Tagged: #geographical indications

U.S. and Honduras Agree to Strengthen Coordinated IP Protection and Enforcement

Earlier this month, the Office of the U.S. Trade Representative (USTR) announced it had concluded a Work Plan with the Honduran Government to strengthen intellectual property (IP) protection and enforcement. Included in the Work Plan are commitments by the Honduran government to increase criminal IP prosecutions, improve IP enforcement coordination efforts with U.S. authorities, evaluate the adoption of trademark customs recordation procedures, and enhance and clarify the Honduran geographical indication (GI) protection registration process.

The adoption of the Work Plan is a positive step in U.S.-Honduran IP relations. Honduras was identified in the USTR’s 2015 Special 301 Report as being subject to an out-of-cycle review to determine whether Honduras should be included in the USTR’s Special 301 Report Watch List, namely countries considered by the USTR to have inadequate IP protections. While the 2016 Special 301 Report will not be released until April 2016, the conclusion of the Work Plan should assist Honduras in remaining off of the 2016 Special 301 Report Watch List.

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Fund and Done: Avoiding IP Risks in Crowdfunding Campaigns

Today, I posted on the Washington Lawyers for the Arts Blog about domestic and cross-border IP risks in crowdfunding campaigning. Particularly, I discussed how a US biotech company’s recent Kickstarter crowdfunding campaign was derailed by a trademark dispute and what crowdfunding campaigners can do to protect themselves against domestic and foreign IP risks. The posting is available here. Enjoy!

 

Don’t Be Scared of Havarti! Geographical Indication Issues Exporting Businesses Should Consider

Late last month, the European Commission approved for publication (pre-registration) a geographical indication (GI) application for the Danish cheese HAVARTI. This raised concern amongst interested industry groups, and should cause concern amongst all export-focused businesses. Similar to trademarks, and particularly certification marks, GIs are legal protection granting producers of a particular type of product from a specific geographical region the exclusive right to use the geographical region’s name (or a regionally-known name) on their products and in related promotions. Being an exclusive right, GIs exclude producers from other regions from labeling and marketing similar or identical products under the same GI name. This means, for example, that a U.S. sparkling wine can never be sold as CHAMPAGNE in the EU, or a Kenyan tea as DARJEELING in India. If registered, the EU HAVARTI GI would exclude non-Danish cheese producers from labeling and promoting their Havarti cheeses in the EU as HAVARTI.

So what’s concerning about the potential EU HAVARTI GI registration for non-dairy businesses? Well, industry groups such as the Consortium for Common Food Names (CCFN) argue that allowing the EU HAVARTI GI application to be registered would contravene international standards by prohibiting non-Danish cheese producers from labeling and promoting their own Havarti cheeses in the EU as HAVARTI, even if they meet recognized international Havarti cheese production standards. From an intellectual property perspective, the registration would arguably expand EU GI protections to common (generic) named products. Commonly named GIs such as DIJON for mustard and CHEDDAR for cheese have traditionally been restricted from GI protection due to their common vernacular usage. HAVARTI is a widely known cheese variety this is arguably as generic as these other excluded food names. By allowing HARVARTI’s potential GI registration, the European Commission could possibly allow other generic named products to be registered as GIs, thereby hindering the promotional efforts, and ultimately success of many foreign goods in the EU.

Although the potential HAVARTI EU GI registration only directly impacts the global dairy industry and the EU market, it does underscore general issues all export-focused businesses should be aware of concerning GIs. Many businesses are unfamiliar with GIs, much less the extent to which GIs can impact their expansion and success in new foreign markets. GIs are granted legal protections in multiple countries for a wide array of goods, and can significantly impact a business’ foreign operations.

Below are some GI issues businesses should consider when entering new foreign markets:

Know the Practical Differences Between GIs and Trademarks. Before understanding what GIs restrictions a business may face in a foreign market, a business needs to recognize how GIs and trademarks differ. Unlike trademarks, GIs do not indicate or represent a individual business or their goods and services. They instead represent protections for the local conditions—natural or human-made (depending on the country)—that give products from a region their qualities and reputation. Based on these localized and natural characteristics, GIs cannot be extended, shared, or transferred to producers outside the region, and cannot be cancelled once registered. Further, in many countries that grant GIs legal protection such as the EU, member state governments, not individual producers or businesses, prosecute GI infringement claims. This means a foreign business can be assured that their unauthorized use of a registered GI in a foreign market will more likely subject them to a greater risk of legal action in that country compared to the threat of a lawsuit from a individual trademark owner.

The bottom line is that GIs prohibit exporting businesses from promoting and selling their goods in a particular country under a registered GI without much recourse.

