Geographic Indications and Denominations of Origin1
Review on available watching and searching strategies to detect potential conflicts between GI&DOs2 and TMs in Latin America.
Facts covered in this brief:
- While most of the largest Latin American countries have set up “sui generis” regimes to protect geographical signs as GI&DO, others use trademark or alternative systems such as unfair competition and consumer protection (labelling requirements).
- The number of GI&DO protected in, and used in exports from, Latin America keeps rising and so it does the likelihood of conflicts among them and other IP rights (IPRs) including TMs.
- Even though there is still no sufficient legal certainty regarding the outcomes of some conflictive scenarios involving TMs and GI&DO, the sooner they are detected; the better the chances to reaching an optimal solution.
- Strategies like conducting searches and monitoring the registration of geographical signs as TMs and GI&DOs are not always possible or advisable in Latin America but, in certain cases, they may be a good business decision.
Why are geographical signs relevant in Latin America?
It is well-known that most Latin American countries have comparative advantages in certain industries like those related to products such as wine, spirit beverages, foodstuff3, and others having agricultural nature, which are mostly included in classes 29 to 33 of the International TM Nice Classification.
This explains why some Latin American companies play very important roles in some of those specific industries, as it happens with wineries in Argentina and Chile; coffee in Colombia and Brazil, tobacco and cigars in Dominican Republic and Cuba, just to mention a few.
These and others are the main products in which geographical terms may play a notorious role in signaling high-quality characteristics attributable to their place of origin, which increase their commercial value and, in turn, the interest in protecting them through GI&DO or trademark rights.
How may geographical signs conflict among them and with other IP rights?
While conflicts involving geographical signs do not happen every day; their likelihood is growing worldwide, as more of them are registered in countries different from the one of their origin as TMs or GI&DO4, which is a trend that had been foreseen even before the signature of TRIPs5 (trade-related aspects of intellectual property rights) in 1994 and has started to be seen more often in Latin America6.
These sorts of conflicts are more likely to involve TMs and GI&DO, which have been the most common and the most recent legal tools used to protect geographical signs in this region, respectively.
As it is widely known, with the entrance in force of TRIPs also came into effect certain obligations set forth in articles 22 to 24 requiring a minimum level of protection for GI&DOs but many important gaps were left due to the multilateral nature of said Treaty, which resulted in a compromise that balanced different political and economic interests.
Given that the number of possible conflictive scenarios involving GI&DOs is very large, we are going to focus on a particular set this time, leaving others aside like those mentioned in TRIPs such as the transformation of certain place names in “generic terms” and the coexistence of homonymous GI&DO, among others7.
Conflicts between TMs and GI&DOs
Although the number of known cases adjudicated by Latin American authorities so far is relatively small, these conflicts are worth pointing out because while the importance of geographical signs as commercial assets keeps rising, there is still a lack of reasonable legal certainty over how some potential conflictive scenarios may be detected, analyzed and, eventually, solved. This situation is the result of multiple factors so we are to highlight few of them:
First, let us recall that the most common international and local solution implemented to handle conflicts between TMs and GI&DOs has been the promotion of amicable negotiations between the parties involved, which is not always possible to achieve. The problem with solving conflicts in this way is that, more often than not, the terms and condition of the agreements are kept confidential so the public may not benefit from learning how such conflicts were solved.
Moreover, it should be borne in mind there have been important debates in relation to the application of IP pillars on these matters like the principle of priority to acquire intellectual property rights based on the rule “first in time has priority rights”, as we will see below. The same has happened in relation to the interaction, if any, among the particular legal standards of each regime such as “consumer confusion”, proper of TM law, and “misleading of the public”, proper of GI&DO regulations, among others. These discussions remain partially unsolved at the international level (WTO, WIPO, etc), which resonates differently in each country and regions depending on their local particular interests.
Third, except for few cases8, it was only in recent years that many of the major Latin American economies included and/or started to enforce seriously local provisions allowing their authorities or interested parties to reject and challenge, respectively, the illegitimate registration of misleading (or confusingly similar) geographical signs or place names as TMs.
These local regulations9, which are required according to article 22.2 of TRIPs10, may be more widely enforced once the quality and amount of available information for third parties and local authorities to access increases. This desired goal supports the ongoing discussions at the World Trade Organization (WTO) for implementing an international notification or registration system listing protected GI&DO, as noted on article 23.4 of TRIPs.
Last but not least, probably the single most important fact to bear in mind when analyzing the issue of conflicts between geographical signs and other intellectual property rights is most of the specific “sui generis“ procedures for registering the former as GI&DOs started to be implemented after the year 2000. That year TRIPs entered fully in force in the major Latin American economies such as Argentina, Brazil, Chile and some members of the Andean Community (Colombia and Peru)11. Since the (relatively speaking) recent enactment of these procedures, which differ among them, the number of protected GI&DO has been growing steadily, although still modestly if compared to the European Union12. However, there are few Latin American countries where geographical signs are only protected through TM rights or alternative systems like in Paraguay, which only uses unfair competition provisions.13
The conflictive scenarios most likely to arise are those involving senior GI&DO versus identical or confusingly similar junior TM and their counterpart, senior TM versus identical, confusingly similar or misleading junior GI&DOs.
