EU-China Workshop on Trademark Law

EU-China Workshop on Trademark Law 13 May 2011 - Diqing (Yunnan Province) Marc L. Holtorf / 郝韬福 Topic III - Indication of Source, Appellation of Origin and Geographical Indications

Overview German national protection system Geographical indications of origin Qualified geographical indications of origin Protection Claims Additional protection Intermediate conclusions 13/14 May 2011 2

Overview (2) European protection system General scope of protection Scope of the RAPF Designation of origin Geographical indication Traditional geographical or non-geographical names Registration process Product specification 13/14 May 2011 3

Overview (3) European protection system (2) Rights and obligations Protection Intermediate conclusions Relationship between the German and the European protection systems Trademark protection vs. geographic designations 13/14 May 2011 4

Overview (4) International protection of geographic designations Appendix 13/14 May 2011 5

German national protection system Geographical indications of origin Sections 126 et seq. Trademark Law (Markengesetz). Names of places, areas, territories or countries as well as other specifications or designations used in the course of business to designate the geographical origin of goods or services. 13/14 May 2011 6

German national protection system (2) 13/14 May 2011 7

German national protection system (3) Geographical indications of origin (2) Generic names, specifications and designations are not suitable to be a geographical indication of origin. A name (et cetera) has become generic which, although it relates to a geographical indication or is derived therefrom, has lost its original meaning and is used as name of goods/services or as designation or specification of the type, composition, sort or other characteristic or attribute of goods/services. 13/14 May 2011 8

German national protection system (4) Qualified geographical indications A qualified geographical indication of origin is a geographical indication of origin used in the course of business for goods/services having specific characteristics or a specific quality or with a special reputation. 13/14 May 2011 9

German national protection system (5) Protection A geographical indication of origin may not be used in the course of business for goods/services the origin of which is not at the respective place, area, territory or country if its use creates a false impression as to the geographic origin. A qualified geographical indication of origin having specific characteristics or a specific quality may only be used for goods/services having such characteristics or quality. 13/14 May 2011 10

German national protection system (6) Protection (2) A qualified geographical indication of origin with a special reputation may not be used for goods/services having a different origin where a risk as to a false impression does not exist, provided that the use is suitable to take unfair advantage of, or is detrimental to, the distinctive character or the reputation of the qualified geographical indication of origin. 13/14 May 2011 11

German national protection system (7) Claims Very similar to trademark law, in particular Cease and desist claim Damage claim Information claims The cease and desist claim may be raised by Competitors Certain business associations Certain consumer protection organizations Chambers for industry and commerce and chambers of crafts 13/14 May 2011 12

German national protection system (8) Additional protection For geographical indications of origin not falling under the scope of the Trademark Law, the German Act Against Unfair Competition (Gesetz gegen den unlauteren Wettbewerb, AAUC ) may provide protection if the use of such designation is suitable to create a false impression as to the origin of the designated good/service. 13/14 May 2011 13

German national protection system (9) Additional protection (2) Additional protection may be granted, e.g., in case of using a geographical indication of origin not existing any longer a so-called pseudo geographical indication of origin or a geographical indication of origin not used to designate goods/service but enterprises. 13/14 May 2011 14

German national protection system (10) Intermediate conclusions The German national system does not require a registration. The German national system is open for any sort of good/service to be designated by a geographical indication. The German national system is open for any sort of sign as geographical indication. 13/14 May 2011 15

German national protection system (11) Intermediate conclusions (2) The German national system does not focus on creating a regular intellectual property right but, generally speaking, it is the system s purpose to avoid a deceptive use of geographic indications of origin, in particular against false impressions as to the origin of goods/services. Generally, the German national system is open for non-german designations. 13/14 May 2011 16

European protection system General scope of protection The European protection system is limited to certain types of goods. Regulation (EC) no 479/2008 on the common organization of the market in wine (Article 34 et seq.) Regulation (EC) no 110/2008 on the definition, description, presentation, labeling and the protection of geographical indications of spirit drinks (Article 15 et seq.) 13/14 May 2011 17

