The global nature of our food supply has been on full display over the past year. As tariff and trade uncertainties have dominated our national conversation, one issue that has arisen is the use of geographic indicators on certain products. This article will give an overview of geographic indicators, their legal schemes both domestically and abroad, and explain the current issues.
Background
A geographic indicator is a word or symbol used on a product that indicates where a product was produced and presents that product as possessing certain qualities due to its origin. GIs are a type of intellectual property, and similar to a trademark, they are an “indicator” to consumers that the product meets a certain standard or quality. Further, a GI indicates to a consumer that the product contains a characteristic that is attributable to its geographic origin. For example, sparkling wine can only use the GI “champagne” if it originated from the Champagne region of France and was produced using certain traditional methods.
The governing of the “champagne” GI is a good example of how complicated this area of international law can be. First, in 1891 the Treaty of Madrid established that “champagne” could only be used on wine produced from the Champagne region, and following the conclusion of World War I, the Treaty of Versailles reaffirmed this rule. The rule was affirmed again in 1963 through the signing of the Libson Agreement for the Protection of Appellations of Origin and their International Registration; however, “champagne” was not recognized as GI in the United States until 2005 when they signed the 2005 U.S. – European Community Agreement on Wine Trade. Thus, sparkling wine producers in the US who used the term “champagne” on their product prior to the signing of this agreement are permitted to use the term. As evidenced by this short example, the system of protection for GIs is complicated and nuanced. This article will seek to explain it through exploring the WTO, US and EU rules.
WTO treatment of GIs
The World Trade Organization (WTO) describes GIs as “place names” or “words associated with places” that identify the “origin and quality, reputation or other characteristics of products.” Established in 1995, the WTO is an international organization composed of over 160 members that handles the rules of trade between nations. The WTO agreement that handles intellectual property is titled, the Trade-Related Aspects of Intellectual Property Rights (TRIPS), and this agreement also offers protection for GIs. Specifically, under Article 22 of TRIPS, WTO members are required to recognize and protect GIs as intellectual property. For example, Article 22 authorizes members to refuse or invalidate a GI that misrepresents the good’s origin if it misleads the public.
However, TRIPS provides exceptions to the GI protection rules. Specifically, a WTO member does not have to protect a GI if the term is considered a “generic” or “common” term in their country. A generic term is one that is accepted by the public as the “common name for such goods or services.” For example, cheddar cheese is the common name for a particular type of cheese and does not indicate that the cheese product originates from Cheddar, England. Disagreements in classification can lead to international disputes, particularly when one country seeks to protect a term as a GI while another treats it as generic and allows unrestricted use by domestic producers.
Wine and spirits are treated differently than other products. For instance, as noted above, Article 22 allows for the invalidation of GIs that mislead the public as to the goods origin. That authorization is expanded in Article 23 of TRIPS, providing a higher level of protection for wine and spirit. Instead, a member may refuse or invalidate a GI that misrepresents the wine or spirit’s origin regardless of whether it misleads the public. Further, the exception for “generic” or “common” names does not apply to wines and spirits.
GI protection in the US
Because it is a signee of TRIPS, the US is required to protect GIs. However, the system of GI protection in the US was established well before TRIPS and its participation in the agreement did not require the US to create a new protection system. Primarily, the US protects GIs through both the U.S. Patent and Trademark Office (USPTO) and the Alcohol and Tobacco Tax and Trade Bureau.
USPTO
The USPTO derives its authority over GIs from Section 4 of the Lanham Trademark Act of 1946. Specifically, the USPTO allows “indications of regional origin” to be registered as collective and certification marks. 15 USC § 1054. A “certification mark” is defined as a “word, name, symbol, or device, or any combination thereof used . . . to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics.” 15 USC § 1127. A “collective mark” is a mark used in commerce “by the members of a cooperative, an association, or other collective group or organization” that indicates membership in a union, an association, or other organization.” 15 USC § 1127. Collective marks are distinguished from certification marks because they can only be used by members of a certain group or association. On the other hand, a certification mark can typically be used by anyone who meets the standards set by the owner of the certification mark. For example, the mark ROQUEFORT (U.S. Registration No. 571,798) is a certification mark that can only be used by cheese products manufactured from sheep’s milk, cured in the caves of the Community of Roquefort France, and produced consistent with the traditional methods of that community.
The USPTO will also allow GIs to be registered as a trademark if they can “be protected as trademarks with an adequate showing of acquired distinctiveness through use.” 15 USC § 1052(f). Traditionally, in US trademark law, descriptions based on geography are prohibited. However, if over time consumers recognize a specific “geographic sign” as an indicator of the “producing or manufacturing source” of the good or services rather than just its geographic origin, then the registration as a trademark is permissible. It is notable that GIs protected as trademarks and collective marks must meet this “distinctiveness” requirement, but certification marks are not required to. An example of this is Sidamo coffee. “SIDAMO,” which is the name of the geographic region where the coffee is produced, is a protected trademark owned by the country of Ethiopia. The USPTO allows SIDAMO to be used as a protected trademark because it “had acquired distinctiveness for a specialty coffee sold in the United States since 1928.
