Protection of Geographical Indications and Their Interrelationship with Trademarks

1. Protection of Geographical Indications and Their Interrelationship with Trademarks Dr. Gail. E. Evans Centre for Commercial Law Studies Lincoln’s Inn Fields Queen Mary University of London <gaileevans.com>

2. Structure of Presentation • Global Regulation of GIs under TRIPS; • Amended EC Regulation 510/06; • US geographical certification trademarks; • The WTO GI dispute US v. EC - Protection Of Trademarks And Geographical Indications; • Trademarks: Priority & Exclusivity.

3. TRIPS: Definition of GI • "Geographical Indications," are defined, at Article 22(1) of the TRIPS Agreement, as: • "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 geographic origin.” • GIs serve “source identification” and “communication” functions in a similar to trademarks except that GIs serve as source identifiers for the produce of their territory instead of a particular enterprise.

4. TRIPS: Global Regulation of GIs • TRIPS Articles 22-24 set out the minimum standards of protection that WTO Members must provide for GIs. • WTO Members must enable interested parties to prevent: • the use of a GI in a manner which misleads the public as to the geographical origin of the good and; • any use which constitutes an act of unfair competition. • Outside the category of wines and spirits, TRIPS does is not prescriptive as to the manner in which Members are to protect GIs. • TRIPS provides enhanced protection for GIs that identify wines and spirits. Specifically, Members are required to prevent use of wine and spirit GIs even if the use does not imply that the wine or spirit originates in a place other than the genuine place of origin (for example, COGNAC from New Jersey).

5. TRIPS: GI Exceptions • Article 24 sets out a series of exceptions to GI protection. • Article 24(6) makes it clear that WTO Members need not extend protection to a GI where that GI is the generic name for the good in that particular Member State (e.g. chablis in US). • Article 24(5), applies where a trademark is already in existence. Where a trademark has been applied for, registered or acquired through actual use in good faith, either: • before the date of application of the TRIPS Agreement for that Member or; • before the GI was protected in its country of origin… the eligibility, validity and right to use the earlier trademark cannot be prejudiced. • This exception appears to provide a solution in cases where there may be conflicting rights between GIs and trademarks.

6. USPTO: Geographical Certification Trademarks • In the US GIs are regulated as a subset of trademarks in so far as like trademarks, geographical indications serve to: • identify the source of the product; • guarantee its quality. • A certification mark being any word, name, symbol, or device used by a party or parties other than the owner of the mark to certify some aspect of the third parties’ goods. • A certification mark may be registered in the US under §44 of the Trademark (Lanham) Act, on the basis of a foreign registration. 

7. GIs and TMs: Key differences • GIs • Links origin of product with land/region • Collective control to existing landholders • Production rooted in a region • Protection lasts as long as conditions for protection upheld • Lower registration costs • No licensing • TMs • MAY certify product origin (certification mark) • Individual control • Can be produced anywhere • Protection must be renewed periodically • High cost of protection: +/- 1,500 to 2,000 € per class and per TM • Licensing

8. Comparative Scope of Protection: certification mark / GI systems TM • Scope of protection: • Protection of a name in combination with a logo for any organisation • Rights if used • No guarantee against: • “genericity” • name used in translation and used with expressions like “style”, “type”, etc. • Enforcement: private GI • Scope of protection: • Absolute protection of the name for all legitimate producers • Rights even if not used • Guarantee against: • “genericity” • Name used in translation and used with expressions like “style”, “type”, etc. • Enforcement: mix of public & private actions.

9. Protection via the TM system is not absolute Existence of similar marks but distinctive marks • Idaho Potatoes • Several CMs: « Idaho Preferred », « Idaho Potatoes Grown in Idaho », « Idaho », « Grown in Idaho » • Several TMs: « Idaho’s Best », « Idaho Naturally » • Napa Valley: varieties of TMs include:

10. EC GI Regulation 510/06 • Council Regulation (EC) No 510/06 of 20 March 2006 on the Protection Of Geographical Indications And Designations Of Origin For Agricultural Products And Foodstuffs • Regulation 510/06 concerns: • Agricultural products intended for human consumption • Foodstuffs (Beers, beverages from plant extracts, pasta…) • Non-food agricultural products (essential oils, cork, flowers and ornamental plants, wool…) • May not be registered… • Generic names • Trademarks • WTO case brought by US & Australia concerning the former Regulation….

