Producer experiences with regard to the protection of Geographical Indications.

1. Producer experiences with regard to the protection of Geographical Indications. Parmigiano Reggiano producers experience. Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). Information Session on Geographical Indications WIPO Geneva, March 28, 2017 Giorgio Bocedi

2. PLAN I. Parmigiano Reggiano: a successful GI with 8 centuries of history. II. Numerous but not uniform tools of GIs protection. III. The protection in the EU. The protection in third countries.

3. I. Parmigiano Reggiano: a successful GI with 8 centuries of history The link with the area of origin: the core of its history

4. I. Parmigiano Reggiano: a successful GI with 8 centuries of history • It is made (not just manufactured) as 8 centuries ago: • in the same places • with the same, natural ingredients (cow’s milk, calf rennet, salt) • with the same traditional process

5. I. Parmigiano Reggiano: a successful GI with 8 centuries of history • Parmigiano Reggiano: ‘the king of cheeses’ • cows fed primarily on fodder obtained in the area of origin • zero silages corn • natural ingredients: solely cow’s raw milk, calf rennet and salt • zero additives • aging: at least 12 months • 24 months: average aging period • high digestibility • calcium and vitamins • Official controls: each wheel!

6. I. Parmigiano Reggiano: a successful GI with 8 centuries of history Economic, social and environmental impact (January 2017) • 251.000: cows solely producing milk for Parmigiano Reggiano • 3.007: milk producers (3.272 in 2015) • 339: cheese dairies (353 in 2015) • 50.000: people involved in the production chain • 3.469.865: wheels (equal 139.680 tons) • 1.117 million €: turnover to traders (production 2015 sold in year 2016) • 2.010 million €: turnover to consumers (production 2014 sold in year 2016) • 37%: export (+5,8%) • equitable and fair sharing of the value added within the production chain

7. I. Parmigiano Reggiano: a successful GI with 8 centuries of history Consorzio del Formaggio Parmigiano Reggiano: Group of producers! • Established in 1934 • Voluntary non-for-profit body in charge of the defense, promotion and safeguarding of the Protected Designation of Origin “Parmigiano Reggiano”; • Operators may became members if they are established within the area of origin: - farmers producing milk; - diaries (presently, 100% is member of the Consorzio); - operators maturing Parmigiano Reggiano the end of the minimum aging period and operators engaged in the portioning and/or grating and packaging

8. II. Numerous but not uniform tools of GIs protection • TRIPS Agreement • European Union legislation • Regulation (EU) No 1151/12 on quality schemes for agricultural products and foodstuffsfor • Multilateral agreements • Lisbon Agreement (amended on 28 September 1979) • Geneva Act of the Lisbon Agreement (adopted on 20 May 2015) • FTAs of the EU with third countries including GIs protection • Registration as a GI in third countries by means of a sui generis legislation • Trade marks (collective tm, certification tm) protection

9. III. The protection in the EU PDOs/PGIs enjoy a wide protection! «Evocation» • EUCJ, ‘Gorgonzola/Cambozola’ (case C-87/97, 4 March 1999) • EUCJ, ‘Parmigiano Reggiano/Parmesan’ (case C-132/05, 26 February 2008) • EUCJ, ‘Cognac’ (joinedcases C-4/10 and C-27/10, 14 July 2011) • EUCJ, ‘Calvados/Verlados’ (case C-75/15, 21 January 2016) • EUGC, ‘Toscano/Toscoro’ (Case T‑510/15, 2 February 2017)

10. III. The protection in the EU «Evocation» EUCJ, Gorgonzola’ (case C-87/97, 4 March 1999, points 25 to 29) PDO ‘GORGONZOLA’ v ‘CAMBOZOLA’ trademark • “Evocation, as referred to in Article 13(1)(b) of Regulation No 2081/92, covers a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected” (point 25)  • “It is possible, contrary to the view taken by the defendants, for a protected designation to be evoked where there is no likelihood of confusion between the products concerned and even where no Community protection extends to the parts of that designation which are echoed in the term or terms at issue.” (point 26) • “Article 13(1)(b) of Regulation No 2081/92 also expressly provides that the indication of the true origin of the product on its packaging or otherwise has no bearing on the application to that product of the concepts referred to in that subparagraph.”. (point 29)

11. III. The protection in the EU «Evocation» EUCJ, ‘Parmigiano Reggiano/Parmesan’ (case C-132/05, 26 February 2008, points 48 and 49) • “That proximity (‘conceptual’) and the phonetic and visual similarities referred to in paragraph 46 above are such as to bring to the mind of the consumer the cheese protected by the PDO ‘Parmigiano Reggiano’, when he is confronted by a hard cheese, grated or intended to be grated, bearing the name ‘Parmesan’.”. • “In those circumstances, the use of the name ‘Parmesan’ must be regarded, in the sense of Article 13(1)(b) of Regulation No 2081/92.”

