University of Buckingham: Publication of the week

Patricia Covarrubia, “Protection of non-agricultural GIs: a window on what is happening in Latin America”, European Intellectual Property Review, E.I.P.R. 2016, 38(3), 129-131.
This piece examines “the laws in South American states on the protection of geographical indications (GIs) relating to non-agricultural products, including textiles and craft works. Presents data on the number of such GIs that are registered proportional to the agricultural product GIs. Considers why these states extend GI protection to non-agricultural products. Notes that a proposal to do likewise is under consideration in the EU.”
Dr Covarrubia compares different national legislations in Latin American countries as well as observing the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS, WTO) and the Lisbon Agreement for the protection of appellation of origin and their international registration (WIPO).

The publication is based on a paper presented in September 2015 at the Symposium on Geographical Indications (GIs), sponsored by Grana Padano and CIIPM. The symposium covered the policy aspects as well as the practical implications, challenges, and opportunities that GI involves. Nick Coppola who is currently writing his PhD on "The EU Agricultural Quality Policy Reform" was the one that organized such a wonderful event (a nutshell of the event can be read here). Nick has also wrote a couple of post for this blog in the topic of GIs. Indeed, we can not wait to read his thesis which surely will become a monologue published by a reputable editorial in the UK (hopefully I will read it before it becomes expensive).

For more information on GI in Latin America, specifically in the trade bloc Mercosur, there is a webinar provided by the Latin America IPR SMEs here.

Third Country Producers Exempt from the Compulsory Use PDO and PGI Symbols on Product Labels

From the 4th January 2016 the use of PDO and PGI logos on the labelling of agricultural products bearing names protected as Geographical Indications under the EU legislation has become compulsory, as an effect of Article 12 Regulation (EU) 1151/2012 coming into force. According to section 6 of the same Article 12, this provision does not apply to GI products from Third Countries (meaning: non-EU Member States) whose names are included in the EU register as a PDO or PGI.

Since 1992 (Council Regulation (EEC) No 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs [1992] OJ L 208/1), the EU has introduced certifications aimed at guaranteeing the authenticity of methods of production of some agricultural products, mainly intended for human consumption, that have a link with a determined geographic area. Tools like PDO (Protected denomination of Origin) and PGI (Protected Geographical Indication) have been established under EU legislation; their difference is the closer or looser link to the geographic area, required to obtain the award.

Right holders can market their products using the registered names alongside the indications “Protected denomination of Origin” or “Protected Geographical Indication” or the corresponding abbreviations “PDO” or “PGI”. They can also use the associated graphic symbols, or logos, which were created at communitary level in 1994 and 1994, with the purpose to raise consumer awareness regarding the “European agricultural quality schemes”, and to make it difficult to counterfeit authentic products. Visual attempts to further attract the attention of the consumers, with the change of the colour of the two logos, were subsequently operated by Commission Regulation (EC) No 628/2008 (amending Regulation (EC) No 1898/2006 laying down detailed rules of implementation of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs [2008] OJ L 173/3).

The original 1992 Regulation has been replaced by a new Regulation in 2006 (see below); this has been, in turn, repealed by Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs (Official Journal of the European Union L 343 of 14 December 2012. Similar, yet separate, schemes are established for wines, spirits and aromatised drinks), currently in force since 1st January 2013.
However, according to Article 59 Regulation 1151, the provisions under Article 12 of the same Regulation only came into force on 4th January 2016. Under section 3 of Article 12, the use of PDO and PGI logos on the labelling of agricultural products bearing names protected as Geographical Indications under the EU legislation has become compulsory. In addition, the registered name of the product should appear in the same field of vision.

An important waiver to this provision is laid down by Article 12, section 6, in the case of products originating in third countries marketed under a name entered in the register. To understand this waiver, the certification process must be briefly recalled. This has been laid down by the original Council Regulation (EEC) No 2081/92, and stayed substantially untouched until 2005.
In that year, a WTO Panel (25 April 2005 - WTO WT/DS 124/23 and WT/DS 290/21) ruled on a contention raised by the US and Australia on a matter of national treatment with regard to Regulation 2081; the panel found that said Regulation required that a registration of a GI from a country outside the European Community was contingent upon the Government of that country adopting a system of GI protection equivalent to the EC’s sui generis system and offering reciprocal protection to EC GIs; as such, the registration process for third country producers was not compliant with TRIPs obligations, because it restricted their access to the EC system. As a result, the EC had to replace Regulation 2081 with Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs [2006] (Official Journal of the European Union L 93/12).