European protection system (2) General scope of protection (2) Regulation (EC) no 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs ( RAPF ). Comprehensive RAPF implementation rules have been enacted (Regulation (EC) no. 1898/2006). 13/14 May 2011 18

European protection system / RAPF (3) Scope of the RAPF The scope of the RAPF is limited to designations of origin and geographical indications for agricultural products intended for human consumption listed in Annex I to Art. 38 para. 3 of the Treaty on the Functioning of the European Union and for foodstuffs and agricultural products listed in the annexes to the RAPF (as amended by Regulation (EC) no. 417/2008). 13/14 May 2011 19

European protection system / RAPF (4) Designation of origin The 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. 13/14 May 2011 20

European protection system / RAPF (5) Designation of origin (2) Under certain conditions, geographical indications shall be treated as designations of origin, provided that the geographical indications in question have been recognized as designations of origin in the country of origin prior to 1 May 2004. 13/14 May 2011 21

European protection system / RAPF (6) Geographical indication The 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, 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. 13/14 May 2011 22

European protection system / RAPF (7) Traditional geographical or non-geographical names Traditional geographical or non-geographical names designating an agricultural product or a foodstuff which fulfill the conditions referred to in the definitions for designations of origin or geographical indications shall also be considered as designations of origin or geographical indications. 13/14 May 2011 23

European protection system / RAPF (9) Grounds for refusal Names that have become generic may not be registered. Names may not be registered where they conflict with the name of a plant variety or an animal breed and as a result is likely to mislead the consumer as to the true origin of the product. 13/14 May 2011 24

European protection system / RAPF (10) Grounds for refusal (2) A name wholly or partially homonymous with that of a name already registered under RAFP shall be registered with due regard for local and traditional usage and the actual risk of confusion. In particular 13/14 May 2011 25

European protection system / RAPF (11) Grounds for refusal (3) in particular A homonymous name which misleads the consumer into believing that products come from another territory shall not be registered even if the name is accurate as far as the actual territory, region or place of origin of the agricultural products or foodstuffs in question is concerned; The use of a registered homonymous name shall be subject to a sufficient distinction in practice between the homonym registered subsequently and the name already on the register, having regard to the need to treat the producers concerned in an equitable manner and not to mislead the consumer. 13/14 May 2011 26

European protection system / RAPF (12) Grounds for refusal (4) A registration shall not take place 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. 13/14 May 2011 27

European protection system / RAPF (13) Registration process The RAPF provides for a two-step registration process (Member State authorities and European Commission) Application for registration (including the product specification) shall be filed with the competent Member State authority. The Member State authority conducts the first review phase which also includes, if any, the national objection proceeding. Any third party with a legitimate interest and established or resident in the respective territory may file an objection. 13/14 May 2011 28

European protection system / RAPF (14) Registration process (2) If the request for application does not fail in the first phase it is forwarded to the European Commission. The European Commission conducts the second review phase which also includes an (international) objection proceeding. Any third party with a legitimate interest and established or resident in a Member State other than that applying for protection or a third country may file an objection. An international objection proceeding has a national (Member State) phase and a European phase (European Commission). 13/14 May 2011 29

European protection system / RAPF (15) Registration process (3) Applicants An application for registration under the RASP may only be filed by a group. A group is any association, irrespective of its legal form or composition, of producers or processors working with the same agricultural product or foodstuff. Other interested parties may participate in the group. A natural or legal person may be treated as a group under certain circumstances. Special rules apply with regard to names designating a trans-border geographical area or a traditional name connected to a trans-border geographical area. 13/14 May 2011 30

European protection system / RAPF (16) Registration process (4) Applicants (2) A group may lodge an application for registration only for the agricultural products or foodstuffs which it produces or obtains. 13/14 May 2011 31

European protection system / RAPF (17) Product specification The product specification is the core element of an application for registration. By way of the product specification the applicant specifies the conditions for the use of the protected designation. The main points of the product specification have to be set out in the single document. 13/14 May 2011 32

