Is a COLA necessary to Establish Lawful Use of a Wine Trademark?
In the United States, trademark rights may be established through the lawful use of a mark in association with goods in commerce. When one is selling a product that is not subject to government regulation, such as t-shirts, it is fairly simple to make lawful use of a mark in commerce; you label the t-shirt with your trademark and you then offer it for sale via the Internet, a retail store, or some other sales outlet. However, when it comes to products that are regulated by the government, such as wine, there is the additional question of whether a use is lawful if the seller of the wine has not complied with all of the government regulations necessary to sell the product. For instance, the Alcohol and Tobacco Tax and Trade Bureau (“TTB”) requires that before a wine may be released from bond or Customs a party must first obtain a Certificate of Label Approval (“COLA”) for the label for such wine. So, if a party has not obtained a COLA when it first sells its wine, can that party establish lawful use of the mark in commerce as of that date of first sale absent the COLA?
This issue was recently addressed in a proceeding before the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) in the case of Churchill Cellars, Inc. v. Brian Graham, Opp. No. 91193930 (TTAB 2012). Following is a link to the opinion: http://ttabvue.uspto.gov/ttabvue/ttabvue-91193930-OPP-23.pdf
In the Churchill case the TTAB found that even though the party claiming rights in the trademark at issue had not first obtained a COLA before making use of the mark on wine in commerce, such use was not necessarily unlawful so as to preclude the establishment of trademark rights. The TTAB noted that it is not in a position to evaluate whether a party is in compliance with the regulatory schemes of other government agencies and absent some finding from a Court or an administrative agency such as TTB, TTAB cannot make a determination of whether the administrative failure to obtain a COLA made the use of the mark on the wine illegal. The TTAB further noted that there was no evidence that the party would have been denied a COLA had it applied for one, and in fact a COLA was subsequently obtained for the label featuring the mark by the producer of the wine. Therefore, TTAB concluded that it would not deny the party its claim of trademark rights simply because it failed to follow an administrative procedure.
This is good news in the sense that a party cannot be denied its trademark simply because it did not obtain a COLA. However, it can hardly be recommended that a party attempt to make use of a mark before obtaining a COLA simply to establish trademark rights. Had the party opposing the trademark in this case raised the issue with TTB of the other party’s failure to obtain a COLA it is possible that there may have been a decision from TTB finding the sale of the wine to be unlawful thereby providing the USPTO TTAB with a basis for finding that the use of the mark was also unlawful. Furthermore, the sale of wine without a COLA could result in significant penalties from TTB which could have a much more significant impact on a winery’s overall business. Thus, while this decision may be positive from a trademark rights perspective, it should not act to encourage wineries to sell wine without a COLA simply to establish trademark rights.
From a legal analysis perspective, it should also be noted that this decision is precedent in the USPTO where decisions are made as to registration of trademarks. However, the USPTO has no jurisdiction to stop a party from using a mark. Such jurisdiction rests exclusively with the state and federal courts. Furthermore, the decision of the Ninth Circuit Court of Appeals in the case of CreAgri, Inc. v. Usana Health Services, Inc., 474 F.3d 626 (9th Cir. 2007) took an arguably broader view of the unlawful use issue in the context of labeling requirements for dietary supplements under the Food, Drug and Cosmetic Act such that it could be argued that the Ninth Circuit could reach a decision different than that reached by the TTAB in the Churchill Cellars case.
Therefore, it seems apparent that it is still in a winery’s best interest to obtain a COLA before selling a wine rather than selling the wine without the COLA simply to establish trademark rights. The better course of action to quickly establish trademark rights in a wine brand is to file an intent-to-use trademark application with the USPTO which establishes rights as of the day of filing without having to first use the mark in commerce, lawfully or unlawfully.
For any questions or assistance on trademark matters contact Scott Gerien at [email protected]
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Insight into TTB’s Approach to AVAs: The Inwood Valley AVA
Since the establishment of the Augusta AVA in 1980, ATF, and now TTB, has varied its approach to executing its legislatively delegated task of establishing American Viticultural Areas (AVAs). In early 2011, TTB amended the AVA rules entirely. With the recognition of the Inwood Valley AVA, effective as of October 15, 2012, we gain insight into TTB’s process and priorities when reviewing petitions to form new AVAs.
