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1. Protecting Geographical Indications…. …in the World • Click to edit Master text styles • Second level • Third level • Fourth level • Fifth level TRIPs and Geographical Indications : The Way Forward Parma, June 2005 1 Prepared by DG TRADE & DG MARKT for the European Commission 1/17

2. Increasing need to find tools to be successful in the global village, particularly in terms of product differentiation and gaining consumer trust What has the EU done to address this? Protecting Geographical Indications... What have we heard these days? • More protection for GIs: trademarks insufficient (Colombia coffee, Parma ham, etc) • Roll back (generic and trademarks) should be carefully addressed • WTO proposals • WIPO proposals 2

3. Parmigiano Reggiano 4 US certification marks But.. here it comes Grand Cheese’s Parmesan Protecting Geographical Indications... The Question of Translations : Insufficiency of TMs Word Mark: Parmigiano Regiano 3

4. 4 certification marks of the Florida State Dep. in the UE But there are other “Floridas” out there... Figurative Trademarks : Insuficiency of Marks 4

5. A round of trade liberalisation to complete the Uruguay Round (1986-1992)… …that has been turned into a round of negotiations that is to benefit, in particular, developing countries. A number of issues on the table (a global round): WTO Negotiations & GIs • Agricultural support • NAMA (Non-agricultural market access) • Services • Intellectual Property (including GIs)

6. Globalization: also for GIs A reality: GI protection did not exist outside Europe before 1996 If GI products are to be exported, they need to be protected preventively (so investments in publicity et al. are not lost) This should not be a real negotiation about the parameters withing which trade operates, not a battle for the heart and minds of people. Geographical Indications: Why? • Agricultural support is changing shape • Incresing competition in the EU market (e.g., wines)

7. 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) Territorial exceptions for generics, certain prior uses and TMs Protecting Geographical Indications... 1996 and TRIPs: A solution? • All GIs: Consumer deception (for all GIs) • Wines & Spirits: Use of delocalisers, translations or “style”, “like” and so on. 7 Prepared by Antonio Berenguer for the European Commission

8. European Union TRIPS TRIPs & EU: comparing levels of protection Full IP (forbids evocations like imitation of shapes “tetilla”) Limited IP (forbids “style of Manchego” or translation like “Parmezan”) Unfair Competition (allows Parmezan of Australia)

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

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

11. GIs on wines and spirits: What does TRIPs say? (Art. 23.2)

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

13. WHERE DOES MY HAM COME FROM? = Spanish Ham? = Italian Ham? = Italian Ham? = Spanish Ham?

14. Isn’t this good enough?

15. The rules are not appropriate: …but more importantly: use of the existing rules is insufficient!!! Protecting Geographical Indications... So: Why is that happening? • Rules are not transparent and require heavy investments • Protection is insufficient (non-wines & spirits, trade dress, etc) • Generics and other exceptions are broadly interpreted The EU “menu” of solutions : The extension of the wine regime A multilateral register for GIs (TRIPs) A list of (mis)used GIs (CoA) 15

16. “BOURBON” Notification by the US: 18 Month Exam Opposition by: Canada; Mexico; Morocco; New Zealand; China. 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

17. European Union TRIPS TRIPs & EU: comparing levels of protection Full IP (forbids evocations like imitation of shapes “tetilla”) Limited IP (forbids “style of Manchego” or translation like “Parmezan”) Unfair Competition (allows Parmezan of Australia)

18. 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 Protecting Geographical Indications... The shortcomings of TRIPs: the Exceptions 18

19. Many countries do not want anything on GIs: USA, Australia, Canada, Chile, Argentina, etc What are they offering? Protecting Geographical Indications... Why are negotiations not advancing? • Some tactical reasons: wish to extract concessions in Ag. Neg. • Some economic problems: past-uses of EU GIs • 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) 19

20. The EU stands ready to continue working towards removing the discrimination in favour of trademarks with respect to the possibility to expunge domain names (i.e., a derogation of the first in time, first in right principle). This discrimination continues to limit producers and countries’ freedom of choice as there is no choice but to register a trademarks in order to benefit from the system There is an urgent need for assistance in third countries to protect their own GIs. The credibility of IPR and its effectiveness rests upon DCs benefiting from it. WIPO may have a role to play. Protecting Geographical Indications... WIPO Work (?) 20

21. Role of right-holders… A mutually supportive relationship between trademarks and GIs Product specific negotiations: is it the right approach? Protecting Geographical Indications... The Way Forward: Coherence (I) • …ex officio? China situation and FTAs? • …awareness raising? How about the “sherry” cases? • …part of a coherent approach to IPR • …based on economic principles and not on the blind applications of legal principles (reputation, domain names, etc) • …message to developing world? Truly effective? • …tactical games? Is someone thinking product specific? 21

22. GIs: an intellectual property right for DCs? More should be done to explain where and how GIs can be used to the benefit of DCs (like EU’s projects in Mongolia, China, ASEAN, SINERGI, etc) Protecting Geographical Indications... The Way Forward: Coherence (II) • …an opportunity for everyone -- developed and developing countries alike? • …a need to register: the Antigua coffee example • …a need to protect internationally: the Tequila example • …a wealth and…. trademark multiplier (80-624) 22

23. A tension between legal security in international transactions and the principle of territoriality An international negotiation that puts an end to these disputes Protecting Geographical Indications... The Way Forward: Generics & Homonymous • …generally, consumer perception is the guide • …but the EU will try to secure protection for those names • …with counter-concessions in the global DDA negotiation • …including showing that there is a future outside using EU GIs • …based on clarity (pls no discussion on pizza or cream cheese) 23

24. 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 Protecting Geographical Indications... The Way Forward: Summary of Ideas 24

25. THANKS! THE END