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EU Geographical Indications and Intangible Cultural Heritage

Abstract

Misappropriation of intangible cultural expressions occurs in countries other than their state of origin and is therefore of a transnational nature. In 2003 the UNESCO Convention for the Safeguarding of the Intangible Cultural Heritage was adopted to safeguard intangible cultural heritage (ICH) at the domestic and international level. However, this Convention lacks rules on transnational misappropriation. To safeguard ICH across borders, the States Parties adopt intellectual property rights (IPRs) of a collective nature, in particular geographical indications (GIs). However, registration of GIs in the country of origin of the ICH cannot safeguard it across the globe. Indeed, GIs must not only be registered in their country of origin, but also in other jurisdictions. Hence, certain States Parties register GIs in their respective territories, as well as in other countries. In particular, EU GIs are registered by non-EU Member States. However, multi-state registrations of GIs still cannot safeguard ICH transnationally, since the parallel GIs must currently be enforced in each and every country of registration, even in the case of EU GIs. In fact, the EU Quality Schemes Regulation does not establish a system of cross-border enforcement of GIs and must be integrated in the EU private international law rules of the Brussels system. This system applies an exclusive jurisdiction rule to transnational disputes on IPRs, however, which implies multiple parallel proceedings, with the risk of conflicting judgments, considerable litigation costs and inequalities between parties, particularly when IPR holders are the ICH bearers, and are therefore communities, groups or individuals. Yet, unlike transnational disputes concerning IPRs, those regarding GIs do not fall under the exclusive jurisdiction rule of the Brussels system. Thus, this system allows for their consolidation before a single competent court. This consolidation would be in line with recent international academic proposals, among them the International Law Association Committee on Intellectual Property and Private International Law.

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Notes

  1. 1.

    Ubertazzi (2010), p. 69 et seq.

  2. 2.

    On the Convention, see Blake (2006); Sola (2008), p. 487 et seq.; Srinivas (2008), p. 529 et seq.; Zagato (2008), p. 27 et seq.; Kono and Wrbka (2010); Ubertazzi (2011), p. 777 et seq.; Francioni (2011), p. 9 et seq.; Francioni (2012), p. 719 et seq.; Scovazzi et al. (2012); Lixinski (2013).

  3. 3.

    See Scovazzi (2011). For an anthropological perspective, see Bortolotto (2008), p. 7 et seq.

  4. 4.

    Ubertazzi (2012a), passim.

  5. 5.

    Art. 29.

  6. 6.

    Arts. 16, 17 and 18: the Representative List of the Intangible Cultural Heritage of Humanity, the List of Intangible Cultural Heritage in Need of Urgent Safeguarding and the Register of Best Safeguarding Practices.

  7. 7.

    Art. 19 et seq.

  8. 8.

    Arts. 11, lit. (a) and 15.

  9. 9.

    Arts. 1, lit. (b) and 13, lit. (d).(ii).

  10. 10.

    See Arts. 11–12.

  11. 11.

    See Art. 13.

  12. 12.

    The Convention preamble states that it is “the universal will and the common concern to safeguard the intangible cultural heritage of humanity”; Arts. 1, 5, and 13 encourage States Parties to jointly submit multinational nominations for inscription on the two Lists provided by the 2003 Convention, and these nominations are treated in a more favourable way than national nominations; Art. 17.3 states that “in cases of extreme urgency – the objective criteria of which shall be approved by the General Assembly upon the proposal of the Committee – the Committee may inscribe an item of the heritage concerned on the List mentioned in para. 1, in consultation with the State Party concerned” (Art. 13). Yet, the Convention emphasises the strict link between the ICH and its territorial state. Art. 2 defines ICH as including the “cultural spaces associated” with its expressions and practices; Art. 11: prescribes that “each State Party shall: (a) take the necessary measures to ensure the safeguarding of the intangible cultural heritage present in its territory”; Art. 12 provides that each State Party shall draw up inventories related to the ICH present in its territory; Art. 13 establishes that each State Party shall adopt specific measures to ensure the safeguarding of the ICH present in its territory; Art. 23, para. 1 outlines that “each State Party may submit to the Committee a request for international assistance for the safeguarding of the intangible cultural heritage present in its territory”.

