Professional Documents
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Wipo Pub 952
Wipo Pub 952
Indications
An Introduction
Disclaimer: The information contained in this publication is not meant as a substitute for professional legal advice.
Its main purpose is limited to providing basic information.
Foreword
This publication provides an introduction to geographical indications (GIs), explaining
their basic features, use and protection as an intellectual property right. Written for
non-experts, it is a starting point for readers seeking to learn more about the topic.
This publication was prepared by the Design and Geographical Indication Law
Section of the World Intellectual Property Organization (WIPO), composed of María
Paola Rizo, Nathalie Frigant and Violeta Ghetu, under the supervision of Marcus
Höpperger. The authors express their sincere thanks to Daphne Zografos, Traditional
Knowledge Division of WIPO, Matthijs Geuze, International Appellations of Origin
Registry of WIPO, and Valentina Jiménez-Burger for their valuable comments.
Table of contents
page 6 18 Geographical indications as
a means to preserve traditional
knowledge and traditional
Introduction
cultural expressions
page 8
page 21
Key concepts
Developing a geographical
8 What is a geographical indication? indication – what is involved?
GIs have traditionally been considered to The period following the conclusion of the
be IP. Article 1(2) of the Paris Convention Paris Convention saw numerous efforts
for the Protection of Industrial Property aimed at increasing the level of multila-
of 1883 (Paris Convention) refers to “in- teral protection afforded to indications of
dications of source” and “appellations of source and appellations of origin, which led,
origin” as objects of industrial property. among others things, to the adoption of
Paragraph (3) of the same article speci- the Madrid Agreement for the Repression
fies that the term “industrial property” is of False or Deceptive Indications of Source
not limited to “industry and commerce” on Goods of 1891, and the Lisbon Agree-
proper, but applies also to agricultural and ment for the Protection of Appellations of
extractive industries and to all manufac- Origin and their International Registration
tured or natural products, such as “wines, of 1958 (Lisbon Agreement), and to the
grain, tobacco leaf, fruit, cattle, minerals, inclusion, in the TRIPS Agreement, of a
mineral waters, beer, flowers and flour”. special section on GIs.
6
There is an abundant literature addressing Success stories from the world of GIs
the legal effects, rights and obligations demonstrate that GIs, if well managed, are
flowing from the various multilateral agree- intangible assets with interesting potential
ments on GIs, as well as an ever-growing for product differentiation, the creation of
number of bilateral agreements containing added value, as well as spin-off effects in
chapters on GIs. This publication offers areas related to the primary product for
an introduction to GIs for readers new to which the GI is known.
the subject. It provides an overview of key
definitions, basic policy considerations
concerning the protection of GIs and an
introduction to salient IP law-related issues.
7
Key concepts
What is a geographical indication?
…indications which identify a good as originating in the territory of a Member [of the World
Trade Organization], or a region or locality in that territory, where a given quality, reputation
or other characteristic of the good is essentially attributable to its geographical origin.
8
Most commonly, a GI consists of the name ROQUEFORT
of the place of origin of the good, such
as “Jamaica Blue Mountain” or “Darjeel- A product, a region
ing”. But non-geographical names, such Roquefort identifies a characteristic blue
as “Vinho Verde”, “Cava” or “Argan Oil”, cheese made in a region in southwest France,
or symbols commonly associated with a around the municipality of Roquefort-sur-
place, can also constitute a GI. In essence, Soulzon.
whether a sign functions as a GI is a matter
of national law and consumer perception. The cheese is smooth and compact, with even
blue veins, a very distinctive aroma, slight
Moreover, in order to work as a GI, a sign scent of mould and a fine, robust taste. It is
must identify a product as originating in made from raw, whole sheep’s milk from the
a given place. In addition, the qualities Lacaune breed. Before it is pressed, the raw
or reputation of the product should be cheese is cultured with spores of penicillium
essentially due to the place of origin. roqueforti. It is then aged for at least 14 days in
Since the qualities depend on the geo- natural caves in the foothills of the calcareous
graphical place of production, there is a cliffs in the region. Aging continues outside
link between the product and its original the natural caves for at least 90 days from the
place of production. date of its manufacture.
Source: www.inao.gouv.fr
Confédération générale des producteurs de lait de
brebis et des industriels de Roquefort, www.roquefort.fr
9
Photo: CIGC
Can geographical indications only
be used for agricultural products?
10
SWISS WATCHES According to that Ordinance,
the geographical indication
The appellation “SWISS” (or, in its most com-
“Switzerland” or “Swiss” can
mon form, “Swiss Made”) affixed to a watch
be used on a watch if:
means that the watch was manufactured in
• its technical development is carried out
Switzerland according to the tradition, know-
in Switzerland;
how and quality criteria of Swiss watchmaking,
• its movement (the motor of the watch)
which enjoys a great reputation around the
is Swiss;
world. But, what are the standards associated
• its movement is cased up in Switzerland;
with the geographical indication “Swiss Made”
• the manufacturer carries out the final
for watches?
inspection in Switzerland; and
• at least 60% of the manufacturing cost
The Federal Council Ordinance of December
are generated in Switzerland.