11. EC GI Regulation: GI Definition • Article 2(2) (b) defines a protected geographic indication to mean: • the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff: • originating in that region, specific place or country, and • which possesses a specific quality, reputation or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which take place in the defined geographical area.

12. The Specification • Article 4 provides: To be eligible to use a protected GI ... an agricultural product or foodstuff must comply with a specification as follows: • the name of the agricultural product or foodstuffs, including the designation of origin ... • a description of the agricultural product or foodstuff including the raw materials, if appropriate, and principal physical, chemical, microbiological and/or organoleptic characteristics of the product or the foodstuff; • the definition of the geographical area ... • evidence that the agricultural product or the foodstuff originates in the geographical area, within the meaning of Article 2(2)(a) ... • a description of the method of obtaining the agricultural product or foodstuff and, if appropriate, the authentic and unvarying local methods; • the details bearing out the link with the geographical environment or the geographical origin within the meaning of Article 2(2)(a) ... • details of the inspection structures provided for in Article 10; • the specific labelling details relating to the indication PDO ... or the equivalent traditional national indications; • any requirements laid down by Community and/or national provisions.

13. Exclusive Rights • Article 13.1 provides that registered GIs shall be protected against: • any direct or indirect commercial use of a name registered in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or in so far as using the name exploits the reputation of the protected name; • 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, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin.

14. European Union TRIPS TRIPS – EU: a comparison Total Protection(any abuse is forbidden, even evocations or any other abusive use) Strong Protection (“type Manchego” , or translations such as “Parmesan”,forbidden) Weak Protection (allows “Parmesan from Australia”)

16. European Cases indicate impact of GI rights • The Parma Ham Case: Case C-108/01 concerned the Italian Legge No 26, tutela della denominazione di origine 'Prosciutto di Parma' (Law No 26 on protection of the designation of origin 'Prosciutto di Parma') of 13 February 1990, which reserved the designation 'Prosciutto di Parma' ('Parma ham') exclusively to ham marked with a distinguishing mark allowing it to be identified at any time, obtained from fresh legs of pigs raised and slaughtered in mainland Italy, produced in accordance with provisions laid down in the law. • ECJ ruling: The Court ruled that Regulation No 2081/92 must be interpreted as not precluding the use of a PDO from being subject to the condition that operations such as the slicing and packaging of the product take place in the region of production, where such a condition was laid down in the specification.

17. Negative interaction between TMs & GIs • Gerolsteiner Brunnen GmbH & Co, 2004: concerned the sign KERRY Spring which refers to the geographical origin of the water used in the manufacture of its products. • The ECJ has found that you may be limited in the exercise of your trade mark rights by the use of a GI, as long as the latter is used in accordance with honest business practices: Article 6(1)(b) HD. • Coexistence: In contrast to the law in the US and Australia, exclusivity of the prior mark is not the governing rule in the EU GI context. As a general rule, where a prior trademark exists, the trademark and GI are permitted to coexist.

18. Background to the WTO GI Dispute • Empirical evidence indicates the return from GIs. (Examples include PROSCIUTTO DI PARMA ham or FLORIDA ORANGES) GIs can be valuable marketing tools in the global economy and a significant business asset. According to the EU’s own figures, the nearly 600 French GIs generate almost 20 billion euros. • European Union (EU) regulation 2081/92 provoked a transatlantic regulatory battle. • US agriculture and trademark interests, including the Grocery Manufacturers Association, the International Trademark Association (INTA) and the Wine Institute, described the enormous economic costs and losses they would incur if terms such as “feta” and “parmesan” for cheese, or “burgundy” and “chablis” for wine became prohibited terms in the United States.

19. Former procedure for non-EU applicants held discriminatory • The USA and Australia complained to the WTO in 2003 that the EU system for the protection of GIs did not comply with TRIPS.  • They argued that it was discriminatory in that it did not permit the registration of GIs by producers from non-EU member states unless the country where that producer was based afforded equivalent levels of protection to GIs as the EU itself does (the “reciprocity” requirement). • The USA, which relies on its trade mark system for the registration of GIs was therefore unable to register its own GIs in the EU. 

