Part 2: Elements of a Geographical Indication protection strategy

Part 2: Elements of a Geographical Indication protection strategy

Implementing actions

Producers must agree on the elements of the specifications, the control plan and the monitoring compliance system that will be implemented. They must also develop a strategy to protect using appropriate IP tools and prevent “legalised usurpations” and any action among the group of producers, or externally, which may have a negative impact on the product’s reputation.

Legal basis for GI protection

Producers must first seek to protect their OLPs using the GI system nationally. To do so there must be a national IP framework for the protection of GIs. In the absence of such a framework, producers will need to consider using other forms of IP tools such as collective or certification marks. They may also avail themselves of provisions under competition or consumer laws, customs laws or ex-officio protection.

Issues of infringement and imitation

Infringement of the producer group’s GI (and other IPRs) can occur in several ways on the market. For example, as counterfeited products and can be manifested as the use of the name and sometimes associated GI logo by unauthorised users and on unauthorised products. It may also be poor quality imitations being placed on the market.

Producers must be aware of infringement which may also occur internally, and be perpetrated by the legitimate GI producers themselves; or externally, by producers outside the GI designated area of production.

The negative impacts of infringement are numerous and include, but are not limited to:

•   Negative consumer perception of the product and the value chain actors, thus damaging the reputation of the product and brand
•   Loss of revenue, market share and export markets and the resulting lower profits for producers and other value chain stakeholders
•   The cost to take legal actions to fight against counterfeiters

Geographical scope of GI protection

As part of the business strategy for the OLP, producers will need to determine where they will seek protection for their product. As with all IPR, GIs are only protected in the territories where they are registered. A first consideration will be to seek protection in their home territory, and secondly in their export markets. Another consideration will be based on where infringement is or could be occurring. The producer group must then consider costs and benefits of protecting their OLP in different countries.

Considering protection at the international level, there are three main types of GI protection options:

1. To apply for protection of the Geographical Indication through the target country’s sui generis system, or trade mark system (direct application)
2. To use the Lisbon System - the International System of Appellations of Origin and Geographical Indications, available only for contracting parties
3. The recognition through an international agreement concluded between governments (usually related to trade agreements)

Types of infringement

•   The use of the GI name on identical or similar products, which is also called usurpation
•   The use of the GI name on other products that aims to take advantage of the reputation of the name of the GI
•   The use of the GI, including when GI products are used as ingredients

Forms of infringement

•   Internal infringement occurs when producers fail to comply with the specifications or when producers that are not entitled to use the Geographical Indication do so on their products or in their promotion campaigns.
•   External infringement occurs in the form of usurpation, misleading the consumer, misleading advertising, misuse of reputation or hijacking reputation, counterfeiting and other different types of fraud.

Actions against infringement

•   Establish a geographical scope of action based on where the infringement is taking place
•   Establish and strengthen the legal competence within the group of GI producers
•   Producers must integrate into their business model a system for monitoring cases of fraud and infringement
•   Communicate to relevant stakeholders, including consumers, about the infringement to alert them so they may take appropriate action
•   Depending on the infringement, the producer group must decide contentious or non-contentious actions they will take (e.g. warning letters or legal actions).

Partnerships for action against infringement

Implementing a GI protection strategy for OLPs, requires some partnerships with other important stakeholders, such as:

•   Frauds or consumer protection organisations/institutions
•   Customs, relevant government ministries (e.g. Agriculture, Commerce, Industry, Culture)
•   GI Registrar or intellectual property office can be useful and can help in protection strategies
•   Legal professionals where necessary
•   Consumer protection associations
•   Embassies – in cases where there may be infringement outside the country
•   The media (print and audio-visual) can also help in promoting the GI protection activities
•   Other associations like GI protection associations, commodity associations, IP Lawyers Association, Chamber of Commerce, etc.

Learning exercises

Scenario 1.1:

In this case we have one photograph showing champagne packaged in typical champagne bottles.

Champagne is a sparkling wine originating from a specific region in France and which is protected by the GI name Champagne.

In the other photograph are sparkling wine products originating from Italy but using the similar type of bottle and using the name Champagne.

Scenario 1.2:

This case refers to parmesan produced in Australia.

The logo has some references, indicating that is authentic Parmesan cheese.

Scenario 1.3:

In this case you have two packages of champagne biscuits, one product comes from Argentina and other places in South America while the another is from France.

Scenario 1.4:

In this case, we have a Blue Mountain Style iced coffee product, coming from Korea.

Scenario 1.5:

In this case, we have a product called Parmazano coming from the United States.

Scenario 2.1:

In this photograph there are two types of products. The first product is chocolate including Piment d’Espelette. The second product is a package of basmati rice.

Scenario 2.2:

In this case there is the example of products with packaging with text and images indicating they may be Colombian coffee products. Consumers are confused as to whether these products are authentic products branded under GI Café de Colombia.