Diapositiva 1

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Diapositiva 1

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Title: Diapositiva 1

1
Elio De Tullio November 24, 2005 Geographical
Wine Protection In EU market case law and
strategies of fight against agro-piracy
2
AGENDA

Analysis of the market / Brief overall
considerations
Origin and methods of protection of Geographical
Indications (GI)
International Law Agreement on Trade related
aspects of Intellectual Property Rights (the
TRIPs Agreement) as result of Uruguay Round in
connection with protection of Geographical
Indications
Present situation on GI in connection with
relationship EU/USA (Doha Development Agenda and
following developments)
Tocai vs. Tocaj Case (2005)
Conclusions why it is so difficult to find an
effective and ultimate ruling on international
basis

3
Mondovino
4
Wine Luxury good?

It is not agricultural good anymore
is strictly connected to lifestyle / status
slow-food
organic wine new borders?

5
New means of exploitation

Life-style - merchandising
Licensing
Territorial marketing
Product placement
Entertainment marketing
HOW?

6
Registered trademarks

Now bottles of wine are chosen depending on the
producer (importance of the brand)
Fantasy names acquired distinctiveness
Institutional brand (wine producer) but also
registered labels
Great opportunity for small-scale wineries

7
World Wide Web Great Opportunity

E-marketplaces Global Wine Spirits (Canada),
Beverage On Line (USA), Uvine (UK), Pro-Wine e
Vertical Wine (FR)
Web Site worldwide exposition of trademarks and
insignias (sunrise period domain .eu)
Requirements verification of absence of
conflicts with interested holder of previous
trademarks/applications (preliminary search)

8
New types of trademarks

Olfactory trademarks
Taste trademarks
Color trademarks
Legal requirement capability to be graphically
represented

9
PACKAGING

The BOTTLE of wine can be registered as
three-dimensional trademark if consists
exclusively of
(i) the shape which results from the nature of
the goods themselves or
(ii) the shape of goods which is necessary to
obtain a technical result or
(iii) the shape which gives substantial value to
the goods

10
Commercial trends

Wine Traditional European Product
For centuries production outside EU is limited to
some few countries
In the last years the European production
decreased a lot

11
Analysis of the market

WORLD WINE PRODUCTION BY COUNTRY (HECTOLITERS
000)
AVERAGE 1997 2000
2. ITALY 53,289 33. SLOVAKIA 511
PER CAPITA WINE CONSUMPTION BY COUNTRY (LITERS
P.C.)
AVERAGE 1997 2000
3. ITALY 54,25 32. SLOVAKIA 8,60

12
STATISTICS 2005

January-July 2005
The updates indicate growth of 7 on an basis,
totaling 1 million 157 thousand hectoliters. In
terms of value, imports of Italian wines came to
583 million dollars (13.6).
In the same period, US imports of Australian
wines came to 1 million 140 thousand hectoliters
(4 on an annual basis) worth 456 million
dollars (2).
Purchases of French wines at just under 500
thousand hectoliters (1.5) worth 528 million
dollars, up by 2.6 on an annual basis.
In total, US wine imports in the first 7 months
of the year came to 3.8 million hectoliters
(8.3), worth 1.9 billion dollars (9).
Data published by the US Department of Trade

13
WHY PROTECT GI or DO?

Peculiar category of goods
search goods (quality verifiable before
purchasing)
i.e. price or color of wine
experience goods (quality verifiable after use)
i.e. taste or smell of wine
credence goods (not verifiable qualities)
i.e. provenience of vines and wine-making
process

14
Asymmetric Information

A not correct information of consumer about
qualities of the product involves that the
quality (but more expensive) product will be
very soon out from the market as consequence of
the lack of information

15
How to protect IG and DO

Policy of protection of competition
(in order to avoid dilution or deception)
Protection of commercial trademarks
Systems of registration on national and
international level

16
Main differences

Geographical Indications
Collective ownership (used by all producers of a
certain area)
No assignment or transfer
No expiring date

Trademarks
No geographical names inside
Individual ownership and holder ship
can be assigned and transfer
expiring date for validity (10 years) and use (5
years)

