Geography Reference
In-Depth Information
true as to the territory, region or locality in which the goods originate, falsely
represents to the public that the goods originate in another territory.
(c) Exemption of trade marks applied for or registered in good faith
Cognisant of the fact that for most countries the protection of GIs will be an
innovation, Art 24.4 exempts from this form of protection trademarks which
have been 'applied for or registered in good faith' or where the rights to the trade
mark 'have been acquired through use in good faith' either before the
implementation of the TRIPS provisions, or before the geographical indication
is protected in its country of origin.
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2.57
Article 24.5 provides that in a situation where a trade mark has been applied for
or registered in good faith, or where rights to a trade mark have been acquired
through use in good faith either:
(a)
before the date of application of these provisions in that Member as
defined in Part VI; or
(b)
before the geographical indication is protected in its country of origin
measures adopted to implement the GIs provisions contained in section 3 of the
TRIPS Agreement shall not prejudice eligibility for or the validity of the
registration of a trade mark, or the right to use a trade mark, 'on the basis that
such a trade mark is identical with, or similar to, a geographical indication'.
2.58
In
EC - Trademarks and Geographical Indications
the Panel interpreted Art 24.5
as an exception to GIs protection, and rejected arguments that it impliedly
limited trade mark rights or impliedly preserved any trade mark rights that it
does not specifically mention.
20
2.59
Article 24.7 provides that a Member may provide that any request made under
the section in connection with the use or registration of a trade mark must be
presented within five years after the adverse use of the protected indication has
become generally known in that Member, or after the date of registration of
that trade mark, provided the registration has been published and 'provided that
the geographical indication is not used or registered in bad faith'.
2.60
Similar to the analogous provision in most trade mark laws, Art 24.7 preserves
'the right of a person to use, in the course of trade, that person's name or the
name of that person's predecessor in business, except where such name is used in
such a manner as to mislead the public'.
20
Panel Reports,
EC - Trademarks and Geographical Indications (US)
, para 7.609 and
(Australia)
, para 7.609.
