The Protection of Geographical Indications After Doha

1

• The Protection of Geographical Indications After
  Doha
• G.E. Evans
• Queen Mary, University of London

2
Structure of Presentation

• GIs and the Doha Declaration of 2001
• TRIPS Additional protection for wines and
  spirits
• Are PGIs an appropriate means of subsidizing
  agriculture?
• EC 510/06 A tailor-made GI Regulation
• GIs and eligible subject matter
• Designation of origin and geographical indication
• GI Specification
• Disputes Definition and Specification of GIs
  Northern Foods Plc v The Department For
  Environment, Food And Rural Affairs 2005 EWHC
  2971 Northern Foods Plc v The Secretary of State
  for the Environment, Food and Rural Affairs, ECJ
  (Case C-169/06) 2006
• What are the criteria for deciding whether the
  name is generic?
• EC Prohibition against registration of generic
  indications
• But consider the case of Feta Cheese and the
  risks of clawback
• Interrelationship of trademarks and GIs WTO
  acceptance of Co-existence of TMs and GIs
• After Doha Lack of International Consensus on
  key elements of GI protection
• Consider the benefits of TRIPS compared with EC
  high protectionism?

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 may benefit Developing Countries GIs,
  pertaining to agriculture and handicrafts may
  contain traditional knowledge which is capable of
  commercialization worldwide as natural medicinal,
  culinary, cosmetic or lifestyle products.
• E.g. India possesses well known geographical
  names such as 'Darjeeling' tea in Kenya, the
  products that could benefit from the proposed
  TRIPS GI extension include Molo lamb.

4
GIs and the Doha Declaration of 2001

• Paragraph 18 of the Doha Declaration states that
  issues related to the extension of the
  protection of geographical indications provided
  for in Article 23 to products other than wines
  and spirits are to be addressed in the Council
  for TRIPS pursuant to paragraph 12 of this
  declaration.
• Clause 2 recognizes the need for all our peoples
  to benefit from the increased opportunities and
  welfare gains that the multilateral trading
  system generates.

5
TRIPS Additional protection for wines and
spirits

• Should wines and spirits exclusively be accorded
  the benefit of a multilateral register and
  additional protection?
• In the latter regard Art. 23.1 allows Members to
  provide the legal means to interested parties to
  prevent the use of a geographical indication
  identifying wines or spirits which do not
  originate in the place indicated by the
  geographical indication in question e.g. COGNAC
  from New Jersey.
• It is a prima facie an infringement of a GI to
  use it for any similar product, or other product
  or service, if the use is likely to result in an
  appropriation of the reputation of the
  geographical indication. E.g. a slogan 'the beer
  world's answer to Veuve Cliquot.
• The prohibition includes indications which refer
  to the true origin of such goods or
• Where the geographical indication is used in
  translation or
• Where the geographical indication is accompanied
  by expressions such as kind, type, style,
  imitation or the like.
• Registration of trademarks containing such
  geographical indications must be refused or
  cancelled, either ex officio or at the request of
  an interested party Art. 23.2.

6
WTO MTNs Are PGIs an appropriate means of
subsidizing agriculture?

• GIs are perceived as protectionist by US and
  Australia - as constituting no more than a shift
  in Europes Common Agricultural Policy (CAP)
  Subsidy Programme.
• Yet GIs have been an integral part of Europes
  Agricultural Policy 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.

7
EC A Tailor-made GI Regulation

• Amended Regulation 510/06 in Recital 2 makes
  express mention of the common agricultural
  policy, in fulfilling its objective of
  contributing to
• the diversification of agricultural production
  .. so as to achieve a better balance between
  supply and demand on the markets and
  benefiting the rural economy, in
  particularless-favoured or remote areas, by
  improving the incomes of farmers.
• Recital 7 states
• in view of the, "diversity in the national
  practices for implementing registered
  geographical indications ... a Community
  approach should be envisaged since, by
  providing a more uniform approach, such a
  framework will ensure fair competition between
  the producers of products bearing such
  indications and enhance the credibility of the
  products in the consumers' eyes".