23, 1971 to regulate the use of the “SWISS”
appellation for watches was partially revised
A movement is considered
on June 17, 20162 at the request of the industry,
to be Swiss if:
in order to strengthen the protection of the
• it has been assembled in Switzerland;
geographical indication. According to the
• the technical development is carried out
Federation of the Swiss Watch Industry, the
in Switzerland;
intention is to “guarantee satisfaction of the
• it has been inspected by the manufacturer
consumer who, when buying a Swiss made
in Switzerland;
watch, expect it to correspond to the quality
• at least 60% of the manufacturing cost
and the reputation of Swiss watchmaking
are generated in Switzerland; and
tradition and therefore to be manufactured in
• the components of Swiss manufacture
Switzerland and to incorporate a high added
account for at least 50% of the total
value of Swiss origin.”
value, without taking into account the
cost of assembly.
Photo: © Richemont
Source: Revised Ordinance governing the use of the appellation “Switzerland” or “Swiss” for watches,
of December 23, 1971. See also the website of the Federation of the Swiss Watch Industry at www.fhs.ch
11
CHULUCANAS (CERAMICS) to better shape it. The first colors, derived
from natural sources such as leaves and soil
The region of Chulucanas – in the province pigment, are added. Then the pieces are placed
of Morropón, Department of Piura (in Peru) in an oven and submerged for hours in the
– produces a unique type of ceramic officially smoke of burning mango leaves, which give
labeled with the appellation of origin “Chulu- Chulucanas pottery its characteristic black
canas”. Chulucanas pottery has been made for color. To complete the piece, the ceramic is
centuries and is unique due to the particular polished by hand with a black stone, to give
traits of the endemic natural resources used, it a brilliant shine.
such as local clay, and the ancient and ancestral
techniques employed. In 2006, the “Asociación de Ceramistas Vicús,
the “Asociación Civil de Ceramistas Tierra En-
The main natural components of Chulucanas cantada” and the “CITE Cerámica de Chuluca-
pottery are clay, sand, mango leaves and the nas” filed a request for the appellation of origin
climate. For the elaboration of Chulucanas “Chulucanas”, which was registered in 2008.
ceramics, the clay is extracted from certain
quarries containing mainly yellow clay
(“arcilla amarilla”) and black clay (“arcilla
12
What is the difference between In contrast, the sign used to denote a GI
a geographical indication usually corresponds to the name of the
and a trademark? place of origin of the good, or to the name
by which the good is known in that place.
Geographical indications and trademarks A GI may be used by all persons who, in
are distinctive signs used to distinguish the area of origin, produce the good ac-
goods or services in the marketplace. Both cording to specified standards. However,
convey information about the origin of a because of its link with the place of origin,
good or service, and enable consumers a GI cannot be assigned or licensed to
to associate a particular quality with a someone outside that place or not belong-
good or service. ing to the group of authorized producers.
13
Article 2 of the Lisbon Agreement defines appellations of origin as
“(1)… the geographical denomination of a country, region, or locality, which serves to des-
ignate a product originating therein, the quality or characteristics of which are due exclu-
sively or essentially to the geographical environment, including natural and human factors.”
14
Developing a geographical
indication – why?
Interest in GIs has thrived in recent years. Brand recognition is an essential aspect
The obligation, under the TRIPS Agree- of marketing. Geographical indications
ment, for Members of the World Trade convey information about the origin-bound
Organization (WTO) to protect GIs has, to characteristics of a product. They there-
a large extent, triggered this attention. But fore function as product differentiators
beyond that, what creates the attraction? on the market by enabling consumers
The short answer is that they are seen as to distinguish between products with
useful tools in marketing strategies and geographical origin-based characteristics
public policies, for which there has been and others without those characteristics.
growing interest in the last two to three Geographical indications can thus be
decades. a key element in developing brands for
quality-bound-to-origin products.
Geographical indications
as differentiation tools in
marketing strategies: from mere
source indicators to brands
15
Photo: David Bonilla Abreo
CAFÉ DE COLOMBIA- In 2005, “Café de Colombia” was recognized as
OVERCOMING THE an appellation of origin in Colombia. In 2007,
RESOURCE CURSE it became the first non-European Protected
THROUGH GEOGRAPHICAL Geographical Indication (PGI) registered
ORIGIN-BASED BRANDING in the European Union (EU). The FNC’s dif-
ferentiation strategy based on geographical
Studies indicate that commodity-dependent origin did not end with the JUAN VALDEZ
economies tend to face two closely-related figure and the “Café de Colombia” appellation
problems: price fluctuations and a long-term of origin. As of 2011, two new appellations
decrease in international prices. of origin for coffee from specific regions of
Colombia were recognized, namely “Café de
Colombian coffee is no exception. During Nariño” and “Café del Cauca”.
the late 1950s, the price of Colombian coffee
plummeted from US$0.85 to 0.45 per pound. The FNC’s differentiation strategy has paid off.
