Geographical Indications in Korea

Geographical Indications in Korea June 2007 Prof. Nohyoung Park Korea University Protection of GIs, otherwise, in Korea  Unfair Competition Prevention and Trade Secrets Protection Act  To prohibit, as unfair competition, use of marks identical or similar to another person's name, trade name, emblem or any other well known mark, including selling, distributing, importing or exporting goods so marked, that would mislead the public on the place of production To prevent deceptive labelling and advertising, including any vague or false labelling or advertising that may mislead consumers on the product's origin To prevent registration of trademarks consisting of a "conspicuous geographical name" To prevent registration of any trade mark containing geographical indications for wines or spirits originating in any WTO Member (Art. 7(1)(xiv)) To prohibit Imports or exports with false origin indications or infringing GIs 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.)  Fair Labelling and Advertising Act   Trademark Law    Foreign Trade Act  Introduction of GI systems, as in the TRIPS, in Korea     To actively respond to internationally strengthened protection of GIs To actively protect excellent local agricultural products abroad as well as domestically To promote competitiveness of local agricultural products against imported products through differentiation of quality To cultivate local agricultural products as locally specific industry through quality promotion 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Introduction of GI systems, as in the TRIPS, in Korea       1999.7: GI, as in the TRIPS, provided in APQC Act 2000.9: Regulation on GI Registration Committee adopted 2000.9: Products subject to GI registration announced 2001.8: GI Registration Committee comprised (10 ex officio, 17 appointed) 2004.12: Collective Mark for a GI provided in Trademark Act 2006.11: GI Registration Committee comprised secondly (7 ex officio, 13 appointed) 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) GI Systems in Korea Products Agricultu ral Legal Basis APQC Act – in 1999 FPQC Act – in 1999 Trademark Act – in 2004 Administration Agricultural Ministry (NAPQCS) Fishery All Fishery Ministry (NFPQCS) Industry and Energy Ministry (KIPO) 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Two Major Systems of GI in Korea Legal Basis Definition Trademark Act Art. 2(1)(iiibis): an indication that identifies a good as originating in a certain region where a given quality, reputation or other characteristic of the good is essentially attributable to that region All products (no services) Agricultural Product Quality Control Act Article 2(5): an indication that serves to designate a product or a processed product originating therein, the reputation, quality and characteristics of which are essentially attributable to the geographical origin Scope Agricultural products and their processed products among those given a notice by Agricultural Minister 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Two Major Systems of GI in Korea Trademark Act Criteria GIs that conform to the definition stipulated in TRIPS article 22 in addition to common requirements of collective marks Agricultural Product Quality Control Act GIs that conform to the definition stipulated in TRIPS article 22 and additional elements (Art. 15 of the Enforcement Decree) 1.Products of which the fame of its quality is wellknown within and beyond Korea; 2.Products of which the reputation, quality or other characteristics of that product is essentially attributable to a certain region’s productiveenvironment or human factors. 3.Product should have been cultivated in the area or processed in the area using the product cultivated in the area; 4.Products that meet other criteria that the Minister of Agriculture and Forestry regards as necessary to acquire protection as geographical indications 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Two Major Systems of GI in Korea Trademark Act Body in charge Korean Intellectual Property Office (KIPO); An examiner reviews an application. Agricultural Product Quality Control Act National Agricultural Products Quality Control Service (NAPQCS); GI Registration Committee reviews an application, involving on-site investigation by a subcommittee Effects The same bundle of rights granted to the owner of a trademark with some limitations; Effective for 10 years, renewable. GI owner can ask for civil and criminal remedies against infringement. Appears freely in the way the owner wants to use the registered GI Use of GI with the mark issued by the Ministry and protection against the illegal use of the GI; Effective permanently. Administrative and criminal remedies are provided, with civil remedies allowed; Appears with a mark that shows to consumers that GI is warranted by the government Remedies Appearance 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) GIs Registered in Korea  Agricultural Ministry Year 2002 Boseong green tea 2003 Hadong green tea 2004 Gochang bokbunja (liquer) 2005 Seosan garlic, Icheon rice and others 