Criteria for registration of GIs as certification marks issued

The Intellectual Property Office (IPO) of Taiwan has issued regulations on the Criteria for Registration of Geographical Indications as Certification Marks. The regulations implement provisions on the protection of geographical indications (GIs) in the new Trademark Law, which came into effect on November 28 2003 (see Taiwan promulgates new, broader trademark law).

The new regulations use the definition for GIs set out in Article 22 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, which provides that GIs are indications that "identify goods as originating in the territory of a member country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to its geographical origin".

With reference to the above definition, the new regulations set out the criteria for assessing whether an indication should be protected as a GI. These criteria include the following:

• The sign must be an indication, whether a geographical name or graphic, that identifies the goods as originating from a specific region.
  
  
• The scope of the specific region can be the territory of a World Trade Organization member, one of or a combination of its administrative districts, or a specific locality, where the materials of the goods concerned grow or where the goods are processed and produced.
  
  
• The specific region must have a correlation with the quality, reputation or other characteristic of the goods.
  
  
• A correlation between the region and the goods may apply where:
  
  
  • the production, including materials, processing and packaging, of the goods is completed in the region;
    
    
  • the materials originate from the region; or
    
    
  • the stage of production that creates the distinguishing characteristic of the goods occurs in the region.

The regulations specify that GIs will be registered as certification marks and, pursuant to the Trademark Law, an applicant for a certification mark must (i) be a legal person, organization or government agency capable of certifying another party's goods or services, and (ii) not engage in business in connection with the goods or services sought to be certified.

The regulations also indicate that during the examination of GIs as certification marks, the IPO will confer with other authorities that have control over the product area concerned (eg, the Agricultural Committee of the Cabinet for agricultural products or the National Treasury Agency for alcoholic beverages).

Kwan-Tao Li, Lee and Li Attorneys at Law, Taipei