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How Patents_ Trademarks and Geographical Indications Contribute .ppt

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How Patents_ Trademarks and Geographical Indications Contribute .ppt Powered By Docstoc
					“Collective Marketing: Adding Value
 through Geographical Indications,
 Certification Marks and Collective
               Marks”


           Mboya Rose

    Dar es Salaam, Tanzania
     22-26TH AUGUST, 2011
   PRESENTATION OUTLINE

• Brief introduction to trademarks
• Certification marks and collective marks
• Geographical indications and their
  economic significance
• The Case of Developing Countries
• Enforcement of GIs
                     objectives
• The participants should be able to differentiate
  between trademarks, collective marks,
  certification marks and Geographical indications
• Importance of the above on economic
  development
• Differentiate between GIs, Indication of source
  and appellation of origin
• International Treaties for the protection of above
• Identify local certification and collective marks
• Identify some of the products that can be
  protected as GIs in your country
  1. Introduction to Trade Marks

• What is a Trademark?
  –is a distinctive sign, used by a
   merchant to identify its goods or
   services and to distinguish them
   from those produced or provided
   by others.
II. The Role of Trademarks in Economic
              Development
         Functions of Trademarks
  • To the producers:
     – Enables companies to differentiate their products
     – Is a marketing tool and the basis for building brand
       image and reputation
     – Encourage companies to invest in maintaining product
       quality
     – a valuable business asset
     – May be licensed to provide a direct source of revenue
       through royalties
     – is a critical element in franchising agreements
     – Can be use as collateral for obtaining financing
             Functions of Trademarks

• To the Consumers:
  – Ensure that consumers can identify the origin of
    products
  – Aid consumers in distinguishing between products
    from different manufacturers
  – Acts as an indication of quality
  – Acts as an assurance of genuineness
  – Source of information
  – The Number and Quality of Billboards a
    long the road is a reflection of the level of
    commercial activity in the country
Words


         “Yes” is a registered mark of Kencell “JOGOO” is a registered mark of
             Communications Limited.              Unga Limited




Device



                                              The wind mill device is a registered
         The device is a registered mark of
                                                 mark of Unga Limited
            Nation Media Group.
Combinat
  ions
Of letters Courtesy: Eastman
                                                   “KCB” is a registered mark of
  with
  devices
            Kodak Company                             Kenya Commercial Bank




Three-
  dimens
  ional    The contour device of a bottle   is a
              registered mark of Coca       Cola
  marks:      Company
                                            MY COUNTRY MY BEER
Slogan
                                              “MY COUNTRY MY BEER” is a
           “the pride of Africa” is a mark of   mark    of    East Africa
               Kenya Airways.                   Breweries Limited.




Numerals                                            504
                                          “504” is a mark of Automobiles
           “0722” is a registered mark of    Peugeot of France
              Safaricom limited
        iii) Term of protection
• In Tanzania, first registration seven (7) years.
• Registration can be indefinitely renewed for
  further ten (10) years after expiry of original
  registration or of the last renewal of registration.
• In Zanzibar, first registration fourteen (14) years.
• renewed indefinitely for further fourteen (14)
  years after expiry of original registration or of the
  last renewal of registration.
• .
   2.    Collective Marks and Certification
                    Marks

A)    Collective marks are marks used to
  distinguish products or services provided by a
  group of enterprises, generally members of an
  association.
• Collective marks are often used to show
  membership in such an association, union or
  organization


