Enforcement of Geographical Indications by US customs officials is not part of the ACTA agreement on intellectual property rights enforcement. This was made clear by the EU’s trade commissioner Karel De Gucht when he appeared before the International Trade Committee INTA in the European Parliament yesterday.
In Europe, you are only allowed to market a sparkling wine as ”champagne” if it actually comes from the Champagne district in France. This is because the word ”champagne” is a Geographical Indication, or GI. Other examples are Parma ham, which may only be called that if it is produced in Parma, and Feta cheese, which may only be called that if it is produced in Greece. Geographical Indications are similar to trademarks (in particular, certification marks), but they constitute an intellectual property right of their own.
The protection of GIs has been a controversial subject in the ACTA negotiations, since some countries involved in the negotiations, in particular the US, do not protect geographical indications. European producers of Champagne, Parma ham etc. would have wanted the ACTA agreement to cover geographical indications as well, in addition to regular trademarks.
The US has been opposed to this all along, but there have still been rumors and statements suggesting that geographical indications would be part of the ACTA agreement anyway.
To bring some clarity on the issue I took the opportunity to ask the Commissioner when he appeared before the committee in the European Parliament yesterday. You can watch the recording from the committee meeting here (the questioning of the Commissioner begins at 17:14, and my question starts at time code 18:13:30).
My question was:
Q: I have one question on Geographical Indications in ACTA. You said that there has been an absolute refusal by the US to add geographical indications, and I can understand that. Indeed, this is borne out in the Agreement itself, if we look at paragraph 1.3.2, where it says:
This Agreement does not create any obligation on a Party to apply measures where a right in intellectual property is not protected under the laws and regulations of that Party.
Of course, as we all know, geographical indications are not protected in the US. So that seems clear, geographical indications seem to be out of it.
But then you said that there has been a ”good result” [relating to GIs], and there have been other reports suggesting that geographical indications where in fact in, although they appear not to be. Could you please clarify?
Commissioner Karel De Gucht: ACTA is not a treaty on changing substantive law, so ACTA does not change the substantive law on geographical indications in either contractual Party. ACTA cannot change the law on geographical indications in the United States.
What ACTA aims at is the enforcement of intellectual property rights, and there you have the equal treatment of all intellectual property rights, GIs included. This was clearly refused in the beginning, but now it’s part of it.
This also means that the border enforcement can take place only in those countries where GIs are recognized. That is what is in the ACTA agreement, and that is what ACTA is about: the enforcement of substantive law. When there is no substantive law, there can be no border enforcement.
In fact, in practice this concerns especially Singapore, where you have the GIs protected, where you have a national register, and where normally you can now have enforcement at the border. Probably you will have to distinguish between end users and products in transit. That is what it is about.
What we have been trying to do as the European Commission is to gain recognition for GIs, but that is not an easy task, because a lot of countries do not recognize GIs, and that cannot happen through ACTA.
So, to summarize: As the ACTA agreement now stands, there is nothing in it that obliges the US to assist European customs authorities in the enforcement of geographical indications. Even if US customs officials come across containers of Californian Champagne, or Parma ham made in Texas, and they can see that the containers are destined for Europe, they are under no obligation to even notify their European counterparts, or react in any other way.
The ACTA agreement in its current form includes enforcement of trademark rights by all contracting parties, but it does not offer the same level of protection to the European geographical indications. I am not quite sure why the Commission, which is supposed to be looking after European interests when negotiating, has agreed to this US demand.
I am, however, very grateful to the Commissioner for this clarification.