1. The Relevance of Collective Marks, Certification Marks and Geographical Indications
WIPO Training of Trainers Program for SMEs
Kuala Lumpur
February 21 – 25, 2011

2. Overview
Introduction
Collective Marks
Certification Marks
Geographical Indications

3. Introduction

4. Why “specific” marks might be of interest for your business?
SMEs often face double competition from other traditional artisan products and standardized industrial products
Need to obtain consumer recognition and customer loyalty
SMEs often find it difficult individually to develop a powerful marketing campaign that will enable them to position their products and create a reputation for their goods that will attract consumers
the small scale of production
SMEs often face double competition from other
traditional artisan products and standardized industrial products

5. “If you can’t beat them, join them”
Working collectively, SMEs can benefit from economies of scale and broader brand name recognition shifting from just production to the marketing in the same manner as larger companies
Trademark Shared marks:
Collective marks
Certification marks
Geographical Indications
Joint marketing
reference to the reputation
and to certain qualities
of the products
Individual marketing

6. Why “specific” marks might be of interest for your business?
The requirements and conditions for protection vary considerably from country to country
Art of playing on several fronts
Particular choice - a question of
legal feasibility and
the socio-economic priorities of the members

7. Collective marks

8. Collective marks
Signes used to distinguish certain valued characteristics common to the products of the members of an association/cooperative
e.g. geographical origin, material, mode of manufacture
Registered in the trademarks registry
Typically, the owner of the collective mark is an association/ cooperative of which entrepreneurs/artisans are members
The owner does not use the mark for commercial purposes, but to advertise and promote the products/services of its members who sell their products under the collective seal
Function of Collective Marks is to inform the consumers about:
about the origin of the products (artisan, member of a specific association)
about a level of quality or accuracy, geographical origin, or other features set by the association

9. How does a Collective mark work?
Rules of use
persons authorized to use
criteria for membership
conditions of use
e.g. particular features/qualities of the products
sanctions against misuse
Authorization to use
membership
application or automatic
comply with the rules
no licenses
Control

10. Collective marks Cooperation on all stages
Creation of an association/consortium
Set of products characteristics and quality standards
Set of rules to use the collective mark and sanctions for non-compliance with the standards and regulations
Common marketing and communication strategy
Possibility for members to use their own trademarks along with the collective mark

11. Benefits for the SMEs
Economies of scale (registration cost, advertising campaign, enforcement, etc.)
2. Reputation acquired on the basis of common origin or other characteristics of the products made by different producers/traders
Framework for cooperation amongst local producers/traders
4. Collective marks can become powerful tool for local development and harmonization of products/services, enhancement of quality
An effective tool for joined product development, marketing and branding domestically and internationally
Might be a tool to overcome the some of the challenges assosciated with SME’s size and isolatipon in the market place
Might be also a tool for “shared” value-adding strategy based on links with cultural, social, geographical characteristics of traditional products
A framework for cooperation between local producers
Collective «re-inventing» of traditions or setting quality standards and production processes

12. Strategic considerations:
Might be a good strategy that leaves the door open for later protection as GI for various reasons:
Lack of regulatory framework for GIs
The mere convenience of being able to operate quickly
Protection of the market: “Closed” character of the mark
In cases when products cannot apply for GI in a given country

13. Case Study: “La Chamba, Tolima”
Chamba ceramics
Added value:
traditional know-how transferred from generation to generation
89%: handwork or with simple tools
Areas of improvements:
Organization and management
Exploitation of mines
Product design and development
Marketing: Certification “Hecho a Mano” (handmade)
forming an association and registration of a collective mark
Problem:
Added value (handmade, tradition, quality) of the product not advertised
No stimulation for export
Need to find new clients, enter new markets
Solution:
design as a differentiated value of ceramics
tradition and innovation (new products for new demands)
merging supply and demand
Problems:
supply not merged with demand
little product variety
some products out of production (stewpans)
little enterprise management capacity
paternalism
individual leaders
lack of organizational structure
cooperation
development of enterprise management capacity
common strategy
Certification “Hecho a Mano” (handmade)
Zero custom duties for exportation
Creation of culture of CONSISTENT QUALITY
Collective Mark (joint project WIPO)
Association:
members allowed to use the collective mark
exchange of experiences
joint advertising and promotion
Regulation of use:
production process (mine extraction, preparation of clay, moulding, heating, glazing)
quality control and inspection
 homogeneous products
Objectives:
strenghten image of Chamba ceramics
reputation of consistent quality and tradition
differentiate on the market Chamba ceramics from other ceramics
preserve cultural heritage
foster commercialization

