Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 1 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 1 Protecting Geographical Indications…. Slide 1/17 Prepared by DG TRADE & DG MARKT for the European Commission Click to edit Master text styles –Second level Third level –Fourth level »Fifth level 1 1/17 Prepared by DG TRADE & DG MARKT for the European Commission TRIPs and Geographical Indications : The Way Forward Parma, June 2005 Protecting Geographical Indications….

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 2 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 2 Protecting Geographical Indications…. Slide 2/17 Prepared by DG TRADE & DG MARKT for the European Commission A round of trade liberalisation to complete the Uruguay Round ( )… WTO Negotiations & GIs …that has been turned into a round of negotiations that is to benefit, in particular, developing countries.  Agricultural support  NAMA (Non-agricultural market access)  Services  Intellectual Property (including GIs) A number of issues on the table (a global round):

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 3 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 3 Protecting Geographical Indications…. Slide 3/17 Prepared by DG TRADE & DG MARKT for the European Commission Globalization: also for GIs Geographical Indications: Why? A reality: GI protection did not exist outside Europe before 1996  Agricultural support is changing shape  Incresing competition in the EU market (e.g., wines) If GI products are to be exported, they need to be protected preventively (so investments in publicity et al. are not lost) Recuperating GIs is becoming increasingly difficult (e.g., semi- generics in the US)

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 4 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 4 Protecting Geographical Indications…. Slide 4/17 Prepared by DG TRADE & DG MARKT for the European Commission 4 Prepared by Antonio Berenguer for the European Commission Protecting Geographical Indications and TRIPs: A solution? A twofold level of protection: A right-holder of a Gi recognised in a WTO member must be able to prevent: Principle of Private Enforcement: WTO members must provide the “legal means to interested parties” to protect GIs (i.e., recognised in their country of origin) (Art and 23.1 TRIPs) but not “to protect” foreign GIs as we do in Europe (i.e., ex officio)  All GIs: Consumer deception (for all GIs)  Wines & Spirits: Use of delocalisers, translations or “style”, “like” and so on. Territorial exceptions for generics, certain prior uses and TMs

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 5 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 5 Protecting Geographical Indications…. Slide 5/17 Prepared by DG TRADE & DG MARKT for the European Commission TRIPs & EU: comparing levels of protection Unfair Competition (allows Parmezan of Australia) Limited IP (forbids “style of Manchego” or translation like “Parmezan”) Full IP (forbids evocations like imitation of shapes “tetilla”) TRIPS European Union

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 6 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 6 Protecting Geographical Indications…. Slide 6/17 Prepared by DG TRADE & DG MARKT for the European Commission GIs on wines and spirits: What does TRIPs say? (Art. 23.1)

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 7 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 7 Protecting Geographical Indications…. Slide 7/17 Prepared by DG TRADE & DG MARKT for the European Commission GIs on wines and spirits: What does TRIPs say? (Art. 23.1)

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 8 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 8 Protecting Geographical Indications…. Slide 8/17 Prepared by DG TRADE & DG MARKT for the European Commission GIs on wines and spirits: What does TRIPs say? (Art. 23.2)

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 9 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 9 Protecting Geographical Indications…. Slide 9/17 Prepared by DG TRADE & DG MARKT for the European Commission GIs on wines and spirits: What does TRIPs say? (Art. 22 – potentially)

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 10 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 10 Protecting Geographical Indications…. Slide 10/17 Prepared by DG TRADE & DG MARKT for the European Commission = Italian Ham? = Spanish Ham? WHERE DOES MY HAM COME FROM? = Italian Ham? = Spanish Ham?

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 11 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 11 Protecting Geographical Indications…. Slide 11/17 Prepared by DG TRADE & DG MARKT for the European Commission Isn’t this good enough?

