Trade Secrets

A trade secret is a formula, practice, process, design, instrument, pattern, commercial method, or compilation ofinformation which is not generally known or reasonably ascertainable by others, and by which a business can obtain an economic advantage over competitors or customers. In some jurisdictions, such secrets are referred to as "confidential information", but are generally not referred to as "classified information" in the United States, since that refers to government secrets protected by a different set of laws and practices.

Definition

The precise language by which a trade secret is defined varies by jurisdiction (as do the particular types of information that are subject to trade secret protection). However, there are three factors that, although subject to differing interpretations, are common to all such definitions: a trade secret is information that:

• Is not generally known to the public;
• Confers some sort of economic benefit on its holder (where this benefit must derive specifically from its not being publicly known, not just from the value of the information itself);
• Is the subject of reasonable efforts to maintain its secrecy.

These three aspects are also incorporated in the TRIPS Agreement in Article 39.

Protection of trade secret can, in principle, extend indefinitely and therefore may provide an advantage over patent protection, which lasts only for a specific period of time. Coca-Cola, for example, has no patent for its formula and has been very effective in protecting it for many more years than the twenty years of protection that a patent would have provided. In fact, Coca-Cola refused to reveal its trade secret under at least two judges' orders.^[7] The disadvantage is that there is no protection once information protected as trade secret is uncovered by others through reverse engineering, for example, whereas patent has a guaranteed time of protection in exchange for disclosing the information to the public.

referencewikipedia

IPR infringement cases

Horlicks Limited And Ors. vs Kartick Sadhukan, Delhi High Court 2002 (25) PTC 126 Del

Author: Rahul Cherian

This case revolves around the principle of infringement of trademark and copyright laws. HORLICKS Limited (hereinafter referred to as H) is a foreign company engaged in manufacturing of a wide range of food products, including foods for infants, children and invalids, malted milk, biscuits, toffees, etc. under the trademark HORLICKS, of which it claims to be the original registered owner. The trademark 'HORLICKS' was registered in India in relation to foods for infants, children as well as mailed milk as early as 1943, for biscuits in 1961 and in respect of toffees in 1966. H is also the owner of copyright of HORLICKS label and is exclusively entitled to reproduce and alter the features of the HORLICKS label in any material form as it deems fit.

Kartick Confectionery (hereinafter referred to as K) started manufacturing a similar look-alike product, namely, toffees under the trademark ‘HORLIKS’ infringing the trademark rights enjoyed by 'HORLICKS'. K also reproduced the label of H thereby amounting to the infringement of the copyright of the latter.

H contended that since the consumers of the product under the trademark HORLICKS included infants, children and adults it was the obligated to ensure that the quality and standard of the product met the prescribed requirements under the law. They further stated that they ensured that the products under the trademark HORLICKS were made under strict hygienic conditions. Accordingly, if K is permitted to use the challenged trademark HORLIKS, the right of which was never granted neither permitted by H, the latter was at all times at a risk of facing the consequences of K’s conduct and unauthorized use. Hence they filed for a suit seeking to permanently restrain K from infringing the H's trademark HORLICKS and also its copyrights which it enjoyed over the product.

A Single Judge Bench of the Delhi High Court comprising of Justice B Chaturvedi found out that H was indeed the original registered owner of the trademark HORLICKS in respect of food for children, malted milk, biscuits and toffees and all other products as a result of prior marketing and registration. With regards to toffees registration was done in India in 1966. And the company carried out various advertisements of its products under the trademark HORLICKS and thereby enjoyed sufficient goodwill and reputation for its products in India. The court ruled that use of the label and trademark HORLIKS by K in respect of toffees is very likely to cause confusion among the people. It would thereby lead to deception, majorly as a result of K having copied the trademark HORLICKS and also its label as and how it appears on the products manufactured and marketed by H.

Accordingly the court restrained K from manufacturing and selling toffees or other related goods under the trademark HORLIKS or under any other name that is similar in expression to H’s trademark HORLICKS. Further the court barred K from reproducing, printing or publishing any label which was a mere reproduction or imitation of K’s HORLICKS label, thereby protecting the latter’s copyright to the label.