8
GIs Eligible Subject Matter

• The Regulation applies potentially to a wide
  variety of agricultural products. Art. 1 refers
  to lists of agricultural products and foodstuffs
  intended for human consumption, which may
  comprise the of protected designations of origin
  and geographical indications. These are broadly
  detailed to include
• Essential oils e.g Tuscany for olive oil
• Meat, fish,
• Dairy produce and preparations thereof
  roquefort for cheese
• Fruit and vegetables and preparations thereof
• Cereals and medical plants beers, bread,
  confectionery and pasta.
• Article 1(1) of Regulation 510/2006 see ANNEX I,
  Annex II of the Regulation and Annex 1 of the
  Treaty Establishing the European Communities,
  Official Journal C 325 , 24 December 2002

9
Designation of origin and geographical indication

• Regulation 510/06 provides for PDOs PGIs
• To qualify for a PDO (protected designation of
  origin) the product must be produced, processed,
  and prepared within the specified geographical
  area, and the products quality or
  characteristics must be essentially due to that
  area.
• The PGI (protected geographical indication) is
  broader in scope in so far as it requires the
  product to be produced, processed, or prepared in
  the geographical area, and the quality,
  reputation, or other characteristics to be
  attributable to that area.
• Art. 2, Regulation 510/2006

10
GI Specification

• In accordance with Article 4 (2), the product
  specification shall include at least
• the name of the agricultural product or
  foodstuff
• a description of the agricultural product or
  foodstuff, including the raw materials, if
  appropriate, and principal physical, chemical,
  microbiological 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 defined geographical
  area
• a description of the method of obtaining the
  agricultural product or foodstuff information
  concerning packaging, if the applicant group
  within the meaning of Article 5(1) so determines
  and gives reasons why the packaging must take
  place in the defined geographical area to
  safeguard quality or ensure the origin or ensure
  control. Thus in accordance with Article 4(e),
  the specification for Prosciutto di Parma sets
  out the terms of slicing and packaging of the
  product within the region of production for ham
  marketed in slices. See Consorzio del Prosciutto
  di Parma Salumificio S. Rita SpA v. Asda Stores
  Ltd Hygrade Foods Ltd, ECJ, Case C-108/01, (20
  May 2003).

11
Disputes
Definition and Specification of GIs
Melton Mowbray Pork Pies!

• This case concerns 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 is challenging DEFRAs decision on
  the basis of the regional coverage. It argues
  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 constitutes 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.

12
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 associations 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. 

13
Pork Pies PGI Defined Geographical Area

• Granting Northern Foods leave to appeal the Court
  of Appeal stated it is highly desirable that
  the link between the PGI and the defined
  geographical area is clarified by the European
  Court of Justice (ECJ), considering that there
  are "real possibilities" that member states might
  be applying different criteria. (Pursuant to
  Article 234 of the EC Treaty).
• 14 March, 2006

14
Reference to the ECJ

• The Court of Appeal referred the following
  questions
• Where the specification in an application for a
  protected geographical indication (PGI) in
  respect of "Melton Mowbray Pork Pies" made
  pursuant to Council Regulation 2081/92/EEC on the
  protection of geographical indications and
  designations of origin for agricultural products
  and foodstuffs ("the Regulation") defines the
  relevant geographical area pursuant to Article
  4(2)(c) of the Regulation as the town of Melton
  Mowbray and its surrounding region bounded as
  follows
• to the North by the A52 from the M1 and the A1
  and including the city of Nottingham
• to the East by the A1 from the A52 to the A45 and
  including the towns of Grantham and Stamford
• to the West by the M1 from the A52 and the A45
  and
• to the South by the A45 from the M1 and the A1
  and including the town of Northampton
• Are the requirements of Article 2(2)(b) of the
  Regulation capable of being satisfied insofar as
  the proposed PGI would apply to products produced
  and/or processed and/or prepared in places other
  than that whose name appears in the PGI
• If so, what criteria must be applied in
  delimiting the defined geographical area referred
  to in Articles 2(2)(b) and 4(2)(c) of the
  Regulation?
• Northern Foods Plc v The Secretary of State for
  the Environment, Food and Rural Affairs, ECJ
  (Case C-169/06) 29 March 2006

15

• For the moment, the legal status of the Melton
  Mowbray pork pie a dish originating in the 18th
  century from the town of Melton Mowbray in
  Leicestershire is in the hands of the
  Luxembourg judges!

