WHY THE LISBON SYSTEM IS NECESSARY AND IMPORTANT.
WIPO Roving Seminar Brescia, April 10th, 2018
Flavio Innocenzi
TOPICS:
1. MARKET DIMENSION.
2. REGULATORY FRAMEWORK.
3. WHAT’S AT STAKE.
4. WHY THE LISBON SYSTEM IS NECESSARY AND IMPORTANT.
1. MARKET DIMENSION.
EUROPEAN (MARKET) FRAMEWORK. PDO PGI TSG GI SPIRITS TOTAL Italy 575 244 2 38 859 France 463 218 1 78 760 Spain 192 132 4 28 356 Portugal 94 84 1 19 198 Greece 109 144 0 19 272 Germany 26 104 0 35 165 Bulgaria 52 4 5 17 78 UK 28 43 4 3 78 Romania 39 16 0 19 74 Austria 36 9 1 13 59 Hungary 37 13 1 8 59 Slovenia 23 16 3 7 49 Czech Rep. 16 25 5 1 47 Poland 9 22 9 4 44 Source: Qualigeo.eu Croatia 26 9 0 6 41 Last update: 8th April 2018 Belgium 11 13 5 10 39 Slovakia 10 11 7 10 38 Others 31 51 10 23 115 EU-wide 1777 1158 58 338 3331 ITALIAN GIs: A TREASURE WORTH 14.8bn € (value of production).
Number of Products 575 Authorized Consortia 463 Control bodies 70 Official Controls 10,000
Source: Ismea-Qualivita, report 2017.
ECONOMIC IMPACT
Source: report 2017 Ismea-Qualivita. MARKET TREND IN THE LAST TEN YEARS.
Source: Ismea-Qualivita / report 2017. WORLDWIDE EXPORT OF ITALIAN GIs.
Source: Ismea-Qualivita / report 2017. 2. REGULATORY FRAMEWORK.
GEOGRAPHICAL INDICATIONS (definition). Agreement on Trade-Related Aspects of Intellectual Property Rights TRIPs, Annex 1C, 1994, article 22 Protection of Geographical Indications
“indications which identify a good as originating in the territory of a Member, on a region or locality in that territory, where a given quality, reputation or other characteristics of the good is essentially attributable to its geographical origin.” ------Lisbon Agreement for the Protection of Appellations of Origin and their International Registration - October 1958.
“appellation of origin” [AO] means the geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors”.
EUROPEAN REGULATORY FRAMEWORK.
REGULATION (EU) No 1151/2012 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL on quality schemes for agricultural products and foodstuffs
.Wine: Regulation (EU) 1308/2013 .Spirits: Regulation (EC) 110/2008 .Aromatized wine: Regulation (EU) 251/2014 .Non Agricultural products: not yet harmonized at EU level EUROPEAN REGULATORY FRAMEWORK.
REGULATION (EU) No 1151/2012 Art. 45: ROLE OF GROUPS. ..a group is entitled to: a) guarantee quality, reputation and authenticity of their products on the market, by monitoring the use of the name in trade and, if necessary, by informing competent authorities b) ensure adequate legal protection c) develop information and promotion d) ensure compliance with product specification e) improve performance of the scheme f) enhance the value of products
EUROPEAN REGULATORY FRAMEWORK.
REGULATION (EU) No 1151/2012 Art. 13: PROTECTION (FROM FRAUDULENT AND MISLEADING PRACTICES). Registered names shall be protected against
a) any direct or indirect commercial use (in respect of products not covered by the registration) a) any misuse, imitation or evocation b) false or misleading indications as to the provenance, origin, nature or essential qualities of the product c) any other practice liable to mislead the consumer as to the true origin of the product.
