Geographical indicators: 'There may be trouble ahead
Proposals to extend the geographical indication system to non-agricultural products could further distort competition, explains Michael Edenborough QC
Geographical Indications (GIs) are highly contentious, and they are about to become even more so, due to proposals to extend them from food-related products ?to non-agricultural products. To place this proposal in context, it is necessary to examine the current scheme and where it fits into the wider issue of intellectual property rights ?(IPRs) as a whole.
IPRs are a matter of public policy that attempts ?to balance the rights of individuals against those ?of society as a whole. The core rights are copyright, patents, and trade marks, which between them protect the creative, innovative, and commercial integrity of entities, be they natural or corporate. Over the years, additional rights have come into existence that extend the scope of IPRs. In all cases, the right allows a rights-holder to stop some activity being done by another party, and in so doing fetters the freedom of that other party. Commonly, commercial activities are restricted, and so the right can impinge adversely upon free trade.
GIs are the result of two strands of development. First, there are such rights as collective and certification trade marks, whereby a group of traders could form a co-operative and each member could use the collective mark, or a trade society could certify products as satisfying a certain standard. Anyone who complied with that standard could then use the certification mark. As an alternative to registered trade marks, common law jurisdictions commonly provide that the tort of passing-off may confer protection from imitators in suitable cases. Second, the appellation d’origine contrôlée system related a specific product to a particular terroir. The combination of rights akin to trade marks and the link to the terroir resulted in the present day GIs for certain agricultural products and their derivatives.
At the European level, GIs are now regulated by Regulation (EU) 1151/2012. The principal forms of protection are protected designations of origin (PDOs), protected geographical indications (PGIs), and traditional specialities guaranteed (TSGs). The reputed quality of the product is dependent upon its link to the particular geographical area under consideration, often combined with strict rules on the method of production.
However, the strength of the link to a particular region is different for the different GIs. For PDOs, the product must originate in a specific place and have a quality or characteristics that are ‘essentially or exclusively due to a particular geographical environment with its inherent natural and human factors’ and all the production steps take place ?in the defined geographical area (for example, ?Stilton cheese); while for PGIs, it is only that ‘the given quality, reputation, or other characteristic ?is essentially attributable to its geographical ?origin’ and ‘at least one of the production steps’ takes place in the defined geographical area ?(for example, Melton Mowbray pork pies or ?Cornish pasties); and finally for TSGs, there is no requirement for a specific geographical link: ?rather the name must relate to a specific product ?or foodstuff that results ‘from a mode of production, processing, or composition corresponding to a traditional practice’ (for example, traditionally farmed Gloucestershire Old Spots pork and pizza napoletana). As well as these core GIs, there are other, less well-known optional quality terms, ?such as ‘mountain product’ and the proposed ‘product of island farming’.
In addition to prohibiting direct or indirect commercial use of the registered GI, the regulation also prohibits ‘any misuse, imitation, or evocation, even if the true origin of the products or services 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…’.
As such, a GI gives those eligible to use it great power to stop others producing an identical product and trying to identify that identical product as being in any way related to the protected product. The strength of GIs may be contrasted with the more limited power conferred by the tort of passing-off, which cannot stop the use of such terms as ‘style’, for example ‘Greek-style yogurt’, in cases where the protected product does not benefit from a GI, but still forms an identifiable class that has a collective goodwill that may be enforced by any qualifying member of the relevant genuine group of producers.
It is relatively easy to justify granting monopoly rights to a group of traders who produce a product that is characterised by distinctive geographical qualities. It is more difficult to justify prohibiting competing traders from indicating truthfully that their product does not originate from the defined geographical area (or otherwise comply with the requirements) but is nonetheless otherwise identical, and indicating this distinction from the genuine article by the use of such terms as ‘style’, ‘type’, ‘method’, or similar.
