QMJIP

Queen Mary Journal of Intellectual Property

Month: May, 2014

The future of Parma Ham between Lisbon and China (via Geneva)

by Giancarlo Moretti

The Internet is a virtual place with no boundaries, where interesting discoveries are ordinary. One of the most fascinating findings, for instance, is that Parma Ham is produced not only in the lovely area of Parma, in the heart of Emilia Romagna, centre Italy, but also in some ancient towns on the opposite parts of China. Again, it is quite surprising to find a massive production of Pandoro (a typical Italian Christmas sweet originating in Verona area) in Argentina. Such situations raise interesting questions about the protection either at domestic and transnational level of the Geographical Indications (GIs), in order to avoid the circulation of fake traditional products. According to a recent survey of Coldiretti, the most important Italian Farmer Union, only in Italy, the loss of revenues associated to this phenomenon has been estimated in around € 60 billion (£ 48,6 billion).[1] Actually, GIs do not enjoy a global standard of protection and, in some countries, their protection is stipulated by means of collective or certification trademarks. For instance, Parma Ham is registered in the Chinese Trademark Register as a collective mark.[2] However, the protection under trademark law might be more burdensome than a sui generis GI protection, as stipulated under the EU Law.[3]

Albeit a harmonised model of protection of GIs has been widely debated in the international fora for decades, the main international tool still remains the Lisbon Agreement[4], adopted in 1958 and administrated by the WIPO. However, it provides only a weak protection of Appellation of Origin, leaving up to the Contracting Parties the choice of the adoption of the most appropriate standard. Moreover, the related register is purely indicative. The issue has been under the spotlight even at WTO’s Uruguay Round, were it was addressed by Article 22 of the TRIPS. The latter provision embeds a compromise between different positions, as per GIs, and mandates only a competition-type protection. Over the last round of negotiations, in 2001, the Doha Ministerial Declaration called upon the establishment of a multilateral register, as already set forth for wines and spirits by TRIPS Article 23.[5] As of today, nonetheless, nothing has been adopted and only wines and spirits may enjoy adequate legal coverage.

Currently, the most relevant attempt to come up with a solution to the issue is represented by the Draft Revised Agreement on the Appellation of Origin[6], which is under discussion at WIPO’s Working Group on the Development of the Lisbon System. Recently, its last version has been issued. Notably, this draft treaty would lay down a more articulated definition of Appellation of Origin (likewise the double level stipulated by the European model) and an associated notion of Areas of Origin. In particular, the insertion of the term “reputation” – in comparison with the previous version – deserves attention, as it would aim to enhance not only the geographical but even the cultural link between a product and the geographical area of origin.[7] The most important – and perhaps criticised – provisions related to the system of registration and the protection deriving from the international registration is the Draft Article 11, which would seem to set out a ­sui generis (dilution-like) protection, likewise Article 13 of the EU Regulation no. 1151/2012. On the other hand, Draft Articles 12 and 13 stipulate respectively a shield against becoming generic and the relation between trademarks and GIs. Both of these draft articles were debated during the last session of the Working Group and were amended. In particular, the new wording of the Draft Article 12 would impose upon the Contracting Parties a mere protection against becoming generic, in order to meet the requested of some countries and to enlarge the base of negotiations. Therefore, in comparison with the previous version of the Draft Agreement, these new provisions seems to allow “wiggle rooms” as for the protection against a GI becoming generic. On the other hand, Draft Article 13 aims to address the complex interaction between trademarks and GIs. The new draft enshrined now three possible alternatives: the previous version (co-existence), the US standpoint (rejection of co-existence) and the Secretariat compromise (maintaining the mere possibility of co-existence).

Therefore, the Draft Lisbon Treaty might provide an adequate tool to prevent the “legal counterfeiting” of GIs. Nonetheless, it is undeniable that, so far, only 28 Member States have signed Lisbon Agreement. Notably, important international actors are currently excluded, such as Canada, the USA, Australia and China. In such a situation, the need to attract more contracting parties would come up with weakening of the overall system, which would restrict its functioning. Indeed, the current version of the Draft Agreement would allow some leeway to trademark-oriented jurisdictions, and, in particular, it would entitle these countries to rely on classical trademark remedies.

Beyond any doubt, the adoption of the Draft Agreement would amount to a global sui generis protection of GIs. One of the certain outcomes would be that Parma Ham might be produced and manufactured only in Parma Region. However, on the other side, effects on other economies of the “new world” could be dramatic. For example, Australian and American manufacturers would be prevented to produce some types of cheese or other types of food, or, rather, to change the name to their production with a risk of a sensible loss to their goodwill.

