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Geographic certification marks – common misperceptions
As an Attorney-Advisor at the United States Patent and Trademark Office (USPTO), I read with interest your feature on the Ethiopian and Colombian coffee stories (Making the Origin Count: Two Coffees, Issue no 5/2007). In that story, and in press reports surrounding the Ethiopian coffee initiative, I find serious misperceptions of the U.S. certification mark system - even among our own stakeholders. I would like to put the record straight here on some common misperceptions:
- Anyone meeting the standards can use the mark, so there is less control over a geographic term with certification marks than with trademarks.
No. It is true that if a producer meets the standards, the certification mark owner cannot refuse to certify that producer’s goods. This provides fairness in the system and enables producers throughout the region to benefit. However, just because you think you meet the standards in the registration certificate on the USPTO website, it does not mean you can use the mark. In order to get permission your goods have to go through the owner’s certification process, which, depending how this process is set up, is analogous to a licensing situation.
- Certified parties can register composite marks containing the registered certification mark since the use is ‘accurate.’
No. Once registered, these geographic certification marks are private property rights – they are no longer just descriptive terms. As such, the certification mark owner has the duty to control the use of the term by certified parties so as to preserve the ability of the mark to signify goods meeting certain quality standards or possessing other characteristics. USPTO policy precludes approval of subsequent applications for the same goods for composite marks that contain a registered certification mark without the certification mark owner’s consent.
- Geographic certification marks do not protect against use with “blend,” “type,” or “style.”
Wrong. A geographic certification mark, if properly controlled down the distribution chain, can provide grounds to foreclose use of the term with “blend,” “type” or “style.” Any such use by competitors suggests that they are unaware of the certification mark owner’s claim of exclusive rights to the mark. This could be caused by (a) a registration that contains additional, non-geographic elements in the mark, making it unclear that the geographic term is the dominant element in the mark and is therefore by itself actionable as to infringing uses; (b) the lack of a certification process with agreements spelling out how the mark may and may not be used; or (c) bad faith. The first two can be addressed by increased communication with certified parties and tighter controls over the use of the mark; the third by cease and desist letters, threats of litigation and, if necessary, legal action.
- European-style geographical indications (GIs) are better than certification marks.
If by “better,” you mean there is wider protection against any evocation of the mark (potentially even against comparative advertising - in possible conflict with U.S. First Amendment case law), and that there is government enforcement (paid for by the European taxpayer), then yes, Europe offers that. However, after nearly 15 years there are perhaps three foreign GIs protected in the European system. There is little incentive for a European taxpayer to accept financial responsibility for protecting foreign private property rights from use by European industry. And since enforcement is left up to the member states, it is difficult to see how effective it would be for foreign GI holders to rely on purely ex officio enforcement efforts, without having to pay for civil litigation.
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TRIPS flexibilities have not yet met development objectives
I found your article, Flexibilities in the Patent System: WIPO Patent Colloquium (Issue no. 2/2007), and Professor Zorina Khan’s article on IP Rights and Economic Development (Issue no. 3/2007), to be very pertinent. I agree with the conclusions reached at the Colloquium with regard to the need to achieve an optimum balance between protecting the rights of IP owners and adopting public policies designed to achieve the development of societies. Nevertheless, I consider that the “marriage of convenience” which should have resulted from the TRIPS Agreement has not been fully realized, inasmuch as the claimed objectives of promoting social well-being and achieving greater technology transfer to developing countries (Articles 7 and 8) have not met expectations. The demands of the Group of Friends of Development within the WIPO Development Agenda are an example of this. It is true that certain developing country economies, such as those cited in the article, have “expanded at a healthy rate,” but it is also true that an increase in GDP is not synonymous with development. Mention should also be made of the free trade agreements that the U.S. has signed with different countries - or of investment protection agreements - which contain different standards of protection from those set out in the TRIPS Agreement, and which restrict the flexibilities envisaged in it.
As Professor Khan said, “The framers of early American patent policy were convinced that individuals responded to incentives.” If the incentive of obtaining economic benefit through the grant of exclusive rights in exchange for disclosing their knowledge is attractive for the owners of patent rights, then equally the incentive of achieving greater development for society at the global level should be attractive for states.
From Orbel Machado González., Lawyer, Office of Industrial Property, Cuba
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Measuring Gross Domestic Innovation
I follow closely the work of WIPO and of the WIPO Magazine in promoting creativity and innovation. Humankind has been applying its creative abilities since time immemorial. Man’s creativity has brought about major industrial revolutions, resulting in a modern society with advanced amenities. Now, globalization has made innovation all the more important for industrialized countries in light of the explosive growth rates and the growing army of knowledge-based workers in certain developing countries. A new global economy has arrived with a village of workers catering to the service and technological needs of the rich countries. In the foreseeable future, increasing numbers of emerging economies will also become technology savvy, and developed economies will have to engage in even more innovation to adapt to the new reality.
Against this backdrop, a new economic barometer is needed to measure creativity. I propose1 to call this Gross Domestic Innovation (GDI) - defined as the total number of innovations generated by a country in a given period of time. The GDI of a country would quantify innovations in all fields of human endeavor, not only novel scientific efforts, but also, for example, ingenious financial products or any new idea that increases national revenues and employment. The aggregate GDI figures could be derived from sources such as patents, other registered IP rights, and publications. The collective GDI should help track innovations from different sectors and from individual entities, such as companies or universities - whose contribution to industry and the betterment of mankind are paramount. The correlation of GDI with traditional economic measures like GDP would reveal the positive impact of innovation, would help in the fight against inflation, in the greening of developed economies, and in encouraging businesses to enhance their intrinsic value through innovation.
From Dr. Balkrishna Rao, Research Associate, School of Industrial Engineering, Purdue University, West Lafayette, Indiana, U.S.A.
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1. Economic Recognition of Innovation, by Balkrishna Rao
