Year Ahead: Stronger Protection, Harmonisation Among Goals For Trademarks And GIs In 2010

Enforcement of rights and a global harmonisation of systems look to be among the focal points of trademark and geographical indications policy in 2010. Significant activity will occur in these areas in Europe. But whether it is the setting up of a database for trademark registration, amendments to the Lisbon Treaty on the Protection of Appellation of Origin, or the evaluation of the European trademark system, efforts to improve current tools are showing at national and international levels.

In December, in Vienna, an agreement was signed between the World Intellectual Property Organization (WIPO) and the European Union Office of Harmonization for the Internal Market (OHIM) on future collaboration in trademark classification. OHIM is the trademark and design registration office of the EU, registering the EU community trademark.

According to the Common Understanding on Synergies between WIPO and OHIM in trade mark classification, WIPO, which administers the Madrid System for the International Registration of Marks, is seeking to expand its goods and services database. The Madrid system allows a trademark owner to file one application with his national or regional trademark office and obtain protection in several countries. WIPO expects to increase the database to at least 30,000 indications and make it available on online in the course of 2010, according to WIPO. OHIM will share its own list of currently accepted indication with WIPO, according to OHIM.

The goal is to establish a common database of acceptable indications of goods and services. This is intended to facilitate the harmonisation of classification practice and ease the registration in national trademark offices. WIPO “could arbitrate in case of a disagreement regarding the correct classification of a new term during the implementation of this project,” according to WIPO.

In 2010, the private-sector International Trademark Association (INTA) will focus on the protection of trademarks owners online in the light of the proposed expansion by the Internet Corporation for Assigned Names and Numbers (ICANN) of generic top-level internet domains (like .com), according to INTA. But this might be delayed as ICANN’s new CEO has signalled a slowing down of the process (IPW, Information and Communication Technology, 1 November 2009)

INTA also will work in favour of greater harmonisation of intellectual property rights, according to Matthew Schmidt, communications manager. INTA’s next annual meeting will take place in Boston on 22-26 May.

European Trademark System Being Evaluated

The European Commission is currently evaluating the EU trademark system through a study launched in November and carried out by the Max Planck Institute for Intellectual Property, Competition and Tax Law in Munich, according to Tereza Billerault Výborná, lawyer at the European Commission, in charge of relations with OHIM. She spoke at an event organised by the Association Romande de Propriété Intellectuelle at WIPO on 15 January (IPW, Trademarks/Geographical Indications, 19 January 2010).

The European Commission in July 2008 issued a communication laying out a new strategy in the domain of industrial property, according to Billerault Výborná, and the Commission advocated for a strong protection of trademarks and a high quality system. It was then decided to evaluate the EU trademark system. The goal of the study, said Billerault Výborná, is to identify the potential improvements and strengthening of the system in order to develop the future system of EU trademark protection with potential regulations and directive modifications. The results of the study will also serve to reinforce cooperation between OHIM and the different national offices.

Preliminary results should be issued in February, and a final report should be given by the Max Planck Institute in November 2010, according to Billerault Výborná. Proposals for modifications from the Commission should be issued at the beginning of 2011, she said.

The study also will serve as a basis for long-term decisions about the OHIM financial surplus, currently reaching €400 million euros, which is inconsistent with its statutes. A first reduction of registration fees was decided in 2005 to prevent the surplus from increasing, but several options are being considered on how to use the global surplus, such as further reductions in registration fees, a transfer of 50 percent of the renewal fees to member states national trademark offices, or the creation of a cooperation fund.

Professor Annette Kur, research fellow at the Max Planck Institute told Intellectual Property Watch that the institute would consult all EU national trademark offices, the major trademark associations such as INTA, the European Communities Trade Mark Association, and the European Association of Craft, Small and Medium Sized Enterprises. Users of the community trademark system can also submit comments on an online survey carried out by the Institut für Demoskopie Allensbach. According to the Max Planck Institute, the survey will run from the beginning of February until mid-March.

Meanwhile at WIPO, the next meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is tentatively scheduled for 19-23 April. Several technical issues are likely to be discussed such as: the grounds for refusal of all types of marks, technical aspects relating to the registration of certification and collective marks, and the protection of official names of states against registration or use as trademarks. The grounds for refusal refer to whether signs such as sound, smells or colours could constitute a mark. In April, several draft documents are expected to be concluded, including grounds for marks refusal. The issues were discussed at the last meeting of the committee in November.

