Issue 97 | August 19, 2003
EU and US Battle over Geographical Indicators
 A European Union ("EU") proposal to prohibit the use of certain words to describe food and wine not from specific geographic regions sparked lively discussions among the nearly 200 participants at a three-day symposium on geographical indications ("GIs") co-sponsored by the U.S. Patent and Trademark Office ("USPTO") and the World Intellectual Property Organization ("WIPO") on July 9-11, 2003 in San Francisco.

The symposium was held in anticipation of a World Trade Organization ("WTO") meeting on GIs scheduled for September 10-14 in Cancun, Mexico. At that meeting, the European Union is expected to call for eliminating the use of certain terms to describe food and wine - including "burgundy," "chablis," "champagne," "feta," "gorgonzola," "parmesan," "port," and "sherry" - unless those products come from Europe. According to a press release from the USPTO, if the EU is successful, then use of terms such as feta and gorgonzola for cheese, and port and sherry for wine - now considered generic in many WTO member nations - could be prohibited in the United States, resulting in consumer confusion and potentially injuring U.S. domestic and international commerce in food and wine. In response, the U.S. is expected to challenge the EU for failure to protect U.S. geographic indications such as "Florida" for oranges and "Idaho" for potatoes.

"It is more than a culinary debate. Geographical indications are valuable intellectual property rights," said James E. Rogan, Under Secretary of Commerce for Intellectual Property, in his opening address to symposium participants. "There are two problems, really: Americans can't get their GIs protected overseas, and Europe is demanding that we stop using common terms like ‘parmesan.’ This really strikes us as unfair. Why shouldn't Americans be able to eat a bologna sandwich or have a glass of chablis? And why should U.S. trademarks be jeopardized because some countries think they should have exclusive rights to use words like ‘parmesan’ or 'feta’"?

In fact, there is very little international consensus on the appropriate framework of protection for GIs. While the Trade Related Aspects of Intellectual Property ("TRIPs") agreement sets out minimum standards for protection of GIs, it does not define a system that WTO Members must implement. Geographical indications are therefore protected by a variety of national laws and under a wide range of legal theories including trademark, unfair competition, consumer protection, and special laws for the protection of geographical indications. For example, "Roquefort" has been reserved for cheese produced in France under an Appellation d'Origine Contrôlée by the French Institut National des Appellations d'Origine, EU Agricultural Regulation No. 2081/92, and U.S. Trademark Registration No. 571,798. Moreover, whether an indicator functions as a geographical indication is often a matter of local consumer perception.

In addition to the current European registration systems, European Community Trademarks Commissioner Pascal Lamy has given his support to the new, multilateral Organization for an International Geographical Indications Network ("ORIGIN"). "It will be able to be the ideal platform to make known the quality expectations of agricultural producers, as well as the ideal forum to facilitate transfers of technology and know-how which developing country producers need so much," he told the group in June of 2003. "The European Commission will be at your side."

Concerns over such moves to enhance protection of GIs for what, so far, is a relatively small group of producers, led to the testimony of Jon Dudas, Deputy Director of the United States Patent and Trademark Office, before the House Committee on Agriculture on July 22. "Some WTO members are attempting to advance a framework of protection that would deprive U.S. producers, trademark owners and consumers of the benefits negotiated in the TRIPs Agreement in 1994," he said, without offering anything in return. According to U.S. officials, the fact that no U.S. geographical indication is currently protected in the EU under it's Agriculture Regulation is indicative of the systematic discrimination U.S. owners of geographical indications are facing in the EU.

Mr. Dudas's appearance before the Agricultural Committee, rather than the Judiciary Committee, which overseas Patent Office operations, highlights another important aspect of this dispute. While the U.S. sees this problem as a relatively simple intellectual property issue under the TRIPs agreement, Europe views the problem as a broader question of market access for agricultural products. Other countries have taken the more pragmatic view that progress in the agriculture negotiations will require progress on this issue in the TRIPS Council. Even after the world's two biggest trading powers reached an unheard-of agreement last week on cutting farm subsidies and duties on agricultural exports, they spent the next day fielding criticism from the rest of the world. "You're damned if you do and damned if you don't," said Peter Carl, the EU's Director General for Trade in a report by the Associated Press published on August 14.

For more information on how these diplomatic affairs could affect your trademark portfolio, please contact the author, Bill Heinze (billheinze@tkhr.com) at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.