European countries were the first to have harnessed the blend of economic opportunity, marketing potential, collective benefit and cultural protection that GI’s represent.
Any mention of Geographical Indications (GIs) typically starts with evocative examples such as ROQUEFORT, GRUYERE or PROSCUITTO DI PARMA. These names tie a place and its producers to reputable products of quality for which a premium price can be commanded.
Legislation to protect the commercial reputation of agricultural producers in discrete geographical localities evolved in Europe. Before the Industrial Revolution commenced, international trade was mainly comprised of agricultural products. As trade developed, it became clear that products from particular regions were more marketable than the same products from other regions because of their superior quality. This quality resulted either from natural geographic advantages, such as climate and geology (e.g. SEVILLE oranges), or from traditional food processing techniques of a region (e.g. BURGUNDY wine). To protect the commercial reputation of local communities against counterfeiters, local legislators next passed laws to preserve these indications of origin and their production methods. GIs start with a unique geographic place and its skilled local producers who combine to render a unique product. This product gains a reputation over time for its special qualities, which leads to high demand and premium prices in the marketplace. Recognition of, and local/national protection for the name follows. Imitators who want to hop on the bandwagon follow along and become problematic – either because they cause consumer deception or confusion as to the true origin of their wares, or because they dilute and destroy the value of the well-known GI over time. Control over the name typically falls to a government agency/commission who strives to ensure the integrity and protection of the GI together with (and in the interest of) a collective body of local producers. These parties (government and producers) together agree on the rules of production of the goods, and their quality criteria.
As trade expanded after the Industrial Revolution, businesses and developed countries’ governments also became concerned with the protection of GIs in international markets. The only multilateral agreement to deal with GIs is the World Trade Organization’s Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), which defines GIs as indications which ‘identify a good as originating in a WTO country’s 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’.
A GI is a collectively owned, sui generis intellectual property right which links the geographic origin of a product to its qualities. In TRIPS it stands as a category of intellectual property apart from trademarks. Although GIs seem at first blush to be akin to trademarks, they differ in material ways.
Unlike a trademark right, it is not owned and used by one person or entity, but belongs to a collective body of producers as they may be found from time to time in a defined geographic locale. Its distinctiveness is not found necessarily in the mark (as with a trade mark), but rather in a blend of unique characteristics derived from the geographic and human production factors which are represented under the mark. It does not identify goods from one producer, but rather from one defined region. For this reason, GI’s cannot be sold or assigned out of the production area. .
And they serve a combination of interests beyond the private economic. These interests include cultural protection and the preservation of tradition for the benefit of a community of local producers and residents, and consumer protection. To consumers they are a way to identify the source and quality of goods on labels, which quality is associated with a particular soil, climate, and method of production.
In the international framework GI’s find themselves under a larger umbrella covering all Indications of Source (of which a simple factual indication such as ‘Made in South Africa’ would be the broadest). And they stand there alongside a more exacting relative called Appellations of Origin. All GIs and Appellations of Origin are Indications of Source, but not vice versa.
Appellations of origin are more exacting than GI’s in that they may only be actual geographical place names, and that their quality or characteristics must be due exclusively or essentially to their geographic environment. All Appellations of Origin are GIs, but not all GIs are Appellations of Origin.
The basic means to protect GI’s are typically provided by WTO member countries (such as South Africa and the USA) through a mixed bag of trade mark systems (such as collective and certification marks), sui generis or administrative systems (such as South Africa’s Wine Of Origin Scheme), unfair competition laws and consumer protection laws.
A certification mark is any word, name, symbol, or device (or any combination thereof) which is used by a person other than its owner to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
A collective mark is a trademark or service mark used by the members of a cooperative, an association, or other collective group or organization and includes marks indicating membership in a union, an association, or other organization.
A collective mark is used only by the members of the collective. Membership of the organization is required, on top of which the organization may have internal rules dictating how the GI may be used. It distinguishes the goods or services of members from those of non-members. An agricultural cooperative of produce sellers is an example of a collective organization, which promotes the goods and services of its members.