For these reasons, actually, the debate is far from being concluded, as the position of EU is completely at odds with the US’s. Indeed, while the protection of GIs is one of the key points at the centre of the EU Trade Agenda, the US delegation is strongly opposing at WIPO to the functioning of the Working Group of the Development of the Lisbon System, due to the fact that its duties should be carried out by the Standing Committee on Trademarks Law, Industrial Design and Geographical Indications. Hence, the dispute still remains unresolved.[8] However, future development should be adopted, in order to safeguard not only traditional products from an ongoing globalisation process, but to endow consumers with adequate protection when it comes to the food they usually eat. Eventually, so far, one of the biases of the present debate is the consideration of GI protection as a mere prerogative of European – and in particular Mediterranean – countries. Especially, it should be born in mind that GIs might represent an opportunity to develop and secure production in developing and least-developed countries, strongly relying on the production of typical products. Therefore, the protection of GIs should be considered as a key issue on a global and economic scale, not only for the protection of Parma Ham and other famous GIs, but as a tool to stimulate the installment and development of new productions.

 

Giancarlo Moretti is an LL.M. 2013/2014 candidate at Queen Mary University of London, Student Research Fellow at Queen Mary Intellectual Property Research Institute (QMIPRI), and Assistant Editor of the Queen Mary Journal of Intellectual Property (QMJIP).

 

[1] See http://www.coldiretti.it/News/Pagine/94—7-Febbraio-2014.aspx accessed on 21 May 2014.

[2] See http://www.chinatrademarkoffice.com/index.php?c=tdsearch accessed on 21 May 2014.

[3] Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality Schemes for Agricultural Products and Foodstuffs [2012] OJ L343/1.

[4] Lisbon Agreement for the Protection of Appellation of Origin and their International Registration (adopted 31 October 1958, revised at Stockholm on 14 July 1967, and amended 28 September 1979) 923 U.N.T.S. 205.

[5] WTO 4th Ministerial Declaration (Doha 20th November 2001) WT/MIN(01)/DEC/1, para 18.

[6] Working Group on the Development of the Lisbon System (Appellation of Origin) (8th Session) Draft Revised Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva 16 April 2014) LI/WG/DEV/9/2.

[7] Working Group on the Development of the Lisbon System (Appellation of Origin) (8th Session) Notes on the Draft Revised Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva 16 April 2014) LI/WG/DEV/9/4, Annex, 4.

[8] For a list of the related documents see http://www.wipo.int/meetings/en/details.jsp?meeting_id=32083 accessed on 21 May 2014.

QMJIP – Volume 4 – Issue 2 (April 2014)

by Pedro Malaquias

QMJIP – Volume 4 – Issue 2 (April 2014) has been published. The list of contents reads as follows:

  • Editorial‘, Johanna Gibson and Lord Hoffmann;
  • What has Intellectual Property done for the law?‘, The Rt Hon Lord Justice Floyd;
  • Ancillary patent markets and the firm‘, Dan L Burk and Brett H McDonnell;
  • Using the TRIPS Agreement’s unfair competition clause to curb the misappropriation of biological resources, traditional knowledge and expressions of folklore in user countries‘, Edson Beas Rodrigues Jr;
  • The New Customs Regulation on border controls concerning counterfeit, pirated and bootleg goods‘, Ashley Roughton;
  • Book Review: Megan Richardson, Michael Bryan, Martin Vranken and Katy Barnett, Breach of Confidence: Social Origins and Modern Development (Edward Elgar Publishing, 2012), 192 pp.‘, Phillip Johnson;
  • Book Review: Orly Lobel, Talent Wants to be Free: Why We Should Learn to Love Leaks, Raids, and Free Riding (Yale University Press, 2013), 288 pp.‘, Pedro Malaquias;
  • Book Review: Eleonora Rosati, Originality in EU Copyright: Full Harmonization Through Case Law (Edward Elgar Publishing, 2013), 296 pp.‘, Catherine Pocock.

Further information and access to two free articles is available here.

May IP Events

by Pedro Malaquias

In November 2013, QMJIP started to publicise IP Events across the world on its Twitter page (@QMJIP), using the hash tag #IPevents. Such information is also made available in the QMJIP blog. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us@QMJIP #IPEvents and we can add it to our list.

