WHAT OUTCOME TO EXPECT ON

GEOGRAPHICAL INDICATIONS IN THE TTIP

FREE TRADE AGREEMENT NEGOTIATIONS

WITH THE UNITED STATES?

Alan Matthews

Trinity College Dublin, Ireland

alan.matthews@tcd.ie

Presentation to 145th EAAE Seminar

‘Intellectual Property Rights for Geographical Indications: What is at Stake in the TTIP?’

Parma, 14-15 April 2015

TTIP negotiations and GIs

• “The negotiations shall aim to provide for enhanced

protection and recognition of EU Geographical Indications

through the Agreement, in a manner that complements

and builds upon the TRIPS, also addressing the

relationship with their prior use on the US market with the

aim of solving existing conflicts in a satisfactory manner.”

(EU Council 2013)

• ” We seek new opportunities to advance and defend the

interests of US …farmers ,,, with respect to strong

protection and effective enforcement of intellectual

property rights, including their ability to compete in foreign

markets”. (USTR 2014)

Objectives

• EU and US have different positions on protection of GIs

• Review EU and US positions in the negotiations

• Examine GI protection in recent EU FTAs

• Assess different options for the landing ground in TTIP

negotiations

GI protection in WTO TRIPS Agreement

• Definition of a GI

• Article 22.1

• "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".

GI protection in WTO TRIPS Agreement

• Protection of GIs

• Article 22

• In respect of geographical indications, Members shall

provide the legal means for interested parties to prevent:

• (a) 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;

• (b) any use which constitutes an act of unfair competition

----

• - need to show evidence of consumer confusion

GI protection in WTO TRIPS Agreement

• Higher level of protection for wines and spirits

• Article 23

• Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation" or the like.

GI protection in WTO TRIPS Agreement

• Relationship of trademarks and GIs • For foodstuffs, a Member is obliged to refuse or invalidate a

trademark which contains or consists of a GI where the good does not originate in the territory indicated, and where use of the trademark is of such a nature as to mislead the public as to the true origin of the good.

• For wines and spirits, Members are obliged to refuse or invalidate a trademark which contains or consists of a wine or spirits GI with respect to wines and spirits not having this origin, but rights of existing users of GIs are grandfathered

• Measures adopted to protect GIs “shall not prejudice eligibility for or the validity of the registration of a [prior] trademark, or the right to use a [prior] trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication”.

GI protection in WTO TRIPS Agreement

• Registration of common names

• No Member is required with respect to goods or services

to recognise the GI of another member where the

indication has become a common name for such goods or

services in that Member.

• GI protection is also not required if the indication is

identical with the customary name of a grape variety

existing in that member when the TRIPS Agreement

entered into force.

EU protection of GIs

• EU has an extensive acquis that includes EU-wide sui generis systems of protection for agricultural products and foodstuffs, wines and spirits.

• At the end of April 2014, 336 names of spirits, 1,577 names of wines and 1,184 names of foodstuff and agricultural products were registered at EU level.

• In 2010 €11.5 billion of export sales (15% of EU food and drink industry exports), 90% of which is wines and spirits.

• Export values are concentrated in a small number of products: champagne and cognac from France; Scotch whisky from the United Kingdom; and Grana Padano and Parmigiano Reggiano from Italy.

• Greater protection in international markets seen as important EU offensive interest

EU negotiating objectives on GIs

• to assure protection of EU GIs;

• to reach extension of the level of protection for foodstuffs;

• to agree on co-existence with prior trademarks;

• to guarantee administrative protection in addition to

judicial action

• Pursued through

• Multilateral negotiations in Doha Round

• ‘Old generation’ wines and/or spirits agreements

• Stand-alone agreements (‘10+10 with China)

• ‘New generation’ bilateral FTAs with TRIPS+ protection

EU TRIPS+ objectives

• To establish a list of EU names to be protected directly and indefinitely in the third country, from the entry into force of the agreement.

• To obtain the extension of GI protection provided by Article 23 to other products than wines and spirits.

