More Than Just A Mark - Geographical Indications
“You could say that geographical indications are the Sleeping Beauty of the intellectual
property world,” stated WIPO lawyer Marcus Höpperger at the start of the Beijing Symposium-2007.
And that was the introductory sentence of my recently published thesis “Geographical Indication Protection Limits in the European Union,” which is one of the latest publications in this area. Just last week I was offered the opportunity to lecture on this very topic at Hanken University where I delivered a general overview of geographical indications (GIs) and branding strategies to an audience of IP law graduate students.
What are geographical indications?
The World Intellectual Property Organization (WIPO) defines geographical indications as: “Signs used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that origin”.
GIs can be considered as functionally similar with trademarks. Both give information about the product and while the trademark indicates commercial origin, a GI indicates geographical origin. They both serve the function of providing a guarantee of the quality of the goods or service. This functional overlapping can create GI “look-alike” trademarks, due to the consumer’s reliance on them. Very often companies intentionally create a direct or indirect link in order to associate a sign that could subliminally trigger a particular GI.
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) 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 another characteristic of the good is essentially attributable to its geographical origin.”
Where in the world are GIs protected?
Due to the different views between members, TRIPS leaves the legal means of protection up to the member countries. Today, in some countries, geographical indications are protected by trademark law where they are covered either under certification trademarks or collective trademarks, or both. Whereas in some countries GIs are regulated under Sui Generis protections. And, in other countries it is the case that GI owners cannot enjoy any IP protection at all, as the term is considered generic and as such it is considered as out of the scope of any protection under trademark law.
Overall, this somewhat chaotic situation as regards geographical indications at an international level creates different IP protections and therefore different branding strategies for GI owners.
Not just a glass of bubbly
“Remember gentlemen, it’s not just France we are fighting for, it’s Champagne!” Winston Churchill summed up this issue perfectly when addressing the nation during the Second World War. Arguably one of the most important and valuable GIs on the market today is Champagne and it has an extraordinary history. Champagne wines are exclusively produced from grapes grown, harvested and made into wine within the Champagne region of France.
According to Tim Jay and Madeline Taylor in their research paper for Sydney Law School entitled, “Champagne: A Study of Geographical Indications,” the quality indicator role of Champagne has been traced back to the coronation of French royalty. French kings were traditionally anointed in the cathedral at Reims, which just happens to lie in the heart of the Champagne district; so Champagne began to feature in these ceremonies from about 1700 AD.
US v EU fizz
With such illustrious history and implicit quality, Champagne came to be regarded as a luxury good; an indication of a certain status and level of lifestyle. Hence, Champagne’s quality indicator is linked to both the territory from where it came and its rich history. However, the protection of Champagne is subject to one of the hottest and unresolved conflicts between the US and EU. The EU claims the Champagne sign and the word must only be used for sparkling wine produced in the Champagne region in France. The US counterclaims that Champagne is a generic word, merely describing the type of sparkling wine.
In the US, the Lanham Act and the Bureau of Alcohol Tobacco and Firearms recognize Champagne as semi‐generic. Accordingly, the producers in the US can use the word Champagne as long as they inform the consumers as to the actual place of the origin of the sparkling wine. Still, it is interesting to note that the US is the top export market for French Champagne.
In the EU, Champagne enjoys strong protection as a Protected Geographical Indication (PGI). Champagne has been protected since 1967 as an “Appellation of Origin” under the Lisbon Agreement (Lisbon Agreement for the Protection of Appellations of Origin and their International Registration).
Billion euro business
Today Champagne is one of the biggest industry players with a colossal €4.9 billion in sales and 4,600 producers (creating 30,000 direct jobs and 120,000 seasonal harvest workers). The geographical territory of Champagne has been defined (34,300 hectares) covering 3 regions of France (Grand Est, Hauts-de-France, Ile-de-France). The Comite Champagne is the trade organization which serves the Champagne Appellation. The Committee is responsible for the management of the Appellation including the global protection of Champagne appellation, education about the appellation and technical developments of vineyards and wines.
We can explore more of this organization’s trademark strategies by using TrademarkNow’s new business intelligence and trademark management tool, Portfolio Analyzer. At the time of writing, Comite Interprofessionnel Du Vin De Champagne had 26 trademarks where their top brand is CHAMPAGNE, covering wine as a top product. However their branding strategies are not limited to wines. We see that the mark is protected in various Classes including Classes 35 38, 41, 16.
Top territories outside of their home country France (25%) in which their Champagne mark is protected heavily by trademark law are Paraguay (50%) and Columbia (6.3%).
As previously stated, GIs are important tools as they are different from trademarks; they protect the quality of the land they represent. Because this quality is literally attached to the corresponding land they also have their own inherent challenges different from other industries. When facing a growing demand, how to increase production without losing the quality of the product? Or as regards quality control, how to best control the supply chain? Or local climate problems leading to quality issues, how to combat these?
We end here with an interesting case which attests the difficulty in evaluating exploitation of the reputation of GIs, Champagner Sorbet. The main question of this case was whether the product ‘Champagner Sorbet’, constitutes exploitation of the reputation of a Protected Denomination of Origin (PDO), if that foodstuff does not have, as one of its essential characteristics, a taste attributable primarily to the presence of that ingredient in the composition of the foodstuff? (see Para 37)
In other words, the key point of the case was whether the sorbet producer seeks to take undue advantage of the reputation or is it purely a descriptive use by the sorbet producer?
As noted above the Court clearly states that “the use ….constitutes exploitation of the reputation of a PDO, …. if that foodstuff does not have, as one of its essential characteristics, a taste attributable primarily to the presence of that ingredient in the composition of the foodstuff.” (see Para 53) There has been some criticism of this finding as the taste element of a product is not that easy to evaluate.
Finally, let’s wait and see how the recent pending case taken by Comité Interprofessionnel du Vin de Champagne regarding the extension of the protection to services resolves…see Case Number = C-783/19 for more details!
TrademarkNow has launched a brand new legal podcast, Talkin' Marks, co-hosted by Senior Trademark Executive, Zac Casstevens and I.
In each episode we take a look at an interesting and current topic from the trademark world and unravel it from all angles. Episode 1 “Non-Traditional Trademarks Unwrapped” took a close look at the weird and wonderful world of sensory marks and you can catch it here!
We also invite trademark world influencers and heavyweights to bring their expert input to the topic at hand from time to time. If you have something to say please get in touch!
Talkin’ marks - episode 2
The second episode in the series covers the topic of geographical indications in more depth and is coming soon!