Geographical Indications (GIs): a tool to promote sustainable development

1
Geographical Indications (GIs) a tool to
promote sustainable development

• Massimo Vittori
• Secretary General,
• oriGIn

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Summary

1. Definition and socio-economic impact of GIs
2. The protection of GIs at the national level
3. The international legal framework
4. The role of oriGIn
5. Some conclusions

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Definition

• Geographical indications are, ..., indications
  which identify a good as originating in the
  territory ..., or a region or locality in that
  territory, where a given quality, reputation or
  other characteristic of the good is essentially
  attributable to its geographical origin. (TRIPS,
  Article 21.1)

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Economic and social impact of GIs

• Local development, preservation of traditions and
  job creation
• Spill over effects (environment, gender, tourism,
  etc.)
• Marketing through differentiation
• Globalization has generated a niche of more
  conscious and demanding consumers
• Reduced transition costs for consumers
• Trade regulations are shifting towards greater
  traceability requirements

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Rights conferred to right holders

• GIs as a peculiar asset of intellectual
  property rights
• Light monopoly exclusive rights on a name not
  on a product
• No risks of preventing innovation or slowing-down
  economic development
• Collective rights GIs are managed by several
  producers (within a given territory/community),
  not to a single economic actor

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GIs a development friendly tool

• Collective rights several producers within the
  same geographic area/community have to join
  forces and establish a common platform
• Collaborative approach throughout the life of a
  GI (economies of scale)
• GIs are an ideal tool for small producers that,
• by themselves, would never be able to reach
• out to markets
• No delocalisation of production
• Low/medium level of innovation for GI products
  labour intensive for which developing economies
  hold a competitive advantage
• GIs vehicle to protect Traditional Knowledge and
  biodiversity

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GIs as global phenomenon

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Potential GI products in Sudan

• Agricultural products
• - Camel meat
• - Camel milk
• Handicrafts
• - Traditional clothes (Jalabia and Thobe)
• - Traditional paintings, pottery

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GI protection at the national level

• Legal vehicles
• Sui generis
• Trademarks and certification marks
• Unfair competition and consumer protection /
  Passing off

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1. Sui generis systems

• Specific system to protect GIs as such through
  registration
• Strong protection of the geographical name used
  in translation, evocation, etc.
• Certain level of public involvement in
  enforcement (ex officio) and controls
• Example EU system (EC Regulation 510/06, EC
  Regulation 479/2008 and EC Regulation 110/2008)

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The EC Regulation 510/2006 on the protection of
GIs and DOsfor agricultural products and food
staff

• From the 1992 Regulation to the 2006 Regulation
• Role of producers associations
• DO GI (art.2)
• Rights conferred (art. 13) strong protection
• Certain level of public involvement in
  enforcement (ex officio) in light of EC
  Regulation 1383/2003 on Customs Controls as well
  

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2. Trade marks preliminary considerations

• Need of distinctive character
• Cannot be used to register a geographic name,
  except it has acquired a secondary meaning

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2. Certification Marks (CM)

• CM indicate that goods or services for which they
  are used have qualities or characteristics that
  are certified by its owner
• CM are given for compliance with a defined
  standard set by the certifier (can be used to
  certify a specific geographical origin)
• CM not usable by the owner
• Example US system (US Lanham Act)

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CMs v. GIs
CMs MAY certify origin Individual control Can
be produced anywhere Protection must be renewed
periodically High cost of protection /-
1,500 to 2,000 per class and per CM
GIs MUST certify origin Collective
control Production must be rooted in a
region Illumined protection after first
registration Limited registration costs
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CMs v. GIs

• GIs
• Scope of protection
• Automatic protection for the name used in
  translation, evocation and used with expressions
  like style, type
• Right on the name even if not used
• Guarantee against genericity
• Enforcement
• Mix of public private (ex officio), reduced
  costs for producers

• CMs
• Scope of protection
• In principle, no protection for the name used in
  translation and used with expressions like
  style, type, etc. or single names
• Right on the name only if used
• No guarantee against genericity
• Enforcement
• Private (more expensive)

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The international legal framework

• The main international treaties dealing with GIs
  
• - Lisbon Agreement for the Protection of
  Appellations of Origin and Their International
  Registration
• - WTO TRIPS Agreement
• Proliferation of bilateral and regional
  agreements
• - Need of a minimum level playing field
• - Problem of transparency for small GI
  producers

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The Lisbon Agreement

• Definition of AoO (art. 2)
• National Protection International Registration
  (WIPO) Protection in contracting parties
  (1-year period for oppositions)
• Protection against usurpation and imitation, even
  if the true origin of the product is indicated,
  and even in translated form or used accompanied
  by kind, type, imitation, or the like
  (art.3)
• It prevents the risk for a geographical name to
  become generic, as long as it is protected in
  the country of origin (art. 6)

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Limits of the Lisbon Agreement

• Limited numbers of contracting States (26)
• Restrictive definition of AoO (is reputation a
  constituting element for a product to qualify for
  protection??)