After the opening of the system, extra-EU products have been registered as PDOs or PGIs: in October 2007, after more than two years of evaluation by the European Commission in Brussels, Café de Colombia became the first agricultural food product from a country that does not belong to the European Union to receive PGI recognition in Europe.

With regard to the aspect analysed in this post, Article 8 of Regulation 510/06 already laid down a waiver for Third Country producers as to the compulsory use of the indication “PDO”, “PGI” in alternative to (or in conjunction with) the use of the European logos. The choice of the application of the logos on the labels was left to the producers (rectius: right holders); under the new Regulation 1151, they are still dispensed from such apposition. This is expressly laid down by Article 12, section 6, derogating from the provision in section 3 analysed above; the latter is therefore applicable to the European producers only.

This provision seems to encourage registrations from producers from Third Countries without burdening them with additional obligations; as such, it could be interpreted as a way of promoting the EU sui generis GI system, and could therefore be framed within a wider commercial strategy by the EU. Those operators are let free not to print the PDO or PGI logo on the label; nevertheless, there are advantages in actually using the EU symbols, not at least for marketing purposes: European consumers, or at least those leaving in the Member States where the EU origin schemes are better known, are willing to pay a premium price, when they associate implicit qualities in the origin of a product. This is why some of the (not numerous) non-EU products recognised in the EU register bear the PDO or PGI logo well visible on the packaging.

Finally, according to Article 12 section 4, which is applicable to Third Country products as well, “In addition, the following may also appear on the labelling: depictions of the geographical area of origin, (…) and text, graphics or symbols referring to the Member State and/or region in which that geographical area of origin is located.” This is a reference to all those elements, such as flags or contours of a Country which could be legitimately used if genuinely linked to a geographical name, whether recognised as a GI or not; but if their use is misleading to the consumers, this could amount to an act of unfair competition, or as a prohibited “evocation” if falsely referred to a name protected under Regulation 1151.

By Nicola Coppola – Bournemouth University

Symposium: Geographical Indications in the EU -- Policy aspects and future regulation

Starting a new week and I am still not able to detach from a symposium that I attended last week. The reason could be that the high standard of the speakers and the friendly debate have woken up my Latin passion. While I am not an expert on GI, I followed every single speaker with such an understanding and desire that I may have found my topic for years to come [watch up Nick!]

Yet, you may wonder why I am covering GI in the EU since this blog is dedicated to Latin America. Well, for a start I was invited to speak in the symposium (I am not sure why if as I said I am not an expert on GI) but it was not until the end of the debate that I realised a key point (I will come to this later on). The majority of speakers while assessing the situation in the EU some extended as to cover international law, bilateral trade agreements, and the basic understanding of what is protected and why, and thus, relevant to any other jurisdiction. Generally, speakers when covering GIs provided opinions on: territorial development and the creation of public goods (Dev Gangjee – University of Oxford)); the principle of coexistence between trade marks and GIs (Gail Evans – Queen Mary University of London); insight field work and stories from farmers and the registration process (Funda Lancaster DEFRA); consumer confusion (Vito Rubino - Universita del Piemonte Orientale); the controversies between EU legislation and national protection (Nicola Coppola aka Nick – University of Bournemouth); the protection of non-agricultural products (Natasha Chick – UK IPO); and the Lisbon system and the Geneva Act (Matteo Gragnani - WIPO). While the speakers focused on these issues there were also some comments or remarks noting sustainable development, know-how, and biodiversity. Actually there were two questions from the audience that were identifying cultural heritage (one coming from a heritage consultant). By writing this remarks you can just grasp the different approaches that one system (GI) may have.

I was the last speaker and been not an expert on the area I was getting nervous by the minute. My topic was the protection of non-agricultural products in Latin America and perhaps what I brought to the table was something that maybe was not fully addressed by the previous speakers i.e. to preserve and safeguard culture. The point been that while it is important to ‘protect’ meaning preventing unauthorised or inappropriate use (IP negative right), it is also important to connect this protection to conservation of biological diversity and the rights of indigenous peoples. As I undertook to cover Latin America I gave examples from Brazil, Panama, the Andeans countries and Chile. I also indicated that GIs are not for everyone and gave the example of ‘chulucanas’ in Peru (see Rosemary Coombe). Other jurisdictions use IPs as a way to improve their quality of life (trade mark: Coopa Roca (Brazil)); or helping to reconstruct a region (Collective marks: Afloralta (Brazil)); adding value -tourism (Sello de Marca (Chile)); while for example Panama is using a specific sui generis right that helps protecting non-agricultural products GIs. Another issue that I needed to put across was that in some of the Latin American GI’s systems, the product/service become part of the goods of a nation i.e. become state property. This is an important issue since there exists amongst farmers, artisans and indigenous peoples mistrust -- resulting in having less GIs and more collective marks or nothing at all. Many of you may believe that actually when covering cultural heritage the IP regime is actually not appropriate at all, I may be of the same thought, however it is important to realise that for some products, it has helped. It has helped communities into social unity and it has helped us as citizens/consumers to create a sense of pride.