           (e.g. UAWfor United Auto
           Workers).
              Collective Marks
•   Collective mark -owned by an association or
    cooperative
•   The association establishes set criteria e.g.
    quality standards
•   Permit individual enterprises who are members
    of the Association and who comply to use
•   Members use the collective mark to market
    their products domestically and occasionally
    internationally,
•   Allows the member SMEs to benefit from a
    reputation acquired.
•   The use of a collective mark may foster an
    alliance or facilitate cooperation with other
    SMEs so as to take full advantage of common
    resources.
   ii)    Difference between collective
         marks and individual marks
• Collective marks is allowed to be used in
  relation to products of different enterprises
  which are members of an association, and
  all of which produce or provide the same
  or very similar products,
• whereas an individual trademark is used
  for a product or service provided by just
  one enterprise
iii) Why are collective marks relevant
       for collective marketing
a) It is not always easy for individual enterprises
   to gain consumer recognition and loyalty.
b) Gaining access to retail stores, local markets
   and distribution networks and making their
   products known among consumers require a
   significant investment that may exceed an
   individual enterprises capacity
c) A collective mark denotes the common origin
   of the products and services from those
   individual producers or enterprises who use it.
d) Important for bulk orders that an individual
   cannot supply
     iv) Relevance of collective marks to
            collective marketing
d)    Collective marks are often used to show membership
      in union, organization.
e)    Because the owners of a collective marks is
      responsible for ensuring compliance with certain
      standards by its members, the function of the collective
      mark is also to inform the public about certain features
      of the product which collective mark signifies
f)    Collective marks are often used to promote products
      that are characteristic of a given region. Use of a
      collective mark helps to market such products
      domestically and occasionally internationally, but also
      provides a framework for co-operation between local
      producers
             v)    Who can apply
• An association of producers which will authorize
  its members to use the collective mark in relation
  to certain products or services
• Collective marks are protected through
  registration
• The costs, duration and scope of protection are
  similar to those of an ordinary trademarks.
• Since the cost gets distributed over the entire
  membership of the association, it becomes
  much cheaper for an individual member.
• Collective marks cannot be licensed
            B)     Certification Marks



• Are given for compliance with defined standards, but are
  not confined to any membership. They may be used by
  anyone who can certify that the products involved meet
  certain established standards.
• The label used as a certification mark will be evidence
  that the company's products meet the specific standards
  required for the use of the certification mark.
• Tanzania Bureau of Standards (tbs)
• ISO compliance
           Certification Marks

• The Woolmark symbol is the registered trade
  (certification) mark of the Woolmark Company.
• The woolmark is a quality assurance symbol
  denoting that the products on which it is applied,
  are made from 100% new wool and comply with
  strict performance specifications set down by the
  Woolmark Company. It is registered in over 140
  countries and licensed to manufacturers who are
  able to meet quality standards in 67 countries
 iii) Use of certification mark together
          with individual mark
• Certification mark and individual mark can
  be used concurrently
• The label used as a certification mark will
  be evidence that the product meets the
  prescribed quality and standards
  3. Geographical Indications
            cont

• Sign used on goods that have a specific
  geographical origin and/or possess
  qualities or a reputation that are due to that
  place or origin.
• Interrelation between product and origin
Examples
• Champagne for sparkling wine (France)
• Bordeaux for wines (France)
• Tequila for alcohol (Mexico)
                  GIs cont..
• The term is intended to be used in its widest
  possible meaning.
• It embraces all existing means of protection of
  such names and symbols (Eiffel towers),
  regardless of whether they indicate that the
  qualities of a given product are due to its
  geographical origin (appellation of origin) or they
  merely indicate the place of origin of a product
  (indication of source)
        ii)   Appellation of Origin

• An appellation of origin is a special kind
  of geographical indication.
• It generally consists of a geographical
  name or a traditional designation used on
  products which have a specific quality or
  characteristics that are essentially due to
  the geographical environment in which
  they are produced.
         iii) Indication of Source

• Any expression or sign used to indicate that a
  product or service originates in a country, a
  region or specific place.
• Indication of source on a given product is merely
  subject to the conditions that this product
  originates from the place designated by the
  indication of source. e.g Made in Kenya
• In its general use, it has become rather a
  designation for those indications of source which
  are not considered to be appellation of origin.
        Appellation of Origin cont..

