The treatment of geographical indications in recent regional and bilateral free trade agreements

The Intellectual Property Debate: Perspectives from Law, Economics and Political Economy

Volumn , Issue , 2006, Pages 305-344

  Eugui, David Vivas ^a   Spennemann, Christoph ^b  

^a Intellectual Property   (Colombia)

^b Technology Transfer   (Switzerland)

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EID: 84881779716     PISSN: None     EISSN: None     Source Type: Book    
DOI: None     Document Type: Chapter

References (90)

1. Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (adopted in 1891).
2. Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (adopted in 1958).
3. Dwijen Rangnekar (2004), 'The socio-economics of geographical Indications', Issue paper No 8, UNCTAD/ICTSD, (hereinafter Rangnekar, 2004).
4. Stephen Sterns (2004), 'The conflict between geographical indications and trademarks', Intellectual Property Society of Australia (hereinafter 'Stern').
5. See WT/MIN(01)/DEC/W/1 of 14 November 2001.
6. See WT/MIN(01)/W/10 of 14 November 2001.
7. Doha Round Briefs - Intellectual Property, ICTSD, 2002, 2003 and 2004. See www.ictsd.org.
8. The acronym RTA has been used because under WTO law regional trade agreements include both regional and bilateral agreements.
9. WTO Secretariat and Regionalism, World Trade Organization, 2000. The total of regional and bilateral agreements notified to the WTO since 1950 were more than 250 in 2004.
10. For a TRIPS-plus definition see David Vivas-Eugui, Regional and Bilateral Agreements and a TRIPS plus World: the Free Trade Area of the Americas', QUNO/QUIAP/ICTSD, 2003 (hereinafter Vivas-Eugui).
11. Examples taken from Sergio Escudero (2001), International Protection of Geographical Indications and Developing Countries, Working Paper No. 10, South Centre, Geneva, p. 5 (hereinafter Escudero).
12. See UNCTAD-ICTSD, Resource Book on TRIPS and Development, Chapter 15 (Geographical Indications), Sections 1 and 3 (Cambridge University Press, February 2005; a previous version is available at http://www.iprsonline.org>; hereinafter UNCTAD-ICTSD Resource Book). Note that in this respect, the notion of GIs under TRIPS is wider than the notion of 'appellations of origin' as laid down in Article 2 of the 1958 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (hereinafter Lisbon agreement). Under the latter, the name of the product and the geographical name have to be identical (Escudero, p. 4).
13. Note that this is another aspect where the definition of GIs under TRIPS is broader than the notion of 'appellations of origin' under the Lisbon agreement.Appellations of origin are limited to the 'quality and characteristics' of the designated product (Article 2, Lisbon agreement). Mere reputation alone is not sufficient to confer protection.
14. UNCTAD-ICTSD Resource Book, Chapter 15, Section 3.
15. UNCTAD-ICTSD Resource Book, Chapter 15, Section 1, noting the particularity of collective trademarks: these also involve shared ownership, but other than GIs, which are available to all producers in a region, a collective trademark is typically limited to a predefined group of owners.
16. This is another aspect in which GIs differ from trademarks. The latter may be assigned or licensed to any third party; see Article 21 of the TRIPS agreement.
17. See Article 22.2 (a) TRIPS: '2. In respect of geographical indications, Members shall provide the legal means for interested parties to prevent: (a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;'
18. For more details on the different ways of protecting GIs under national laws see UNCTAD-ICTSD Resource Book, Chapter 15, Section 2.1.
19. For instance, the 'public' might be understood as comprising the general consumer with limited knowledge, or rather a more specialized group of consumers with advanced knowledge on the relevant product (UNCTAD-ICTSD Resource Book, Chapter 15, Section 3).
20. Article 10bis Paris Convention reads as follows: 'Unfair Competition (1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition. (2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition. (3) The following in particular shall be prohibited: 1. all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor; 2. false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor; 3. indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.'
21. For instance, in the case of 'Californian Chablis', consumers are aware of the non- French origin of the drink, but might nevertheless associate with that product certain characteristics typical of the famous French 'Chablis'. See Dwijen Rangnekar (2003), 'Geographical indications - a review of proposals at the TRIPS Council: extending Article 23 to products other than wines and spirits, UNCTAD-ICTSD, Issue Paper No. 4, Geneva, page 14 (hereinafter Rangnekar, 2003).