Indeed the conference raised a number of fascinating questions and I thank Nick for putting this symposium all together and for the generous sponsors that made it a reality (Grana Padano and CIIPM).

Honduras asume presidencia del Consejo para los Acuerdos de Propiedad Intelectual relacionados con el comercio de la OMC

Honduras por primera vez y por consenso asumió el 24 de febrero en Ginebra, Suiza, la presidencia del Consejo de Propiedad Intelectual de la Organización Mundial del Comercio (OMC). Para ese propósito, el embajador representante permanente de Honduras ante la OMC, Dacio Castillo, asumirá el cargo por un año consecutivo.

La presidencia de los Acuerdos del Consejo de Propiedad Intelectual Relacionados con el Comercio (ADPIC´s) de la OMC (Council for TRIPS), supervisa la aplicación de este Convenio, en particular, el cumplimiento de las obligaciones. También ofrece a sus miembros la oportunidad de celebrar consultas referentes a derechos de propiedad intelectual relacionados con el comercio.

Desde Ginebra, el nuevo presidente del organismo en referencia, asumirá las funciones que le sean asignadas por los miembros y, en particular, les prestará la asistencia que le soliciten en el marco de los procedimientos de solución de diferencias.

En el desempeño de sus funciones, el consejo de los ADPIC's podrá consultar a fuentes que considere adecuadas y recabar información tales como la Organización Mundial de la Propiedad Intelectual (OMPI).

El embajador Castillo, fue el director general de Propiedad Intelectual de Honduras, jefe negociador del tema ante diferentes países, presidente del Área de Libre Comercio de las Américas (ALCA), y ahora el presidente de los ADPIC’s.

Fuente: http://www.latribuna.hn /http://www.wto.org/

The Final Retaliation List of American Products is Published by Brazil: Where have the Suspension and Limitation of IP Rights gone?

It was with high expectation that Brazil published yesterday the final list of American products that will be subject to increased import duties, following the WTO’s decision that upheld Brazil’s move against the cotton farmers subsidies granted by the American government.

Those expecting Brazil to take the chance and strongly strike back the United States were disappointed, since the country preferred to adopt a more realistic approach in view of the already intricate commercial relationships with the American government. Further to that, the excellent export results and the stunning US investments in the past years should be preserved. Brazil cannot afford suffering stringent collateral effects from the retaliation.

In this perspective, from the 220 products initially previewed, only 102 items were finally contemplated (the full list in English will be provided tomorrow). Also, retaliation will start in 30 days but only in case a new round of negotiations is not successfully concluded.

Further to that, the retaliation list also focused on luxurious goods (such as cosmetics, sailing boats and refined cars) and it encompassed different categories. See below the categories of goods, as provided by the Ministry of Development, Industry and International Trade:

This fact has called the attention of the critics who have been arguing that the list has limited effects to the American cotton producer and to the subsidies.

The Brazilian government has argued at its end that the objective is to increase the pressure on the American Congress by finding opposing groups to cotton producer. For example, Brazilian subsidiaries of American companies are still evaluating the impact of the retaliation, but it is believed that some of them will be very much affected by it. One should take into consideration the electronics, hygiene products and foodstuff field sectors, as the Americans suffer fierce competition to conquer the Brazilian consumers. Therefore, the subsidiaries will soon start complaining to the American government and opposing strongly to the subsidies, as they will lose profits in Brazil.

Some Brazilians have argued that a heavier contender to the cotton producer would be the patent and innovation sector, especially in the pharma industries. But the government has not referred to patent limitation or IP restrictions yet; neither has it mentioned to the temporary prohibition of royalty remittances.

Is the government saving the most aggressive player for the 2nd half, like in football? Maybe, but the patent limitation runs the risk of never being called upon to the game due to the pressure of the opponent or the moment of the game. The 2nd. half will start on March 23 next when the government will render a final decision on whether or not it will use cross retaliation on American IP matters.

Till then, new rounds of negotiations are to start, but they are not set to end.