GEOGRAPHICAL INDICATIONS AND

COLLECTIVE MARKS

Matteo Pegoretti

Alessandra Rauccio

Chi XI

Intellectual Property and Competitive LawIntellectual Property and Competitive Law

Geographical Indications

• “Indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.” (TRIPs Art. 22)

• Examples: Idaho potatoes, Napa Valley wine, Melinda apples.

Geographical Indicators

Geographical Indications as Certification Marks

• Geographical Indications are a subset of trademarks because they are source-identifiers, guarantees of quality, and business interests.

Geographical Indications as Certification Marks

• Geographical indications can be protected through a trademark system:

• As certification marks or;

• As collective marks.

Certification Marks

A certification mark is a type of trademark which indicates to consumers:

1) geographic origin of a product;

2) materials used, quality, method of manufacture, and accuracy; or

3) products made under the auspices of, or by members of, a specific trade union or organization.

Certification Marks

“Egyptian Cotton”

Application Serial No. 76-229673

For (a variety of products made wholly or substantially of Egyptian cotton)

“The certification mark, intended to be used by authorized persons, is intended to certify that the products identified above contain 100% Egyptian Barbadense cotton.”

“Parmigiano Reggiano”

U.S. Trademark Registration Nos. 1,754,410; 1,892,496; 1,896,683; 2,320,595

For “Cheese”

“The certification mark, as used by person authorized by the certifier, certifies that the goods originate in the Parma-Reggio region of Italy, specifically the zone comprising the territory of the provinces of Parma, Reggio Emilia, Modena and Mantua on the right bank of the river Po and Bolgona on the left Bank of the river Reno.”

Collective Marks

Collective Marks

Characteristics

Collective Mark and Trademark

Protection

• “Members shall ensure that enforcement procedures … are available under the law to permit effective action against infringement of intellectual property rights…”

• “expeditious remedies”

• “constitute a deterrent”

Regulation of Collective Mark in

Italy 1.The persons who assume the function of guaranteeing the origin,

nature or quality of specific goods or services may obtain registration for relevant marks as collective marks and shall have the right to authorize producers and merchants to use such marks.

Who can apply collective mark?

2.The regulations governing the use of collective marks, their supervision and the relevant sanctions shall be attached to the application for registration; any amendment to such regulations shall be communicated by the proprietors to the Italian Patent and Trademark Office referred to in Article 52, below, for inclusion in the documents attached to the application.

Core part of application of collective mark

Regulation of Collective Mark in

Italy 3.The provisions of paragraphs 1 and 2 shall also apply to foreign

collective marks registered in their countries of origin, provided that such country affords reciprocal treatment to Italy.

Available for foreign application

4. In such case, however, the Office may refuse a registration, by means of a decision stating its grounds, if the marks applied for could create a situation of unjustified privilege or be otherwise detrimental to the development of other similar initiatives in the region

Refuse to registration of collective mark

Melinda®

“Consorzio Melinda” cooperatives association: small-scale local producers (over 5,000 members) organized in 16 cooperatives

strongly related to the specific geographical origin: Val di Non

same material, mode of manufacture and other common characteristics of goods and services involved in the production

the same production techniques: the integrated production process

Product specificationsa strict regulation

rules governing producers and growing techniques:

to quality control and packaging

The regulation indicates

the guidelines for producing superior quality apples

while respecting the standards dictated by the consumer and calls for explicit control measures to verify that producers observe the standards.

which all members must respect in order to use the Melinda brand on their apples

Madrid system trademark registration

To protect the trademark in several countries by simply filing one application directly with the national or regional trademark office

equivalent to an application or a registration of the same mark effected directly in each of the countries

it is possible to record subsequent changes or to renew the registration through a single procedural step.

Melinda®

The brand awareness of Melinda® gives the Consortium the chance to differentiate these apples from the others in order to gain a premium price.

Melinda is the most famous and most often acquired apple brand in Italy.

….representing over 60% of apple production from the Trentino region, 10% of Italian production, and 5% of European production.

Melinda® products:

Melinda Apples: Golden, Gala, Red Delicious, Renetta [...]

Melinda Juice

Melinda Snacks

Melinda Mousse

Melinda vinegar

Using Melinda®

overcome the challenges associated with small size and isolation in the market place

local development

“Over the years, Melinda has been able to combine traditional production with modern marketing techniques to better compete with a quality product with a distinctive identity, reputation

and image in the domestic and export markets”