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

2. An International network of GI producers:
OriGIn - 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)
WIPO Observer Status – November 2004

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

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

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

6. Trademarks and GIs: Two complementary but different concepts
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

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

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

9. GIs: a development tool
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:
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

10. GIs bring a unique added value to both producers and consumers
GIs as a marketing tool
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

11. 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

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

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

14. Protecting Geographical Indications via trademark systems: mission almost impossible!

15. Barriers to GI registration
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

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

17. Inadequate protection via TM system
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!

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

19. The Way Forward A multilateral and not a plurilateral register
The WTO route is required
Accessible to all countries, in particular developing ones
User friendly
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
A register with legal effects
No to a simple database
Need for the burden of the proof to be reversed

20. Thank you very much www.origin-gi.com info@origin-gi.com
·        Let me finish by thanking you for your attention
·     The road will be long but we know where we want to go. We now need to all work together to achieve results!
·      Thank you.