INTERNATIONAL PROTECTION. Intra-EU Multilateral Agreements: protection WIPO WTO (Trips) EU
Reg.1151/2012 (ex officio) Bilateral EDB (Euipo) Agreements ACRIS (Euipo) Madrid System (trademarks)
Lisbon System ONLINE: (Geographical Agreements Indications) with Amazon & Ebay EUIPO (WIPO contact point for applications based on the EU Trademark
3. WHAT’S AT STAKE.
THREATS. • Economic Study Shows 60 Billions of Euros in Losses to Italian Food Industry Under Abusive Exploitation of EU Geographical Indications.
WHAT’S AT STAKE (all over the world): parasitic exploitation practices of GIs and their reputation are jeopardizing the economic and social survival of rural communities all over the world. The cultural heritage of those communities is under serious threat. Exploiting the equity and the awareness of GIs for increasing sales of generic food is an unfair practice, misleading millions of consumers every day.
THREATS.
NAMES MATTER!
CAR PENCIL
HOUSE THREATS.
American Feta from cow’s cheese? THREATS.
Pecorino Romano made in Colombia? THREATS.
practices liable to mislead the consumer as to the true origin of the product i.e.: HOW TO MISLEAD CONSUMERS THROUGH THE ‘JUNGLE MARKET EFFECT’.
Asiago PDO: theTHREATS. true Asiago Cheese. Protected Designation of Origin status is the best guarantee of excellence in a European agri-food product. (real) Asiago: Italian PDO In the case of Asiago cheese, it proves that: . quality and characteristics are dueCheese, made in Italy and essentially to the geographical characterized by marked and environment in which it is made, including natural and human factors irregular holes: . its production, processing and preparation take place exclusively in the area of origin. This means that only cheese which is produced, matured, packaged and distributed in compliance with Asiago PDO Cheese Product Regulations has the uncommon and extraordinary features of Asiago Cheese. All the rest is just “common cheese”, or “common food”. How to recognizeTHREATS. the true Asiago Cheese.
(real) Asiago: Italian PDO Cheese, made in Italy and characterized by marked and irregular holes:
Name Asiago on CASEIN CODE the wheel. Identifying the date of production Cheese logo. SERIAL NUMBER + product details. Identifying the cheese maker
Check for more info: https://www.asiagocheese.it/en/home How to recognizeTHREATS. the true Asiago Cheese.
(real) Asiago: Italian PDO Cheese, made in Italy and characterized by marked and irregular holes:
FRESH ASIAGO AGED ASIAGO Seasoning: at least 20 days. Seasoning: at least 60 days. Made with whole cow’s milk. Made with partly skimmed cow’s milk.
Check for more info: https://www.asiagocheese.it/en/home GIs AS OPPORTUNITIES FOR A PRICE PREMIUM .
Average price of Fresh Asiago PDO against generic cheeses.
Source: CLAL.it UNFAIR COMPETITION LAW
Purposes of the MODERN UNFAIR COMPETITION LAW.
Protection Safeguarding of of competition in competitors the interest of Protection the public at of large consumers UNFAIR COMPETITION
Article 10bis (2) of the Paris Convention defines an act of unfair competition as “any act of competition contrary to honest practices in industrial or commercial matters”.
Article 10bis (3) explains which acts shall be prohibited:
1. “all acts of such a nature as to create confusion, by any means, with the establishment, the goods, or the industrial or commercial activities, of a competitor; 2. false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor; 3. indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods."
UNFAIR COMPETITION (example).
“The attempt (by an entrepreneur) to succeed in competition without relying on his own achievements in terms of quality and price of his products and services, but rather by taking undue advantage of the work of another or by influencing consumer demand with false or misleading statements”.
Source: WIPO website. GIs as means for developing the rural economy, and protecting CULTURE & SOCIETY. A whole community living on agriculture.
What if ASIAGO became generic?
GIs help to protect the environment: farming, practiced since the XI century in the Asiago Plateau, has made it possible to create a unique environment and to preserve biodiversity, maintaing landscape variability.
The wave of geographical indications is rising. The Global Alliance of GIs www.origin-gi.com OriGIn: Unique & United!
. Global alliance of GIs
. Over 500 members (agricultural, non agricultural, wines and spirits GIs) from 40 countries
. Established in 2003
. Based in Geneva (+ 4 national antennas & 2 local offices in Brussels and Casablanca)
Some of our members.
