welcome to the webinar · speaker(s) 10:00 – 10:05. introduction to the sea ipr sme helpdesk and...

An initiative of the


Moderator:

Nora BihariProject ManagerSouth-East Asia IPR SME Helpdesk

Welcome to the Webinar

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.


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Overview (CEST)

TIME OVERVIEW SPEAKER(s)

10:00 – 10:05 Introduction to the SEA IPR SME Helpdesk and its Core Service Nora Bihari, SEA IPR SME Helpdesk

10:05 – 10:45How to expand your Geographical Indication to

South-East Asia: What's New?Ester Olivas Cáceres , SEA IPR SME Helpdesk

10:45 – 10:55 Q&A session All speakers

11:00 Closing Nora Bihari, SEA IPR SME Helpdesk



Core Services – What We OfferEnquiry Helpline

Webinars and E-learning modules

Training WorkshopsWebsite & Blog

Newsletter, E-Bulletin

Guides and factsheets



Name: Ester Olivas CáceresPosition: Lawyer Senior Consultant – Geographical Indications (GI) Expert

External Expert and Senior IP Quality Control Advisor of the SEA IPR SME Helpdesk

Location: Valencia, Spain


Speaker’s Bio

With over 22 years of professional experience, Ester is a Lawyer specialized in all aspects related toGeographical Indications (GIs) from a technical, legal and political point of view.

Bearing over 16 years of experience in strategic counseling, legal advising and representation of GIproducers of agricultural products, wines, spirits and handicrafts, Ester has worked on the direction andmanagement of key international organizations, as Secretary General of ORIGEN ESPAÑA (the SpanishAssociation of Designations of Origin) and as Secretary General of oriGIn (the first International Networkof Geographical Indications), where she represented and defended the interests of GI products from allover the world.

Senior Consultant at present to international organizations for the implementation of technical assistanceand international cooperation projects, Ester provides legal and technical counseling on GI-relatedmatters throughout the world, helping government authorities in the establishment and management oftheir GI legal framework as well as advising local stakeholders in the identification, establishment,management, recognition and protection of their GIs.

Ester Olivas Cáceres Geographical Indications Expert

External Expert and Senior IP Quality Control Advisor

of the South-East Asia IPR SME Helpdesk

17 June 2020

WebinarHow to expand your

Geographical Indication to South-East Asia:

What's new?


1. Introduction:• GI concept & purposes• Scope of protection

2. Can and should European GIs be protected in SEA?• Different legal systems of protection• Factors to consider prior to accessing a SEA country with your GI• EU experience on GI protection: Case Study

3. How can EU GIs be protected in SEA?• Key aspects on the GI application• Remarks on the GI registration process• EU experience on GI registration: Case Study

4. Benefits of protecting your GI in SEA• Duration of GI protection• Enforcement avenues available• EU experience on GI enforcement: Case Study

5. Conclusion: Take-away messages


Webinar’s Agenda


SEA GIs


Introduction: GI Concept

Product withspecial

differentiatedquality,

characteristicsand reputation

Geographicalorigin with:

natural factors (environment, etc.)+ human factors

(traditionalpractices of production)

GIa SIGN,

generally a NAME OF A SPECIFIC

PLACEEU GIs

Kampot pepper / េ្រមចកំពត(Pepper – Cambodia)

Kopi Arabika Gayo (Coffee –

Indonesia)

Buôn Ma Thuột coffee(Coffee – Vietnam)

Champagne (Wine – France)

Parmigiano Reggiano(Cheese – Italy)

Ternera Gallega PGI (Veal – Spain)

Poll Question 1Question: In your opinion, what is the purpose of a GI?

A Geographical Indication is:

A. A legal tool (IPR) of protection

B. A differentiation tool of an origin-based product

C. A development tool for GI stakeholders to thrive

D. An economic and marketing tool in the market

E. A political tool to promote and protect local heritage

An initiative of the© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.

Introduction: Purposes of a GI

Legal tool: IP right Differentiation & developmenttool

Economic & marketing tool Political tool

GI AS A MULTIPLE TOOL FOR STAKEHOLDERS

Increasing number of protected GIs worldwide!

Increasing interest of today’s SEA consumers in GIs from overseas =

Attractive opportunities for EU GIs in SEA markets


Introduction: Scope of protection


In SEA & in some EU countries only…

In SEA & in the EU…What can and cannot be protected as a GI?

Agricultural productsFruits & vegetablesRice

Coffee

Wines and Spirits

Handicraft and industrial products

SpicesMeat (fresh or processed)

Fresh fish, molluscs, crustaceans,

Cheeses

Products of animal origin

Conical hatSilk and textile

Porcelain and ceramicsBamboo crafts

Poll Question 2

Question: Do you think that a European product’s namecan be protected as a GI in SEA?

