Strong Application Of GIs May Be Detrimental To Generic Products, Speakers Say

The protection of geographical indications could impede the ability of long-term producers to continue using what they consider as being generic names, according to several speakers at an event last month at the World Intellectual Property Organization. The discussion is also ongoing at the World Trade Organization in the context of barriers to trade. The side event focused on the case of danbo cheese, a Danish cheese manufactured in several countries, particularly in Uruguay.

On the side of the 37th session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), an event was organised by the Consortium of Common Food Names (CCFN) on 29 March. The consortium describes itself on its website as “an international initiative to preserve the right to use generic food names.”

According to Washington, DC-based CCFN, common names that are not restricted in the United States and could be at risk in certain markets include camembert, cheddar, gouda, and ricotta.

Danbo GI Protection Against Codex Alimentarius

Juan Barboza, from the Uruguayan mission in Geneva, presented the case of the danbo cheese, and started by underlining the importance of the dairy sector for the small country. Uruguay is dependent on its exports of agricultural products, he explained.

Uruguay exports cheese to many countries, he said, such as Angola, Brazil, Chile, China, Colombia, the United States, Mexico, Paraguay, Peru, Russia, Singapore, and Venezuela. One of the star cheeses of Uruguay is danbo, a semi-hard cheese.

In 2012, the European Commission published an application from Denmark for danbo cheese, which is originally from that country. The application says that the term danbo is a combination of the two names “Dan” and “Bo,” dan being the Nordic derivative of the popular name “Danerne” (the Danes), and bo meaning “the resident.” The name Danbo was given to the cheese “because all Danes consider it to be the most characteristic Danish cheese of all,” the application said.

Uruguay opposed the Danish application on the grounds that danbo is listed as a product in the Codex Alimentarius, which is a collection of standards, guidelines and codes of practice, adopted by the Codex Alimentarius Commission. The commission, according to the Codex Alimentarius website, “is the central part of the Joint FAO/WHO Food Standards Programme,” and was established by the two agencies “to protect consumer health and promote fair practices in food.” The first meeting of the codex was held in 1963.

The Codex Alimentarius says the name danbo may be applied provided that the product is in conformity with the General Standard for the Labelling of Prepackaged Foods. “Where customary in the country of retail sale, alternative spelling may be used,” it says.

According to Barboza, the Danish application runs counter to the codex norms. At the 30th meeting of the codex in 2007, “all members agreed that danbo is a generic cheese produced in several countries of the world,” he said.

He added that providing protection to the name for the sole use of Denmark-produced danbo would violate the codex, and the Uruguay Round at the World Trade Organization.

Immigrants to other countries, such as Uruguay, brought their products with them, and “we cannot ignore that reality,” he said, adding that the products came with their names, which in turn “became part of our culture, our language.” It would be very difficult now to change the name danbo after 150 years, as it is deeply rooted in society, the delegate said. There is a need to strike a fair balance between GI protection and the legitimate trade of producers who have been producing the items for a long time, he said.

Discussions on Danbo at the WTO

Minutes of recent meetings of the WTO Committee on Technical Barriers to Trade (TBT) show that the issue of danbo has been discussed in the committee. According to the minutes of the 15-16 June 2016 [pdf] meeting, the US delegation remarked on danbo being part of the Codex Alimentarius production standards and said those standards had been adopted in order to ensure the quality and uniformity of the cheese in the various countries producing it.

The US acknowledged that the application for a GI on danbo was still pending in the EU, but warned that should the GI registration be granted, this would result in the prohibition within the EU of the name danbo for any cheese produced outside of Denmark.

The US in TBT wanted to know if the EU would seek to use international treaties to prohibit danbo being sold in other markets from using the Codex-standardised terms on the products’ labels. The US had the same concerns and question about a second pending application on havarti cheese, also from Denmark. The US also asked if the EU would consider “less trade-restrictive means” of implementing regulations pertaining to both cheeses, such as amending the applications so that the protection only covers “Danish danbo” or “Danish havarti.”

At the time of the meeting, according to the minutes, the EU could not give an update on both GI applications. Uruguay also asked for an update.

The minutes of the TBT meeting of 10-11 November 2016 [pdf] also reports a discussion on danbo and havarti, with the US reiterating its arguments and questions to the EU. The EU answered that the procedure for granting of protection to the terms danbo and havarti as GIs in the EU had not yet been finalised.

Need of Transparency, Clarity for Third Parties

Separately, Heidi Lindner, lawyer at Arochi & Lindner in Mexico, another speaker at the side event, said Mexico is a member of the Lisbon agreement but the country has no opposition proceedings against the recognition of foreign appellations of origins, no grounds for denial or grounds for cancellation.

The Lisbon agreement provides the possibility for members to refuse the protection of an appellation of origin as long as the notification is made to WIPO within a period of one year from the receipt of the notification of registration.

According to Lindner, it is difficult for third parties to be informed of the start of the one year period. She also said that there is a lack of a mechanism for the timely participation of affected third parties, a lack of transparency, and a lack of clear grounds for denial or international GI protection.

She added that there is a need for a balanced and transparent system to strengthen the legitimacy of the system and the rights of the GI holders, as well as safeguarding the use of common food names for the benefit of producers, distributors, and consumers.

Meat, Dairy Multinationals Support Generic Names

William Westman, senior vice president, international affairs, for the North American Meat Institute (NAMI), said world meat production is not keeping up with the growing demand, in particular from developing countries in Asia, and NAMI supports the unrestricted use of common food names, such as bologna, chorizo, and salami. NAMI supports GIs, but they must be in their original name and original language, such as Mortadella di Bologna, he argued.

The impact of enforcing the protection of GIs as it is requested by the EU could mean a high cost for rebranding, marketing, and labelling, and would erode the brands’ reputation and confuse the public, he said. For example, the protection of the name bologna could damage brands such as Oscar Mayer bologna.

David Richmond from Fonterra, a New Zealand multinational dairy company operating in over 100 countries, said cows outnumber people in New Zealand (5 million cows and 4.5 million people). Very little of the 20 billion litres of milk produced by the company each year is consumed domestically, he said. Most of the production is exported as dairy products, using common names, such as shredded mozzarella.

Richmond said “well constructed GIs have a role” as an IP tool to protect truly specialised products that possess a strong tie to a single region but Fonterra is very supportive of the Consortium for Common Food Names.

 

Image Credits: Cheese.com