As originally conceived and petitioned to TTB, the Inwood Valley AVA was to be a 32,647 acre viticultural area with 60 acres of vines planted in 4 vineyards. TTB pushed an amendment prior to publishing the Notice of Proposed Rulemaking (NPRM), which reduced the acreage to 28,298 acres and used distinctive soil types to reform the boundaries. TTB sought to remove areas not containing viticultural activities from the AVA. TTB received four comments to the NPRM- 3 supported the formation of the new AVA and 1 opposed the name “Inwood Valley” on the ground that labels with the “Inwood” name would be unable to add the word “Valley” to a future label without satisfying the 85% grape source requirement. Because no existing labels would be impacted by forming the AVA, TTB dismissed the objection.
After the comment period closed, TTB received a comment from a vineyard owner just outside the proposed AVA boundary who wanted to be included. TTB found that a “slight modification to the boundary to include the vineyard at issue is consistent with the distinguishing features evidence submitted….” As a result, Inwood Valley AVA, as established, is a 28,441 acre viticultural area with 62.5 acres planted to wine grape vines or 0.2% of the AVA planted for viticulture. Although in response to a supportive comment to the NPRM, TTB noted that “Whether or not, and to what extent, there is any economic benefit from the approval of a viticultural area is not a factor that TTB considers in determining whether or not to approve a petition for a viticultural area,” it seems clear that TTB does consider whether the formation of an AVA will disenfranchise wine industry participants. The Federal Register excerpt for the establishment of the Inwood Valley AVA may be found at the following link:
For more information or assistance on petitions for establishment of AVAs contact Carol Kingery Ritter at [email protected]
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Wine Institute Presentation on Protecting Your Brand in China
On July 24, 2012, Wine Institute held its California Wine Export Seminar at The City Club in San Francisco. The highlight of the Seminar was a special panel presentation on the Chinese wine market featuring Maria Troen from Wine Intelligence, ZJ Tang from Chicago Chinese Cultural Institute, Pete Hou, Wine Institute’s trade representative in China, and Scott Gerien from Dickenson, Peatman & Fogarty. The panel presented on market issues, cultural issues, trade issues and legal issues related to selling California wine in China. To review the full PowerPoint presentation by Scott Gerien on legal issues related to protecting wine brands in China, click HERE.
For more information on protecting your wine brand in China contact Scott Gerien at [email protected].
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TTB Rule Changes for Documentation Supporting Organic Claims
The Alcohol and Tobacco Tax and Trade Bureau (TTB) recently announced changes to the supporting documentation required for claims that alcohol products are “100% Organic,” “Organic” and/or “Made with Organic” ingredients. Currently, industry members submitting a Certificate of Label Approval (COLA) application for alcohol products that include such organic claims must submit: (1) the organic certificate for the handling operation that makes the finished product; and, (2) the Accredited Certifying Agent’s (ACA) preview which contains the actual images of the product label and the stamp or signature of the certifying agent or control body/authority. Under TTB’s new rule, a copy of the organic certificate is no longer required for products including any such “organic” claims, although COLA application must still include the ACA preview. It should be noted, however, that for any labels that identify organic contents in an ingredient statement, organic certificates for each ingredient identified as organic must still be submitted with the COLA application.
For assistance with COLAs or more information about the TTB labeling changes discussed above, please contact Bahaneh Hobel at [email protected]
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Santa Barbara Conference on Wine Law – April 27, 2012
On Friday, April 27, 2012, Networking Seminars will be offering a day-long conference on current legal and regulatory issues facing the wine industry. The conference will take place at the Harbor View Inn in Santa Barbara and will address a host of legal issues including negotiating wine grape contracts, employment and labor law issues for vineyards and wineries, protecting your wine or vineyard brand, the current landscape for direct shipping and hot topics in California ABC regulations.
This event is for those in the wine industry including Winery and Vineyard Owners, Winemakers, Presidents, Treasurers, Business Managers, General Managers, Vice Presidents, Counsel, Wine Purchasers, Sales & Purchasing Managers, Controllers, Accounting Personnel and those interested in purchasing or owning a vineyard or winery. For those in the legal and accounting sectors there will also be continuing education credit available for attending the event.
