The sui generis system, «ad hoc Laws of protection»
The sui generis system concerns laws specifically aimed at protecting geographical indications.
- How are the rights established?
Generally speaking protection is based on compulsory registration.
Under European Regulation 510/2006[1], within the European Union (EU), to benefit from a protection designation of origin (PDO) or a protected geographical indication (PGI) a product must be the object of a registration to the European Commission. The request should contain a code of conduct gathering at least the following information: the name of the agricultural product, the designation of the product, the delimitation of the geographical area, the facts testifying that the product comes from the geographical area indicated, the method of achievement of the agricultural product, the links between the quality of a product and its geographical environment[2].
However, some countries, such as Singapore, do not provide for registration of GIs. The 1998 Geographical Indications Act gives to the GI an automatic protection: it is called « passive » or non registration protection. Any interested party may bring an action before the court against misleading indications. The same approach is taken in India (Geographical Indications of Goods Act, 2003) or in Latvia (Law on Trademarks and GIs). In those countries, a registration process exists but is not compulsory.
- What is the object of the protection?
There is no uniform approach as to products that qualify for the sui generis protection. The EC regulation 510/2006 is concerned, protected products under sui generis system are selected agricultural products and foodstuffs (indent 8 of the preamble) However, the WTO law does not limit the use of GIs to agricultural products. The use of GIs is extended to industrial products and handicrafts in India, the Czech Republic, Thailand, Russia and Turkey. Some countries protect names of services as GIs, among them Switzerland, Latvia, Liechtenstein, Peru, Morocco and Korea[3].
- Scope of the protection
What are the legal rights/ effects of the registration under the sui generis system?
Generally, the protected name will benefit from a solid legal framework. The sui generis system protects against the direct commercial use of a GI (word for word use). It also prevents the indirect commercial use of the latter in the case where: the fake indication of origin is used with a mention reinstituting the true geographical indication expected (e.g: if expressions such as « type », « kind », « style », « fashioning », « imitation », « evocation » are used), even if the fake indication makes a reference to the true geographical origin expected.
- How to administrate and enforced the rights?
Most of the sui generis systems imposing registrations make provisions for an official control of the code of conduct. Within the European Union, regulation CE 882/2004 on official control and GI protection determines Members States assignments. They are expected to settle national monitoring plans and to define dissuasive and effective measures proportional to the infringement. They shall also have administrative measures (corrective, withdrawal of trade, destruction, closure, others).
The majority of WTO members who protect GIs by the sui generis system have an ex parte legal framework, that is to say that the protection of GIs is provided only at the request of an interested party (e.g producers or users of GI). Only few countries make provision for an ex officio protection in which public authorities can intervene on their own capacity. The current European framework protects GIs by conferring to States the responsibility of enforcing the ex officio protection[4]. Member states handle freely the modalities of execution of the regulation[5]. Countries with an ex officio protection are, for example, members of the EU, Switzerland and Croatia.
The trademark system
Article 15.1 of TRIPS gives a definition of the trademark: «Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark».
A trademark provides its owner an exclusive right to designate products and services, or to authorize another entity to use it in return of payment. The length of the protection varies (approximately ten years), but a trademark can be renewed indefinitely by means of additional taxes. To be considered as a lawful trademark, a chosen sign must be:
Distinctive: the sign must distinguish goods and services from other goods and services that are similar to other goods and services
Non-deceptive: the sign must not be of a nature that can generate confusion among consumers.
It is important to understand the principles of trademark law to grasp the implications of such means of protection on GIs.
- The first in time, first in right principle
The first in time, first in right principle of Trademark Law prevents the producers from seeking trademark registration for a geographical name, if such a name has already been registered in good faith by another party. In such cases, producers have only two options. They can launch proceedings to obtain the cancellation of the registered trademark. They can enter into negotiation with the owner of the trademark in order to buy it. It is to be noted that both the actions can turn out to be expensive.
