February 2017

Geographical Indications and complementarity with other IP rights

Index

1.Complementarity with other IP rights

2.Practical examples

1.Complementarity with other

IP rights

General concepts

• Geographical Indication (GI): Is the name of a product where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. It is a type of intellectual property right that can apply in the EU to different types of products • Design: The appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

General concepts • Trademark (EUTM) Trademarks are signs used in trade to identify products. In particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: 1. Distinguishing the goods or services of one undertaking from those of

other undertakings, and 2. Being represented on the Register of European Union trademarks in a

manner which enables the competent authorities and the public to determine the clear and precise subject mater of the protection afforded to its proprietor

General concepts

Why is registering complementary IP rights so important?

• Because GI protects only the name, not the graphic elements or the logo even if the product Specification may contain the collective logo of the GI and other label elements : Labelling rules

• TMs = protection over the logo

Alternative tool for products excluded from GI protection in the EU (handicraft, manufactured).

Protection may be extended to countries with no GI legislation.

Advisable previous step to the GI registration (TM registration may be obtained in a shorter time).

Licensing (GI may not be licensed): especially for foodstuffs using GIs as ingredients.

Enhancing the protection (reputed TMs are also protected with respect to non-similar goods).

• Designs = Protection over the appearance of the product or its packaging

Summary = Different interest

TM / GI =

•Different function

•Different scope of protection

TM protected against:

•Identical signs used in relation to identical goods or services

•Similar signs in used in relation to similar goods or services, if there exists a likelihood of confusion

•If the TM is reputed: Identical or similar signs used in relation to non-similar goods or services, if that takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the TM

Summary = Different interest GI protected against: (a) any direct or indirect commercial use of a registered name in respect of products not covered by the registration where those products are comparable to the products registered under that name or where using the name exploits the reputation of the protected name, including when those products are used as an ingredient;

(b) any misuse, imitation or evocation, even if the true origin of the products or services 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, including when those products are used as an ingredient;

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product that is used on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;

(d) any other practice liable to mislead the consumer as to the true origin of the product.

Pros and cons of TMs that are also GIs

Pros: • Registration provides protection • Value added to product (differentiation on the market,

recognition) • GIs help the local economy (better price) • GIs maintain jobs in rural areas (framework + cannot re-locate GI

and move production) • “Ticket” for EU promotion and rural development support Cons: The rest of the producers and enterprises of the Geographical Area are not allowed to use the name of the GI to designate their products.

• Currently 4 kinds of goods can be protected under the EU quality schemes:

• Wines (Regulation 1308/2013)

• Aromatised wines (Regulation 251/2014)

• Spirit drinks (Regulation 110/2008)

• Agricultural products and foodstuffs

• (Regulation 1151/2012)

•Possible extension to non-agricultural

products. EU Parliament Resolution

of 6 Oct. 2015 requesting legislation

2. Practical examples

• “Darjeeling”

for tea

• Protectable in the EU?

• Under Regulation 1151/2012 PDOs and PGIs for agricultural products and foodstuffs

Geographical area

• Steps of the production which must take place the defined geographical area

• The plucking of Darjeeling tea which begins in end February/early March and ends by mid November depending on the weather conditions and the ambient temperature

• After harvesting, the Darjeeling tea leaves are processed in the traditional orthodox method only in the typical/Darjeeling Style of manufacture in the factories situated within the specified gardens within the defined Darjeeling tea growing area only.

• Processing of the Darjeeling tea takes place in the factories situated only within the notified tea gardens.

• All steps of production of tea (harvesting, drying and processing) take place in the defined areas.

• PGI? PDO?

Link

• Geographical and agro-climatic: Due to the unique and complex combination of agro-climatic conditions prevailing in the region comprising of all the 87 tea gardens within the district of Darjeeling as well as the production regulations by the Board, tea produced in this region has the distinctive and naturally occurring organoleptic characteristics of taste, aroma and texture…

• Topographical: The Darjeeling tea gardens are situated at Altitude from 600 to 2 250 meters on steep slopes which provide ideal natural drainage for the generous rainfall the district receives…

• Other factors: special uniqueness and reputation are attached to ‘Darjeeling’. Indeed, the tea produced in the Darjeeling region and having the said special characteristics, is and has for long been known to the trade and the public in India and abroad as Darjeeling tea and as such it has acquired a substantial domestic and international reputation…

•The name ‘Darjeeling’ has acquired a special uniqueness and reputation in the public mind when used in relation to tea produced in the aforesaid region…

• PGI? PDO?

“Turrón de Alicante” and “Jijona”

Geographical specifications: produced in the village of Jijona (Alicante).

Process specifications: traditional process (“boixet”)

Ingredients:

64 % or 60 % Almond

Special varieties of almonds

Honey

Sugar

For ‘nougat’

Processing

Production (raw materials)

+ Mediterranean climates

Area and production

PGI

• “Aranmula Kannadi”

Hand crafted mirror

• Protectable in the EU?

• Alternative: TM

TMs & GIs Leverage on each other

TMs &GIs are often part of one single message

TMs &GIs offer complimentary forms of protection

• Application for INDIVIDUAL TM, in the name of CONSEJO REGULADOR DEL TEQUILA

“TEQUILA” Class 33: ‘Tequila and Tequila-based products; beverages containing Tequila’

Refused (art. 7.1.c EUTMR). Merely descriptive of the geographical origin. •Application for COLLECTIVE TM, in the name of CONSEJO REGULADOR DEL TEQUILA

“TEQUILA” Class 33: ‘Tequila and Tequila-based products; beverages containing Tequila’

Objection (art. 7.1.j EUTMR) proposing the following restriction of goods:

Class 33: ‘Spirit drinks complying with the Specifications of the GI Tequila; beverages containing Spirit drinks complying with the Specifications of the GI Tequila’.

Application for INDIVIDUAL TM

Class 33: ‘wines produced in La Rioja (Spain)’

Objection proposing the following restriction:

“wines complying with the Specifications of the PDO “La Rioja”’

Possible infringement cases

Possible TM infringement NO PGI infringement

Possible infringement cases

Evocation of GI “Tequila” protected in the EU NO TM infringement

Both, possible TM infringement and possible PGI infringement

Evocation of GIs (imagination is endless!!) Evocation of "Côte-Rôtie" and "Bordeaux" for South-African wine; evocation of Feta cheese

BUT THERE CAN BE RARE CONFLICTS (I)

That Can Be Solved in a Balanced Way

• Prior GIs prevent the registration of a trademark ->relation with TM offices (same rule as between TMs)

• Prior trademark which has been applied or registered , or established by use, in good faith , before the date of protection in the country of origin, or before 1/1/1996 may continue to be used coexistence.

• Conflict with renown TM prevents GIs registration - if registration is liable to mislead the consumer as to the truth identity of the good.

Expert´s name:

Natalie Pasinato Natalie.PASINATO@euipo.europa.eu

Expert’s title: IP expert

Thank You