Determine if an Export Market Recognize GIs—and to What Degree. After understanding the important differences between GIs and trademarks, businesses need to then evaluate whether the markets they wish to export to have GI protections and the extent of such protections. Nearly all countries recognize GIs for wines and alcoholic beverages through their World Trade Organization (WTO) commitments. Under Articles 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), WTO member states are required to extend specific GI protections for wines and alcoholic beverages, and to a reduced degree other agricultural and natural products. Most common law jurisdictions (U.S., Australia, and Japan, etc.) generally only extend GI protections to wines and alcohol beverages based on their WTO commitments. Yet, many countries, including several substantial markets, have gone beyond TRIPS’ minimum standards by providing enhanced GI protections to non-wine and alcohol agricultural products, and even non-agricultural products. The EU, China, India, and Russia, among others, extend the same level of legal protection to all agricultural and natural product GIs. Brazil, China, India, Russia, and Switzerland even extend GI protections to human made goods such as handcrafts and textiles.

Determine if There are Existing GI Registrations for Your Goods. Once a business determines whether the market(s) they wish to export their goods possess GI protections, they must evaluate whether the names of the goods they wish to use on their goods and related promotions are registered GIs. To do so, businesses must examine national GI registers in such export market(s).

Below are GI registers for some of the world’s major GI jurisdictions.

Country

Governing Agency

National GI Register

Brazil

National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial -INPI)

INPI GI Registry

China

General Administration of Quality Supervision, Inspection and Quarantine

GI Product List

European Union

European Commission

Database of Origin and Registration (DOOR) Database

India

The Controller General of Patents, Designs, and Trade Marks

GI Registry

Russia

Federal Institute of Industrial Property

Register of Appellation of Origin of Goods

What’s the Takeaway? As the nature of GI protections are evolving in many of the world’s major markets such as the EU, businesses need to be even more aware of GIs and how they impact their operations in foreign markets. Due to the significant implications GIs have on the labeling and marketing of exported goods, businesses should work with qualified counsel to ensure that they comply with existing GI registrations to ultimately take advantage of foreign markets opportunities.

U.S. IP Priorities Identified in Upcoming U.S.-E.U. Free Trade Agreement Negotiations

U.S. President Barack Obama, European Council President Herman Van Rompuy and European Commission President José Manuel Barroso announced last Tuesday that the U.S. and the European Union (E.U.) would be entering into free trade agreement (FTA) negotiations following nearly two years of consultative talks and evaluation. Identified as the Transatlantic Trade and Investment Partnership (TTIP), the potential FTA will a have a substantial impact on the world economy as it would liberalize nearly a third of the world’s trade. It may also have substantial intellectual property (IP) implications for IP owners if the U.S. and E.U. can overcome ongoing disagreements over international IP protection reforms.

Initially, there were low expectations that any substantial international IP reforms would result from the agreement. The U.S. and the E.U.’s High-Level Working Group on the TTIP stated in their final report last year (available here) that both parties should “address a limited number of significant IPR issues of interest to either side, without prejudice to the outcome” in their FTA negotiations. Further, news outlets reported that there were no plans for the U.S. and E.U. to harmonize their IP systems.

However, just before the February 12th TTIP announcement, U.S. congressional representatives sent a letter to U.S. Trade Representative Ron Kirk identifying priorities the U.S. Congress wants the TTIP to address, including strong IP rights protection for U.S. industries. Sent by Senate Finance Committee Chairman Max Baucus (D-Mont.) and Ranking Senate Member Orrin Hatch (R-Utah), the letter identified certain E.U. policies towards foreign IP as being substantial barriers to trade that should be improved. Particularly, the letter demanded that the TTIP establish measures to address EU policies that undermine the value of foreign IP protection—including pricing, reimbursement and regulatory transparency. Additionally, the senators identified geographical indications, trademark-like protections given to certain goods from specific regions such as CHAMPAGNE for sparkling wine and ROQUEFORT for cheese, as impeding the ability for U.S. agricultural businesses to compete in the E.U. market.

Lastly, the letter demanded that the TTIP should not undermine the U.S.’ ability to achieve high levels of IP protection in other U.S. FTA negotiations. In enacted and proposed FTAs such as the U.S.-Australia FTA and the Trans Pacific Partnership respectively, the U.S. established IP protections beyond minimum international standards established under World Trade Organization’s Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)—known as TRIPS Plus standards, pertaining to a wide range of IP rights and enforcement.

Despite U.S. calls to address international IP reforms, it is unclear to what degree the U.S. and E.U. can find common ground to enhance international IP protections in their respective countries/blocs. This does not even mention the ability for the U.S. to establish TRIPS Plus IP standards with the E.U. as in other U.S. FTAs. Positive signs towards the potential of meaningful international IP protection reforms between the U.S. and E.U. can be seen in recent cooperative efforts including joint U.S.-E.U. online IP enforcement initiatives, and the establishment of the Cooperative Patent Classification system for harmonized patent document classifications that will be operational this year.  Further, the German government, the E.U.’s largest economy, has called for the TTIP to be a fully comprehensive agreement. However, the E.U. Parliament’s rejection of the U.S.-backed Anti-Counterfeiting Trade Agreement last July showed that the E.U. is potentially wary of considering enhanced international IP protections that would likely result from a comprehensive FTA with the U.S. Time will tell whether the U.S. and E.U. can established enhanced international IP protections.

What are your thoughts on TTIP and its potential for international IP reforms?  How will it impact you or your business?