Acquiring a Taste for Geographical Indications

From fine wines and succulent fruit to the finest silk, geographical indications of origin (GIs), are the intellectual property (IP) rights that appeal most directly to our senses. They also provide a rich and varied diet of topics to occupy INTA’s Geographical Indications Committee!

Since the 19th century, the legal systems of some jurisdictions, primarily in Europe, have given legal protection to the names of distinctive products coming exclusively from particular geographic areas. However, in 1994, with the creation of the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), GIs became truly international. Article 23 of the TRIPS Agreement defines GIs as

Indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin.

From this definition, it is clear that it is not enough for a product to just come from a place. There must be something about that place that contributes to the GI’s special characteristics. It could be that the climate and soil of a region give the thing a special flavor, or it could be that traditional skills, such as cheesemaking or distillation, have developed in a particular place over generations. It could even be that goods coming from a particular area have become so highly regarded that their reputation is inextricably linked with the place in which they are made.

Another important feature is that unlike other IP rights, GIs are bound to their location. Anyone who produces a GI in the required manner in that place may use the name. This allows a wide class of people to benefit from the designation, not just an individual rights holder.

As INTA has broadened its focus beyond trademarks, it has taken an interest in GIs. The GIs Committee is guided by a November 2019 Board Resolution that recognizes GIs as a separate IP right. The Resolution asserts that GIs should be protected, but like the TRIPS Agreement, does not express a preference for a particular mechanism to do this: some countries use certification of collective trademarks while an increasing number now have bespoke registration systems for GIs, commonly referred to as sui generis systems.

INTA recognizes that there should be limits to the scope of protection. In line with the principle of “first in time, first in right,” the 2019 Board Resolution states that preexisting trademarks should not be prejudiced by the later registration of a GI. The Resolution also provides that registration of a GI should not prevent the good faith use of words which have become generic in a particular country.

Finally, the Resolution lays out that the system for registration, amendment, and cancellation of GIs should be transparent and enable anyone with a legitimate interest to be involved.

Sustainability, whether environmental, economic, or social, is at the heart of many of the issues facing GIs today due to products’ ties to the natural environment. The Committee is working on a study to illustrate the role that environmental issues play, but there are also challenges to doing that. For example, environmental legislation or consumer desire may lead to GI producers having to consider if they can alter their traditional production methods without affecting the characteristics that make them special. (See The Potential of Geographic Indications to Contribute to Sustainable Intellectual Property Rights, published today, for more on GIs and sustainability.)

It is becoming increasingly common for the protection of GIs to factor into negotiations in free trade agreements. In this politicized environment, INTA wants to ensure that the key elements of the Board Resolution are not overlooked: preserving preexisting rights and the ability to use generic terms. The Committee is conducting a survey of global agreements in order to highlight any that are inconsistent with the 2019 Board Resolution.

With the growing importance of e-commerce, protecting GIs from bad-faith registrations in the Domain Name System is an increasingly relevant concern. Members of the GI Committee are collaborating with the Internet Committee to form a Project Team which will prepare a report with recommendations to address this issue.

The GI Committee is also paying close attention to the issue of enforcement, the interaction between trademarks and sui generis protection systems, and the risk of brand restrictions on the ability to market GIs, such as GIs containing alcohol or those with higher levels of fat or sugar (which could be unduly restricted by blunt and disproportionate health measures).

With the number of GIs growing globally, along with the attendant legal issues, the GIs Committee is looking forward to a busy 2024–2045 Committee Term.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2024 International Trademark Association