Trademarks and Geographical Indications

adopted in 2004

The membership of the International Wine Law Association,

Considering that trademarks[1] and geographical indications (including appellations of origin) are intellectual property rights recognized as such and defined by provisions of the Agreement on the Trade-Related Aspects of Intellectual Property ("TRIPS"), signed in Marrakech on 15 April 1994;

Considering also that geographical indications and trademarks are equally entitled to protection under the law;

Considering further that trademarks and geographical indications are of importance for the marketing of wines and spirits and that development of both types of intellectual property should be pursued;

Resolves as follows :

1.1 Co-existence between a trademark and an identical or similar geographical indication should generally be avoided due to the risks of confusion for the public and of fostering parasitic[2] trade practices.

1.2 Nonetheless, justified exceptions may be recognized on a case-by-case basis.  Factors to consider for exceptional co-existence should include but not be limited to: good faith or lack thereof, the relative degree of public recognition, and the availability of alternative designations.

2.1 In order to avoid conflicts, the possibilities of using other geographic names for the indication of the same origin or source and of using trademarks that do not include geographical indications should be considered.

2.2 In addition, the registration and use of a trademark that is identical or similar to a geographical indication defined under the TRIPS Agreement should be refused (except for viticultural or certification marks pertaining to the same geographical indication when there is no risk of misleading use, confusion or unfair competition).

2.3 Likewise, the establishment of a geographical indication that is identical or similar to a trademark having acquired prior rights should also be refused.

3.1 In the event of conflict between a trademark and a geographical indication, the priority principle (i.e. “first in time, first in right”) should generally be applied as a means of ensuring certainty and fairness in the market.

3.2 Priority can be established on the basis of public recognition, as well as use or registration (including application for registration) of a trademark or a geographical indication according to the law in a particular territory.

3.3 However, taking into account the particular and public nature, collective use and indication of source of a product of geographical indications, priority for a trademark over a geographical indication should be assessed in light of good faith, knowledge of the geographical character of the trademark name, and the risk of confusion for the public between the trademark and the origin of the product.

4. Both trademarks and geographical indications should be protected against exploitation of the reputation or other intellectual property rights already acquired by one or the other.

[1] The term "trademarks" includes certification marks. [2] Parasitism is the use of reputation or other intellectual property rights already acquired by one or more third parties

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