Novartis v. Union of India & Others, Supreme Court of India Civil Appeal No. 2706-2716 of 2013

Author: Rahul Cherian

This is a landmark case concerning whether Novartis should be granted the right to patent Glivic, an anti-leukemia drug. The legal provisions dealing with the case are sections 2(1)(j), 2(1)(ja) and section 3(d) of the Indian Patent Act, 1970 (as amended in 2005).

Novartis had filed for a patent application of its beta crystalline form of ‘imatinib mesylate’ in 1998 as per the TRIPS agreement of the World Trade Organization. However, the application for the patent filing was processed only in the year 2005 after India allowed for product patents. The authority in charge of granting patents, The Assistant Controller of Patents and Designs rejected the application of Novartis on the ground that if failed to satisfy the requirement of novelty and non-obviousness as per the Indian Patents Act, 1970.

At that time the appellate tribunal board overseeing the cases related to the patents was not in existence. Thereby Novartis filed for appeals before the Madras High Court in 2006. But before the high court could decide on the matter, the Intellectual Property Appellate Board was formed and the case was transferred thereto as per the Section 117G of the Act that provides for transfer of pending proceedings before the Appellate Board. The board deviated from the earlier decision given by the Assistant Controller of Patents and Designs and held that Novartis met the requirements of novelty and non-obviousness as per the Patents Act.  However it rejected the application on the ground that it was a mere discovery of a new form of a known substance which did not result in the  enhancement of the known efficacy of that substance and also because Novartis could not prove any significant efficacy of the drug. Thus the application was rejected by the board since Novartis failed to fulfill the requirements as per Section 3(d) of the Indian Patents Act, 1970.

Not satisfied with the ruling of the appellate board, Novartis decided to go for a proceeding before the Madras High Court with the contention that Section 3(d) of the Act was violative of Article 14 of the Indian constitution. It stated that the requirement as per the section with regards to “enhanced efficacy” was vague and gave away unrestricted power to the patent examiner, thereby leading to arbitrary control of power in the hands of the authority.  In 2007 the High Court held that the object of the Section 3(d) was to prevent intellectual monopoly privileges, also known as ‘evergreening’ by companies and further held that Novartis had the right to present the case before a court of law over the appellate board. 

Subsequently in 2009,  after the appellate board rejected the patent application, Novartis appealed directly before the Supreme Court through a special leave petition under Article 136 of the Indian constitution. It was represented in the apex court by ex-Solicitor General of India Gopal Subramaniam and senior advocate T. R. Andhyarujina. Their chief contentions were as follows:

• That the company had met the required criteria of novelty and inventive step as the compound in question, the beta crystalline form is only one polymorph of imatinib mesylate.
• That the compound in its beta crystalline form had enhanced efficacy over other variants of the same compound such as imatinib or imatinib mesylate and thereby all requirements of the section 3(d) of the Indian Patents Act, 1970 stands fulfilled.
• That sufficient research was carried out to selectively prepare the beta crystalline form of imatinib mesylate and it was worthy of being granted patent rights.

The contentions made by the Additional Solicitor General of India Paras Kuhad are as follows:

• That the beta crystalline form of the compound is neither novel nor non-obvious owing to publications about it in the ‘Cancer Research and Nature’ in 1996, and various other disclosures in Zimmerman patents and by Food and Drug Administration, U.S
• Further the requirement of efficacy as stated in section 3(d) of the Act should be held to be interpreted on lines of therapeutic efficacy and not merely one of physical efficacy.

Taking into consideration the contentions of the parties, the Supreme court held that Novartis failed to meet the requirement of novelty.  And also thereby failing to qualify for the test of invention as provided for under in section 2(1)(j) and section 2(1)(ja) of the Patents Act, 1970 as a result of the various publications and disclosures already made about the beta crystalline form of the compound, Imatinib Mesylate. Further the court decided to interpret efficacy as laid down in section 3(d) of the Act of lines of therapeutic efficacy and not merely physical efficacy. It held that though physical efficacy of imatinib mesylate in beta crystalline form is enhanced in comparison to other forms. But since there was no substantive and conclusive material and evidence to prove that beta crystalline form of imatinib mesylate will produce an enhanced or superior therapeutic efficacy, Novartis failed to meet the requirements under Section 3(d) of the Act. The Supreme Court went with the therapeutic efficacy interpretation over physical efficacy owing to the fact that the compound was of medicinal value.

