Geographical Indications (GIs): a tool to promote sustainable development

1. Geographical Indications (GIs): a tool to promote sustainable development Massimo Vittori Secretary General, oriGIn

2. Summary • Definition and socio-economic impact of GIs • The protection of GIs at the national level • The international legal framework • The role of oriGIn • Some conclusions

3. Definition “Geographical indications are, ..., indications which identify a good as originating in the territory ..., 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.” (TRIPS, Article 21.1)

4. Economic and social impact of GIs • Local development, preservation of traditions and job creation • Spill over effects (environment, gender, tourism, etc.) • Marketing through differentiation • Globalization has generated a niche of more conscious and demanding consumers • Reduced transition costs for consumers • Trade regulations are shifting towards greater traceability requirements

5. Rights conferred to right holders GIs as a peculiar asset of intellectual property rights: • “Light monopoly”: exclusive rights on a name not on a product • No risks of preventing innovation or slowing-down economic development • “Collective rights”: GIsare managed by several producers (within a given territory/community), not to a single economic actor

6. GIs: a “development friendly tool” • Collective rights: several producers within the same geographic area/community have to join forces and establish a common platform • Collaborative approach throughout the life of a GI (economies of scale) • GIs are an ideal tool for small producers that, by themselves, would never be able to reach out to markets • No delocalisation of production • Low/medium level of innovation for GI products: labour intensive for which developing economies hold a competitive advantage • GIs vehicle to protect Traditional Knowledge and biodiversity

7. GIs as global phenomenon

8. Potential GI products in Sudan • Agricultural products: - Camel meat - Camel milk • Handicrafts: - Traditional clothes (“Jalabia” and “Thobe”) - Traditional paintings, pottery

9. GI protection at the national level Legal vehicles • Sui generis • Trademarks and certification marks • Unfair competition and consumer protection / Passing off

10. 1. Sui generis systems • Specific system to protect GIs as such through registration • Strong protection of the geographical name used in translation, evocation, etc. • Certain level of public involvement in enforcement (ex officio) and controls • Example: EU system (EC Regulation 510/06, EC Regulation 479/2008 and EC Regulation 110/2008)

11. The EC Regulation 510/2006 on the protection of GIs and DOsfor agricultural products and food staff • From the 1992 Regulation to the 2006 Regulation • Role of producers’ associations • DO + GI (art.2) • Rights conferred (art. 13): strong protection • Certain level of public involvement in enforcement (ex officio) in light of EC Regulation 1383/2003 on Customs Controls as well

12. 2. Trade marks: preliminary considerations • Need of distinctive character • Cannot be used to register a geographic name, except it has acquired a secondary meaning

13. 2. Certification Marks (CM) • CM indicate that goods or services for which they are used have qualities or characteristics that are certified by its owner • CM are given for compliance with a defined standard set by the certifier (can be used to certify a specific geographical origin) • CM not usable by the owner • Example: US system (US Lanham Act)

14. CMs v. GIs CMs MAY certify origin Individual control Can be produced anywhere Protection must be renewed periodically High cost of protection : +/- 1,500 to 2,000 € per class and per CM GIs MUST certify origin Collective control Production must be rooted in a region Illumined protection after first registration Limited registration costs

15. CMs v. GIs GIs • Scope of protection: • Automatic protection for the name used in translation, evocation and used with expressions like “style”, “type” • Right on the name even if not used • Guarantee against “genericity” • Enforcement: • Mix of public & private (ex officio), reduced costs for producers CMs • Scope of protection: • In principle, no protection for the name used in translation and used with expressions like “style”, “type”, etc. or single names • Right on the name only if used • No guarantee against “genericity” • Enforcement: • Private (more expensive)

16. The international legal framework • The main international treaties dealing with GIs - Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration - WTO TRIPS Agreement • Proliferation of bilateral and regional agreements - Need of a “minimum level playing field” - Problem of transparency for small GI producers

17. The Lisbon Agreement • Definition of AoO (art. 2) • National Protection + International Registration (WIPO) + Protection in contracting parties (1-year period for oppositions) • Protection against usurpation and imitation, even if the true origin of the product is indicated, and even in translated form or used accompanied by «kind», «type», «imitation», or the like (art.3) • It prevents the risk for a geographical name to become “generic”, as long as it is protected in the country of origin (art. 6)

18. Limits of the Lisbon Agreement Limited numbers of contracting States (26) Restrictive definition of AoO (is reputation a constituting element for a product to qualify for protection??)

