeaux PM- Will be presumed a GI AM- E.g., no one will be able to claim that its generic There will be a need to negotiate with red countries a bilateral agreement Slide 11/16 11

12 A PRACTICAL TOOL FOR PRODUCERS What the EU multilateral register DOES The FREEZING effect => It preserves names that have not been usurped and prevents GIs from being misused in the future. As registered names cannot become generic, international expansion can develop at the right pace without rush. The COST effect => Legitimate producers of registered names will be able to attack usurpers at a lesser cost. The PIRATE effect => As usurpers will have to make the case first, they will not be able to hide behind the legal system. The EXPORT effect => Usurped names will not be able to be used in many third markets (e.g., China - Champ.) Slide 12/16 12

13 A PRACTICAL TOOL FOR CONSUMERS What the EU multilateral register DOES and confusion prevented. The ACCESS effect => Consumer associations will be free to challenge misuses of GIs before domestic courts at a lesser cost. Usurpers will have to make their case first. The CLARITY effect => Usurpation will be discouraged and pirated products will diminish. Consumers choice is facilitated The GLOBAL effect => As protection is world-wide, consumers travelling will be able to buy the same product everywhere without risking being deceived. The LINK effect => Consumers and producers will help each other in monitoring piracy and counterfeiting. Slide 13/16 13

14 A PRACTICAL TOOL FOR ADMINISTRATIONS What the EU multilateral register DOES trademarks, for example. costs. The INFORMATIVE effect => Administrations will have a clear view of existing GIs abroad so they will not register as The LITIGATION effect => As usurpations will be discouraged, related litigation will diminish and so judicial The REGISTRATION effect => National registrations will probably diminish to those case in which multilateral protection is insufficient. Administrative costs will therefore be reduced. The EXPORT effect => Border control is easier. Slide 14/16 14

15 Common Misunderstandings What the EU multilateral register does NOT do upon this matter Does not replace national protection systems: WTO registration provides a first line of defence, a rebuttable presumption. Full protection may still requires national registration. Does not alter the relationship between trademarks and GIs: This follows TRIPs rules and the EU proposal does not touch Does not require WTO countries to establish any additional means of enforcement. This can be done by right-holders as is already the case for trademarks. Does not phase-out any past uses of names. Slide 15/16 15

16 Improving the Level of Protection of all GIs abroad Extension of additional protection now only available to GIs on wines and spirits to all GIs alike Slide 16/16 16

17 TRIPS Protecting Geographical Indications... TRIPs & EU: comparing levels of protection Full IP (forbids Click to editevocations Master like text styles imitation of shapes tetilla ) Limited IP (forbids style of Manchego or translation like Parmezan ) Unfair Competition (allows Parmezan of Australia) Euro pean Unio n Slide 17/16 17

18 WHERE DOES MY HAM COME FROM? Click to edit Master = Italian textham? styles Is this consumer protection????? = Italian Ham? = Spanish Ham? = Spanish Ham? Slide 18/16 18

19 TRIPS Protecting Geographical Indications... TRIPs & EU: the effects of extension Full IP (forbids Click to editevocations Master like text styles imitation of shapes tetilla ) Limited IP (forbids style of Manchego or translation like Parmezan ) Unfair Competition (allows Parmezan of Australia) Euro pean Unio n Slide 19/16 19

20 pottery, lacery)? One remaining question: Should we extend GI protection to non-agricultural products (e.g., carpets, Slide 20/16 20

21 TRIPS Protecting Geographical Indications... TRIPs & EU: comparing levels of protection & coverage Click to edit Master Services? text styles Industrial Products Agri-Fo od Products Prote ction Unfai r Com petiti on IP Prote ction Wines & Spirits IP Prote ction Unfai r Com petiti on Prote ction Euro pean Unio n Slide 21/16 21

22 What s in it for developing countries? Higher protection for wines and spirits mostly benefits the developed world. This needs to be rectified. Increased rents coming from GI protection promote agricultural and Second industrial level development. the territory by any corporation. GIs are fair. Anyone can use them and cannot be removed from They promote trade and help developing countries products make inroads in foreign markets. They can provide some protection to products which incorporate traditional knowledge. They can even promote tourism and other geographically -related activities. Slide 22/16 22

23 ... a long standing European ambition Paris Convention First International Crystallisatio n but little protection TRIPs Click to edit Master text 1997-Singapore Agreement styles Ministerial Lisbon First multilateral Conference Madrid Arrangement Agreement binding Mandates a protection for Gis Forceful multilateral Timid Progress on protection but Mandates a register for narrow multilateal Wines + protection membership register for Wines SPIRITS only Doha Ministerial Conference Mandates the register by 2003 and negotiations on extension to commence Cancun Ministerial Conference A register? End of the New Round Extension? Slide 23/16 23

24 THE END Slide 24/16 24

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