Worldwide Symposium on Geographical Indications

Parma, June 27 - 29

International Registration

Burkhart Goebel

Partner, Lovells, Madrid

Chair of the INTA Committee on Geographical Indications

Finland vs Denmark

Passage through the Great Belt, ICJ Rep. 1991, 12 et seq.

Storebaelt Bridge

WTO Dispute Settlement

Panel Report of 15 March 2005, adopted by the WTO Dispute Settlement Body on 20 April 2005 (WT/DS174/R)

The Panel Report

The Trademark Claim

• EC Reg. 2081/92 provides for a general co-existence between a prior trademark and a later GI even where there is a likelihood of confusion;

• That is incompatible with the exclusivity of prior trademarks required under Art. 16.1 TRIPS

The Panel Report

“Coexistence” under EC Reg. 2081/92

• Positive right to use a PGI / PDO;• A prior trademark is a ground for refusal under

the circumstances of Art. 14.3 (see also Art. 7.4 and 7.5) of the Regulation;

• Where the GI is not refused, Art. 14.2 provides for coexistence.

The Panel Report

The defences:

• Art. 24.5 TRIPS requires the WTO Members to provide for coexistence;

• Art. 24.3 TRIPS grandfathers EC Reg. 2081/92 which predates the TRIPS Agreement;

• (Limited) coexistence as provided for under Art. 14.2 of the Regulation justified under Art. 17 TRIPS

The Panel Report

The decision:

• Art. 16.1 TRIPS provides for exclusivity of the registered, prior trademark (priority & exclusivity rule)

• No mandatory co-existence requirement under Art. 24.5 TRIPS

• Priority & exclusivity is the rule

The Panel Report

Art. 17 TRIPS

• Art. 17 is a provision of the trademark section of the TRIPS Agreement.

• It entitles the Members to provide for limited exceptions to Art. 16.1 TRIPS, such as fair use of descriptive terms.

The Panel Report

Art. 17 TRIPS

• What is the scope of coexistence envisaged under Art. 14.2 of the Regulation?

The Panel Report

Art. 17 TRIPS / Coexistence under Art. 14.2 Reg

• GIs can be refused pursuant to Art. 14.3 (read in conjunction with Art. 7.4 and 7.5 of the Regulation) whenever there is confusion (EC)

• The positive right to use is limited to the GI as registered and does not to other (linguistic) versions

The Panel Report

Therefore, the Panel was satisfied

• that the GI will be refused where there is a relatively high likelihood of confusion (e.g. identity with a prior mark in one country)

• that a GI can only be used as registered (no use in translation, no use in deviating versions)

The Panel Report

Under these circumstances

the Panel held that the limited coexistence permitted under Art. 14.2 of the Reg. (coexisting use of (only) the registered version where the likelihood of confusion is not relatively high), could be justified under Art. 17 TRIPS (fair descriptive use).

The Panel Report - Conclusions

• Priority;

• Exclusivity;

• Territoriality;

The Panel Report - Conclusions

• Equality

The WIPO Symposium

• Solingen: we now have a CTM which will provide us with the protection we have in Germany at Community level

• Jamaica: Limited duration of a GI (renewal requirement)

• Australia wines: the good story of Australian wine

• Many: Enforcement costs money (Talavera)

Going forward – The Doha Agenda

• Claw-back

• Art. 23 TRIPS extension

• Multilateral System

Going forward: Expansion

• Reopens TRIPS

• At a time when there is limited & also bad experience with Art. 23 TRIPS– Refusals of TM applications containing place names– Refusals of re-registrations of conflicting marks– Refusals to renew trademarks (cf. Director Julanyia)– Refusals of marks like SAPPORO lager, WARSTEINER or

TSINGTAO

• Where Art. 23 TRIPS comes with a highly questionable scope of protection (e.g. translations)

Going forward: The Multilateral System

EC amended proposal (TN/IP/W11)

– Good: recognizes the need to provide for opposition on the basis of prior marks (response to the WTO decision)

– Bad: set-up at WTO level, duplicates existing systems, fails to spell out procedures etc.

The Multilateral System

INTA position paper: Madrid like concept;

www.wto.org/english/forums_e/pospap_e.htm (Spring 2003)

Multilateral System (INTA)

INTA is looking for a system that

• Facilitates protection;• Recognizes GIs as intellectual property rights being essentially

territorial in nature;• Allows the WTO Member States to pick the most appropriate

implementation method for their country;• Shall not impose additional substantive legal obligations on

Members;• Shall not impose undue financial and administrative burdens on

Members.

Multilateral System (INTA)INTA is of the opinion that a „Madrid-type“ system will meet these

requirements if based on the following principles:

• International protection shall require national protection (with or without registration);

• The notification shall be facilitated through an international body;• Examination as regards protectability and conflicts shall be carried

out in the country where protection is sought;• Third parties shall be able to challenge the application/registration

before national offices and courts;• Conflicts shall be resolved on the basis of priority, exclusivity and

territoriality.

Multilateral System (INTA)

How could it work?

Multilateral System (INTA)

Advantages

• Respect for existing systems

• Efficient protection

• Respect for PET (priority, exclusivity, territoriality)

Multilateral System (INTA)

What needs to be done?

Research on the translation mechanism

Multilateral System (INTA)