“Legal frameworks for the protection of Geographic Indications”

Carmen Bullon FAO Development Law Service

Summary

• Introduction• International legal framework• Regional Examples: EU. Possibilities for third

countries• National legal frameworks and GIs

Introduction

Geographical Indications

• A geographical indication (GI) is a sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that origin. (TRIPS Agreement)

• GIs are protected in accordance with international treaties and national laws under a wide range of concepts, including laws specifically for the protection of GIs or AOs, trademark laws in the form of collective marks or certification marks, laws against unfair competition, consumer protection laws, or specific laws or decrees that recognize individual GIs.

5

Geneva watches

made in USA

Australian

Chianti

Bukhara carpets

made in AustraliaParma ham

from Canada

Parmigiano-Reggiano

from New Zealand

Murano glass

made in Chile

Why protect with legislation?

• To prevent unfair use by external competitors; • To standardize the quality and thus preventing

unfair use by internal competitors for products without the expected quality; and

• To benefit from the reputation of the quality sign on certain markets or for certain traders.

Legal issues under discussion

• The differential level of protection and the balance of rights and obligations of WTO members

• The principle of territoriality: which country would determine the criteria for GI protection?

• The relationship between extended GI protection and existing trademarks

GIs in international law

Protection of GIs in international law• Paris Convention for the Protection of Industrial

Property, 1883 WIPO (as amended in 1967)• Madrid Agreement for the Repression of False or

Deceptive Indications of Source on Goods, 1891• Lisbon Agreement for the Protection of Appellations of

Origin and their International Registration, 1958• WTO Agreement on Trade-Related Aspects of

Intellectual Property Rights (TRIPS), 1994 Specific for the dairy sector• Stresa Convention for the Use of Appellations of Origin and Denominations

of Cheeses, 1951 (supplanted by EC rules on GI)

Madrid Agreement and Protocol• Concerning the International Registration of Marks (1891, last revision 1979)

Protocol 1989• Collective Marks, Certification Marks or Guarantee Marks

– Rule 9(4)(a)(x) of Common Regulations

• An application for international registration may be filed only by a natural person or legal entity having a connection, with a Contracting Party to the Agreement or the Protocol. A mark may be the subject of an international application only if it has already been registered with the Trademark Office of that Contracting Party

• The International Bureau records the mark in the International Register, publishes the international registration in the WIPO Gazette of International Marks, and notifies it to each designated Contracting Party.

• The effects of an international registration in each Contracting Party are, as from the date of the international registration, the same as if the mark had been deposited directly with the Office of that Contracting Party.

• 56 parties (Agreement) 81 (Protocol) A total of 84 States to one/other (2009)

• Goods bearing a false or deceptive indication by which one of the countries to which the Agreement applies, or a place situated therein, is directly or indirectly indicated as being the country or place of origin must be seized on importation

• The public prosecutor or any other competent authority may demand seizure either at the request of the injured party or ex officio

• Advertising and communications: obligation to prohibit the use, in connection with the sale or display or offering for sale of any goods

Lisbon AgreementFor the Protection of Appellations of Origin and their International Registration

Appellations of Origin “geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors” (Article 2).

• Prior recognition in country of origin. An AO must be recognized and protected as such in its country of origin prior to international registration

• Country of origin is the country whose name, or the country in which is situated the region or locality whose name, constitutes the appellation of origin which has given the product its reputation

• States that have not refused a notified AO within 12 months from receipt of the notification

• must ensure protection of the appellation against usurpation or imitation,

• may not regard the appellation as generic as long as it remains protected as an appellation of origin in its country of origin

Every State member of the Union which has adhered to at least the administrative and final clauses of the Stockholm Act is a member of the Assembly. The Agreement is open to States party to the Paris Convention for the Protection of Industrial Property (1883)

• 26 Member States

GIs and the multilateral trading systemThe Agreement on Trade-Related aspects of Intellectual Property Rights (TRIPS) was concluded in 1994 (as an Annex to the Agreement establishing the World Trade Organization (WTO))

It came into force in 1995, and in 2000 for developing countries generally (with exceptions for certain provisions and for LDCs)Membership: 153 Governments

Lay down a system based on minimum level of protection which

Includes a definition of GI

Introduces: basic principles on IPR; minimum standards for each

category of IPR; enforcement; dispute settlement; transitional

arrangements; transition law; administrative provisions

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TRIPS Agreement: general provisions and basic principleso Freedom to determine the appropriate method of implementing

the Agreement (Art. 1.1)