European protection system / RAPF (18) Product specification (2) The product specification shall include at least The name of the agricultural product or foodstuff comprising the designation of origin or the geographical indication; A description of the agricultural product or foodstuff, including the raw materials, if appropriate, and principal physical, chemical, microbiological or organoleptic characteristics of the product or the foodstuff; The definition of the geographical area and, where appropriate, other information; Evidence that the agricultural product or the foodstuff originates in the defined geographical area; 13/14 May 2011 33

European protection system / RAPF (19) Product specification (3) The product specification shall include at least (2) A description of the method of obtaining the agricultural product or foodstuff and under certain conditions the authentic and unvarying local methods as well as information concerning packaging; Details bearing out the link between the quality or characteristics of the agricultural product or foodstuff and the geographical environment referred to in an application for registration of a designations of origin or a specific quality, the reputation or other characteristic of the agricultural product or foodstuff and the geographical origin referred to in an application for registration of a geographical indication. 13/14 May 2011 34

European protection system / RAPF (20) Product specification (4) The product specification shall include at least (3) The name and address of the authorities or bodies verifying compliance with the provisions of the product specification and their specific tasks; Any specific labeling rule for the agricultural product or foodstuff in question; and Any requirements laid down by Community or national provisions. 13/14 May 2011 35

European protection system / RAPF (21) Product specification (5) The product specification shall include at least (4) The name and address of the authorities or bodies verifying compliance with the provisions of the specification and their specific tasks; Any specific labeling rule for the agricultural product or foodstuff in question; and Any requirements laid down by Community or national provisions. 13/14 May 2011 36

European protection system / RAPF (22) Product specification (6) The product specification may be changed. The proceeding for a change depends on the type of change requested, namely on can distinguish changes leading to a not only immaterial amendment of the single document ; an only immaterial amendment of the single document ; no amendment of the single document ; a temporary change of the product specification resulting from imposition of obligatory sanitary or phytosanitary measures by the public authorities. 13/14 May 2011 37

European protection system / RAPF (23) Rights and obligations A name registered under the RASP may be used by any operator marketing agricultural products or foodstuffs conforming to the corresponding product specification. 13/14 May 2011 38

European protection system / RAPF (24) Rights and obligations (2) In the case of the agricultural products and foodstuffs originating in the Community or in third countries marketed under a name registered in accordance with the RASP, the indications protected designation of origin and protected geographical indication or the Community symbols associated with them shall (Community origin) or can (third country origin) appear on the labeling. 13/14 May 2011 39

European protection system / RAPF (25) Protection Generally, it is fair to say that the protection provided in accordance with the RASP is quite extensive. Registered names are in particular protected against 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; 13/14 May 2011 40

European protection system / RAPF (26) Protection (2) Registered names are protected against (2) 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; 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; 13/14 May 2011 41

European protection system / RAPF (27) Protection (3) Registered names are protected against (3) any other practice liable to mislead the consumer as to the true origin of the product. 13/14 May 2011 42

European protection system / RAPF (28) Cancellation The RASP foresees both an ex-officio cancellation proceeding and a cancellation proceeding upon request. Ex-officio cancellation proceeding Where the European Commission, in accordance with specified rules, takes the view that compliance with the conditions of the product specification for an agricultural product or foodstuff covered by a protected name is no longer ensured, it shall initiate the appropriate cancellation procedure. 13/14 May 2011 43

European protection system / RAPF (29) Cancellation (2) Cancellation proceeding upon request. Any natural or legal person having a legitimate interest, may request cancellation of the registration, giving reasons for the request. A request for cancellation has to be filed with the competent authority of the Member State, in Germany the German Patent and Trademark Office (Deutsches Patent- und Markenamt). Similar to the registration process, a combined competence of the European Commission and the competent Member State authority exists. 13/14 May 2011 44

European protection system / RAPF (30) Intermediate conclusions The European system does require a registration. The European system is a product specific system and therefore not open for any sort of good/service. The European system is not open for any sort of sign but only to names. 13/14 May 2011 45

