Protecting Geographical Indications and Designations of Origin

By Karina Piñeiro, Berkemeyer Attorneys & Counselors

Enactment of Law No. 4.923/2013 on geographical indications and designations of origin put an end to the use of the GIs for the purpose of identifying a particular type of product, unless the product and/or its constituent materials and/or its fabrication method originate from a particular area and/or meet certain standards.

Paraguay has recently enacted on June 20, 2013, a law dealing with the geographical indications and the designations of origin which were not provided for under the Trademark Law No. 1294/98, currently in force in Paraguay.

The law defines the concepts of geographical indications and designation of origin, as follows:

• “Geographical indication: The name of a country, region, department, district or locality, or the name of a certain place, that is used to identify a product as native to one of them, when given quality, reputation or other characteristic of the product is essentially attributable to its geographical origin.”

• “Designation of origin: The name of a country, region, department, district or locality, or the name of a certain place, that is used to identify a product as native to one of them, and when the quality or characteristics of the product are essentially or exclusively attributable to the geographical environment in which it is produced, including natural and human factors.”

Traditional designations, geographical or not, that identify an agriculture product or a food product that complies with above mentioned requirements are also considered as geographical indications or designations of origin by this law.

The law identifies the parties that are entitled to request acknowledgement and registration of the geographical indications and designations of origin in those who show legitimate interest, such as natural or legal persons who are directly engaged in the extraction, production or development of the product or products that are seek to be protected, as well as the associations that gathers them.

Additionally, it sets forth that for every geographical indication or designation of origin there will be a single regulatory committee which shall be exclusively formed by those who are engaged in the extraction, production, reconditioning or processing of products protected by the geographical indication or designation of origin, that develop their business activities within that relevant area and whose products completely are well adapted to the registered specification. The regulatory committee’s sole purpose is of administrating the geographical indications or designations of origin.

The enforcement authority, through the Registry that is created for this purpose, will grant the registration of the geographical indications and designations of origin. The Enforcement Authority of this law is the Intellectual Property Office of the Ministry of Industry and Commerce. The Enforcement Authority will have to advise, monitor, control, register, defend and represent the system of geographical indications and designations of origin, in coordination with the Ministry of Foreign Affair before international organisms.

The regulatory committee will submit the application before the enforcement authority, (through the Registry that is created for this purpose), within thirty (30) working days as from the date of the recognition of its legal capacity. If the legal requirements are duly fulfilled, the contents of the application shall be published for one (1) day in the Official Gazette and in a newspaper of wide national circulation, at the expense of the petitioner.

This law allows every natural or legal person who justifies a legitimate interest to file an opposition against a geographical indication and/or a designation of origin application within thirty (30) working days as from the publication of the application.

Once the registration of the geographical indication and/or designation of origin is granted, the decision will be published in the Official Gazette for one (1) day and it will be reported to the Intellectually Property Office and to all the other required national and/or international organizations The registration of a geographical indication and/or a designation of origin is valid for ten (10) years and it could be renewed for terms of equal duration.

The registration of a geographical indication or a designation of origin confers to owners and authorized users the following rights: “a) Right to
use the geographical indication or designation of origin in connection with the designated products, to prevent its use by third parties; b) Right to use emblems, badges, acronyms, logos, labels and others that distinguish the geographical indication or designation of origin; and c) Quality guarantee specified in the geographical indication or designation of origin.”

The registration of a geographical indication or designation of origin abroad shall be processed through the Ministry of Foreign Affairs, in accordance with international treaties in the field.

Foreign geographical indications or designations of origin registrations that are not protected in their country of origin or that have fallen into disuse in the country will not be object of registration in Paraguay, in accordance with this law.

Finally, it is worth mentioning that geographical indications or designation of origins that are duly registered, applied for or recognized, nationally or internationally, shall not be registered as a mark to distinguish goods.

If it was intended to register as a geographical indication or denomination of origin a mark already registered it will be necessary to exitinguish the right to the mark, either by resignation of the incumbent, termination of term or another cause of expiration.

The owners of geographical indications or designations of origin shall be able to enter against any person the same judicial actions foreseen in articles 84 to 88 of the Trademark Law No. 1294/98, and concordant.