Section 3 of Part II• National and MFN treatment (Art. 3-5)• Procedures of acquisition & maintenance of rights if registration

is foreseen (Art. 62)

Enforcement (Part III)• Dispute settlement (Art. 64)

Art. 22.1

“Geographical indications are...indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”

Wide definitionReflected in the great majority of WTO Members’ laws

TRIPS and GIs: definition of GI

The two levels of protection for GIs in the TRIPS Agreement

Obligation to provide the legal means to prevent:

• the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good

• any use that constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention

Basic level of protection: article 22.3 and 22.4

Obligation to refuse or invalidate the registration of a trademark that contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member may mislead the public

Homonymous GIs (Art. 22.4, 23.3)Art. 22.4 (for all GIs)

– protection against use which, though literally true, falsely represents to the public that the goods originated in another country

Art. 23.3 (for GIs for wines): subject to Article 22.4, coexistence subject to:– practical conditions under which the indication will be differentiated– taking into account the need to ensure equitable treatment of the producers

concerned and that consumers are not misled

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TRIPS and GIs [Outside TRIPS: national laws, bilateral, regional

and other multilateral agreements]

________________________TRIPS: Article 23 - higher protection

for wines and spirits (minimum, mandatory)

(+ Art. 24.2-9)___________________

TRIPS: Article 22(minimum, mandatory)

- Misleading/confusion test - Unfair competition

Additional protection for wines and spirits (Art. 23)

• Objective (stronger) protection for GIs for wines and spirits (Article 23):

• Obligation to provide legal means to prevent use of a GI identifying wines or spirits used for wines or spirits not originating in the place indicated by the GI, even where the true origin of the goods is indicated (e.g. a disclaimer or delocalizer) or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation” or the like

• The registration of a trademark for wines or spirits that contains or consists of a GI identifying such goods must be refused or invalidated with respect to goods not having the indicated origin

In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system.

Register: Article 23.4

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Current imbalance under the TRIPS Agreement

Wines and Spirits(TRIPS 22 + 23)

Other products(TRIPS 22)

Possible usurpation

Correct protection

Bukhara Carpets

made in ChileArgentinian

Roquefort cheese

American Basmati Rice

Champagne from Chile

French Napa Valley wine

Article 24 exceptions

The protection under Article 23 is to be read in conjunction with the exceptions under Article 24.

• No obligation to protect GIs that are not or cease to be protected in their country of origin, or which have fallen into disuse in that country

• Obligation to provide legal means to prevent use of a GI identifying wines or spirits used for wines or spirits not originating in the place indicated by the GI, even where the true origin of the goods is indicated (e.g. a disclaimer or delocalizer)

• No obligation to prevent continued and similar use of a GI of another Member for wines or spirits in connection with goods or services by its nationals or domiciliaries that have used that geographical indication in a continuous manner, at least 10 years preceding 1994

”More than other major types of intellectual property, geographical indications have features that respond to norms for use and management of bioresources and traditional knowledge that are characteristic of the culture of many indigenous and local economies.”

UNCTAD Biotrade Initiative

© David R. Downes and Sarah A. Laird, Innovative Mechanisms for Sharing Benefits of Biodiversity and Related Knowledge: Case studies on Geographical Indications and Trademarks, paper prepared for UNCTAD Biotrade Initiative, 1999

Interests of developing countries

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Communication IP/C/W/353 (24 June 2002): The roadmap for extension

• The protection of Article 23 of the TRIPS Agreement should apply to geographical indications for all products

• The multilateral register to be established should be open for geographical indications for all products

• The exceptions contained in Article 24 of the TRIPS Agreement should apply mutatis mutandis to all products

Panel Report of 15 March 2005, adopted by the WTO Dispute Settlement Body on 20 April 2005(WT/DS174/R)

• that the GI will be refused where there is a relatively high likelihood of confusion (e.g. identity with a prior mark in one country)

• that a GI can only be used as registered (no use in translation, no use in deviating versions)

A regional model: EU legal system for the protection of GIs

EU quality schemes - guaranteeing quality

• Protected Designation of Origin (PDO) for – PDO - covers agricultural products and foodstuffs which are produced, processed and

prepared in a given geographical area using recognized know-how.– PGI – covers agricultural products and foodstuffs closely linked to the geographical area.

At least one of the stages of production, processing or preparation takes place in the area.