20. WTO/GI Cases: WT/DS174 and WT/DS290 • The primary claims were as follows: • Violation of the national treatment principle (Article 3(1) of TRIPS) in that a party not resident or established in the EU, including such a party having trademark rights in a Member State, has no right to object to a proposed registration of a GI. • Violation of "grandfather clause" for prior applied-for or used trademarks. Indeed, whereas Article 14(2) of the Regulation states that only registered trademarks currently in use can be grandfathered, TRIPS Article 24(5) states that all trademarks applied for or registered in good faith or common law trademarks used in good faith should be grandfathered. • Lack of adequate procedures to protect trademark owners (Article 16 of TRIPS).

21. The GI Regulation at issue: 2081/92 • Original EC Regulation 2081/92 set out rules on the protection of designations of origin and GIs for agricultural products and foodstuffs. • It limited registration of GIs to goods which originated in the EU. It did not allow for the registration of non-EC GIs unless that indication was from a country that offered protection that was equivalent to that of the EC.

22. WTO/GI Cases: WT/DS174 and WT/DS290 • The EU register of GI’s creates a system of coexistence between GIs and prior-registered trademarks, support for which the EU bases on its interpretation of Article 24(5) of the TRIPS Agreement which provides that measures to protect GIs shall not prejudice eligibility or validity of a prior trademark, which the EU interprets as permitting the coexistence of both a GI and trademark. • The complainants claim that contrary to the exclusive rights granted to trademark owners in TRIPS, coexistence jeopardises the exclusivity of a prior registered trademark and defeats the trademark owner’s expectations. Article 16(1). • A GI may not be registered where the trademark’s reputation, renown and the length of its use mean that registration of the GI is liable to mislead the consumer as to the true identity of the product.

23. Prejudice to TM’s exclusivity • In sum: • Regulation 2081/92 diminishes the value of foreign trademarks by not allowing trademark owners to assert their rights to protect their trademarks against confusing use: contrary to Article 16 of the TRIPS Agreement. • The GI Regulation grants protection for GIs at the expense of trademark rights which the EU is specifically obliged to guarantee under the TRIPS Agreement.

24. Conclusions: TRIPS Art. 17 Exception • For the Respondent: While the Regulation is prima facie NOT consistent with Article 16.1 of the TRIPS Agreement with respect to the coexistence of GIs with prior trademarks………… this is justified by TRIPS Article 17.

25. WTO EC – Geographical Indications • Findings: While upholding the EU system in general, the WTO Panel found the Regulation NOT consistent with National Treatment in TRIPS Article 3.1 with respect to: • the equivalence and reciprocity conditions, as applicable to the availability of protection for GIs; • the application procedures, insofar as they require examination and transmission of applications by governments; • the objection procedures, insofar as they require verification and transmission of objections by foreign governments; and • the requirements of government participation in the inspection structures under Article 10, and the provision of the declaration by governments under Article 12a(2)(b); It recommended that the EC amend the Regulation with respect to the equivalence and reciprocity conditions so as for those conditions apply to the procedures for registration of GIs located in other WTO Members. 

26. Amended Reg. 510/2006 • Recitals • (13): The protection afforded by this Regulation, subject to registration, should be open to the geographical indications of third countries where these are protected in their country of origin. • (14) The registration procedure should enable any natural or legal person having a legitimate interest in a Member State or a third country to exercise their rights by notifying their objections. See Article 7: Objection/decision on registration and Article 12, Cancellation.

27. Amendments: objections • Art. 7 • (c): an objector may show that the registration of the name proposed would jeopardise the existence of an entirely or partly identical name or of a trademark or the existence of products which have been legally on the market for at least five years preceding the date of the publication provided for in Article 6(2). • d) give details from which it can be concluded that the name for which registration is requested is generic within the meaning of Article 3(1).

28. Amendments: inspection procedures • Article 11.2, Verification of compliance with specifications. • In respect of the geographical indications and designations of origin relating to a geographical area in a third country, verification of compliance with the specifications, before placing the product on the market, shall be ensured by: • one or more public authorities designated by the third country and/or • one or more product certification bodies.

