For our inaugural issue, and because it’s harvest time in California where we are located, we’ll devote space to a little understood form of intellectual property protection called geographical indicators or GIs that are about to become headline news. In the U.S., GIs can be protected as certification marks or perhaps collective marks through registration at the USPTO and some trademarks may incorporate geographic terms. But other countries and the European Union have more elaborate sui generis systems for protecting and registering GIs; some treaties also protect GIs. This difference in approach and attitude is fueling tensions in several international arenas that have direct effects on producers in California and other states, and policymakers in Washington, D.C.
WIPO and Free Trade Agreements
Developments at the World Intellectual Property Organization (WIPO) in Geneva about Geographical Indicators (GIs) and new Free Trade Agreements (FTA) negotiated by the European Union (EU) with Canada, Japan and China in recent months will have direct bearing on the worldwide marketability of dairy and viticulture products, not only those originating in the U.S., but also those from other large exporting countries like Argentina and Australia. http://money.cnn.com/2017/07/04/news/economy/japan-eu-trade-deal-summit/index.html The EU FTA negotiations with the Mercosur countries of Argentina, Brazil, Paraguay and Uruguay began in early October in Buenos Aires and will continue through the end of this year. It’s likely the EU will seek to extend within the Mercosur countries the same protections it achieved for its list of GIs agreed earlier with Canada, Japan and China. Old World and New World norms in food culture are clashing, and the talks are peppered with old-fashioned trade policy maneuvers.
Your Feta or Greek Feta
The push for expanded GI protections has now reached international proportions. It affects the bottom line of US and other New World producers who argue that many Old-World designations for cheese in particular have become mere common names or generic terms for food items in North and South America and Asia and are no longer deserving of special protection. At stake is the use of such terms as Feta, Asiago, Gorgonzola or Fontina, among others, to label cheeses that move in the global marketplace. In this two-part article, we’ll look at the essential vocabulary for understanding this form of intellectual property protection and analyze the regulations and policy issues at play that may affect clients in these important industries.
A Recap of Geographical Indicators and Appellations of Origin
What exactly is a geographical indication (or indicator) in legal terms? A GI is commonly understood as a sign or designation used on products that have specific geographic origins and possess qualities or a reputation that are due to or depend on that place of production. In other words, there is a link between the product and its place of production. If the link is very strong, such that the quality or characteristic of the product is said to result exclusively or essentially from the geographic origin, then the GI is known as an Appellation of Origin (AO). Wine producers and wine aficionados will likely be familiar with AOs, but in fact, AOs can apply to a variety of other products including cheese, meat, rice, even handicrafts.
- The connection between a product and the geographic environment may be due to natural factors, like terroir, or human factors, like the traditional means of production. In either case, for AOs, the reputation of the product must rest essentially on the connection to a specific place.
- The quintessential example of an AO applied to food is Roquefort cheese. It is produced in a very specific manner in the southwestern French town of Roquefort-sur-Soulzon, from the milk of indigenous Lacaune sheep in a manner that involves traditional know how, including aging the cheese in local cliffs for two weeks. It’s hard to imagine a product more tied to a specific place with a sound rationale for preventing others from impersonating a true Roquefort.
- For GIs, a somewhat looser association with a geographic place is required. It is sufficient for a GI that a given quality or characteristic of a product originate in a specific place; not all steps of production must be conducted in that place for the GI to be acceptable. GIs are protected via a variety of legal schemes.
A Little History
The earliest mention of GIs was likely in the 1883 Paris Convention for the Protection of Intellectual Property, one of the first international treaties administered by the World Intellectual Property Organization (WIPO), but the scope of protection was not set out there. In the late 1950’s, the WIPO-administered Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration established the framework by which member countries of the Lisbon Union would extend protections to AOs registered with WIPO.
But GIs are also protected in individual national legal regimes, either directly as sui generis geographical indicators or by analogy via the trademark system, though certification marks or collective marks.
- For example, in the U.S., the Kona Growers Council owns a certification mark for Kona Coffee from Hawaii and the Idaho Potato Commission owns a certification mark IDAHO POTATOES for the famously large and nutritious potatoes grown in that state (and exported around the world). Certifications marks are registered through national trademark offices like the USPTO by certifying bodies or trade associations. In the U.S., certification marks may be used by producers who meet the production and other quality standards set forth by the certifying body; the owner of a certification mark typically will promote the goods for the benefit of all producer, but not itself sell goods using the certification mark.
- Many European AOs are registered at the USPTO as certification marks, including Roquefort, since the U.S. lacks a sui generis registration and protection scheme for GIs and AOs.
TRIPS and GIs
Today, GIs are increasingly also protected via bilateral or regional free trade agreements. Articles 22-24 of the 1994 TRIPS Agreement includes protection for GIs that identify a good as originating in the territory of a member state of the WTO where a given quality, reputation or other characteristic of a good is essentially attributable to its geographic origin. TRIPS compliant states must provide a legal means to prevent infringing uses of GIs within their borders and must bar registration of a trademark that includes a GI if a use of the GI in a mark would mislead the public as to the true place of origin of the goods. Effectively, this translates to an obligation to block the importation or distribution of goods bearing imitation GIs or goods that don’t conform to the quality standards of the GI. In practice, the TRIPS obligations have been mainly applied to protection of designations for spirits (like SCOTCH WHISKEY) and discussion of GI protections for wines and other goods has been largely deferred. Despite years of meetings and a TRIPS provision requiring agreement on the application of GIs to additional goods, no consensus has been reached through TRIPS for an international registration system for GIs. This impasse has left the door open for more opportunistic approaches to achieving protection for GIs.
In our next installment, we’ll take a look at what has been happening on the world stage in Geneva and FTAs negotiated by the EU http://trade.ec.europa.eu/doclib/docs/2006/december/tradoc_118238.pdf and explore why some New World producers are crying foul over feta.