TTB
The Alcohol and Tobacco Tax and Trade Bureau (TTB) is the federal agency that has labeling authority over wine, malt beverages, beer, and distilled spirits in the US. TTB has regulations governing generic, semi-generic, and non-generic designations of geographic significance for grape wine. Here, the designation of “generic” indicates that the use of a geographic term is now commonly accepted as type wine rather than as an indicator that it comes from a specific geographic place. 27 CFR § 4.24(a). For example, vermouth and sake are publicly understood as types of wine rather than wines originating from specific locations. Further, “semi-generic” terms are those that identify a type of wine “of an origin other than that indicated by such name” if the label actually discloses its place of origin and the wine meets the proper standard of identity. An example is California Champagne. 27 CFR § 4.24(b). Last, a “non-generic” term “may be used only to designate wines of the origin indicated by such name” if it is known to the consumer and the trade that its designation is distinguishable from all other wines. 27 CFR § 4.24(c). Examples of not distinctive non-generic names are “Napa Valley” or “Lake Erie,” and examples of distinctive non-generic names are “Bordeaux Blanc” or “Bordeaux Rouge.”
There are also standards of identity and labeling requirements for distilled spirits and malt beverages. These regulations can be found at 27 CFR § 5.154 & 27 CFR § Part 7.
Common Law Protections
The US judicial system also recognizes common law protection for some GIs. Common law protection means that though the GI is not registered with the USPTO, it has been established through litigation that only products produced from a certain region can bear that GI. For example, “COGNAC” is protected as an unregistered certification mark in the US. In Institut National Des Appellations v. Brown-Forman Corp, 47 USPQ2d 1875, 1884(TTAB 1998), courts ruled that purchasers in the US understand the term “Cognac” to refer to brandy originating in the Cognac region of France and not produced elsewhere. Thus, Cognac is a protected certification mark even though it is not registered with the USPTO.
GI protection in the EU
The European Union (EU) GI system is much more protective than the US trademark system. GIs are defined by the EU as “a distinctive sign used to identify a product whose quality, reputation or other such characteristics relate to its geographical origin.” Further GIs are considered a “key interest in the EU’s trade agenda” because they help protect “producers from competitors trying to exploit their reputation and know-how developed to produce genuine high-quality products.” Because of this, the EU is a large supporter of the establishment of an international register for geographical indicators.
The EU’s current system of GI protection, called their “quality scheme,” aims to “protect the names of specific products to promote their unique characteristics, linked to their geographical origin as well as traditional know-how.” The quality scheme is divided into a few categories – food and wine can be classified as either protected designation of origin or protected geographical indication, and spirit drinks are classified as simply a geographical indication.
- Protected designation of origin (PDO): Food and wine under this category are products will the strongest links to the place where they are made. To qualify as PDO, every part of the good’s production, processing, and preparation must have taken place in the specific region. For example, olive oil bearing the “Kalamata olive oil” PDO is entirely produced in the region of Kalamata in Greece, and must use olive varieties from that area.
- Protected geographical indication (PGI): For products bearing a PGI, at least one of the stages of production, processing, or preparation must take place in the region. Specifically for a wine PGI, 85% of the grapes used to produce the wine must come from the geographical area where it is made. For example, the Westfälischer Knochenschinken PGI ham is produced in Westphalia with traditional techniques, but this product does not exclusively come from animals born and reared in that region of Germany.
- Geographical indication of spirit drinks (GI): For these products, at least one stage of distillation or preparation must take place in the region. Raw products need not come from the region. For example, Irish Whiskey GI does not require raw materials exclusively from Ireland, but it must be brewed, distilled, and matured in the country.
Further, the EU also has a special designation for products that are produced through traditional processes and not linked to specific geographical areas. These are called “Traditional specialty guaranteed” (TSG), and they include food and agricultural products. For example, the traditional beer Gueuze can bear a TSG label if it uses the protected method. Though this beer is traditionally produced around Brussels, Belgium, a producer located elsewhere but using the protected method could bear the TSG label.
Trade Issues
As the US and the EU continue to negotiate trade deals that best protect both their consumers and producers, the GI issue is one that remains top of mind. The EU, which has a stronger protection system for GIs, is a strong advocate for the establishment of a multi-national GI registration system. However, as the US seeks to advance the interests of its producers and consumers abroad, there can sometimes be a clash between the desires of the two groups. This especially arises in the context of “generic terms.” There are many terms that the EU would classify as protected under their GI system, but the US would consider “generic.” For example, “Feta” cheese is a PDO, the highest standard of GI in the EU, but in the US “feta” is considered a generic term for a type of cheese. This means that to bear the term “feta” in an EU member country or a country with a trade agreement on this issue, a product must meet the standards of the EU’s PDO. Furthermore, if “feta” becomes a protected GI internationally, then US producers would no longer be permitted to sell their product with the term “feta.”
At this time, the US remains in negotiations with many foreign nations on various trade issues. To keep up with the latest developments, click here to subscribe to NALC’s bi-weekly newsletter, “The Feed.”
To learn more about the US food system’s standards of identity generally, click here to read NALC blog “Food Foundations: Standards of Identity.”
To learn more about US regulation of alcohol beverages, click here to read “Food Foundations: An Overview of Which Agencies Regulate Alcohol Beverages.”
To learn more about recent trade developments, click here to read NALC article “Overview of Recent Ag Trade Announcements.”
For an overview of Geographic Indicators, click here to watch NALC webinar “An overview of Geographic Indicators and their Impacts on U.S. Agriculture.”
Click here to view Congressional Research Service Report, “Geographical Indications (GIs) in US Food and Agricultural Trade.