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Sunday, 7 April 2013

The Current State of GI Protection: a View From the World Symposium

Katfriend Latha Nair, of K&S Partners (Gurgaon, India) was kind enough to provide us with an engaging summary of the recent Worldwide Symposium on GIs (geographical indications), that took place in Bangkok. Latha is recognized in the field as the co-author with Rajendra Kumar of Geographical Indications: A Search for Identity, published in 2005 by LexisNexis Butterworth.  Latha wishes to thank Delphine Marie-Vivien (Researcher in Law, CIRAD, France) for making sure that nothing of note is missing from the summary.

"For many practitioners, GIs are more a spectator sport than contact sport. Still, for those like me who deal with GIs on a daily basis, I would swear that no realm of IP evokes strong collective emotions and high drama as GIs do.

It was therefore my great pleasure to attend the Worldwide Symposium on GIs, which was held on 27 to 29 March under the auspices of WIPO and the Department of Intellectual Property (DIP) Bangkok, Thailand. The event was definitely high profile—the welcoming was given by no less than Her Royal Highness Maha Chakri Sirindhom, Kingdom of Thailand and the key note address by Wang Binying, Deputy Director General, WIPO.

Beyond this pomp and gravitas, the Symposium proved to be a delectable abundance of ideas addressing a wide gamut of protected GIs spanning a broad range of issues. GIs whose protection and development that was discussed (sadly no samples were given), included Ceylon tea (Hasitha De Alwis, Director-Promotion, Sri Lanka Tea Board), Parmigiano Reggiano cheese (Leo Bertozzi, Consortium Parmigiano Reggiano, Italy), Napa Valley wines (Scott Gerien, Dickenson Peatman and Fogarty, Napa), Laguiole knives (Thierry Moysett, Manager Forge de Laguiole) and Scotch Whisky (Alan Park, Legal Advisor, Scotch Whisky Association, Edinburgh). Issues discussed focused on the diversity of modes and means of protection and differing scopes of protection in different jurisdictions; costs and collaboration (sui generis system as followed by Thailand and India; certification mark regime as followed by the United States and Australia; and collective marks as offered by Japan), the challenge of uniting producers for protection and generating funds for enforcement and the need for prompt and consistent action. Several sessions were particularly noteworthy.

One session centred on a discussion by Thu-Lang Tran Wasescha, Counsellor, IP Division, WTO and Matthijs Geuze, Head of WIPO's Lisbon Registry about the international register of GIs. Ms Wasescha rightly stated that GIs continue to remain an emotional issue and noted that the practice of entering into preferential agreements, which existed prior to the Uruguay Round of TRIPS, have continued post-TRIPS as well. While pointing out that one issue to be negotiated in this context was that, in some countries GIs never became generic, she noted that at the WTO, nothing was agreed until everything was agreed. Mr Geuze spoke about the ongoing work at WIPO to revise the Lisbon Agreement and to extend its application to geographical indications besides appellations of origin. He informed that, post-TRIPS, 11 countries have acceded to the Lisbon Agreement.

Another, presentation that particularly grabbed my attention was given by Getachew Mengistie, an IP attorney from Addis Ababa, whom I later discovered to be the man who successfully fought against Starbucks in the United States and got them to surrender the Ethiopian coffee name, Sidamo, which now stands in the name of the Government of Ethiopia here. Mr Mengistie articulately explained the struggles in Africa for protecting some prized geographical indications such as Kenyan tea, Ethiopian coffee and Ugandan vanilla. His story really hit home as I am involved in protecting two of India’s well-known GIs, Basmati rice and Darjeeling tea. It is a struggle for those in the developing world, it turns out. Mr Mengistie was particularly grateful to WIPO for its role in assisting in the protection and development of Ugandan Vanilla.

Perhaps the most dramatic presentation was from Thierry Moysett, Manager, Laguiole knives, who spoke at the session on GIs for non-agricultural products. He lamented about the misappropriation of the name Laguiole by a single French trader as a trade mark and expressed the collective pain of having lost the case in the Paris Tribunal of Grand Instance in September 2012 (more on Laguiole knives here). The session on GIs for non-agricultural products also discussed the recent report of 18 February 2013 by the Organization for an International Geographical Indications Network (oriGIn) on Geographical Indications for non-agricultural product here. Alan Park of the Scotch Whisky Association (SWA) and Ekaterine Egutia from the National Intellectual Property Center, Georgia spoke about the efforts by their respective organizations. The highlight of Mr Park’s presentation was SWA’s ‘zero tolerance policy’, comprising consistent and prompt action in all jurisdictions. He stressed the need to be flexible with legal means in the absence of a uniform means of protection followed globally. Ms Egutia discussed the lead role played by her Government in the protection of Georgian GIs. She explained that the funding for the various legal actions was borne by the Georgian Government as it was a matter of national pride. I wonder how many developing countries can afford this model of funding for GI enforcement?

The last session was an ‘open discussion’ on an international agenda for GIs moderated by Marcus Hopperger, Director, Law and Legislative Advice Division (Brands and Designs Sector), WIPO. While Loretta Dormal-Marino, Deputy Director General, International Affairs (EU's Directorate General for Agriculture and Rural Development), acknowledged the difficulty in negotiating GIs multilaterally because the issues were so emotional, Craig Thorn (Senior Advisor, Consortium for Common Food Names, Arlington, USA) felt that the issues were not insoluble at all.  Dormal Marino also felt that genericness of a GI should be judged on territorial basis upon proof thereof. She pointed out the difference between an adoption of a name arising from a trans-Atlantic migration and a clear bad faith adoption, illustrating this with the unjustified use by Armenia of Cognac, when there was no French migration to that country.

Regarding “clawing back” (a phrase used to refer to retrieving rights in GIs through bilateral agreements that have become generic/ semi generic names in the new world), Dormal Marino noted that the new country could find a new name and build a reputation on it, as in the case of Cava from Spain, a name that replaced ‘Spanish Champagne’. On the other hand, Mr Thorn felt that claw-back was always a trade-off. He pointed out that in the wine sector claw-back had been successful because there was a trade-off with EU offering access to its market to the US wines based on the adoption of new oenological practices by the EU as requested by the US.

The main take-away points from the Symposium seem to be the following:
1. The struggle of GI owners to protect these names in a world with no uniform mechanism for protection of GIs was so evident in almost all presentations. To quote Miguel Angel Medina, one of the speakers, ‘use different weapons for different battles’, something that is seldom practised in the protection of other IP rights.

2. Cost of protection of GIs is an issue that prevents most GI products from getting market access. Not every country operates like Georgia.

3. Nothing much has changed since the TRIPS agreement, except the increased awareness and protection for GIs at the national level. As well, the subject remains static at the international level.

4. Bilateralism and Free Trade Agreements, as limited as they are, continue to be the escape route for many GIs in securing enhanced protection and clawing back of rights, thereby tending to make TRIPS rather impotent.

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