Intellectual Property consists of Patents, Copyrights, Trademarks, Industrial Designs, Models, Confidential Information, Trade Secrets and Geographical Indications. We propose to discuss hereby the concept of geographical indications, its registration and protection in the U.A.E.
The term "geographical indications" contrasts to earlier World Intellectual Property Organization (WIPO) treaties which distinguished between "indications of source" which just denote a product as originating from a geographical area, and "appellations of origin" which require that the quality or other characteristics of the product are exclusively or essentially attributable to its geographical origin.
The definition of geographical indications as provided for in Art. 22 (1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) broadens the scope of protection by including both concepts. The TRIPS Agreement defines geographical indications as follows in Art. 22 (1): "Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a member or region or locality in that territory where a given quality, reputation or other characteristic of the good is essentially attributable to it geographical origin."
Pursuant to Art. 22 (3) TRIPS, geographical indications for products other than wines and spirits are protected against misleading use of the respective designation. The provision reads as follows: "A Member shall, ex officio, if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indications in the trademark for such goods in that Member is of a such a nature as to mislead the public as to the true place of origin."
Protection against misleading use means that it needs to be assessed in each particular Member State whether consumers are misled by the use of a designation similar or identical to the geographical indication at issue. It may well be that the designation, which is still a geographical indication in its country of origin, has become or has always been a generic term in another country. Accordingly, consumers would not be misled as they would perceive the designation as generic and not as an indication of the geographical origin of the product at issue. It may also be that the designation is protected and perceived by consumers as a trademark. In that case it would be perceived as a reference to the manufacturer and not to the geographical origin of the product. Again, the consumer would not be misled. Finally, the designation which causes concern in the other country may be sufficiently different from the geographical indication so that the consumers will not be misled.
All this is very familiar to trademark owners and basically boils down to the application of the well-established principle of territoriality.
Article 22 of the TRIPS Agreement says that all governments must provide legal opportunities in their own laws for the owner of a geographical indication registered in that country to prevent the use of marks that mislead the public as to the geographical origin of the good. This includes prevention of use of a geographical name which although literally true "falsely represents" that the product comes from somewhere else.
Article 22 of TRIPS also says that governments may refuse to register a trademark or may invalidate an existing trademark if it misleads the public as to the true origin of a good.
Geographical indications have similarities with trademarks. For example, they must be registered in order to qualify for protection, and they must meet certain conditions in order to qualify for registration. One of the most important conditions that most governments have required before registering a name as a geographical indication is that the name must not already be in common use as the generic name for a similar product.
The difference between a geographical indication and a trademark is that the trademark is a sign used by an enterprise to distinguish its goods and services from those of other enterprises. It gives its owner the right to exclude others from using the trademark. A geographical indication tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production. It may be used by all producers who make their products in the place designated by a geographical indication and whose products share typical qualities.
In many countries the protection afforded to geographical indications by law is similar to the protection afforded to trademarks, and in particular, certification marks. Geographical indications law restricts the use of the geographical indication for the purpose of identifying a particular type of product, unless the product or its constitute materials originate from a particular area and/or meet certain standards.
Sometimes these laws also stipulate that the product must meet certain quality tests that are administered by an association that owns the exclusive right to the use of the indication. Although a geographical indication is not strictly a type of trademark as it does not serve to exclusively identify specific commercial enterprise, there are usually prohibitions against registration of a trademark which constitutes a geographical indication.
In essence, unauthorized parties may not use geographical indications if such use is likely to mislead the public as to the true origin of the product. Applicable sanctions range from court injunctions preventing the unauthorized use to the payment of damages and fines or, in serious cases, imprisonment UAE is a member of World trade Organization (WTO) and therefore it is committed to comply with the provisions of TRIPS Agreement which organizes the geographical indications aspect.
However, the UAE has not yet enacted a special law for the protection of geographical indications, the protection can be secured through indirect protection through the legislations to prevent unfair competition and trademark registration laws; direct protection through judicial measures and producers or consumers groups, and registration system of trademarks.
The Federal Trademarks Law No. 8 for the year 2002 amending the Federal Law No. 37 for the year 1992 includes provisions that provide the minimum form of protection for geographical indications by refusing the registration of misleading geographical indications.
Article 3 (6) & (9) state that: The following shall not be registered as a trademark or as a component thereof: Geographical names where the use thereof may cause confusion as to the origin or source of the goods, products or services.
Marks which may mislead the public or which contain false data as to the origin or the source of products or services, or about their other characteristics, as well as marks containing an imaginary, limitated or forged trade name.
The scope of protection covers agricultural products, natural products, industrial products, handicraft products.
Such protection is very important for two reasons: Consumers should be protected against misleading practice as consumers may be misled when using a geographical indication for products not coming from the respective geographical region; and 2. A geographical indication is considered a distinguishable sign that should only be used by entities existing in the respective geographical area.
Owners of geographical indications may protect their rights in the UAE throughout filing trademark application to the Ministry of Economy. However, the owner must submit evidence that its products are originating from a geographical area. Therefore, the application should includes the following:
Name, address and nationality of natural or legal person;
Geographical indication required to be registered;
Goods or services subject to geographical indication;
Quality and reputation or other characteristics of specific goods subject to utilization of geographical indication.
Examples of GIs in the Arab Countries
UAE
"MASAFI" this name is a famous area in the UAE, which is known for the quality mineral water it produces.
Yemen
"DOAN" a honey. DOAN is a valley in Hadramout area very famous with honey.
Oman
"Oman Halva" a special type of local sweets, very famous in Oman
Saudi Arabia
"Sukary Al-Qasim" a special type of dates, that grow only in Qasim in the middle of Saudi Arabia.
By Hazem Abu Hantash
© Al Tamimi & Company 2007
