Worldwide Symposium on Geographical Indications Parma, June 27 - 29

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Worldwide Symposium on Geographical
IndicationsParma, June 27 - 29

• International Registration
• Burkhart Goebel
• Partner, Lovells, Madrid
• Chair of the INTA Committee on Geographical
  Indications

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Finland vs Denmark

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

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Storebaelt Bridge
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WTO Dispute Settlement

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

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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

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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.

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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

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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

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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.

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The Panel Report

• Art. 17 TRIPS
• What is the scope of coexistence envisaged under
  Art. 14.2 of the Regulation?

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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

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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)

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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).

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The Panel Report - Conclusions

• Priority
• Exclusivity
• Territoriality

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The Panel Report - Conclusions

• Equality

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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)

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Going forward The Doha Agenda

• Claw-back
• Art. 23 TRIPS extension
• Multilateral System

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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)

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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.

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The Multilateral System

• INTA position paper Madrid like concept
• www.wto.org/english/forums_e/pospap_e.htm
  (Spring 2003)

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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.

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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.

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Multilateral System (INTA)

• How could it work?

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Multilateral System (INTA)

• Advantages
• Respect for existing systems
• Efficient protection
• Respect for PET (priority, exclusivity,
  territoriality)

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Multilateral System (INTA)

• What needs to be done?
• Research on the translation mechanism

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Multilateral System (INTA)