Intellectual property in the EPA: Broad scope huge impact - Part II

Jamaica Observer | 16 July 2008

Intellectual Property in the EPA: Broad Scope Huge Impact - Part II

Dianne Daley

As the debate surrounding the merits of the EPA intensifies, we turn our attention to the possible merits of the agreement as it pertains to Intellectual Property Rights. In Part I, we looked at Copyright & Related Rights and Industrial Designs. We now cover Trademarks and Geographical Indications.

International standards for trademark protection were first laid down in the Paris Convention on the Protection of Industrial Property (1886) which currently has 173 Contracting States including Jamaica. Under the Paris Convention while countries were obliged to have a registration system for trademarks covering goods, each country could determine its own procedure for registration.

The trend internationally is towards making trademark registration systems more harmonised, user-friendly and publicly accessible. This is manifested in the World Trade Organisations Trade Related Aspects of Intellectual Property Rights Agreement (aka. TRIPS), the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989) (the Madrid Protocol) and the revised Trademark Law Treaty (2006).

The signatories to the EPA will be required to use their best endeavours to accede to the Madrid Protocol and the revised Trademark Law Treaty (Article 144.5). While Jamaica has been a member of the Paris Convention since 1999, it is not a member of the Madrid Protocol or the revised Trademark Law Treaty. The Madrid Protocol should enable proprietors to file multiple trademark applications in Protocol member countries in one go. Although this appears cost effective and desirable, accession to the Protocol amongst Latin-American and Caribbean countries has been slow based on reservations of local interest groups who have highlighted some possibly negative repercussions accession would have on the administration of the national trademarks system and their economy as a whole. Antigua is so far the only Caricom country to have acceded to the Protocol. This could explain why accession to the Protocol is not an obligation under the EPA but parties are expected to employ their best efforts to accede.

The Trademark Law Treaty has the aim of making national and regional trademark registration systems more user friendly by outlining maximum procedural requirements with a view to keeping procedures at a minimum and streamlining the requirements set by regional or national IP offices such as the Jamaica Intellectual Property Office (JIPO). Jamaica’s accession to this Treaty is likely to benefit users of the trademark system while preventing JIPO from imposing any additional requirements on applicants.

The EPA also obliges the EC Party and the Signatory CARIFORUM States to endeavour to apply the joint recommendation concerning trademark licences adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO at the Thirty-Fifth Series of Meetings of the Assemblies of the Member States of WIPO, 25 September to 3 October 2000 (Article 144.4). The Joint Recommendation seeks to harmonise and simplify the formal requirements for the recordal of trademark licences. It supplements the Trademark Law Treaty which was first adopted in 1994.

Signatories to the EPA are also required to make electronic databases of trademark applications and trademark registrations publicly available (Article 144.1). Jamaica’s trademark system is only partly automated and provisions in the Trade Marks Act (2001) restrict the provision of information without due process. Some legislative or regulatory adjustments to the existing Trade Marks Act and Rules (2001) may therefore be necessary if this obligation is to be strictly complied with.

The Paris Convention requires member states to protect well-known trade marks in connection with goods and the TRIPS Agreement goes further by also requiring protection to well-known marks in connection with services. However, countries have applied different rules in determining whether a mark is indeed well known ie whether a particular mark has a reputation in the country and the degree to which it is known by the relevant sector in that country. Article 144.2 of the EPA attempts to harmonise these rules by requiring countries to endeavour to apply a WIPO joint recommendation which outlines factors to be considered in determining whether a mark is a well-known mark and how to treat with conflicting marks, domain names and business identifiers. While Jamaica’s Trade Marks Act already affords protection to well-known trade and service marks an application of the joint recommendation should offer clear guidelines to JIPO and to the Courts in matters involving so called well-known marks.

Geographical Indications (GIs) are names, signs or symbols denoting the geographical origin of a product where a special quality or characteristic of the product is essentially attributable to that origin. Well-known examples of GIs are CHAMPAIGN from Champaign Region in France, BORDEAUX wine from Bordeaux, France, TEQUILA drink from Tequila, Mexico and, of course, JAMAICA BLUE MOUNTAIN Coffee®.

When a GI is legally protected it is only to be used by persons who are producing/marketing goods that possess an authentic and qualitative link to the location denoted by the GI. GIs protection has been given greater national visibility recently based on the expectation that it will enable Jamaicans to recapture and enhance their valuable nation brand. This subject features prominently in the EPA and, given the level of importance many European countries attach to GIs, the emphasis is not surprising.

The EPA requires the Signatory CARIFORUM States to establish a protection system for GIs no later than January 1, 2014 (Article 145.1(2)). Additionally, parties must cooperate through the CARIFORUM-EC Trade and Development Committee towards the development of GIs in the territories of the CARIFORUM States. This involves submitting for consideration by the Committee a list of prospective GIs originating in the CARIFORUM states for its discussion and comments, within six months from the entry into force of the EPA. The EPA requires that GIs be protected for an indefinite period and countries must ensure that the GIs are used in respect of goods originating in the geographical area concerned and produced in accordance with the relevant product specifications. The EPA also makes provision for certain pre-existing products of the vine, plants or animals to be exempt from being used as GIs and protects well-known trademarks from conflicting GIs.

Jamaica enacted legislation for the protection of GIs through the Protection of Geographical Indications Act of 2004. However, protection under the law strictly complies with the standards laid out in the TRIPS Agreement and does not contemplate the "TRIPS plus" and "TRIPS extra" elements incorporated in the EPA. In particular, the Jamaican law implements a two-tiered level of protection as outlined by the TRIPS Agreement wherein GIs for wines and spirits are to be protected against uses on a wine or a spirit not originating in the place denoted by the GI even where the use is not misleading but GIs for other products are only to be protected against false and misleading uses.

This dichotomy in the standard of protection is perceived as a major deficiency of the Jamaican law as it is felt that producers of food products will have little or no recourse against abuses of indigenous GIs by imitators who, for instance, describe their products as e.g. "Jamaican scotch bonnet sauce" made in North Carolina" or "Jamaican style jerk seasoning" made in Mexico" thereby also indicating their true origin. One merit of the EPA is that in Article 145.2 it erases the dichotomy by requiring uniform protection against misleading uses as well as non-misleading uses of GIs, irrespective of the class of goods on which the GI is used. This would therefore afford producers greater protection from the prevalence of "Jamaican Style" imposters. Part III will address Patents, Utility Models and Plant Varieties.

Dianne Daley, LLB (Hons) (UWI), LLM (McGill), Attorney-at-Law is one of Jamaica’s foremost copyright lawyer. This is the second of a four-part series on the EPA and Intellectual Property.