• Introduction


    • While in numerical terms the cases which involve conflicts between trade marks and geographical indications are limited, their complexity and more importantly, their implications at different levels (institutional, political, etc.) are important. 

      The interface between them constitutes a significant part of practice at EUIPO and since that interface involves parties which represent various interests, and which are frequently in contradiction with each other, we have regularly invited stakeholders from both areas to submit their opinion through the standard process of revision of our Guidelines on the examination of absolute and relative grounds involving GIs. 

      In this course, we offer a variety of subjects and presentations with a focus on future perspectives of this interlinked relationship between both trade marks and geographical indications.

      The course is an intermediate level with over 4 hours of content. Each section contains either 2 or 3 videos at roughly 15 minutes each.

      You are able to click on the topic that interests you below. In each section, you will be able to click on the presenter name to view a video of their presentation. You are also able to download a PDF and MP3 version as well as read their biography.
      We advise you use either Mozilla Firefox or Google Chrome with this course for the best user experience. If you are using Internet Explorer and experience issues please be aware that you may need to close background programs.
      You can email the LearningPortal@euipo.europa.eu team if any other issues are encountered.

  • Geographical Indications and Different Kinds of Trade Marks

    • This first section presents various issues regarding the complementarities and differences between geographical indications and trade mark instruments, for instance the function and nature of each IP right. Please click on the presenter name below to view their content:

       
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      Prof. Dr. Alexander von Mühlendahl studied at the University of Munich, Germany, Dr.iur. and the Northwestern University, Chicago, Illinois, USA, J.D., LL.M. (1970).
      From 1966 to 1979 he was in academic research at the Munich Max-Planck-Institute for Intellectual Property Law. From 1979 until 1994, he was an official in the German Federal Ministry of Justice. For 11 years (1994-2005) he was vice-president of the Office for Harmonization in the Internal Market in Alicante (now EUIPO), and since 2005 he has been a member of the Munich Bar and senior consultant for BARDEHLE PAGENBERG Partnerschaft mbB, in Munich, Germany.
      He is a visiting professor at Queen Mary, University of London and the Centre for Commercial Law Studies. He is also Honorary Member of ECTA (European Communities Trademark Association), the Hungarian Trademark Association, and APRAM (Association des Praticiens du Droit des Marques et des Modèles).
       
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      Prof. Pilar Montero is the Director of the Intellectual Property Master at the University of Alicante (Magister Lvcentinvs). She is Professor at the Commercial Law Department of the University of Alicante qualified in the area of Intellectual Property. She is an author of books and articles in the field of intellectual property law (geographical indications, trade marks and competition law). Her most recent book is Denominaciones de Origen e Indicaciones geográficas, (Appellations of Origin and Geographical indications). She is a standing contributor and evaluator in this field in scientific journals. She has participated as expert in national and European research projects, such as Legal regime of plant breeding and quality distinctive signs. She is also in charge of Intellectual Property courses at the University of Alicante, a speaker in the field of national and international IP courses, and a supervisor in the field of geographical indications at the European Doctorate EIPIN Innovation Society (H2020-MSCA-ITN-2016).

  • Protected Geographical Indications and the Ex-Officio Examination of Trade Mark Applications

    • In this section, experiences in respect of the ex-officio examination under absolute grounds for refusal of trade mark applications against prior geographical indications are addressed. These highlight the important issues involved (scope of protection, concepts of ‘evocation’ and ‘comparable products’, etc.) Please click on the presenter name below to view their content:
        
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      Ms. Elisa Zaera Cuadrado has been working at EUIPO since 2009, in the Operations Department (OD, 2009-2011), in the International Cooperation and Legal Affairs Department (ICLAD, 2011-2016) and since 2017 again in the OD. During her last two years in ICLAD, Elisa has coordinated a group of experts dealing with the practice of absolute grounds for refusing the registration of a mark. As coordinator, she was responsible for the advice and the revision of the EUIPO Guidelines on, among other things, the examination of trade marks in conflict with geographical indications.
         
