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.

ARLINGTON, VA – The Consortium for Common Food Names (CCFN), National Milk Producers Federation (NMPF) and U.S. Dairy Export Council (USDEC) commended Ambassador Katherine Tai and U.S. Trade Representative Office staff, as well as the U.S. Department of Agriculture and other administration partners, for reaffirming in its Special 301 Report the U.S. government’s commitment to tackling continued European Union (EU) misuse of legitimate geographical indications (GI) protections.

USTR’s Special 301 Report, an annual publication tallying global challenges pertaining to intellectual property issues, called out the EU’s policy of blocking fair competition through the pursuit of geographical indications restricting the use of common food and beverage terms, which erect barriers to trade in products relying on common food names. “As part of its trade agreement negotiations, the EU pressures trading partners to prevent all producers, other than in certain EU regions, from using certain product names, such as fontina, gorgonzola, parmesan, asiago, or feta. This is despite the fact that these terms are the common names for products produced in countries around the world.”

“USTR has accurately diagnosed the problem. Now the task before the U.S. is to take the necessary steps to effectively curb this scourge to U.S. food and agricultural producers,” said CCFN Executive Director Jaime Castaneda. “The EU’s GI policy is intentionally barring competition from a host of other suppliers that all simply seek a level playing field including small and medium-sized family-owned companies, farmer-owned cooperatives, producers in developing countries and other actors throughout the supply chain that bear the brunt of these harmful restrictions. The U.S. must build on past advances to pursue a more proactive and effective path to combating the misuse of GIs by establishing concrete market access protections for the use of widely used terms.”

“Last year over 170 members of Congress urged an expansion of the trade toolkit the U.S. deploys to deal with geographical indications that block the use of common food names,” said Jim Mulhern, President and CEO of the National Milk Producers Federation. “It’s time to put that into practice and secure affirmative protections for the key common terms on which U.S. cheesemakers and other food producers rely. We look forward to working closely with USTR to achieve those gains to keep doors around the world open to made-in-America products.”

“U.S. dairy farmers and processors are counting on the U.S. government to have their back and defend their rights to cultivate opportunities around the world,” said Krysta Harden, President and CEO of the U.S. Dairy Export Council. “Our industry produces great products here at home and then works hard to market them overseas. To be as successful as possible, however, they count on strong U.S. government support to head off and combat unfair trade barriers such as geographical indications that ban the use of generic cheese terms. We want to partner with USTR to help bring the right policy tools to bear to make headway on this thorny issue.”

CCFN filed extensive comments with USTR outlining GI-related developments, foreign governments’ roles in driving those policies and the impacts on U.S. farmers and food producers. NMPF and USDEC also submitted comments supporting CCFN’s global overview and the need for a more robust U.S. trade policy approach to tackling GI abuses.

ARLINGTON, VA – The Consortium for Common Food Names (CCFN) applauded the Office of the U.S. Trade Representative’s (USTR) prioritization of common name restrictions as a primary trade barrier in their 2021 National Trade Estimate (NTE) report released last week.

The comprehensive, 570-page document captures the broad range of nontariff barriers for U.S. goods and services exports around the world. In the agency’s press release, restrictions of common food terms was cited as a priority trade impediment that American producers face when looking to export their generically named foods and beverages. In the report, USTR notes, “[t]he United States remains highly troubled by the EU’s overbroad protection of geographical indications (GIs), which adversely impacts both protections of U.S. trademarks and market access for U.S. products that use common names in the EU and third country markets.”

“USTR’s recognition of GI misuse as a means of confiscating market share is an important step toward proactively addressing this problem,” said Jaime Castaneda, CCFN Executive Director. “We are encouraged that CCFN members’ persistent work alongside the U.S. government on this issue has elevated the concerns surrounding GI abuse from a relatively obscure issue just a decade ago to a priority for the agency. It is imperative that USTR and its interagency partners work to ensure common names are not further restricted by the European Union’s blatant attempts at monopolizing generic terms that consumers around the world have come to know and love.”

CCFN continues to work alongside USTR to build upon the precedent set in the recent U.S.-Mexico-Canada Agreement (USMCA) negotiations on the inclusion of a list of common cheese names to be protected from GI restrictions in perpetuity. Similar proactive measures are necessary to ensure that products with common names can continue to be sold around the world without unfair limitations.