29. Amendments: interrelationship of trademarks and GIs Art. 14.2. A trademark ….which has been applied for, registered, or established by use …. in good faith within the territory of the Community, before either the date of protection of the designation of origin or geographical indication in the country of origin or before 1 January 1996, may continue to be used notwithstanding the registration of a designation of origin or geographical indication, provided that no grounds for its invalidity or revocation exist as specified by Trademark Harmonization Directive (89/104/EEC) or the CTM Regulation ((EC) No 40/94).

30. Significance of EC Amended GI Regulation for Third Countries • The EC amended regulation of 2006 (in force 31 March) allows non-EU producers to submit applications for GIs directly to the EC.  • It has enabled applications for GIs in the EU to protect such names as Café de Colombia for coffee and Napa Valley (Granted May 2007).

31. Contentious: Generic Indications • Article 3 of the regulation provides names that have become generic may not be registered. For the purposes of the Regulation, a name that has become generic means the name of an agricultural product or a foodstuff which has become the common name of an agricultural product or a foodstuff. • In establishing whether or not a name has become generic, account has to be taken of all factors, in particular: • The existing situation in the Member State in which the name originates and in areas of consumption; • The existing situation in other Member States; • The relevant national or Community laws. • Where an application for registration is rejected because a name has become generic, the Commission is required to publish that decision in the Official Journal of the European Communities.- The question of genericity was considered in Cases C-289/96, C-293/96 and C-299/96, concerning the name 'Feta' for cheese.

32. At the EU level: The Feta Cheese case • The Commission's ruling of October 2002 gave PDO status to FETA cheese made in particular areas of Greece under certain conditions. • In 2005 the Danish and German governments took action against the ruling before the ECJ on the basis that the term was generic. • Denmark is Europe's second largest producer of feta after Greece - producing about 30,000 tonnes a year - and exports its products to Greece. • They were unsuccessful! • See Cases C-289/96, C-293/96 and C-299/96, concerning the name 'Feta' for cheese.

33. Implications of the ECJ FETA ruling • From 2007 onwards, Greek firms will have the exclusive use of the feta label and producers elsewhere in Europe must find another name to describe their products.

34. Original Bulgarian White Brine Sheep’s Milk Cheese?

35. ‘It's very clear from the label that it's Yorkshire feta’!Judy Bell, Shepherds Purse Cheeses

36. GIs: Pork Pies & Competition • Samworth Brothers has a 62 % market share, followed by Northern Foods with a 24 % share. Samworth Brothers manufactures over 99 % of the pies produced by Association members.  • Samworth Brothers, the association’s dominant member and the market leader, manufactures Melton Mowbray pork pies in Leicester, which is within the zone. • Northern Foods makes its Melton Mowbray pies in Market Drayton, Shropshire, and Trowbridge, Wiltshire. The company has made Melton Mowbray pork pies for about 100 years at sites across the UK. 

37. Disputes: Definition and Specification of GIs: Melton Mowbray Pork Pies! • This case concerned an application by the UK's Department for Environment Food and Rural Affairs (DEFRA) to the European Commission on behalf of local producers (Melton Mowbray Pork Pie Association) in the area of Melton Mowbray for their pies to be protected under the GI system. • Northern Foods challenged DEFRA’s decision on the basis of the regional coverage. It argued that the description of the geographical area given in the application - an area covering around 1,800 square miles region encompassing parts of Leicestershire, Nottinghamshire and Northamptonshire – constituted an artificially large zone that would disproportionately benefit one producer alone. • Northern Foods Plc v The Department For Environment, Food And Rural Affairs [2005] EWHC 2971.

38. WTO MTNs: Are PGIs/PDOs an appropriate means of subsidizing agriculture? • GIs are perceived as protectionist by US and Australia - as constituting no more than a shift in Europe’s Common Agricultural Policy (CAP) Subsidy Programme. • Yet GIs have been an integral part of Europe’s Agricultural Policy, a means of compensating farmers since the ECJ affirmed the free movement of goods within the Community in Cassis de Dijon, thereby removing quantitative restrictions on agricultural products between Member States.