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      Mr. Alessandro Sciarra is a European trade mark attorney at Studio Legale Bird & Bird. With over 10 years of experience in the IP field, Alessandro specialises in providing legal advice on the recognition and protection of geographical indications and has advised various consortia representing well-known Protected Designations of Origin. His practice focuses also on trade mark filing and prosecution, management of trade mark and domain name portfolios, UDRP and ADR procedures to recover domain names. 
      He has a degree in law from the University of Milan and he is currently the Chair of the MARQUES Geographical Indications Team.

  • Protected Geographical Indications as Earlier Rights in Oppositions

    • In this section, the speakers present from a practical point of view, their experience with oppositions between an earlier geographical indication and a trade mark, highlighting the important issues (entitlement to act, scope of protection, reputation, etc.) Please click on the presenter name below to view their content:
         
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      Ms. Lourdes Velasco has a Bachelor’s Degree in Law from the Universidad Complutense de Madrid. She has been a civil servant in the Spanish Patent and Trademark Office since 1992, always working in the Department of Distinctive Signs and linked to the examination and resolution of Trade Mark applications. She is now Head of the National Distinctive Signs II area. 
      In addition, she has participated as a speaker in complementary activities within the Spanish Patent and Trademark Office such as, amongst many others, the WIPO summer courses held in Madrid in 2017 and 2018, the XXXIII AIPPI Conference in Madrid in 2018, the Regional workshop on the extension of Tools developed by the European Network of Trade marks and Designs (EUIPN) organised by EUIPO in Colombia in 2017.
          
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      Mr. Lionel Lalagüe is an experienced in-house lawyer specialised in the Wine & Spirits sector, with a global expertise from production to labelling, IP, anti-counterfeiting, marketing and advertising, in France, EU and export markets (focus on China, USA).
      He joined Bureau National Interprofessionnel du Cognac (BNIC) in 2008, as Deputy Head of International Affairs (July 2008 - June 2010), then Head of International Affairs (July 2010 - December 2013), and then Director of Department and a member of the executive committee since January 2014.
      He advises BNIC’ members, Director General, President and Board on legal and international trade issues and represent members’ interest at all pertinent levels of the administration (France, EU, 3rd countries) and with national and European MPs.

  • Case Law of the European Court of Justice/General Court

    • In this section, the speakers will present various issues which have been developed by the case-law on the relation between geographical indications and trade marks, such as the scope of protection under absolute and relative grounds for refusal, the function of collective trade marks which designate a geographical origin, and concepts from geographical indications law that have been litigated ( ‘evocation’, etc.) Please click on the presenter name below to view their content:
       
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      Prof. Alberto Ribeiro de Almeida is a Jurist and University Professor. He holds a Ph.D. – Doctor in law (commercial law) by the University of Coimbra. Alberto has published several books and articles in national and international magazines, especially in the field of industrial property (namely, designations of origin, geographical indications and trade marks). He has been a speaker at several international congresses and workshops on industrial property, European law, competition law, national, European and international rules on designations of origin and geographical indications. He is also a Professor of Commercial Law at the Lusíada University (Norte – Porto). In addition, he is the coordinator of the IVDP legal department, Vice-President of the DROCON group at the OIV and WIPO Consultant. Alberto is also a member of various Intellectual Property Associations and a reviewer of law magazines.
       
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      Ms. Virginia Melgar graduated in law from the University of Paris (Paris II Assas) in 1981; and also graduated in Criminal Sciences from the Institute of Criminology Paris in 1980. Virginia has been a judge in France since 1982 and has experience as a Public Prosecutor at the Versailles Court of First Instance (1984-1986); Magistrate at the Ministry of Justice - Criminal division (1986-1991); seconded national expert at the Legal Service of the European Commission (1991-1994); lawyer at the Legal Service of the Office for Harmonisation in the Internal Market (OHIM) in Alicante (1995-2001); Deputy Director of the General Affairs and External Relations Department of OHIM (2001-2004); examiner of trade marks at the Trade Marks Department of OHIM (2004-2006); Principal Director Legal Affairs at the European Patent Office Munich (2006-2011); lawyer at the cancellation and litigation department of OHIM (2011 until 1/9/2015); and since 1/9/2015, a member of the 5th Board of Appeal of EUIPO.
       