Even when considering this limited group of scenarios, their complexities and the number of possible outcomes may grow further once additional factors are also considered such as whether those TMs and GI&DOs refer only to applications or to fully registered/recognized property rights. To illustrate this point it is worth mentioning a recent Argentine judicial decision over the geographical term “MARTINIQUE”.
This geographical term had been registered as a TM to distinguish all non medicinal beverages including alcoholic and spirits (according to an old local classification that corresponds to the current class No. 33) and then acquired by a local entity in 1975, which renewed the registration thereafter until a deadline was missed (we don´t know if on purpose or not) on September 22nd, 1996, resulting in the abandonment of the mark.
In 2003, the former TM owner filed a new TM application for the same term and products, which was opposed by the French organization handling agricultural products protected as designations of origin, INSTITUT NATIONAL DES APPELLATIONS D’ORIGINE (IANO), which is controlled by the government of France. The opposition was based on the fact that said term was protected as a DO in France on November 5, 1996.
Given that the parties could not reach a private agreement over this opposition, the former local owner of the TM was forced to initiate a judicial action requesting the declaration of undue opposition in order to be able to complete the registration procedure.
Many facts were taken into account by the Argentine tribunals but hereto it is worth pointing out just the following ones: a) In 1981 a new TM Law entered in force which contained a provision prohibiting the registration of local and foreign geographical signs; b) In 2000, TRIPs entered fully in force in Argentina and, after noticing its provision setting the principles and exceptions for the protection of GI&DO in articles 22 to 24, the tribunals held that the main issue of the case was to determine whether the use of the unregistered mark by its former local owner between the missed renewal date (September 1996) and the date of entrance in force of TRIPs (January, 2000) was of such entity as to be considered a “use in good faith” according to standards set in TRIPs.
Taking into account the proofs collected in the case, the judge of first instance and the tribunal of second instance ruled that the use of the term “MARTINIQUE” by the former TM owner did not met the requirements for it to be considered as done in “good faith” under article 24.5 of TRIPs. Moreover, the judges disregard the argument that property rights protected by the Argentine Constitution would be affected and the same happened with the application of local law No. 22,802, which prohibits the use of a national and/or foreign appellation of origin unless it has been registered as a mark before to the date of its entry into force occurred on May 11, 1983.
Therefore, the French organization succeeded in stopping the registration of said geographical term as a mark in Argentina, which could have been avoided by the local former owner of the mark if the proofs about a continuous and serious use of the term to distinguish beverage products had been convincing for the judges.
Overall, while the legal protection of geographical signs continues to rise through the different instruments available in this region, so it does the likelihood for those interested in protecting them as TMs or GI&DOs to face conflicts with authorities of third parties.
Instruments to detect those conflicts: watching and searching conflictive TMs and GI&DOs.
It goes without saying that detecting the existence of these hypothetical conflicts as early as possible may help either prevent them or, at least, limit the exposure to potential commercial and legal liabilities.
The easiest and most commonly used legal strategy to detect them has so far been taking advantage of existing watching services to monitor TM filings containing identical or confusingly similar terms to the geographical term of interest regardless of whether they are already protected as GI&DOs or not.
Moreover, the risks posed by eventual conflicts may be high enough as to deserve assessing the possibility of searching if certain geographical signs are protected as trademarks. This may be so when using a geographical term for launching a new product included in classes 29 to 33 of the international TM classification, especially if no TM application is to be filed because of timing and/or budget reasons.14
Yet, we want to highlight that using these two strategies to detect conflictive applications and registration of GI&DOs is not always possible in Latin America, although they may be advised in certain circumstances, especially when the instruments to perform them are available in a particular country.
First, monitoring filings and registrations of GI&DOs through watching services may be only considered for those countries that have implemented “sui generis” systems for protecting GI&DOs. Still in some of these countries there may not exist public or private instruments allowing the performance of such task.
Second, something similar happens with searching and clearing GI&DOs to detect potential conflicts with prior existing rights, which may present practical difficulties, as we will point out below.
Overall, once the number of filed or registered GI&DOs achieve larger numbers in most countries of this region, it could be expected that the strategies of monitoring and clearing them may become a more common and even a standard practices, respectively, as it currently happens with watching and clearing TMs.
Particularities when searching and clearing GI&DOs.
As we mentioned, “sui generis” systems for registering GI&DO have been implemented recently so there are still many improvements and fine tunings to make, especially regarding the maintenance of accurate and reliable electronic databases by the corresponding authorities.
