Geographical indications and their use to promote local products Damascus, May 2007 Octavio Espinosa WIPO

What is a geographical indication ? Historically, at the international multilateral level several terms have been used to refer to indications of geographical origin The following expressions are relevant: indication of source appellation of origin geographical indication

Terminology (1/3) Indication of source: not formally defined in any international treaty The Madrid Agreement on the Repression of False or Deceptive Indications of Source on Goods (1891) refers to : an indication on goods by which one of the countries (…), or a place situated therein, is directly or indirectly indicated as being the place of origin of the goods

Terminology (2/3) Appellation of origin (AO): defined in the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (1958): the geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors Note: traditional appellations i.e. designations that are not constituted by a geographical name but have a geographical connotation (quality link), may be assimilated to appellations of origin. E.g. FETA (Greek cheese), REBLOCHON (French cheese), CAVA (Spanish sparkling wine)

Terminology (3/3) Geographical indication (GI) : this expression now has a specific legal meaning under the TRIPS Agreement (1994): indications which identify a good as originating in the territory of a 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 Note: this definition is substantially equivalent to the definition of appellation of origin under the Lisbon Agreement: both provide for a quality link between the product and its geographical origin

Differences in the definitions ? Appellation of origin (AO)Geographical indication (GI) a geographical name an indication designates a product identifies a good no express reference reputation mentioned as to reputation possible characteristic link to geographical link to geographical environment origin clarification: natural no reference to natural and and human factors human factors

Informative value of GIs Information. GIs convey information: not only that the goods are different from similar goods, but also that the goods have an origin, quality and other desirable characteristics. Quality link. Essential to the notions of GI and appellation of origin. Direct causal link between the characteristics of the goods and their place of origin GIs denote certain characteristics, quality and reputation when used in connection with particular goods and products. This quality link has marketing potential and hence commercial value

Market value of GIs –Consumer preferences. Consumers appreciate quality and special characteristics in the goods they buy. This is especially true regarding food and agricultural products, but extends equally to other goods –Perceived difference. Consumers are prepared to pay a premium to obtain goods that are - or are perceived to be - special or different. E.g produced by traditional processes; manufactured with natural or local ingredients; use of special or unique raw materials; handmade with local traditional know-how

Use of GIs in commerce (1/3) Unique products. Every country or region produces goods that can be regarded as special or unique, because they result from a particular set of conditions, both natural and human, that does not occur in other places Tradition and culture. This applies particularly to countries and regions where traditional, hand- intensive production methods have been conserved. Those production methods constitute valuable traditional knowledge and skills, and are in fact expressions of traditional culture

Use of GIs in commerce (2/3) GIs as marketing tool. GIs function as distinctive signs to distinguish traditional and natural products in the marketplace. GIs can and should be used as marketing tools, e.g. by SMEs Additional value. The reputation of a GI can and often is established in conjunction with the use of trademarks. Both add value to a product if the products quality meets consumers expectations Especially valuable distinctive sign. A well reputed geographical indication can become as valuable as other distinctive signs (marks, trade names, etc) since it warrants a unique geographical origin and inherent product characteristics

Use of GIs in commerce (3/3) Geographical indications release their maximum potential when used to promote exports and take a foothold in foreign markets Need for co-organized or collective organization by the producers of the relevant goods, and modern marketing techniques Coordination can be achieved by private endeavor (cooperatives, syndicates or producers associations), and through a State-coordinated operation or agency. Best results achieved through a combination of both Several countries use government agencies to overview the recognition of GIs, assist in promoting exports of goods with GIs, and negotiate treaties with trading partners to have their GIs recognized

Relation between geographic indications and marks How can indications of geographical origin be protected? By recognizing them : – as geographical indications (or appellations of origin) – as marks Specificity vs. versatility: –Geographical indications (appellations of origin) are specific for conveying information on geographical origin and the quality link –Marks may be more versatile, easier to use (licensing, assignment) and may be recognized as such in more jurisdictions

What is a mark? A mark is any sign capable of distinguishing goods or services in trade (viz. TRIPS, Art. 15.1) Most marks are visible signs (perceptible by the sense of sight), and in particular word marks Word marks may consist of or include geographical names e.g. Manhattan (clothes), Ibiza (cars), Air France (transport services), Evian (spring water) A geographical name may be recognized and registered as a mark if it is not geographically descriptive (i.e. indicates geographic provenance) or geographically misdescriptive (i.e. likely to cause confusion as to geographic provenance)

Special types of marks: similar to AOs and GIs ? Collective mark: a mark owned by a collective organization, e.g. an association, federation of producers, syndicate, cooperative, etc. whose members are allowed to use the mark under the rules prescribed by the owner of the mark the mark indicates membership in the organization use of the mark by a member may require compliance with certain requirements in the members goods or services: quality, characteristics, geographical origin Certification mark: a mark owned by a certifying institution (public or private) who allows other persons to use the mark on their goods or services if the owner of the mark certifies compliance with specified standards or characteristics the mark indicates that goods or services comply with standards defined, applied or endorsed by the owner of the mark focus on the quality or characteristics of the product, which may include geographical origin

Geographical indications vs. marks (1/6) TRIPS (Art.1.1) gives WTO Members freedom to determine the appropriate method of implementing its provisions within their own legal system and practice. Therefore, protection of GIs can be accomplished in different ways. Countries are not obliged to have special, dedicated sui generis laws or registers for GIs Consequently, some countries do not have legislation on GIs but resort to collective marks and certification marks to comply with TRIPS obligations on GIs

Geographical Indications vs. Marks (2/6) Some practical differences between geographical indications and marks: –Inception: marks are coined (fanciful) or chosen purposely (arbitrary) to distinguish products; GIs are based on a particular preexisting geographical name, and generally have a background of tradition and history –Link to location: a mark has no inherent attachment to a region or community (carrier of corporate values); a GI is inherently attached to a particular geographic region or location, and can have cultural value (carrier of traditional local values)

Geographical Indications vs. Marks (3/6) Ownership: marks are privately owned; GIs normally have no owner or are collectively owned Assignment: marks can generally be assigned and thus relocated; GIs cannot be assigned independently Scope of protection may differ: GIs are protected against use in translation or transliteration; marks are protected as registered GIs are protected regardless of any particular form of presentation; marks are protected as registered GIs generally apply to goods only; marks may apply to goods or services

Geographical Indications vs. Marks (4/6) Grounds for refusal of registration: GIs will not be regarded as geographically descriptive in respect of the designated product; a mark (other than certification or collective) may not be registered if it is geographically descriptive User requirement: use of a mark is generally required to maintain registration; registered GIs are harder to cancel on grounds of non use (disuse must occur in country of origin) Enforcement of marks (including collective or certification) depends on owner; GIs may be enforced ex officio in many jurisdictions

Geographical Indications vs. Marks (5/6) Access to international systems –Marks may be protected internationally through the Madrid system for the international registration of marks -- large membership (+/- 80 Parties) –GIs may be protected internationally through the Lisbon system for the international registration of appellations of origin -- fewer members (26 Parties) Access to UDRP to solve domain name cybersquatting Marks OK GIs yet to be admitted on same footing as marks

Geographical Indications vs. Marks (6/6) Geographical indications and marks are complementary –They have different purposes: GIs indicate geographical origin and consequential characteristics of the goods; marks indicate commercial origin or commercial sponsorship of the goods –Producers often use marks and GIs simultaneously for best results. Marketing strategies must prevail –Where special protection for GIs is not available, alternative protection might be achieved through special types of marks: collective, certification

Concluding remarks