Synthesis
This paper presumes knowledge of general background to the differences between the EU and the US in relation to Geographical Indications (GIs).
The United States (US) and European Union (EU) are both competing in Asia to promote their different approaches to the protection of GIs. The roots of the problem are to be found in the WTO where the US and the EU have agendas for the Doha negotiations which, for the moment at least, have precluded the possibility of agreement. In the absence of agreement in the WTO both the US and the EU are pursuing their separate objectives through bi-lateral and/or pluri-lateral deals. This brief paper shows that the different approaches are not compatible and that third countries might be making agreements that are impossible to reconcile. In addition it raises the question whether the draft Trans-Pacific Partnership agreement is compatible with the WTO TRIPS Agreement.
The scramble for Asia
The first evidence of the different approaches taken can be seen in relation to Korea. The US and Korea concluded a Free Trade Agreement (FTA) (KORUS) in April 2007. It took until October 2011 for the US legislature to ratify the agreement. During this period the EU launched its own FTA negotiations with Korea in May 2007 and concluded EUKOR (EU-Korea FTA) in 2011. This agreement was provisionally applied from 1 July 2011. Thus it entered into force prior to KORUS, which only entered into force on 15 March 2012.
The GI provisions in the Intellectual Property Rights (IPR) Chapters of these two FTAs are very different. While EUKOR1 provisions reflect the EU’s sui generis system for the protection of GIs, KORUS2 is founded in trademark law.
The two FTAs are not easily reconcilable and it is not clear how Korea can successfully respect and apply both.
Competition is intensifying as the EU continues to pursue its GI policy via bilateral negotiations in Asia. On 16 December 2012, the EU concluded its FTA with Singapore, succeeding in having Singapore (which uses a trademark system) agree to establish a GI register, despite the country being quite hostile to the EU GI approach. In addition, the EU is pursuing FTA negotiations with Malaysia (commenced 2010) and Vietnam (commenced 2012). Both these countries have already established GI registers along the lines of the EU system.
The Trans-Pacific Partnership
These three Asian countries are also part of the Trans-Pacific Partnership (TPP) negotiations launched in 2009 for a regional trade agreement between the US, Australia, New Zealand, Canada (which protect GIs through the trademark system) Peru (which has a GI register and FTA with the EU) Chile (uses an Appellations of Origin (AO) system), Mexico (which protects GIs through AOs and Collective Trademarks) and Brunei Darussalam. The draft TPP provisions on GIs are similar to KORUS and will, if adopted as drafted, replicate the reconciliation problem already seen in Korea.
GI law has its modern international basis in the WTO TRIPS agreement. The IPR Chapters of EUKOR, KORUS and the TPP3 all make reference to Article 22 TRIPS in defining GIs: “Indications that identify a good as originating in the territory of a Party 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.”4
However, KORUS and the TPP then go further in adding that “Originating in this chapter does not have the same meaning ascribed to that term in Article [__] (Definitions).”5 In this way the US seeks to broaden the concept of “originating”.6 Under this definition a GI may be something which does not actually originate in the “territory of a Party”. Not only is this in direct conflict with
EU GI theory and the provisions of EUKOR, but it also seems to go beyond the meaning of GIs within the TRIPS.
Furthermore, the GI definitions in KORUS and the TPP provide that “a sign or combination of signs (such as words, including geographical and personal names, as well as letters, numerals, figurative elements, and colors including single colors), in any form whatsoever, shall be eligible to be a GI.” As Koo explains in his analysis of the TPP IPR provisions, this non-exhaustive, wide-encompassing list of “signs or combinations of signs” contains many elements which resemble more trademarks than GIs7 and is in sharp contrast to the idea of GIs in the EU. In the EU, and in most other countries, a GI is merely a name, mostly a public geographic name or, sometime like for example the word ‘Feta’ a non geographic name with a close association with a specific place. Under this concept is it not possible to protect anything other than the name and only in relation to a particular product.
While EUKOR Article 10.21.1 prohibits the unauthorised use of GIs in order to avoid, as provided for in Article 22(2)(a) TRIPS “mislead[ing] the public as to the true place of origin”, the desire to avoid confusion in KORUS and the TPP is not so much related to origin. Since both agreements are rooted in trademark law, they provide for the refusal, opposition or cancellation of GI protection or recognition if the GI is “likely to cause confusion with a [prior] trademark or GI” i) subject of a good faith pending application or registration, ii) that has acquired rights through use in good faith, iii) that has become well known in the territory of the party.8 These provisions again serve to demonstrate that the focus of GI protection in KORUS and the TPP is not the protection of traditional origin but rather previously existing trademarks.
The TPP IPR Chapter goes even further than KORUS in this regard. It includes another ground for refusal of GI protection, namely that “the GI is a generic term for the goods or services associated with the GI in the Party’s territory.”9 Article 2.1810 of the TPP recognises a term as generic “if it is the term customary in common language as the common name for the goods or services associated with the trademark or GI”, while Article 24.6 TRIPS provides the same definition however for goods and services “in the territory of that Member.” By removing the reference to territory, Article 2.18 of the TPP allows a GI which is generic in the territory of a third member but not generic in the territory of the GI’s origin to be refused as a GI. Article 2.18 also says that a trademark or GI may become generic even after their registration or recognition.11
The EU and Singapore
The TPP provision’s clear departure from TRIPS makes it validity questionable under WTO law. Furthermore, these provisions directly undermine the EU approach to GIs. The TPP allow a name such as “Feta” considered generic in the USA not to become a GI in the TPP countries even though it is a registered GI in the EU and has been presented by the EU to Singapore for protection through the draft EU Singapore FTA. How is Singapore to respond to these conflicting demands? In fact, and probably under pressure to be open about the problem, Singapore has issued a Consultation Paper12 to obtain views from domestic and foreign stakeholders as to whether any of the 196 GI names proposed by the EU for protection in Singapore are generic, or found within an existing trademark registered or well known in Singapore. No other EU trading partner has taken this approach previously. It is expected that TPP countries defending a trademark system for GIs will definitely have something to say. Indeed, Australia has issued a guidance paper13 for stakeholder responses to Singapore’s Consultation Paper.