This sparked a new differentiation strategy After more than 50 years of marketing efforts,
by the Colombian Coffee Growers Federation there is no doubt that “Café de Colombia” en-
(FNC) aimed at creating public awareness of joys a worldwide reputation and has become
the Colombian origin of the coffee. The FNC one of Colombia’s most valuable brands.
began by putting a human face on Colombian
Source:
coffee, creating the character JUAN VALDEZ Reina, Mauricio et al., Juan Valdez, The
to represent the archetypal Colombian coffee Strategy Behind the Brand, Bogota, 2008.
“Making the Origin Count: Two
grower. During the 1980s, the FNC registered Coffees,” WIPO Magazine, 2007.
See also the website of the Federación Nacional de
the Juan Valdez logo, and began to license Cafeteros de Colombia at www.cafedecolombia.com
the mark to roasters for use on their own
branded products that contained, exclusively,
Colombian coffee. In addition, the Republic
of Colombia registered the word “Colombian,”
in relation to coffee, as a certification mark
in the United States of America and Canada.
This was followed by intensive advertising
campaigns.
16
Geographical indications as a COMTÉ CHEESE – THE GOLD
factor of rural development OF THE JURA MOUNTAINS
A number of studies indicate that, under In the Jura Mountains, a medium-sized moun-
appropriate conditions, GIs can contrib- tain range north of the Alps in eastern France,
ute to development in rural areas. The winters are harsh and long. The mountains
entitlement to use a GI generally lies with are not suitable for growing cereals, but their
regional producers, and the added value varied flora and large prairies are perfect for
generated by the GI accrues therefore to obtaining high-quality cow’s milk.
all such producers.
17
for producing Comté cheese. For example, Geographical indications as a
the milk must come exclusively from the means to preserve traditional
Montbéliarde and French Simmental breeds, knowledge (TK) and traditional
the stocking rate is limited to one cow per cultural expressions (TCEs)
hectare of grassland pasture and the milk
must be collected within a radius of 25 km. Products identified by a GI are often the
These criteria serve to generate more jobs result of traditional processes and knowl-
than would more intensive farming methods. edge carried forward by a community in
a particular region from generation to
Moreover, the specifications limit the amount generation.
of concentrates given to cows, favoring feed-
ing based on local fodder, and the amount Similarly, some products identified by a GI
of fertilization is limited as well in order to may embody characteristic elements of
preserve the natural biodiversity of the soil the traditional artistic heritage developed
and the natural flora. This, in turn, has a in a given region, known as “traditional
positive effect on biodiversity. cultural expressions”. This is particu-
larly true for tangible products such as
Comté is today a recognized cheese in the handicrafts, made using natural resources
French market. The stringent, albeit balanced and having qualities derived from their
conditions set out in the product specification geographical origin. In addition, certain
carefully protect the interests of all actors TCEs – such as indigenous and traditional
in the production chain. This has also been names, signs and symbols – may also be
the starting point of a new tourist attraction protected as GIs despite their having no
revolving around the Comté appellation of direct geographical meaning.
origin, through the creation of “Comté routes”.
Studies show that the socioeconomic impact Geographical indications are compatible
of the appellation of origin on the region has with the nature of TK and TCEs in that
been positive in terms of job creation and they provide protection that is potentially
income levels, limitation of rural exodus and unlimited in time, as long as the qualita-
environmental impact. tive link between the products and the
place is maintained and the indication
Source: Bowen, Sarah, “Re-Locating Embeddedness,
A Critical Analysis of the Comté Supply Chain”, has not fallen into genericity. They work
North Carolina State University, 2007. as a collective right, there is no provision
Colinet et al., “Case Study: Comté Cheese in France,
INRA, University of Toulouse, France, 2006. See also the for a right to license or assign and the
website of the Comité Interprofessionnel du Gruyère de
Comté at www.comte.com product-quality-place link underlying the
18
protection of a GI prohibits the transfer of unsustainable, and the skills and knowl-
the indication to producers outside the edge involved in the technique to be lost.
demarcated region.
Geographical indications can provide pro-
While GIs do not directly protect the tection for TK and TCEs against misleading
subject matter generally associated with and deceptive trading practices. They can
TK or TCEs, which remains in the public also benefit indigenous communities by
domain under conventional IP systems facilitating the commercial exploitation of
and is open to misappropriation by third TK and TCEs, and encouraging TK-based
parties, they can indirectly contribute to economic development. Geographical
their protection in several ways. indications provide indigenous com-
munities with a means to differentiate
First, GI protection recognizes the cultural their products and benefit from their
significance of TK and TCEs and can help commercialization, thereby improving
preserve them for future generations. For their economic position.
example, in designing a GI scheme for a
product, the production standards, also
known as the “code of practice” or “regu-
lations of use”, may include a description
of a traditional process or TK.
