CCFN submitted two sets of public comments to the EU in response to a proposed revision of its geographical indications (GIs) system and its 2022 EU Intellectual Property Office’s (EUIPO) Guidelines on trademark practice.

In the first set of comments, CCFN emphasized that the scope of protection for EU GIs “creates legal uncertainty” regarding the type of products or business activities that could be a breach of a GI holders’ rights. Additionally, CCFN addressed EU efforts to tie GIs to advancements in sustainability and animal welfare. CCFN argued that a GI regime is not the appropriate venue to address these issues and risks leading to additional direct or indirect restrictions on the use of a new range of terms that could be placed on producers outside the EU. CCFN also went on to point out that the European Commission’s priority should be to eliminate the arbitrary nature of EU GI decisions. The solution that CCFN recommended to solve this issue was to establish a single, independent IP Agency that would manage GI registrations and objectively decide on the oppositions and cancellations filed. With a transparent, truly independent body, the EU could avoid the concession of abusive or unlawful GI-related rights.

In separate detailed comments on the EU trademark guidelines proposal, CCFN emphasized that in the EU’s consideration of any trademark application it must ensure that the name is not “descriptive, generic, or of common use term.” CCFN comments on the proposal’s specific provisions focused on the need for the EU to use a consistent, transparent, and fair process that allows for third party input and the consideration of objective references (e.g., Codex Alimentarius, newspapers, trade, etc.). In addition, CCFN raised concerns about the lack of clarity and broadness of some of the guidelines while others were overly restrictive, all of which could be abused to deny or limit the rights of common name users. Concerns were also raised about how translations of GI names would be treated with CCFN stating that translations should be considered separately as to consumer’s perception of their genericness. Comments also pointed out that trademarks and GIs with generic parts should be allowed to coexist. Finally, CCFN identified that there is an essential need for consistency in how GIs are created, including that all proposed GIs should go through EU’s due process and not be established outside of this process through trade agreements or treaties.

CCFN met virtually with U.N. World Intellectual Property Organization (WIPO) Director-General Daren Tang in January to welcome him in his new role and to discuss potential areas of collaboration, particularly on issues related to the use of commonly named products.

In a February follow-up letter to Director-General Tang, CCFN reiterated its offer to work with the WIPO to ensure that interested parties are provided balanced information on issues related to common names so they can make informed decisions in the best interests of their producers, consumers, trading partners, and other stakeholders.

CCFN also recommended that WIPO employ institutional and programmatic solutions to ensure that guidance on GIs and other intellectual property issues incorporate matters related to common names and the importance of a balanced and fair approach. That input yielded a step in the right direction with more balanced representation for common name users during WIPO’s flagship GI Symposium, held virtually this year.

Since 2019, CCFN has been recognized as an official WIPO Observer and has participated in relevant committee, general assembly, and other meetings representing the interests of common name users. Earlier this year CCFN participated in the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) and the October WIPO General Assembly meetings. Participation in these meetings not only allows CCFN to be aware

of international developments in the GI and common name space but also provides an opportunity to remind various parties around the world of the intellectual property rights of common name users.

In September, CCFN’s Senior Director, Shawna Morris, spoke to over 300 participants of the WIPO’s bi-annual symposium on GIs about how GIs are impacting trade around the world. Her remarks called for respecting the rights of producers and consumers to use common food names, and specifically targeted actions by the EU, which restrict those rights. Highlighting that the misuse of GIs stamps out competition to the detriment of local industries, trading partners, and consumers, Morris called for stronger protections to address negative impacts.

She also highlighted avenues for common ground to register legitimate GIs and protect the rights of common name users. These include:

1. Requiring all GIs to submit to a thorough, local application process in each country;
2. Refusing to register GIs that are part of the public domain;
3. Having a local application process in each country that is consistent, methodical, transparent, and free from political and economic influence.

Two other speakers of note also participated in the symposium:

Hazel V J Moir, from the Australian National Universities’ Centre for European Studies, spoke on a panel regarding the Socio-Economic Implications of GIs. Dr. Moir work includes providing an independent analysis of the empirical evidence on the impact of GIs and policies related to trade treaties and GIs. During her presentation, Dr. Moir made the observation that, for the most part, there is not conclusive evidence that GIs are having a significant impact on socio-economic conditions (e.g., market size, net producer prosperity, regional prosperity). The primary reason for this is simply that the data is not being collected by the EU or others to allow for a rigorous and robust analysis of this issue.

In addition, Mr. John D. Rodriguez, from the USPTO’s Office of Policy and International Affairs (OPIA) also addressed the Symposium, touching on the challenges with respect to Geographical Indications and the Internet Domain Name System. Of particular concern to GI advocates is that the Uniform Dispute Resolution Policy (UDRP) of the Internet Cooperation for Assigned Names and Numbers (ICANN) offers a protection mechanism against “bad faith” registrations of trademarks as domain names, but the UDRP is not applicable to sui generis geographical indications. Mr. Rodriguez focused on the various tools currently available to address disputes in domain names and why further expansion is not warranted. He pointed out that it is premature to address the issues related to GI names as, unlike trademarks, there is not “across the board” agreement on what should be a GI, what rights GIs have, how they should be protected in their various forms and territories, and what would be considered “bad faith” (e.g., common name use).

At the 2021 World Intellectual Property Forum, CCFN consultant Juan Antonio Dorantes Sanchez discussed the issue of common name confiscating through the misuse of GIs with more than 1,500 attendees from 30 countries. The event provided CCFN with an opportunity to continue to communicate to global audiences the importance of sound GI policies that respect the rights of generic users.

After laying out the definition and uses of GIs, and noting they “have a territorial validity, in principle,” Dorantes Sanchez detailed the misuses of GIs and how countries can achieve a balance between protections for product names and allowing the use of commonly named products.

Among other suggestions, he said countries should ensure that:

• Procedures and decisions on protecting or recognizing GIs be exclusively handled by intellectual property (IP) authorities.
• Domestic procedures, not free trade agreements (FTAs) with automatic recognition of GIs be used to set protections. If GI protections are included in an FTA, countries should ensure that procedures for their recognition respect due process and transparency principles of IP laws or that decisions be based in IP reasoning and pre-examination by domestic authorities.
• Governments publish applications for GI recognitions before they are granted, allow a reasonable period for opposition, and provide final decisions in writing.
• Every term subject to recognition is assessed on its merits to receive protection as a GI in the territory where recognition is sought.
• Prior rights of users of common terms are enforced and respected by clearly defining grounds for opposition and the existence of common use or descriptive terms and following objective guidelines for determining that a term is generic.