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The manual on Geographical Indications and what it has to say

By Ana Lúcia de Sousa Borda, Partner at Dannemann Siemsen - 25/02/2021

With the entry into force of the Industrial Property Law (IPL - Law no. 9,279/1996), geographical indications, in an unprecedented way, had their protection established. This law started to include the possibility of registering Indications of Origin and Appellations of Origin, which are the two types of Geographical Indications.

However, some years passed before the first rules that regulate the processing of applications of Geographical Indications came into force. The first was Normative Ruling no. 143, of 31 August 1998, which was succeeded by Resolution no. 75, of 28 November 2000. After little more than twenty years, the Brazilian Patent and Trademark Office (BPTO) published the 1st Edition of the Manual on Geographical Indications on January 5, 2021, which aims to consolidate the guidelines and procedures for examining Geographical Indications. It is also intended to serve as a guide both for filing applications of geographical indications and for the monitoring of the respective proceedings, consolidating the applicable guidelines. It should be noted that it will be valid from 1st February of this year.

As a result of the rich experience gathered over approximately 20 years of examination and the granting of a considerable number of geographical indications, with 61 registrations for Indications of Origin and 23 for Appellations of Origin having been granted so far, the Manual arrives at an excellent time. It is important to note that all Indications of Origin have been granted in favour of Brazilian producers, while 14 Appellations of Origin are national. In addition to the renowned names of regions that produce wine, cheese and other agricultural products, the BPTO has granted registrations for Geographical indications that indicate the origin of products and services that are even surprising, such as gneiss, marble, opal, golden grass handicrafts, lace handicrafts, ornamental fish and information technology services, to name just a few.

Even considering that there are countries that have protected their most renowned geographical indications for centuries, the recently launched Manual serves as an important source of information for both national producers, who are less familiar with the subject, and for those located abroad and interested in protecting their geographical indications in Brazil by means of a registration, in view of the peculiarities of our legislation.

In its introduction, the Manual clarifies that the Basic Guide to Geographical Indications (available on the BPTO website), the rulings of the Standing Committee for Improvement of the Procedures and Guidelines for the Examination of Trademarks, Industrial Designs and Geographical Indications (CPAPD), opinions from the technical area, technical notes, BPTO internal regulations and the Industrial Property legislation, especially the Industrial Property Law (IPL) and BPTO Normative Ruling no. 95, of 28 December 2018, as well as other provisions that can be found on the BPTO’s website, are complementary sources for consultation.

As it is the first Manual on the subject, it contains a large number of guidelines that would otherwise not be possible to access and is of great use. It highlights, for example, that there is no hierarchy between Indications of Origin and Appellations of Origin, so that one type is not more valuable or important than the other: they are distinct classifications. While the essential requirement for Indications of Origin is proof that a particular region or locality has become known for the production or extraction of a particular product, for Appellations of Origin it must be demonstrated that natural factors (climate, geography or altitude, etc.) and humans (the knowledge accumulated over generations) are determining for the characteristics of a particular product. In this regard, the Manual clarifies that the presence of both factors is mandatory for Appellations of Origin to be configured, even if these two factors do not occur in the same proportion.

In this regard, it is worth adding that the requirement of fame can certainly be present in an appellation of origin, and the occurrence of certain natural and/or human factors in a particular region that is recognised as an Indication of Origin may also be proven. However, these issues are circumstantial and do not change the requirements to characterise these two classifications for the purposes of registration, as has been seen previously.

Extremely informative and didactic, the distinction between Geographical Indications, Government Stamps, Trademarks, Collective Marks and Certification Marks is also shown. In short, there is no redundancy or overlap between these rights, since only the Geographical Indications can be used to indicate a particular origin through the verification of certain conditions, constituting requirements that do not apply to other rights. However, it should be noted that there is no obstacle to adopting geographical names as a trademark (which in these cases would function as arbitrary names), provided that they do not consist of geographical indications, even if they have not been registered, and that they do not have the potential to lead the general public to confusion or undue association as to the true origin of the products or services claimed.

The Manual is also enlightening with respect to the range of products and services of interest. Given the differentiated nature of Geographical Indications, only products from a region that was famous for its extraction - in the case of Indications of Origin -, or those whose characteristics are demonstrably attributable to natural and human factors in a given location, when it comes to Appellations of Origin, must be claimed. Indeed, the addition of other products - even if derived from the main product - does not add value and can even harm the integrity of the geographical indication, since its use in an improper manner can lead to its trivialisation.

The BPTO, through Ordinance 415, of 24 December 2020, which instituted the 1st Edition of the Manual on Geographical Indications, states that it may be subject to periodic updates, in a demonstration that Geographical Indications, despite the fact that tradition is one of their characteristics, notably in the case of Indications of Origin, are nevertheless presented as a dynamic topic, and their use may result in new guidelines.

Finally, the Manual on Geographical Indications, similar to what happened with the Trademark Manual, already in its 3rd edition, and the Industrial Design Manual, will certainly contribute to guiding users on a topic that has been gaining greater visibility for national producers, opening up possibilities for the promotion of an important Industrial Property asset.

By Ana Lúcia de Sousa Borda, Partner at Dannemann Siemsen - 25/02/2021
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