Global Legislative Reform Could Unlock Benefits Of GIs, Advocates Say

TERUEL, SPAIN – Geographical indications (GIs) are in the interest of both producers and consumers as they provide a tool for sustainable economic growth and offer a guarantee of quality, concluded a high-level meeting of GI proponents last week. However, with shortcomings in the international framework and a lack of consensus on GIs, countries have been trying to find legal ways to address the issue.

The Organisation for an International Geographical Indications Network (OriGIn) held its biennial general assembly on 25-26 June. The Geneva-based organisation, founded in June 2003, promotes GIs, which are place names used to identify products with particular characteristics, originating from a particular place, and carries out advocacy campaigns aimed at policymakers and international organisations.

“Existing multilateral rules on GIs … have hitherto proved not to be fit to prevent abuse and misleading marketing techniques, which unduly reduce producers’ market shares and tarnish the reputation of GIs,” said the declaration from the Teruel meeting. “Without reforming the major international instruments regulating the field, the very GI concept will be at stake.”

The meeting was attended by about 150 participants, mostly from governments and producers.

GIs have been at the heart of a debate between the World Trade Organisation (WTO) members in recent years, which may be at a critical turning point. [IPW, Geographical Indications, 12 June 2009]

GIs are included in the WTO Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, in Articles 22 and 23.

Article 22 covers all goods that can benefit from a GI and Article 23 describes additional protection for GIs for wines and spirits. Some countries are asking that this additional protection for GIs be extended to all products.

Proponents also are focused on ensuring that an international register of wines and spirits GIs is created, as mandated by WTO members in the current round of trade negotiations launched in Doha, Qatar in 2001.

The OriGIn members at the meeting adopted the “Teruel Declaration,” which reaffirmed their engagement in the defence of GIs at the international level; at the WTO during the upcoming discussions at the November WTO ministerial; but also at WIPO by supporting the potential revision of its agreement on GIs. Moreover, they will be advocating the inclusion of GIs in the scope of application of the Agreement on Counterfeiting and Trade-Related Aspects (ACTA).

GIs and Trademarks

Discussions around GI issues have been going on for years at the WTO. In the meantime, the interest in GIs is growing, according to OriGIn. Some countries are beginning to amend their national legislation, and trade agreements between countries are integrating the notion of GIs, they said.

When countries do not have legislation on GIs, producers seek to trademark their products. This is the case in the United States, according to a lawyer from Dewey & LeBoeuf, a US law firm. In that country, the producer has a choice between a trademark, a certification mark, or a collective mark. “In the US, the producer is on his own,” said Patrick Kole from the Idaho Potato Commission.

However, if trademarks and GIs are intellectual property rights, then they are different in that trademarks are an exclusive right with a distinctive owner, and GIs are a collective right. According to Stefano Fanti, director of the Voluntary Consortium of Parma Ham in Italy, trademarks and GIs are complementary as the first focuses on the owner and the second relates to the specific origin of a product and the particularity that this precise location gives to the product.

The variation in national GI legal instruments and the absence of a single, “truly international” instrument to facilitate GI recognition and protection makes it difficult to rely only on GI protection, he said. When a geographical name is involved, trademark offices should register only collective or certification marks and refuse any individual trademarks, he said.

Also, he said, like trademarks, GIs should benefit from the World Intellectual Property Organization Uniform Domain Name Dispute Resolution Policy.

The only international registration of GIs is in the 1958 Lisbon System for the International Registration of Appellations of Origin, said Octavio Espinosa of WIPO, which administers the register.

There are 26 members of this agreement and 887 appellations of origin (AO) have been registered. Users can obtain a registration with legal effects in member countries. France owns 564 of those appellations, Czechoslovakia 108 and Bulgaria 50, for example.

An AO is a geographical indication with stricter specifications. According to participants at the event, a GI could allow, for example, producers to import a product from another place than the one designated by the GI but process the product at the place specified in the GI.

Under the Lisbon agreement, any sort of products may be designated by an AO, Espinosa said, adding that a revision of the agreement might be in order, considering the evolving needs of the users of the system and that a working group on the subject had its first session in March 2009. [IPW, Geographical Indications, 2 October 2008]

Banking on Untapped Benefits

Cécé Kpohomou, from the African Intellectual Property Organization (OAPI), said there was no tradition of GIs in member states of OAPI in spite of significant potential. Products such as fruits, vegetables, coffee or handcrafted goods like the bogolan, a special fabric dying technique “which has been copied many times by many countries,” could apply, he said.

GIs allow the valorisation of a heritage, an ancestral know-how. OAPI has an ongoing project in collaboration with WIPO and the French National Industrial Property Institute among others, in four pilot countries, to study the possibility of GIs for products such as white pepper from Penja, white honey from Oku and coffee of Ziama.

Producers and associations should actively lobby their own parliaments, said Felix Addor, deputy director general of the Swiss Federal Institute of Intellectual Property. “OriGIn cannot talk to your governments.” He advocated for complementary approaches for international protection of GIs, in particular, in bilateral and plurilateral GI agreements.

There is a lot of abuse of country names as they do not benefit from real protection, Addor said, adding that Jamaica had just submitted a proposal at WIPO on the protection of country names under the Paris Convention for the Protection of Industrial Property.

Negotiations of bilateral GI agreements should include the protection of GIs for all products, an exchange mechanism of mutual recognition and automatic protection, and the protection should be equivalent to TRIPS Article 23 on wine and spirits, he said.

GI in TRIPS is the first collective right that is accepted, he told Intellectual Property Watch. Cases of usurpation are numerous and a sui generis protection is the cheapest, he said: “a geographical name can only be used by somebody who offers a product coming from a specific location.” He also told Intellectual Property Watch that GIs could sustain biodiversity and encourage sustainability, but they needed standards.

Small producers were also present at the event, such as Zoubida Charrouf, general secretary of the Moroccan association for the geographical indication on argan oil and Lucie Cadieux representing the producers of Charlevoix lamb in Quebec. Both have advocated for years to obtain a GI.

Charrouf said the GI on argan oil, which is the first in Africa, will help the 130 women’s cooperatives her association helped create to generate more profit and create more sustainability. The new GI will protect argan oil on the national territory. The next step will be to seek European recognition, she said. The GI was decided upon by the government with special legislation.

In Quebec, six producers own the first GI in Canada thanks to a provincial law, said Cadieux. Sixty percent of the farms in the region have disappeared in the last 25 years and the prospect of protection of the local lamb production helped to revivify the Charlevoix territory, she said. The newly attributed GI is a collective right that includes the whole upstream production channel, guarantees a better income for producers and ensures quality for consumers as the specifications, which were drafted by the producers and revised by the state, are the conditions of the GI attribution, Cadieux said.

A Fast Buck or Slow Food

However, some, like Piero Sardo, president of the Slow Food Foundation for Biodiversity, think that GIs belong to an institutional sphere which leaves the small local producers unprotected. He added that the GI specifications were often not strict enough and sometimes responded to pressure groups’ demands. “Real products of origin are still out of the system,” he said.

Although globally in favour of GIs, Sardo said that stricter regulations on GIs was needed to ensure that they describe a “precise and historical geographical area” and favour small farmers for whom the administrative process and the necessary federation to get a GI are too much of a burden. “Today,” he said, “there is a lot of confusion.”