In July, the European Commission launched a Green Paper consultation—a document intended to generate discussion and debate on a particular topic—on the prospect of offering EU-wide geographical indication (GI) protection for non-agricultural products. The period for comments closed on October 28, just over one month before the Association will examine the complexities of overlapping IP rights during a two-day conference in Munich, where this issue will be addressed in-depth.
While having a number of mechanisms for protecting a particular product is important—for instance, via a combination of patents, trademarks and copyrights—multiple regimes for protecting similar aspects of a product can at times result in an overreach of protection and potential conflicts. It is therefore crucial when considering the expansion of GI protection for non-agricultural products in the European Union that appropriate measures be taken to minimize such issues. The EU regime for protecting agricultural GIs already includes overly broad protections, and INTA is concerned the problems associated with this could be far greater for non-agricultural products.
Examples of non-agricultural products originating from the EU that might be eligible for GI protection include Scottish tartans, Marmo di Carrara (marble) and Meissner Porzellan (porcelain). The system would also allow third countries to protect their non-agricultural GIs EU-wide (for example, Indian sarees, silk paintings and shawls).
In its comments on the EU Green Paper, INTA proposed the following precautions be taken in developing an EU-wide GI system, among other recommendations:
A Timely Debate
- Allow trademark owners to challenge GI applications based on the concept of “first in time, first in right,” without qualification as to reputation, renown or length of time of use and irrespective of whether there is protection in one Member State or the entire European Union.
- Adhere to TRIPS, Article 22 language on exceptions for misleading use, rather than the broad exceptions allowed by the existing EU regime for GI protection of agricultural products, which grants protection beyond misleading use;
- Include objection and cancellation mechanisms to ensure that only indications deserving of protection are registered;
- Require full examination by the country of origin, as well as at the EU level; and
- Establish a limited duration of protection, with the possibility of renewal.
As the European Commission considers expanding GI rights to non-agricultural products it is crucial that trademark owners understand the impact of such a regime on their existing trademark rights, and that they work with INTA to ensure appropriate protection measures. INTA’s conference, “When Trademarks Overlap with Other IP Rights,” to be held December 8-9 in Munich, Germany, will include an in-depth analysis of the issues raised in this Green Paper. Session III, “Trademarks and Geographical Indications,” which will be moderated by Anna Carboni (Redd Solicitors, United Kingdom), will look at the current regime for protecting GIs in Europe and internationally, with an emphasis on recent case law from the Court of Justice of the European Union and elsewhere.
The conference will also feature an opening keynote by Professor Jeremy Phillips (Olswang LLP, London, and Queen Mary Intellectual Property Research Institute, United Kingdom); VIP interviews with Christoph Ernst, Ministerialdirigent at the German Federal Ministry of Justice, and Mihály Ficsor, Vice President for Legal Affairs at the Hungarian Intellectual Property Office; and a closing session presented by Antonio Campinos, President of the Office for Harmonization in the Internal Market (OHIM). Other sessions, featuring expert speakers from both academia and law firms, will explore the interplay between trademarks and copyrights, designs, unfair competition law and the right of publicity.
To learn more about the program and speakers or to register, click here or contact Ann Eng at email@example.com.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2014 International Trademark Association