Community Law on Trademarks and Geographical Indications

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Community Law on Trademarks and Geographical
Indications

• Ester Olivas
• Legal Adviser of ORIGIN
• Veneto, 29 November 2004

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What is
?

• ORIGIN ORganization for an International
  Geographical Indications Network
• The first International network of GI producers
• Around 70 organizations
• Representing more than 1 million producers of
  traditional products
• Coming from more than 30 countries (Africa, Asia,
  North and South America, Eastern and Western
  Europe)
• Covers food and non-food GI products

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Objectives

• Promote Geographical Indications as a development
  tool
• Facilitate exchange of information between
  producers
• Create partnerships between producers
• Lobby for a better protection of GIs at national,
  regional international levels

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What is a Geographical Indication?

• A tool to protect goods that have

Specific geographical origin

• Qualities
• Reputation
• Other characteristics

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Examples of GIs
Roquefort, Tequila, Argane oil, Chuao cacao,
Parma ham, Basmati rice, Long-Ging tea, Guinean
pineapples, Antigua coffee, Napa Valley wines,
etc.
Food products
Other traditional products
Kilim carpets, Thai silk, Murano cristal etc.
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Why choosing the GI route?

• GI a market access tool
• GI a tool to preserve local savoir-faire and
  natural ressources
• GI a (rural) development tool

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1. GI a market access tool

• Encourage variety and diversity of production
• Allow producers to market differentiated and
  clearly identifiable products
• Promote quality and added-value production
• Allow producers to obtain a premium price in
  return for their efforts towards quality

Fact 40 of European consumers are ready to pay
a 10 premium price for origin-guaranteed
products (survey 1999)
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2. GI a tool to preserve local savoir-faire and
natural ressources

• GIs are part of our cultural heritage and need to
  be preserved as such
• Some GIs date back many centuries
• Example Basmati rice produced for thousands of
  years on the foothills of the Himalaya

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3. GI a (rural) development tool

• GI production cannot be relocated!
• ? Create and maintain local jobs
• Huge direct impact on local economy in some
  regions
• Impact on tourism Food Routes
• Tamanar Argan Oil cooperative more than 100
  visitors/day
•  Rutas Alimentarias  in Patagonia (Argentina)
• Wine routes in Italy
• Museums dedicated to GIs

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Protection of GIs in the EU

• Wines Council Regulation (CE) n 1493/1999
• Spirits Council Regulation n1576/89/ECC
• Other agriculture quality products Council
  Regulation (EC) n 2081/92
• No protection for typical handicraft products

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An extensive GI protection in the EC

• Community registration
• Indefinite protection in 25 countries
• The name cannot become generic
• Exclusive right to use the name
• Covers translation
• with expressions like  style ,  type 
• Ex officio procedure enforcement of the law by
  Member States of the EC
• Protection against any practice liable to mislead
  consumers

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without costs for GI producers

• No registration cost
• No legal monitoring costs
• Optional costs of market surveillance

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What is a trademark?

• A brand name
• Any word, name, symbol, or device, or any
  combination, used or intended for use in commerce
  to identify and distinguish the goods of one
  manufacturer or seller from good manufactured or
  sold by other, and to indicate the sourse of the
  good
• Examples of trademarks Coca-cola, Barilla,
  Nestlé, Kraft, etc.

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Extent of Protection through Trademark Law

• Council Regulation (EC) No 40/94 on the Community
  Trademark
• Right on the name
• in one country or as a community trademark in 25
  countries if used, except risk of confusion
• for 10 years
• No guarantee against
• genericity
• name used in translation and used with
  expressions like style, type, etc.
• Impossibility to register descriptive names
• Private enforcement

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Expensive Protection through Trademark Systems

• Cost of Registration 1,400 to 2,000
• per name
• per class
• per country
• Over 2000 register CTM
• Annual cost of surveillance /- 2,000

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GIs are different from trademarks
Geographical indications Production rooted in a
region Emphasis on the origin of the
product Protection available to all producers of
the area who meet the standards
Trademarks Area of production not
relevant Emphasis on the company who owns
them Protection only available to the company
that owns the brand
?
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GI vs. Trademark Protection

• Trademarks
• Limited protection 10 years if used
• A product can become generic
• Does NOT cover translation or expressions
  liketype style, etc.
• Private enforcement
• Cost of Registration 1,400 to 2,000 per
  trademark and over 2000 per CTM
• Annual cost of surveillance /- 2,000
• Problems to register a name with a geographical
  origin

• Geographical Indications
• Indefinite protection
• Name never generic
• Covers protection in translation use with
  expressions like  style ,  type 
• Enforcement of the law by Member States of the EC
• No registration cost
• Optional costs of market surveillance
• No problem to protect a name with a geographical
  origin

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Conclusion GIs are an ideal tool to protect
local value

• GI protection prevents the relocation of
  production
• GI protection available to all producers of the
  area who meet recognized standards
• GIs probably only form of intellectual property
  that local communities can own
• - Collective right
• - Allow for the protection of existing products
• - Do not require local communities to innovate

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Possible solutions to secure EU protection for
typical craft products

• Extension of the Council Regulation 2081/92 to
  typical craft products

• New EU Regulation on the protection of
  geographical indications and designations of
  origin for typical craft products

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Steps forward

• Lobby the European Commission to make a proposal
• Lobby your national governments
• Build support with other producers across Europe
• Support from OriGIn

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THANK YOU VERY MUCH
www.origin-gi.com