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      Mr. Ignacio Ulloa Rubio was born 1967 and he holds a Law Degree with honours (1985-1990) and PhD studies (1990-1993) at Universidad Complutense, Madrid. Ignacio has professional experience as Public Prosecutor of Gerona (2000-2003); Judicial and Human Rights Advisor for the Coalition Provisional Authority, Baghdad, Iraq (2003-2004); Civil First Instance Judge and Investigative Judge (2003-2007); then Senior Judge, Gerona (2008); Deputy Head of EUJUST LEX Integrated Rule of Law Mission for Iraq at the Council of the European Union (2005-2006); Legal Counsellor of the Constitutional Court of Spain (2006-2011 and 2013); Secretary of State for Security (2012-2013); Civil Expert on Rule of Law and Security Sector Reform of the Council of the European Union (2005-2011); and External Expert on Fundamental Rights and Criminal Justice for the European Commission (2011-2013). He is also a lecturer and author of numerous publications. Ignacio has been a Judge at the General Court since September 2013.

  • The Protection of GIs in the EU and Abroad

    • In this section, the speakers will present various initiatives and experiences of protection of GIs in the European Union and in non-EU countries. Please click on the presenter name below to view their content:
       
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      Ms. Antonia Gámez Moreno has a Spanish national lawyer’s background (admission to the Bar in Murcia, 1989) complemented by postgraduate studies in European law at the College of Europe in Brugge. After 4 years in the private sector with a clear focus on EU competition law, consumer policy and internal market issues, she joined the European Commission in 1993. At DG Health and Consumers Affairs (SANCO), she worked on legal aspects of consumer protection. In 2000, she joined DG Agriculture (AGRI) where she held various positions, dealing with State Aid control in the agricultural sector, assistance to the Deputy Director-General in charge of International Relations, Quality policy of agricultural products. In 2014, she was appointed Head of Unit for ‘Enforcement of EU legislation, relations with the Ombudsman and Access to Documents’. From 2017 onwards, she has been Head of Unit responsible for trade relations in the agri-food sector with ‘Asia and Australasia’ in the International Directorate of DG AGRI. 
       
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      Mr. Javier Moreno joined EUIPO in 2011. He has worked in the field of International Cooperation regarding non-EU IP Offices acting as project manager (2011-2013) and Programme Manager (2013-2014). Since 2014 Javier is the Head of Service of International Cooperation. He is in charge of bilateral cooperation of EUIPO with non-EU countries, the implementation of projects funded by the European Commission in third countries and he also deals with international organisations such as EPO, WIPO and the TM5 and ID5 multilateral fora.
      He was a public servant of the Spanish Civil Service since 1995 and before joining EUIPO he has worked for 10 years in the Spanish Patent and Trademark Office, where he was in charge of legal and International affairs. Previously, he also worked in the Ministries of Industry and Commerce, Economy, Public Administrations and Ministry of Defence.
       
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      Mr. Reasey Lao is Deputy Director of the Intellectual Property Department (DIP) of the Ministry of Commerce. He was appointed to that position in August 2014. 
      At the Ministry of Commerce, which he joined in 2005, Reasey Lao first worked on DIP and he was appointed as Deputy Chief of Division on international cooperation and legal affairs in 2008 where he later became Chief of Division of Geographical Indications and Trade Secret in 2009. In 2014, he was appointed as Deputy Director of DIP where he is responsible for international cooperation and legal affairs, geographical indication and trade secret and public awareness. 
      Reasey Lao is a Cambodian national with master degree in business administration from the National Business Institution (NBI).