16
What are the criteria for deciding whether the
name is generic?

• TRIPS Art. 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).
• EC Regulation, Art. 3(1) defines a name that has
  become generic as the name of an agricultural
  product or a foodstuff which, although it relates
  to the place or the region where this product or
  foodstuff was originally produced or marketed,
  has become the common name of an agricultural
  product or a foodstuff. E.g. "Mozzarella" and
  "Camembert" for cheese are not currently
  protected as GIs in the EC or elsewhere and are
  therefore not entitled to protection in third
  countries under TRIPS provisions.
• Once the GI is registered, the Regulation
  prevents any protected name from becoming generic
  by statutory enactment. Art. 13 (2) states
• Protected names may not become generic.
• Although a designation may be altered, or even
  lost, as a result of changes in technology or
  processing techniques, it cannot be lost a result
  of changes in understanding or usage of the
  protected name. Art. 13(2).

17
Prohibition against registration of 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.

18
EC The case of Feta Cheese

• 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.

19
Breadth of rights conferred

• Art. 13. provides
• Protection that prohibits not only food products
  from outside the region from using the
  geographical name, but also denies use of the
  name to products within the region that do not
  meet the standards set forth in the application.
• The prohibition on exploitation that may extend
  to include even dissimilar products which attempt
  to trade on the cachet of the registered
  products. E.g. this would prevent the use of
  Champagne" for a perfume as a misappropriation
  of the registered designation.
• A prohibition as to any misuse, imitation or
  evocation, even if the true origin of the
  product is indicated prevents the use of PDOs
  and PGIs in conjunction with qualifiers such as
  style or method.

20
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.

21
Original Bulgarian White Brine Sheeps Milk
Cheese?

22
Risks of generic clawback to development

• The economic development of trademark dependent
  developing countries may be set at risk by the
  worldwide repatriation of semi-generic names such
  as Feta cheese.
• Currently, Art. 24.6 exceptions apply on a
  per-Member basis so that a word may be generic in
  one WTO Member, but it may be a protected as a GI
  in another.
• Under the ECs clawback proposal, only the Greek
  feta could be labelled as feta and all the other
  types would have to be renamed. E.g.producers in
  Costa Rica could no longer use the term feta as
  a customary term for cheese made from sheep or
  goats milk.
• Whereas currently, TRIPS Art. 24(9)(d) provides
  that there is no obligation to protect GIs which
  are not or cease to be protected in their country
  of origin, or which have fallen into disuse in
  that country.
• The European Proposal to extend enhanced
  protection of GIs to agricultural products and
  foods would grant groups of European producers
  exclusive rights over the use of certain names
  whilst putting non-EC producers and consumers at
  a disadvantage.
• Under the extension, the exceptions in TRIPS
  Article 24 would continue to apply, but
  clawback would gradually remove them, as well
  as the ability of WTO Members to use established
  trademarks and generic terms.

23
Interrelationship of trademarks and GIs

• Consider the potential erosion of protection in
  the case of trademark dependent Developing
  Countries?
• TRIPS Art. 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.

24
Europe Co-existence of TMs GIs

• Gerolsteiner Brunnen concerned the use of the GI
  KERRY Spring on mineral water bottles, which
  might be in conflict with the mark GERRI for
  products of the same or similar description.
• The defendant argued that the prominent display
  of KERRY Spring on the product was justified
  under Art. 6 (b) of the Harmonization Directive
  since the water came from a source in county
  Kerry, Ireland.
• The ECJ agreed that the TM owner may be limited
  in the exercise of his trade mark rights by the
  use of a GI, even if it is a trademark use and
  possible confusion, 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.
• Gerolsteiner Brunnen GmbH Co. v Putsch GmbH
  (Case C-100/0, 2004).

25

• Contrast the statutory fair use U.S. which
  would remove the defence where the use is as a
  mark
• 15 USC 1115(b)(4) requires that the use of
  the name, charged to be an infringement is a
  use, otherwise than as a mark, of a term or
  device which is descriptive of and used fairly
  and in good faith only to describe the goods or
  services of such party, or their geographic
  origin.
• For US consumers its
• Make mine a CZECHVAR!