Dickenson, Peatman & Fogarty is a co-sponsor of this event and the presentations will be made by our attorneys and consultants.
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Trademark for Alcohol Held Confusingly Similar to Identical Mark for Cigars
The U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) recently refused registration of the mark MOCAMBO for rum based on a prior registration for the mark MOCAMBO for cigars. In refusing the registration, the TTAB found that rum and cigars are complementary products in that cigars are enjoyed with a glass of fine rum and are marketed together for simultaneous consumption. As a result, the TTAB concluded that consumers seeing these products labeled with the identical mark would likely believe that the goods originate from the same source and as a result the marks are confusingly similar. To read the full opinion in this case follow this link: In re Licores Veracruz.
While this case did not involve a mark for wine, the same result likely would have followed if the goods at issue were wine and cigars since these goods are also marketed together for simultaneous consumption. This decision is important because it indicates that in clearing a mark for adoption and use on wine, identical marks on complementary goods such as cigars must also be considered in the analysis.
For more information or assistance on trademark clearance contact Scott Gerien at [email protected]
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TTB Issues Guidance on Changes to Personalized Labels, Just in Time for The Holidays!
Producers that create personalized labels for consumers (as opposed to labels made for retail or wholesale customers other than the ultimate consumers) have now been provided with guidance from the TTB regarding what changes to the COLAs for such personalized labels require approval from the TTB. For personalized labels, TTB had previously permitted the holder of an approved COLA to change items such as salutations, names, and event dates on the label without applying for a new COLA, but did not allow changes to the artwork or graphics on personalized labels without resubmission of the labels for approval. TTB has revised its position on this matter and now permits changes to the graphics or artwork on a previously approved personalized label without having to apply for a new certificate of label approval.
If you want to retain the flexibility to make changes to the personalized labeling information without submitting new applications for label approval, you should follow the steps included in the TTB advisory:
1)Initially, you should apply for a COLA that will act as a template and will include a label or labels that, at a minimum, contain all mandatory information required by the applicable regulations, as well as any other information on the label that is not part of the personalized label.
2)The application should also include (either in item 19 of the paperapplication, or in the special wording section of the COLAs Online application), a description of the specific personalized information that may change. For example, you could include the following in your application: “The graphics, salutations, dates, and artwork presented on this label may be changed to personalize this label.” For bottles etched with personalized information, the application must also note that personalized information will be etched on the bottle. The label submitted with the COLA may contain a “blank” area where customized artwork or information will appear when the actual labels are printed.
The TTB’s approval of the personalized label COLA will include the following qualification: “The approval of this COLA covers this label and any additions, deletions or changes in graphics, salutations, congratulatory dates and names, and artwork to personalize the label as indicated on the application. This approval to change the personalizing information does not permit the addition of any information that discusses either the alcohol beverage or characteristics of the alcohol beverage or that is inconsistent with or in violation of the provisions of 27 CFR parts 4, 5, 7 or 16, as applicable, or any other applicable provision of law or regulations.” Always remember that although you may be permitted to make changes to an approved personalized label that are consistent with the above qualification, you are not permitted to change any of the mandatory label information, such as the brand name or the class or type designation. Further, as noted by the qualification, any discussion of the alcohol beverage product or its characteristics is not covered by the authorization to add or change personalized information to the label.
The TTB did make clear that this revision regarding changes to personalized labels does not apply to customized private labels created for purchasers other than the ultimate consumer. Such private labels, typically made for a retailer or wholesaler, may bear a brand name or artwork that is specific to that purchaser who is buying the product in order to sell it to consumers remain subject to the same requirements as other labels. The TTB also clarified that this advisory did not apply to or otherwise permit those changes that are generally prohibited, such as changes to approved labels that are made after the container bearing the label has been removed from the bottling premises or from customs custody and shipped in interstate commerce.
Finally, when submitting personalized labels for approval, remember that, other than as set forth in this advisory, personalized information and artwork on labels are subject to all the same regulations, including the regulations regarding prohibited practices, as information and graphics on non-personalized labels. You may not add personalized statements, graphics, pictorial or emblematic representations that are not allowed on labels that undergo TTB review.
