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Protecting Geographical Indications….

Slide 1/17Prepared by DG TRADE & DG MARKT for the European Commission

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……in the Worldin the World

Prepared by DG TRADE & DG MARKT for the European Commission

TRIPs and Geographical Indications : The Way Forward

Parma, June 2005




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A round of trade liberalisation to complete the Uruguay Round (1986-1992)…

WTO Negotiations & GIs

…that has been turned into a round of negotiations that is to benefit, in particular, developing countries.

Agricultural supportNAMA (Non-agricultural market access)Services Intellectual Property (including GIs)

A number of issues on the table (a global round):



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Globalization: also for GIs

Geographical Indications: Why?

A reality: GI protection did not exist outside Europe before 1996

Agricultural support is changing shapeIncresing 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)



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4Prepared by Antonio Berenguer for the European Commission

Protecting Geographical Indications...

1996 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. 22.2 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



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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”)

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IPS

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GIs on wines and spirits: What does TRIPs say? (Art. 23.1)



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GIs on wines and spirits: What does TRIPs say? (Art. 22 – potentially)



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= Italian Ham? = Spanish Ham?

WHERE DOES MY HAM COME FROM?

= Italian Ham?= Spanish

Ham?



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Isn’t this good enough?



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So: Why is that happening?

The rules are not appropriate:

What the EU is doing : The extension of the wine regimeA 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!!!



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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



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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”)

TR

IPS

Eur

opea

n U

nion



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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



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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)



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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)



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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?



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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



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THANKS!

THE END

Date post:	07-Jan-2016
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