GEOGRAPHIC INDICATIONS APPLELLATIONS OF ORIGIN How to Avoid Competition without Industrial Property by John P. Sutto

2. GEOGRAPHIC INDICATIONS APPLELLATIONS OF ORIGINHow to Avoid Competition without Industrial Propertyby John P. SuttonSan Francisco, California

3. A trademark lawyer�s analysis of geographic indicators A good reporter answers the five questions arising in the investigation of any event: � Who? What? Where? When? Why?

4. The Difference between trademarks and geographic terms Trademark indicates WHO is the source of goods or services. Geographic designations show WHERE goods come from. Instead of identifying one among many competitors as the source of the product or service, the collective geographical community is the owner of the indication for the product. This replacement of the individual source in one of many competitors with all competitors in a geographically located community is the fundamental difference between trademarks and geographical indications A geographic indication may be a kind of trademark

5. Word Mark ROQUEFORT Goods and Services IC 029. US A . G & S: CHEESE. FIRST USE: 18661001. FIRST USE IN COMMERCE: 18661001 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 71624872 Filing Date February 13, 1952 Current Filing Basis 1A Original Filing Basis 1A Registration Number 0571798 Registration Date March 10, 1953 Owner (REGISTRANT) COMMUNITY OF ROQUEFORT, THE MUNICIPALITY FRANCE 12250 ROQUEFORT SUR SOULZON FRANCE Attorney of Record HOWARD C MISKIN Type of Mark TRADEMARK Register PRINCIPAL-2(F) Affidavit Text SECT 15. SECTION 8(10-YR) 20030608. Renewal 3RD RENEWAL 20030608 Other Data THE CERTIFICATION MARK IS USED UPON THE GOODS TO INDICATE THAT THE SAME HAS BEEN MANUFACTURED FROM SHEEP'S MILK ONLY, AND HAS BEEN CURED IN THE NATURAL CAVES OF THE COMMUNITY OF ROQUEFORT, DEPARTMENT OF AVEYRON, FRANCE. Live/Dead Indicator LIVE

6. Good faith defense of describing geographic origins United States Trademark law allows a defense to the exclusive right to use the registered mark where the use is �otherwise than as a mark� �a term or device which is descriptive of and used fairly and in good faith only to describe the goods� or �their geographical origin� 15 U.S.C. 1115(b)(4)

7. International agreements The Paris Convention of 1883 intended to protect appellations of origin The TRIPS Agreement of 1994 Agreement on Trade in Wine of 2005 between United States and European Community

8. TRIPS Agreement of 1994 This established a world wide minimum standard of protection for geographical designations. It is binding on all members of the World Trade Organization. Article 22(1) of TRIPS defines geographic indications as �indications which identify a good as originating in the territory of a member or a region or locality in the territory where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.�

9. TRIPS Agreement of 1994 (cont) Geographic destination or generic term? TRIPS provides that geographical indications of all products are protected against misleading use of a geographical designation of goods not originating in the territory indicated. The Member State may determine whether consumers are misled by the use of a similar or identical designation in its territory. While the designation may be a geographical designation in its country of origin, it may be a generic term in another country. Article 23 For wines and spirits, Article 23 provides additional protection, not just against misleading use, but against any use for products not originating in the place indicated by the geographical designation. One cannot even use words like �kind,� �type� or �style� along with a similar or identical geographic indication (Article 23(1)).

10. United States trademark law is out of step It is out of step with other nations in both WHAT is protected, and WHEN it is protected. First to use In the United States, rights to a trademark come from the use of the mark, and registration is merely a memorialization of common law rights that arise from the use of the mark. First to register Under TRIPS, however, a prior registration is key, not prior use, which is the U.S. touchstone.

11. Registration of geographical indications The nub of the debate is between old world & new world Old world (European Commission) The Old World has designations like Bordeaux, Chablis, Champagne, Cognac, Parma, and Roquefort for products that geographic regions claim are exclusively owned by them. New world (United States, Canada, Japan, Australia, Argentina, Chile and many other countries) The New World has designations like Napa Valley, Maipo Valley, Mendoza, Barossa Valley, and Stellenbosch, and uses generic terms like �mountain chablis,� �Canadian champagne,� and �methode champenoise� (on Taittinger California sparkling wine).

12. Conflicting wants Old World wants to register geographical designations on a separate register and provide trademark-like protection against use in the New World or in any other Member State unless an objection to the registration is made within eighteen months. New World wants a non-binding multilateral system to be administered in national courts of Member States where a user would have to prove that a designation is generic or conflicts with a prior trademark as the New World has used many Old World terms as generics.

