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.