• Traditional Speciality Guaranteed (TSG) – TSG - highlights traditional character, either in the

composition or means of production

• Others: Organic farming

Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. OJ L 93, 31.3.2006•Implementing regulation (1898/2006)•Amending regulation (417/2008) adding cotton and salt to the list of eligible products •Amending regulation (628/2008)

Protected Designation of Origin Protected Designation of Origin (PDO)(PDO)

Protected Geographical Indication Protected Geographical Indication (PGI)(PGI)

Product must beProduct must beproduced andprocessed andpreparedin geographical area

Mozzarella di Bufala Campana

Product must beProduct must beproduced orprocessed orpreparedin geographical area

Turrón de Alicante

• Stronger link with the area

Reg 510/2006: General principles

• Names that have become generic may not be registered i.e. those that, although linked to the place or region where the product was initially produced or sold, denote the common name of a product in the EU (such as Dijon mustard)

• Names that conflict with the name of a plant variety or an animal breed and as a result are likely to mislead the consumer as to the true origin of the product may not be registered

• A name wholly or partially homonymous with that of a name already registered under this Regulation must only be registered with due regard for local and traditional usage and the actual risk of confusion.

• A PDO or PGI may not be registered where the reputation and the length of time it has been used are liable to mislead the consumer as to the true identity of the product.

Product specification In order to obtain a PDO or PGI, agricultural products or foodstuffs must comply with the product

specification, which must include the following aspects:– the name of the PDO or PGI; – the description of the product, with an indication of its main physical, chemical,

microbiological and organoleptic properties; – definition of the geographical area; – information proving that the product originates from that area; – information justifying the link between the product and the geographical area; – description of the production method and, if appropriate, the authentic and unvarying

local methods as well as information concerning packaging that takes place in the defined geographical area in order to safeguard quality, ensure the origin or ensure control;

– the name and address of authorities or bodies that verify compliance with the provisions contained in the product specification;

– any specific labeling rule for the product in question; – any requirements laid down by Community or national provisions.

Application for registration• Art. 5.1. Only a group shall be entitled to apply for registration.

– ‘group’ means any association, irrespective of its legal form or composition, of producers or processors working with the same agricultural product or foodstuff. Other interested parties may participate in the group. A natural or legal person may be treated as a group in accordance with the detailed rules referred to in Article 16(c)

• If the application concerns a cross-border area, it may be made jointly by several groups• The application for registration must include:

– the name and address of the applicant group; – the product specification; – a single document setting out the main aspects of the product specification and a

description of the link between the product and its geographical area of origin.

• Applications are made to the Member State on whose territory the geographical area is situated. The MS forwards the application to the Commission

• Where an application for registration concerns a geographical area in a third country, it has to be sent to the Commission either directly or through the authorities of that country

Protection Registered names are protected against:• any misuse, imitation or evocation, even if the true origin of the product is

indicated or if the protected name is translated or accompanied by an expression such as "style", "type", "method", "as produced in", "imitation" or similar;

• any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging or advertising liable to convey a false impression as to its origin;

• any other practice liable to mislead the consumer as to the true origin of the product;

• commercial use of a registered name in respect of products not covered by the registration if they are comparable to the products registered under that name or if this use exploits the reputation of the protected name.

Where a PDO or a PGI is registered, applications to register trade marks relating to the same class of product are refused if they are submitted after the date of submission of the registration application to the Commission.

In certain cases trade marks may co-exist with a PDO or PGI

• Verification GIs from third countries

– by one or more public authorities designated by the third country and/or

– one or more product certification bodies.

Council Regulation (EC) No 509/2006 of 20 March 2006 on agricultural products and foodstuffs as traditional specialities guaranteed OJ L 93, 31.3.2006

• Implementing regulation (1216/2007)• Inspection bodies in EU countries (OJ C324/3

21.12.2005)

TSG - highlights traditional character, either in the composition or means of production

• A product may only be registered if:– it is produced using traditional raw materials; – it is characterized by a traditional composition or by a method of

production/processing that corresponds to a traditional production/processing method.

• In order to be registered, the name must:– be specific in itself; – indicate the specific character of the agricultural product or foodstuff.

• Names that refer only to claims of a general nature, that are misleading for consumers cannot be registered.

• These rules apply without prejudice to Community rules governing intellectual property or concerning geographical indications and trademarks.

Differential requirements of the EU Labels

Traditional specialties guaranteed (TSGs) (Regulation 509/2006) have to carry a specific charactera specific character:

Production usingraw materials

and /ortraditional composition of a product

and/ortraditional mode of production and/or processing

Court Cases(European Court of Justice, Court of First Instance)

FetaFeta C-289/96 et. al. (1999)

C-465/02 & 466/02 et. al.