Here are the events for May 2014:

 

UNITED KINGDOM:

  • On 1 May 2014, in Cambridge, CIPIL will host the seminar ‘‘Software patents – legal and commercial perspectives’. Further details are available here.
  • On 6 May 2014, in London, IPKat and 1709 Blog team member Dr. Eleonora Rosati will host a Post-Fordham Copyright Catch-Up event. Details here.
  • On 6 May 2014, in Oxford,the Oxford Intellectual Property Research Centre will host a discussion group under the topic ‘The History of Champagne in the UK: 1860 – 1914’. Details here.
  • On 7 May 2014, it is time for the IBC Legal’s 4th Annual Advertisting & Marketing Law 2014. Further information on this London conference are available on the event website.
  • On 7 May 2014, in London, ‘Networks of power in digital copyright law and policy’ will be the subject of a City Law School research seminar. Additional details are available here.
  • On 8 May 2014, in Oxford,the Oxford Intellectual Property Research Centre invites Dr. Rosana Pinheiro-Machado to talk about ‘Intellectual property and counterfeits in Brazil and China: an anthropological perspective’. Details here.
  • On 8 May 2014, in London, CIPA organises the seminar ‘Update on the USPTO practice in the light of Myriad and Prometheus’. Check the event page.
  • On 8 May 2014, in London, BLACA will host one more meeting, this time dedicated to the Irish Copyright Reform. As usual, additional information can be accessed in the association’s website.
  • On 9 May 2014, Management Forum will host in London the course ‘International Licensing, Manufacture Under Licence and Technology Transfer Agreements – Understanding and Drafting’. Further information is available here.
  • On 9 May 2014, Management Forum will host in London the course ‘Impact of Patent Construction – How to Prove Infringement and Validity in USA, UK and Germany’. Further information is available here.
  • On 12 May 2014, Management Forum will host in London the course ‘EPO and US Patent Prosecution With One Specification: How To Reconcile The Differing Requirements of the EPO and USPTO’. Further information is available here.
  • On 15 May 2014, in Oxford,the Oxford Intellectual Property Research Centre invites Professor Poh Kam Wong to talk about ‘Rapid Software patenting growth over the last 2 decades: Digital Dividends or Digital Divide?’. Details here.
  • On 16 May 2014, Management Forum will host in London the seminar ‘IP and the Generics Industry’. Further information is available here.
  • On 19 May 2014, the IP and Technology Law Group of 4-5 Gray’s Inn Square will host in London the seminar ‘The Intellectual Property Bill’. Registration and additional details are available in eventbrite.
  • On 20 May 2014, in London, CIPA organises the CPD seminar ‘Inventive Step at the IPO’. Check the event page.
  • On 20 May 2014, ITMA will dedicate its London evening meeting to ‘Six things you might not know about the TMA 1994‘. Details here.
  • On 20 May 2014, in Oxford,the Oxford Intellectual Property Research Centre will host a discussion group under the topic ‘The Intersection of Antitrust (Competition Law) and Trade Marks’. Details here.
  • On 21 May 2014, in London, CIPA will host its ‘2014 Annual General Meeting’. Check the event page.
  • On 21 May 2014, in London, CLT organises the ‘Practical Issues in Cloud Computing Conference 2014’. Details here.
  • On 21 May 2014, in Oxford,the Oxford Intellectual Property Research Centre invites Professor Tim Wu to talk about ‘On the Properties of Information’. Details here.
  • On 22 May 2014, in London, AIPPI UK will host the event ‘The IPEC: reflections from His Honour Judge Hacon on its first 6 months’. For registration and further details, follow the link.
  • On 23 May 2014, in Oxford,the Oxford Intellectual Property Research Centre will host a discussion group under the topic ‘Phillips v Mulcaire: A Property Paradox?’. Details here.
  • On 27 May 2014, in London, the UK IPO will host a‘Presentation of UK IPO Mediation Services’. Details here.
  • On 28 May 2014, in Edinburgh, Murgitroyd and Harper Macleod invite you to join them for “Get Appy“, a seminar about intellectual property (IP) and legal issues for app developers. Announcement here.
  • On 30 May 2014, in London, Wigs and Gowns is hosting its next fashion law workshop ‘Intellectual Property In The Fashion Industry’. Details here.
  • On 30 May 2014, in Edinburgh, the Scottish Council on Archives in collaboration with CREATe will deliver the workshop ‘Understanding Copyright – An Introduction for Archivists’. Details here.