19
Photo: TAMMACHAT Natural Textiles
THAI SILK Lamphun Brocade Thai silk is produced in the
northern region of Lamphun. It is woven in
“Thai silk”, produced on the Korat Plateau in bas-relief patterns created by using the heddle
Thailand’s northeast region, is synonymous to lift and depress selected warp threads.
with refinement, elegance and hundreds of Twisted silk threads are used as warp and
years of tradition. weft, and supplementary silk threads are
inserted to create the design. To complete a
Thai silk is produced from the salivary glands pattern, the process must be repeated, raising
of silkworms raised on mulberry leaves. The each heddle from first to last. Then the steps
silkworm cocoons are placed in a vat of boil- must be repeated in reverse order, from the
ing water that separates the silk thread of the last heddle to the first. The uniqueness of this
cocoon from the caterpillar inside. Unlike process and the intricate detail of the patterns
other silks that are smooth, satiny or crinkly, are the result of a long tradition of skills and
Thai silk is defined in particular by its coarse techniques inherited and used for over 100
texture with unequal, irregular and slightly years. Lamphun Brocade Thai silk has always
knotty threads, although it is generally soft been used by the Thai royal family and the royal
and varies in color from light gold to light court in most of their important ceremonies.
green. Since Thai silk yarn is yellow, it must be In Thailand, it is known as the “Queen of silk”.
bleached before dyeing. Last but not least, the
traditional handweaving process is important Chonnabot Mudmee Thai silk is made in the
to Thai silk’s reputation. northeast of Thailand. Its reputation results
from the process of tie-dyeing the threads be-
There is not one but several types of Thai fore weaving the fabric, and from its intricate
silk. Each one is linked to a specific region of patterns. It uses zoomorphic and geometric
Thailand and reflects particular knowledge patterns made by using color in the weft in a
related to the raising of silkworms and the traditional way.
way in which the material is woven and dyed.
Each region’s silk is woven with typical designs, Source: The registration of a Geographical
Indication for Lamphun Brocade Thai Silk,
patterns and colors specific to that region. Application No. 50100032, Registration
No. Sor Chor 501000200”
Examples of varieties of Thai silks protected See also the following website with information on the
as GIs include Lamphun Brocade, Chonnabot Queen Sirikit Institute of Sericulture: www.moac.go.th
20
Developing
a geographical indication –
what is involved? 3
21
• establishing traceability, verification How long does it take?
and control schemes in order to
ensure continued quality and com- It may take several years to establish a
pliance with the code of practice or complete GI scheme, as this involves
regulations of use; several actors and requires taking into
account different interests and policy
• devising marketing strategies; considerations.
• obtaining legal protection for the The actual time taken to develop a com-
GI and designing an enforcement plete GI scheme may depend on some
strategy. of the following factors, among others:
Moreover, those steps are not single, • the number and level of obstacles to
isolated acts. Protecting a GI does not legal protection of the GI – domesti-
only involve obtaining a right through cally or in foreign markets; and
registration or other appropriate means,
but also enforcing that right. Verification • the existence of institutional support.
and control must take place regularly
throughout the lifetime of a GI, not just
once. Promoting the GI is a continuing
process. In short, a GI scheme must be
managed throughout its existence.
22
Protecting geographical
indications – a step in
developing a geographical
indication
Why protect a geographical is registered as an individual trademark
indication? by a company.
Geographical indications are more than Protecting a GI enables those who have
just a name or a symbol. They reflect a the right to use the indication to take mea-
reputation strongly linked to geographi- sures against others who use it without
cal areas of varying sizes, thus giving permission and benefit from its reputation
them an emotional component. A GI’s free of charge (“free-riders”). Protecting
reputation is a collective, intangible asset. a GI is also a way to forestall registra-
If not protected, it could be used without tion of the indication as a trademark
restriction and its value diminished and by a third party and to limit the risk of
eventually lost. the indication becoming a generic term.
23
It is important for several reasons that Limiting the risk of the geographical
those who have the right to use a GI indication becoming a generic term
prevent its unauthorized use, not only
to avoid losing business, but also, in the Where a GI is no longer associated with
longer term, to ensure the GI is used only a product characteristically linked to a
in relation to products that possess the geographical origin but used instead as
qualities or characteristics to which it the common name to designate the prod-
owes its reputation. Use of a GI for lower uct, it is said to have become a generic
or different-quality products most likely term. In such a case, the indication can
results in tarnishing its reputation. be used by anyone to designate a type
of product rather than a product with a
Forestalling registration distinct geographical origin and specific
of the geographical indication as geographical qualities or characteristics.
a trademark by a third party It can no longer serve as a distinctive sign
or be used in a product differentiation
An unprotected GI may be registered as strategy. Protecting a GI and enforcing the
a trademark by an individual producer or right obtained over it contribute to reduc-
company, for goods identical or similar to ing the risk of that indication becoming a
those identified by the GI. This is likely to generic term.
occur at the international level for indica-
tions protected in one jurisdiction but not
in others. For jurisdictions in which the GI An example of a GI that has become a generic
is not protected, the indication may be term is Camembert for cheese. This name can
considered a distinctive sign available now be used on any camembert-type cheese
for registration as a trademark. The first made anywhere in the world.
to file for registration would obtain the
trademark, which might give them the In contrast, Camembert de Normandie is
right to exclude use of the indication by a French appellation of origin for a cheese
anyone else, including the producers who produced only in Normandy
had historically used it in their country
of origin.
