The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Wednesday, 15 June 2011

GI applications: is there a watch service?

The IPKat's own GI watch service: you can be
sure of a paws-on approach ...
Trade mark watch services are  -- depending on your view -- (i) a blessing for brand owners who can't be everywhere all the time and need help spotting those sneaky and inconvenient applications made by others who have decided to register the same or a similar trade mark when and where you least expect them or (ii) a necessary evil and a further drain on brand owners' finances.  Businesses which have been alerted to potentially troublesome third party registrations tend to gravitate towards the first opinion, while those which keep on paying but are never disturbed by serious threats veer towards the latter.

So far as this member of the Kat family knows (and for once he's very happy to be proved wrong), there is another threat to the commercial plans and happy expectations of brand-based businesses: in those countries where geographical indications (GIs) are protected other than through the regular trade mark registration process, there is the risk that an existing trade mark registration may be inconvenienced, or indeed blotted out entirely if GI opposition procedures are not conducted within the window of opportunity provided (six months in the EU) -- and there is no obvious and convenient way in which a trade mark owner can have a GI cancelled.

What the Kat wants to know (and he must confess that his curiosity has been stimulated by a reader's query) is this:

  • is anyone currently offering a regular "watch service" for GI applications which is comparable to that for trade marks?  
  • is there any means of lodging a caveat with any national or supranational authority so that a trade mark owner can expect to be officially notified of any application to register his own trade mark as a GI?

While the query originated within the context of the European Union, where the Commission has its own well-established modus operandi, responses from other jurisdictions are also very welcome.


Latha R Nair said...

Jeremy - I am a practising IP Lawyer from India and I have been representing the interests of several well-known Indian and foreign GIs in India and overseas through my law firm K&S Partners here in Gurgaon, India. My clients have engaged agencies such as TMDS, London and Thompson and Compumark for watch services of trade mark registers all over the world. We have, however, never come across a watch service agency for watching GI registers to see if a trade mark is being registered as a GI! However, one means of finding that out in India is to visit the GI section of the website of the Indian IP office and review the journals that are put up for advertisement online. I understand that this may not be entirely helpful information, but thought of sharing the same with you.

Best regards, Latha Nair

Ventsi Stoilov said...

As a whole your question concerning geographical indications is very interesting. Undoubtedly, each holder of a mark must be careful when apply for trademark if it does not affect already registered geographical indication.
In Bulgaria, the Patent Office is responsible for the registration of geographical indications. The database of the Patent Office contains registered geographical indications too. Its electronic version BPO online also provides access to registered geographical indications.
In addition, the Patent Office offers a paid service for monitoring of trademarks and geographical indications which costs about 35 euros per year.
Everyone who apply for trademark in Bulgaria also has the opportunity to order an officially research in the Patent Office concerning the existence of earlier marks and geographical indications. The Patent Office carry out this study in databases in Bulgaria and abroad and then provides formal results.
I think this is absolutely essential when it is seeking registration of trademarks similar to geographical names.
But I don 't know what the situation is in countries like France, Spain and Italy where there is a huge amount of geographical indications.
I don 't know a company that offers "watch service" for geographical indications, but perhaps there is one.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':