A. Yes, if it identifies food, wines, spirits or handicrafts

B. Yes, but only if it identifies food, wines or spirits

C. Yes, as long as it is protected in the EU

D. No, because only SEA GIs may be protected in SEA

E. Only in countries that allow protection of foreign GIs


1. NO common legal framework at SEA level = Different systems of protection

• Sui generis system for GI protection

• Collective / certification mark to protect GIs

• Combination of both types of IPR (GI and collective / certification marks)

• Other legal remedies - Protection against unfair competition and ‘passing-off’

• Bilateral agreements between the EU & SEA countries

2. To register your GI in SEA, it MUST be protected in its country of origin

Can EU GIs be protected in SEA?


Key aspects to bear in mind:

YES! EU GIs can be protected in SEA ?


1. Ensure that your GI is protected in its country of origin

2. Assess protection available, requirements, procedures and costs

3. Undertake research to rule out possible conflicts between GIs and priorrights

4. Examine the protection system best adapted to your needs

Should EU GIs be protected in SEA?


Prior steps before deciding how to move forward:

Highly recommended!

Local IP experts may be of great help!


• Wine exclusively from the Champagne region in France• Protected in the EU since 1973• Worldwide reputation

EU Experience on GI protection


Case Study: EU GI ‘Champagne’Facts:

Actions taken by the CIVC – Comité Champagne:• Set up a global network of bureaus in 16 of the biggest Champagne export markets• Protect the image of Champagne and report any misuse• Protect the GI through registration in 121 countries around the world, including all 10

countries of SEA

Lessons learned:1. Undertake a prior assessment of the means of GI protection in the target market2. Look for protection through registration when available3. Register your GI to facilitate taking action against misuses


• As a GI (sui generis system): Group of producers and/or operators Association or organization Institution representing the community Local authorities Groups of consumers or interested parties Even one producer only

• As a collective / certification mark: GI association GI certification body

How can EU GIs be protected in SEA?


Key aspects to bear in mind:Who can apply for registration of a GI? Overview

Authorized representative

needed!


• Application Form• Power of Attorney or Authorisation Letter• Identification of the applicant and/or representative• Proof of the protection/registration in the country of

origin (foreign GIs)• Translation and transliteration of documents (if needed)• GI Product Specifications• Payment of fees• Other documents, depending on the country

How can EU GIs be protected in SEA? (II)


Key aspects to bear in mind:What are the required documents? Overview

Check the “Guide to GIs in SEA” for specific requirements per

country


• Managed by the relevant IP authority in each country• Steps:

How can EU GIs be protected in SEA? (III)


Key aspects to bear in mind:How does the GI registration process work? Overview

In average, between 9 - 18 months (depending on the country)

GI Registration Certificate

Publication of the GI

Registration

Record of the relevant

information in the official IP

gazette

Registrationof the GI

Opposition

Substantive examination + Publication for

opposition

Formal examination

Poll Question 3

Question: In your opinion, is the registration in SEA countriesan interesting option for European GIs?

A. Yes, affordable and manageable by GI stakeholders

B. Yes, but finding local IP experts may be difficult

C. No, it seems too complex to achieve

D. No, it is not worth the time and cost


• Very well-known GI - GI Product Specifications• Only from the defined geographical area in Italy• Protected in the EU since 1996• Registered in Indonesia, Malaysia and Vietnam from 2010

EU experience on GI registration


Case Study: EU GI ‘Parmigiano Reggiano’ in SingaporeFacts:

Actions taken by Consorzio del Formaggio Parmigiano Reggiano:• GI application to register in the Singapore’s GI Register in April 2019• Request of extension of the time to file the notice of opposition by a 3rd party• Request of extension rejected by the Registrar - Lack of “good and sufficient reason”Lessons learned:1. GIs still new and increasingly relevant in SEA - Protection through registration2. Different registration procedure per country – Well-founded application3. There may be opposition by a 3rd party – Prior research and local IP experts’ advice


• When registered as a GI in Cambodia, Indonesia, Laos, Myanmar, Thailand or Vietnam - Indefinite protection, as long as: The GI is not cancelled or invalidated The requirements to be a GI remain

• When registered as a GI in Malaysia or Singapore – 10 year protection with possible renewal

• When registered as a collective/certification mark in Brunei, the Philippines, Vietnam and Singapore – 10 year protection with possible renewal

Benefits of protecting your GI in SEA


Duration of GI protection: Overview

PROTECTED!