24
What does a protected geographical indication enable
you to do? What does it not enable you to do?
Protection for a GI is usually obtained by acquiring a right over the sign that constitutes
the indication. That right can be a specific right designed for GIs (a sui generis right),
which may be called, for instance, a protected GI, a denomination of origin or an ap-
pellation of origin. The right acquired can also be a collective or a certification mark.
A GI right enables those who have the right to use the indication to prevent its use
by a third party whose product does not conform to the applicable standards. For
example, in the jurisdictions in which the Darjeeling GI is protected, producers of
Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in the tea
gardens of Darjeeling or not produced according to the standards set out in the code
of practice for the Darjeeling GI. However, a protected GI does not enable the holder
to prevent someone from making a product using the same techniques as those set
out in the GI standards.
25
THE INTERNATIONAL the goods in question are to be seized upon
LEGAL FRAMEWORK importation or, ultimately, to be subject to
the actions and remedies available in the
The Paris Convention for the Protection of country of importation. It further sets forth
Industrial Property (1883) the obligation of Member States to ensure
appropriate legal remedies for repressing the
The Paris Convention was the first interna- use of false indications of source.
tional multilateral treaty to include provisions
relating to indications of geographical origin. The Paris Convention also requires its mem-
Article 1(2) of the Convention recognizes “indi- bers to ensure effective protection against
cations of source” and “appellations of origin” unfair competition. For example, the use
as subject matter for industrial property. The of an indication of source on a good such
Paris Convention does not directly define that it could mislead the public as to the
either of these terms, although it contains true geographical origin of the good could
language that allows one to infer the follow- be considered an act of unfair competition.
ing definition of an indication of source: “an
indication referring to a country, or to a place The Madrid Agreement for the Repression of
situated therein as being the country or place False or Deceptive Indications of Source on
of origin of a product 4”. Goods (1891)
An indication of source provides information The Madrid Agreement for the Repression
about the geographical origin of a product, of False or Deceptive Indications of Source
but does not imply any special quality or on Goods extends the protection afforded
characteristic of the product for which it is to false indications of source under the
used. Examples of indications of source are Paris Convention to deceptive indications
the mention, on a product, of the name of a of source as well. Deceptive indications are
country, or indications such as “made in…”, those which, although literally true, may be
“product of…”. An indication of source can also misleading. This would be the case where, for
be composed of symbols or iconic emblems example, there are homonymous place names
associated with the area of geographical origin. in two different countries, but only one place
is known for the production of a particular
The Paris Convention stipulates that, in cases good. If the name were used on goods from
of use of false indications of source on goods, the similarly named place, the indication of
26
source would be considered deceptive as the Finally, the TRIPS Agreement contains excep-
public would likely be led to believe that the tions to the obligation to provide protection for
good came from a different place. GIs. A first exception applies to GIs for wines
and spirits only, for those WTO Members in
The TRIPS Agreement (1994) which the indications have been used in a
continuing and similar manner for a number
The TRIPS Agreement, one of the WTO Agree- of years. A second exception applies where a
ments, is applicable to all WTO Members. It trademark has been acquired in good faith in
includes a section on the protection of GIs the territory of a WTO Member before the date
(Part II, Section 3). of application of the TRIPS Agreement in that
WTO Member, or before the GI is protected
Section 3 of the TRIPS Agreement sets forth a in the country of origin. A third exception
definition of a GI and contains a general obliga- applies where the indication is considered by
tion for WTO Members to provide protection a WTO Member to be the customary term in
against misleading use of a GI and against use common language (the common name) for
that constitutes an act of unfair competition. It the identified goods or services.
also requires Members to refuse or invalidate
registration of a trademark that contains or
consists of a GI with respect to goods not
originating in the territory indicated, if use
of the indication on the trademark for such
goods might mislead the public as to the true
place of origin.
27
How to obtain protection for (a) Sui generis systems of protection
a geographical indication?
In certain jurisdictions, GIs may be
Geographical indications are protected in protected through a system that applies
different countries and regional systems specifically and exclusively to them – a
through a wide variety of approaches – sui generis system of protection. Such
often by a combination of two or more systems establish a specific right, a sui
approaches. Those approaches have been generis right, over GIs, separate from a
developed in accordance with different trademark right or any other IP right. A sui
legal traditions and within a framework of generis protection system exists in the EU
certain historical and economic conditions. with regard to GIs for wines and spirits,
agricultural products and foodstuffs.
