20 May 2018

Geographical Indications: Hear From the Experts

A geographical indication (GI) acts as a badge of trust, showing that a product meets certain standards or is produced in a certain region. But just as obtaining and registering a GI is no easy feat, protecting these rights against infringement presents a range of challenges.

Jurisdictional Dilemmas

Lindesay Low, Deputy Director Legal Affairs at Scotch Whisky Association (Scotland), who spoke during the 2018 Annual Meeting’s Session CSA23 Certifying Geographical Origin on Saturday, says that the United Kingdom’s upcoming departure from the European Union—known as Brexit— poses a big issue for GI-protected products in both the United Kingdom and the European Union. Currently, U.K. laws relating to GIs are based on EU instruments and the jurisprudence of the Court of Justice of the European Union, both of which will lapse after Brexit.

With the United Kingdom set to leave the European Union in March 2019, measures need to be put in place to protect U.K. GIs in the remaining 27 EU member states, as well as to protect European GIs in the United Kingdom, according to Mr. Low.

“U.K. GIs benefit from protection in third countries through trade agreements with the European Union, and we need to make sure this continues,” he adds.

Since the United Kingdom’s exit from the European Union jeopardizes the benefits of those trade agreements, Mr. Low says the Scotch Whisky Association has been “engaging closely” with the U.K. government and the European Commission to ensure they address issues such as this.

Trade agreements are also used in other parts of the world as a tool to secure GI protection. According to Dirk Troskie, Director Business Planning and Strategy at Western Cape Department of Agriculture (South Africa), an important development in South Africa centers on the Economic Participation Agreement (EPA) between the European Union and the South African Development Community (SADC), which was signed in 2016.The agreement by the European Union and six countries of the SADC (Botswana, Lesotho, Mozambique, Namibia, South Africa, and Swaziland) is intended to increase economic growth and encourage trade within and across the regions.

”It was the first time these six countries jointly entered into a free trade agreement with the European Union, and it was also the first time such an agreement contained a GI provision,” Mr. Troskie says.

As a result of an addendum to the 2016 agreement (Protocol 3 to the EPA), he explains, several South African GIs are now protected in the EU market, such as the Rooibos infusion and Paarl wine. In return, the agreement gave more than 250 EU products bearing GIs protection in South Africa.

Massimo Vittori, Managing Director at Organization for an International Geographical Indications Network [oriGIn] (Switzerland), who is a panelist at tomorrow’s Session CM50 Geographical Indications in the Domain Name Space, believes that bilateral/multilateral trade agreements can be particularly important for protecting GIs across jurisdictions.

“Modern free trade agreements generally have a chapter on IP and GIs which provides for the recognition and protection of a list of GIs in the relevant jurisdictions,” he explains.

However, Mr. Vittori says that, although these agreements are generally positive, different rules in regional or bilateral agreements related to the recognition and protection of GIs can make it problematic to reconcile at the multilateral level and be burdensome for businesses.

Patrick Kole, Vice President Legal and Government Affairs at Idaho Potato Commission (USA), Chair of INTA’s Geographical Indications— Existing Rights Subcommittee who also participated in Saturday’s session on Certifying Geographical Origin, believes that GI legal developments are inseparable from public policy and trade issues. Competing interests in and between countries mean the ways brands market and sell their products can be a contentious issue in jurisdictional negotiations.

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