22. Article 23.1 TRIPS reads: 'Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation" or the like. [footnote omitted, emphasis added]'
23. Article 24.4 TRIPS reads: '4. Nothing in this Section shall require a Member to prevent continued and similar use of a particular geographical indication of another Member identifying wines or spirits in connection with goods or services by any of its nationals or domiciliaries who have used that geographical indication in a continuous manner with regard to the same or related goods or services in the territory of that Member either (a) for at least 10 years preceding 15 April 1994 or (b) in good faith preceding that date.'
24. For a discussion of the good faith criterion see UNCTAD-ICTSD Resource Book, Chapter 15, Section 3.
25. Article 24.5 TRIPS reads: '5. Where a trademark has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith either: (a) before the date of application of these provisions in that Member as defined in Part VI; or (b) before the geographical indication is protected in its country of origin; measures adopted to implement this Section shall not prejudice eligibility for or the validity of the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication.'
26. The term 'common law' trademark indicates that the trademark rights that are developed through customary use are not governed or derived by statutory norms. Common law trademark rights have been developed under a judicially created scheme of rights governed by common law. Registration is not required to establish common law rights in a mark. However, formal registration usually gives a trademark titleholder additional rights not available under common law.
27. Article 24.6 reads as follows: '6. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to goods or services for which the relevant indication is identical with the term customary in common language as the common name for such goods or services in the territory of that Member. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in the territory of that Member as of the date of entry into force of the WTO agreement.'
28. Rangnekar, 2003, p. 33, in this context refers to former GIs such as 'Arabica coffee', 'Indiarubber', 'chinaware', 'Cheddar cheese', and 'kiwifruit'.
29. For a detailed analysis of the ambiguous language of the second sentence, see UNCTAD-ICTSD Resource Book, Chapter 15, Section 3.
30. Article 24.8 TRIPS addresses the situation where a personal name, which is used for business purposes, is also a GI. Article 24.9 TRIPS stipulates that GIs lacking protection in their country of origin do not need to be protected under TRIPS.
31. Rangnekar, 2003, p. 11, refers to a total of over 6000 protected European indications. Most of those concern wines and spirits; according to F. Vital (1999), 'Protection of geographical indications: the approach of the European Union', in: Symposium on the International Protection of Geographical Indications, Somerset West, Cape Province, South Africa, 1-2 September, 1999, World Intellectual Property Organization, Geneva 2000, (hereinafter Vital), p. 53, there were 518 European denominations registered in the area of agricultural products and foodstuffs as of 1 August 1999.
32. See Council Regulation (EEC) No. 2081/92 of 14 July 1992 on the protection of geographical indications of origin for agricultural products and foodstuffs and Council Regulation (EC) No. 1493/1999 of 17 May 1999 on the common organization of the market in wine. See UNCTAD-ICTSD Resource Book, Chapter 15, Sections 2.1 and 3.
33. The protection offered under Article 13 of Regulation 2081/92 is comparable to the advanced protection for wines and spirits GIs under Article 23 TRIPS, see above.
34. Vital, p. 52, refers as example to the French cheese 'Comté', which is produced exclusively from a particular cow breed, which in turn feeds only on a delimited area in the French Jura mountains. In addition, the specific climate conditions and the particular producers' skills are said to confer on this cheese its unique characteristics among other cheeses.
35. Vital, p. 53, refers as example to the Spanish meat product 'Sobrasada de Mallorca', which is manufactured on the island of Mallorca. However, the pigs used in the production do not necessarily originate in Mallorca.
