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

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

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

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  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 Europe’s Common Agricultural Policy (CAP) Subsidy Programme. • Yet GIs have been an integral part of Europe’s 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 particular…less-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 product’s 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 DEFRA’s 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 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. 

  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 Sheep’s 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 EC’s 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 goat’s 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 it’s: ‘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 Europe’s 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 owner’s right to object to a confusingly similar GI, does it fully take into account the TM owner’s 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 owner’s 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.

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