When Trademarks Overlap With Other IP Rights: conference report 6

If you missed yesterday's blog posts reporting on "When Trademarks Overlap with Other IP Rights", you can access them as follows:

• Session One (Welcome and Jeremy's keynote address) here
• Session Two (Trademarks and Copyright I) here
• Session Three (Trademarks and Copyright II) here
• Session Four (Trademarks and Designs I) here
• Session Five (Trademarks and Designs II) here

The opening session of Day Two of this year's INTA Europe winter conference addressed "Trademarks and Geographical Indications". Keri Johnston. Keri gave a report on INTA's involvement on GIs and indigenous rights internationally, regionally and nationally on these sensitive issues (Keri co-edited a special issue of the Journal of Intellectual Property Law & Practice on indigenous intangible rights here). Following Keri's round-up, Anna Carboni  (Redd Solicitors) took the chair for a lively session on one of topics where most IP lawyer's interest greatly exceeds their knowledge and practical experience.

Irene Calboli (Marquette University Law School and National University of Singapore) gave the first substantive address, Irene -- a great enthusiast for GI-protected Darjeeling tea -- observed that the overlap between GIs and trade marks is qualitatively different from that between trade marks and copyright or designs: it's more a matter of two types of right governing the same subject matter rather than conflicting species of rights that cover different types of information.  However, the relationship between trade marks and GIs remains unclear and varies as between jurisdictions -- in in the US there is no scope for overlap since there is no separate GI protection. Territoriality also governs the objects of trade mark/GI protection: some countries protect just foods and drinks, while others protect a wide range of inedible products too.

With the passage of Articles 22 to 24 of TRIPS, Irene explained, Europe could push through its programme for GI for foods, drinks, wines and spirits. Those Articles only indicate what can be protected, not how such protection should be structured.  That is why both trade marks (especially certification and collective marks) and sui generis GI protection can be said to fulfil the requirements of those provisions. With trade mark protection, geographical indications have to obey all the usual rules for trade marks, including renewals. Trade mark protection can cover the use of the protected term on merchandised products too. GIs have advantages too: they can never become generic and never need renewal -- and they can be used to inhibit comparative and referential advertising.

Those in favour of sui generis protection for GIs say that they are a magnet for local investment and the promotion of local employment. Opponents complain that they permit the giving of subsidies, which can damage or distort competition.  GIs can provide both positive and negative information concerning marked goods (for example by warning consumers of product contamination) which generic products cannot do -- but trade marks can be used as markers in the same way. Ultimately Irene believed that sui generis protection can be more effective in achieving GIs' public policy aims, but she hoped to hear what INTA registranta had to say.

Julia Holden (Trevisan & Cuonzo, Italy) spoke next, on the legal situation in the European Union. Julia originated from Leicester, one of the regions from England which is permitted to call its pork pies Melton Mowbray pies.  She explained that her first knowledge of GIs came via her mother, but these were a rather different species.  Julia then ran through the subtle differences between Protected Designations of Origin and Protected Geographical Indications [this blogger is still puzzled as to how we came to have two such similar forms of protection in the first place], their registration procedure --  which is quite tricky since product specifications are generally complex and detailed (Prosciutto di Parma's specification runs to 83 pages), the EU-administered system is initiated by national procedures that differ between countries.

Conflicts between trade marks and GIs can be resolved on the basis of (i) first in time, first in right (which is how trade marks work), (ii) allowing for coexistence, and (iii) letting GI protection trump trade marks. Moving from the potential to the actual, Julia then looked at the actual conflict management rules which have been embedded in the EU's GI Regulation and trade mark legislation -- which are definitely pro-GIs. Some geographical designations are trade marks, though they may create the appearance of being GIs: examples include PARMALAT and SAN PELLEGRINO.  Finally, Julia mentioned some of the Court of Justice jurisprudence on GI protection, including the controversial FETA affair [on which see Katposts here and here] and the BAVARIA case [see Katnote here] in which an earlier-registered trade mark appears to have survived a powerful attack from Bavarian beer producers.

Peter Harvey (Harvey Siskind LLP) spoke next, explaining the position in the United States. Modestly describing himself as the onion in the petunia patch, Peter instantly addressed the monstrous issue of protecting consumers against the use of GIs in "style" or "type" references (eg PARMESAN-STYLE cheese): who needs to be protected against the truth, he asked. Unimpressed with geographical appellations, he cited Brussels Sprouts, Hamburgers, French Fries and Danish Pastries as place-based references that had little in the way of commercial cachet to commend them.  The United States, as a nation of immigrants, imported methods of manufacture from their countries of origin and not unnaturally called their products by the same name -- but no-one would be confused into thinking that Californian Korbel Champagne came from France.

The US and EU clearly have different world views regarding GIs.  The US thinks the EU is seeking to protect consumers against non-existent fraud and confusion and that the sui generis GI protection was in fact a disguised form of trade barrier and a means of collecting rent. If you can't register as a trade mark a term which is descriptive, such as a place of origin of goods, why should you be able to protect it as a GI?  US case law has gone both ways since, while respecting the right to use a place name, it also recognises the concept of secondary meaning: when the use of a term tells consumers something other than where goods have come from, such as indicating a connection to one specific source, the integrity of that information in the minds of consumers is also entitled to protection.

In the US, GIs are trade marks, registered as certification marks under the Lanham Act (such as the PARMA sign, illustrated here). There is another possibility: rely on common law alone, as happened in the case of COGNAC where a third party application to register CANADIAN MIST AND COGNAC was resisted on the basis that the unregistered word COGNAC was a common law certification mark. Collective mark registration is also an option. However, in all cases where a GI is the subject of a trade mark application, it is vulnerable to a challenge on the ground that it is generic.

Peter then addressed terms relating to grape sources and AVAs (American Viticultural Areas) in the context of the LEELANAU case, where a clash between an AVA and a trade mark had to be resolved. He closed with a few words about the TTB (the Alcohol and Tobacco Tax and Trade Bureau), "semi-generics", and the status of terms that have become generic by use in the US: these include chablis, champagne and burgundy.

Latha Nair (K & S Partners, India) was unfortunately unable to attend on account of illness (the Kats all wish her better!), but we did have the benefit of her talk via an online link about the trade mark/GI dichotomy in her own country.  Latha talked us through a list of differences between trade marks and GIs,  Latha reminded the audience of the existence of bilateral trade agreements, which might themselves result in the existence of an overlap between GIs and trade marks.  She also spoke of uses such as "the Champagne of black teas", where there is no overlap problem, and of the Delta Lingerie litigation in Taiwan in which "Darjeeling Lingerie" was found to dilute the reputation of the GI. In Israel, however, the opposite result was reached, the court noting that the trade mark classes in which tea and lingerie belonged were quite different.

Latha then related the tale of the SIDAMO battle between Starbucks and the Ethiopian government which, having achieved a large amount of adverse publicity for the coffee franchise, resulted in a settlement, as well as some Indian litigation over "Glen-" related Scotch whiskies in India. Ultimately was ruled that the use of the prefix "Glen'" was redolent of whisky originating from Scotland and could not be taken for local competing Indian products.