In this regard, it should be taken into account that, in some Latin American economies having such systems, the authorities in charge of handling these procedures are different from those handling TMs, as it happens in Argentina.15
In these countries there may not be good linkage systems between the corresponding authorities and/or the databases of TMs and GI&DOs, especially in those countries in which the authorities differ, which may result in accepted TM applications or registrations that could infringe rights derived from GI&DO and vice versa.
Thus, the way GI&DO searches could be conducted depends, first, on the availability of procedures to request public searches to the corresponding authority, which is not possible in some countries that have sui generis procedures for registering GI&DOs, as it happens in Chile and Peru.
A possible alternative to deal with this problem may be accessing public online databases, as it happens when looking for existing TM rights in most countries of this region. A final strategy may be using privately owned databases listing applications and registrations of GI&DO, which are not available in all Latin American countries, as it happens in those jurisdictions that do most of their work only in paper.
These factors result in different scopes, quality, reliability, turnaround and costs for searching GI&DOs in this region. Overall, if searches of GI&DOs are desired, it should be kept in mind that extra time and fees are likely to apply.
All in all, searching existing or potential conflictive rights on geographical signs based on their registration as GI&DO may be advisable to consider when related to the specific products mentioned above. The particular strategy to do so depends on the existing resources in place in each individual country of interest, which should be checked regularly, as most of them keep improving their infrastructure.
Since few years ago we have been noticing a growth in the number of conflicts involving geographical signs protected as TM or GI&DOs in Latin America.
While, as it happens in relation to TMs and other IPRs, there have been some legal strategies and technological tools to protect GI&DOs as well as to detect potential conflicts, their development has still not matured up to its full potential, which is a common trend in most legal areas (law follows the social facts that it is to regulate) and particularly in intellectual property, accustom to deal with innovations.
Monitoring TM filings that contain geographical signs protected as GI&DO and searching for them before filing and/or using geographical signs is a standard practice when dealing with potentially conflictive goods and services.
Applying similar strategies on GI&DOs is not always possible but they are worth considering, especially when dealing with particular goods.
1Author: Mariano Municoy, IP Lawyer at Moeller IP Advisors.
2Both terms are commonly included within the general umbrella terms “Indication of Source” and also “Appellation of Origin” used in the Paris Convention of 1883. Given that exact definitions vary among different international treaties and specific local laws as well as that TRIPs encompass those umbrella terms within the terms GIs and DOs; for simplicity reasons hereinafter we are going to use “geographical signs” as the widest term, which is to include all of them and also “place names or associated words”, which are used by the World Trade Organization (WTO).
3The Food and Agriculture Organization (FAO) is a specific agency of the United Nations focusing on this area, which states, “These products of origin-linked quality can increase food security, inasmuch as they contribute to rural development and the preservation of food diversity, while also offering consumers a wider choice. Indeed, thanks to the link between such products and their areas of origin, they can help to preserve local resources, maintain traditions, strengthen the organization of local stakeholders and prevent delocalization and the rural exodus.” see http://www.foodquality-origin.org/eng/index.html.
4In the case of GI&DO, in addition to applying for their registration, they may receive local legal protection by “ad hoc” recognition in particular international treaties.
5The first specific international treaty was the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of October 31, 1958, which just relatively recently was adopted by some Latin American countries: Costa Rica (in force since July 30, 1997); Cuba (in force since September 25, 1966); Haiti (in force since September 25, 1966); Mexico (in force since January 26, 2001); Nicaragua (in force since June 15, 2006) and Peru (in force since May 16, 2005).
6As noted in the brief “Geographical Indications (GI) and Denominations of Origin (DO) moving forward by fostering respect thereto” published in September 2010 and available on the news section of Moeller’s website www.moellerip.com
7Many designations of cheese, wines and spirit beverages protected in Europe have become generic terms in Latin America.
8Some countries like Argentina adopted the WIPO “Model law for developing countries on appellations of origin and indications of source”, published in 1975.
9Even if none of those local protections is in place, the owner of a GI&DO may be able to challenge the filing or registration of an identical/confusingly similar misleading geographical sign based on general legal principles of Civil Law or others similar to the regime of “unfair Competition” found in Article 10bis of the Paris Convention.
10This protection should be stronger when a TMs contains a GI identifying wines and spirits, according to article 23.2 of TRIPs.
11Something similar happened with the local recognition of foreign GI&DO, which has mainly been achieved by the European Union through the signature of bilateral treaties and/or similar specific instruments.
12Where thousands of GI&DO have been registered or filed, as it can be seen in the official website http://ec.europa.eu/agriculture/quality/door/list.html
13Paraguay is another example where, as informed in the INTA Bulletin of March 15th 2011, Vol. 66, No. 6, its authorities may enact a sui generis system shortly.
14Conducting such TM searches is of course also very important, and indeed a standard practice, before filing new TM applications in any class.
15The opposite happens in Peru where INDECOPI is the same authority although there still may be some important differences between those procedures.