The International Framework of GIs and DOs Protection and the European Approach

AuthorGiuseppe Coscia
PositionOrdinario di Diritto dell'Unione europea nell'Università degli studi del Piemonte Orientale "A. Avogadro"
Pages615-628

Paper later essentially annotated presented in a workshop held in Chisinau on 25-26 March 2009 organized in the light of the adoption of the law n. 66/2008 of the Republic of Moldova on the protection of geographical indications, denominations of origin and traditional specialities guaranteed.

Page 615

1. In the field of Intellectual Property Rights (IPRs) one of the basic rules is the principle of territoriality. Every industrial property right is established and protected on the basis of the laws of the country where protection is sought, all with limited geographical scope. The weaknesses of this protection based on local laws are clear as the products could be imitated outside the country of origin without any sanction. Therefore it was soon apparent that the protection of IPRs could be improved only at international level.

Before considering the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) at least two other multilateral conventions must be briefly analysed in order to draw a more comprehensive outline of the international framework of GIs and DOs protection and of the differences of tools adopted therein: the Paris Convention for the Protection of Industrial Property and the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration1.

The Paris Convention, which was agreed in 1883, is the first effort to adopt a common approach to the different IPRs including "indications of source or appellations of origin". First of all, it calls the different local laws to work together setting out a fundamental obligation upon them not to discriminate Page 616 between their own nationals and those of the other Parties to the Convention as regards the protection of IPRs. Requiring every State to ensure national treatment to the citizens of the other parties, i.e. to let them enjoy the advantages its internal laws accord to its own subjects in the field of IPRs "provided that the conditions and formalities imposed upon nationals are complied with"2, is only a first step towards a minimum standard of protection. National treatment does not require that the parties adopt particular standards or procedures for protecting their nationals' intellectual property. In fact GIs are not protected in any local system of laws, at least as such. A few do not organise a local system to register them; others know only the trademark system of protection and so permit local enterprises to acquire monopolistic rights also on geographical names of other countries, as it happened in Canada with "Parma ham"; someone else protects them only on the basis of unfair competition laws and so on.

Besides, the Convention provides a minimum substantial protection against direct or indirect use of false indications of source and obliges the Parties to seize the goods on importation when so labelled; but "if the legislation of a country does not permit seizure on importation, seizure shall be replaced by prohibition of importation or by seizure inside the country". In any case, the Parties are bound by the Convention to assure to the other Parties' nationals "appropriate legal remedies effectively to repress all the acts referred to in its articles 9, 10 and 10bis"3.

The last article, regarding unfair competition, prohibits indications that are "liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose or the quantity of the goods", but not as to their origin. It seems therefore that the Convention protects against false indications of geographical origin, but not against misleading indications, for example those used together with expressions such as "kind", "type", "style", "imitation" or the like4. It rests on the internal courts to decide if an indication is liable to mislead. Therefore, the Paris Convention affords a first but limited protection to GIs, inadequate to the real needs of international commerce and in any case weaker if compared with that provided for trademarks therein.

The Lisbon Agreement must be considered because it offers a model of international, stronger protection of GIs achieved through the establishment of an international register of geographical indication. In fact, the Agreement obliges the parties to protect on their territories the appellations of origin of the other parties products, "recognized and protected as such in the country of origin and registered at the International Bureau of Intellectual Property". It seems that the Page 617 protection in the country of origin cannot stem from a general law of a State, but through a concrete act determining the specific area of origin of the products designated with a geographical name and the qualities or characteristics needed to deserve it.

It's worth noting that the terminologies used in the conventions providing a protection for GIs are not the same and that there is a need to avoid misunderstanding. The Paris Convention uses the notions "indications of source or appellation of origin" but does not define the two concepts; the Lisbon Agreement only provides for "appellations of origin", a notion strictly defined as "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". As we will see below, the TRIPs Agreement uses "geographical indications" and defines them with a wording drawn from the Lisbon Agreement, but with relevant modifications, as for example the introduction of reputation as a new relevant factor capable of linking a product to a place, which gives a wider sense to the notion. With the exception of "indication of source", all other terms link the quality or reputation of the considered goods to their geographical origin.

The substantive provisions of the Paris Convention are part of the general framework of international IPRs protection because they have been incorporated in the TRIPs Agreement by reference to them made by its art. 2.1. The Lisbon Agreement is relevant especially in Europe.

2. The TRIPs Agreement is the core of the international framework of protection of IPRs and of the recognition of geographical indications.

For the purposes of TRIPs, GIs are "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".

The definition covers a wide range of goods, but it is disputed if it includes services. Its wording recalls art. 2 of the Lisbon Agreement, but adds "reputation" to the list of alternative conditions goods need to meet with their place of origin in order to qualify for protection. The protected indication is not necessarily a true geographical name; it can be a name associated with a place, for example "Feta", or any other sign capable to evoke the geographical origin.

The function of GIs is to represent the geographical places where they are mined, grown or manufactured at least in part and from where they essentially draw a given quality, reputation or other not better-defined characteristics5. Page 618 Hence different enterprises of such a territory are entitled to use the same geographical name.

As stated before, art. 22.1 provides the requirements a GI needs to meet to qualify for protection, but to decide whether the requested conditions are met is up to the State where such protection is sought. All this marks a relevant difference as regards the Lisbon Agreement, which binds the Parties to protect on their territories the appellations of origin of products "recognised and protected as such in the country of origin and registered at the International Bureau of Intellectual Property (...)"6.

Under the TRIPs Agreement a sign can be protected as a GI in a given State, while in others it may not be perceived as a geographical name. Moreover, outside its place of origin a GI may be considered as a generic name designating a type of product, for example a recipe, and not as a means to identify both the place of origin of a good and qualities or reputation derived from it. The WTO Members have significant room to evaluate, both autonomously and with regard to the linguistic awareness of their relevant public, if a name meets the conditions to qualify for protection.

The TRIPs Agreement doesn't even oblige WTO Members to adopt particular standards or procedural rules to protect their nationals' intellectual property rights. The WTO Members employ different legal means to protect geographical indications inside their territory. Such means range from specific laws on the subject matter to trademark laws, consumers' protection, unfair competition laws and so on.

Anyhow, besides the fundamental non-discrimination rules such as those on national treatment and most-favoured-nation treatment and the others on the Page 619 enforcement of intellectual property rights, applicable in any case, the TRIPs Agreement binds the WTO Members to assure a minimum standard of protection to every intellectual property right providing sets of separate regulations concerning its availability, scope and use.

The minimum standard protection provided for goods by art. 22 is vague and weaker than that one granted to trademarks, wines and spirits. Trademarks must be protected against the use of identical or similar signs by any non-authorized party "where such use would result in a likelihood of confusion".

As regards wines and spirits each WTO Member "shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place...

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