Our values.
. GIs are a global phenomenon (with some 8.000 GIs recognised in the world. Ex: some 2.000 in China and some 1.000 in the Americas, including the US)
. GIs are intellectual property rights recognised in the most important international agreements
. GIs are crucial for producers and consumers
. GIs play a key role for inclusive economic development
. GIs play a key role in protecting the cultural identity of a region.
Our goals.
. Strengthen the protection of GIs at the national, regional and international level
. Raise awareness on GIs & sustainable development
. Facilitate the exchange of experience among GI groups
3. WHY THE LISBON SYSTEM IS NECESSARY AND IMPORTANT.
WHY THE LISBON SYSTEM IS IMPORTANT.
GIs: increasing number and growth consequent need for intl protection 28 contracting parties simplifies paper work: one request*
*Denominations registered upon request of the competent authority of a Contracting State, on behalf of producers. The Intl Bureau keeps the Intl Register of Apps of Origin and formally notifies the other Contracting States of the registrations. It also publishes them in the Lisbon system's official bulletin Appellations of Origin. WHY THE LISBON SYSTEM IS IMPORTANT. protects appellations against usurpation or imitation, even when used in translation or accompanied by words such as "kind", "type" or the like (Article 3), and may not be deemed to have become generic in a Contracting State as long as it continues to be protected in the country of origin (Article 6).
11/21 May 2015 THE GENEVA ACT OF THE LISBON AGREEMENT. on appellations of origin and geographical indications.
refine/modernise Lisbon Agreement include GIs alongside the AOs provide same legal framework for AOs and GIs protect both AOs and GIs with same principles and provisions establish a new multilateral standard protection (now available for wine and spirits GIs) covering both AOs and GIs, i.e. “like”, “style”, “type” both registered AOs and GIs cannot become generic introduce provisions for the accession by intergovernmental organizations, for instance European Union, OAPI safeguard the rights acquired from existing registrations (more than 800, of which 142 Italian), and, consequently, to their protection by the current Lisbon Members.
AN EXAMPLE OF EFFECTIVENESS OF THE LISBON AGREEMENT. THE ASIAGO CASE IN MEXICO.
11 March 2014: application for the protection of ASIAGO under the WIPO Lisbon Agreement
12 February 2015: refusal by Nicaragua, due to opposition notified by US Dairy Export Council to the IP Authority of Nicaragua http://www.wipo.int/branddb/jsp/data.jsp?TYPE=PDF&SOURCE=LIS BON&KEY=1011-RF(NI)-AOs924_927_930_931%20(IT).pdf
10 March 2015: the US Dairy Export Council, along with Belgioioso, Sartori and Molfino Hermanos filed a writ requesting IMPI to refuse the protection in Mexico of PDO Asiago
AN EXAMPLE OF EFFECTIVENESS OF THE LISBON
AGREEMENT. THE ASIAGO CASE IN MEXICO. 17 March 2015: attempt of registration of ‘Sartori Asiago’ (rejected)
24 March 2015: deadline for refusal of approval under the Lisbon, for Mexican authorities
26 March 2015: attempt to register ‘Belgioioso Asiago’ (rejected)
May 2016: the EU and Mexico launched the negotiations to modernize the Global Agreement, including rules on trade which are still ongoing. The first round of negotiations followed in June of that year. The most recent round took place in Jan 2018 in Mexico City.
23 June 2016: IMPI responded to applicants’ request informing that the PDO Asiago’s protection has already been recognized in Mexico, thereby dismissing the request. AN EXAMPLE OF EFFECTIVENESS OF THE LISBON AGREEMENT. THE ASIAGO CASE IN MEXICO.