36. While the EU considers this strategy a shift from protectionism to competition ('compete internationally on quality rather than quantity', see 'Why do Geographical Indications matter to us?', available at the EU website at http://europa.eu.int/comm/trade/issues/sectoral/intell_property/argu_en.htm), others regard this as just another form of protectionism (see S. Laing, 'EU on GIs: Free Trade or Protectionism?', Trade Law Centre for Southern Africa (tralac) Trade Briefs 2003, available at http://www.tralac.org/scripts/content.php?id=1999).
37. See 'Why do Geographical Indications matter to us?', available at the EU website at http://europa.eu.int/comm/trade/issues/sectoral/intell_property/argu_en.htm.
38. Agreement on Trade in Wines, available at http://europa.eu.int/comm/trade/issues/bilateral/countries/chile/docs/euchlagr_x.pdf.
39. Agreement between Australia and the European Community on Trade in Wine, available at http://europa.eu.int/comm/trade/issues/bilateral/countries/australia/docs/wine_agr.pdf.
40. Note that this formula was also part of an EC proposal with respect to the protection of geographical indications during the Uruguay Round of Multilateral Trade Negotiations. See UNCTAD-ICTSD Resource Book, Chapter 15, Section 2.1.
41. Agreement on Trade in Spirit Drinks and Aromatised Drinks, available at http://europa.eu.int/comm/trade/issues/bilateral/countries/chile/docs/euchlagr_xii.pdf.
42. Agreement between the European Community and the Republic of South Africa on trade in wine, see http://europa.eu.int/eur-lex/pri/en/oj/dat/2002/l_028/l_ 02820020130en00040105.pdf. Agreement between the European Community and the Republic of South Africa on trade in spirits, see http://europa.eu.int/eur-lex/pri/en/oj/dat/2002/l_028/l_02820020130en01130125.pdf.
43. Agreement between the European Community and the United Mexican States on the mutual recognition and protection of designations for spirit drinks, available at http://europa.eu.int/smartapi/cgi/sga_doc?smartapi!celexapi!prod!CELEXnumdoc&lg=en&numdoc=21997A0611(01)&model=guichett.
44. See for instance Article 5.1 of the EU-Chile Agreement on Trade in Wines.
45. See for instance Article 4.1 of the EU-Mexico Agreement on Spirit Drinks, according to which in Mexico, 'the protected Community [i.e. EC] names: - may not be used otherwise than under the conditions laid down in the laws and regulations of the Community.
46. See Council Regulation (EC) No 1493/1999 of 17 May 1999 on the common organization of the market for wine, OJ L 179/1, Annex VII, lit. F, paras. 1 and 2.
47. See, for instance, Article 5.1 of the EU-South Africa agreement on trade in spirits and Article 4.3 of the EU-Mexico agreement.
48. See Article 5.1 of the EU-Chile agreement on trade in wines. The terms 'mutual' and 'reciprocal'may be used interchangeably, as is made clear by the EU-Mexico agreement, which in its title refers to 'mutual recognition and protection' and then uses the term 'reciprocal protection' in its substantive part (Article 4.3).
49. Article 5.1 of the EU-Chile agreement on trade in wines.
50. On the exclusion of the Article 24 TRIPS exceptions through the bilateral agreements, see also in the next, separate section.
51. The EU-Mexico agreement uses different language in this respect. It provides in Article 3: 'The following designations are protected: (a) as regards spirit drinks originating in the Community, the designations listed in Annex I; (b) as regards spirit drinks originating in the United Mexican States, the designations listed in Annex II.' The terms 'are protected' imply that domestic authorities have no discretion to refuse protection. Thus, the accorded protection is equally automatic, like under the other agreements.
52. For the trademark exception, see the separate section, below. As noted in the introduction, the TRIPS agreement in Article 24.1 authorizes such a TRIPS-plus approach in bilateral or multilateral agreements: 'The provisions of paragraphs 4 through 8 below [i.e. the provisions on exceptions] shall not be used by a Member to refuse to conduct negotiations or to conclude bilateral or multilateral agreements. In the context of such negotiations, Members shall be willing to consider the continued applicability of these provisions to individual geographical indications whose use was the subject of such negotiations.'
53. See Article 4.4 of the EU-Mexico agreement on the mutual recognition and protection of designations for spirit drinks: 'The Contracting Parties will not deny the protection provided for by this Article in the circumstances specified in paragraphs 4, 5, 6 and 7 of Article 24 of the Agreement on Trade-Related Aspects of Intellectual Property Rights.'
