April 2012 Special Issue on Geographical Indications

The Armagh Bramley Apple:
the latest GI to receive protection
from the European Commission
The April 2012 issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available in full to online subscribers. Both subscribers and non-subscribers can check out the full list of contents (which includes contributions on topics other than GIs) here. It is a special issue with a major focus on geographical indications and the impact of the body of law which protects GIs on other areas of IP law.

The achievement in getting this issue together is a tribute to the combined efforts of the two guest editors, Miguel Ángel Medina González (Elzaburu, Spain) and Keri Johnston (Johnston & Wassenaar, Toronto). The two have managed to do this while separated by thousands of miles of ocean, several time zones and entirely different legal cultures. Both are influential members of MARQUES, a leading European trade mark organisation. Miguel Ángel, a MARQUES Council Member, is Chair of its Geographical Indications Team while Keri, who has been on the MARQUES Geographical Indications Team since 2007, is currently its Vice Chair.

The jointly-penned guest editorial for this issue reads as follows:
"The geographical factor

The “geographical factor” has evolved from a mere reference to a geographical indication of provenance of a product to that of an indicator of qualities or characteristics which reflect its geographical origin. “Geographical origin” in this context means not merely the place from which the product physically comes or where it is manufactured, but a place that has a special link with the product in question and that relates to qualities resulting from the specific soil where the product is grown, to local human factors, culture, and ways in which it is produced, processed or prepared — or to the reputation acquired because of the tradition and the special way in which the product is handled or manufactured in a certain place, which may vary from jurisdiction to jurisdiction.

Not everything that comes from a certain place may be identified by the name of that place. Sometimes it may not even be possible to make reference to a geographical name to inform consumers of the characteristics, kind or type of a certain good, if use of that geographical name is restricted because it is protected as intellectual property.

Geographical indications often seem to have a special and intimate charm; they are also said to be a tool for the economic take-off of developing countries.

Consumers seem to be increasingly attracted by goods which have specific qualities on account of their geographical origin. This has led geographical indications to collide with that other species of intellectual property that serves a function of indicating the origin of goods in the course of commerce: the trade mark. This happens particularly when the trade mark has geographical connotations or consists of a geographical name linked by the public to a product. Geographical indications and trade marks, respectively acting as indicators of a geographical origin and business origin, may create a synergy, but may also lead to conflicts around the world.

The different legal views coming from the New World and the Old (the European Union, among other countries) do not help to tone down this apparent conflict. The trade mark approach, based on the “prior rights” principle is sometimes in conflict with the approach based on the protection of geographical indications (as in Europe), which is founded to some extent on the legitimacy of territorial rights, as a sort of preferential or privileged right to a certain geographical designation that confers on geographical indications a protection that is asymmetric and stronger than that conferred on trade marks.

Generally speaking, even within jurisdictions which make special legal provision for them, geographical indications are treated very differently from country to country and do not enjoy the same high level of harmonization as do trade marks.

Specific types of trade marks (e.g. collective, certification and guarantee marks) seem more frequently to take a place on the market as a more balanced position between individual trade marks and geographical indications, as they may be allowed to benefit from the best advantages of both types of right and to obtain protection for geographical terms even in those countries where no register for geographical indications exists. Nevertheless, the ability of such marks to fulfil the functions of a geographical indication is also under discussion.

In some respects today's scenario resembles a Tower of Babel in where different terminology and different regulations, with different scopes of protection coexist, and where certain designations are strongly defended in some countries as valuable assets (or even as items of national interest), while in others they are merely generic expressions which are free to use.

Geographical indications today are a bit like guests who have been invited to lots of different parties. The WTO has been trying to push forward the delayed Doha agenda for a multilateral register in the past few months. WIPO is increasing its efforts to amend the Lisbon System (at present it is the only system for international registration of “appellations” of origin) to allow the accession of intergovernmental organizations to make it more attractive for new members. The European Union is involved in the process of clarifying the panorama in its territory and make it more user-friendly by merging regulations and harmonising procedures at the same time that it studies the extension of its protection schemes to new products and includes the protection of geographical indications in the negotiations of its many bilateral agreements with other regions all over the world. Even the ACTA negotiations have taken geographical indications into consideration. So we see that, while geographical indications are welcome, we remain uncertain as to where they belong".

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