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 12 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 12 Protecting Geographical Indications…. Slide 12/17 Prepared by DG TRADE & DG MARKT for the European Commission 12 Protecting Geographical Indications... So: Why is that happening? The rules are not appropriate: What the EU is doing : The extension of the wine regime A multilateral register for GIs (TRIPs) A list of (mis)used GIs (CoA)  Rules are not transparent and require heavy investments  Protection is insufficient (non-wines & spirits, trade dress, etc)  Generics and other exceptions are broadly interpreted …but more importantly: use of the existing rules is insufficient!!!

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 13 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 13 Protecting Geographical Indications…. Slide 13/17 Prepared by DG TRADE & DG MARKT for the European Commission Notification by the US: “BOURBON” Opposition by:Canada;Mexico;Morocco;New Zealand; Effects for “Bourbon”  PM- Will be presumed a GI  AM- E.g., no one will be able to claim that its generic  There will be a need to negotiate with “red” countries a bilateral agreement China. 18 Month Exam

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 14 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 14 Protecting Geographical Indications…. Slide 14/17 Prepared by DG TRADE & DG MARKT for the European Commission TRIPs & EU: comparing levels of protection Unfair Competition (allows Parmezan of Australia) Limited IP (forbids “style of Manchego” or translation like “Parmezan”) Full IP (forbids evocations like imitation of shapes “tetilla”) TRIPS European Union

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 15 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 15 Protecting Geographical Indications…. Slide 15/17 Prepared by DG TRADE & DG MARKT for the European Commission 15 Protecting Geographical Indications... The shortcomings of TRIPs: the Exceptions SOLUTION: A limited list of selected, already usurped, trade significant GIs that would be “clawed-back” Prior trademarks may prevent the protection of later in time geographical indications Good Faith uses of GIs prior to 1984 are permitted for wines and spirits Geographical indications that have become generic do not need to be protected

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 16 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 16 Protecting Geographical Indications…. Slide 16/17 Prepared by DG TRADE & DG MARKT for the European Commission 16 Protecting Geographical Indications... Why are negotiations not advancing? Many countries do not want anything on GIs: USA, Australia, Canada, Chile, Argentina, etc  Some tactical reasons: wish to extract concessions in Ag. Neg.  Some economic problems: past-uses of EU GIs What are they offering?  A database (web-base) on GIs without any legal effects for wines and spirits and…  …nothing else (discussions but no negotiations on “extension” and denial of negotiations on the list)

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 17 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 17 Protecting Geographical Indications…. Slide 17/17 Prepared by DG TRADE & DG MARKT for the European Commission 17 Protecting Geographical Indications... The Way Forward: Coherence (I) Role of right-holders…  …ex officio? China situation?  …awareness raising? How about the “sherry” cases? A mutually supportive relationship between trademarks and GIs  …part of a coherent approach to IPR  …based on economic principles and not on the blind applications of legal principles (reputation, domain names, etc)

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 18 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 18 Protecting Geographical Indications…. Slide 18/17 Prepared by DG TRADE & DG MARKT for the European Commission 18 Protecting Geographical Indications... The Way Forward: Coherence (II) Product specific negotiations: is it the right approach?  …message to developing world? Truly effective?  …tactical games? Is someone thinking product specific? GIs: an independent property right?  …part of a coherent approach to IPR, particularly vis-à-vis third countries?  …an opportunity for everyone -- developed and developing countries alike?

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 19 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 19 Protecting Geographical Indications…. Slide 19/17 Prepared by DG TRADE & DG MARKT for the European Commission 19 Protecting Geographical Indications... The Way Forward: Summary of Ideas A single, product-neutral regime acceptable to all Embodying the right balance between trademarks and GIs With a degree of autonomy to be determined and largely influenced by the outcome of other negotiations With a varying role of right-holders and authorities depending on the calibre of the challenge and in a manner consistent with that given to other IPRs

Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 20 Click to edit Master title style Click to edit Master text styles Second level Third level Fourth level Fifth level 20 Protecting Geographical Indications…. Slide 20/17 Prepared by DG TRADE & DG MARKT for the European Commission THANKS! THE END