Benefits of protecting your GI in SEA (II)


More effective taking measures against infringementsHow to detect an infringement

Recommendations to react against infringements: Set aside a budget for GI surveillance and enforcement Seek professional advice to develop a good protection strategy Find the right lawyer Be able to demonstrate your GI rights Be able to prove the infringement (infringer, evidence, cooperation with local

authorities)

Regular surveillance of your GI in the market, ensuring: Preserved reputation, quality and characteristics of your GI No unlawful use of your GI

ACT AGAINST

INFRINGEMENTS


a. Negotiation or 3rd party mediation (in all SEA countries) Warning or cease and desist letter Negotiations with local SMEs

Benefits of protecting your GI in SEA (III)


Options to take action against an infringement:

b. Administrative actions (in Vietnam, Cambodia, the Philippines) Primary sanctions Additional sanctions Other remedies

c. Civil enforcement (in all SEA countries) Preliminary or permanent injunction orders to stop the infringing activities Restraining orders Awards Disposal of infringing goods Claims for damages, lost sales or infringer’s profits, etc.

ACT AGAINST

INFRINGEMENTS


Benefits of protecting your GI in SEA (IV)


Options to take action against an infringement (II):

e. Customs’ control procedure (in all SEA countries) Monitoring of import or export of goods Detention or seizure of identified or suspected infringing goods Destruction of the fake goods

d. Criminal prosecution (In all SEA countries) Raid or similar enforcement actions Seizure and destruction of goods Payment of fines and damages Withdrawal of business licenses Imprisonment term for the infringer.

Check the “Guide to GIs in SEA” for further info

ACT AGAINST

INFRINGEMENTS


• Very well-known GI protected in the EU since 1996• Commitment to protect the GI and take action against infringements

EU Experience on GI enforcement


Case Study: EU GI ‘Parmigiano Reggiano’ in VietnamFacts:

Actions taken by Consorzio del Formaggio Parmigiano Reggiano:• 2016: Worldwide tour to identify infringements of the name “Parmigiano Reggiano”• 3 identified infringements in Vietnam – Applications of registration of the names

‘Reggiano’, ‘Parmesan’ and ‘Parmigiano-Reggiano’ preceded by the producer’s name.• Opposition against the registration of the three applications, based on the prior right of

the collective mark registered in Vietnam in 2010.Lessons learned:1. Strategy to regularly survey export markets2. Registration of the GI – Powerful tool against infringements3. Quick action against infringements to avoid more complex legal actions later4. Counter-actions against infringements good deterrent against misuse


GIs quite new in SEA countries: Increasing interest in EU high-quality products = Promising market opportunities for EU GIs

Registering your GI in SEA – ALWAYS BETTER

Identify the protection system(s) available for your GI in eachcountry

Prepare a complete application based on the requirements per country

Seek the advice of local IP experts for registration and enforcement

Allocate a budget for regular surveillance of your GI in the marketonce it is registered

Take immediate actions if you detect any infringement of your GI -Strategy and evidence gathering

Conclusion: Take-away messages


An initiative of the© European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.


Thanks for your attention

Questions?© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.


Check-out the latest Geographical Indication Guide to SEA


https://www.southeastasia-iprhelpdesk.eu/sites/default/files/sea_geographical_indications_guide_ea-01-20-199-en-n.pdf




SEA Helpdesk – Upcoming Webinars

Date Upcoming Webinar Speaker

Thu 18 June Intellectual Property in Laos – Focus on Trade Marks and Trade Mark Enforcement

Dino Santaniello, Tilleke & Gibbins in Lao PDR

Mon 22 June COVID-19 Impact on IP Protection in South-East AsiaFranck Fougere, Ananda Intellectual Property (Thailand- Hong Kong)

Wed 24 June The Impact of the Pandemic on Brand Protection and IP in China and South-East Asia

Simon Cheetham, Erinyes International Ltd.

Fri 3 July Webinar: Counterfeiting and Brand Protection during COVID-19 in Myanmar

Yuwadee Thean-ngarm, Tilleke & Gibbins in Myanmar


https://www.southeastasia-iprhelpdesk.eu/en/upcoming-events/webinar-intellectual-property-laos-focus-trade-marks-and-trade-mark-enforcement-co

https://www.southeastasia-iprhelpdesk.eu/en/upcoming-events/webinar-covid-19-impact-ip-protection-south-east-asia-co-organised-asean-dutch

https://www.southeastasia-iprhelpdesk.eu/en/upcoming-events/webinar-impact-pandemic-brand-protection-and-ip-china-and-south-east-asia-co

https://www.southeastasia-iprhelpdesk.eu/en/upcoming-events/webinar-counterfeiting-and-brand-protection-during-covid-19-myanmar-co-organised


Thank you for your attention!Stay connected!

South-East Asia IPR SME Helpdesk

@ iprSEAsia South-East Asia IPR SME Helpdesk

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https://www.facebook.com/pages/South-East-Asia-IPR-SME-Helpdesk/350370585078981

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welcome to the webinar · speaker(s) 10:00 – 10:05. introduction to the sea ipr sme helpdesk and...

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