International Registration of Geographical Indications what producers need

International Registration of Geographical Indications: what producers need David Thual WIPO Symposium on Geographical Indications Parma, 29 June 2005

n n Ori. GIn - ORganisation for an International Geographical Indications Network: NGO launched in June 2003 An International network of GI producers: • Around 70 organisations of producers • More than one million GI producers represented • From 30 countries (Africa, Asia, North and South America, Eastern and Western Europe) n WIPO Observer Status – November 2004

Members Food producers: n Coffee, tea n Rice Non-Food producers: n Silk Carpets n Cheese n n Ham, sausage… n Watches n fruits … n Artisanal products… n Spirits n Wines

‘s Who’s Who President Pedro Echeverria Guatemala Africa Asia Agnes Nyaga Brig. Anil Adhlaka North America Ramon Gonzalez Kenya India Mexico Eastern Western Europe Tomislav Enrique Galovic Garrigos Croatia Spain

Why the need for an International registration of GIs Ø Ø Legal certainty for producers Protection of consumers against misleading advertising But also… Ø Ø …Protection of traditional knowledge and local know-how …Protection of a key development tool

Trademarks and GIs: Two complementary but different concepts n n n In many sectors, GIs and TMs are used in combination by producers However, GIs and TMs are different legal concepts GIs and TMs also play a different role with regard to: • The development of local communities • The information transmitted to consumers = they both deserve adequate protection

GIs and TMs: Main differences TMs ≠ GIs MAY certify origin MUST certify origin Individual control Collective control Can be produced anywhere Production rooted in a region Protection must be renewed periodically Hight cost of protection : +/ - 1, 500 to 2, 000 € per class and per TM Often protection as long as conditions for protection upheld Often limited registration costs

Comparative Scope of Protection: certification mark / GI systems CM GI n Scope of protection: n • Protection of a name in combination with a logo for any organisation • Right on the name if used • Absolute protection of the name for all legitimate producers • Right on the name even if not used n Often guarantee against: n Enforcement: often mix of public & private actions No guarantee against: • “genericity” • name used in translation and used with expressions like “style”, “type”, etc. • “genericity” • Name used in translation and used with expressions like “style”, “type”, etc. n Scope of protection: n Enforcement: private

GIs: a development tool n n n GIs stimulate the economy, growth and innovation GIs provide producers with a higher income in exchange for guarantees on quality and production methods GIs encourage diversification of production, thus preserving: • • n Biodiversity Local know-how, traditional knowledge GIs prevent the standardization of food and promote diversified and balanced diets With GIs: no delocalisation of production is possible

GIs as a marketing tool n n Would Moët & Chandon be so sought after if it was not a Champagne? Producers of Café de Colombia already enjoy protection as a collective mark. Why the interest for GI protection GIs bring a unique added value to both producers and consumers

GIs create value beyond TMs A TM creates a certain value • Protection of a name. Ex: Coca-Cola® • Protection of a logo • Protection of a shape

The Geographical Indication’s Promesse n GIs protect a products’ name that is based on specific quality & method of production n Gis provide with a seal of origin and convey certain messages linked to: A « terroir » n An history n Traditional knowledge and know-how n n GIs provide with guarantees on the origin (traceability) and a certain quality This promesse appeals consumers!

An increasing market for GIs n 40% of European consumers are ready to pay a 10% premium price for GI products EC Study 1999 n 75% of Italian consumers are ready to pay a 20% premium price for GI products Etude Nomisma Qualivita de 2003

Protecting Geographical Indications via trademark systems: mission almost impossible!

Barriers to GI registration n Product not allowed in the country: no defensive name protection available • Example: Parma ham in Australia Registration refused: generic and/or descriptive name • Parma ham in most countries! • Turron de Jijona & Turron de Alicante in the USA Name already registered as trademark • Example: Parma ham in Canada

No absolute protection of the name via the TM system Multiplication of similar marks n Idaho Potatoes • Several CM: « Idaho Preferred » , « Idaho Potatoes Grown in Idaho » , « Grown in Idaho » • Several TM: « Idaho’s Best » , « Idaho Naturally » n Napa Valley CM TM

Inadequate protection via TM system n n Registration of « Parmigiano-Reggiano » as a CM in the US is not a registration of the individual terms « Parmigiano » and « Reggiano » The Consorzio has not yet been able to protect « Parmigiano » and « Reggiano » separately in the US as CMs because the USPTO requires: • two different certification standards: one for “Parmigiano” & one for “Reggiano” ! • the Consorzio to allow the use of these terms separately!

The Need for an International Register of GIs For GIs to play their positive role, producers need: ØLegal means to prevent free ride on the reputation and image of GI products Ø more legal certainty Ø A simple and sui generis register: key for small producers who cannot seek registration country-by-country

The Way Forward n A multilateral and not a plurilateral register • The WTO route is required • Accessible to all countries, in particular developing ones • User friendly n A non-discriminatory approach • Extension of Article 23 TRIPs to all products • A register open to all products • WIPO arbitration system for trademarks and domain names to be extended to GIs n A register with legal effects • No to a simple database • Need for the burden of the proof to be reversed

Thank you very much www. origin-gi. com info@origin-gi. com