  13. 13.

    See Ubertazzi (2010), p. 69 et seq.; Ubertazzi (2013), p. 299 et seq.

  14. 14.

    See Ubertazzi (2012c), p. 469 et seq.; Di Blase (2007), p. 511 et seq.; Zagato (2008), p. 60; von Lewinski (2008), passim; Kono (2009b), passim; Hilty (2009), p. 833 et seq.; Peukert (2011), para. 10; Scovazzi (2011), p. 311.

  15. 15.

    The Protocol was adopted by the Conference of the States Parties to the Convention on biodiversity during its tenth anniversary on 29 October 2010, in Nagoya, Japan. The Protocol entered into force on 12 October 2014. Signatures so far: 92. EU ratification occurred on 16 May 2014. See the text of the Protocol and the state of signatures and ratifications in http://www.cbd.int/abs/. See Kono and Wrbka (2010), p. 205.

  16. 16.

    See Art. 3 of the Convention.

  17. 17.

    See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, Tenth session, Windhoek, Namibia, 30 November to 4 December 2015, Item 14.a of the Provisional Agenda: Draft amendments to the Operational Directives on safeguarding intangible cultural heritage and sustainable development, para. 173. See also Expert meeting on safeguarding intangible cultural heritage and sustainable development at the national level, Istanbul, Turkey, 29 September to 1 October 2014; Draft Operational Directives on “Safeguarding intangible cultural heritage and sustainable development at the national level”, para 3. See the current version of the Operational Directives for the implementation of the 2003 Convention, as amended during the last General Assembly of the States Parties to the Convention (6.GA, 2016), paras. 104 and 173.

  18. 18.

    See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, Tenth session, Windhoek, Namibia, 30 November to 4 December 2015, Item 14.a of the Provisional Agenda: Draft amendments to the Operational Directives on safeguarding intangible cultural heritage and sustainable development, para. 173.

  19. 19.

    Ibid. See also Operational Directives (2016), paras. 116 and 117.

  20. 20.

    The Khmer court supported the Royal Ballet of Cambodia for over 1000 years, remunerating the dancers and providing them with a space to train in the palace.

  21. 21.

    UNESCO Living Human Treasures systems encourage states to establish a national system to introduce these forms of remuneration. Art. 2.3 places transmission among the safeguarding measures aimed at ensuring viability of this heritage.

  22. 22.

    While ICH consists in the first place of knowledge, skills and practices rather than products, the sale of the resulting products and services has often supported the continued practice and transmission thereof.

  23. 23.

    See Operational Directives (2016), paras. 116 and 117. See Calboli (2014b), p. 456 et seq.

  24. 24.

    See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, Fifth session, Nairobi, Kenya, 15–19 November 2010, Decision 5.COM 6.41.

  25. 25.

    See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, Seventh session, Paris, France, 3–7 December 2012, 7.COM.

  26. 26.

    See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, Decision 5.COM 6.1 cit.

  27. 27.

    See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, Decision 5.COM CONF.202 and Operational Directives (2016), paras. 140–143. See Ubertazzi (2011), p. 777 et seq.

  28. 28.

    Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, Tenth session, Windhoek, Namibia, 30 November to 4 December 2015, Decision 10.COM 10.b.28.

  29. 29.

    See Operational Directives (2016), paras. 116 and 117.

  30. 30.

    Convention for the Protection of Industrial Property, Paris Industrial Property Convention, adopted 1883 and revised Stockholm, 1967, 828 U.N.T.S. p. 305, Art. 6.

  31. 31.

    See Operational Directives (2016), paras. 145–150; Ubertazzi (2011), p. 777 et seq.

  32. 32.

    See Kono (2009a), p. 289 et seq.; Coombe and Aylwin (2011), p. 2027; Coombe and Turcotte (2012), p. 300; Coombe and Aylwin (2014), p. 778.

  33. 33.

    Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs in Official Journal of the European Union, L 343, Vol. 55, 14 December 2012.

  34. 34.

    Ubertazzi (2014b), pp. 916–922.

  35. 35.