13. What is protected? New Protection Geographical indications Traditional Protection Unfair competition Collective marks Certification mark

14. Word Mark ROQUEFORT Goods and Services IC 029. US A . G & S: CHEESE. FIRST USE: 18661001. FIRST USE IN COMMERCE: 18661001 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 71624872 Filing Date February 13, 1952 Current Filing Basis 1A Original Filing Basis 1A Registration Number 0571798 Registration Date March 10, 1953 Owner (REGISTRANT) COMMUNITY OF ROQUEFORT, THE MUNICIPALITY FRANCE 12250 ROQUEFORT SUR SOULZON FRANCE Attorney of Record HOWARD C MISKIN Type of Mark TRADEMARK Register PRINCIPAL-2(F) Affidavit Text SECT 15. SECTION 8(10-YR) 20030608. Renewal 3RD RENEWAL 20030608 Other Data THE CERTIFICATION MARK IS USED UPON THE GOODS TO INDICATE THAT THE SAME HAS BEEN MANUFACTURED FROM SHEEP'S MILK ONLY, AND HAS BEEN CURED IN THE NATURAL CAVES OF THE COMMUNITY OF ROQUEFORT, DEPARTMENT OF AVEYRON, FRANCE. Live/Dead Indicator LIVE

15. Bilateral Agreements the wave of the future made to avoid conflicts about use of different indications France and Spain Australia and the European Union United States and the European Union

16. Symposium in San Francisco: July 2003 The symposium, sponsored by the United States Patent and Trademark Office and the World Intellectual Property Organization, considered protection of geographical indications and trademarks. FICPI was invited to send a delegate and I was delegated. Two irreconcilable camps were present: Lobbyists the lobbyists for the geographical regions that selected designations for their regions and wanted strong protection against the use of these names anywhere in the world; and Trademark professionals trademark professionals, who could not grasp why a name of a region should trump registered trademark rights.

17. The Balkanization Treaty The intent of the Trademark Act of 1946 was primarily "to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks on such commerce" 15 U.S.C. (�1127). That section defines the purpose of "trademark" as being "to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of goods." The primary intent was to protect consumers so that they know who stands behind the marked product. A secondary intent of the Act was "to provide rights and remedies stipulated by treaties . . . respecting trademarks, trade names and unfair competition entered into between the United States and foreign nations."

18. September 14, 2005 treaty Article 8 Trade in Wine This treaty between the United States and the European Union regulates "Trade in Wine." The treaty does not purport to have anything to do with trademarks. However . . . Article 8 requires each Party to "provide that labels of wine sold in its territory shall not contain false or misleading information . . . �

19. Article 6 of September 14, 2005 treaty This requires that the "United States shall seek to restrict the use of the terms Burgundy, Chablis, Champagne, Chianti, Claret, Haut Sauterne, Hock, Madeira, Malaga, Marsala, Moselle. Port, Retsina, Rhine, Sauterne, Sherry and Tokay on wine labels solely to wine originating in the Community," except . . . where a person or its successor in interest used the term on wine not originating in the Community before December 13, 2005. Also, the United States must "ensure that any wine not labeled in conformity with this Article is not placed on or is withdrawn from the market until it is labeled" properly.

20. Article 7.1 of September 14, 2005 treaty This expands beyond the 17 "core" terms in Article 6 Thousands of names for which the United States must "provide that [they] may be used as names of origin for wine only to designate wines of the origin indicated by such a name." Among these thousands of names are "Alsace," "Beaujolais," "Bordeaux," "Chateau Lafite," "Chateau Margaux," Chateauef-du-Pape," "Cotes de Beaune," "Cote du Rhone," "Macon," "Pouilly-Fouisse," "Saint-Emilion," "Sancerre," Sauternes" and "Vouvray" in France; "Liebfraumilch," "Mosel" and "Schloss Johannisberger" in Germany; "Alto Adige," "Montpulciano d'Abruzzo," "Trentino," and "Veneto" in Italy; "Dao," "Douro," "Obidos" and "Vinho Verde" in Portugal; and "Penedes," "Ribiero" and "Rioja" in Spain.

21. Article 7.2 of September 14, 2005 treaty In return for the United States barring the use of any names used in the Community on wine from elsewhere, the "Community shall provide that the names of viticultural significance listed [in the U.S. fifteen pages of the treaty showing hundreds of wine areas] may be used as names of origin for wine only to designate the wines of the origin indicated by such name" (Article 7).

23. Conclusion Symposium: Irreconcilable positions 2005 Treaty: Grandfather clause and lack of enforcement cast doubt on its effectiveness. Anti competitive purpose is to raise prices to consumers.