NOVEMBER 2008
Your guide to geographical indications worldwide
Managing IP asked correspondents in eight jurisdictions that provide some form of protection for GIs or their domestically named equivalent to address the key questions for brand owners
| One-minute read |
| On October 30 and 31, WIPO and the National Institute of Industrial Property (INPI) of Portugal celebrated the 50th anniversary of the adoption of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. An appellation of origin is a special kind of GI which generally consists of a geographical name or a traditional designation used on products which have a specific quality or characteristics that are essentially due to the geographical environment in which they are produced. Notable examples of appellations of origin registered under the Lisbon system include Porto (Portugal), Habana (Cuba), Champagne (France), Tokay (Hungary), Prosciutto di Parma (Italy), Tequila (Mexico), Bohemia Crystal (Czech Republic) or Borjomi mineral water (Georgia). The concept of a GI encompasses appellations of origin. However, aside from the Lisbon Agreement (in which 26 states participate), there are no commonly accepted methods of protection worldwide. With the area fraught with complications. Managing IP takes a timely look at this area of concern. |
| Questions on GIs |
1) Availability: Are geographical indications protected in your jurisdiction? If so, how are they defined, who can apply and are they popular? If not, are there any plans to introduce protection?
2) Scope of protection: What protection is given to GIs and what rights does it provide? Is there any limit on goods/services that can be protected, how long does protection last and is it subject to renewal arrangements? Can foreign GIs be protected? If so, to what extent if at all does this differ to local GIs? Does it depend on local recognition of the GI, or on use – if the latter, in which territory?
3) Listing: Is there a list of GIs that are protected? Who keeps this list and how often is it updated? How many are listed today? Where is it available and is there a system for notifying the public of new applications?
4) Registration: What are the procedures for obtaining protection? Are any fees to be paid? What documents/evidence if any must be filed with the application? What are the criteria for registration? Can a GI be registered as a trade mark and if so in what circumstances? Is the registration office a department of an IP office or a department of agriculture?
5) Conflicts: What happens if there is a conflict between a trade mark and a GI? Are there any examples of such conflicts? What principles are applied to resolve issues of conflict between protected GIs and trade marks?
6) Challenges: In what circumstances can the registration of an existing protected GI be challenged? Does a GI acquire immunity from challenge after a period of time and if so what period? Do private third parties have a right to oppose registration? If so, what preconditions must third parties satisfy and what grounds of opposition are recognised?
7) Refusal: What grounds exist for refusal of registration? Do applicants for GIs have a right of appeal against refusal to register? What institution or body is responsible for determining appeals?
8) Enforcement: Who has standing to enforce rights in a GI? Is the enforcement process administrative or judicial? What enforcement remedies are available (e.g. injunctions, declarations, damages, account of profits etc.)? |
Australia
1) Availability
As a member of the WTO, Australia has numerous obligations under TRIPs in relation to the protection of GIs. In meeting these obligations, Australia relies on a combination of existing legislative provisions and the common law. Thus, with the exception of wine, there is no official register of GIs and protection is afforded where it is demonstrated that use of the term constitutes an act of unfair competition. This rule applies both to Australian and international products. With respect to wine, the relevant legislation is the Australian Wine and Brandy Corporation Act 1980 (Cth) (AWBC Act) which not only creates a procedure for determining GIs but also creates a specific register of protected names.
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