14. Case Study: “Iran’s carpets”
Iranian carpets woven in the various regions of the country are known for the distinctive characteristics associated with each region: traditional motifs, the type of knots and methods used while weaving, the dyes based on local plants, etc.
Local cooperatives and guilds have for many years used collective marks to protect these regionally specific characteristics
Current availability and use of GI for protection
But now the Iranian parliament has also approved a Law for the Protection of Geographical Indications (2005), which further strengthens the hand of carpet weavers to safeguard the distinctive elements which make the carpets of their region special. 14

15. Certification marks

16. Certification marks
Distinctive signs used to indicate compliance with standards and characteristics pre-established by the owner of the mark
- in respect of origin, materials, mode of manufacture, quality, accuracy or other characteristics
but are not confined to any membership
Registered in trademarks register
Owner is usually an independent enterprise, institution, governmental entity, etc. that is competent to certify the products concerned

17. How does a certification mark work?
Regulation of use
features of the products that are certified
conditions of use
control
proceedings against unauthorized use
Autorization to use
anyone who meets with the prescribed standards
not confined to membership
generally: licence agreement (fee)
owner not allowed to use
Control

18. Benefits for SMEs Adding value strategy:
The message conveyed by a certification mark is that the products have been examined, tested, inspected, or in some way checked by a person who is not their producer, by methods determined by the certifier/owner
Benefit from the confidence that consumers place in users of certification mark
Strengthen reputation
For consumers: Guarantee for consumers of certain quality
«Voluntary certification»
Importance for export

19. Certification marks For example, certify that: product is handmade
certain ecological requirements have been respected in the production procedure
no children were employed in the production process
products have been produced in specific geographical region
products are made 100% of recyclable materials
products are made by indigenous group
Especially in the US certification marks are a widespread legal means of recognizing and protecting GI. The proprietor is usually a federal state or producers association. There are many products protected in the EU by registered GIs, which in the US are registered under a certification mark that guarantees both the origin and the qualities of the product: Manchego cheese from Spain and Roquefort from France
One of the Indonesian government’s ways of protecting its traditional Indonesian heritage takes place in the field of batik textiles. One goal is to establish the world’s perception that Javanese batik-patterned textile, which includes the traditional practice of dying cloth through wax-resist methods, originates from Indonesia. government now issues a certification mark, called “Batikmark”, through its Department of Industry (Departemen Perindustrian RI) that can be applied to properly certified Indonesian batik products.
The first purpose of having “Batikmark” certification is to assert Javanese batik-patterned textile as an Indonesian traditional cultural heritage. Further, the “Batikmark” certification also serves as a quality assurance label for batik-patterned textile that originates from Indonesia. This helps protect consumers of Javanese batik-patterned textiles by assuring that the consumers are indeed purchasing an original Indonesian Javanese-batik patterned textile that has been certified by an authorized national institution. Lastly, “Batikmark” certification is meant to face competition of other similar or almost identical products on the market and to overcome the threat of unauthorized copying of Indonesian Javanese batik-patterned textile by foreign textile manufacturers. These practices have been ongoing, as many Asian and African countries have been copying Indonesian batik patterns.
Indian “SILK MARK” and “Handloom” marks
Indonesian “Batikmark”

20. Case study: Egyptian Cotton (ECL)
Madrid Registration # from
Nice Classification: 22 Coton brut
Alexandria Cotton Exporters Association, Egyptian Ministry of Economy and Foreign Trade (1932)
Registered in 58 countries, the Egyptian Cotton mark guarantees the product is made of 100% Egyptian Barbadense cotton
A licensing scheme for commercialization and promotion of Egyptian cotton
Licensing agreements with two leading textile firms in the United States
Authorizing the latter companies to use the logo on their products made of Egyptian cotton in the United States of America and Canada
80,000 tons of Egyptian cotton were exported in the fiscal year