• The use of appellation of origin requires a quality
  link between the product and its area of
  production. This qualitative link consists of
  certain characteristics of the product which are
  exclusively or essentially attributable to its
  geographical origin such as climate, soil or
  traditional methods of production
• The concept of a geographical indication
  encompasses appellations of origin.
       Examples of GIs cont..
• Example 1: Tequila (Mexico)
• Tequila, a Mexican drink, has acquired a distinct
  identity.
• Means of Protection as GI
   Through a presidential decree in 1977, and is
     only produced Five Mexican states that have
     exclusive right to produce the beverage.
   In 1978, tequila registered under the Lisbon
     Agreement and established its international
     status.
   The Mutual Recognition Agreement signed
     between Mexico and the European Union for
     the reciprocal recognition of GIs in 1998.
                    Tequila
• Protection –Its producers to market it worldwide
• No other product made with alternative
  ingredients could be marketed as Tequila.
• Over 190 million liters of tequila sold annually
• because producers were able to guarantee the
  quality of the product and they could avoid the
  name being misused.
• Example 2. Swiss for watches Quality commonly
  associated with Switzerland range from the
  precision and reliability of its craftsmanship, to
  the purity and health-giving properties of its
  Alpine environment.
        Examples of GIs Cont
• Example 3. “Tuscany” for olive oil produced in a
   specific area of Italy (protected, for example, in
   Italy by Law No. 169 of February 5, 1992),
• Example 4“Roquefort” for cheese produced
 in France (protected, for example, in the
   European Union under Regulation (EC) No.
   2081/92 and in the United States under US
   Certification Registration Mark No. 571.798).
    iv) Difference between GIs and
               Trademark
a) A trademark is a sign used by an enterprise to
   distinguish its goods and services from those
   of other enterprises.
   It gives its owner the right to exclude others
   from using the trademark. A trademark will
   often consist of a fanciful or arbitrary name or
   device.
a) A geographical indication tells consumers that
   a product is produced in a certain place and
   has certain characteristics that are due to that
   place of production.
Difference between GIs and Trademark
                cont..
c) It may be used by all producers who
   make their products in the place
   designated by a geographical indication
   and whose products share specified
   qualities.
d) Unlike a trademark, the name used as a
   geographical indication will usually be
   predetermined by the name of the place
   of production.
iv) Legal frameworks for Protection of
                GIs
International Treaties administered by
 WIPO
Trade Related Aspects of Intellectual
 Property Right (TRIPS) Agreement, They
 are also covered under Articles 22 to 24
National laws
Other relevant methods
a) Treaties administered by WIPO
International Treaties administered by WIPO
• Paris Convention Article 1(2) deals specifically
  with indications of source or appellation of origin
  in the list of objects of industrial property. Others
  include Articles 9 (provides for the sanctions for
  false indications of source) and 10 (protection of
  indications of source)
• Madrid Agreement for the Repression of False
  or Deceptive Indications of Source on Goods
• Lisbon Agreement for the protection of
  Appellation of Origin and their international
  registration
      Conditions of Article 1(2)

Appellation of origin must be recognized and
 protected as such in the country of origin.
 (each appellation must benefit from a distinct
 and express protection, deriving from a specific
 official act- a legislative or administrative
 provision, or a judicial decision, or a registration)
such an official act is required because the
 specific elements of the object of protection (the
 geographical area, the lawful users and the
 nature of the product)
The appellation of origin must be registered with
 the International Bureau of WIPO
       b)   Bilateral Agreements

• Bilateral agreements between two states
  for the protection of their GIs
• List of GIs prepared by contracting states
• The agreement specifies type of protection
  that is granted
• Disadvantages
• Requires multiplicity of negotiations and
  thus inevitable diversity of standards
     c)   National laws for Protection of GI

i.   Special laws for the protection of geographical
     indications or appellations of origin
ii. trademark laws in the form of collective marks
     or certification marks
iii. laws against unfair competition (Any Act of
     competition which are contrary to honest
     practices)
iv. consumer protection laws, or
v. specific laws or decrees that recognize
     individual geographical indications.
          v)   Term of protection

