Enhancing the protection of Geographical Indications in Latin America

Lesly Nowak
IP expert at Latin America IPR SME Helpdesk

Spanish producers of “Turrón de Alicante” or “Sobrasada de Mallorca” fear no more! Producers of products protected under Geographical Indication in the European Union are getting closer and closer to have the protection of these Geographical Indications extended to Brazilian territory.

But what is a Geographical Indication? How can they benefit your business?

Geographical indications (GIs) are a specific Industrial Property Rights (IPRs) protecting products originating in a given geographical area whose quality or characteristics are due to a particular geographical environment (with its inherent natural and human factors) and all or part of the production steps taking place in the defined geographical area.

GIs involve regulating the already existing methods of production and traditions associated with the protected product so that only those companies producing or marketing products in compliance with the regulated standards can use the GI to distinguish their products. Unlike other categories of IPR, such as Patents (new inventions), Trademarks (new brand names) or Designs (new aesthetical characteristics), GIs do not require innovation. Instead, they tend to protect tradition (existing goods, existing methods of production and existing names of those goods) and are owned only in a collective manner.

GIs are a key tool for groups of SMEs producing local agri-food products in a defined geographical area. Indeed, consumer associate agri-foods with their place of origin and a certain guarantee of quality. In addition, their collective ownership and management (which fits with the nature of the rural and agricultural economy), the lack of innovation required and their commercial attractiveness make GIs one of the most suitable IP rights for agri-food SMEs.

In general, to register a GI you have to go through the following steps*:

1) Identify the specificity of the product, which may derive from its quality, characteristics or reputation.

2) Define the place, territory or region within which the product presents the specificity.

3) Identify the specific conditions of the geographical environment existing in the defined place, territory or region and make sure that the singularity of the product is essentially or exclusively due to those conditions.

4) Define and describe in detail the product and method of production.

5) Register the GI and enjoy the protection granted in the territory for which it has been registered.

GIs are still a sensitive subject. The first indicator is an international system of protection of GIs (Lisbon System). This system enables the applicant entity to obtain protection in several countries (as long as they are part of the Agreement) through a single application filed before the International Bureau. However, so far, this Agreement has had very limited success. In Latin America, only Cuba, Costa Rica, Nicaragua, Mexico and Peru are part of this system. As far as the EU is concern, only the Czech Republic, France, Hungary, Italy and Slovakia have ratified the Agreement.

Secondly, GI owners might have to deal with the fact that Trademarks consisting of or containing the expression protected by the GI (in the country or territory of origin, e.g. the European Union) might have already been registered and/or used in connection with the same goods in third countries. Unfortunately, applicable Law in most Latin America grants priority to those earlier trademarks, unless you can prove that earlier trademarks are deceptive or were applied for in bad faith.

Thirdly, GIs protected in the EU and, consequently, identifying products originating from a specific area and complying with specific characteristics, may, however, be considered generic names in third countries (“Queso Parmesano” in Argentina, for example). In such cases, the offices of third country will deny registration of these Geographical Indications. In some cases, it is the own national legislations that assigned a generic nature to the. This is the case of the Argentinian Food Code, which assigns a generic nature to several GIs protected in the European Union, e.g.: “Turrón de Jijona”, “Turrón de Alicante”. In these cases, registration of the GI will only be possible if it is preceded by negotiations between both parties’ Governments aimed at the mutual recognition of GIs and the abolition of that regulation.

Finally, whereas producers in the EU can benefit from a single registration procedure (with unitary effects in all Member States), recognition of GIs in Latin American countries, in most cases, requires a separate procedure before each national competent authority

It is in this context that bilateral agreements, concluded between the EU and certain Latin American countries, establishing mutual recognition of GIs, become important. In particular, the EU has concluded agreements for mutual recognition of agricultural GIs with Chile, Colombia, Peru, Mexico, Costa Rica, El Salvador, Guatemala and Honduras. We can now add Brazil to this list.

Indeed, as part of the negotiations between Europe and Brazil, in the framework of the MERCOSUR-EU negotiations, the Instituto Nacional da Propiedade Industrial (INPI) published the much-awaited Normative Instruction 79/2017. Take into account that this is all the more important since Brazil is not a member of the Lisbon Agreement or the Madrid System (for GIs protected through collective trademarks or certification mark). This Instruction, from October 30, established the first basis of this publication. The list of GIs was finally published on November 7, including well-known Geographical Indications, such as “Oporto” for Portugal, the Dutch “Gouda”, the Italian “Grana Padano” or even the French “Roquefort”. The list is accessible through INPI Brazil’s website. Be aware, though, that third parties have now 30 days to submit oppositions to the registration of these GIs in Brazil and you can expect opposition.

Take into account that producers are already commercializing most of these products in Brazil. Which leads to the following questions: how will the agrifood related industries be affected? Might this then generate some friction between local producers and GI’s owners in the EU? What EU Gi’s will be next? How will these IPR going to be really enforced? The situation will certainly lead to interesting developments and we will keep you informed from the Latin America IPR SME Helpdesk.

Do you want to know how your business can benefit from Geographical Indications? Are you planning to commercialize your products in Latin America? Do you require further information on costs or proceedings before taking the decision? If so, do not hesitate to check the Latin America IPR SME Helpdesk’s Factsheets on Geographical Indications (general or on Chile).

The EU-funded initiative will provide EU SMEs (either current or potential) with first-line, business focused information on any Intellectual Property related issue in Latin America.

If you require a tailor made consultation, please do not hesitate to contact the Helpline. It is free, fast and confidential! Moreover, the IP experts will support you in English, Spanish, French, German or Portuguese.

*(Source: Latin America IPR SME Helpdesk)