For Europeans the idea that special Italian and French (and even Irish) foodstuffs, wines and spirits should be protected goes without saying. The idea of wines like Champagne and Barolo, cheeses like Gorgonzola and Roquefort, cured meats like prosciutto di Parma and Serrano and even Salmon from Clew Bay (in Ireland) or Scotland, resonate with the consumer. These are ‘our’ products and part of our gastronomic and cultural heritage. They have special qualities which are as much to do with the taste and they way they are made as with our feelings in relation to them.
Americans, and particularly those in the United States, think differently. They think that many of the names which we Europeans consider to be specifically linked to a place are not specific at all but common to types of foods. Thus the word champagne describes a type of sparking white wine and gorgonzola a type of blue cheese. Parmesan is what you top your pasta with, not a special cheese made in Parma.
These are two radically different points of view. The US and the EU have been on opposite sides in the WTO Doha Round discussions on GIs, in the reform of the Lisbon treaty on appellations of origin, and now in the TTIP. But the TTIP is different. In Doha or in Lisbon there was no imperative to find an agreement. If TTIP is to succeed then there is going to have to be some sort of agreement on GIs.
The US and the EU are setting themselves up for a round of fierce arm wrestling. 52 US senators have written to the US negotiators saying, in effect, that they will not back TTIP if the US is to lose the use of what they consider to be common names. The EU has said, in effect, that it will not open its agricultural market to increased exports from the US (a key US demand) if the US does not agree to protect the EU’s GIs.
Wait and see. TTIP will come down to wrangling over how many names that the US considers common and the EU considers specific should be included in the deal. We have seen something similar in the negotiations with Canada for the CETA agreement. It was hard then. Agreement was not reached until the last night of negotiations and only then when Barroso (EU Commission President) and Harper (Canadian Prime Minister) needed to be able to announce an agreement and ran out of time.
The US does not have a special law on GIs. It considers that GIs are a subset of trade marks. The EU considers that GIs are a special form of Intellectual Property right needing a special form of protection. The EU bases its approach on Article 22(1) of the WTO TRIPs Agreement (the agreement on intellectual property which requires all WTO members to protect all IP rights).
As the US uses trade mark law it will not protect EU GIs because it thinks many of them are common names. As such they are not distinctive and thus not registrable as trade marks as they are not capable of distinguishing one product from another.
The US is right that many GI names are not registrable as trade marks. But not for the reason the US gives. They are not registrable as trade marks because they simply are not trade marks. They are GIs. And as GIs different criteria apply. The distinctiveness test for trade marks is just not applicable. No trade mark test is applicable including the basic trade mark concepts like private ownership and first in time first in right.
If there is to be any agreement between the US and the EU on GIs this fundamental difference between trade marks and GIs is going to have to be addressed. So far the EU has been reluctant to do this. It is not clear why.
The EU has law on its side. TRIPs provides a definition of GIs. TRIPs requires that each WTO member has a system to protect GIs. The US does not comply with its TRIPs obligations. The definition of GIs is that the qualities, characteristics or reputation of a GI product must be essentially attributable to their geographic origin. US trade mark law has no provision for carrying out an essentially attributable test. And even if it did there would still be the problem of first in time first in right and private rights. How can first in time first in right be applicable to GIs. GIs are a culture not a sign to be fought over by two competing individual seekers of trade mark rents. GIs belong to the community and not to an individual.
There is a long way to go in educating trade negotiators on the essential differences between trade marks and GIs. But if there is to be agreement on TTIP it is necessary.