2006 Gogeung yuja, Hoengseong beef and others 2007 Jindo red wine, Bonghwa pine mushroom and others as of April 2007 No. 1 1 1 10 20 5 Products 27 agricultural and 11 forest products 13 products under review 101 agricultural and 50 forest products listed by Agricultural Minister for GI eligibility 38 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Boseong green tea registered in 2002 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Hadong green tea registered in 2003 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Gochang bokbunja (raspberry liquer) registered in 2004 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Seosan garlic registered in 2005 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Goheung yuja (citron) registered in 2006 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Bonghwa pine mushroom registered in 2007 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) GIs Registered in Korea  Fishery Ministry as of April 2007 ▶ Products being geared up 1. Youngduk big crab 2. Inje Yongdaeri yellow cod 3. Boseong Bulgyeo cockle 4. Wando laver, etc. 5. Gijang brown seaweed 6. Jangheung pen shell Youngduk big crab 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Collective Marks for GI in Korea  Korean Intellectual Property Office (KIPO) Products 1 2 3 Jangheung shiitake mushroom Goheung yuja (citron) Yangyang pine mushroom Date of registration 2006. 10. 26. (also registered under APQC Act) 2007. 2. 9. (also registered under APQC Act) 2007. 2. 9. (also registered under APQC Act) Four products, also registered under APQC Act, and one new product, given notice of allowance on 14 March 2007. 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Background for two different GI systems in Korea   GIs have been applied and registered by the National Agricultural Product Quality Control Service (APQCS) and its GI Registration Committee under APQC Act since 2001. The GI system under APQC Act was regarded as ‘quality certification’ esp. by the KIPO.   APQCS has been mainly engaged in quality control of agricultural products. GI provisions in APQC Act give special emphasis to higher quality of GI registered products.  GI Registration Committee tended to pay attention to products’ superior quality. 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) GI and Quality Certification GI Geographical Criteria conditions Required QC Not required quality Quality and other characteristics attributable to geographical factors Required Higher quality required Not required reputation Range of geographical area Period of validity Specifed Permanent Not specified One year, renewable 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Background for two different GI systems in Korea  The KIPO amended the Trademark Act to incorporate GI in the form of a collective mark in Dec. 2004.  Agricultural Ministry’s opposition against the amendment was mediated, with difficulty, by Ministry of Finance and Economy.  GIs may be claimed for double protection for agricultural products under APQC Act and Trademark Act. 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Background for two different GI systems in Korea  Some critics for double protection of GIs  Wasteful use of administration  National APQCS v. KIPO Two applications for one product Two protections for the same product Two separate protection given to different entities in the same region 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.)  Wasteful use of money and effort   Confusion of consumers   Possible conflicts of rights and jurisdiction  Background for two different GI systems in Korea   Where products of an application for a collective mark for a GI are subject to APQC Act, the Commissioner of KIPO should obtain Agricultural Minister’s opinion on whether a GI is available. (“지 리적 표시 해당여부에 관하여” Art. 22bis of Trademark Act) A reasonable separation of regime may be desirable:   GIs for agricultural products and their processed ones under APQC Act GIs for industrial products and minerals under Trademark Act 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Protection of foreign GIs in Korea  Under APQC Act,   Foreign GIs for agricultural products that go through the same registration procedure and evaluation standards as Korean GIs may also be protected. If foreigners or Korean citizens want to receive GI protection, they may have to fill out a GI registration form under APQC Act, attach relevant documents, and submit them to National APQCS. 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Protection of foreign GIs in Korea  Under Trademark Act,    Trademarks may not be registered if they consist of GIs or include GIs of the origin of wines or spirits in a WTO member state. Trademark may not be registered if a mark consists solely of a sign that indicates a conspicuous geographical name or an abbreviation of a conspicuous geographical name. A GI of third countries may be registered as a collective mark if it meets the required conditions. 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.) Thank you. 고려대학교 통상법연구센터 (World Economic Law Research Center at KOREA UNIV.)