Naming Rights for "Geographical Indications"
An issue gaining attention in the current round of multilateral
trade negotiations is the debate over geographical indications (GIs)
in the naming of products. A GI is a type of intellectual property
associated with goods that originate in a specific place and possess
qualities, a reputation, or other characteristics that are due to
that place of origin. GIs in the United States are protected through
various Federal and State trademark and certification laws and regulations
(an example is the Idaho Potato Commission's "GROWN IN IDAHO" design
and slogan for Idaho potatoes).
Over time, some product names or text on product labels have become
generic and are used regardless of place of origin. However, under
the current round of global trade talks, the European Union (EU)
and other countries are calling for terminating the use of certain
generic names for food, wine, and spirits unless the products come
from a specific region. The EU
presented a list of GIs to the WTO during the Fifth Ministerial
Meeting in Cancún, Mexico in September 2003. The EU requested
that 41 product terms be protected by WTO members. The list is subject
to negotiations.
Geographical indications proposed
by the European Union to the WTO in September 2003* |
|
Wines and spirits |
Beaujolais
Bordeaux
Bourgogne
Chablis
Champagne
Chianti
Cognac |
|
Grappa (di Barolo, del Piemonte,
di Lombardia, del Trentino, del Friuli, del Veneto, dell'Alto
Adige)
Graves
Liebfrau(en)milch
Malaga
Marsala
Madeira |
|
Medoc
Moselle
Ouzo
Porto
Rhin
Rioja
Saint-Emilion
Sauternes
Xerez, Jerez |
Other products |
Asiago
Azafrán de la Mancha
Comté
Feta
Fontina
Gorgonzola
Grana Padano |
|
Jijona y Turrón de Alicante
Manchego
Mortadella Bologna
Mozzarella di Bufala Campagna
Parmiggiano Reggiano
Pecorinow Romano |
|
Prosciutto di Parma
Prosciutto di San Danielle
Prosciutto Toscano
Queijo São Jorge
Reblochon
Roquefort |
|
* According to the EU proposal, the
proposed protected terms covers translations such as "burgundy,"
"champaña," "conñac," "port," "sherry," "parmesan/o,"
"Parma ham." |
In the last few years, meaningful discussion on GI protection
has taken place only in the World Trade Organization's (WTO) Trade
Related Aspects of Intellectual Property Rights (TRIPS) Council
and at the World Intellectual Property Organization's Standing Committee
on the Law of Trademarks, Industrial Designs, and Geographical Indications.
The current round of multilateral negotiations initiated in Doha,
Qatar in November 2001 does not require WTO members to negotiate
GI naming rights in the agriculture negotiations. In fact, the report
of the Fourth Ministerial Meeting at Doha (the Doha Ministerial Declaration)
specifically mentions the TRIPS Council as the forum for discussion
of GI issues.
A wide range of food and agricultural products are known by their
quality attributes, place of origin, or other specific local factors.
Over time, some product names or text on product labels have become
generic and are used regardless of place of origin. Parmesan cheese
is an example of a name that has become generic. "Parmesan" is referred
to in a 1953 USDA publication, Cheese Varieties, as the "name
in common use outside Italy and sometimes in Italy for a group of
very hard cheese." Parmesan cheese is made in many parts of the
world and traded internationally. In the United States and some
other countries, parmesan is a generic name for an aged hard cheese
(American parmesan cheese is made mostly in Wisconsin and New York).
However, in Italy, the term is used to identify a specific cheese
produced in a specific region under specific conditions. The debate
surrounding naming rights of agricultural and food products referring
to geographical origin could potentially affect a number of generic
product names, preventing their use.
Why Are Naming Rights Suddenly an Issue for Agricultural Trade?
At the Ministerial Meeting in Doha, WTO Ministers agreed to complete
negotiations on a multilateral system of notification and registration
of geographical indications for wine and spirits. For agricultural
commodities other than wines and spirits, the Ministers agreed only
to discuss (not negotiate) extension of the protection (limitation)
of GI use.
Many WTO members, including the United States, strongly object
to addressing GI protection as they believe that it is an issue
outside the agricultural negotiations. Others, including the EU,
feel that protection under the TRIPS Agreement for products other
than wines and spirits (TRIPS Article 22) is insufficient. They
believe that the "higher level" of protection provided by TRIPS
Article 23 for wines and spirits is needed for other products, including
agricultural and food products, even if the names are generic. The
debate appears to be focused on the mandatory rather than voluntary
nature of the EU proposal on GI protection and registration for
products other than wines and spirits. Debate continues as to whether the Doha Declaration provides a mandate for negotiating a higher level of protection for products other than wine and spirits.