Coexistence
EUKOR, KORUS and the TPP all contain provisions with regard the relationship between GIs and trademarks. Following Article 24(5)14 TRIPS, EUKOR provides for the coexistence of GIs with trademarks applied for, registered or established by use before the date of application of a GI (Article 10.21.5) and the refusal or invalidation of the registration of a trademark in relation to an already protected GI for like goods submitted after the date of application for protection/recognition of the GI (Article 10.23). This coexistence mechanism is the best tool available to resolve conflicts between GIs and trademark, or potentially between different GIs.
The provisions of KORUS and the TPP appear to conflate the concepts of GIs and trademarks rather than rely on the TRIPS in order to deal with conflicts (namely Article 16.1 TRIPS15). KORUS is broader than TRIPS in that it provides that GIs at least for identical or similar goods or services benefiting from a registered trademark cannot be used if such use would result in a likelihood of confusion.16 The TPP goes even further, in that it speaks of GIs for goods or services related to a registered trademark.17 “Related to” is a very broad standard and “may be interpreted much more flexibly thereby leading to a flood of frivolous infringement claims.”18 It completely contradicts international and EU law on GIs, the names of which, in the great majority of cases, refer to the geographic origin of the product. Under the wide-ranging TPP provision, the GI/trademark Camembert de Normandie could be refused simply because it is related to a “Camembert” trademark.
Is the US targeting the EU?
Finally, the TPP IPR Chapter contains a number of provisions, which appear to be directly targeted against EU GI philosophy and efforts in Asia. Article 2.17 of the TPP states that no party shall, whether pursuant to an agreement with a government or government entity or otherwise (such as the EU), in the case of GIs for goods other than wine or spirits, a) prohibit third parties from using translated versions of the GI (against the EU’s Article 23 TRIPS extension efforts), b) prohibit third parties from using a term that is evoked by the GI, and prohibit third party use of any component of a multi-component GI protected by virtue of the agreements even if i) such components are generic and ii) third party use of such components would not give rise to a likelihood of confusion.19 In addition, Article 2.21 of the TPP provides that “where a determination is made that a multi-component term is protected as a GI, each Party shall provide the possibility that particular components of the compound term may be considered generic”20 based on a number of criteria set out in the provision.
These provisions seem to reflect a fear among TPP countries that their producers will no longer be able to sell their products under their current compound names in TPP countries (such as Singapore) that have an FTA with GI provisions which protect the multi-component terms. How real is this concern? The majority of EU GIs are multi-component terms containing a direct
15 This Article states that “The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.”
reference to a geographical place. Their component parts may be used on their own without undermining the EU GI. For example, while the GI Mozzarella di Bufala Campana is protected in Korea and seeking protection in Singapore, Australian and Canadian producers are free to use the term “Mozzarella” in order to sell their home-produced cheese in these countries.
While this is the situation for most EU GIs it is not the case for all. Single word component GIs Asiago, Fontina, Gorgonzola and Feta as well as Parmigiano Reggiano (Parmesan) which the EU seeks to protect through the FTAs (protected in Korea, seeking protection in Singapore) but which are also considered generic or as well-known trademarks in other countries is problematic. The US complains that since the EU succeeded in protecting them under EUKOR, American producers can no longer sell cheeses under these names in Korea. This is considered the reason the Consortium for Common Food Names (CCFN)21 was set up. They seek to lobby the US negotiators on this issue, claiming that the EU is “over-reaching” in its international GI strategy and creating “de facto barriers to trade.”22
In all this, many parties seem to ignore the possible use of the coexistence mechanism provided for in Article 24(5) TRIPS. And the TPP provisions might even be considered to go beyond what is possible under international law. In competing to impose their GI framework across the world, and in particular Asia, the EU and USA (and their partners) are undermining the possibility to create a coherent GI protection regime for all. Bilateral and regional agreements must remain TRIPS compliant and most importantly clearly provide for the coexistence mechanism foreseen by the WTO to solve disputes between GIs and trademarks, which should in turn be extended to solve problems between GIs themselves.
Can the US and the EU see eye to eye?
Rather than locking themselves in a negotiating arm-wrestle match of bilateral, regional and overlapping agreements with the same (Asian) partners, the EU and USA should take a step back from Asia and focus on achieving a coherent compromise in the EU-US Trans-Atlantic Trade and Investment Partnership (TTIP) launched at the start of 2013.
The TTIP is an opportunity to redefine how international GI negotiations should take place. The European Commission’s small victories in guaranteeing the
inclusion of Europe’s most famous GIs, one by one, on FTA lists with each international partner one at a time should not be a reason to celebrate. And bickering about these individual GIs in international negotiations is not the right approach. The objective of the TTIP, and of all trade agreements, is to open up trade and allow the arm-wrestling to take place within the market and not the regulatory framework of the market. It is hoped that the provisions of the TTIP shall reflect its true liberalising purpose: it should merely provide that all GIs properly registered or protected in one country be protected in the other. If ther are problematic names then the coexistence provisions should apply. In relation to which are considered generic in one country and not in another then a patchwork should apply as it does for trademarks.
Negotiators should not be examining individual GIs and arm-wrestling should be left to take place within the market. Only once the EU and USA have settled this in the TPIP should they turn back to Asia with a complementary, rather than conflicting agenda. In the long run, such moves could even give life to the moribund WTO global trade talks.
