INTA 2013: time for international action on GIs
Panellists at the International Trademark Association’s annual meeting in Dallas united to call for a single database including all geographical indications from around the world.
Today’s panel discussion, called ‘Champagnes, cognacs, rices and teas – what’s new in trademarks and GIs’, brought together four specialists on geographical indications (GIs).
Stephen Stern of Corrs Chambers Westgarth in Australia chaired the panel, and opened by highlighting the “contra-distinction between GIs and trademarks”. Twenty-five years ago it was very difficult to protect GIs, he said, but things have become far easier over time.
Burkhart Goebel, of Hogan Lovells International LLP in Spain, went further, saying it’s “child’s play to protect a GI, much to the prejudice of trademarks”.
He added: “They continue to be fashionable, and continue to enjoy enormous political support.”
However, said Paolo Perani, of Perani & Partners in Italy, much depends on what part of the world we’re talking about. In Europe, GIs enjoy good protection, but it’s “not so easy to enforce in the US”.
Rajendra Kumar of K&S Partners in India, pointed out that the use of certification marks in the US, where a “non-trading body” can certify products under a certain mark, can provide a good substitute for a GI. In his view, GI protection is relatively straightforward, but the costs are high, especially when it comes to monitoring and policing.
Perani added that there is a major difference between a certification mark and a GI – the former has no requirement to be linked to a certain geographical area.
All the panellists agreed that one of the major problems with GIs is the lack of a central database of all international indications, which can make it very difficult for businesses to know whether certain courses will land them in trouble. And while, as Kumar said, we may “never succeed in having a harmonised GI law,” it should be possible to create an effective database for GIs.
Goebel called transparency the biggest single issue, and said that rather than wait for political agreement on GIs, it would makes sense to “set up a useful database to search those terms”, though he added that it will still be difficult to understand the scope of protection. “Don’t wait for something political to happen if you have to protect your clients’ interests today,” he said.
From the floor, Scott Gerien of the INTA Geographical Indication sub-committee highlighted that the association “has been trying to put forward a position for a multilateral … register at the World Trade Organization”.
In the meantime, attorneys and businesses can check the World Intellectual Property Organization’s list of appellations of origin, the EU register for GIs, and various other national repositories for information.