European protection system / RAPF (31) Intermediate conclusions (2) The focus of the European system is not to grant a regular intellectual property right but to enhance the sale of certain agricultural products ( marketing tool ). The European system is open to non-eu designation of origin and geographic indications, subject to the provision of evidence that the name in question is protected in its country of origin. 13/14 May 2011 46

Relationship between the German and the European protection systems (Simple) geographical indications of origin The German system for the protection of (simple) geographical indications of origin co-exists with the European protection system. Qualified geographical indications of origin A designation registered under the European system may not be additionally protected by the German system as qualified geographical indication of origin. 13/14 May 2011 47

Relationship between the German and the European protection systems (2) Qualified geographical indications of origin (2) A designation which fulfills the prerequisites of a qualified geographic indication of origin according to the German system and which does not fulfill the prerequisites of a designation of origin and a geographical indication according to the European system can indeed still be protected as qualified geographic indication of origin according to the German system. 13/14 May 2011 48

Relationship between the German and the European protection systems (3) Qualified geographical indications of origin (3) It remains unclear if a designation which fulfills the prerequisites of a qualified geographic indication of origin according to the German system and which does also fulfill the prerequisites for a protection as designation of origin or a geographical indication according to the European system but, for whatever reason, has not been registered under the European system, can be protected as qualified geographic indication of origin according to the German system. 13/14 May 2011 49

Trademark protection vs. geographic designations Trademark protection vs. national system Younger German or Community trademark A collision of an older nationally protected geographical indication of origin with a younger German or Community trademark is possible and might constitute an infringement of the older rights. For example, German trademark law explicitly foresees a right for the entitled group to file a cancellation action against a trademark registration based on an older nationally protected geographical indication of origin. 13/14 May 2011 50

Trademark protection vs. geographic designations (2) Trademark protection vs. national system (2) Older German or Community trademark A collision of an older German or Community trademark with a younger nationally protected geographical indication of origin is possible and might constitute a trademark violation. However, one always has to take into account the limitations of the effects of the older German or Community trademark. A proprietor of a trademark is not entitled to prohibit a third party from using in the course of trade indications concerning the geographical origin of the goods or of rendering of the service, provided that the use takes place in accordance with honest practices in industrial or commercial matters. 13/14 May 2011 51

Trademark protection vs. geographic designations (3) Trademark protection vs. European system Younger German or Community trademark Where a designation of origin or a geographical indication is registered under the RASP, the application for registration of a trademark which would be contrary to the protection granted under the RASP and relating to the same class of product shall be refused if the application for registration of the trademark is submitted after the date of submission of the registration application to the European Commission. 13/14 May 2011 52

Trademark protection vs. geographic designations (4) Trademark protection vs. European system (2) Younger German or Community trademarks (2) Trademarks already registered in breach thereof shall be invalidated. 13/14 May 2011 53

Trademark protection vs. geographic designations (5) Trademark protection vs. European system (3) Younger German or Community trademark (3) See also the corresponding absolute ground for refusal according to Art. 7 para. 1 k) of the Community Trademark Regulation (EC) 207/2009 Community trademarks which contain or consist of a designation of origin or a geographical indication registered in accordance with the RASP may not be registered when the registration would be contrary to the protection granted under the RASP and regarding the same type of product, on condition that the application for registration of the trademark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication. 13/14 May 2011 54

Trademark protection vs. geographic designations (6) Trademark protection vs. European system (4) Older German or Community trademarks An older trademark might be a ground for refusal of registration of an designation of origin and a geographical indication. A designation of origin or geographical indication 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. 13/14 May 2011 55

Trademark protection vs. geographic designations (7) Trademark protection vs. European system (5) Older German or Community trademarks (2) In other words: the different designations might have to coexist under certain circumstances (justified limitation of older trademark rights according to Art. 17 TRIPs Agreement). In respect of the younger RASP designation the coexistence right based on the RASP does apply only with regard to the registered form of the name not to translations thereof. However, national law might provide for further coexistence rights. Otherwise, a collision of an older German or Community trademark with a younger designation (falsely) registered under the RASP is possible and might constitute a trademark violation. 13/14 May 2011 56