The tort of passing-off allows such a distinction to be drawn, because fundamentally it allows traders to tell the truth. GIs do not even allow competing traders to tell the truth – they are silenced altogether. This, it may be argued, ?is a step too far in protecting the legitimate commercial interests of producers of regional products, because it denies the informed consumer the option of purchasing a product that possesses certain characteristics of the genuine product in the knowledge that it is not the genuine product, for example, a yogurt that was made in the same way as Greek yogurt, but was not made in Greece. If the experience is wholesome, or not, the consumer has sufficient information to repeat or decline that choice in the future, and so protect the genuine producers from unfair competition.
The current system has noticeable quirks. Stilton cheese, for example, may not be so called if it is produced in the village of Stilton, because that ?is located outside the prescribed region where genuine Stilton cheese may be produced. By contrast, Melton Mowbray pork pies may be produced outside (as well as within) the village of Melton Mowbray, because the prescribed region is more widely defined than the mere village.
Proposals to extend the GI system to non-agricultural products could distort competition even further. The proposal would extend the ?right to locally manufactured products, such as Menorcan sandals or Basque bérets. An important justification for the GI system is the link to the terroir, and its influence upon the essential characteristics of the product. If that link is weakened further, such that all that is required is a history of the local manufacture of a particular type of artisanal or industrial product, then the room for informed consumer choice will be reduced. It is foreseeable there will be a conflict between such proposed rights and generic terms that are used to describe a particular type ?of product.
Finally, just over the horizon looms the Transatlantic Trade and Investment Partnership (TTIP). The US does not like GIs, because, it asserts, they fetter competition. So, just as the EU is set ?to increase the scope of GIs to non-agricultural products, the likely trade agreement between ?the US and the EU is likely to see their curtailment or at least restriction in scope. Interesting times lie ahead.
Michael Edenborough QC is a barrister practising from Serle Court and specialises in intellectual property, art, sports, entertainment and media, and EU law ?www.serlecourt.co.uk
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GIs: Are some more equal than others? So will this change anything? It remains to be seen what strength will be attributed ?to GIs in the commercial marketplace, once the new system comes into force. All owners and their counsel should be aware of the crucial difference between the mere existence of rights, and the enforceability of those rights, with the attendant time and costs. Much will depend on the value attributed to the GI by the average consumer. The TTIP is the first of several national and legislative issues any proprietor of a GI must consider. The variation in national interpretation of international treaties and conventions in intellectual property and related rights can be staggering. One example would be the implication of article 6bis of the Paris Convention relating to ‘well-known marks’ – one man’s international household brand may be another’s ‘unrecognised’ – and unwelcome – foreign import. When considering policies which cross international borders, national interests will always predominate as a matter of political necessity. Just because a proprietor owns, or may theoretically be able to enforce, an IP right, does not mean that a national court will provide the relief that the owner would like. Another consideration for the enforcement ?of geographic indications is the age-old commercial concern – cost. GIs are not an individual’s monopoly as an indication of origin in the same manner as traditional branding through trade mark registration. In theory a GI ?is simple – the protection of a geographical indication of origin, rather than a commercial indication of origin per se. As such, there may be a variety of parties all with interests in policing perceived misuse. Traditionally GIs are treated with the same consideration as brand dilution, where any misuse by parties not affiliated with the brand is quashed early on, and forcibly. Should the consumer be permitted to lose ?sight of the GI’s origin though small scale infringements, a ‘death by a thousand cuts’ ?may result. This low tolerance policing is not easy for a lone party to sustain. Another key consideration is the extension ?to new types of goods and the effectiveness in relation to these. Until now, GIs have covered agricultural goods naturally identifiable with regional geography. Consumers have been educated that Scotch whisky, Aberdeen Angus beef, and Cornish clotted cream are genuine GIs. However, will they associate a place name used in relation to goods other than fruits of the ?land as a geographic indication? Is it possible, paraphrasing a certain Mr Orwell, that all geographical indications are equal, but ?are some more equal than others? This remains to be tested.
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Carrollanne Lindley, pictured, is an intellectual property partner and Benjamin Scarfield is a technical assistant at Kilburn & Strode ?@KilburnStrode?www.kilburnstrode.com