- The need to use of the trademark
In most countries, trademarks are protected if they are registered. However, for the protection to be effective, the trademark must be used on the market.
- The trademark to protect geographical names
Insofar as, in principle, a geographical name cannot just contain the place where the product is made (descriptive name), a trademark cannot be used to protect a geographical name. In fact, the trademark only indicates the commercial source since it distinguishes products or services of one undertaking from the ones of another undertaking.
However, under certain conditions, a geographical name can be registered as a trademark: if the trademark has acquired a “secondary meaning” in favour of a particular company (e.g: « Schwartauer », which refers to various products originally from a city in Northern Germany). Such is the case when the mark has acquired a fanciful meaning (e.g.: Mont Blanc, which refers a collection of high quality pens);
- Certification mark and collective marks
Many countries protect goods and services by means of certification marks and/or collective marks.
Certification marks indicate that the products or the services for which they are used have particular characteristics, as, for example, the geographical origin. In this regard, the certification mark can be descriptive, and limit itself to designating the place of production without necessarily implying a link between the quality and the product that it identifies. The owner of the certification mark, who may be a private or public entity, must ensure that the goods or services for which the certification mark is used possess the certified quality. In order to carry out this certification role in a neutral and impartial manner, the owner of the certification mark has to file, together with the application for the registration of the certification mark, detailed regulations which prescribe, inter alia, the characteristics certified by the mark, the authorized users and details concerning the certification and control. As a basic rule, the owner of the certification mark does not have the right to use the mark. This principle is also called the “anti-use by owner rule”[6]. However, every producer who complies with standards of production as defined by the owner of the certification mark has the right to use that mark.
In principle, an action for infringement of a certification mark is initiated by the owner of the certification mark.
This is of the utmost importance because the owner has to make sure that the products carrying the mark have the certified qualities.
As an example, the American Lanham Act of 1946 (§ 14) states that the lack of control over the mark is a cause of cancellation by the Federal Trade Commission. Law cases decided that the owner « must take reasonable steps, under all the circumstances of the case, to prevent the public from being misled»[7]. Certification marks are the main protection tool for GIs in the USA.
Collective mark indicates that given products or services were produced, provided or commercialized by the members of an identified group. Therefore, collective marks are owned by a collective body such as, for example, a trade association or an association of producers or manufacturers, and serve to indicate that the person who uses the collective mark is a member of that collective body. Membership in the association that is the owner of the collective mark is, generally speaking, subject to compliance with certain rules, such as the geographical area of production of the goods on which the collective mark is used, or standards of production of such goods. In opposition to the rule for certification marks, the owners of the collective mark may use it. An action for infringement may be brought by the owner(s) of the collective mark, for example in the case, where a collective mark is owned by an association of producers entitled to use the collective mark, and at the same time the mark is used by a person who is not a member of that association.
The main criterion happens to be the belonging to a collective body.
As a point in fact, section 1127 of Lanham Act (USA) defines the collective mark as «used by the members of a cooperative, an association, or other collective group or organization (…) that have a bona fide intention in using the mark.”
- Scope of the protection of geographical indications through trademarks
Trademark, collective marks and certification marks insure protection of geographical names based on private initiative. In countries having adopted trademark legislations, GI producers must pay attention to the scope of protection. Generally, the registration of a geographical name through a mark does not necessarily prevent a third party from using it in its translated version (in another language) or to use the same name preceded by a delocalizing expression (e.g. : Californian Champagne) or with terms such as « style », «kind », « type », others. Besides, trademark protection implies important financial resources mainly linked to registration fees. This registration formality must be renewed periodically (generally every ten years). Finally, as a private mechanism, enforcement through trademarks is entirely at the costs of the owners. For each case of alleged violation of its rights, the owner would have to establish the confusion of the consumer. The costs linked to the trial or, upstream, to the monitoring of the compliance with the defined standards, are entirely supported by the owner[8].