• To allow co-existence with prior trademarks

• To phase out prior uses of EU names.

• To obtain administrative protection (so that EU exporters do not always have to go through the courts of the third country).

• To avoid that protection of EU geographical indications depends on individual applications.

• To ensure a right of use (opposed to trade mark license system).

• To create a co-operation mechanism / dialogue.

EU negotiating approach

• Adapted to negotiating position of other party

• Recognises three groups

• Neighbouring countries or countries with an association agreement with the EU, where it is usually possible to reach a very high degree of integration of the respective complementary GI systems and registers

• Agreements with non-neighbouring countries that already have established a GI system or have a domestic interest to create such a system of protection.

• Countries without a particular tradition of protecting GIs, such as Canada, Singapore, and Mercosur where co-existence with prior trademarks raises particularly difficult issues.

EU negotiating approach

• Accepts that it is not always possible to get protection for

all EU GIs but only for a "short" list.

• Majority of EU GIs are multi-component terms; many

single names are actually not protected in the EU and EU

does not seek protection elsewhere

• e.g. GI Provolone Valdapana is protected but Provolone itself is not

so other country’s producers are free to use the term in order to sell

their home-produced cheese in these countries

• Difficulties are most likely with respect to single word

component GIs which are often considered generic in

other countries

US protection of GIs

• US uses mainly trademark rules, allowing registration of GIs as either a ‘collective mark’ or ‘certification mark’

• Examples

• Roquefort protected as a certification mark to indicate that the cheese has been manufactured from sheep’s milk and cured in the caves of the Community of Roquefort (France) in accordance with their long established methods and processes.

• Cognac is recognised as a regional certification mark since purchasers in the US primarily understand the Cognac designation to refer to brandy originating in the Cognac region of France, and not to brandy produced elsewhere, and since the owners of the mark control and limit use of the designation which meets certain standards of regional origin.

Criticisms of US system from EU perspective

• Subjects GI registration to trademark ‘first come, first

served’ rule

• Overly restrictive view of what is a common name,

denying registration to many EU GIs

• Registration and then enforcement through courts is

difficult and expensive

• Trademark registration does not fully recognise the unique

nature of GIs as ‘essentially attributable to’

EU objectives for GIs in TTIP

• The specific objectives for GIs in TTIP have been set out by DG Trade as follows (DG Trade 2015):

•

• Rules guaranteeing an appropriate level of protection for EU GIs;

• Administrative enforcement against the misuse of EU GIs;

• Establishment of list(s) of GI names, to be protected directly through the agreement. This list could include both European and American GI names;

• Specific arrangements for certain specific GI names;

• Exclusive protection for the 17 EU wine names included in Annex II of the EU and the U.S. agreement concluded in 2006 on "trade in wine";

• Protection for additional EU GI spirits names.

US views on EU position -

• Consortium for Common Food Names

• supports geographical indications associated with specialised foods from regions throughout the world, but opposes any attempt to monopolize common (generic) names that have become part of the public domain

• has produced guidelines it believes can be helpful in establishing a ‘fair’ model that protects common names and legitimate food-related geographical indications.

• “The EU is taking a mechanism that was created to protect consumers against misleading information and instead using it to carve out exclusive market access for its own producers.”

• Some US voices in favour of stronger GI protection

US position on GIs

• Identify by looking at GI provisions in US.Korea FTA and

in first draft of TTP GI provisions

• Defines GIs in a trademark context (e.g. would allow

various signs and combinations of signs as a GI)

• Not supportive of requiring a separate GI register which

would allow administrative enforcement of protection

• Rights of trademark owners take precedence over GI

registration

• Common names treated as generic when common in the

other party and possibility that GI names could become

generic over time

Comparative analysis GI provisions of EU FTAs

• First ‘new generation’ FTA was CARIFORUM EPA in 2008

• Subsequently

• EU-Korea 2011

• EU-Colombia and Peru 2012

• EU-Central America 2012

• EU-Singapore 2013

• EU-SADC (special protocol with South Africa) 2014

• EU-Canada (CETA) 2014

• Previously reviewed in O’Connor and Richardson (2012)

EU-Korea – a model template?

