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Geographical Indications to Protect IP: Overcoming Challenges in Registering and Enforcing Gis

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Geographical Indications to Protect IP: Overcoming Challenges in Registering and Enforcing Gis Presenting a live 90-minute webinar with interactive Q&A Geographical Indications to Protect IP: Overcoming Challenges in Registering and Enforcing GIs THURSDAY, OCTOBER 18, 2018 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Rebeccah Gan, Partner, Wenderoth Lind & Ponack, Washington, D.C. J. Scott Gerien, Partner, Dickenson Peatman & Fogarty, Napa, Calif. Mary Witzel, Attorney, Dunlap Bennett & Ludwig, Leesburg, Va. The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 1. Tips for Optimal Quality FOR LIVE EVENT ONLY Sound Quality If you are listening via your computer speakers, please note that the quality of your sound will vary depending on the speed and quality of your internet connection. If the sound quality is not satisfactory, you may listen via the phone: dial 1-866-871-8924 and enter your PIN when prompted. Otherwise, please send us a chat or e-mail [email protected] immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again. Continuing Education Credits FOR LIVE EVENT ONLY In order for us to process your continuing education credit, you must confirm your participation in this webinar by completing and submitting the Attendance Affirmation/Evaluation after the webinar. A link to the Attendance Affirmation/Evaluation will be in the thank you email that you will receive immediately following the program. For additional information about continuing education, call us at 1-800-926-7926 ext. 2. Program Materials FOR LIVE EVENT ONLY If you have not printed the conference materials for this program, please complete the following steps: • Click on the ^ symbol next to “Conference Materials” in the middle of the left- hand column on your screen. • Click on the tab labeled “Handouts” that appears, and there you will see a PDF of the slides for today's program. • Double click on the PDF and a separate page will open. • Print the slides by clicking on the printer icon. GEOGRAPHICAL INDICATIONS TO PROTECT IP FRAMEWORK FOR GI PROTECTION; THE NAPA VALLEY STORY October 18, 2018 TRIPS – Article 22 6 Geographical indications are, for the purposes of this Agreement, 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 geographical origin. TRIPS – Article 22 7 Geographical Indications Geographical Appellations/ Certification Denominations Marks Of Origin TRIPS – Article 22 8 WTO Members shall provide the legal means for interested parties to prevent: ➢ The use of any means in the presentation of product that would mislead the public as to geographic origin. ➢ The registration of a mark containing a geographical indication if use of the GI in the mark would mislead the public as to geographic origin. Lanham Act Post-TRIPS Article 22 9 ➢ Requirements of Article 22 already in place in Lanham Act by virtue of Section 2(a) for registrations and 43(a) for use. ➢ Article 22 did not require any amendment to Lanham Act. GI Protections in U.S. - AVAs 10 American Viticultural Areas, Petitions - 27 CFR 9.12 Establishment of an AVA in general Name evidence i. Name usage ii. Source of name and name evidence Boundary evidence Distinguishing viticultural features i. Climate, Geology, Soils, Physical features, Elevation Maps and boundary description i. U.S.G.S. topographic maps ii. Boundary description GI Protections in U.S. – Geographical Certification Marks 11 12 Worldwide Protection for NAPA VALLEY Jurisdictions of Protection for NAPA VALLEY 13 Australia (CM) Norway (CM) Brazil (GI) Singapore (CM) Canada (GI) South Korea (CM) China (GI and CM) Taiwan (CM) EU (GI) Thailand (GI) India (GI) Turkey (CM) Israel (CM) U.S. (CM) New Zealand (CM) U.K. (CM) GI = Geographical Indication Registration CM = Certification Mark Registration Europe Union Experience 14 ➢ NVV applied immediately following the WTO decision against EU for not opening its GI system to protection of non-member GIs ➢ No application system in place when filed, special treatment by EU DG Ag ➢ Following registration EU developed system for foreign GI registration, difficult standards ➢ No GI registered under EU system since, only through bi-lateral agreements China Experience 15 ➢ Could not register as certification mark until