A judge in California recently reminded Playboy Inc. that the owners of trademarks can’t ‘remove a word from the English language’ simply because the word may form part of a trademark. In this case, the claim was that the use of Google adwords ‘playboy’ and ‘playmate’ by individuals other than the plaintiff diluted the benefits of it’s trademark. (see “Slashdot”:http://yro.slashdot.org/yro/04/01/16/142221.shtml?tid=123&tid=99) bq. “Although the trademark terms and the English language words are undisputedly identical, which, presumably, leads plaintiff to believe that the use of the English words is akin to use of the trademarks, the holder of a trademark may not remove a word from the English language merely by acquiring trademark rights in it.” (minutes of the decision from “AOL Legal”:http://legal.web.aol.com/decisions/dlip/playboyorder.html) The Court of Appeals has apparently allowed Playboy Inc. to take its complaint further. However the principle to which the original decsion refers is, in my view, uncontroversial and goes to the heart of the problem with the EU’s objectives on the extension of Geographical Indications[⇒ related story].
The effect of the Geographical Indications provisions of Article 23 of the WTO Agreement on Trade Related Intellectual Property Rights (TRIPS) is to sequester terms associated with certain wines and spirits so that they may not be used by un-authorized parties whether or not this use actually misleads consumers.
So, in most countries in the world you can’t use ‘Champagne’ as a term on a bottle of sparkling wine made using the méthode champenoise unless it is authorized by the French authorities who ‘own’ the GI. You can’t even use it on a label that makes it clear that the wine is not from the French province of Champagne. “Australian Champagne”—some which is made by houses such as Chandon not a hour’s drive from my home—is a forbidden term. The European Commission is planning[⇒ related story] to steal dozens of terms that are in widespread uses as part the ordinary language of food (‘fetta’, ‘parmesan’ etc) if it can get agreement to the extension of the noxious Article 23 of TRIPS to products other than wine and spirits. In my presentation[⇒ related story] to the San Francisco WIPO Seminar on GI’s last year, I argued that this excessive protection is burdensome to consumers, un-necessary for producers and costly to maintain particularly for developing countries.
Peter Gallagher is a leading Australian consultant on trade and public policy.[bio].
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