Thus the decision given by a Bench of the Supreme Court, comprising of Mr. Justice Aftab Alam and Ms. Justice Ranjana Prakash Desai upheld the rejection of the patent application filed by Novartis for Glivec in 1998 before the Indian Patent Office.

Cadila Healthcare Limited vs. Cadila Pharmaceuticals Limited, Supreme Court of India (2001) 5 SCC 73

Author: Rahul Cherian

This is a case concerning the concept of similarity of a trademark in law. In this case, Cadila Healthcare Limited (hereinafter referred to as the petitioner) and Cadila Pharmaceuticals Limited (hereinafter referred to as the respondent) were both pharmaceutical companies engaged in the business of manufacture and selling of various pharmaceutical products and drugs. The two companies had taken over the business of the former Cadila Group after its restructuring under Sections 391 & 394 of the Companies Act. Both the companies got the right to use the name Cadila as part of their business and corporate existence.

The petitioner was engaged in the manufacture of a drug known as Falcigo containing Artesunate for the treatment of cerebral malaria commonly known as Falcipharum. After its introduction into the markets, the petitioner applied for its registration of trademark to Trade Marks Registry, Ahmedabad. Thereafter in the year 1996 the Drugs Controller General of India granted permission to the petitioner to market the said drug under the trademark of Falcigo. Subsequently the petitioner started selling the drug all over India.

In 1997 the respondent got the permission from the Drugs Controller General of India to manufacture a drug containing Mefloquine Hydrochloride. Further the company was also allowed to import the drug from abroad. Thereafter, in 1998 the petitioner discovered that the respondent was engaged in the business of selling the said drug under the trade mark Falcitab. Even this drug was used for the treatment of Falcipharum Malaria. The petitioner then filed a suit in the District Court at Vadodara seeking injunction against the respondent from using the trademark Falcitab and claimed that it would lead to confusion among the public, thereby causing deception.

The respondent contended that the word Falci was taken from the name of the disease Falcipharum Malaria. And moreover it was a common practice in the pharmaceutical trade to use a part of the name of the disease as a trademark to indicate to the doctors and chemists that a particular drug was meant for the treatment of a particular disease. Further the company contended that both drugs in question were Schedule L drugs which meant that they could only be sold to the hospitals and clinics. The result being that it ensured there was no room for any confusion or deception.

The Extra Assistant Judge of the District Court at Vadodara came to the conclusion that both the drugs in question differed in their appearance, chemical formulation and price. And since they could only be sold to hospitals and clinics and not to the general public, there was no chance of any deception or confusion. Hence, he dismissed the injunction application of the petitioner. Thereafter, the petitioner went for an appeal to the High Court of Gujarat. The High Court upheld the decision granted by the district court.

Then, the petitioner went for an appeal before the Supreme Court of India under Article 136 of the Constitution of India. The case was decided by a Division Bench of the court comprising of Justice B.N.Kripal, Justice D Raju and Justice B Kumar. The bench invoked the contents of Section 17-B of the Drugs and Cosmetics Act, 1940. It provides that in order to avoid confusion or deception in the market, the concerned authorities responsible for grant of trademarks under the Act should verify that trademark in question. And ensure that it is not an imitation or resemblance of a previously held trademark. Further that the applicant to the trademark should submit an official search report from the Trade Mark office pertaining to the trade mark in question.

And after taking into consideration the contentions of both the parties the division bench of the apex court held that the petitioner was right in claiming for infringement of their trademark. It ruled that since the products in question were medicinal products there was a greater risk of confusion compared to non-medicinal products. And it could have fatal and disastrous effects on the buyers. And accordingly the appeal was disposed of by the bench. 

Colgate Palmolive Co. Ltd & Another. vs. Mr. Patel & Others., Delhi High Court 2005 PTC (31) 583

Author: Rahul Cherian

This is a case relating to the legal principle of infringement of a trademark. It was decided by a Single Judge Bench of the Delhi High Court comprising of Justice M Mudgal.

Colgate Palmolive Co. Limited (hereinafter referred to as the plaintiffs) is a company that has been manufacturing and marketing dental products in India under the well-known trademark 'COLGATE' since 1937. The company undoubtedly is also an international leader in the trade of tooth paste and other dental related products. The plaintiffs registered their trademark in India in the year 1954. Since then they have always marketed their products in red cartons which had the word COLGATE inscribed in white on it. They used a particular font for printing the trademark on the cartons. Further they had even registered their label relating to colors in India in the year 1959. From then on they have been exclusively enjoying the ownership rights over the trademark 'COLGATE' and also the label containing the red and white colors inscribed on it.

