#USMCA: The new U.S.-Mexico-Canada Agreement (USMCA) contains a chapter on GIs
On September 30, the United States, Mexico and Canada have concluded the United States-Mexico-Canada Agreement (USMCA), designed to replace the North American Free Trade Agreement (NAFTA). The USMCA will have to be ratified, which may not occur before early 2019.
Section E of the USMCA Intellectual Property (IP) Chapter covers GIs (see doc 1):
- 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.
#GenevaAct #WIPO #CôtedIvoire #EU: oriGIn pushes for accession to the Geneva Act of the Lisbon Agreement
On September 28, Côte d’Ivoire became the second country to join to the Geneva Act of the Lisbon Agreement. Earlier this year, Cambodia (in March) had acceded to the treaty and the EU (in July) had launched its internal procedures to do the same. The WIPO administered Lisbon Agreement for the Protection of Appellations of Origin and their International Registration was modernized in 2015 with the adoption of its Geneva Act on Appellations of Origin and Geographical Indications.
With the forthcoming accession of the EU and other countries, the Geneva Act will become attractive for several WIPO Member States, laying the foundations for an international GIs registry. Through the system in fact, protection for a given GI can be obtained in a large number of countries through a unique request addressed to the WIPO Secretariat by the public authorities of the GI country of origin or by the beneficiaries themselves.
oriGIn invites all its members (including the ones form the EU, because together with the Union joining the system, the accession of individual Member States is relevant) to write to their national competent authorities requesting to join the Geneva Act of the Lisbon Agreement. The main benefits to be highlighted are:
- The Geneva Act introduces GIs under the scope of application of the Lisbon System, previously limited to Appellations of Origin;
- It gives the possibility to intergovernmental organizations to become contracting parties;
- It provides flexibilities in terms of filing applications and fees, which accommodate a variety of legal systems;
- The establishment of an international GIs registry remains a priority for groups, for transparency, legal certainty and reduction of protection costs worldwide.
If you need additional information, please do not hesitate to contact us and/or consult our page devoted to the activities carried out by oriGIn at the WIPO level..
#Brexit: oriGIn initiative to preserve the existing level of GIs protection in the UK
The UK and the EU are negotiating an agreement dealing with the withdrawal of the UK from the EU (the Withdrawal Agreement). This agreement is currently in draft form: some provisions have not yet been agreed, including the ones dealing with GIs (Article 50(2) of the draft agreement). The EU wishes GIs to continue to enjoy the same level of protection in the UK after the expiry of the transition period (31 December 2020). However, the UK has not yet agreed on this. If an agreement is not found, then the UK will leave the EU on 29 March 2019 without a deal (“no-deal Brexit”).
In anticipation of a no-deal Brexit, the UK government has published a large number of guidance notices, including “Producing food products protected by a ‘geographical indication’ if there’s no Brexit deal”. While the UK will set up its own GI schemes “broadly mirroring the current EU regimes”, non-UK GIs will not automatically be given continued protection in the UK. EU groups would have to apply for UK GI status. This would be extremely negative for legal certainty, and is the reason why oriGIn has been quite active over the last months to push Brexit negotiators to preserve the existing level of GIs protection in the UK. See in particular Brexit: oriGIn pushes for legal certainty for GIs beneficiaries and consumers & Brexit negotiations: oriGIn EU renews its call for legal certainty for GIs
Moreover, in October, the UK government has launched the following two consultations regarding the proposed UK schemes:
- Consultation on establishing UK Geographical Indications (GI) schemes after Brexit (submission closing date 1 November 2018);
- Consultation on improved enforcement of the Protected Food Name Scheme (submission closing date 2 November 2018).