Protection is unlimited in time
Protection cannot become generic
There is no renewal of registration required
Fees paid once
Application lodged by the member country and
 not individual
  vi) Economic Significance of GIs
• Initial calls for protection were by the wine
  producing countries
• The basic economic function of
  trademarks and geographical indications is
  to protect the goodwill of products to
  which they relate
• Developing countries show an increasing
  interest in gaining market access for their
  products by using geographical indications
  such as Basmati Rice, Jasmin Rice, or the
  like.
     Economic significance of GIs cont..
• In Europe, a number of patterns have emerged
  in connection with the use of geographical
  indications.
• First, legal certainty due to the registration
  system has led to an increased investment and
  marketing of GIs
• This has resulted in markedly increased exports,
  particularly into other countries.
• Quality controls that are necessary under the
  European Regulation have helped customer
  confidence and quality in the products as such.
• Beyond the European region, developing
  geographical indications it seems will take time.
       Economic Significance of GIs

• Since Geographical indications still attach
  most importance to wines and spirits.
• The use of geographical indications may
  also offer promising perspectives for
  marketing and sale of herbal medicine or
  cosmetics originating in tropical or semi-
  tropical countries.
          vi) Licensing of GIs
• GIs by their very nature cannot be subject
  matter of licensing.
• Technology and know-how for producing
  Champagne or Cognac may be, in principle,
  transferred to a person producing sparkling wine
  or brandy outside the region of Champagne or
  Cognac,
• but the right to label the licensed product to
  be champagne or cognac of course cannot be
  transferred as well. This is the reason why in
  reality such a license is very unlikely.
• However, the point here is that even if such a
  transaction takes place, it cannot comprise the
  license for use of licensor’s geographical
  indication.
           Licensing of GIs..
• On the other hand, a person entitled to use a
  geographical indication obviously does not need
  a license for it even if such a person obtains
  the know-how from another person in the
  region also entitled to use of the same
  geographical indication.
• The economic function of GIs is much the same
  as that of trademarks. First, there exist
  related goodwill.
• Second, they establish and protect market
  identity, by distinguishing the goods bearing a
  GI from same or similar goods of a different
  geographical origin, though this distinctiveness
  is on a collective rather than on individual
  level.
    4. The Case of Developing
           Countries

• The vast majority of products that are
  eligible for GIs are agricultural products,
  foodstuffs, wines and spirits.
• It goes almost without saying that
  developing countries and also countries
  in transition are the major geographical
  source.
Examples of products that could be
 sold as geographical indications
• for most of such products which are sold
  worldwide – cloves, coffee, tea, cacao, rice,
  bananas, coconuts, mango, papaya, tapioca,
  spices, flowers, alcoholic and nonalcoholic local
  drinks….
• However, protection of geographical
  indications has been seldom applied to the
  extent available in many of those countries.
• By implication, economic benefits possibly
  gained on this basis have not been realized, or
  at least not to the appropriate extent.
   Need for GIs in Africa: The Case of
            Ethiopian Coffee
• Well known brands of Ethiopian gourmet coffee
      • Yirgachefe
      • Sidamo               All are place names
      • Harar
• Starbucks and others have been marketing at
  premium price using these names. Considered
  the finest quality coffee, attributable to the
  ecological conditions of these places. (therefore,
  qualifying for Geographical Indications under
  TRIPS.)
       The Case of Ethiopian Coffee

• Studies show retail price to average $26 a
  pound, while the amount trickling to the
  country from each pound is max. of a mere
  $1. (around 60 cents).
• Despite coffee being the second most traded
  commodity (next to oil) farmers all over the
  world esp. in Africa have been suffering. One
  of the worst hit: Ethiopian coffee growers
  (some 11 million of them).
    Jaffee Oranges from Israel
• After all, Israel only joined the Lisbon
  Agreement for the Protection of
  Appellations of Origin in order to have its
  famous Jaffee oranges protected.
• Tanzania and Zanzibar Products that can
  be considered for protection as GIs
  include cloves and sisal respectively
  mainland just to mention a few
       5. Enforcement of GIs
• In essence, unauthorized parties may not
  use a geographical indication in respect of
  products that do not originate in the place
  designated by that indication.
• Applicable sanctions range from court
  injunctions preventing the unauthorized
  use to the payment of damages and fines
  or, in serious cases, imprisonment.
                 Exercise
• Identify products that can be protected as
  GIs in the country
• Identify products that can utilize collective
  marks as marketing strategies
• Identify some certification marks in your
  country
    THANK YOU
FOR YOUR ATTENTION

				
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