By Yves Renouf, IIT Visiting WTO Fellow
This year, the Asia WTO Research Network Annual Conference, held in Hong Kong on 16-17 May, discussed the paradigm shift in international trade regulation that may result from the Trans-Pacific Partnership. Dr Danny Friedmann, Research Associate in the Law Faculty of the Chinese University of Hong Kong, discussed what TPP meant in terms of protection of new geographical indication (for more information on AWRN 2016, see http://www.awrn.asia). Hereafter are some additional comments based on Dr Friedmann’s contribution:
With TTIP negotiations underway and the EU attempting to make up for lost time by initiating a FTAs offensive in Asia, what can we learn from the TPP provisions addressing geographical indications?
In a nutshell, geographical indication (GIs) link the protection of the name of a product with a geographical location and usually some related know-how or specifications. Until the WTO Agreement on Trade-Related Aspects of Intellectual Property (“TRIPS”, 1995), geographical indications (GIs) were internationally protected by the 1883 Paris Convention and the 1958 Lisbon Agreement. With the entry into force of the TRIPs Agreement, GIs have gained protection, though perhaps not universal acceptance, in the WTO. Compared with trademarks which is the other system available to protect names with a commercial importance, GIs, particularly those relating to wine and spirits, currently benefit from a more extensive and almost indefinite protection. Most countries’ intellectual property legislations, including that of the United States, combine the two systems. However, the countries involved in the TPP negotiations have legislation predominantly based on trademarks.
These factors help explain why the negotiated outcome in Chapter 18 of TPP allows the protection of names through sui generis (GI) or trademarks, but ultimately weakens the GI-based protection by requiring TPP signatories to accept that their GIs be protected only as trademarks in the territory of other TPP signatories, i.e. subject to their effective use, for a limited period of time and pursuant to less stringent standards.
The TPP also provides grounds and procedures to object to a GI protection whereas, pursuant to the 1958 Lisbon Agreement and the 2015 Geneva Act of the Lisbon Agreement, a GI cannot become a generic name without the consent of its country of origin. The TPP also denies protection to a GI when, in another TPP member, it is a term customary in the common language. Moreover, under the TPP, the combination of a non-generic word with a generic word is a generic name, whereas the opposite is true under the Geneva Act.
Overall, Danny Friedmann’s assessment is that Chapter 18 of the TPP looks like an attempt by the proponents of trademarks to “rollback” the sui generis protection established by the TRIPS Agreement, and establish a predominantly trademark-based system, with a more limited protection subject to use and innovation, not tradition. That this is happening in a fast-growing economic region, where GIs are already most at risk, could be a cause of concern for the EU in its FTA negotiations with Asia-Pacific countries. TPP is, of course, yet to enter into force. Even when the TPP is applicable, the innovations described above will only apply among its members. The protection of third countries’ IP rights in the TPP countries will remain governed by the TRIPS Agreement. That said, this successful counteroffensive against GIs in the TPP may embolden TPP members in their FTA negotiations with the EU, including the United States in the TTIP negotiations. Danny Friedmann’s assessment is that GI protection is of such high priority importance for the EU that the US is unlikely to obtain in TTIP the results secured in the TPP. (The matter will no doubt see similar discussion in the Australia/EU FTA negotiations.)
For now, GIs remain protected in accordance with the provisions of the TRIPS Agreement.
1958 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (as amended on September 28, 1979) – 27 Members
Article 3 [Content of Protection]
Protection shall be ensured against any usurpation or imitation, even if the true origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as “kind,” “type,” “make,” “imitation”, or the like.
Article 6 [Shield Against Becoming Generic]
An appellation which has been granted protection in one of the countries of the Special Union pursuant to the procedure under Article 5 cannot, in that country, be deemed to have become generic, as long as it is protected as an appellation of origin in the country of origin.
Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (as adopted on May 20, 2015) – 15 Members
Article 2 Subject-Matter
(1) [Appellations of Origin and Geographical Indications] This Act applies in respect of:
(i) any denomination protected in the Contracting Party of Origin consisting of or containing the name of a geographical area, or another denomination known as referring to such area, which serves to designate a good as originating in that geographical area, where the quality or characteristics of the good are due exclusively or essentially to the geographical environment, including natural and human factors, and which has given the good its reputation; as well as
(ii) any indication protected in the Contracting Party of Origin consisting of or containing the name of a geographical area, or another indication known as referring to such area, which identifies a good as originating in that geographical area, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
(2) [Possible Geographical Areas of Origin] A geographical area of origin as described in paragraph (1) may consist of the entire territory of the Contracting Party of Origin or a region, locality or place in the Contracting Party of Origin. This does not exclude the application of this Act in respect of a geographical area of origin, as described in paragraph (1), consisting of a trans-border geographical area, or a part thereof.
Article 12 Protection Against Becoming Generic
Subject to the provisions of this Act, registered appellations of origin and registered geographical indications cannot be considered to have become generic in a Contracting Party.