ASEAN University Network Intellectual Property Network Conference

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ASEAN University Network Intellectual Property
Network Conference

• Responding to the overlap between Geographical
  Indications and Trade Marks
• An ASEAN Perspective

DR. TAY PEK SAN Associate
Professor Faculty of Law, University of
Malaya Kuala Lumpur
Hilton Petaling Jaya 13-14 January 2009
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Outline of Presentation

• Geographical Indications and Trade Marks
  Similarities and Differences
• Overlap Between Geographical Indications and
  Trade Marks
• International Laws Response to the Overlap
• ASEAN Members Response to the Overlap
• Balancing Rights Between Producers and Trade Mark
  Owners

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1.Geographical Indications and Trade Marks

• SIMILARITIES and DIFFERENCES

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Geographical Indications (GIs) Definition

• Indications which identify a good as originating
  in a territory, a region or locality where a
  given quality, reputation or other
  characteristics of the good is essentially
  attributable to its geographical origin (TRIPS
  Agreement, Art 22(1))

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Philippines Cebu Dried Mangoes
Malaysia Sarawak Pepper, Sabah Tea, Tenom
Coffee, Borneo Virgin Coconut Oil
Indonesia Arabica Coffee, Robusta Coffee, Banda
Nutmeg, Java Cocoa, Java Batik
Vietnam Buon Ma Thuot Coffee, Do An Huang
Pomeloes, Phu Quoc Fish Sauce
Cambodia Kampung Speu Palm Sugar, Battambang
Rice, Siem Reap Prahoc (fish sauce)
Thailand Chaiya Salted Eggs, Nahornchaisri
Pomeloes, Sriracha Pineapples, Lamphun Thai Silk,
Hom Mali Rice
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Trade Marks - Definition

• Any sign capable of distinguishing the goods or
  services of one undertaking from those of other
  undertakings (TRIPS Agreement, Art 15(1))

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Advantages of Protecting GIs and Trade Marks
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Advantages of Protecting GIs and Trade Marks
(contd)
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GIs and Trade Marks SIMILARITIES
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GIs and Trade Marks DIFFERENCES
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2. Overlap Between Geographical Indications and
Trade Marks

• Conflicts

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Examples of Overlap between GIs and Trade Marks
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Conflicts that can arise from the Overlap

• A geographical name is used as a trade mark and,
  subsequently, that geographical name becomes
  protected as a geographical indication
• A private enterprise applies to register a trade
  mark which incorporates a geographical indication

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3. International Laws Response to the Overlap
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GIs in International Law

• Paris Convention for the Protection of Industrial
  Property (1883)
• Madrid Agreement for the Repression of False or
  Deceptive Indications of Source (1891)
• Lisbon Agreement for the Protection of
  Appellations of Origin and their International
  Registration (1958)
• Agreement on Trade-Related Aspects of
  Intellectual Property Rights (1994) (TRIPS)

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GIs in International Law (contd)

• Paris Convention All ASEAN countries are
  members except for Myanmar and Brunei
• TRIPS Agreement All ASEAN countries are members
  except Laos
• None of the ASEAN countries are members of the
  Madrid Agreement for the Repression of False or
  Deceptive Indications of Source (1891) or Lisbon
  Agreement for the Protection of Appellations of
  Origin and their International Registration (1958)

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Indications of source under the Paris Convention

• Art 1(2) Indications of source or appellations
  of origin are objects of industrial property
  protection
• Art 10(1) In cases of direct or indirect use of
  a false indication, the goods are liable to be
  seized on importation or in the country where the
  unlawful fixation took place
• Art 10bis Protection against unfair competition
  for indications which mislead the public as to
  the nature, the manufacturing process, the
  characteristics etc of the goods

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GIs under the TRIPS Agreement