54. See Article 30.3 of the Vienna Convention on the Law of Treaties: 'When all the parties to the earlier treaty are parties also to the later treaty but the earlier treaty is not terminated or suspended in operation under article 59, the earlier treaty applies only to the extent that its provisions are compatible with those of the latter treaty.' The lack of reference in the bilateral agreements to any exceptions means that those exceptions have not become part of the Parties' treaty rights.
55. See Susan Laing, 'More port anyone?', available at http://www.derebus.org.za/archives/2003Jul/articles/port.htm (hereinafter Laing, More port anyone?).
56. See Laing, More port anyone? page 4.
57. See Articles 6 (iii) and 7 of the EU-South Africa agreement on trade in spirits.
58. See, for example, Article 25 of the EU-Australia agreement.
59. Negotiations on outstanding issues of the EU-Australia agreement have resumed in April 2004. See http://www.dfat.gov.au/geo/european_union/review_04.html.
60. See for instance Article 5, paras 4 and 5 of the EU - Chile Agreement on Trade in Spirit Drinks and Aromatised Drinks. The relevant TRIPS provisions are Articles 23.3 and 22.4.
61. See Article 7 of both agreements.
62. See Article 10.4 of the EU-Chile agreement on trade in wine.
63. See lists A and B in Appendix III to the agreement.
64. See lists A and B in Appendix IV to the agreement.
65. See Commission Regulation (EC) No 753/2002 of 29 April 2002 laying down certain rules for applying Council Regulation (EC) No 1493/1999 as regards the description, designation, presentation and protection of certain wine sector products, OJ L 118, pages 1-54 (hereinafter wine labelling regulation). For more information on this regulation, see below.
66. See 'EU amends wine labelling rules: "traditional expressions" can be used by third countries', available at: http://www.delaus.cec.eu.int/pressandinformation/winelabeling.pdf.
67. Vivas-Eugui, 2003.
68. Beresford Lynne (1999), 'The protection of geographical indications in the United States of America', Symposium on the International Protection of Geographical Indications, WIPO, (hereinafter 'Beresford').
69. Institut National des Appellations v Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998). See http://www.uspto.gov/web/offices/dcom/olia/globalip/geographicalindication.htm.
70. Beresford, 1999.
71. For a detailed analysis of this provision, see UNCTAD-ICTSD Resource Book, Chapter 2 ('Nature and Scope of Obligations').
72. See WT/DS174/21 and WT/DS290/19 of 24 February 2004, Constitution of the Panel Established at the Requests of the United States and Australia (hereinafter 'EC - Protection of Trademarks and GIs).
73. US Mission to the United Nations in Geneva. Press release: 'United States wins WTO case against EU over food names', 12 December 2004. Hereinafter 'US mission press release'.
74. In the case of the USA-Chile agreement a dual approach was taken. In this case the United States will protect GIs through trademarks and Chile through its own GI system, which is closer to the 'appellation of origin' model. For a precise analysis see Pedro Roffe, 'Regional and bilateral Agreements and a TRIPS-plus world: The Chile-USA Free Trade Agreement, QUNO/QUIAP. 2004. Hereinafter Roffe, 2004.
75. The phrase 'Single colours' is not mentioned in the FTA between the USA and Chile.
76. Roffe, 2004.
77. In this case we refer to the USA-Chile, USA-Morocco and USA-Australia agreements.
78. Article 6bis of the Paris Convention provides: '(1)The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a
79. Roffe, 2004.
80. In the case of the USA-Australia agreement there was no need due to the fact that this obligation is already part of its trademark principles.
81. See Stern, 2004.
82. See WT/DS174/21 and WT/DS290/19 of 24 February 2004, Constitution of the Panel Established at the Requests of the United States and Australia (hereinafter 'EC - Protection of Trademarks and GIs')'.
83. See 'Interim Report Out on GIs', Bridges November 2004, page 7, ICTSD, 2004 (available at http://www.ictsd.org/monthly/bridges/BRIDGES8-10.pdf).
84. For more details on this EU legislation, see UNCTAD-ICTSD Resource Book, Chapter 15, Section 2.
85. Hereinafter US Mission press release.
86. Roffe, 2004.
87. For a comparison between GIs and certification trademarks models, see Vivas, 2000 and Rangnekar 2004. David Vivas-Eugui, 'Negotiations on geographical indications in the TRIPs Council and their effect on the WTO agricultural negotiations: Implications for developing countries and the case of Venezuela', UNCTAD, 2000, Rangnekar, 2004.
88. See Roffe, 2004.
89. Andean Decision 486 on Industrial Property, 14 September 2000.
90. Vivas-Eugui, 2000.