Current International Rules on Naming Protection for
Geographical Indications
The TRIPS Agreement, which became effective in 1995, envisions two
kinds of naming protection to avoid unfair competition and prevent
consumers from being misled.
- For products other than wine and spirits, countries are expected
to provide legal means to prevent false or misleading claims of
geographical origin. TRIPS Article 22 defines GIs as "indications
which identify a good as originating in the territory of a
[WTO] Member, 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." Examples
of GIs in the United States are "Washington State" apples, "Idaho"
potatoes, and "Florida" oranges. "Vidalia" is the name for onions
grown in the region around Vidalia in Southern Georgia.
- Wine and spirits are protected even if using the names would
not mislead consumers or would not constitute an unfair competition.
TRIPS Article 23 provides GI protection for indicated sources
of wines and spirits: "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, 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."
TRIPS permits WTO members to use their existing legal systems,
provided they meet the stated obligations for GI protections (TRIPS
Articles 22-24). In the United States, protection is provided under
various Federal and State trademark, certification, and fair trade
laws and regulations. Examples of food product laws and regulations
administered by USDA include the Agricultural Marketing Agreement
Act of 1937, the Perishable Agricultural Commodities Act, and Food
Safety and Inspection Service rules on meat and poultry labeling.
For wines and distilled spirits, the Department of Treasury's
Alcohol and Tobacco Tax and Trade Bureau (formerly the Bureau of
Alcohol, Tobacco and Firearms) regulates the use of geographical
indications through labeling and advertising rules. For wines, this
is accomplished by appellations of origin (including the establishment
of viticultural areas such as Napa Valley), and class and type designation
standards (e.g., for Porto and Mosel). According to the Tax
and Trade Bureau, a wine is entitled to an appellation of origin if 1) at least 75 percent of its volume is derived from fruit or
agricultural products grown in the place or region indicated by
such appellation, 2) it has been fully manufactured and finished
within the State in which such place or region is located, and 3)
it conforms to the requirements of the laws and regulations of such
place or region governing the composition, method of manufacture,
and designation of wines for home consumption. For distilled spirits,
regulations include standards of identity or class and type designations
(e.g., for Bourbon whiskey and Tequila).
EU Proposals for Geographical Indications
The EU submitted a proposal to the WTO TRIPS Council in 1998 to
extend a higher level of GI protection to agricultural and food
products other than wine and spirits. The proposal was later revised
in 2000. The EU discussed expanding GI protection in its December 2002 Proposal for Modalities in the WTO Agriculture Negotiations. In June 2005, the EU followed up with a detailed proposal calling for the TRIPS Agreement to be amended.
Extending GI protection is controversial, and so far no consensus
has emerged among WTO members. Those in favor of the mandatory extension
include Bulgaria, the EU, Guinea, India, Jamaica, Kenya, Madagascar, Mauritius, Morocco, Pakistan, Romania, Sri Lanka, Switzerland, Thailand, Tunisia, and Turkey. Other countries prefer
a voluntary notification and enforcement system, which would allow
WTO members to provide notification on their GIs if they are TRIPS-consistent
(and therefore legal under the WTO). These include Argentina, Australia, Canada, Chile, Colombia, the Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, New Zealand, Panama, Paraguay, the Philippines, and the United States. The United States and other WTO memberssuch
as Argentina, Australia, Canada, and New Zealandhave pointed
out that the EU does not currently protect GIs of other countriesfor
wines, spirits, or any other productsexcept through bilateral
agreement.
The extended system of protection for products other than wines
and spirits as proposed by the EU is similar to a system currently
operating in the EU. A significant feature of the EU agricultural
system is protection of agricultural and food products, wine, and
spirits based on their appellation of origin (signifying qualities
that are due to the geographical environment in which the products
are produced). For food and agricultural products other than wines
and spirits, protection is provided under EU Regulation No. 2081/92
and amendments (see EUR-Lex,
the portal to European Union law). For wines and spirits, GI protection
is provided under various regulations, including EU Regulation No.
753/2002 on wine labeling, which took effect in 2002.