In the year 2003 the plaintiffs came to know that Mr. Patel and his company(hereinafter referred to as the defendants) were using the plaintiff's COLGATE trade dress in the packaging of their products with relation to the layout and color combination of the cartons. The defendants used the word 'AJANTA' printed in white color in a red background in their cartons. Subsequently the plaintiffs filed a suit before the Delhi High Court seeking a permanent injunction against the defendants, thereby restraining them from using the trade dress that was similar in layout and appearance even though the names printed on the cartons were different.  They contended that the defendants had infringed their trademark and copyrights. And further that they were indulging in unfair competition by trying to sell their products using the brand name of trademark COLGATE.

On the other hand, the defendants contended that there was nothing distinctive in the color combination of the plaintiff's container and that the plaintiff could not have a trademark in color combination. Further they claimed that the red and white label was common to the toothpaste trade.

The Honorable Judge observed that essential feature of the plaintiffs' mark was COLGATE inscribed in white color on a red background and not merely red and white color combination alone. He held that the printing of the word ‘AJANTA’ on the defendants’ cartons in white color on a red background does not give rise to any infringement of the plaintiffs’ trade dress. Also affirmed the contention of the defendants that red was a basic color and the red & white color combination is common to the tooth paste trade in the domestic as well as the international market. Hence there cannot be any monopolization of the same by any party. However, he finally held that the defendants were liable for trying to sell their products using the brand name of COLGATE since there was sufficient resemblance between the plaintiffs' and the defendants' product. Further the court ruled that if the defendant alters the packaging there would not arise any question of infringement of the copyright and trademark of the plaintiff. Accordingly the court ordered them to substitute gold for white color in the description of ‘AJANTA’ in their cartons.

Thus, the injunction application was disposed of by the court and the defendants were permitted to market their products provided they made the required alterations in their packaging of the products.  

copyrights and related rights

Related rights

The purpose of related rights is to protect the legal interests of certain persons and legal entities who contribute to making works available to the public; or who produce subject matter which, while not qualifying as works under the copyright systems of all countries, contain sufficient creativity or technical and organizational skill to justify recognition of a copyright-like property right. The law of related rights deems that the productions which result from the activities of such persons and entities merit legal protection in themselves, as they are related to the protection of works of authorship under copyright. Some laws make clear, however, that the exercise of related rights should leave intact, and in no way affect, the protection of copyright.

Traditionally, related rights have been granted to three categories of beneficiaries: performers, producers of phonograms and broadcasting organizations

The rights of performers are recognized because their creative intervention is necessary to give life to, for example, motion pictures or musical, dramatic and choreographic works; and because they have a justifiable interest in legal protection of their individual interpretations. The rights of producers of phonograms are recognized because their creative, financial and organizational resources are necessary to make sound recordings available to the public in the form of commercial phonograms; and because of their legitimate interest in having the legal resources to take action against unauthorized uses, be this the making and distribution of unauthorized copies (piracy), or the unauthorized broadcasting or communication to the public of their phonograms. Likewise, the rights of broadcasting organizations are recognized because of their role in making works available to the public, and in light of their justified interest in controlling the transmission and retransmission of their broadcasts.

The rights granted to the three beneficiaries of related rights in national laws are as follows (although not all rights may be granted in the same law): Performers are provided the rights to prevent fixation (recording), broadcasting and communication to the public of their live performances without their consent, and the right to prevent reproduction of fixations of their performances under certain circumstances. The rights in respect of broadcasting and communication to the public may be in the form of equitable remuneration rather than a right to prevent. Due to the personal nature of their creations, some national laws also grant performers moral rights, which may be exercised to prevent unauthorized uses of their name and image, or modifications to their performances which present them in an unfavorable light Producers of phonograms are granted the rights to authorize or prohibit reproduction, importation and distribution of their phonograms and copies thereof, and the right to equitable remuneration for broadcasting and communication to the public of phonograms. Broadcasting organizations are provided the rights to authorize or prohibit re-broadcasting, fixation and reproduction of their broadcasts.

