“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 Australia Parma 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 Agreement For 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 system The 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 n Includes a definition of GI n Introduces: basic principles on IPR; minimum standards for each category of IPR; enforcement; dispute settlement; transitional arrangements; transition law; administrative provisions

16 TRIPS Agreement: general provisions and basic principles o 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 “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 definition Reflected 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 (for all GIs) – protection against use which, though literally true, falsely represents to the public that the goods originated in another country Art (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

20 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 ) ___________________ 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

23 Current imbalance under the TRIPS Agreement Wines and Spirits (TRIPS ) Other products (TRIPS 22) Possible usurpation Correct protection Bukhara Carpets made in Chile Argentinian 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

26 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, 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 (PDO) Protected Geographical Indication (PGI) Product must be Product must be produced and processed and prepared in geographical area Mozzarella di Bufala Campana Product must be Product must be produced or processed or prepared in 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 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, Implementing regulation (1216/2007) Inspection bodies in EU countries (OJ C324/ ) 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 a specific character Traditional specialties guaranteed (TSGs) (Regulation 509/2006) have to carry a specific character: Production using raw materials and /or traditional composition of a product and/or traditional mode of production and/or processing

Court Cases (European Court of Justice, Court of First Instance)  Feta  FetaC-289/96 et. al. (1999) C-465/02 & 466/02 et. al.  Gorgonzola  GorgonzolaC-87/97 (1999)  Emmental  EmmentalC-448/98 (2000)  Parmesan  ParmesanT-197/96 C-66/00 (2002) C-132/05  Grana Padano  Grana PadanoC-469/00 (2003)  Grana  GranaT-291/03

Convention/ Reg. Designation CodexstandardEU 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 ( ) 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 indicationCertification trademarkCollective 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 indicationCertification/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

= English Cheese? = Swiss Cheese? = Swiss Cheese? = American cheese!

Thank you! Carmen Bullon FAO Development Law Service