17
Council Regulation 40/94

Absolute grounds of refusal
(j) trade marks for wines which contain or
consist of a geographical indication identifying
wines or for spirits which contain or consist of
a geographical indication identifying spirits
with respect to such wines or spirits not having
that origin
(k) trade marks which contain or consist of a
designation of origin or a geographical
indication registered in accordance with
Regulation (EEC) No 2081/92 when they correspond
to one of the situations covered by Article 13 of
the said Regulation and regarding the same type
of product, on condition that the application for
registration of the trade mark has been submitted
after the date of filing with the Commission of
the application for registration of the
designation of origin or geographical indication

18
Art. 13 of Council Regulation n. 2081/92

Registered names (POD PGI) shall be protected
against
(a) any direct or indirect commercial use of a
name registered in respect of products not
covered by the registration in so far as those
products are comparable to the products
registered under that name or insofar as using
the name exploits the reputation of the protected
name
(b) any misuse, imitation or evocation, even if
the true origin of the product is indicated or if
the protected name is translated or accompanied
by an expression such as 'style, 'type,
'method, 'as produced in, 'imitation or
similar
(c) any other false or misleading indication as
to the provenance, origin, nature or essential
qualities of the product, on the inner or outer
packaging, advertising material or documents
relating to the product concerned, and the
packing of the product in a container liable to
convey a false impression as to its origin
(d) any other practice liable to mislead the
public as to the true origin of the product.

19
Art. 13 of Council Regulation n. 2081/92

Where a registered name contains within it the
name of an agricultural product or foodstuff
which is considered generic, the use of that
generic name on the appropriate agricultural
product or foodstuff shall not be considered to
be contrary to (a) or (b) in the first
subparagraph.
2. However, Member States may maintain national
measures authorizing the use of the expressions
referred to in paragraph 1 (b) for a period of
not more than five years after the date of
publication of this Regulation, provided that
- the products have been marketed legally using
such expressions for at least five years before
the date of publication of this Regulation
- the labeling clearly indicates the true origin
of the product.3. Protected names may not
become generic (to avoid dilution)

20
Protection of Geographical Indications
21
Art. 22 TRIPS
22
Additional Protection for Geographical
Indications for Wines and Spirits

Art. 23 of the TRIPs Agreement
1. 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.
3. In the case of homonymous geographical
indications for wines, protection shall be
accorded to each indication. Each Member shall
determine the practical conditions under which
the homonymous indications in question will be
differentiated from each other, taking into
account the need to ensure equitable treatment of
the producers concerned and that consumers are
not misled.

23
Art. 23 of the TRIPs

2. The registration of a trademark for wines
which contains or consists of a geographical
indication identifying wines or for spirits which
contains or consists of a geographical indication
identifying spirits shall be refused or
invalidated with respect to such wines or spirits
not having this origin.
4. In order to facilitate the protection of
geographical indications for wines, negotiations
shall be undertaken in the Council for TRIPS
concerning the establishment of a multilateral
system of notification and registration of
geographical indications for wines eligible for
protection in those Members participating in the
system.

24
International Negotiations Exceptions

Art. 24 of the TRIPs Agreement
1. Members agree to enter into negotiations aimed
at increasing the protection of individual
geographical indications under Article 23.
3. In implementing this Section, a Member shall
not diminish the protection of geographical
indications that existed in that Member
immediately prior to the date of entry into force
of the WTO Agreement.

25
International Negotiations Exceptions

Art. 24 of the TRIPs Agreement
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.
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 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.

26
TOCAI vs TOCAJ

Tocai friulano or Tocai italico is a vine
variety traditionally grown in the region of
Friuli-Venezia Giulia (Italy) and used in the
production of white wines.
In 1993, the European Community and the Republic
of Hungary concluded an agreement on the
reciprocal protection and control of wine names.
In order to protect the Hungarian geographical
indication Tokaj, the agreement prohibited the
use of the term Tocai to describe the
abovementioned Italian wines at the end of a
transitional period expiring on 31 March 2007.