GorgonzolaGorgonzola C-87/97 (1999)

EmmentalEmmental C-448/98 (2000)

ParmesanParmesan T-197/96

C-66/00 (2002)

C-132/05

Grana PadanoGrana Padano C-469/00 (2003)

GranaGrana T-291/03

Convention/Reg.

Designation

Codexstandard EU

Gorgonzola -- PDO

Asiago -- PDO

Fiore Sardo -- PDO

Fontina -- PDO

Camembert/Brie C-33 / C-34 (1973) --

Emmental C-9 (1967) --

Gruyère C-10 (1967)(revocation 1997) ( ? )

Danablu C-2 (1966)(revocation 1997) PGI (21.6.96)

Danbo C-3 (1966) --

Edam/Gouda C-4 / C-5 (1966) --

National legal systems and GIs

Legal protection for GIs• General national laws on business practices

Laws which, while not specifically providing for the protection of GIs, prohibit business practices which can involve the misuse of GIs (consumers’ protection, unfair competition)

• Laws protecting IPR, trade marks laws– Protect GI against registration of trademarks containing misleading references to GIs and – Protect specific categories of GIs or those that have been previously recognized as protected GIs, for which a higher

level of protection may be available.Offer the possibility of registering a GI as a collective, certification or guarantee TM against unauthorized use by third

parties.

• Laws on GIs– Legal definition and system of registration/defence for GI (in accordance with International law)– Protection for signs and characteristics associated with the product

Legal frameworks should, in any case, preserve the collective nature of GIs IPRs

• Other legal instruments relevant for GIs producers– Legislation on groups, cooperatives, association– Rules on standard setting and certification– Rules on controls, inspections– Rules on labeling

• Legal issues faced by producers who want to register their GIs in other countries:– application: individual person/group– competent authorities and capacity to apply for a GI– prior registered trade marks– double names – scope of the protection (translation, expressions such as

“like to”, “similar to” ...– trade marks laws which reject names that are: (i) generic;

(ii) indications of source; (iii) a description of the product – conflicts between trade laws and GIs law

Geographical indication Certification trademark Collective trademark

Right holder

Private right (definition, implementation, enforcement)

State recognized

Private right

The property and administration belong to a firm or an association which can not directly use the TM and is responsible of controlling the use of the TM

Private right

The property and administration belong to an association of manufacturers or producers

Design

Designed to protect real identification of the origin and its link with quality and reputation

Follow a legal general definition

Designed to certify quality, characteristics, geographical origin and/or a method of production, etc., according to the requirements of a self-established regulation

Designed to indicate the membership to an association or a group of firms having in common some quality, characteristics, origin, materials, etc., according to a self-established regulation

Duration of the protection

Protected in accordance with regulations on registration

Generally no need to renew the registration

The registration is often free for applicants

Have to be renewed after a certain period of time.

Fees have to be paid for the application of a TM and for each renewal of its registration

General differences between GIs and Certification/Collective TMs

Geographical indication Certification/collective trademark

Basis of the protection

Protection can be based on ex officio national authorities protection (if provided by the legislation) and private actions

Protection based on private actions

Scope of the protection

Exclusivity on use of the denomination (at least for identical/similar products) and often on associated characteristics (shape, packaging, etc.)

Generally a combined TM (verbal and graphic elements)

Exclusivity on a geographical denomination may be granted only as an exception to the general rules (public domain, distinctiveness, descriptive nature)

Use

Close link between the GI and one specific product; in some cases, different types of the same product are allowed to be labelled with the GI

May cover several kinds of products or be limited to one specific product, depending on the TM regulation and its marketing strategy

Open to any producer who can meet the requirements

Membership of the association may be restricted by the decision of its members

Marketing issues

The pre-existing reputation of the denomination and/or the GI registration as a quality sign per se lower the costs of promotion

High investments in advertising are necessary to establish the notoriety of the TM on markets

Conclusions

• Importance to adopt sound and complete national legislation, and to know the requirements and means of verification included in international-regional-national legislation

• Importance to get GIs registered at the international and the national level

• Importance to establish groups/legal persons• Relevance of certification schemes/certification bodies

and inspection systems recognized by international-regional bodies

= EnglishCheese?

= Swiss Cheese?

= Swiss Cheese?

= Americancheese!

Thank you!Carmen Bullon FAO Development Law Service