There are three main modalities of pro- Many other jurisdictions throughout the
tection for GIs: (a) so-called sui generis world, such as India, Switzerland, the
systems; (b) collective and certification Andean Community countries and the
marks; and (c) modalities focusing on African Intellectual Property Organiza-
business practices including administra- tion (OAPI), among others, also have sui
tive product approval schemes. These generis systems of protection.
approaches involve differences with
respect to important questions, such as The terminology used to refer to sui generis
the conditions for protection or the scope rights over GIs is not uniform. Terms such
of protection. On the other hand, two of the as appellations of origin, controlled appel-
modes of protection, namely sui generis lations of origin, protected designations of
systems and collective or certification mark origin, protected geographical indications
systems, share some common features, or simply geographical indications, are
such as the fact that they set up rights for used in different legislation.
collective use by those who comply with
defined standards. Generally, an application for registration
of a sui generis right should contain a
delimitation of the geographical area within
which the product identified by the GI is
produced; a description of the product’s
characteristics, quality or reputation; and
the standards of production with which
users of the right should conform. In
certain jurisdictions, the link between
28
the product’s characteristics and the EXAMPLES OF GIs PROTECTED
geographical area must be substanti- BY A SUI GENERIS RIGHT IN
ated. All those elements are contained in THEIR COUNTRY OF ORIGIN:
a document, which is sometimes called
“the product specification”. ARGAN OIL for an oil from the kernels of the
argan tree, grown in Morocco
In addition, sui generis systems of pro-
29
PROTECTION OF THE GEOGRAPHICAL
INDICATION CRICOVA BY A SPECIAL LAW
By adopting Law No. 322-XV of 18.07.2003 on the Declaration of the Complex “Combinatul de
Vinuri “Cricova” S.A.”, an Object of the National-Cultural Heritage of the Republic of Moldova,
the Parliament created a special regime for the use of the GI “Cricova” for wine.
This law recognizes “Cricova” as part of the country’s cultural heritage and as a landscape
complex of national importance.
“Cricova” is famous for its unique underground labyrinths. The greatest part of “Cricova’s”
wine production facilities is placed underground, at a depth of 60-80 meters, creating a huge
underground wine city with avenues, streets and broadways.
These labyrinths offer a truly unique, favorable microclimate that gives typicity to the wines.
All year round, the naturally constant temperature there remains at +12° to +14°C, and the
humidity at about 97 to 98%, the most propitious conditions for developing and aging exqui-
site, fine wines. This humid, cool environment contributes to the formation of the authentic
character of “Cricova” wine products.
© Cricova
30
(b) Collective marks and certification mark does not itself have the
certification marks5 right to use the mark.
Some countries protect GIs under trade- Protection for GIs registered as collective
mark law, more specifically through collec- or certification marks is provided for under
tive marks or certification marks. This is the general trademark law. In other words,
case, for example, in Australia, Canada, protection is afforded against use in the
China and the United States of America. course of trade by third parties without
the owner’s consent, of identical or similar
What is meant by a collective mark or signs for identical or similar goods, where
certification mark (or, in some countries, such use would result in a likelihood of
guarantee mark) differs from country to confusion6.
country. However, a common feature of
these types of marks is that they may be
used by more than one person, as long
as the users comply with the regulations
of use or standards established by the
holder. Those regulations or standards
may require that the mark be used only
in connection with goods that have a
particular geographical origin or specific
characteristics.
31
EXAMPLES OF GIs PROTECTED (c) Laws focusing on
BY COLLECTIVE OR business practices7
CERTIFICATION MARKS IN
THEIR COUNTRY OF ORIGIN: Geographical indications may be pro-
tected through certain laws that focus on
business practices, such as laws relating
IDAHO POTATO for potatoes grown in the to the repression of unfair competition,
State of Idaho, in the United States of America consumer protection laws or laws on the
labeling of products.
32
COMBINING DIFFERENT In addition, a label including the name Parmi-
MEANS OF PROTECTION giano Reggiano is used on the packaging. That
label is also protected as a collective mark.
The modes of protection for GIs do not neces-
sarily apply on a mutually exclusive basis. In
some jurisdictions, it is possible to combine
different means of protection. Thus, a GI can
be protected through a sui generis system, for
example as an appellation of origin, and also
as an individual or a collective mark. A mark
may be used to protect the product label, which
can include the GI and an additional figurative
element affixed to the product to indicate to Source: Consorzio del Formaggio Parmigiano-Reggiano
consumers that it complies with the product
specifications for the appellation of origin. RIOJA is recognized as a qualified appellation
of origin in Spain and registered as a PDO
Parmigiano Reggiano is recognized as an in the EU for a wine produced in the Rioja
appellation of origin in Italy and registered region of Spain. The PDO protects the name
as a Protected Designation of Origin (PDO) RIOJA as such.
in the EU for a cheese produced, according
to specification, in the provinces of Parma, Furthermore, two logos including the name
Reggio Emilia, Mantua (to the right of the Po RIOJA are registered in order to reinforce
River), Modena and Bologna (to the left of the protection of the name against misuse. These
Reno River), in Italy. logos are protected by a collective mark and
an individual mark, respectively.
At the same time, the name Parmigiano
Reggiano is protected by a collective mark
for the pin-dot writing printed on the rind
of the cheese, where it is commercialized
pre-packaged.
