Worldwide Symposium on Geographical IndicationsParma, 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.
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 relativelyhigh 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 islimited & 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