To paraphrase Shakespeare, a cheese by any other name, would it taste as good? Recently, there has been a tremendous amount of news regarding the possible restriction on the use of popular cheese names that are also, arguably, a Geographical Indicator (GI). Cheese and other food names such as “parmesan,” “asiago,” “camembert,” “feta,” “gouda,” “kalamata” and “pilsner” could possibly be considered GIs that would carry restrictions on use depending on possible changes in the law in this country and abroad. But what is a GI and how does the law afford protection to them? Furthermore, what can food producers do to protect their commercial interests in their brands and products?
A good place to start in understanding GIs is in understanding trademarks. Trademarks are ubiquitous in the business world, serving as indicators of a specific source of products or goods that they are applied to. VELVEETA, OREO, SPAM, COCA-COLA are all fixed in the minds of the public as goods that come from a specific source. Trademark laws protect consumers by identifying the source of the goods. If consumers value a certain brand they can rely on the brand’s trademark to readily identify the goods that they want. Similarly, trademark laws protect consumers by indicating quality. Each trademark represents a certain level of quality that consumers can consistently expect among all goods bearing the same trademark. Finally, trademark laws protect the investments of producers in creating good will among consumers. Trademark laws grant owners the right to stop unauthorized use of the trademark and prevent confusingly similar approximations of the trademark. Without such protections, consumers might mistakenly buy goods that they do not want. Additionally, the trademark owner’s reputation would be damaged by the presence of similarly marked, lower quality goods on the market and the infringer would unfairly benefit by the free-riding on the trademark owner’s investment in the mark.
A GI is similar to a trademark in many ways, but different in others. Instead of identifying a specific business source, geographical indications exist where a product is named after its geographical origin, and where the product has certain qualities attributable to its geography. Examples of geographical origin include CHAMPAGNE sparkling wine, FLORIDA Oranges, PARMIGIANO REGGIANO Cheese. Similar to a trademark, one goal of GI protection is to protect the consumer, so the consumer is getting the quality expected from the GI when purchasing goods labeled with the GI. Another goal of GI protection is the protection of businesses in the geographic areas that produce the products from losing market share from competitors in other geographical regions that, arguably, are not producing goods of the same quality and type as those attributable those in the geographic region of the GI. Internationally, the fundamental legal protection structure for GIs is set forth in an international agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Most of the countries of the world are members, including U.S., Canada, Mexico, the European Union, Russia, India, Brazil, and Australia.
The TRIPS agreement provides a broad framework containing certain protections that member countries are to follow when drafting their own intellectual property laws. This framework provides the minimal level of protection that member countries are required to provide under their own domestic laws. With respect to GIs, TRIPS provides that member countries must provide legal means for interested parties to prevent: “the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin on of the good”. Each member country, therefore, institutes its own laws in handling GIs in line with the provisions of TRIPS.
For the most part, the U.S. currently uses its trademark laws, specifically the registration of “certification” and “collective” marks to protect GIs pursuant to its TRIPS obligations. Under this framework, various trade associations or regional organizations can seek protection for a GI by way of certification mark registration of a collective mark registration. A certification mark is a type of trademark that can certify a geographic origin (geographic placement names can be registered without extensive use, unlike with trademarks); materials used, quality, method of manufacture and accuracy; or products made under the auspices of, or by, members of specific trade union or organization. Certification marks are not placed on names by the owner but, rather, the goods that meet the specific certification qualities that the organizer and owner signify must be met in order to bear the certification mark. Examples of GIs registered as certification marks in the U.S. would be VIDALIA for onions, owned by the State of Georgia’s Department of Agriculture, U.S. Trademark Registration Number 1709019; PROSCIUTTO DE PARMA for ham, owned by the Consorzio Dell Prosciutto De Parma Association, U.S. Registration Numbers 2014629, 2014628 and 2014627; and ROQUEFORT for cheese, owned by the Community of Roquefort, U.S. Registration Number 571798. A collective mark indicates commercial origin of goods and services and members of a group, rather than origin and one specific party. Geographic terms cannot be registered as a collective mark without extensive use in commerce, but other geographical indications can be (e.g., outline of a region or landmark, a fanciful name, or a name of the collective). An example of a collective mark is the black rooster design for CHIANTI CLASSICO, owned by the Consorzio Vino Chianti Classico Consortium of Italy, U.S. Collective Mark Registration Number 0889138.
While many other countries also use the trademark system to protect GIs, many countries, and the European Union in particular, also contain other sets of legal protections for GIs. The European Union itself has sets of laws related to Protected Designations of Origin (PDOs) and Protected Geographical Indications (PGI) that, apart from trademark laws, provide strong protection for GI names, and are much more restrictive than in the U.S.
While the TRIPS agreement provides minimum levels of legal protection that member countries must provide, the framework of TRIPS goes on to indicate, however, that a member country need not protect a GI that has come to signify a type of good (i.e. the term is “generic”) rather than signifying the geographical origin of the good. This determination is up to the member country. U.S. trademark law prevents generic goods from being protected as a certification or collective mark in the U.S., however many names that are considered generic in the U.S., such as parmesan, feta, and gouda, may be treated differently by different countries.
This variation in the protection of GIs under the TRIPS structure for different member countries has led to challenges in the negotiation of the Transatlantic Free Trade Area (TAFTA) and the Transatlantic Trade and Investment Partnership (TTIP) trade agreements where the US and EU are trying to agree on different structures of enforcement. Under the proposed trade agreements, the EU is looking for proposals that both the U.S. and EU would comply with on the protection of various GIs. The framework that the EU is proposing would make many food names which are currently generic under U.S. law, protectable as GI’s in the EU. This would place restrictions on how U.S. food stuffs could be labeled in the EU. U.S. food manufacturers face the possibility labeling their Gouda as a “Gouda style” or “imitation Gouda”. This potential adverse outcome has gotten the attention of U.S. trade groups and U.S. politicians. On May 9, 2014, a group of 177 Congressional Representatives sent a letter to U.S. trade officials that urged them to stop European Union (EU) efforts to use geographical indications to restrict the use of common cheese names. This is a high-stakes proposition as billions of dollars are at stake resulting from possible losses resulting from disruptive relabeling and remarketing campaigns if existing products become subject to stricter regulations.
So what is a food producer to do? Producers and businesses in the food production space, as well as their associated trade organizations, should keep a close eye on international trade agreements, as well as any proposed changes to the TRIPS agreement that can have an effect on the enforcement of GIs in the U.S. and abroad. Utilizing lobbying efforts to work with congress on the importance of this issue will aid in preventing adverse effects of implementation of restrictive cross boarder GI issues. On an offensive front, producers and trade organizations should think about utilizing the existing United States protection system under certification and collection marks to be proactive in seeking protection for their own GIs that are of interest to their industry. Producers should also think about being aggressive on strengthening the protection of their label brand apart from the name of the food stuff itself, by seeking strong trademark protections for the label brand in any country where the producer distributes their product, or plans to distribute their product. If changes in GI restrictions force a “relabeling scheme” due to increased GI protection, the producer will have to rely on the strength of their label brand, apart from the food name, to indicate the quality and superiority of the food stuff, and will want strong protection for the good will invested in their label brand. A domestic and foreign trademark registration strategy should be put in place to protect such label brands for the food producer. From WISCONSIN cheese to IDAHO potatoes, GIs are not going away, and a strategic understanding of the impact and use of GIs is important for the food producer.