Source:
Madrid Monitor www.wipo.int/madrid/monitor/en
Consorzio del Formaggio Parmigiano-Reggiano
Consejo Regulador de la Denominación
de Origen Calificada Rioja
33
How long does it take to protect Generic character
a geographical indication
through registration? A GI may be refused protection if the com-
petent authority considers that the sign
Obtaining protection for a GI through regis- constitutes the common name for the kind
tration of a sui generis right or a collective of product or service to which it applies.
or certification mark is just one step in the
process of establishing a GI scheme. The Homonymous geographical
registration procedure, from application indications
to grant, may itself take several months
or even years, depending on the system Homonymous GIs are those that are
concerned and on any obstacles to reg- spelled or pronounced alike, but which
istration that may be found along the way. identify products originating in different
places, usually in different countries. In
What are the potential principle, these indications should coex-
obstacles to protecting a ist, but such coexistence may be subject
geographical indication? to certain conditions. For example, it may
be required that they be used in associa-
There are several obstacles, from a legal tion with additional information as to the
point of view, that may arise when seeking origin of the product in order to prevent
protection for a GI, including the following: consumers from being misled.
34
Protecting geographical
indications abroad
Why protect your geographical • through the Madrid System for the
indication abroad? International Registration of Marks (in
which the GI concerned is protected
Intellectual property rights are governed by in the country of origin as a collective
the “territoriality principle”. The effects of a or certification mark); and
right obtained in a particular jurisdiction are
limited to the territory of that jurisdiction. • by concluding bilateral agreements
Thus, where a right over a GI is obtained between States or commercial part-
in one jurisdiction, it is protected there but ners.
not abroad. In other jurisdictions, the GI
would face the risks usually associated Bilateral agreements
with lack of protection. Protection in each
of the markets in which the GI product is Two States or two trading partners
commercialized is therefore paramount. (usually customs territories) may agree
In order to protect a GI abroad, there may to protect each other’s GIs under a
be a requirement to first protect the GI in bilateral agreement. Such agreements
the country of origin. may be independent treaties or form
part of a wider trade agreement. There
How are geographical are numerous examples of this type of
indications protected abroad? agreement, particularly in the wine and
spirits sector. Some date back to the
There are four main routes for protecting mid-twentieth century, but they continue
a GI abroad: to be a common way to protect GIs, as
evidenced by the number of agreements
• by obtaining protection directly in the negotiated in recent years that are not
jurisdiction concerned; limited to wine and spirits.
35
MODES OF PROTECTION AROUND THE WORLD
FOR THE DARJEELING WORD AND LOGO8
DARJEELING
Country
Nature and subject matter of registration
CANADA • Official Mark 0903697 for DARJEELING logo
International • Collective Mark 528696 for DARJEELING logo for Austria,
Registration France, Germany, Italy, Montenegro, Portugal, Serbia,
(Madrid system) Spain, Switzerland
36
Direct protection Lisbon Agreement
One option for protecting GIs is directly in The Lisbon Agreement was established
the jurisdiction concerned. As explained to facilitate the protection of appellations
previously, GIs are protected through a of origin at the international level. It offers
wide variety of approaches in different a means of obtaining protection for an
jurisdictions, and often by a combina- appellation of origin originating in one
tion of two or more methods. Protection Member State in the territories of all other
under laws against unfair competition members through a single registration
and protection as a sui generis right, called “an international registration”.
collective mark or certification mark are
generally the modes of protection made
available in different jurisdictions. Right
owners may use the means available in
the jurisdiction of interest and, where more
than one mode of protection is available,
they will need to determine which option
is most suitable to their needs.
37
Applications for international registra- used in translated form or accompanied
tion must be filed with WIPO by the by terms such as “kind”, “type”, “make”,
competent authority of the country of “imitation” or the like.
origin. Individual applicants cannot
present applications to WIPO, even were Once an appellation of origin has been
they to have the right to use the appella- internationally registered, it is protected
tion of origin concerned. without any limitation in time, meaning
with no need for renewal. An appellation
WIPO notifies the other States party to the that has been granted protection by a
Lisbon Agreement of any applications it Member State cannot be deemed to have
receives. Any Member State may declare, become generic in that State as long as
within a period of one year, that it cannot it is protected as an appellation of origin
protect the appellation of origin notified to in the country of origin.
it. The Agreement does not set forth the
grounds on which a notification of inter- In October 2013, the WIPO General
national registration may be refused, but Assembly decided to convene a Diplo-
leaves it to Member States to determine the matic Conference for the Adoption of a
grounds on which it cannot protect a given New Act of the Lisbon Agreement that
international registration in their territory. would render the Lisbon System more
attractive for States and users, while
If no declaration of refusal is communi- preserving its principles and objectives.
cated to WIPO by a Member State within The Diplomatic Conference was held in
the one-year time limit following receipt of Geneva from May 11 to 21, 2015, and the
a notification of registration, the protection Geneva Act of the Lisbon Agreement on
of the appellation of origin takes effect in Appellations of Origin and Geographical
that country as of the date of international Indications was adopted on May 20, 2015.
registration. However, a Member State In particular, the Geneva Act allows for the
may declare that protection is assured in international registration of geographical
that country as of a different date, which indications, in addition to appellations
may not be later than the date of expiry of origin. Furthermore, it permits the
of the one-year refusal period. accession to the Lisbon Agreement by
certain intergovernmental organizations,
Appellations of origin registered under and provides flexibilities aimed at mak-
the Lisbon Agreement are protected ing the Lisbon System more attractive.
against any usurpation or imitation of the The Geneva Act will enter into force after
appellation, even if the true origin of the five eligible parties have deposited their
product is indicated or if the appellation is instruments of ratification or accession.