Under EU law, there are two levels of naming protection for food
products: protection of designations of origin (PDO) and protection
of geographical indications (PGI). PDO provides a higher level of
protection than PGI. The majority of wine and cheese names are protected
under PDO. According to the EU definition, a PDO refers to "the
geographical names of a country, region, or locality which serves
to designate a product originating therein, and the quality and
characteristics of which are due exclusively or essentially to the
geographical environment, including natural and human factors."
Simply put, "a PDO covers the term used to describe foodstuffs that
are produced, processed, and prepared in a given geographical area
using recognized know-how," according to EU
law. Examples of EU PDO products are Roquefort and Parmigiano
Reggiano for cheese and Prosciutto di Parma for ham.
To receive PGI protection, a product must have a geographical
link in at least one stage of production, processing, or preparation.
Examples of EU PGI products are scotch beef and scotch lamb.
EU regulation No. 2081/92 (and its amendments) established PDO
and PGI. Since the regulation took effect in the early 1990s, about
600 food names (other than wines and spirits) have been registered
for protection. Some of the registrations are controversial, and
various court cases throughout the EU since the late 1990s have
resulted.
For wine and spirits, the EU has signed bilateral agreements with
various countries, including South Africa and Chile, involving protection
for thousands of geographical (e.g., cities and regions) and nongeographical
wine names. Examples of protected names under the agreements are
"sherry" and "port." The recent EU regulations related to wine labeling
within the EU impose additional protection on its wine names and
terms. As in the bilateral agreements, not all of the protected
descriptive terms refer to geographical origin; some are common
generic terms such as "vintage." It is doubtful whether these regulations
can be applied internationally, because generic terms such as "vintage"
have no legal basis for protection under the WTO TRIPS Agreement.
What's at Stake
Naming rights related to geographical origin or geographical indications
likely will be discussed in the global trade talks. The EU, as part
of its agricultural proposal, has called for terminating the use
of certain generic names for food, wine, and spirits unless the
names come from a specific region.
Extending GI protection to generic names of food products other
than wines and spirits is beyond current TRIPS rules (Article 22
protection does not apply to generic names). For example, the United
States currently cannot market "Prosciutto di Parma" since the name
has been reserved for ham from Parma, Italy. But under the EU proposal,
could firms still market ham using a generic name such as "prosciutto,"
since this specific term does not refer to the geographical origin
of the product? Representatives for Italian parmesan producers are
claiming the name "parmesan" for cheese produced in the Parma region.
Generic terms such as gorgonzola, mozzarella, parmesan, and romano
for cheese have been commonly used for years. What would be the
effects on producers and consumers if these names cannot be used?
It is uncertain whether countries would agree on an approach to
extend the naming protection of products other than wines and spirits
in the WTO. What is certain is that names reflecting attributes
of geographical origin do matter to some consumers and producers.
Some consumers may be willing to pay a premium for higher quality
and differentiated products. For example, an Iowa State University
study found that meat from high-quality, grain-fed cattle raised
along U.S. Interstate 80 is often called "I-80 beef" by Japanese
consumers. Even though "I-80 Beef" does not exist as a brand, the
I-80 name signifies a certain quality beef to Japanese consumers.
A study by the University of Georgia showed that Vidalia onions
command a significant premium over the same type of unbranded onions.
However, an array of unfamiliar names may hurt, rather than help,
marketing if manufacturers are forced to seek alternatives to generic
names they can no longer use. Many French wine companies currently
adopt wine naming conventions that refer to wine by grape variety
instead of by geographical origin (which may be unfamiliar to U.S.
consumers) in order to market their wine in the United States. Ultimately,
consumers would make their preferences known through their purchasing
power.
The stakes for the United States are high not only because of
the potential loss of generic names, but also because the country
uses certain marksunder U.S. trademark lawto protect
geographical indications. U.S. agricultural product exports are
potentially threatened because U.S. certification marks would not
be protected. GI protection would take precedence over certification
marks, as indicated in the EU proposal.
For More Information, See...
- Consolidated Markets,
Brand Competition, and Orange Juice Prices
- The Way Ahead—What Future for Geographical Indications?, Worldwide Symposium on Geographical Indications, Parma, Italy, June 2005
- U.S.
Patent and Trademark Office, Geographical Indications
- USDA, Foreign Agricultural Service, Geographical
Indications: An Overview of the Arguments Surrounding Protections,
GAIN Report E23152, August 2003.
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