22/10/2018 – The new U.S.-Mexico-Canada Agreement (USMCA): oriGIn analysis

  • First of all, Section E defines the opposition phase that the US, Mexico and Canada have to provide for interested parties before a GI is recognized in their territory, either through the national administrative procedures or an international treaty. This is what happens normally in the large majority of jurisdictions.
  • Moreover, when mentioning the grounds of denial of GI protection, which can be invoked by interested persons in the context of the opposition phase (Article 20.E.3), genericity (as well indications identical with the customary name of a grape variety) are mentioned. Very importantly, again in line with international law, genericity (or indications identical with the customary name of a grape variety) have to be evaluated with respect to the jurisdiction where protection is sought. In other words, the USMCA confirms that the alleged genericity in the USA cannot be invoked to refuse the protection of a GI in Canada and in Mexico.
  • Finally, the agreements conduced or agreed in principle prior to 30 September 2018 (including the EU-Mexico free trade agreement, agreed in principle on 21 April 2018) will not be affected by the USMCA.

Having said that, the USMCA raised two problematic issues: On the one hand, Article 20.E.4 (Guidelines for Determining Whether a Term is the Term Customary in the Common Language), which will guide the 3 countries in assessing the genericity of a given name, provides a reference (e) to a product bearing the GI name imported in significant quantities from a place other than the territory identified in the GI application. While a reference to import in “significant quantities” is made, this remains vague and might lead in the future to weaken the genericity threshold. On the other hand, while the large majority of terms listed in the letter signed by the USA and Mexico in the framework of the USMCA ( see doc 2) is not problematic, agreeing in principle on a list of terms used in commerce, for which protection cannot be sought, is negative from the GIs perspective. Under certain circumstance in fact their use – for instance in conjunction with symbols related to the culture of the country of origin of a given GI – might represent a clear evocation of the genuine GI.

  

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