Under some laws, additional rights are granted. For example, in a growing number of countries, producers of phonograms and performers are granted a right of rental in respect of phonograms (audiovisual works in respect of performers), and some countries grant specific rights over cable transmissions. Likewise under the WPPT, producers of phonograms (as well as any other right holders in phonograms under national law) are granted a right of rental.

The duration of protection of related rights under the Rome Convention is 20 years from the end of the year (a) that the recording is made, in the case of phonograms and performances included in phonograms; or (b) that the performance took place, in the case of performances not incorporated in phonograms; or (c) that the broadcast took place, for broadcasts. In the TRIPS Agreement and the WPPT, however, the rights of performers and producers of phonograms are to be protected for 50 years from the date of the fixation or the performance. Under the TRIPS Agreement, the rights of broadcasting organizations are to be protected for 20 years from the date of the broadcast. Thus many national laws which protect related rights grant a longer term than the minimum contained in the Rome Convention.
Reference
http://www.wipo.int/edocs/pubdocs/en/intproperty/909/wipo_pub_909.pdf

Trade Secret

What is a Trade Secret?

Broadly speaking, any confidential business information which provides an enterprise a competitive edge may be considered a trade secret. Trade secrets encompass manufacturing or industrial secrets and commercial secrets. The unauthorized use of such information by persons other than the holder is regarded as an unfair practice and a violation of the trade secret. Depending on the legal system, the protection of trade secrets forms part of the general concept of protection against unfair competition or is based on specific provisions or case law on the protection of confidential information.

The subject matter of trade secrets is usually defined in broad terms and includes sales methods, distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes. While a final determination of what information constitutes a trade secret will depend on the circumstances of each individual case, clearly unfair practices in respect of secret information include industrial or commercial espionage, breach of contract and breach of confidence.

How are Trade Secrets Protected??

Contrary to patents, trade secrets are protected without registration, that is, trade secrets are protected without any procedural formalities. Consequently, a trade secret can be protected for an unlimited period of time. For these reasons, the protection of trade secrets may appear to be particularly attractive for SMEs. There are, however, some conditions for the information to be considered a trade secret. Compliance with such conditions may turn out to be more difficult and costly than it would appear at first glance. While these conditions vary from country to country, some general standards exist which are referred to in Art. 39 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement):

• The information must be secret (i.e. it is not generally known among, or readily accessible to, circles that normally deal with the kind of information in question).
• It must have commercial value because it is a secret.
• It must have been subject to reasonable steps by the rightful holder of the information to keep it secret (e.g., through confidentiality agreements).

Example

An SME develops a process for the manufacturing of its products that allows it to produce its goods in a more cost-effective manner. Such a process provides the enterprise a competitive edge over its competitors. The enterprise in question may therefore value its know-how as a trade secret and would not want competitors to learn about it. It makes sure that only a limited number of people know the secret, and those who know it are made well aware that it is confidential. When dealing with third parties or licensing its know-how, the enterprise signs confidentiality agreements to ensure that all parties know that the information is a secret. In such circumstances, the misappropriation of the information by a competitor or by any third party would be considered a violation of the enterprise's trade secrets.

Precautionary Measures to be Taken by Your SME

Trade secrets are widely used by SMEs. In fact, many SMEs rely almost exclusively on trade secrets for the protection of their IP (although in many cases they may not even be aware that trade secrets are legally protected). It is important, therefore, to make sure that enterprises take all necessary measures to protect their trade secrets effectively. This includes:

• Firstly, considering whether the secret is patentable and, if so, whether it would not be better protected by a patent.
• Secondly, making sure that a limited number of people know the secret and that all those who do are well aware that it is confidential information.
• Thirdly, including confidentiality agreements within employees' contracts. Under the law of many countries, however, employees owe confidentiality to their employer even without such agreements. The duty to maintain confidentiality on the employer's secrets generally remains, at least for a certain period of time, even after the employee has left the employment.
• Fourthly, signing confidentiality agreements with business partners whenever disclosing confidential information.

Patents or Trade Secrets?

Trade secrets are essentially of two kinds. On the one hand, trade secrets may concern inventions or manufacturing processes that do not meet the patentability criteria and therefore can only be protected as trade secrets. This would be the case of customers lists or manufacturing processes that are not sufficiently inventive to be granted a patent (though they may qualify for protection as a utility model). On the other hand, trade secrets may concern inventions that would fulfil the patentability criteria and could therefore be protected by patents. In the latter case, the SME will face a choice: to patent the invention or to keep it as a trade secret.