Trademark protection vs. geographic designations (8) Trademark registration Irrespective of the absolute ground for refusal according to Art. 7 para. 1 k) of the Community Trademark Regulation (EC) 207/2009, it is generally difficult to register a sign designating the origin of a good or service as regular trademark. 13/14 May 2011 57

Trademark protection vs. geographic designations (9) Trademark registration (2) According to both German and European trademark laws it constitutes an absolute ground for refusal if the trademark to be registered consist exclusively of signs or indications which may serve, in trade, to designate the geographical origin of the goods or of rendering of the services. However, such absolute ground for refusal might be overcome if the trademark has become distinctive in relation to the goods or services for which registration is requested in consequence of its use. 13/14 May 2011 58

Trademark protection vs. geographic designations (10) Trademark registration (3) Other than that the absolute ground for refusal mentioned above might - by way of exemption - not apply if the geographic designation foreseen for trademark registration is not perceived as location from which the respective goods/services originate. 13/14 May 2011 59

Trademark protection vs. geographic designations (11) Trademark registration (4) Furthermore, it also constitutes an absolute ground for refusal if the trademark to be registered is of such a nature as to deceive the public as to the geographical origin of the respective goods or services. Said absolute ground for refusal can neither be overcome if the trademark has become distinctive not otherwise. 13/14 May 2011 60

Trademark protection vs. geographic designations (12) Trademark registration (5) Collective trademarks By explicitly derogating from the absolute ground for refusal according to which trademarks which exclusively consist of signs or indications which may serve to designate the geographical origin, both German and Community trademark laws permit - as collective mark - the registration of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services. However, a collective mark may not be of such a nature as to deceive the public as to the geographical origin of the respective goods or services. Certain specific requirements apply to collective marks. 13/14 May 2011 61

International protection of geographic designations International treaties Paris Convention (Articles 10 and 9) Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (Germany is not a member country) TRIPs Agreement (Articles 22 to 24) Bilateral treaties 13/14 May 2011 62

Marc L. Holtorf / 郝韬福 Fachanwalt für Gewerblichen Rechtsschutz (expert lawyer for intellectual property law) Top 60 German IT lawyers Marc Holtorf is partner in the Düsseldorf office of Clifford Chance. He is the global head of the Trademark & Unfair Competition Law Group, an integral part of the firm's worldwide Healthcare, LifeSciences & Chemicals industry group. He is also a leading member of the firms global intellectual property and anticounterfeiting units. Marc advises and represents national and international clients from a number of different business sectors in and out of court - with a focus on advertising/promotion, trademark, design, know-how protection and licensing matters. Marc L. Holtorf Königsallee 59 40215 Düsseldorf Germany Tel: +49 211 4355 5467 Cell phone: +49 170 9222 865 Fax: +49 211 4355-5600 E-mail: marc.holtorf@ cliffordchance.com Often recommended lawyer Further, Marc is heavily active in the area of IT law, including IT outsourcing and data protection compliance projects. Marc is lecturer at the University of Düsseldorf. He is a sought speaker, has published various articles and is co-author of various legal books in his areas of expertise. In addition, he is assistant chairman of the committee for the appointment of expert lawyers in the field of intellectual property (a protected title in Germany) in the circuit of the Düsseldorf Court of Appeal. For many years, the Juve Handbook on German Commercial Law Firms, has named Marc as an often recommended lawyer. Recently, Marc has also been named in the Top 60 list for IT law published by Germany s most important commercial newspaper Handelsblatt. Languages: German and English. 13/14 May 2011 63

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EU-China Workshop on Trademark Law www.cliffordchance.com Clifford Chance, Königsallee 59, 40215 Düsseldorf, Germany Clifford Chance 2011 Clifford Chance Partnerschaftsgesellschaft von Rechtsanwälten, Wirtschaftsprüfern, Steuerberatern und Solicitors Sitz: Frankfurt am Main AG Frankfurt am Main PR 1000 GERMANY 1318409 v1