GEOGRAPHICAL INDICATIONS AND COLLECTIVE MARKS Intellectual Property and Competitive Law GEOGRAPHICAL INDICATIONS AND COLLECTIVE MARKS Matteo Pegoretti Alessandra Rauccio Chi XI

Geographical Indications “Indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.” (TRIPs Art. 22) Examples: Idaho potatoes, Napa Valley wine, Melinda apples.

Geographical Indicators U.S., Australia, Canada and others: Private rights to be enforced by right holder. Subject to priority rules (a later-in-time GI cannot trump an earlier established trademark) European view: Monitored and enforced by the government. Trump pre-existing trademarks containing the terms. (would repatriate generic terms). Debate has revolved on the issue, and the amount of protection that should be afforded to Gis. The U.S., Australia, Canada and others, have held that GIs are private rights to be enforced by right holder. Thus, GIs are intellectual property and are subject to priority rules: In this respect a later-in-time GI cannot trump an earlier established trademark containing the term. The view offered by many countries of Europe is that GIs are to be monitored and enforced by the government. Also, GIs trump pre-existing trademarks containing the terms. Under this view, terms that have become generic would be protected again.

Geographical Indications as Certification Marks Geographical Indications are a subset of trademarks because they are source-identifiers, guarantees of quality, and business interests.

Geographical Indications as Certification Marks Geographical indications can be protected through a trademark system: As certification marks or; As collective marks. The United States has found that by protecting geographical indications through the trademark system as certification and collective marks, which are types of trademarks. Under this approach, a country can provide TRIPs consistent levels of protection to GIs, either of domestic or foreign origin.

Certification Marks A certification mark is a type of trademark which indicates to consumers: geographic origin of a product; materials used, quality, method of manufacture, and accuracy; or products made under the auspices of, or by members of, a specific trade union or organization. A certification mark is any word, name, symbol, or device to certify some aspect of a third parties’ goods or services. - The characteristics to which the certification can relate include: 1) geographic origin; 2) materials used, quality, method of manufacture, and accuracy; or 3) Can also denote products made under the auspices of, or by members of a specific trade union or organization

Protection and certainty for consumers Certification Marks Given for compliance with defined standards, but are NOT CONFINED to any membership Used by ANYONE who can certify that the products involved meet certain established standard Protection and certainty for consumers be used by a specific group of enterprises, e.g., members of an association, while certification marks may be used by anybody who complies with the standards An important requirement for certification marks is that the entity which applies for registration is considered "competent to certify" the products concerned.

“Egyptian Cotton” Application Serial No. 76-229673 For (a variety of products made wholly or substantially of Egyptian cotton) “The certification mark, intended to be used by authorized persons, is intended to certify that the products identified above contain 100% Egyptian Barbadense cotton.” Egyptian for Cotton

“Parmigiano Reggiano” U.S. Trademark Registration Nos. 1,754,410; 1,892,496; 1,896,683; 2,320,595 For “Cheese” “The certification mark, as used by person authorized by the certifier, certifies that the goods originate in the Parma-Reggio region of Italy, specifically the zone comprising the territory of the provinces of Parma, Reggio Emilia, Modena and Mantua on the right bank of the river Po and Bolgona on the left Bank of the river Reno.”

Collective Marks Collective marks Signs which distinguish the geographical origin, material, mode of manufacture, quality or other common characteristics of goods or services of different enterprises. The owners: associations, public institutions, cooperatives. Proprietors of collective marks can exclude people from using the mark. Collective marks Can function as trademarks or service marks for the products or services of the group members (such as USA Apples) Can also be used to identify group members (“Girl Scouts of America”). Proprietors of collective marks can exclude people from using the mark, by granting or denying membership in the collective.

Application for registration Collective Marks The owner of the collective mark is responsible for ensuring the compliance with certain standards Information for the public about certain particular features of the product for which the collective mark is used Application for registration

Characteristics promote products which are characteristic of a given region provide a framework for cooperation between local producers add powerful tools for local development enhance product recognition develop of certain standards and criteria and a common strategy overcome some challenges associated with small size and isolation in the market

Collective Mark and Trademark CM can be used together with the individual trademark of the producer of a given good differentiate their own products from those of competitors benefit from the trust of the consumers in the collective mark

Protection “Members shall ensure that enforcement procedures … are available under the law to permit effective action against infringement of intellectual property rights…” “expeditious remedies” “constitute a deterrent” TRIPs Article 41, provides the general framework on how Members should enforce IP Rights. It states that: Members shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. Key provisions are: effective action, expeditious remedies and that they be deterent to prevent future infrinegement.

Regulation of Collective Mark in Italy 1.The persons who assume the function of guaranteeing the origin, nature or quality of specific goods or services may obtain registration for relevant marks as collective marks and shall have the right to authorize producers and merchants to use such marks. Who can apply collective mark? 2.The regulations governing the use of collective marks, their supervision and the relevant sanctions shall be attached to the application for registration; any amendment to such regulations shall be communicated by the proprietors to the Italian Patent and Trademark Office referred to in Article 52, below, for inclusion in the documents attached to the application. Core part of application of collective mark

Regulation of Collective Mark in Italy 3.The provisions of paragraphs 1 and 2 shall also apply to foreign collective marks registered in their countries of origin, provided that such country affords reciprocal treatment to Italy. Available for foreign application 4. In such case, however, the Office may refuse a registration, by means of a decision stating its grounds, if the marks applied for could create a situation of unjustified privilege or be otherwise detrimental to the development of other similar initiatives in the region Refuse to registration of collective mark

Melinda® “Consorzio Melinda” cooperatives association: small- scale local producers (over 5,000 members) organized in 16 cooperatives strongly related to the specific geographical origin: Val di Non same material, mode of manufacture and other common characteristics of goods and services involved in the production the same production techniques: the integrated production process

Product specifications a strict regulation rules governing producers and growing techniques: to quality control and packaging The regulation indicates the guidelines for producing superior quality apples while respecting the standards dictated by the consumer and calls for explicit control measures to verify that producers observe the standards. which all members must respect in order to use the Melinda brand on their apples

Madrid system trademark registration To protect the trademark in several countries by simply filing one application directly with the national or regional trademark office equivalent to an application or a registration of the same mark effected directly in each of the countries it is possible to record subsequent changes or to renew the registration through a single procedural step.

Melinda® The brand awareness of Melinda® gives the Consortium the chance to differentiate these apples from the others in order to gain a premium price. Melinda is the most famous and most often acquired apple brand in Italy. ….representing over 60% of apple production from the Trentino region, 10% of Italian production, and 5% of European production.

Melinda® products: Melinda Apples: Golden, Gala, Red Delicious, Renetta [...] Melinda Juice Melinda Snacks Melinda Mousse Melinda vinegar

Using Melinda® overcome the challenges associated with small size and isolation in the market place local development “Over the years, Melinda has been able to combine traditional production with modern marketing techniques to better compete with a quality product with a distinctive identity, reputation and image in the domestic and export markets”