27
TOCAI vs TOCAJ

In 2002, the autonomous region of Friuli-Venezia
Giulia and the Regional Agency for Rural
Development asked the Tribunal Amministrativo
Regionale (TAR) Lazio (Regional Administrative
Court) to annul the national legislation
implementing the prohibition provided for by the
agreement. In that context, the Italian court
made a reference to the Court of Justice of the
European Communities for a preliminary ruling.
The Court notes, first, that, on the date on
which the EC-Hungary Agreement on wines was
concluded, the names Tocai friulano and Tocai
italico did not constitute a geographical
indication within the meaning of the EC-Hungary
Agreement on wines, but the name of a vine
variety recognised in Italy.

28
TOCAI vs TOCAJ

Yet, unlike the Hungarian name Tokaj was
mentioned in the Annex to that agreement listing
the geographical indications for wines
originating in the Republic of Hungary, the terms
Tocai friulano and Tocai italico were not
mentioned in the Annex to that agreement listing
the geographical indications for wines
originating in the Community. The Court rules
that the contested prohibition complies with the
rules on homonyms laid down by the agreement
since those rules presuppose the existence of two
geographical indications.
The Court then points out that in the case of
homonymity between a geographical indication of a
third country and a name incorporating the name
of a vine variety used for the description and
presentation of certain Community wines, the
provisions on homonyms contained in the TRIPs
Agreement do not require that the name of a vine
variety used for the description of Community
wines be allowed to continue to be used in the
future.

29
TOCAI vs TOCAJ

Finally, the Court holds that, since it does not
exclude any reasonable method of marketing the
Italian wines concerned, the prohibition does not
constitute deprivation of possessions for the
purposes of the European Convention on Human
Rights. Consequently, the lack of compensation
for the winegrowers concerned is not in itself a
circumstance demonstrating incompatibility
between the prohibition and the right to
property.
The objective of the prohibition is to reconcile
the need to provide consumers with clear and
accurate information on products with the need to
protect producers on their territory against
distortions of competition. The prohibition
therefore pursues a legitimate aim of general
interest.
The Court rules that the prohibition is also
proportionate to that aim, given, inter alia,
that a transitional period of thirteen years was
provided for and that alternative terms are
available to replace the names Tocai friulano
and Tocai italico.

30
TOCAI vs TOCAJ The Decision

The Court rejects the objections raised as to
the validity of the prohibition, arising from the
EC-Hungary Agreement, on using the name Tocai
in Italy after 31 March 2007.

31
Tocaj Agreement Hungary / Slovakia

After almost 40 years Hungary and Slovakia have
agreed on a common Tokay viticulture area. The
agreement, signed in June 2004 by the Slovak and
Hungarian Agriculture Ministers, could lead to
greater sales of Slovak Tokay wine. The
Hungarian-Slovak Tokay area is the only region in
the EU that will have the right to be called
Tokay.
The problem of the Slovak-Hungarian Tokay case
was based around the refusal of Hungary to
recognize the whole Slovak Tokay area, but only
approximately 30 of it. Finally, Slovakias
southern neighbor recognized over 50 of it on
the condition that Slovakia accepts Hungarian
laws related to the production of the wines and
that common quality controls are introduced.

32
Agreement USA EU on the wine trade

The US administration will present to Congress a
proposal for modification of the status of EU
wine denominations, currently considered in the
USA as semi-generic names, with limitations on
their use in the States.
EU wines include the Italians Chianti and
Marsala but also other very well known wines like
"names" such as Burgundy, Chablis, Champagne,
Claret, Haut Sauterne, Hock, Madera, Malaga,
Moselle, Port, Retsina, Rhine, Sauterne, Sherry
and Tokay.

33
Bilateral Agreements
34
ITALY AUSTRIA (1952)
35
Multilateral Agreements
36
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37
European Union
38
EU Legal Requirements for PDO and PGI
39
Other requirements (Reg. 2081/92)

name and description of the product
limitation of the geographic area
methods of production
main elements of connection with the geographic
area
legal bodies for quality control
labeling subject to legal requirements

40
Protected Designation of Origin (PDO)
41
Protected Geographical Indication (PGI)
42
Traditional Speciality Guaranteed (TSG)
43
Traditional Speciality Guaranteed (TSG)
44
EU Regulation 2043/89 on Quality Wines Produced
in Specific Regions (QWPSR - UE)
45
ORGANIC FARMING
46
EU Accession
47
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48
National Law on GIs and Wines
49
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50
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51
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52
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53
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54
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57
Obstacles to an agreement EU - USA