August 2016: publication to the knowledge of the general public by the Consortium of Asiago Cheese in Mexico
November 2016: ‘cease and desist’ letters (successfully) sent to one importer to Mexico and to 4 major retailers by the Consortium
March 2017: promotional activities increased in Mexico by the Asiago Cheese Consortium
March 2017: American stakeholders USDEC; Belgioso e Sartori decide to file an Amparo* in Mexico against ASIAGO (and GORGONZOLA). *: remedy for the protection of constitutional rights.
AN EXAMPLE OF EFFECTIVENESS OF THE LISBON AGREEMENT. THE ASIAGO CASE IN MEXICO. 2016: the Applicants filed an Amparo claim before the 13th District Judge, challenging (i) the Lisbon Agreement for not providing an opposition procedure for third parties; (ii) the tacit/implied acceptance of protection of PDO Asiago, disregarding applicants’ arguments; (iii) official communication DGAPI.2016.054 for not complying with the applicants’ right of petition. 14 July 2017: The Amparo claim was resolved as follows: (i) dismissing arguments against the Lisbon Agreement, (ii) dismissing arguments against the tacit/implied acceptance of protection, and (iii) declaring official communication DGAPI.2016.054 as unconstitutional for not giving a response in a reasonable time and duly grounded to the applicants’ request.
AN EXAMPLE OF EFFECTIVENESS OF THE LISBON AGREEMENT. THE ASIAGO CASE IN MEXICO.
2017:appeal (RA 456/2017) against said resolution before the 9th Circuit Court, which was partially resolved on November 23, 2017. Provided that constitutionality of Laws and International Treaties/Agreements may only be resolved by the Supreme Court of Justice, the Circuit Court refrained from resolving such arguments and remitted this matter for the Supreme Court’s attention and resolution.
It appears that applicants have been seeking to obtain a declaration of unconstitutionality of the Lisbon Agreement.
22 March 2018: the Supreme Court remanded the case to the Circuit Court to dismiss the claim.
AN EXAMPLE OF EFFECTIVENESS OF THE LISBON AGREEMENT. THE ASIAGO CASE IN MEXICO. 2017:appeal (RA 456/2017) against said resolution before the 9th Circuit Court, which was partially resolved on November 23, 2017. Provided that constitutionality of Laws and International Treaties/Agreements may only be resolved by the Supreme Court of Justice, the Circuit Court refrained from resolving such arguments and remitted this matter for the Supreme Court’s attention and resolution. it appears that applicants have been seeking to obtain a declaration of unconstitutionality of the Lisbon Agreement.
22 March 2018: the Supreme Court remanded the case to the Circuit Court to dismiss the claim. ASIAGO is thus a protected GI in Mexico thanks to the Lisbon Agreement.
FIVE ATTEMPS REJECTED. 1) Application n. 1589484 for the mark SARTORI ASIAGO by SARTORI COMPANY Filed: 17/03/2015 / Refused 02/02/2017
2) Application n. 1243154 for the mark BELGIOIOSO ASIAGO of BELGIOIOSO CHEESE, INC. Filed: 26/03/2015 / Refused 30/03/2017
3) Application 1599887 for the mark LA PAULINA ASIAGO of MOLFINO HERMANOS S.A. Filed: 15/04/2015 / Approved on 11/04/2017 as LA PAULINA
4) Application 0001944685 for the mark LALA ASIAGO of COMERCIALIZADORA DE LACTEOS Y DERIVADOS S.A. DE C.V. Filed: 08/09/2017 / Withdrawn: 09/11/2017
5) Application 0001948293 for the mark CHAMBOURCY ASIAGO of SOCIETE DES PRODUITS NESTLE S.A. Filed: 18/09/2017 / Withdrawn: 24/01/2018
Conclusions:
Misleading consumers may (also) represent an act of unfair competition.
Protecting a name also means protecting the cultural identity and the economic/social survival of entire regions.
The Lisbon System is an effective tool for the intl protection of GIs.
The Geneva Act is improving the Lisbon System for the protection of GIs around the world, in addition to bilateral agreements and protection of GIs in the WTO.
The Geneva Act of the WIPO Lisbon Agreement has potential to establish an international GIs registry: ratification is a priority!
Thank you.