Trademarks - Service Marks and Certification Marks
What is a trademark? What is a service mark?
Trademarks and Service marks are one of the various types of intellectual property. It is a property right over a word, phrase, symbol or design, or a combination thereof, used to distinguish specific goods and services. A mark gives the legal right to exclusively use, licence or sell within a particular jurisdiction. It also gives the right to sue for infringement or oppose registration of competition marks (not necessarily identical) based on likelihood of confusion. Trademark registration is compulsory (made by a government, based in law) in certain countries like China and the EU, other countries recognise trademarks rights arising simply through use. Depending on the country, rights over trademarks are not subject to a time period and can last for ever because are maintained through real use (duly proof through evidence like receipts) of the trademark.
Some countries allow the protection of sounds, smells and colors as long as there are distinctive. Most countries have rules to exclude certain marks from registration based on their culture. For example, trademarks which are contrary to their morality or national emblems and flags.
Some CGIAR Centres have registered their names and logos and may register other distinctive marks as trademarks or service marks to protect the goodwill and reputation and to ensure that the Centre receives proper credit. CGIAR Centres don’t use this protection of intellectual property as a mechanism for securing financial returns for their activities or as a source of operating funds.
What is a certification mark? What is a collective mark?
A collective trademark is a specific type of trademark recognised in some countries for products or services of an association whose members use them to identify themselves with a level of quality and other requirements set by them.
A certification mark is also a specific type of trademark recognised in some countries for products or services in compliance with certain defined standards. It is not restricted to memberships of an organisation and the owner of the certification mark must be competent to certify the products concerned. Generally, the mark certifies material, mode of manufacture, quality, accuracy or other characteristics of the product; it may also certify geographic origin. For example, in some countries the India Tea Board is the owner of the word and design marks for DARJEELING.
Certification and collective trademarks can not be assigned, transferred, or sold.
What are Geographical Indications, Appellations of Origin and Indication of Source?
The expression Geographical Indications has different meanings depending on the jurisdiction and the context in which it is used. However, Geographical Indications (GIs), a relatively new type of intellectual property, is a generic term that has been adopted at international forums to distinguish products on the market based on the quality and reputation associated with their place or area of production. GIs are not limited to agricultural products but applies mostly to goods (although some countries extended it to services). As any intellectual property right, GIs grant an exclusivity of use to all producers who make their products in the place designated by a GIs and whose products share typical qualities, protecting the product name from misuse and imitation. Unlike other intellectual property, GIs cannot be transferred or assigned. Most countries recognise GI rights arising from registration made by a government based in the law (although some countries, like Singapore, grant automatic protection just like copyright protection).
Examples of GIs are: Tequila licor (Mexico), Bordeaux wines (France), Manchego cheese (Spain), Habanos tobacco (Cuba), Antigua coffee (Guatemala), Long-Ging tea (China), Basmati rice (India), Parma ham (Italy), Shea butter (Burkina Faso), Kilim carpets (Turkey).
Countries have looked into their national legal systems to consider the best way to protect GIs and to see how to comply with the requirements imposed at international level in particular articles 23 & 24 of the TRIPS Agreement, which provides a general level of protection for all geographical indications and a heavily level of protection for geographical indications on wines and spirits.
GI development has occurred in the most diverse and uncoordinated manner. For example, certification and collective marks are the form taken by USA, Canada and China to grant protection to GIs. While other countries have drafted specific legislation to incorporate this form of intellectual property and recognise in their laws two (2) types of GIs: Appellations of Origin and Indication of Source.
Indication of source is a sign that simply indicates that a product originates in a specific geographical region, for example, labels saying “Made in USA” , “Swiss Made” or “Product of Spain”. An Appellation of Origin is a designation of a specific quality, reputation or other characteristic that is exclusively or essentially due to the geographical environment (including natural and human factors of that region) in which the goods are produced. It also may have a cultural dimension because it implies shared traditions of production, a common history, or a collective identity.
It should be noted that a GI not necessarily has to be an exact name of a geographical place on earth. It could be a symbol or logo or a reference to designate a good with a region. For example, the Statue of Liberty to designate a good from the United States of America or Basmati to indicate long grain aromatic rice grown in Punjab, Haryana, and Uttar Pradesh of Indian sub-continent.
Countries have rules to exclude certain names from GI protection. Most countries don’t grant protection because the denomination has been previously registered in good faith as a trademark or because the denomination has become generic and no longer indicates the specific origin of goods, but a specific kind or category of product.
It is precisely this issue that has impeded a full development of GIs making the full scope of the protection of GIs still undefined. The main reason for this is an economic and diplomatic conflict between some countries (mainly the United States and the European Union). Controversy arises when names that are protected in one region have a common usage in another. For example, Parmesan cheese or Dijon mustard. Some countries argue that certain names should belong exclusively to a specific group of producers in a specific geographic location because consumers identify it not only as a class of product but also as a product with a certain reputation associated with a location. Others say GIs is just a way to extract monopoly rents from names without any value added.
Furthermore, some governments (especially the European Communities) wish to go further and re-negotiate TRIPS provisions on GIs to extend the high level of protection of wines and spirits to include other products. The controversy on GIs goes beyond intellectual property and overlaps the heated debate of agricultural policies and international trade. For example, the European Union submitted to the forum of agriculture negotiations of WTO a list of 41 names (“claw back list”) they would like to reserve.
Literature is extensive and has well documented cases dealing with misuse and infringements of GIs. Examples of heated debates and abuses of GIs are: Basmati rice (USA), Parmesan cheese, Parma ham (Canada) Roquefort cheese (New Zealand), Cognac (South Africa).
The debate on what should be the law won’t be resolved in the near future and standardisation of GIs at international level will take some considerable time. Until then, it is important for producers of distinctive products whose distinctiveness is tied to geographical origin to understand how to combine strategies of protection. These producers working as partners of CGIAR Centres are encouraged to contact to CAS-IP to discuss options of protection. CAS-IP will help navigate the system as it is currently constituted.
What is a trade secret?
A trade secret is classified as one of the various types of intellectual property. It provides protection over information that is not publicly known, has commercial value and is subject to reasonable efforts to preserve confidentiality. The scope and duration of trade secret varies country- by-country but in general it last as long is it keep secret and includes any know-how with commercial value (proprietary knowledge and information) like formulas, patterns, compilations, devices, methods, techniques, or processes.
Some academics argue that trade secrets are not a form of intellectual property as is not, strictly speaking, a right that grants exclusivity of use, and does not stop anyone else from independently obtaining the information or knowledge and exploiting it commercially. However, there are legal mechanisms (like confidentiality agreements and non-disclosure agreement) used to stop people from revealing the secret or proprietary knowledge and information. As any intellectual property right, trade secrets can be assigned (sell or licence) to someone else for a price.
As a way of preserving trades secrets, labor law in some countries accept non compete agreements where employees must agree not to work for a direct competitor nor work in the same field, for a certain amount of time or in a certain location after leaving the company. However, some countries ban this type of agreements as they restrict the employee’s right to earn a living.