For assistance with COLAs or more information about the TTB Advisory above, please contact Bahaneh Hobel at [email protected]
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TTB Takes Position on Information to Be Included On Wine Websites
Recently, the TTB has been in contact with wine industry members regarding changes required to the landing pages of their websites. Under federal regulations governing the labeling and advertising of wine (27 CFR 4), an advertisement for wine “shall state the name and address of the permittee responsible for its publication or broadcast.” According to the TTB, this regulation requires that the name and address of the basic permit holder appear on the landing page of a company’s website. The TTB considers the landing page of a website the original or first page that comes on the screen when the website address is typed in. Therefore, even where the landing page of a website is just a click-through to other more detailed pages, the name and address of the permit holder must still be included on this initial landing page to comply with the TTB’s interpretation of this regulation. The TTB confirmed that a full address is not necessary to satisfy this rule – only the city and state listed on the basic permit needs to be included.
For more information regarding the advertising and labeling of wine, or for assistance with other areas of state or federal alcohol beverage regulation, please contact Bahaneh Hobel at [email protected].
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REMINDER – Wine Law Seminar this Friday
This a reminder that Networking Seminars will be presenting “Successfully Navigating the New Economy: Legal and Tax Issues Facing the Wine Industry” this Friday from 9:00 a.m to 5:00 p.m. at the Napa Valley Marriott. The conference will conclude with a networking wine reception sponsored by Napa Valley Vintners. The conference will discuss legal and tax consequences for wine production, sales & distribution, including managing international opportunities, intellectual property issues, commonly overlooked tax savings and audit strategies, multi state tax issues and opportunities to raise capital and positioning your winery or vineyard for a successful sale. Attendees will be eligible for Continuing Professional Education Credit and Continuing Legal Education credit. For more information on the conference follow the below link, and Lex Vini readers can qualify for a reduced attendance fee by entering the promotional code DPF.
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Wine Law Seminar in Napa on July 22, 2011
On July 22, 2011, Networking Seminars will be presenting “Successfully Navigating the New Economy: Legal and Tax Issues Facing the Wine Industry.” The conference will take place from 9:00 a.m to 5:00 p.m. at the Napa Valley Marriott and conclude with a networking wine reception sponsored by Napa Valley Vintners. The conference will discuss legal and tax consequences for wine production, sales & distribution, including managing international opportunities, intellectual property issues, commonly overlooked tax savings and audit strategies, multi state tax issues and opportunities to raise capital and positioning your winery or vineyard for a successful sale. Attendees will be eligible for Continuing Professional Education Credit and Continuing Legal Education credit. For more information on the conference follow the below link, and Lex Vini readers can qualify for a reduced attendance fee by entering the promotional code DPF.
Copyright Dickenson Peatman & Fogarty at www.lexvini.com
Wine Law Treatise Now Available on Amazon
The recently-published wine law treatise by Richard Mendelson, Wine in America: Law and Policy, is now available on Amazon.com. The treatise is intended to provide reference information on legal issues affecting the wine industry. The subject areas include trade practices, labeling and advertising, business models for making wine and growing grapes, the commerce clause and the 21st amendment, wine brands and appellations of origin, land use issues for wineries and bars, counterfeit wine, public health and social responsibility and international institutions and accords. The book is the first comprehensive treatise on wine law in the U.S. The book was edited and written by Richard Mendelson, Director of the Program on Wine Law and Policy at UC Berkeley, Boalt Hall School of Law and Of Counsel at Dickenson, Peatman & Fogarty. Other contributing authors include many experts in the area of wine law including Jim Seff and Carrie Bonnington of Pillsbury Winthrop, Wendell Lee of the Wine Institute, Jim Terry, Scott Gerien and Erik Lawrence of Dickenson, Peatman & Fogarty, Lynne Carmichael of Hinman & Carmichael and Jacques Audier of the University of Bordeaux.