21. Case Study: “RUGMARK” and “GoodWeave”
Global non-profit organization RugMark International (RMI)
15 years of protecting children and promoting ethical carpet and rug production, working to end child labor and offer educational opportunities for children in India, Nepal and Pakistan
RugMark and GoodWeave labels assure that no children under age 14 were employed by the facility responsible for making the labeled rug
GoodWeave’s five-country network, operating in both producer (India and Nepal) and consumer countries (U.S., U.K. and Germany) through:
Standard-setting, Monitoring and Certification
Rehabilitation and Education to Child Workers
Child Labour Prevention
Market Promotion and Expansion
International Governance and Accountability

22. Case Study: “Oeko-Tex”
Association for the Assessment of Environmentally Friendly Textiles
The Oeko-Tex® system provides the textile and clothing industry with a globally uniform standard for assessment of harmful substances, testing and certification of raw materials, intermediate and end products at all stages of processing throughout the manufacturing chain, including accessories
The tests for harmful substances in textiles specified in the Oeko-Tex® Standard 100 were first introduced in 1992
Oeko-Tex® Standard 1000 for production ecology in 1995

23. Case Study: “Oeko-Tex”
The Oeko-Tex® Standard 1000 requires that companies: • comply with specified criteria to avoid or limit the use of harmful substances in production • observe stringent limit values relating to waste water and exhaust air • optimise their energy consumption • ensure low noise and dust pollution • introduce measures to ensure safety at work
The use of child labour is prohibited

24. Collective Mark
Only members that comply
Control by association
Simple authorization
Free use
Owner allowed to use
Cooperation
Certification Mark
Anyone who complies
Control by independent entity: stronger
Authorization through license agreement
Fee
Owner not allowed to use

25. 3. Geographical Indications

26. Geographical indication (GI)
Sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that place of origin
“Champagne,” “Cognac,” “Roquefort,” “Chianti,” “Tequila”
“Swiss” for watches, “Arita” (Japan) for ceramics, “Hereke” (Turkey) for carpets, “Argan oil” (Morocco)
‘Sarawak Pepper’, ‘Sabah Tea’, ‘Tenom Coffee’, ‘Borneo Virgin Coconut Oil,’ ‘Sabah Seaweed’
Malaysia: Geographical Indications Act 2000

27. How does a GI work? Authorization to use Collective right of use
Each enterprise located in the area has right to use
For products originating from that area  LINK
Subject to certain quality requirements
Link between product and place
Place where product is produced (industrial products, crafts)
Place where product is extracted (clay, salt)
Place where product is elaborated (liquor,cheese)

28. How does a GI work?
Unauthorized persons may not use GIs if such use is likely to mislead the public as to the true origin of the product
for not originating from geographical place
for not complying with prescribed quality standards
stronger protection for wines & spirits

29. GI – Who does what? Government: supplies the legal framework
approves GIs, verifies compliance
“external” (independent) control system + enforcement
Producers groupings:
collectivization
talk to government
help define the mandatory specifications to be met
‘’internal” quality control
The initial external technical, legal, financial and promotional help is essential

30. Benefits for SMEs
GIs shift focus of production to quality and marketing the products of regional origin
economies of scale for small producers
increased production
local job creation
Reward producers with higher income in return for efforts to improve quality
Provide consumers with high-quality products whose origin and mode of production is guaranteed

31. Disadvantages Registration Only similar goods
Inconsistent protection
Absence of GI system in many countries
Civil law
Registration
Only similar goods
Common law
Repution enough (e.g. Champagne in India)
Also dissimilar products
Additional protection for wines and spirits
2. International protection depends on national protection
3. GIs may become generic terms

32. GI
Protects indication that links product’s origin and quality/reputation based on that origin
Most often: public right; owner= State
Anyone can use
Proscribed list of unauthorized actions
Action: private + public
Certification
Protects certification of product’s particular characteristics (not necessarily origin)
Most often: private right; owner = trade association or producer group
License needed
Protection against those who don’t have license
Action: owner of certification

33. GI protection in Malaysia
1) What is Geographical Indication? Geographical Indications Act 2000 defines geographical indication as an indication which identifies any goods as originating in a country or territory, or a region or locality in that country or territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin. 2) Does Malaysia have product that qualifies to be registered under Geographical Indications Act 2000? Malaysia has a number of goods that can be registered as geographical indications. These goods have been commercially exploited at local and international market for example ‘Sarawak Pepper’, which is a pepper-based product produce in Sarawak. This pepper has gained reputation and recognition at international level due to the quality of the pepper. In addition, ‘Sabah Tea’, ‘Tenom Coffee’, ‘Borneo Virgin Coconut Oil’ and ‘Sabah Seaweed’ are the registered geographical indication goods in Malaysia. These four geographical indications are from Sabah.