 

EUROPE:

  • On 6 May 2014, in Rome, Italy, WIPO and Direzione Generale Lotta alla Contraffazione -Ufficio Italiano Brevetti e Marchi organise the seminar ‘WIPO Services and Initiatives’. Additional details are available here.
  • On 6 May 2014, in Alicante, Spain, Magister Lvcentinvs – Master en Propiedad Industrial e Intelectual de la Universidadde Alicante will organise the ‘III Jornada de Salidas profesionales de la Propiedad Industrial e Intelectual‘. Further information here.
  • On 7 May 2014, in Brussels, Belgium, Brussels Matters will host the meeting ‘The new TTBER regime to 2026’. Additional information is available here.
  • On 15 May 2014, in Cork, Ireland, the National Forum for the Enhancement of Teaching and Learning in Higher Education organises the workshop “Copyright Law for Digital Teaching and Learning“. Details here.
  • On 15 and 16 May 2014, in Trier, Germany, the ERA – Academy of European Law will host its ‘Annual Conference on European Copyright Law 2014’. Programme and registration are online.
  • On 20 May 2014, in Lisbon, Portugal, ARBITRARE will be hosting a business breakfast under the theme ‘Reflections on the Mediation Law: what can be expected?’. Programme and registration are online.
  • On 21 May 2014, in Helsinki, Murgitroyd invites you to join us them a seminar entitled “Patent Strategy in Europe – Future Perspective” followed by a Whisky Tasting reception. Details here.
  • On 21 May 2014, in Paris, France, CCLS in The Paris Intellectual Property Lecture series presents An Introduction to Chinese Intellectual Property‘. Details here.
  • On 22 May 2014, in Lund, Sweden, FICPI Sweden will run a ‘Seminar on IP Aspects of Life Sciences and MedTech’. Information about the event is available here.
  • On 22 and 23 May 2014, in Geneve, Switzerland, it is time for the ‘WIPO Workshop for Mediators in Intellectual Property Disputes’. Further details here.
  • On 23 May 2014, in Paris, France, CCLS in The Paris Intellectual Property Lecture series presents Digital Intellectual Property in China‘. Details here.
  • On 27 May 2014, in Lisbon, Portugal, the Lisbon Section of the Portuguese Bar Association will host the conference ‘Personal Data Protection‘. Further details here.
  • On 29 and 30 May 2014, in Alicante, Spain, OHIM´s first ever IP Mediation Conference gets underway. Details here.

 

UNITED STATES OF AMERICA:

  • On 1 May 2014, in Berkeley, California, the Berkeley Center for Law and Technology will host the conference ‘Innovation and Intellectual Property: A Tribute to Suzanne Scotchmer’s Work’. Agenda here.
  • On 2 May 2014, in Chicago, the Center for Intellectual Property Law of the John Marshall Law School will discuss ‘IP on the Edge’. Agenda here.
  • On 6 May 2014, in Washington, the George Washington University Law School will host the ‘The GW Law Symposium on Intellectual Property’. Check the details here.
  • Between 15 and 17 May 2014, in Philadelphia, AIPLA hosts its 2014 ‘AIPLA Spring Meeting‘. Details here.

 

ASIA:

  • From 7 – 9 May 2014, in Hong Kong, it is time for 2014 IACC ANNUAL SPRING CONFERENCE. Check the event website for further details.
  • From 10 – 14 May 2014, in Hong Kong, it is time for INTA’s 136th Annual Meeting. Check the event website for further details.
  • On 14 and 15 May 2014, in Beijing, P.R. China, QBPC hosts its ‘14th Annual Meeting’. Details here.

 

CENTRAL AND SOUTH AMERICA:

  • On 6 May 2014, in Guatemala City, Guatemala, INTA will host a roundtable on ‘Industrial Property Law in Guatemala’. Additional details are available here.
  • From 18 to 21 May 2014, in São Paulo, Brazil, it is time for the 8th FORTEC National Meeting. This year’s Forum proposes to focus its content on the topics: “Evolving from Management of Intellectual Property to Strategic Business Units, and Supporting the Development of CREATIVITY, INNOVATION, and ENTREPRENEURSHIP at Technology Transfer Offices of Brazilian R&D Institutes”. Further details here.
  • On 28 May 2014, in Santiago de Chile, Chile, Mr. Rodrigo Velasco S. will host an INTA roundtable on ‘The New Chilean Health Regulations Restriction of Advertising of Foods and its Impact on Trademark Rights. Details here.

 

Pedro Malaquias is a Portuguese Qualified lawyer. Currently, he is a LL.M. candidate at Queen Mary, University of London and works as a Student Research Fellow at Queen Mary Intellectual Property Research Institute (QMIPRI) and as Assistant Editor at Queen Mary Journal of Intellectual Property (QMJIP). @PedroMMalaquias