• Section 3 of TRIPS Agreement (Art 22 to 24)
  Members to grant protection to geographical
  indications
• For all goods other than wines and spirits
• GIs are protected so as to avoid misleading the
  public and to prevent acts of unfair competition
  (Art 22(2))
• Additional protection for wines and spirits GIs
  are protected even if the use by others do not
  mislead the public (Art 23)
• Further negotiations on a multilateral register
  for GIs for wines in order to facilitate the
  protection of GIs for wines (Art 23.4)

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TRIPS Agreements Response to the Overlap between
GIs and Trade Marks

• Art 24(5) Trade mark rights will not be
  prejudiced by the introduction of GI law where
  the trade mark rights have been obtained in good
  faith either
• before the date of coming into force of the TRIPS
  Agreement in a Member State, or
• before the GI is protected in its country of
  origin

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TRIPS Agreements Response to the Overlap between
GIs and Trade Marks (contd)

• Art 22(3) refusal or invalidation of the
  registration of a trade mark which contains a GI
  with respect to goods not originating in the
  territory indicated, if the use misleads the
  public
• Art 23(2) for wines and spirits, refusal or
  invalidation of the registration of a trade mark
  which contains a GI with respect to such wines or
  spirits not having that origin

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4. ASEAN Members Response to the Overlap

• Malaysia
• Singapore
• Philippines
• Indonesia
• Thailand
• Brunei
• Vietnam

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GI protection in ASEAN before TRIPS Agreement

• GIs existed but low level of consciousness that
  GIs are a form of intellectual property
• No specific law protecting GIs
• Incidental protection through trade mark law,
  common law of passing off, consumer protection
  law or trade descriptions law

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GI Protection in ASEAN subsequent to TRIPS
Agreement

• Models of protection
• Sui generis legislation protecting GIs Malaysia,
  Singapore, Thailand
• Specific provisions in trade mark law Indonesia,
  Brunei
• Specific provisions in intellectual property
  code Philippines, Vietnam
• Common law of passing off
• Consumer protection law
• Trade descriptions legislation

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Legislation on Geographical Indications in ASEAN
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MALAYSIA

• Geographical Indications Act 2000
• S28(2) A trade mark which is identical or
  similar to a GI and registered in good faith
  before 15 August 2001 or before the GI is
  protected in its country of origin remains valid
• Trade Marks Act 1976
• S10(1)(d) Prohibits the registration of a word
  which, in its original meaning, is a geographical
  name
• S14(1)(f) Prohibits the registration of a trade
  mark which consists of a GI for goods not
  originating in that territory if the use misleads
  the public as to the true place of origin
• S14(1)(g) Prohibits the registration of a trade
  mark for wines or spirits if the goods do not
  originate in that territory indicated by the GI

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• MALAYSIA (contd)
• S14A Registration of a trade mark is allowed if
  the registration was made in good faith either
• Before the commencement of the Geographical
  Indications Act 2000 or
• Before the GI is protected in its country of
  origin
• Provides for registration of certification marks

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SINGAPORE

• Geographical Indications Act (Chapter 117B)
• S3(2) Prohibits the use of a trade mark which
  contains a GI if -
• (a) the goods did not originate in the place
  indicated by the GI, such as to mislead the
  public
• (b) the use constitutes an act of unfair
  competition
• (c) (d) for wines and spirits if the goods did
  not originate from the place indicated even if
  the true GI is used or the GI is accompanied by
  words such as kind, type, style,
  imitation or similar expressions
• S7(3) The use of a trade mark which is identical
  or similar to a GI is allowed if the trade mark
  was registered or used in good faith in Singapore
  either
• (i) before 15 January 1999 or
• (ii) before the GI is protected in its country of
  origin

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SINGAPORE (contd)

• Trade Marks Act (Chapter 332)
• S7(1)(c) prohibits registration of trade marks
  which consist exclusively of signs which may
  serve to designate geographical origin
• S7(4)(b) Prohibits registration of trade marks
  which deceive the public, for example, as to
  geographical origin of the products
• S7(7) (8) Prohibits registration of a trade
  mark which consists of a GI for wines and
  spirits if the wines and spirits do not originate
  from the place indicated in the GI regardless of
  whether the words 'kind', 'type', 'style',
  imitation' or the like are used
• S7(9) Registration of a trade mark incorporating
  a GI shall not be refused if it has been applied
  for or used in good faith either
• before 15 January 1999 or
• before the GI is protected in its country of
  origin