• Sets out necessary elements for registration and control

of GIs, and agrees each Party has the necessary

instruments in place

• Provides TRIPS Article 22 and 23 levels of protection for

GIs

• Provides for coexistence of GIs with a prior trademark

• Provides that the protection of GIs can be enforced by

administrative action.

• Provides for the addition of GIs to the lists of GI appended

to the agreement.

• But….. only covers 60 food and 105 wine/spirits EU GIs

EU-Singapore – another EU sucess?

• Requires Singapore to set up GI registration system with

desired characteristics

• Provides TRIPS Articles 22 and 23 protection for both

agricultural products and foodstuffs as well as wines and

spirits for the agreed list of products.

• On the question of relationship between GIs and prior

trademarks, the parties agreed to disagree.

• Prior users of listed GIs are given grandfather rights

• Singapore issued a consultation paper seeking views on

the 196 GI names proposed by EU

EU-Canada CETA – still to be ratified

• Canada will provide the legal means for interested parties

to protect GIs and is likely to continue to do so using its

trademark system.

• Protection given to the listed GIs meets TRIPS Article 22

and 23 standards.

• For products that fall within identified ‘product classes’

• However, there are specific exceptions.

• GI names Asiago, feta, fontina, Gorgonzola and Munster

• Nürnberger Bratwürste

• Valencia oranges, Black Forest ham, Tiroler bacon, parmesan,

Bavarian beer, Munich beer and St George cheese

EU-Canada CETA – still to be ratified

• Enforcement ensured by administrative action “to the

extent provided for by its domestic law“

• Provides for co-existence of prior trademarks

• Provision is made to add to the list of EU GIs in the

Canadian market, subject to certain reservations. No GI

already on the list of EU GIs can in principle be added, no

GI that is identical to a trademark in use in Canada can be

added, and no common name can be added.

• EU GIs list contains 145/173 names of agriculture and

food products (no wines or spirits as covered under wine

agreement)

Summary of comparative analysis of EU FTAs

• EU has succeeded in getting higher protection for limited

number of GIs in these markets

• Different scope of protection provided in each agreement

• “While there were some significant constants like Scotch

Whisky and Prosciutto di Parma in all the agreements

there were significant differences in the listed names as

between them. CETA adds to the differences. The only

constant is that not all EU GIs are protected under the

bilateral agreements examined.” (O’Connor and

Richardson 2012)

•

Implications for EU-US GI negotiations in TTIP

• Political vs economic motives behind EU position.

Agriculture needs to have some ‘gains’ in TTIP outcome

• What is the economic importance of gaining Article 23 protection for

agricultural products and foodstuffs in US market?

• What is loss of market due to current situation?

• Do benefits of securing greater GI recognition accrue to relatively

few countries and products at the expense of broader EU interests?

• US opposition focused on threat to common names, at

least some of which have Federal standards different to

EU ones

• Does EU focus on GI protection for some perceived common

names threaten possibility for greater protection for other GIs in

other ways (administrative enforcement, scope of protection)

Implications for EU-US GI negotiations in TTIP

• Toolbox to address prior trademarks and GI names

• Phasing out, grandfathering..

• Greater restrictions on use of misleading symbols

• Role for compensation?

Broader implications for EU GI negotiations in

future • Maximalist position is that agreements should provide that all

GIs properly protected in one country be protected in the other

• Concept of GIs was originally related to idea of terroir, but gradually extended to other attributes such as localised human capital-based knowledge

• Does this weaken the case for broader international recognition of EU GIs

• Scottish case for ‘Dundee cake’ as a PGI

• Fact that not all EU-registered GIs are treated equally in EU FTAs

• Does that open Commission to charge of discriminatory treatment by those left off?

• Possibility of WTO disputes in absence of agreement over differing provisions in FTAs