IMPACT OF THE INCOMING NON-AGRI GIs ON TRADE MARKS ABSTRACT OF PAPER By Edith Van Den Eede , Praxi Intellectual Property, IT Cutting-edge GI trends to look out for “I'm outta time and all I got is 4 minutes” is the first line of a Madonna song featuring two other successful American singers Justin Timberlake and Timbaland. Giving a short presentation (or even worse, writing its succinct abstract) on what is going on in the currently tumultuous GI world is giving a similar sense of urgency. Indeed, a whole lot is cooking in the Geographical Indications (“GIs”) world, with consequent effects on the protection of trade marks. Besides the influences that the Lisbon revision process, once finalized, may have on trade marks, in addition, the European Commission is now considering expanding GI protection to include a wider variety of products than just agricultural and food products. Under TRIPs obligations, GIs must be protected to (at least) ensure that the public is not misled and to prevent unfair competition (for wines and spirits, there is an even wider protection, beyond the likelihood of confusion). At EU level, currently four regulations deal with the registration and protection of GIs (Quality Regulation on agricultural products and foodstuffs, Single OCM common market organization dealing with wines Regulation and Regulations for spirits and aromatized wine products; all providing for an even stronger protection than that established by TRIPs for wines and spirits GIs). By way of example, PARMIGIANO REGGIANO cheese and CHAMPAGNE already enjoy special protection under these current EU GI schemes. However, there are currently no harmonisation or unitary EU rules to protect the use of names of nonagricultural, industrial and artisanal products which may be deemed as GIs. As a consequence, the EUCommission is now considering the highly probable creation of a new, specific EU scheme on the protection of GIs for non-agricultural products (e.g. certain pottery, marble-work, ceramics, leather goods, clothes or musical instruments), with the aim of protecting Europe's heritage and traditional practices. The European Union is indeed rich in products based on traditional knowledge and production methods, which are often rooted in the cultural and social heritage of a particular geographical location, from Carrara marble to Murano glass, and Limoges porcelain to Laguiole knives. A public consultation was launched by the Commission last year and the preliminary overview of the main emerging trends and the points triggering most comments was presented in Brussels last January. The majority of respondents and stakeholders, including ECTA, clearly favoured the creation of the new scheme, which would remedy the insufficient protection in the EU of GIs in this field whilst improving the EU’s commercial negotiations with third countries that do protect such GIs. Impact on trade marks - Additional absolute grounds for refusal The introduction of the new scheme will increase the scope of absolute grounds for refusal for trade marks. A new Regulation dealing with non-agri GIs will more than likely contain clear provisions on the relationship between trade marks, on the one hand, and the non-agri GIs, on the other hand, based on the existing EU GI Regulations, with a direct impact on both the OHIM’s and national trademark Offices’ practices. In this regard, the provisional agreement on the ‘Legislative Package’, i.e. the package on the reform of the EU trade mark system (subject to confirmation by the Committee of Permanent Representatives of the Council, before being put to a vote in the Parliament) now expressly addresses the obligation of both the national trade mark offices and the OHIM to refuse, ex officio, trade mark applications that are in violation of protected GIs. - Need for simplification and alignment Therefore, a simplification of the overall GI system in the EU is now needed more than ever: the existence of a multiplicity of different schemes (and databases) in each and every sector (wines, spirits, foodstuffs, aromatized wines, now to be extended to non-agricultural products) is overly complex and this situation is detrimental to its efficiency and visibility. A single and horizontal legal framework for the EU unitary protection and enforcement of all GIs for any kind of product (with clear provisions on the relationship between trade marks and GIs), handled by one single EU body, would ensure clarity, full alignment with EU law and consistency between different EU laws on GIs and WTO law. Entrusting the GI registration process with the OHIM might additionally assist in ensuring that EU law protecting GIs is given full effect in proceedings relating to the registration of European trade marks and streamline trade mark refusals on the basis of prior GIs at EU level. Conclusion GIs are emerging as increasingly significant intellectual property rights, and a more efficient economic tool to increase trade performance. On the other hand, a new EU scheme will add another complicating brick in the already complex wall of GI schemes in the European Union and broaden the scope of absolute refusal grounds for (national and EU) trade marks. Impact of the incoming Non-Agri GIs on Trade Marks Edith Van Den Eede 2