26
Potential for trademark infringement

• Former Article 14(3) of the EC Regulation
  purported to prevent the registration of a GI in
  only those cases where the earlier trademark was
  so well-known that registration of the later GI
  would be liable to mislead consumers.
• As the WTO Panel concluded this provision allowed
  considerable scope for trademark infringement
  Consider the following possibilities
• Not all GIs are geographical terms. E.g. Feta
  cheese.
• What of the potential conflict between
  geographical signs that may be registered without
  evidence of acquired use if they do not designate
  a place that consumers associate with the goods
  in question or are likely in the future to do so
  Windsurfing Chiemsee.
• Article 14(3) did not prevent the registration of
  the GIs Bayerisches Bier (German for Bavarian
  beer) or Budejovicke pivo (Czech for
  Budweiser beer) notwithstanding the likelihood
  of confusion with earlier registered trade marks
  BAVARIA and BUDWEISER.

27
WTO acceptance of Co-existence

• In WTO case of EC - Geographical Indications the
  Panel adopted Europes principle of co-existence
  regarding the interrelationship of conflicting
  trademarks and GIs indications for all but the
  most well-known of prior trademarks.
• The Regulation it found is prima facie
  inconsistent with Article 16.1 of the TRIPS
  Agreement.
• Notwithstanding, this derogation is justified by
  the need to maintain coexistence of GIs and
  earlier trademarks by TRIPS Art. 24.3 as follows
• In implementing this Section, a Member shall
  not diminish the protection of geographical
  indications that existed in that Member
  immediately prior to the date of entry into force
  of the WTO Agreement."
• In the result, the prior trademark owner's
  exclusive rights under TRIPS Article 16.1 cannot
  be exercised against a person who uses a
  registered GI in accordance with its
  registration.
• E.g. Bayerisches Bier was registered as a PGI in
  2001 subject to the continuation of prior
  trademarks, BAVARIA and HØKER BAJER. Upon
  registration, the EC Council concluded that the
  GI would not mislead the consumer as to the
  identity of the product, which is the standard
  embodied in former Art. 14.3 of the Regulation.

28
Query the application if the TRIPS Exception

• Query whether an exception that allows for the
  possibility of third party use of an earlier
  trademark that leads to confusion can be
  considered to be limited given that this
  negates the trade mark right.
• Despite the trademark owners right to object to
  a confusingly similar GI, does it fully take into
  account the TM owners interests in preserving
  the distinctiveness of its mark?
• While the Panel found that relatively few
  trademarks would be affected in practice by
  co-existence, is a degree of confusion acceptable
  as long as the GI owners use is honest?

29
EC Compliance with WTO Ruling

• Amended Art. 14.2 is intended to implement
  Art. 24.5 of TRIPS. It provides as follows
• 2. With due regard to Community law, a trademark
  the use of which corresponds to one of the
  situations referred to in Article 13 which has
  been applied for, registered, or established by
  use in good faith within the territory of the
  Community, before the date of protection of
  the.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 First Council
  Directive 89/104/EEC of 21 December 1988 to
  approximate the laws of the Member States
  relating to trade marks or Council Regulation
  (EC) No 40/94 of 20 December 1993 on the
  Community trade mark.

30
TRIPS GI Exception

• Arguably, the text of the amended Article 14 of
  the EC Regulation, removes the provision from the
  scope of the limited exceptions concerning
  trademarks in TRIPS Article 17. Article 14(2) now
  provides prior trademarks with a reference date
  of 1 January 1996 for coexistence with
  geographical indications, prima facie
  jeopardizing those trademarks that were not at
  risk under the former Regulation.
• Cognizant of the disquiet the concept of
  coexistence causes among WTO Members who rely
  exclusively on the trademark system, the EC
  proposal of June 2005 advances a number of
  proposals regarding the exceptions of Article 24
  of the TRIPS Agreement. E.g the EC has proposed
  adding a sentence to Article 24(5) to ensure that
  the effects of "extension" do not prejudice the
  registration, validity and use of trademarks that
  were to remain unprejudiced under Article 22(3),
  because they would not mislead the consumer as to
  the origin of the product.

31
After Doha

• We have no International Consensus concerning
• Conflicts between GIs and trademarks Budvar
  versus Budweiser?
• Scope of Protection misleading use or confusing
  use?
• Generic Terms champagne?
• Erosion of the principle of territoriality?
• Nor, as a matter of economic and social policy on
  the benefits of protecting smallholders and rural
  economies in the developing world via
  geographical indications.