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TRIPS

• The two levels of protection for GIs
• Standard protection of Article 22 for all
  products, protection only if
• Public is misled by the use of the GI
• Incorrect use of the GI constitutes an act of
  unfair competition
• Additional protection of Art. 23 for wines and
  spirits
• Protection against a simple usurpation of the GI
• Protection of the GI even if translated
• Use of delocalizing expressions such as kind,
  type, style, imitation or the like are
  prohibited
• Mandate for negotiating a multilateral Register
  

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Misleading marketing techniques Prosciutto di
Parma ... made in Canada
21
Pruneaux dAgen ... from Canada
22
Basmati Rice ... made in the USA

• Long Grain American Basmati Rice

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Turron de Jijona ... from Argentina
24
Parmigiano Reggiano ... from Mexico
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Current negotiations within the WTOs DDA

• Extension of art. 23 of TRIPs to all products
• Art. 22 does not prevent free-riding on the
  reputation and image of well-known GIs
  reputation of traditional products is tarnished
  loss of potential markets 
• No legal certainty/predictability (national
  jurisdictions might differ on whether the public
  is misled or not)
• Discrimination (first class / second class
  products) No socio-economic reasons justify such
  discrimination between the majority of GI
  producers and those dealing with wines and
  spirits
• DDA ....the need for all our people to benefit
  from the increased opportunities and welfare gain
  that the multilateral trading system generates

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Current negotiations within the WTOs DDA

• B. Multilateral register
• Objectives
• Help producers to protect their GIs worldwide
• Help judges and administrative authorities when
  taking decisions on GIs/trademarks
  registrations
• Key questions
• Scope (products covered) should cover all
  products
• Participation should be truly multilateral
  (art. 23.4 of TRIPS)
• Legal effects should not be a mere database

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Draft modalities on TRIPS, July 2008

• The extension of art. 23 to all GI (including the
  extension of the Register)
• A multilateral Register
• - binding for all WTO members
• - voluntary notifications of GIs (to be carried
  out by Member States)
• - No opposition

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Draft modalities on TRIPS, July 2008

• Registers legal effect
• Each WTO Member will have to provide that
  domestic authorities consult the Register and
  take its information into account when making
  decisions regarding registration and protection
  of trademarks and geographical indications in
  accordance with its domestic procedures. In the
  framework of these procedures and in the absence
  of a proof to the contrary, the international
  registration of a GI will be considered as a
  prima facie evidence that, in the Member where
  those procedures are under way, the geographical
  indication at issue meets the definition of
  "geographical indication" laid down in TRIPS
  Article 22.1. Moreover, any assertion on the
  genericness exception laid down in TRIPS Article
  24, will have to be considered by domestic
  authorities only if these are substantiated.

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The role of

• OriGIn - Organisation for an International
  Geographical Indications Network
• When? created in 2003
• What? first international organisation (NGO) of
  GI producers

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• Objectives
• Producers from all over the world joined forces
• Advocacy campaigns for an effective international
  legal system for protecting GIs
• Promotion of GIs as a tool for sustainable
  development
• Platform for worldwide GI producers and experts
  exchange of best practices dissemination of
  information

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• oriGIn today
• Some 85 organizations of producers
• Over 35 countries
• Representing more than 2-million GI producers

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• Membership
• Full Members associations/groups of GI producers
  
• Associate members persons/organisations
  interested to promote oriGIns goals

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Type of products

• Non-food products
• Carpets
• Watches
• Cigars
• Artisanal products, etc.

• Food products
• Coffee, tea
• Rice
• Cheese, butter,
• Ham, sausage,
• Fruits, vegetables,
• Pastry
• Other
• Wines
• Spirits

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Decentralised structure VPs
President Luis Fernando Samper (Colombia)
North Africa Middle East Z.Charrouf (Morocco) Sub-Saharan Africa Agnes Nyaga (Kenya) Asia Zheng Weihua (China) Brig. Anil Adhlaka (India) North Am. Ramón Glez. Figueroa (Mexico) Central Am. de la Grana (Cuba) South Am. Carlos Mejia (Peru) Eastern Europe Tomislav Galovic (Croatia) Western Europe Stefano Tedeschi (Italy) J. Enrique Garrigos (Spain)
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in action

• Partnerships
• Technical assistance
• Advocacy campaigns
• Awareness on GI abuse
• Updated information for our members
• Research projects and studies
• International events

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Some conclusions

• Important socio-economic role played by GIs
• Problems of small producers enforcement of
  rights (costs legal advice)
• Sui generis systems better guarantee producers
  interests
• Need to strengthen the multilateral legal
  framework (TRIPS Modalities in the Doha Round
  reform of the Lisbon Agreement)

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• Thank you!
• Massimo Vittori
• secretariat_at_origin-gi.com
• www.origin-gi.com