34. GI protection in Malaysia
3) Is geographical indication applicable only to an agricultural product? Geographical indication is not limited to agricultural product. It can also be used on natural product such as Langkawi Gamat and any product of handicraft like Terengganu Songket, Kelantan Batek and food products such as Papar Belacan and Kelantan Budu. 4) Is registration of geographical indication compulsory? Registration of geographical indication is not compulsory. However, registration of geographical indication is encouraged to protect the interest of producer and consumer. The registered proprietor of geographical indication has the exclusive rights to exploit the geographical indication and gains recognition at domestic and international level. 5) Can an individual register a geographical indication? Registration of geographical indication is based on an affiliation ownership concept for the producers who are carrying on an activity in that specified geographical area and not an individual ownership concept. Geographical indication can also be registered by the competent authority such as local authority, government agency, statutory body; and trade organization or association.

35. GI protection in Malaysia
7) What is the duration of protection of geographical indication? A registered geographical indication is protected for ten years from the date of filing and is renewable for every ten years as long as it is still in use. 8) What is the scope of protection of a geographical indication in Malaysia? Geographical indication’s protection in Malaysia is territorial. To seek protection in other countries, application must be filed with the respective countries. 9) What is the difference between geographical indication and trade mark? Trade marks is a mark which distinguishes the goods and services of one trader from those of another. It gives its owner the right to exclude others from using the trade marks. On the other hand, a geographical indication indicates where the goods are produced and has characteristics that are attributable to the place of the geographical origin. In addition, the geographical indication goods may have different trade marks amongst the traders as long as the geographical indication goods produce by the registered proprietor of geographical indication.

36. GI protection in Malaysia
10) What action can an aggrieved party commence in the event a geographical indication has been falsely represented to the public? Any aggrieved party may file an action in the High Court (Intellectual Property).
Source:

37. Case Study: “Pochampally Ikat” (India)
Pochampally is a small town in Nalgonda district of Andhra Pradesh. Known for its handloom fabric having unique traditional designs, Pochampally Ikat, for centuries
Special technology of tie-and-dye is used for making the designs
Material is either cotton or silk or a combination of the two only.
Having a unique single, combined or double Ikat in several illustrations
Misappropriation: manufacture and marketing of products with Pochampally name and design by large mills outside Pochampally using power looms
Reduced Income for about 5000 handloom weavers
KAT - is a type of weaving where the warp, weft or both are tie-dyed before weaving to create designs on the finished fabric. . Kno
Based on “Capturing & Protecting Intangible Value Using IP The Pochampally Ikat Case” by T C James 37

38. Case Study: “Pochampally Ikat”
The Governmental Textiles Committee launched a cluster initiative to facilitate the local associations “Pochampally Handloom Weavers’ Coop. Society Ltd”
Associations obtained registration of various IP rights such as copyrights, trade marks, designs and geographical indications during
Financial, Technical & Legal Support
Awareness seminars and workshops were organised
Obtaining of GI protection for the Pochampally handloom sari from unfair competition and counterfeit
Based on “Capturing & Protecting Intangible Value Using IP The Pochampally Ikat Case” by T C James

39. Case Study: “Pochampally Ikat”
Media attention on Pochampally Artisans
Motivation & Morale boost for Weavers
Networking and social cohesion among the weavers
Increased market penetration % increase in sales
Launching an internet site with selling options
Increased Investment: Pochampally Handloom Park
Enforcement of the Geographical Indications for preventing copying & passing off
Establishing the legal identity in the international market – Creation of brand image
Setting up of mechanisms for quality control
Based on “Capturing & Protecting Intangible Value Using IP The Pochampally Ikat Case” by T C James

40. Conclusions
Collective marks, certification marks and GIs may be useful (additional) tools to help enterprises overcome the disadvantages associated with their small size and isolation in the marketplace
May be a core element of a collective value-adding strategy around a traditional product of regional origin based on quality and differentiation
Careful choice of product to which value is to be added, equitable management and coordination of joined efforts, choice of suitable legal means for protecting, strict quality control are the core elements of success

41. Thank you for your attention!