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SINGAPORE (contd)

• S7(10) A trade mark containing a GI shall not be
  refused registration if the GI has ceased to be
  protected or has fallen into disuse in its
  country of origin
• S22(1) Revocation of registration if the trade
  mark misleads the public as to the geographical
  origin of the goods or services
• S28(1)(b) No infringement if the trade mark is
  used in accordance with honest practices in
  industrial or commercial matters
• Provides for registration of collective marks
• Provides for registration of certification marks

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PHILIPPINES

• Intellectual Property Code of the Philippines
• Protection of Gis governed by the law on trade
  marks
• S123.1(g) Prohibits the registration of a mark
  which misleads the public as to the geographical
  origin of the goods or services
• S123.1(j) Prohibits the registration of a mark
  which consists exclusively of signs that
  designate the geographical origin of the goods or
  services
• S169(b) Civil liability for using marks which
  misrepresent the geographic origin of the goods
  or services
• S170 Imprisonment and penalty imposed on traders
  who misrepresent the geographical origin of their
  goods or services
• Provides for registration of collective marks
• Provides for registration of certification marks

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INDONESIA

• Law No. 15 of 2001 Regarding Marks
• Art 6(1)(c) Prohibits registration of a trade
  mark which is similar with or identical to a
  protected GI
• Art 25(b) of implementing regulations No. 51 of
  2007 It is an act of infringement to use a sign
  which shows that the goods have a comparable
  quality with those protected by a GI
• Provides for registration of collective marks
• Provides for registration of certification marks

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THAILAND

• Act on Protection of Geographical Indications
  B.E. 2546
• S5 Prohibits registration of a GI which is
  contrary to public order, good morals or public
  policy
• Trademark Act B.E. 2534
• S7(2) Prohibits registration of a word which, in
  its ordinary meaning, is a geographical name
• S8(12) Prohibits the registration of a trade
  mark that consists of a GI protected under the
  law on GIs
• Provides for registration of certification marks
• Provides for registration of collective marks

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BRUNEI

• Trade Marks Act (Cap. 98)
• GI protection subsumed under the trade mark
  legislation
• S6(1)(c) Prohibits registration of trade marks
  which consist exclusively of signs which
  designate the geographical origin of the goods or
  services
• S14(2) A registered trade mark is not infringed
  by the use of indication concerning geographical
  origin provided such use is in accordance with
  honest practices in industrial or commercial
  matters
• S51 Provides for registration of collective
  marks
• S53 Provides for registration of certification
  marks

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VIETNAM

• Law on Intellectual Property (No. 50/2005/QH11)
• Art 74(2) Prohibits registration of the
  following marks
• Signs indicating the geographical origin of goods
  or services, except where such signs have been
  widely used and recognised as a mark or
  registered as collective marks or certification
  marks
• Signs identical with or similar to a GI if the
  sign misleads consumers as to the geographical
  origin of goods
• Signs identical with a GI for wines or spirits if
  the wines and spirits do not originate from the
  geographical area bearing the GI

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VIETNAM (contd)

• Art 80(3) A GI which is identical with or
  similar to a trade mark and the use of the GI is
  likely to cause confusion as to the origin of the
  product shall not be protected as a GI
• Art 125(g) No infringement of GI rights where
  the trade mark rights were acquired in an honest
  manner before the filing date of the GI
• Provides for registration of collective marks
• Provides for registration of certification marks

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Summary of ASEAN Members Response
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5. Balancing Rights Between Producers and Trade
Mark Owners
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An exercise in Balancing Rights between
Producers and Traders?

• ASEAN Members have incorporated provisions to
  balance the rights between GI owners and trade
  mark owners
• Scope of the balance differs in each member state
• Q Whether the balance is optimal?

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THANK YOU