U.S. certification mark registration issued ➢ Napa Valley first foreign wine GI registered in China by AQSIQ ➢ $100k+ in costs, travel, attorneys’ fees, expert fees ➢ Seven years ➢ Challenges of being first Switzerland Experience 16 ➢ Madrid extension of certification mark to CH ➢ Treated as equivalent to Swiss guarantee mark ➢ Refused, geographic terms descriptive, not registerable without acquired distinctiveness evidence ➢ Potential appeal to Federal Supreme Court ➢ Potential path through Canton system for recognizing wine appellations Chile Experience 17 ➢ Refusal of both GI and Certification Mark Apps ➢ GI refused for failure to demonstrate sufficient connection between product characteristics and region, expert report required ➢ Certification mark refused because “Napa Valley” was found to be geographically descriptive Vietnam Experience 18 ➢ GI application filed over 10 years ago ➢ Refused during TPP negotiations on basis U.S. needed to provide some equivalent concession ➢ No action taken during pendency of TPP, NOIP said would not issue until TPP signed ➢ Unclear what will happen now given Trump administration position on TPP Russia Experience 19 ➢ AOC initially refused at examination stage and Rospatent Board of Appeal ➢ Basis is AVA not evidence of appellation, certification mark not evidence of appellation, and two things are contradictory ➢ NVV appealed to IP Court, remanded to Rospatent saying certification mark could also be appellation ➢ Rospatent refused application, not meet requirements of appellation Multilateral System 20 NVV supports Lisbon, but it is beyond control of NVV Multilateral system for registration of geographical indications for wine per TRIPS Madrid-Protocol type system INTA Proposal for Multilateral System http://www.inta.org/Advocacy/Documents/INTA ProposalforMultilateralGIRegister.pdf Resources on International GI Protection 21 ➢ INTA publishes country guides for members on geographical indication protection systems: http://www.inta.org/GeographicalIndications/Pa ges/GeographicalIndications.aspx ➢ WTO publication https://www.origingi.com/images/stories/PDFs/E nglish/E-Library/geographical_indications.pdf 22 J. SCOTT GERIEN PARTNER, INTELLECTUAL PROPERTY DICKENSON PEATMAN & FOGARTY 1455 FIRST STREET, SUITE 301 | NAPA, CA 94559 T: 707.261.7070 | F: 707.255.6876 [email protected] | WWW.DPF-LAW.COM GEOGRAPHICAL INDICATIONS FOR PROTECTING IP October 2018 Geographical Indications GIs identify a product’s regional origin where a specific characteristic of the good is due to that origin. 24 Geographical Indications City May include Territory a logo State Region Country 25 What type of products are covered? Wine and spirits Bread Beer Pastries Cheese Sausage Vinegar Meat and seafood Pizza Spices Apple pie filling Coffee Fruit and vegetables . and possibly non- food items like crafts, textiles, raw materials 26 How does regional origin affect products? Natural Factors • Climate • Geographic features of the area • Quality of the water, soil or animal feed Human Factors • Traditional knowledge • Preparation methods 27 Not just indications of geographic source NOT GIs ◦ "Made in Italy" ◦ "Product of India" They don't indicate any particular characteristic of the goods. 28 No uniform law governs GIs • There is no uniform international approach to GIs, but TRIPS signatories must protect them • USA protects GIs through Lanham Act • European Community protects GIs, member states differ • Other countries have national laws 29 Background of Protection Paris Convention ◦ Recognized appellations of origin TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) ◦ Protects GIs Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration ◦ Protects appellations of origin and now also GIs 30 TRIPS GIs are "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 geographical origin." - Article 22.1 31 TRIPS ✓TRIPS signatories must provide remedies against - false and misleading use of GIs as to geographical origin of products - any use that amounts to unfair competition ✓Valid good faith prior trademark rights – still valid even if similar GI ✓Additional protection for GIs for wines and spirits 162 signatories, including US and EU 32 Lisbon Agreement An appellations of origin is a "geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors." - Article 2(1) 33 Lisbon Agreement Signatories must protect against
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