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Proposed Naches Heights AVA an Exception to Recent TTB Stated AVA Policy
On May 24, 2011, TTB published a Notice of Proposed Rulemaking (NPRM) proposing to establish the Naches Heights American Viticultural Area (AVA) in Yakima County, Washington. The Naches Heights AVA would be located within the Columbia Valley AVA. TTB is asking for comments on the NPRM on or before July 25, 2011. The proposed AVA is notable for its relatively limited viticultural production within the proposed area. Recently, TTB has taken the position that the ratio of planted and planned vineyard acreage to the total acreage of the viticultural area is an important factor in TTB’s evaluation of an AVA petition. The higher the ratio, the greater the chance of success of the petition through TTB’s vetting process. The proposed Naches Heights viticultural area has 105 acres of commercial vineyards producing or expected to be in production soon. The entire area encompasses 13,254 acres. With only 0.79% of the total proposed area committed to viticulture, Naches Heights stands out as an exception to TTB’s recently stated policies.
For more information or assistance on AVA formation, contact Carol Kingrey Ritter at [email protected]
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TTB Shifts COLA Compliance Obligations to Applicants to Streamline Process
In a sign of TTB’s efforts to streamline and expedite the COLAs review process, the TTB announced on May 3, 2011 that it will no longer evaluate labels for purposes of ensuring that the labels conform to legibility and type size requirements (including characters per inch and contrasting background) contained in the code. TTB will continue to review all labels to ensure they contain all of the mandatory information and do not contain any prohibited information. According to the TTB, this change was made to both “assist alcohol beverage industry members to move their products into the marketplace more quickly” and to allow TTB to use its currently limited resources more efficiently. As many on-line COLAs applicants have no doubt experienced, TTB had previously spent a lot of time and resources returning applications for correction due to problems with image clarity or distortion, which resulted in many processing delays for COLAs applicants. While TTB will no longer return applications for correction due to these issues, industry members remain responsible for and must continue to ensure that the mandatory information on the actual labels is displayed in the correct type size, number of characters per inch, and on a contrasting background in accordance with the TTB labeling regulations. This change in policy should come as good news to the many industry members that have seen an increase in the processing times for COLAs over the past year, which was due in large part to a reduction in the COLAs staff at TTB. However, it also shifts the responsibility for compliance onto the COLA applicant meaning that the issuance of the COLA is no guarantee of compliance and COLAs may be more readily revoked if non-compliance is demonstrated to TTB by an objecting party.
For more information or assistance with COLAs or other licensing matters, please contact [email protected]
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Can I Store Unlabeled Wine in Taxpaid Areas?
Many wineries wonder whether they can store unlabeled wine bottles or “shiners” (perhaps for aging or as library wines) in storage areas outside of their bonded premises. The short answer from the “TTB” is no. Although TTB regulations provide that wines must be labeled before they are removed for “consumption or sale,” the TTB has interpreted these regulations as meaning that wines must be labeled before they are removed from bond for any reason (although a few limited exceptions do exist). Thus, shiners must either be stored within a winery’s bonded premises, or can be transferred via a bond-to-bond transfer to another bonded premises. The TTB does permit appeals to this rule in extraordinary circumstances, although this would require a showing that storage at any bonded premises is impossible for some reason. A simple “fix” to this solution would be expand your bonded wine premises area to include those storage areas where you would like to hold or age your unlabelled wine bottles.
For more information regarding the storage and transport of wines in bond, or for assistance in filing a bonded premises expansion to include storage areas, please contact Bahaneh Hobel at [email protected]
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Groupon and Alcohol Discounts: Do They Mix in California?
The State of Massachusetts ABC recently held that Groupon’s online coupon discounts for alcohol at bars and restaurants run afoul of that state’s ABC regulation regarding happy hours. This case made clear that the many Groupon-type coupon marketing businesses currently in the market need to recognize the regulatory aspect of their offers when alcoholic beverages become part of the mix. Could the State of California ABC reach a conclusion similar to that of Massachusetts? The State of California doesn’t have the same specific “happy hour” restriction as does Massachusetts. However, these coupon offers could raise other concerns in California under its regulations for alcoholic beverages.