Trade practices laws
The national legislations dealing with trade practices provide traders with an effective remedy against unlawful and dishonest business practices of their competitors. The main actions in this respect are: unfair competition and passing off. Generally, these means of protection are used in parallel with others. They are then non-exclusive means of protection.
- Unfair competition
Unfair competition can be defined as « any act of competition contrary to honest practices in industrial or commercial matters ». States are responsible for establishing rules for the fair functioning of the market and for declaring unlawful a certain number of commercial practices that mislead (or are likely to mislead) the public, in particular, for our purpose, as to the geographical origin of products proposed by the company. The great majority of countries have provisions for unfair competition. As an example, Australia, in the Trade Practices Act (1974) has a general rule forbidding trade acts misleading the public. Article 53 of the same act forbids the use of geographical designations likely to mislead the public[9].
- Passing off
This action is common in countries that follow the common law tradition[10]. In these countries, passing off is often considered as the basis of protection against dishonest business competitors. The passing off action can be described as a legal remedy for cases in which the goods or services of one person are represented as being those of somebody else causing thereby prejudice to the trade, the reputation or the good faith of the latter.
In India, under the Geographical Indication of Goods Act (1999), DARJEELING trademark is protected against any misuse of the geographical name by producers using Darjeeling tea as simple components of their mixture, but using the topography and size of the original mark to imply that their tea is 100% DARJEELING[11].
- Scope of the protection by trade practices laws
Legally, the protection against unfair competition and passing off serves the goal to protect traders and producers from the unauthorized use of geographical names by third parties, rather than creating individual property rights over those names. Indeed, it is a legal instrument that aims at ensuring the fair functioning of trade more than guaranteeing the authenticity of the product.
From a procedural point of view, to sue successfully on the grounds of unfair competition and passing off and stop the misuse of a geographical name, the plaintiff has to prove that the products for which the GI is regularly used has a market (clients), an established reputation and that the use of the geographical name by the non authorised entity confuses the public and causes (or risks to cause) prejudice. Besides, the burden of the proof is supported by the plaintiff[12]. Protection accorded to geographical indications following a lawsuit based on passing off or unfair competition is only effective between the parties to the procedure. The entitlement to protection of a given geographical indication shall be demonstrated every time enforcement is sought[13].
[1] COUNCIL REGULATION (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs
[2] Articles 4 et 5 of Council Regulation (EC) No 510/2006
[3] O’Connor, Names of which product should be registered? § 6.2
[4] The legal framework for the protection of PDO & PGI was amended before the publication of the case law « Parmesan». These regulations CE n°510/2006, in its article 10 adjourns regulation CE n° 882/2004 which states the leading of national long lasting plans of control which cover the protection of GIs and the necessary penalties. See Revue du Marche Commun et de l’Union Européenne (2003), issue 470 , p. 454-460, Case C-132/05
[5] Minutes of the Round Table on Geographical Indications on « The ex officio protection», Brussels, 9 June 2009
[6] The non-observance of this rule leads to the cancellation of the mark.
[7] Midwest Plastic Fabricators v. Underwriters Labs, 1990.
[8] O’Connor, Geographical Indications and TRIPS, p14-19.
[9] Unfair competition is not an exclusive mean of protection in Australia. To protect GIs, Australia also has provisions under Trademark Law (see Trade Marks Act 1995, Amended by Trade Marks Regulations 24 January 1996)
[10] Countries having a civil-law tradition that provide for some kind of protection for businesses against unlawful commercial acts from competitors usually base that protection on general tort law
[11] It is to be noted that India uses, in addition, of passing off, a sui generis system protecting GIs (see. Geographical indication of Goods Act , article 50 et 51)
[12] The Trade Practices Act (Australia) simplifies the passing off action by not demanding the proof of tort to the claimant. (O’Connor and Company, The protection of GI in selected countries, p 274)
[13] International symposium on geographical indications, 30 Oct 2001, WIPO: OMPI/GEO/MVD/01/1
