Presentation on theme: "The Protection of the Protected Geographical Indications in Europe TAIEX Seminar on Trade Marks and Designs Warsaw November 28 Rafael Fernández Ibiza."— Presentation transcript:
1The Protection of the Protected Geographical Indications in Europe TAIEX Seminar on Trade Marks and Designs Warsaw November 28 Rafael Fernández Ibiza
21. Legal Overview 1.1Legal Frame: Council Regulation (EC) No 510/2006 on the protection of Geographical Indications and Designations of Origin for Agricultural products and Foodstuffs.Council Regulation (EC) No 1493/1999 of 17 May 1999 on the common organisation of the market in wine.Council Regulation (EEC) No 1576/89 of 29 May 1989 laying down general rules on the definition, description and presentation of spirit drinks.
31. Legal Overview1.2.- WINES GIsNot really UE registration but recognition (art 47).Registration at national levelEU Committee recognices the Geographical Indicationthen protection in the EU (art 50):against identical copies of the nameagainst similar namesagainst “type” clausesagainst “semi-generic”- Protection granted to recogniced group of producers
41. Legal Overview 1.3.- SPIRITS Not really UE registration but recognition (art 5)registration at national levelEU Committee recognices the Geographical Indicationthen protection in the EU1.4.- MANUFACTURED PRODUCTS- only under national legislations if possible
51. Legal Overview 1.5.- FOODSTUFFS REGISTRATION PRODUCTS: cheese, sweets, hams, oils, fruits and vegetables, flowers, fish, coffee, chocolate, wool, beer, vinegars, etcnot elaborated products: noodles, ice cream, foods …No registration at national levelbut national procedure: application before national Department of Agricultureprovisional protection in country of originex auto protection in UE
61. Legal Overview1.5.- AGRICULTURAL PRODUCTS AND FOODSTUFFCreation: RECORDProcess established on Rule 510/2006 and national legislation.Application made by producers through the Member States.Product Specifications: product specifications in relation with the origin and/or product elaboration and the product as such.Application opened to third countries (art. 12).
82. EC Reg. 510/06 REGISTRATION2.1.- CHOOSING A MODEL: PDO Or PGI? (Art. 2)Protected Designations of Origin (art. 2.1.a)Region and specific places names, and excepcionally country names.Product original from that region.Quality or characteristics due to the geographical environment + human factors.Production, preparation and processing in the geographical area.Protected Geographical Indications (art. 2.1.b)Region name.Quality or reputation due to the geographical environment.Production and/or preparation and/or processing in the geographical area.
92. EC Reg. 510/06 REGISTRATION 2.2.- APPLICATION Application for registration:FreePrevious requirements:Member States: filing before national authorities and national examination procedure.Third countries: national protection.Who can make the application?The member state after of the producers application.Third countries: also the producers directly.Who will receive the application?The European Comission, the Directorate-General of AgricultureThe application should include at least:The state application of register.Declaration of the Member state stating that they meet the verification process.Product specifications.Single Document (short description)The documents sent to the European Commission should be in one of the languages of the Member States.
102. EC Reg. 510/06 REGISTRATION Scrutiny by the Commission: DG AGRI will scrutinise:Formal requirements (required documents).Material requirements (Product Specifications).It will examinate at the same time three applications for each country.They could make some consultations requesting aditional information:About the product specifications or the single document.They have 6 months to answer.The DG AGRI will make some consultations to other deparments of the European Commission in order to know their remarks.If the requirements are fulfilled: publication at the Official Journal of the European Union.
112. EC Reg. 510/06 REGISTRATION 2.4.- OBJECTION TO THE REGISTRATION: Within six months from the date of publication in the Official Journal of the European Union with a duly substantiated statement.Active legitimation:Member State.Third State member of the WTO.Objection requirements:No compliance with the legal conditions.Geographical name which has become generic.Procedure:Consults between the states.Juditial way.
122. EC Reg. 510/06 REGISTRATION 2.5.- THE PRODUCT SPECIFICATIONS: Basic document of the PDO/PGI.Technical document with some specifications and protected products characteristics.Legal document which stablish some obligations for the PDO/PGI members.Two main functions:Explaining and substantiating the reasons to protect the product.Stating some obligations for the PDO/PGI producers.
132. EC Reg. 510/06 REGISTRATION PDO/PGI Name. In exceptional cases a name of a country.Relations with Intellectual Property Rights.Description of the product characteristics:Different product varieties and ripe stages.Organoleptic characteristics.Definition of the Geographical Area:Clear and precise.
142. EC Reg. 510/06 REGISTRATION2.6.-THE PRODUCT SPECIFICATIONS. CONTENT:The link between the product and the geographical area:Natural factors (weather, soil, pluviometry,…)Human factors (traditions, cultural aspects,…)Prestige and reputation (historical and current papers including promotion activities).Description of the obtaining and elaboration methods:Harvesting peculiarities.Special and traditional elaboration process.Characteristics of the human´s influence over the product.
152. EC Reg. 510/06 REGISTRATION Control structures: Independent body which shall guarantee the fulfilment of the Product Specifications.The product certification bodies shall comply with the European Standard EN or ISO/IEC Guide 65.Product trazability.Details about labelling:Use of their own logoFulfilment of the national legal requirements:National recognition as a PDO/PGI
163. CONSEQUENCES 3.1.- EXCLUSIVE RIGHT: (ex art. 13) exclusivity on the geographical namefor the products that have been protected (same or similar)within the 25 states of EU.3.2.- IUS PROHIBENDI (Art. 13)direct or indirect commercial use of the geographical nameacts implying misuse, imitation or evocation even though the real origin of the product is indicated.the use of the name simply translated or associated to expressions such as “type”, “style”, “method”, “as produced in” or similar.any other false or misleading indication as to the provenance, origin, nature or essential qualitities of the product liable to convey a false impression as to its originany other practise liable to mislead the consumer as to the true origin of the product
173. CONSEQUENCES “Grated cheese ITALIAN style” Know this cheese? Parmesan’sTypical knife
193. CONSEQUENCES 3.3.- INTERPRETATION of ECJ JURISPRUDENCE COMPOSED DESIGNATIONS. One single part of the designation cannot be protected by sole right, due to its genericity.The national judge shall decide in any case(EPOISSES DE BOURGOGNE, 9 june 98, Cases C-129/97 C-130/97)VIOLATION, IMITATION, EVOCATION. In order to define whether exists likelihood of confusion it has to be carried out a global analisis over the elements that are present in the product(GORGONZOLA Case, 4 march 99, Case C-87/97)TRANSLATION. In no case translations will be considered as generic names ( Case PARMESAN, 25 june 02, Case C-66/00)CUT AND PACKED BY. Compulsory reminder if it appears in the technical specifications(PROSCIUTTO DI PARMA, 20 may 03, Case C-108/01)
203. CONSEQUENCES 3.4.- CONFLICTS WITH TRADEMARKS (art. 14) It has to be analyzed case by caseIt is impossible to register a trademark if a Designation has been filedIt is possible the coexistence of a registered trademark, used in good faith and registered before the filing of a DesignationIt is required the good faith of the trademark owner!It is not possible the registration of a Designation in case a well-known trademark already exists and if the existing sign can lead to confusion or result misleading to the consumers about the origin of the products
21PDO/PGI EUROPEAN LOGO 3.5.- PDO/PGI EUROPEAN LOGO compulsory use of the Logo on packagingcontroversy when product used as an ingredientEC Regulation 1726/1998:distinctive signsame for PDO/PGI(also the same for STG)Minimun size (15 mm diameter)colours (pantone standards)no fading or hiding the logo