As an example, the California ABC currently has an unresolved issue concerning the compensation of unlicensed third parties from the sale of alcoholic beverages. The assumption is that coupon-marketing businesses are compensated either by a percentage of the sale or by fixed fees which are paid by the participating business. These businesses include ABC licensed retailers, or in some cases manufacturers. If coupons offered to the consumer include alcoholic beverages, these marketing companies could unknowingly fall into this unresolved category of unlicensed third parties. If this were to occur, the unfortunate aspect for the retailers, bars, restaurants and wineries participating in these programs is that California ABC has no administrative authority over unlicensed businesses, only the licensees. Thus, it would be the licensees that took part in these arrangements who would be prosecuted by ABC. Therefore, so long as this remains as an unresolved issue with California ABC, there would appear to be some risk for retailers, bars, restaurants and wineries participating in these online coupon programs.
More often than not, marketing companies are simply unaware of the regulatory intricacies surrounding the alcoholic beverage industry, as exhibited in the Massachusetts case. Many of these companies operate with good intention, but just don’t do their homework in the proper arena. In turn, licensees who take part in these programs assume the programs are legal and comply with the law by the very fact that they exist. However, when it comes to alcohol beverage regulation, the first rule is to not assume that a practiced activity within the alcoholic beverage industry is an acceptable and compliant one, it is always best to first seek guidance.
Some good news is that California ABC has reached out to industry members, their representatives and other stakeholders to examine these types of issues, as well as numerous others, that have resulted from the evolution of technology and marketing related to alcoholic beverages. As a result, ABC has created committees which include representative stakeholders to review current industry trends and determine if they can be addressed with the archaic regulations which were established many years before current media capabilities and marketing techniques were ever contemplated. If attempts to fit the new marketing trends within the existing framework of regulations fail, the door will be open to seek legislative remedies to meet the current needs of the industry. Until then, there remains uncertainty.
For more information please contact Dickenson, Peatman & Fogarty at [email protected].
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WTO Reports Continued Progress on Multilateral Register for Geographical Indications for Wines and Spirits
In the WTO’s continuing efforts to move forward the 13-year old agenda on a multilateral register for geographical indications for wines and spirits, the WTO reported last week that a small working group representing the divergent positions of the various member countries had completed two additional sections of “emerging text” for the register proposal. “Emerging text” represents a single document which has the elements of each of the various WTO member positions reflected in bracketed text to reflect the differences between the positions, and unbracketed text to reflect the areas of agreement. While the development of the emerging text is a positive step forward, the majority of such text still remains bracketed, indicating that any agreement on a format for a multilateral register for geographical indications for wines and spirits still remains fairly elusive.
To read the WTO press release on the negotiations click on the following link:
For information or assistance on geographical indication issues contact Scott Gerien at [email protected].
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Bill Opening Up Direct Shipping of Wine Introduced in Maryland
In January, Maryland’s General Assembly introduced legislation to legalize the direct shipment of wine to consumers from out-of-state wineries and retailers. Maryland is just one of just 13 states that prohibit winery-to-consumer direct shipping and one of 36 states that prohibit direct shipments by out-of-state retailers (including internet retailers). Although the bill seems to have the initial support of many members of the state legislature, the future of direct shipping in Maryland remains uncertain, especially considering the fact that similar legislation introduced in each of the past three legislative sessions failed, largely as a result of strong lobbying efforts on the part of wholesalers who desire to keep the strict three-tier system in tact.
However, a recent report by Maryland Comptroller Peter Franchot, which supports allowing in-state and out-of-state wineries (although not out of state retailers) to ship wine directly to buyers, may just be the push that out-of-state wineries are hoping for. The study concluded that one of the primary concerns with direct shipping, underage access, has not been an issue in states that already allow direct shipping and therefore should not be a problem in Maryland. The study also concluded that the direct shipping prohibition negatively affects Maryland wineries.Under current Maryland law, a direct shipment of wine in or out of the state is a felony.
For more information or assistance on direct shipping issues, contact Bahaneh Hobel at [email protected]
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TTB Eliminates Expedite Requests and Informal Reviews for COLA Applications
On February 2, TTB posted a bulletin on its COLA and formula approval process. Due to increases in label and formula submissions and economic impacts on the agency, TTB will no longer accept “Expedite Requests” or “Informal Reviews” effective immediately. TTB is cautioning applicants to allow for a 90-day application review process. The agency is encouraging the use of its e-application program, which will allow processing to occur in approximately half the time as paper applications. The COLA Online system has been upgraded to allow status tracking and TTB has released a new Formulas Online program for drafting, submitting and tracking formula applications.
