Lines Of Geographical Indications Debate Begin To Take Shape In The United States

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The United States has historically demonstrated little interest for geographical indications but recent developments seem to indicate that actors are taking stands on the issue.

A recent legal decision by the United States Patent and Trademark Office was seen as a step towards better protection of geographical indications in the United States, according to a GI advocacy group, while a newly created consortium intends to preserve the right to use generic food names and limit the reach of GIs.

Geographical indications are place names used to identify products with characteristics from particular places. Common examples are champagne or tequila, and products other than food and drink are included.

The USPTO Trademark Trial and Appeal Board issued a ruling on 30 January in a case involving Swiss Watch International, which is a non-Swiss company, and the Federation of the Swiss Watch Industry. The latter owns the mark Swiss and Swiss Made, “both in standard character form and both for certifying geographic origin of goods identified as ‘horological and chronometric instruments, namely, watches, clocks and their component parts and fittings thereof’,” according to the USPTO ruling.

US-based Swiss Watch International asked that registrations for both certification marks be cancelled on the grounds that it owned a registration for the mark Swiss Watch International, had applied to register the mark Swiss Legend, and that the USPTO had refused registration on “the basis of … likelihood of confusion” with the marks owned by the Federation of the Swiss Watch Industry. Swiss Watch International alleged that the Federation of the Swiss Watch Industry had “intentionally misstated matters in the applications that resulted in its registrations or failed to state that it is not a government, a department of a government, or a body operating with governmental authorization” and that the respondent ” has no legitimate control of the use of the terms Swiss or Swiss made.”

The term Swiss and Swiss Made, have become “generic for horological and chronometric instruments,” they added.

The Board dismissed all requests from Swiss Watch International, in particular because it found that the Federation of the Swiss Watch Industry had “made adequate efforts to control the unauthorized use of its marks.” It also found that the “petitioner has not proved that SWISS and SWISS MADE have lost their significance as indicators of geographic source.”

“The evidence shows that the geographic connection between watches and Switzerland is very strong, and that when the terms SWISS and SWISS MADE are used in connection with watches, consumers will understand that they signify the geographic origin of the goods, and will not regard the marks as generic terms,” the Board said.

Swiss Watch International appealed the Board’s decision on 28 March.

The organisation for an international Geographical Indications network (oriGIn), a group advocating for more effective legal protection of GIs, called the US decision a positive sign of willingness to protect GIs in the US. The organisation was established in 2003 and represents 350 associations of producers from some 40 countries, according to their website.

US Cheese, Meat, Wine Producers to Defend “Common Names”

Separately, oriGIn reported in its March internal newsletter that a new association was created in the United States on 26 March that appears to be aimed at controlling protection of GIs in a way that does not interfere with current US use of common products whose names may have originated in certain regions. But the group may be working in a contrary way to European interests in GIs.

The Consortium for Common Food Names, which describes itself as an international initiative to preserve the right to use generic food names, states in its website that although it supports “proper geographical indications, … it opposes any attempt to monopolize common (generic) names that have become part of the public domain.”

The European Union, the consortium says, “is pursuing a multi-pronged international effort on common names,” and in the context of “potential talks with the United States” is pressing to include GIs provisions that “could bring naming restrictions to the US market.”

According to the consortium, “common names” such as “camembert,” “cheddar,” gorgonzola,” gruyère,” “prosciutto,” “ricotta,” or “salami,” are under “direct risk for monopolization attempts.”

The consortium’s members include 11 “supporters” among which are the US associations such as the US Dairy Export Council, the American Meat Institute, the American Cheese Society, the Wine Institute, and Costa Rican and Argentinean agriculture associations.

The consortium advocates a “fair model” requiring, for example, that a GI “includes the name of the region or sub-region where the product is produced, and a second term that describes the product, such as “Camembert de Normandie,” or “Idaho Potatoes.” They also propose to protect “the term only in its original language and in transliteration, like “Parmigiano Reggiano” instead of parmesan.

OriGIn recently started a project in September 2011 of online compilation of all GIs protected globally (IPW, Trademarks/ Geographical Indications/ Domains, 30 January 2012).

The establishment of an international register of GIs is still under discussion in special sessions of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). EU countries have been strong proponents of GIs while the United States has long stated its preference to use the trademark system and certifications marks to protect geographical indications, as explained by the USPTO [pdf]. Substantial progress on the GI register has yet to be made.

“No one should try to claim exclusive rights to names that long ago entered into customary common usage around the world,” the consortium said. This could undermine “the marketability of foods produced outside the protected region, but also impairs the value of tariff concessions that were granted in the WTO and in bilateral and regional free trade agreements.”

A major issue for the consortium seems to be a free trade agreement negotiated between the EU and Korea, which includes a GI provision. In a 13 April story published in Cheese Market News, Jaime Castaneda, executive director of the consortium, said, “when the U.S.- South Korea free trade agreement (FTA) went into effect in March, it opened many doors to U.S. cheese suppliers. A few however remained shut – not from latent protectionist fears of the Koreans, as we might have originally feared, but the strategic maneuvering of the European Commission, which is in charge of policy and negotiating agreements for the European Union (EU).”

As a result, he said, “U.S. suppliers will no longer be able to sell asiago, feta, fontina, or gorgonzola in Korea.”

The EU-Korea FTA [pdf] contains an annex (numbered 10-A) that lists GIs “for agricultural products and foodstuffs” giving the names to be protected presented by country. Some of them include the name of the sub-region, such as “Camembert de Normandie,” and some of them, including asiago, fontina, or gorgonzola (Italy) or feta (Greece) appear as such in the list.

New US Association Hopes to Attract Products

A separate non-governmental organisation to promote and protect GIs in the US also has been set up recently. According to oriGIn, the American Origin Product Association (AOPA), “championed” by Elizabeth Barham of the University of Arkansas, includes representatives of Kona coffee (Hawaii), and Idaho potatoes, both members of oriGIn, and Missouri pecans. Many other US products are considering joining, according to oriGIn, such as Vermont maple syrup.

Catherine Saez may be reached at info@ip-watch.ch.

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