In a recent ruling, the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) rejected a cancellation action filed by an American company, Swiss Watch International, Inc. (“SWI”), against the certification marks SWISS and SWISS MADE owned by the Federation of the Swiss Watch Industry (the “Federation”), an unincorporated association based in Switzerland. The terms “SWISS” and “SWISS MADE” are geographical indications denoting the place of origin of high-quality watches, clocks, and alarm clocks manufactured in Switzerland and bearing the respective trademarks of their producers or distributors.
The term “geographical indications” is defined under Article
22.1 of the World Trade Organization’s (WTO) Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreement); Article 22.2 thereof stipulates that members of the WTO may provide “legal means” for the protection of geographical indications. The definition under Article 22.1 of the TRIPS Agreement does not define the scope of “goods” that can be protected as geographical indications and have left it to the member countries of the WTO to determine the same. The laws of various countries in their respective legislations include agricultural goods, manufactured goods, natural goods, and even goods of industry.
Geographical indications with respect to goods of industry,
such as Swiss watches in this case, do not usually have a tangible connection to the geographical region but rather signify that the marked goods have the same reputation for high quality as goods originating from such region. Being intangible, reputation is hard to prove in many cases, and hence it becomes essential to have either statutory protection for the geographical indication or some other documentary proof of protection based on such reputation. One of the legal means to obtain protection for a geographical indication is through registration as a certification mark because,
among other aspects, a certification mark is also capable of
certifying the regional origin of the goods. This makes the case discussed here a subject of immense importance and interest to owners of geographical indications in general as well as geographical indications with respect to goods of industry in particular. While several members of the WTO have enacted sui generis laws for the protection of geographical indications, the United States has offered protection to geographical indications through its certification marks regime. Although the TTAB has issued rulings in the past upholding the rights in certification marks with respect to famous geographical indications such as COGNAC and DARJEELING, the latest ruling is, for various reasons, significant to the owners of geographical indications with respect to goods of industry. This article attempts to highlight some of these reasons from the perspective of such right holders.