For more information or assistance on TTB rules and procedure contact Carol Kingrey Ritter at [email protected]
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Some Movement at WTO on Multilateral Register for Geographical Indications for Wines & Spirits
In what is being touted by the World Trade Organization (WTO) as the first attempt to produce a single draft text for a Multilateral Register for Geographical Indications for Wines and Spirits pursuant to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), representatives from WTO member countries met this month and put together a written draft of their conflicting positions on how one would notify a geographical indication for wines or spirits for registration on a multilateral register.
As some background, WTO members agreed during the Doha Development Round of WTO trade negotiations in 2001 to develop a multilateral register for geographical indications for wines and spirits so that terms such as Cognac, Napa Valley and Barolo could receive recognition or protection as place names at the international level.
However, exactly what such protection would be and how it would be accomplished was not set forth in any manner at the Doha Rounds and the negotiations that followed demonstrated that there were vast differences between WTO members as to what these should be. On the one side was the “new world” led by the U.S., Australia, Canada and others which believed that the multilateral register should be nothing more than a list of wine and spirit geographical indications that would simply serve as a reference for WTO members with no legal effect. On the other side was the “old world” led by the European Union, Switzerland, and later a network of developing countries seeking to tie their own IP interests to the geographical indication issue, which wanted mandatory protection of wine and spirit geographical indications in all WTO countries once placed on the multilateral register.
Between these two groups was Hong Kong, which set forth a “middle ground” proposal which attempted to address concerns raised by both sides: on the one side, the new world countries were concerned with conflicts of geographical indications with trademarks and terms which were generic in some countries, such as Champagne; on the other side, the old world countries sought to have some type of legal effect for the registration system so that geographical indications would have protection on par with other types of intellectual property. Along with Hong Kong, a middle ground position has also been proposed by the International Trademark Association. Both of these proposals have provisions for the protection of trademarks with prior rights and recognition of generic terms, while also allowing geographical indications with no conflicting issues to be recognized and protected with legal effect.
Since Doha, the process has been characterized by gridlock with very little movement on the principal issue of the multilateral register for wines and spirits, and expansion of the gridlock by adding other controversial topics to the discussion, such as expansion of such a register to goods other than wines and spirits.
The WTO has set a deadline of the end of the first quarter of 2011 for a draft written text covering six different points related to the Multilateral Register. This development this month is movement on the first point. It is an ambitious plan, but given the lack of movement over the past 10 years, certainly something to be optimistic about.
For more information on the current negotiations on the Multilateral Register for Geographical Indications for Wines and Spirits, follow the below link to the WTO web site:
For more information on assistance with protecting geographical indications in the U.S. and abroad, contact Scott Gerien at [email protected]
Copyright Dickenson Peatman & Fogarty at www.lexvini.com
TTB Issues Final Rule on New Procedures for Recognizing AVAs
On January 20, 2011, TTB published the long awaited Final Rule on its controversial Notice No. 78, which proposed substantial changes to the AVA petitioning and formation process. Notice No. 78 was published on November 20, 2007; the same day that the agency published Notice No. 77, proposing to establish the Calistoga AVA.
Perhaps the two most controversial topics addressed in Notice No. 78 were proposed changes to the “grandfather” rules that address conflicts between brand names and AVA names and TTB’s stated concern over nested AVAs. In the Final Rule, TTB backed off its proposal to create new “grandfather” rules stating that it was persuaded by opposing comments that stressed the potential for the proposed scheme to mislead consumers. On the subject of nested AVAs, or AVAs within AVAs, TTB left the door open to the possibility that a petition to establish a new AVA entirely within or overlapping an existing AVA may result in the new AVA being excluded from the larger area.
Procedurally, the Final Rule greatly expands the petition evidence requirements and procedures for submitting and processing AVA petitions. TTB emphasized that its new procedural rules do not impose new standards but “represent a codification of longstanding administrative authority and practice and address a need for greater transparency.”