19. TRIPS The two levels of protection for GIs • Standard protection of Article 22 for all products, protection only if: • Public is misled by the use of the GI • Incorrect use of the GI constitutes an act of unfair competition • Additional protection of Art. 23 for wines and spirits: • Protection against a simple usurpation of the GI • Protection of the GI even if translated • Use of delocalizing expressions such as ‘kind’, ‘type’, ‘style’, ‘imitation’ or the like are prohibited • “Mandate” for negotiating a multilateral Register

20. Misleading marketing techniques“Prosciutto di Parma” ... made in Canada

21. “Pruneaux d‘Agen” ... from Canada

22. “Basmati Rice” ... made in the USA Long Grain American Basmati Rice

23. “Turron de Jijona” ... from Argentina

24. “Parmigiano Reggiano” ... from Mexico

25. Current negotiations within the WTO’s DDA • Extension of art. 23 of TRIPs to all products • Art. 22 does not prevent free-riding on the reputation and image of well-known GIs: reputation of traditional products is tarnished + loss of potential markets  • No legal certainty/predictability (national jurisdictions might differ on whether the public is misled or not) • Discrimination (“first class” / “second class” products):No socio-economic reasons justify such discrimination between the majority of GI producers and those dealing with wines and spirits • DDA: “ ....the need for all our people to benefit from the increased opportunities and welfare gain that the multilateral trading system generates”

26. Current negotiations within the WTO’s DDA B. Multilateral register • Objectives: • Help producers to protect their GIs worldwide • Help judges and administrative authorities when taking decisions on GIs/trademarks registrations • Key questions: • Scope (products covered): should cover all products • Participation: should be truly “multilateral” (art. 23.4 of TRIPS) • Legal effects: should not be a mere database

27. Draft modalities on TRIPS, July 2008 • The extension of art. 23 to all GI (including the extension of the Register); • A multilateral Register: - binding for all WTO members - voluntary notifications of GIs (to be carried out by Member States) - No opposition

28. Draft modalities on TRIPS, July 2008 Register’s legal effect : Each WTO Member will have to provide that domestic authorities consult the Register and take its information into account when making decisions regarding registration and protection of trademarks and geographical indications in accordance with its domestic procedures. In the framework of these procedures and in the absence of a proof to the contrary, the international registration of a GI will be considered as a prima facie evidence that, in the Member where those procedures are under way, the geographical indication at issue meets the definition of "geographical indication" laid down in TRIPS Article 22.1. Moreover, any assertion on the genericness exception laid down in TRIPS Article 24, will have to be considered by domestic authorities only if these are substantiated.

29. The role of • OriGIn -Organisation for an International Geographical Indications Network • When? created in 2003 • What? first international organisation (NGO) of GI producers

30. Objectives Producers from all over the world joined forces: • Advocacy campaigns for an effective international legal system for protecting GIs • Promotion of GIs as a tool for sustainable development • Platform for worldwide GI producers and experts: exchange of “best practices” + dissemination of information

31. oriGIn today: • Some 85 organizations of producers • Over 35 countries • Representing more than 2-million GI producers

32. Membership • Full Members: associations/groups of GI producers • Associate members: persons/organisations interested to promote oriGIn’s goals

33. Food products: Coffee, tea Rice Cheese, butter,… Ham, sausage,… Fruits, vegetables,… Pastry Other Wines Spirits Non-food products: Carpets Watches Cigars Artisanal products, etc. Type of products

34. Decentralised structure: VPs

35. in action Partnerships Technical assistance Advocacy campaigns Awareness on GI abuse Updated information for our members Research projects and studies International events

36. Some conclusions • Important socio-economic role played by GIs • Problems of small producers: enforcement of rights (costs + legal advice) • Sui generis systemsbetter guarantee producers’ interests • Need to strengthen the multilateral legal framework (TRIPS Modalities in the Doha Round + reform of the Lisbon Agreement)

37. Thank you! Massimo Vittori secretariat@origin-gi.com www.origin-gi.com