Geographical Indications

The World Trade Organization Doha Round will be watched again this year by GI lobbyists. Geographical indications (GIs) are products named after geographical locations or characteristics.

The Doha Round of trade negotiations was started in 2001 and has been discussed ever since without completion. The last WTO ministerial meeting in November did not see measurable progress toward a conclusion. (IPW, WTO/TRIPS, 2 December 2009)

GI proponents would like to extend to other products the high-level protection that is granted to wines and spirits in the WTO Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement. They also seek to initiate a mandated register of GIs (IPW, Trademarks/ Geographical Indications, 23 November 2009).

OriGIn, a Geneva-based coalition of GI producers, will continue its focus on the WTO, according to Massimo Vittori, the group’s secretary general. Also on the coalition’s agenda is the creation of a US association for GI producers. The idea was launched in 2009 and oriGIn hopes it will be concretised in 2010. A manual on the GI potential in the US also will be launched, Vittori said.

In May 2009, the European Commission presented “strategic orientations” to improve the EU agricultural product quality policy. In this context, the Commission “will present a legislative proposal on geographical indications by the end of the year 2010,” said a Commission official. The proposal will be discussed in the EU Parliament and in the European Council. If the proposal is adopted by both the Council and the European Parliament, according to the new consultation procedure, policy changes will be implemented, she said.

This will also be a “crucial year to see whether GIs will be included under the scope of application of the Anti-Counterfeiting Trade Agreement (ACTA),” said Vittori, adding that “this year GIs-related development projects will increase significantly.” For instance, he said, the Agence Française de Développement will implement a project in Western Africa to build interest in GIs. And oriGIn will continue to run an electronic forum on GIs for policymakers, experts, producers and other interested groups in the African, Caribbean and Pacific Group of States, he said.

GIs are unevenly used by countries, with a long tradition in European countries like France, Italy or Spain, and a more recent interest in developing countries. In Latin America, for example, few GIs are registered, according to Astrid Uzcátequi, professor at the Andean University (Universidad de Los Andes) in Venezuela. She told Intellectual Property Watch that an international symposium would be held in April, co-organised by the university, to analyse GIs as a social IP system which valorises typical local products and congregating Latin American countries but also European GI representives.

In Brazil, the interest is growing, said Maria Alice Camargo Calliari, general coordinator of the GI register, at the Brazilian Industrial Property Office (INPI). The institute is running studies on Resolution 75/00 which determines the conditions for registering GIs in Brazil. Those studies might lead to the revision of a regulation in the Brazilian national IP law, she told Intellectual Property Watch. The aim is to “facilitate the registration of GIs to make it more attractive to producers,” she said.

Meanwhile, WIPO is currently examining the Lisbon Agreement on the Protection of Appellation of Origin which it administers, and in September 2008 the Assembly of the Lisbon Union established a working group in order to explore possible improvements to the procedure under the agreement, according to the WIPO website. The Lisbon Union consists of 26 member countries. A survey was launched in 2008 among contracting countries but also non-members and all interested stakeholders. The results of the survey, for which contributions continue to come in, according to a WIPO spokesperson, are expected to be circulated in April. The second meeting of the working group is expected in the summer, following a first meeting in March 2009, the spokesperson told Intellectual Property Watch.

The survey will be discussed during the second meeting, the spokesperson said. Another issue discussed at that meeting “will be the relationship between regional systems for the protection of GIs and the Lisbon system.” OriGIn submitted its answers [pdf] to the survey on 13 January.

In October, the Assembly of the Lisbon Union adopted new rules and amendments to current rules that were published in a bulletin [pdf] titled Appellations of Origin in December. It includes changes in the legal framework of the Lisbon system and statistical information. The amendments to the Lisbon Regulations became effective on 1 January, according to the bulletin.

Also signed in October, the free trade agreement between the European Union and South Korea included the protection of geographical indications, which should enter into force in 2010. The Foundation for a Free Information Infrastructure has called for the removal of the intellectual property rights chapter from the FTA out of concern that it could be a threat to innovation and competitiveness.