Some advantages of trade secrets include:

• Trade secret protection has the advantage of not being limited in time (patents last in general for up to 20 years). It may therefore continue indefinitely as long as the secret is not revealed to the public.
• Trade secrets involve no registration costs (though there may be high costs related to keeping the information confidential).
• Trade secrets have immediate effect.
• Trade secret protection does not require compliance with formalities such as disclosure of the information to a Government authority.

There are, however, some concrete disadvantages of protecting confidential business information as a trade secret, especially when the information meets the criteria for patentability:

• If the secret is embodied in an innovative product, others may be able to inspect it, dissect it and analyze it (i.e. "reverse engineer" it) and discover the secret and be thereafter entitled to use it. Trade secret protection of an invention in fact does not provide the exclusive right to exclude third parties from making commercial use of it. Only patents and utility models can provide this type of protection.
• Once the secret is made public, anyone may have access to it and use it at will.
• A trade secret is more difficult to enforce than a patent. The level of protection granted to trade secrets varies significantly from country to country, but is generally considered weak, particularly when compared with the protection granted by a patent.
• A trade secret may be patented by someone else who developed the relevant information by legitimate means.

Reference 

http://www.wipo.int/sme/en/ip_business/trade_secrets/trade_secrets.htm

industrial design

What is an industrial design?

In a legal sense, an industrial design constitutes the ornamental or aesthetic aspect of an article.

An industrial design may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color.

What kind of protection does an industrial design right offer? ↓

In principle, the owner of a registered industrial design or of a design patent has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

What kind of products can benefit from industrial design protection? ↓

Industrial designs are applied to a wide variety of products of industry and handicraft items: from packages and containers to furnishing and household goods, from lighting equipment to jewelry, and from electronic devices to textiles. Industrial designs may also be relevant to graphic symbols, graphical user interfaces (GUI), and logos.

How are industrial designs protected? ↓

In most countries, an industrial design needs to be registered in order to be protected under industrial design law as a “registered design”. In some countries, industrial designs are protected under patent law as “design patents ”.

Industrial design laws in some countries grant – without registration – time- and scope limited protection to so-called “unregistered industrial designs”.

Depending on the particular national law and the kind of design, industrial designs may also be protected as works of art under copyright law.

India

India's Design Act, 2000 was enacted to consolidate and amend the law relating to protection of design and to comply with the articles 25 and 26 of TRIPSagreement. The new act, (earlier Patent and Design Act, 1911 was repealed by this act) now defines "design" to mean only the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article, whether in two- or three-dimensional, or in both forms, by any industrial process or means, whether manual or mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction.

Rrefernce 

http://www.wipo.int/designs/en/

https://en.wikipedia.org/wiki/Industrial_design_right

Geographical Indication

Basics

What is a geographical indication? ↓

A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production.

What rights does a geographical indication provide? ↓

A geographical indication right enables those who have the right to use the indication to prevent its use by a third party whose product does not conform to the applicable standards. For example, in the jurisdictions in which the Darjeeling geographical indication is protected, producers of Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in their tea gardens or not produced according to the standards set out in the code of practice for the geographical indication.

However, a protected geographical indication does not enable the holder to prevent someone from making a product using the same techniques as those set out in the standards for that indication. Protection for a geographical indication is usually obtained by acquiring a right over the sign that constitutes the indication.

For what type of products can geographical indications be used? ↓

Geographical indications are typically used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.

How are geographical indications protected? ↓

There are three main ways to protect a geographical indication:

• so-called sui generis systems (i.e. special regimes of protection);
• using collective or certification marks; and
• methods focusing on business practices, including administrative product approval schemes.

These approaches involve differences with respect to important questions, such as the conditions for protection or the scope of protection. On the other hand, two of the modes of protection — namely sui generis systems and collective or certification mark systems — share some common features, such as the fact that they set up rights for collective use by those who comply with defined standards.

Broadly speaking geographical indications are protected in different countries and regional systems through a wide variety of approaches and often using a combination of two or more of the approaches outlined above. These approaches have been developed in accordance with different legal traditions and within a framework of individual historical and economic conditions.

How long does geographical indication protection last? ↓

In many sui generis legislations, registrations for geographical indications are not subject to a specific period of validity. This means that the protection for a registered geographical indication will remain valid unless the registration is cancelled.