The on-going difficulty for particularly the EU to negotiate for greater multilateral GI protection under the TRIPS agreement is a result of a New World vs Old World divide. Immigrants to the new world carried with them their know-how and traditions, and continued using their old-world names for products in their new home countries. Those names have as a result become generic in the new world. They now typify a kind of product, rather than a product produced in a specific region.
TRIPS provide an exception for such grandfathered terms, and there is no obligation under TRIPS for a member country to be deprived of the generic use of GIs (e.g. Parmesan) made before TRIPS came into being. This practice allows for considerable deterioration of global GI protection. Frustrated by the failure thus far to secure greater protection for its GIs at multilateral level, the EU has made them a key feature of its bilateral and plurilateral trade agreement strategies. It is succeeding to a substantial degree at this level to ‘claw back’ generic names which it had heretofore been unable to do at WTO level.
An example of the success of such a claw back strategy can be found in South Africa’s Economic Partnership Agreement with the EU which includes a prohibition on the use of a list of names for cheeses, meats, olive oils, beers, vinegars, fruits and other foodstuffs including FETA, FONTINA, GORGONZOLA, GOUDA HOLLAND, GRANA PADANO, ROQUEFORT, PARMIGIANO REGGIANO, TALEGGIO, WHITE STILTON/BLUE STILTON CHEESE (for cheese), PROSCIUTTO DI PARMA (for meats) and ACETO BALSAMICO DI MODENA (for vinegar).
Some of the names on the list, such as FETA, are used generically in South Africa to describe a style or variety of food product. If the prohibition on FETA, by way of example, is adopted, this will mean that South African cheese producers and retailers may only use FETA in future on cheese produced in, and exported from, Greece. Local feta cheese will have to be relabelled and consumers re-educated, all of which will be costly.
In Europe itself FETA, as a Greek Protected Designation of Origin (PDO) for a white cheese in brine produced from ewes’ milk, had a long claw-back from genericism with challenges brought by Denmark, France and Germany, who produced cheese under the same name from cows’ milk.
The same success with cheese names has been achieved for the EU in its Comprehensive Economic and Trade Agreement with Canada.
GI protection plays a key role in the agricultural industry of the EU. They are perceived as promoting the cultural heritage of EU member states, as well as serving the EU’s agricultural economy. GI goods with their consumer perceptions of greater quality through originality and specialty mean that such goods achieve higher prices thereby raising both commercial awareness of these quality goods and achieving rural development policy objectives. The USA, by contrast sees the EU’s GI regime as little more than market protectionism. When you consider the ‘slippery slope’ of GI protection in Europe, where even the slicing, dicing, grating, packaging and labelling of the GI hams and cheeses may have to be done within the geographic area to entitle the product to GI use, the market protectionism suspicion isn’t entirely without foundation.
Since 1992 the EU has had a sui generis regime to provide protection throughout the EU for GIs for agricultural products and foodstuffs. Registration under the scheme is open to third countries. The latest EU rules on quality schemes for agricultural products and foodstuffs is European Parliament and Council Regulation 1151/2012 which came into force in January 2013. This new regulation provides the rules for Protected Designations of Origin (PDO), Protected Geographical Indications (PGI), and Traditional Specialties Guaranteed (TSG) and optional quality terms. Protected Designations of Origin (PDO) are defined as originating in a specific place, region, or in exceptional cases, a country; a quality or characteristics of the product are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors; the production steps all take place in the defined geographical area (e.g. Parma ham). Protected Geographical Indications (PGI) are defined as originating in a specific place, region or country; quality, reputation or other characteristics is essentially attributable to the geographical origin; at least one of the production steps takes place in the defined geographical area (e.g. Gruyere). Traditional Specialties Guaranteed (TSG) scheme applies to foodstuffs with a ‘traditional’ character. Products are eligible for TSG registration if their specific character results from a traditional production or processing method (e.g. Mozzarella).
We specialise in advising collective and certification bodies, producers, government agencies, retailers, wholesalers, importers, exporters and consumers on GI rights and their enforcement worldwide. We advise on and apply for certification and collective marks, represent clients before certification and government agency bodies such as South Africa’s Wine & Spirit Board and Departments of Agriculture and Trade & Industry, and engage in enforcement proceedings concerning GIs.