Letter from AmeriKat: Green light for Red or Green Chile?

The AmeriKat is planning a much-needed vacation to her homeland in the next couple of weeks. Travelling from the high mountains of northern New Mexico (Santa Fe, Taos, Albuquerque) south on I-25 you will pass a sign about 40 miles north of where the AmeriKat was born for "Hatch". Hatch, New Mexico, a small community in the heart of chile pepper country, is known as the "Chile Capital of the World". Chile is the lifeblood of New Mexicans - you start eating chiles almost as soon as you are out of the womb and it very quickly becomes an addiction. One of our universities, New Mexico State University, even has a Chile Pepper Institute and our State Question is "Red or Green?". The AmeriKat could go on forever about the utter joys of smelling roasting chiles in mid-September, the thick succulence of stuffed chile rellenos, mopping up excess chile with tortillas.....drool. What is also universal amongst the New Mexican chile-loving public, is that no self respecting New Mexican or chile connoisseur would really enjoy eating chile from anywhere else than New Mexico; anything else is frankly just an embarrassment. (picture, left - the AmeriKat getting her cruising face on for her trip down I-25)

Hands off our Chile

This sentiment has been translated to a new state law - the New Mexico Chile Advertising Act - that aims to protect New Mexico green chile and its heritage by preventing cheaper foreign peppers from countries such as Peru, China and Mexico being labelled as New Mexico-grown. Geographic indications, as protected under Article 22 of TRIPS, have been a source of contention for many food and beverage producers. In the UK we have seen issues of geographic indications arising in a line of extended passing off actions starting with the first "Champagne case" in 1961 and in Europe with Budweiser/Budějovický Budvar case. The same headaches faced in Europe are also faced by producers on the other side of the pond. Like champagne, which describes the grape but most importantly the region where the vines are grown and thus the geographical indication of the goods in question, the New Mexican chile pepper faces similar issues. There is no such thing as a "New Mexican" or "Hatch" chile pepper but instead the sign denotes the region where the peppers are grown. Just as the Champagne region's environment produces unique qualities in the growing and production of champagne, New Mexico's high altitude, long hot seasons, sunlight and cold desert nights produce the unique flavor that denotes the New Mexican chile pepper (picture, right - Hatch green chile).

Stephanie Walker of the Chile Pepper Institute told NPR that:

"As with other crops in other parts of the country - we all know about the Vidalia onion, we know about other crops that really have their brand identity in place. New Mexico has that, but it's never been protected the way other crops and other parts of the country has."

In the EU under Council Regulation No 5110/2006 there is a three-tier system of protection of geographic indications: (1)Protected Designation of Origin (PDO) which protects agricultural products and foodstuffs that are produced in a given geographical area using recognized know-how (2) Protected Geographical Indication (PGI) which protects agricultural products closely linked to the geographical area; and (3) Traditional Speciality Guaranteed (TSG) which highlights traditional character in the composition or production of the product. There are also special regimes for wines and spirits (search here for champagne, cognac, rhum, etc). Aceto Balsamico di Modena is a registered PGI for Italy, Stilton cheese (picture, left) is a registered PDO for the UK, and a PDO is registered for Roquefort cheese by France. A few days ago a PGI was registered by the UK for the Cornish Pasty (see here).

The US does not have such a robust quasi suis generis system for geographic origins/indications (of which was a matter of contention for the US in 2005 - see here). The protection instead takes the form of registered trade marks, collective marks or certification marks (compliant with TRIPS? a discussion for another time). The US's system uses the same procedural and administrative structures for geographical indications as it does for trade marks. Section 1054 of the Lanham Act provides that geographic names or signs which would otherwise be considered geographically descriptive, and thus unregisterable without showing acquired distinctiveness, can be registered as certification marks. Certification marks differ from trade marks because the owner of the certification mark does not use it - they only allow others who meet the certification standards to use it. Further, certification marks do not denote a source of commercial undertaking- they only identify that the nature and quality of the goods have met certain standards.

There are three types of certification marks: (1) regional or other origin; (2) methods, process or other characteristics of the goods/services; or (3) the work was performed by a member of a union or organization. For example, US Registration No. 571,798 for ROQUEFORT is used to denote that the cheese has been manufactured from sheep's milk and cured in the caves of Roquefort - thus fulfilling (1)and (2) of the categories of certification categories. Trade mark protection is also available under the normal rules - if NEW MEXICO CHILE has acquired a secondary meaning other than primarily denoting a geographic region then the sign is registrable. For example, if consumers see the mark NEW MEXICO CHILE and identify that the product was grown by the chile producers in New Mexico (and even specifically those in or around Hatch, NM) then the sign will have acquired a secondary meaning. Likewise, a collective trade mark could be registered on behalf of an association or "collective" such as the New Mexican Chile Association whose members in turn use it to identify their goods from non-members. US law has also protected geographic indications through common law trade mark law without need for a registration ( the "Cognac" case - Institut National Des Appellations v Brown-Forman Corp (TTAB 1998)).

However, when it comes to produce and products which are of such strong cultural and heritage state significance like the New Mexico chile, it is the state's government that usually applies for a certification mark. The owner of a certification mark is usually a governmental body, for example like a state's department of agriculture or a state sanctioned body to undertake the certification and policing activities. For example, in relation to Vidalia onions(grown in Georgia), the mark is owned by the Georgia Department of Agriculture. New Mexican lawmakers have consistently decided not to obtain federal certification or trade mark protection for the New Mexico chile pepper for reasons unknown to the AmeriKat.

However, she suspects its either due to lack of IP understanding or due to money (NM doesn't have much). The protection, which has been afforded to the likes of Florida oranges and Idaho potatoes would cost the New Mexico government money to register and to enforce. But as all IP lawyers know, investment in registration and protection pays off. A registration would enable New Mexico to take action in federal court against defendants who label chile as New Mexican grown as well as put US Customs on notice to stop the importation of chile with false geographic designations on it. (picture, left - a sign in Hatch, NM)

Although the New Mexico Chile Advertising Act makes it illegal to falsely advertise chile as being from New Mexico, because it is a state and not a federal law the extent of its protection is pretty minimal when compared to the protection afforded by a registered certification made at the USPTO. As one of the poorest states in the US, the AmeriKat urges her state government to get on with certification mark or collective trade mark protection. Although there may be initial expense in the registration process, the advertising value of "Brand Chile" should not be underestimated. It may not rival "Brand Champagne" or "Brand Florida Orange" but the value of "Chile" IP is worth protecting, as are the farmers and New Mexicans whose livelihoods depend on the protection.

The AmeriKat cannot help but think that if the New Mexican chile was growing in the UK or anywhere else in the EU there would already be a registered PGI for it. Should there be some sort of mechanism or assistance for state governments to easily and cheaply register their GI's at the USPTO in order to protect their heritage and local agricultural economies?