12. III. The protecton in the EU Germany, Court of Cologne, 14 October 2009 Consorzio del Formaggio Parmigiano-Reggiano vs … The Court authorizes the seizure of chees named “ Parmesano” and “Reggianito” originating in Argentina exhibited at Anuga food fair

13. III. The protection in the EU Spain, Commercial Court of Oviedo, Judgment of 12 January 2010 Consorzio del Formaggio Parmigiano-Reggiano vs … The Court deems that the use of the name ‘PARMESO’ constitutes a violation of Article 13(1)(b) PDO/PGI Regulation No 510/06, insofar as PARMESO evokes the Protected Designation of Origin ‘Parmigiano Reggiano’, as well as an act of Unfair Competition.

14. III. The protection in the EU Germany, Court of Cologne, 12 October 2011 • The Court authorizes the seizure of cheeses named ‘Parmesan’ originating in the USA exhibited at Anuga food fair Germany, Court of Cologne, 8 October 2013 • The Court authorizes the seizure of cheese named ‘Parmesan’ and bearing the Italian flag exhibited at Anuga food fair

15. III. The protection in the EU Germany - ‘Anuga – 14.10.2015_TASTE THE FUTURE • Ex officio protection! • The German Authority («LandesamtfürNatur, Umwelt und VerbraucherschutzNordrhein-Westfalen») competent for the Nordrhein-Westfalen, hasadopted appropriate measures, uponrequest of the relevant group ‘Consorzio del Formaggio Parmigiano-Reggiano’, againstcheesenamed ‘QUESO REGGIANITO’ and ‘GRATED PARMESAN CHEESE’

16. III. The protection in the EU ‘Evocation’ EUCJ, ‘Calvados/Verlados’ (case C-75/15, 21 January 2016, points 27, 39) • “… the concept of ‘consumer’, referred to in the case-law cited in paragraph 21 above, covers European consumers, …” • “It is also for the referring court to take into account, in accordance with the Court’s case-law, possible information capable of indicating that the visual and phonetic relationship between the two names is not fortuitous.”

17. IV. The protection in third countries • Lisbon Agreement: Parmigiano Reggiano registered on 1969-12-23 • FTAs of the EU with third countries including protection for GIs for foodstuffs, wines and spirits: In force: Central America (Costa Rica, El Salvador, Guatemala, Honduras, Nicaragua and Panama), Georgia, Moldova, Montenegro, Serbia, South Africa, South Korea, Switzerland, Ukraine • Registration of ‘Parmigiano Reggiano’ as GI in third countries by means of a sui generis legislation: Albania, Armenia, Azerbaijan, Belarus, India, Indonesia, Kazakhstan, Kyrgyzstan, Malaysia, Mongolia, Norway, Russia, Tajikistan, Ukraine, Uzbekistan

18. IV. The protection in third countries • Multilateral agreement are very useful, even though: - the GI protection against ‘evocation’ is not provided for in the Lisbon Agreement nor in the Geneva Act; - the enforcement of the protection may not be easy in some contracting party, because of the relevant national laws. • FTAs between the EU and third countries seem to be a very useful alternative path of protection, provided that: - a high level of protection, beyond the misleading condition, is set for GIs identifying all kinds of goods (TRIPS-Plus); - provisions concerning genericity and relationship with trademarks are compatible with TRIPS Agreement; - administrative protection is provided for!

19. IV. The protection in third countries Mexico (Lisbon Agreement) • Usurpation and imitation, even if the appellation is used in translated form (cheese made in Germany and then exported to Mexico; labeled in Mexico) • Supreme Court of Justice of Mexico, ruling 24 March 2010: art. 229 MIPL is not applicable to Designations of Origin protected in Mexico under Lisbon Agreement!

20. IV. The protection in third countries USA • Certification marks • The Consorzio del Formaggio Parmigiano-Reggiano is owner of several certification marks consisting or containing the name “PARMIGIANO REGGIANO” (the first one filed on January 17, 1992 - first use 1954 -); • Problematic issues: i) very high administrative costs; ii) prohibitive judicial costs; iii) misleading indications of origin; iv) unfair competition act within the meaning of Article 10bis of Paris Convention

21. IV. The protection in third countries The issue of genericity • CCFN home page

22. IV. The protection in third countries • In respect of GIs, forbidden misleading indication as to geographical origin of the good and unfair competition acts (art. 22 of TRIPS Agreement) A TASTE OF ITALY (WHY?) IMPORTED PARMESAN CHEESE ITALIAN FLAG (WHY?) From which geographical area does this cheese originate? Could the consumer think that it originates from the PARMIGIANO REGGIANO geographical area? Could such indications be an act of such a nature as to create confusion with PARMIGIANO REGGIANO GI?

23. IV. The protection in third countries The issue of genericity • A few, essential, certainties: - principle of territoriality; - need to prove it, on a case-by-case basis; • Important doubts: - who has to establish that a name is generic? - what are exactly the criteria to establish that a name is generic? • USPTO - Examination Guide 2-14 / Geographic Certification Marks (July 2014) “if the available evidence shows that the relevant purchasing public perceives the primary significance of a term as identifying a type or category of the relevant goods or services, without regard to the origin of the goods or services or the methods and conditions for producing them, then the term is generic …” “the burden is on the examining attorney to prove by clear evidence that a designation is generic”

24. GRAZIE MILLE! GIORGIO BOCEDI