Geographical indications registered as collective and certification marks are generally protected for renewable ten-year periods.

Who can use a protected geographical indication? ↓

The right to use a protected geographical indication belongs to producers in the geographical area defined, who comply with the specific conditions of production for the product.

How are geographical indication rights enforced? ↓

Like all intellectual property rights, the rights to geographical indications (GI) are enforced by the application of national legislation, typically in a court of law. The right to take action could rest with a competent authority, the public prosecutor, or to any interested party, whether a natural person or a legal entity, whether public or private. The sanctions provided for in national legislation could be civil (injunctions restraining or prohibiting unlawful acts, actions for damages, etc.), criminal, or administrative.

What is the difference between a geographical indication and a trademark? ↓

Geographical indications (GIs) identify a good as originating from a particular place. By contrast, a trademark identifies a good or service as originating from a particular company.

A trademark often consists of a fanciful or arbitrary sign. In contrast, the name used as a geographical indication is usually predetermined by the name of a geographical area.

Finally, a trademark can be assigned or licensed to anyone, anywhere in the world, because it is linked to a specific company and not to a particular place. In contrast, a GI may be used by any persons in the area of origin, who produces the good according to specified standards, but because of its link with the place of origin, a GI cannot be assigned or licensed to someone outside that place or not belonging to the group of authorized producers.

What is the difference between a geographical indication and an indication of source? ↓

An indication of source can be defined as an indication referring to a country (or to a place in that country) as being the country or place of origin of a product. In contrast to a geographical indication, an indication of source does not imply the presence of any special quality, reputation, or characteristic of the product essentially attributable to its place of origin. Indications of source only require that the product on which the indication of source is used originate in a certain geographical area. Examples of indications of source are the mention, on a product, of the name of a country, or indications such as “made in ….”, “product of ….”, etc..

What is the difference between a geographical indication and an appellation of origin? ↓

Appellations of origin are a special kind of geographical indication (GI). GIs and appellations of origin require a qualitative link between the product to which they refer and its place of origin. Both inform consumers about a product’s geographical origin and a quality or characteristic of the product linked to its place of origin. The basic difference between the two concepts is that the link with the place of origin must be stronger in the case of an appellation of origin. The quality or characteristics of a product protected as an appellation of origin must result exclusively or essentially from its geographical origin. This generally means that the raw materials should be sourced in the place of origin and that the processing of the product should also take place there. In the case of GIs, a single criterion attributable to geographical origin is sufficient – be it a quality or other characteristic of the product – or even just its reputation.

What is the relationship between traditional knowledge (TK) and geographical indications? ↓

Products identified by a geographical indication are often the result of traditional processes and knowledgecarried forward by a community in a particular region from generation to generation. Similarly, some products identified by a geographical indication (GI) may embody characteristic elements of the traditional artistic heritage developed in a given region, known as “traditional cultural expressions” (TCEs). This is particularly true for tangible products such as handicrafts, made using natural resources and having qualities derived from their geographical origin.

GIs do not directly protect the subject matter generally associated with TK or TCEs, which remains in the public domain under conventional IP systems. However, GIs may be used to indirectly contribute to their protection, for instance, by preserving them for future generations. This can be done, for example, through the description of the production standards for a GI product, which may include a description of a traditional process or traditional knowledge.

What is a “generic” geographical indication? ↓

In the context of geographical indications, generic terms are names which, although they denote the place from where a product originates, have become the term customary for such a product. An example of a GI that has become a generic term is Camembert for cheese. This name can now be used to designate any camembert-type cheese.

The transformation of a geographical indication into a generic term may occur in different countries and at different times. This may lead to situations where a specific indication is considered to constitute a geographical indication in some countries, whereas the same indication may be regarded as a generic term in other countries.

What are “homonymous” geographical indications? ↓

Homonymous geographical indications (GI) are those that are spelled or pronounced alike, but which identify products originating in different places, usually in different countries. In principle, these indications should coexist, but such coexistence may be subject to certain conditions. For example, it may be required that they be used only together with additional information as to the origin of the product in order to prevent consumers from being misled. A GI may be refused protection if, due to the existence of another homonymous indication, its use would be considered potentially misleading to consumers with regard to the product’s true origin.

refernce

http://www.wipo.int/geo_indications/en/faq_geographicalindications.html