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What's next for geographical indications?

Peter Leung reviews the latest discussions on the relationship between geographical indications and trademarks, ahead of today's session.

It has been slow progress, but the relationship between geographical indications and trademarks is being hammered out in treaty negotiations and courtrooms around the world. Today's panel, "Champagnes, Cognacs, Rices, Teas and Beers - What's New in Trademarks and Geographical Indications", will explore some of the remaining issues.

Do we need GI-specific laws?

A continuing discussion concerns the type of protection that geographical indications (GI) receive, said moderator Stephen Stern of Corrs Chambers Westgarth's Melbourne office. Though Article 22 of the TRIPs agreement requires that all member states provide legal protection for geographical indications and prevent "designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin", many countries do not explicitly recognize geographical indications as such. Instead, member countries often comply with Article 22 via laws prohibiting misleading conduct, which afford GI protection using general restrictions on misleading business practices including labeling. A major point of debate is whether such protections are enough.
International treaties and industry-specific laws also add another dimension to the picture. Australia, for example, does not have laws specifically protecting GIs except those pertaining to wine, as this provision is part of the Australia-European Community Agreement on Trade in Wine. As a result, GIs such as Champagne are specifically protected in Australia as GIs, while those pertaining to other industries, such as Darjeeling for tea, receive protection through general purpose laws regarding misleading business practices.
The United States also adds its own wrinkle. The U.S. does not have laws that protect GIs specifically. However, like Australia, there is protection unique to wine in the form of American Viticultural Areas (AVA), grape-growing regions specifically delimited and recognized by the Department of Treasury. Though this may appear to be similar to the Australian system, there is one important difference; AVAs only include American regions, while both domestic and international wine-making regions are protected in Australia.
Certification and collective marks are another method for protecting GIs, where a mark is used to indicate specific standards, such as quality or origin. The mark is often registered by an entity such as a trade association that will license it out for use on products that comply with the standards. One such mark is the Parma Ham Crown, used in multiple countries to indicate the hams coming from the Parma region in Italy.
These collective marks can provide protection for geographical indications, even though their treatment varies widely between jurisdictions. For example, while GIs in Italy are already protected by specific laws, collective marks are growing increasingly popular, and courts have recognized that GIs and collective marks can coexist to cover the same region. On the other hand, in Canada, which has no sui generis protection for GIs, a court invalidated the Consorzio del Prosciutto di Parma's Parma Crown collective mark because it was not a government-authorized agency.
How trademarks interact with this complex body of laws will be the focus of the panel. Stern points out that the panelists are not all lawyers advocating for stronger GI protections; they have also represented clients in asserting their trademarks against claims that they conflict with certain GIs.
The movement toward lower trade barriers and increased harmonization of laws affects geographical indications as well. The variation in how different countries interpret their obligations under TRIPs raise the question of whether general purpose laws regarding misleading practices are sufficient in protecting GIs, or if specific regulations are needed, as well as whether there should be an international register for GIs.

Economic interests

How different countries stand on geographical protections has somewhat of an old-world versus new-world split to it, said Stern. GI protections were more important in Europe because of its long history of world famous products such as French wines and Parma ham. On the other hand, countries such as Australia and the US in general do not have as many such products, so they tend to not have specific GI protections, with the exception of particularized regulations such as AVAs in the US.
Asian countries are also generally receptive to the idea of GI protection. “The European countries have wanted to protect their GIs in China, but the government initially said "no", Stern noted: "But France thought that maybe it could educate the Chinese government as to how China will benefit from GI protection, and that's precisely what has happened. There are now a number of well-known GIs such as champagne and various Chinese products that receive protection in China."
Similarly, India provides statutory protections for both GIs and certification marks. For tea, Darjeeling is recognized both as a GI and a certification mark administered by the Tea Board. As such it receives protections both domestically and abroad, including in the EU. Still, despite a well-established regime for protecting GIs, some other marks, most notably Basmati rice, have not been able to secure GI protection, instead relying on common law protections.
CT01 Champagnes, Cognacs, Rices, Teas and Beers - What's New in Trademarks and Geographical Indications takes place today from 10:15 am to 11:30 am in OMNI Dallas Ballroom
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EU Court says yes to Anheuser-Busch's Bud Community trade mark

In the latest round of a long-running legal battle between rival brewers Anheuser-Busch and Budejovicky Budvar, the Court ruled that the Czech company could not prevent the registration of the Community trade mark (CTM) BUD for beer.
Budejovicky Budvar had opposed Anheuser-Busch's application to OHIM, citing the existence of the appellation of origin "bud", as protected in France, Italy and Portugal under the Lisbon Agreement and in Austria under bilateral deals between Austria and the former Czechoslovak Socialist Republic.
OHIM dismissed Budejovicky Budvar's oppositions on the grounds that its evidence of the use of the appellation of origin "bud" in Austria, France, Italy and Portugal was insufficient.
OHIM's decision was appealed to Luxembourg, which held that a geographical indication protected in a member state can only prevent the registration of a CTM if it was actually used in a sufficiently significant manner in the course of trade in a substantial part of the territory of that state.
The General Court was asked to consider whether that criterion had been met in this case. On January 22, the Court ruled that it had not. In particular, it said that the Czech company had not shown OHIM evidence of the use of the term bud in the course of trade of more than mere local significance before the US company filed its CTM application in July 1996.
Budejovicky Budvar produced invoices showing deliveries using the term bud to just three towns in France. As such, the Court said it had not satisfied the "more than mere local significance" test.

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