  • The Protection of Non-Agricultural GIs

    • In this section, the speakers will present the experience of a national Administration to protect geographical indications for non-agricultural products (as well as the initiatives taken by the Commission). Please click on the presenter name(s) below to view their content:
       
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      Mr. Nicolas Guyot is a Legal Advisor in the Industrial Property Rights Legal Services Department of the Legal and International Affairs Division, in the Swiss Federal Intellectual Property Institute (IPI). He was appointed to this position in December 2015. He first worked in the Trademarks Division of the IPI, which he joined in 2010, as an examiner. 
      Nicolas is a Swiss national who holds a Law degree from the University of Geneva, a Law and Economics Master Degree from the University of St. Gallen (HSG) and a Biology degree from the University of Lausanne. He was admitted to the Swiss Bar and practiced several years as an attorney in a commercial law firm in Geneva.
       
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      After an extensive career as an Intellectual property expert, first in the private sector in France and then in the Office for Harmonisation in the Internal market (OHIM, now EUIPO), Ms. Valérie Marie d’Avigneau joined the European Commission in 2009. She is now leading an initiative on a possible extension of Geographical indication protection of the European Union to non-agricultural products.
      Ms. Malwina Mejer has worked as an economist at the European Commission’s DG Internal Market, Industry, Entrepreneurship and SMEs since June 2013. Her expertise and interests lie in the areas of innovation and intellectual property protection. She has been involved in the analysis of and advised on Unitary Patent Package, EU Trade mark Reform and export manufacturing waiver for SPCs. She is currently analysing the economic impacts of protection for geographical indications. Malwina holds a PhD in economics from ECARES, Université libre de Bruxelles, and is a graduate of the Advanced Studies Program in International Economic Policy Research at the Kiel Institute for the World Economy. In 2007-2008 Malwina worked at Bruegel, a European think-tank, on projects related to law and economics.

  • The Enforcement of GIs

    • In this section, the speakers will present the challenges in relation to enforcement of geographical indications in the marketplace, on-line and in trade, drawing in particular on the initiatives and experience of the EUIPO’s Observatory in relation to the enforcement of geographical indications and trade marks, as well as right holders’ expectations. Please click on the presenter name below to view their content:

        
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      Mr. Massimo Antonelli is a Senior Customs Officer at the Italian Customs and Monopoly Agency, currently seconded at the EUIPO’s European Observatory on infringements of IPR as a national expert. For the Italian Customs he served as Head of Control Office and Anti-fraud Activities for the Customs of Como in 2011-2013 and then assigned to the Central Directorate for International Cooperation in Rome in 2014. Starting from 2007, he took part in several international cooperation projects as an expert, project manager and ‘resident advisor’. Within the Observatory, he works in the Law Enforcement Team as a customs expert. He was the project manager of the EUIPO’s ‘Study on national control system of GI in the Member States’.  He has graduated in Law and has a master’s in tax law.
       
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      Mr. Simone Calzi is the Head of the Legal Office at the Consorzio del Prosciutto di Parma, the Association of Parma Ham producers. Mr Calzi is responsible for Parma Ham protection all over the world, especially referring to the markets where the product is sold. The enforcement activity focuses mostly on PDO infringements, trade marks registration and oppositions. He coordinates the surveillance activity carried out by Parma Ham inspectors also together with Official Public Authorities. Mr Calzi is specialised in labelling rules required by EU and Third Countries. He also deals with Parma Ham exportation in third countries, giving assistance to companies on the rules and the certifications needed because of his position, his diplomatic activity includes relations with the Italian Government Ministries (Ministries of and Agriculture and Foreign Affairs), Embassies, European Commission, foreign Govern Authorities, and GIs Organisations (AICIG, ORIGIN).
      Simone focused his studies and attention on Geographical Indications protection after he graduated in law in 2002, cooperating in some case studies together with the Parma University of Law, thanks to which he was hired by the Consorzio del Prosciutto di Parma (January 2004). He is admitted in the Parma Lawyers Bar.
       
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      Mr. Francis Fay is Head of the Unit responsible for geographical indications, in DG AGRI. He has extensive international experience in agricultural trade and issues pertaining to Geographical Indications, having headed the unit for relations with African, Caribbean and Pacific countries. Francis has also led negotiations for the agricultural elements of the Economic Partnership Agreements. He read law at Trinity College, Dublin (Ireland).

  • PDF and MP3 Versions