38
Madrid system The applicant designates, in the interna-
tional application, the Contracting Parties
Geographical indications can be pro- in whose territories protection is sought.
tected in several countries as collective WIPO communicates the mark to the
or certification marks through the Madrid offices of the designated Contracting
Agreement Concerning the International Parties, which examine it in exactly the
Registration of Marks, concluded in 1891, same way as if it had been filed as a na-
and the Protocol relating to the Madrid tional application. If examination results in
Agreement, adopted in 1989. Both trea- grounds for refusal, or if a third party files
ties constitute the Madrid system and are an opposition, the office of the designated
administered by WIPO. Contracting Party may, within a fixed
time limit, declare that protection cannot
The Madrid system may be used by any- be granted in its territory. If no refusal
one with a connection, through a real and is issued by that office, or if a refusal is
effective commercial or industrial estab- subsequently withdrawn, the international
lishment, domicile or nationality, with a registration obtained for the mark under
Contracting Party, meaning the countries the Madrid system has the same effects,
or organization party to the Agreement in the Contracting Party concerned, as a
and/or Protocol. It offers the possibility national registration.
to protect a mark, including a collective
mark or a certification or guarantee mark, An international registration is initially
in several countries, by filing one applica- valid for 10 years and can be renewed
tion (an international application) directly indefinitely for 10-year terms.
with the applicant’s national or regional
trademark office (the office of origin) and International registrations for marks pro-
obtaining one registration (international tected under the Madrid system can be
registration). searched through Madrid Monitor, avail-
able on WIPO’s website at www.wipo.int/
A mark may be the subject of an inter- madrid/monitor/en
national application only if it has already
been registered by or applied for with the
trademark office of the Contracting Party
with which the applicant has the necessary
“connection” to the system.
39
The following GIs are protected
as collective or certification
marks under the Madrid system:
BAROLO
International Registration
No. 1034838 in class 31, for star apple fruits
NAPA VALLEY
LÜBECKER MARZIPAN
40
Conclusion
Although they are one of the oldest forms GIs as IP can throw overboard even the
of IP, GIs have only recently become the most balanced, development-oriented
subject of generalized interest. In many GI scheme.
countries, the need to comply with obliga-
tions under the TRIPS Agreement triggered The booklet outlines some of the current
this focus on GIs. Countries soon realized threats facing unprotected GIs, and sum-
that there is potential value in this form of marizes the modes of protection available
IP. The fact that GIs are embedded in a at the national and international levels.
territory means they can be effective tools
for promoting locally-based development.
Their close linkage with tradition suggests
that they can have a positive impact on
the preservation of TCEs and TK. With the
increasing recognition of GIs’ multifunc-
tional character, the challenge will be to
design and implement a comprehensive
GI scheme that could constitute the basis
for sustainable development.
41
Bibliography and further reading WIPO documents and publications:
This booklet draws from many documents, studies SCT/3/6: “Geographical Indications”
and other materials prepared within the context
of WIPO’s work. The following are some of the SCT/5/3: “Conflicts between Trademarks and GIs,
materials consulted: Conflicts between Homonymous GIs”
Giovannucci, Daniele et al., Guide to Geographical The Lisbon System, WIPO Publication No. 942.
Indications, Linking Products and their Origins,
International Trade Centre, Geneva, 2009. Intellectual Property and Genetic Resources,
Traditional Knowledge and Traditional Cultural
Rangnekar, Dwijen, The Socio-Economics of Expressions, WIPO Publication No. 933.
Geographical Indications: A Review of Empirical
Evidence from Europe, UNCTAD-ICTSD Project Geneva Act of the Lisbon Agreement on Appella-
on IPTs and Sustainable Development Series, tions of Origin and Geographical Indications and
Issue Paper 8, 2004. Regulations Under the Geneva Act of the Lisbon
Agreement of May 20, 2015, WIPO Publication
Vandecandelaere, Emilie et al., Linking People, No. 239.
Places and Products, jointly published by the Food
and Agriculture Organization of the United Nations Treaties relating to the Madrid System Concern-
(FAO) and SINER-GI, FAO, 2009. ing the International Registration of Marks, WIPO
Publication No. 204.
Adding Value to Traditional Products of Regional
Origin: A Guide to Creating a Quality Consortium,
United Nations Industrial Development Organiza-
tion (UNIDO), Vienna, 2010.
42
Photos: istockphoto @ Bartosz Hadyniak / @ Interprofession du Gruyère / istockphoto @ malerapaso