Over 100 foreign GIs and DOs now registered
In October 2012 a new legislation regarding denominations of origin (DOs) and geographical indications (GIs) became effective in Panama.
According to the new legislation, the definition of a 'denomination of origin' is as follows:
“A denomination of origin is the geographical denomination of a country, a region or a locality, serving to designate a product that originates therein, and whose quality or characteristics are a result exclusively or essentially of the geographical environment, including natural and human factors. [A denomination of origin may also be] a sign consisting of the denomination of a product which, without being a geographical name, denotes a geographical origin when it is applied to that product, whose quality, reputation or any other characteristics are ascribable essentially to its geographical origin.” (Article 131 of Law 35/1996, amended by Article 56 of Law 61/2012, Official Gazette 27.135 of October 5 2012).
In addition, the new legislation defines a 'geographical indication' as:
“[an indication] which identifies a product as originating from the territory of a country, or from a region or locality of that territory, when a certain quality, reputation or any other characteristic of the product is ascribable essentially to its geographical origin. Every sign or combination of signs in any way shall be susceptible of constituting a geographical indication.” (Article 131 of Law 35/1996, amended by Article 56 of Law 61/2012).
Pursuant to the new legislation, foreign GIs, indications of origin and DOs may be registered in Panama. Any natural or legal person may request the recognition of a group of producers, manufacturers or artisans, regardless of their legal form, if their premises or sites of extraction are found inside the delimited zone established by the GI, indication of origin or DO at issue.
On April 23 2013 more than 100 applications seeking the protection and recognition in Panama of foreign DOs and GIs were published in the Official Bulletin No 297 for opposition purposes. As no oppositions were filed within a period of two months from the publication of the applications, Panama now has over 100 foreign DOs and GIs duly recorded and protected for an indefinite duration. These include the following:
- For beverages in Class 33 of the Nice Classification:
- La Mancha;
- Porto Oporto;
- Ribera del Duero;
- Grappa; and
- Irish Cream.
- For products in Class 29:
- Mortadella Bologna;
- Queso Manchego;
- Camembert de Normandie;
- Nurnberger Bratwurst;
- Parmigiano Reggiano;
- Prosciutto Toscano;
- Provolone Valpadana;
- Turron de Alicante;
- Prosciutto di Parma; and
Additionally, the following are included among the GIs identifying alcoholic beverages:
- Castilla; and
- Brandy de Jerez.
According to the provisions of the Panamanian legislation, it is forbidden to use GIs and DOs that do not correspond to the specific country, location or geographical region where the products were manufactured, prepared, harvested or extracted, or where the services were provided, even when the true origin of the product is indicated, or when the GI is either translated or accompanied by expressions such as 'class', 'type', 'style' or 'imitation'.
Additionally, according to Law 61/2012, manufacturers or artisans who conduct their activity inside the delimited geographical zone have the right to use the GI, indication of source or DO at issue, even if they did not apply for recognition initially, provided that they meet the required conditions.
These provisions seem to comply with the rules and regulations approved by the European Community and by the Association Agreement between Central America, Panama and the European Union, which was entered into on June 29 2012 and came into force in Panama on April 17 2013.
However, some may wonder whether the above affects in any way the position of the United States with respect to this subject and the Trade Promotion Treaty between Panama and the United States, which came into force on October 31 2012. As far as the author understands, the position of the United States is that DOs and trademarks can coexist harmoniously, provided that “the principles of intellectual property (territoriality, exclusiveness and priority) are applied”.
In this respect, INTA has established in its rules for the examination of applications that, under the priority principle, an earlier mark will prevail against a subsequent GI, and vice versa. First, the examiner must analyse whether the average consumer would make a link between the term and the geographical origin of the products/services claimed in the application; consequently, the examiner should consult dictionaries, atlases and databases to determine whether there is an association between the products and that geographical location.
The position of the United States divulged by INTA is that registration will be refused when a trademark serves mainly to indicate the geographical origin of the products. Additionally, the examiner must evaluate the possibility that, in the future, third parties might need to use the geographic name when the region develops. According to INTA’s rules, registration shall be allowed only based on evidence of acquired distinctiveness; in this respect, “the larger the population of the place in question and/or the greater the relationship between the products and the geographical location, the more degree of acquired distinctiveness shall have to be demonstrated”.
It remains to be seen whether, in the case of Panama, the new rules and registrations affect the commercialisation in the country of products whose have their origin or source is the United States.
Marissa Lasso De La Vega, Alfaro Ferrer & Ramirez, Panama
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