Background - Definition - Importance - Issues - US Protection - Contact

Background

Recent developments at the World Trade Organization (WTO), in other international fora, and in many bilateral and multilateral free trade agreement negotiations make it important to be familiar with the term "geographical indications."

What Are Geographical Indications?

The 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement") came into force in 1995, and had effect in developed countries – including the United States – as of January 1, 1996. [Developing countries had until January 1, 2000 to comply with the TRIPS standards with respect to geographical indications and least developed countries have until January 1, 2006 in which to comply.] TRIPS sets forth standards to regulate international intellectual property protection and enforcement, and establishes international minimum standards for "geographical indications." Part II, Section 3 of TRIPS, in Articles 22-24, specifies the minimum standards of protection that WTO Members must provide for geographical indications.

Geographical indications are, for purposes of the TRIPS Agreement, a type of intellectual property ("IP"). "Geographical Indications," ("GIs") are defined, at Article 22(1) of the TRIPS Agreement, as "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin." (Examples of geographical indications from the United States include "FLORIDA" for oranges; "IDAHO" for potatoes; and "WASHINGTON STATE" for apples.)

The TRIPS Agreement requires that WTO Members provide the legal means for interested parties to prevent the use of a GI that:

(1) indicates or suggests that a good originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; or

(2) constitutes an act of unfair competition.

The TRIPS Agreement also provides for an "enhanced" minimum level of protection for GIs that identify wines and spirits. WTO Members are required to provide the legal means for interested parties to prevent the use of GIs even if they do not imply that the wines or spirits originate in a place other than the true place of origin. (In other words, for wines and spirits, even if the public would not be deceived by use of a particular GI, a GI may not be used if the wines or spirits do not originate in the place indicated by the GI.)

The TRIPS Agreement provides some exceptions to these requirements. For instance, TRIPS does not require that a WTO Member extend protection to a GI if that GI is the "generic" name for the goods in the Member. As an example, in the United States the word "CHABLIS" is often used to refer to any sort of white wine. Since "CHABLIS" is a generic term in the United States, the United States can continue to permit use of word "CHABLIS" as a synonym for "white wine." (The word "champagne" is another prominent example of a generic term, which in the United States means any light-colored wine with bubbles.)

Another exception to the protection afforded GIs arises in situations where a trademark already exists. Where a trademark has been applied for or registered in good faith, or where the rights to the trademark have been acquired through actual use in good faith, either (1) before the date of application of the TRIPS Agreement for a particular WTO member, or (2) before the GI was protected in its country of origin, the trademark maintains its legal presumption of superiority, based on the principle of "first-in-time, first-in-right."

Why Are Geographical Indications Important?

Geographical indications are valuable to producers from particular regions for the same reasons that trademarks are valuable. First, they are source-identifiers--they identify goods as originating in a particular territory, or a region or locality in that territory. Geographical indications are also indicators of quality--they let consumers know that the goods come from an area where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographic origin. In addition, GIs are business interests--GIs exist solely to promote the goods of a particular area. Finally, for purpose of the TRIPS Agreement, GIs are intellectual property, eligible for relief from acts of infringement and/or unfair competition.

Geographical indications are used to indicate the regional origin of particular goods, whether they are agricultural products or manufactured goods - provided that those goods derive their particular characteristics from their geographic origin. Any producer who meets the standards set by the GI owner can use a GI. In the United States, the owner of a GI can be any legal entity—be it a government, an association of producers, or even an individual.

The TRIPS definition highlights the source-indicating capacity of the indication. Not every indication can rise to the level of a GI. There must be a link between some characteristic of the good and the particular region where it was produced. That link must inform consumers of some important characteristic of the product which is material in their decision to purchase the good. For example, soil from a particular area might help produce a distinctive-tasting tomato, while goats raised on grass grown in volcanic soil from a particular region in the Himalayas could produce a particular type of fiber for clothing, or silicon crystals artificially created in a highly controlled environment in the Silicon Valley region of California, for use in semi-conductors, might be considered superior due to the knowledge and craftsmanship of the information technology specialists working there.

Why Are Geographical Indications Suddenly an Issue?

WTO Members and their nationals are increasingly recognizing that geographical indications, like trademarks, are valuable as marketing tools in the global economy. Furthermore, intellectual property owners are finding that protecting IP is no longer just a domestic endeavor.

What Protection Does the United States Offer for Geographical Indications?

The United States offers robust protection for geographical indications, generally through registration as a certification mark (a type of trademark). Examples of geographical indications protected as certification marks in the United States include: U.S. Registration No. 571,798 (‘ROQUEFORT" for cheese - France); U.S. Registration No. 2,685,923 ("DARJEELING" for tea - India); U.S. Registration No. 2,014,628 ("PARMA HAM" for ham products - Italy); U.S. Registration No. 1,570,455 ("SWISS" for chocolate - Switzerland); and U.S. Registration No. 1,959,589 ("STILTON" for cheese – United Kingdom). Information regarding these and all other U.S. trademark registrations is available from the United States Patent and Trademark Office’s (USPTO) Internet website througth the Trademark Application Information Retrieval system.

The United States provides protection for geographical indications, whether of domestic or foreign origin. For example, "ROQUEFORT," "STILTON," and "COGNAC," are European Community geographical indications protected in the United States as certification marks while "DARJEELING" is a geographical indication from India.

In addition, the United States protects geographical indications that are not registered. For example, the Trademark Trial and Appeal Board (an administrative appeal body within the USPTO) recently held that "COGNAC" is protected as a common-law (unregistered) certification mark in the United States. Institut National Des Appellations v. Brown-Forman Corp., 47 USPQ2d 1875, (TTAB 1998)("Cognac" is a valid common law regional certification mark, rather than a generic term, since purchasers in the United States primarily understand the "Cognac" designation to refer to brandy originating in the Cognac region of France, and not to brandy produced elsewhere, and since opposers control and limit use of the designation which meets certain standards of regional origin.)

For further questions regarding geographical indications, please contact Attorney-Advisor Eleanor Meltzer at the United States. Patent and Trademark Office, Department of Commerce: eleanor.meltzer@uspto.gov or by telephone at: (703) 306-2960.

< Back to Global/International page << Geographical Indications

KEY: =online business system =fees =forms=help =laws/regulations =definition (glossary)

Is there a question about what the USPTO can or cannot do that you cannot find an answer for? Send questions about USPTO programs and services to the USPTO Contact Center (UCC). You can suggest USPTO webpages or material you would like featured on this section by E-mail to the webmaster@uspto.gov. While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website.