    Regulation (EU) No. 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No. 207/2009 on the Community trade mark and Commission Regulation (EC) No. 2868/95 implementing Council Regulation (EC) No. 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No. 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) [EU Trademark Regulation], in Official Journal of the European Union, L 341/21, Vol. 58, 24 December 2015.

  36. 36.

    Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs, amended by Council Regulation (EC) No. 1891/2006 of 18 December 2006 amending Regulation 386/14 in Official Journal of the European Communities L 3/1, 5 January 2002.

  37. 37.

    Council Regulation (EC) No. 2100/94 of 27 July 1994 on the Community Plant Variety, in Official Journal of the European Communities, L 227/1, Vol. 37, 1 November 1994.

  38. 38.

    See Ubertazzi (2014a), pp. 1–8.

  39. 39.

    Blakeney (2014a), pp. 72–73; German Patent and Trademark Office (2016) Information on the Protection of geographical indications and designations of origin for agricultural products and foodstuffs pursuant to Council Regulation (EU) No. 1151/2012, available at: https://www.dpma.de/docs/service/formulare_eng/marke_eng/w7729_1.pdf (accessed 2 September 2015).

  40. 40.

    QS Regulation, Arts. 6.4 and 14.

  41. 41.

    QS Regulation, Art. 13.1.

  42. 42.

    QS Regulation, Art 13.1. See Community Trademark Regulation, Art 9.1, lit. c).

  43. 43.

    Contaldi (2009), pp. 27–35. For Geographical Indication Protection in the United States, see United States Patent and Trademark Office, https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/globalip/pdf/gi_system.pdf (accessed 18 October 2016). For Australia, see Australian Government – IP Australia Website “Geographical Indications”, https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/types-trade-marks/certification-trade-mark/geographical and: http://manuals.ipaustralia.gov.au/trademarks/Part_35_Certification_Trade_Marks/35.2_Certification_trade_marks_and_geographical_indications_(GIs).htm (accessed 18 October 2016).

  44. 44.

    Gangjee (2012), p. 91. See also Sironi et al. (2009), pp. 208–241; Calboli (2014a), pp. 58, 59 and 66; Ubertazzi and Muñiz Espada (2009).

  45. 45.

    Ibid. In particular, the possibility of registering EU certification trademarks was introduced by the amendments, Arts. 74a–74k, laid out in the EU Trade Mark Regulation as a complement to the existing provisions on EU collective marks, which will apply from October 2017.

  46. 46.

    Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods of 14 April 1891, Contracting Parties: 50 states, available at: http://www.wipo.int/treaties/en/text.jsp?file_id=286779 (accessed 10 September 2016).

  47. 47.

    Paris Convention for the Protection of Industrial Property of 20 March 1883, Contracting Parties: 176 states, available at: http://www.wipo.int/treaties/en/text.jsp?file_id=288514#P220_36426 (accessed 2 May 2016).

  48. 48.

    See for instance the Additional Act of Stockholm of 14 July 1967 for Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Contracting Parties: 29 states, available at: http://www.wipo.int/wipolex/en/details.jsp?id=12877 (accessed 4 September 2015).

  49. 49.

    International Convention on the Use of Appellations of Origin and Denominations of Cheeses of 1 June 1951, signed by: Austria, France, Italy, Netherlands, and Switzerland, available at: https://www.admin.ch/opc/fr/classified-compilation/19510137/index.html (French, Italian, German) (accessed 4 September 2015).

  50. 50.

    Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 31 October 1958, Contracting Parties: 28 states, available at: http://www.wipo.int/lisbon/en/legal_texts/lisbon_agreement.html (accessed 2 October 2016).

  51. 51.

    Garcíca Castríllón (2009), p. 65; Peukert (2012), para. 5; Ubertazzi (2012a), p. 201 et seq.; Falconi (2013).

  52. 52.

    Agreement on Trade-Related Aspects of Intellectual Property Rights, Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization in Marrakesh, Morocco of 15 April 1994, 1869/UNTS/299 (TRIPs Agreement). See also Contaldi (2009); Lupone (2009), pp. 36–42; Blakeney (2014b), p. 50 et seq.; Calboli (2014a), pp. 57–60; Blakeney (2014a), pp. 57–60.

  53. 53.

    Thus, living with TRIPs today means a coexistence of trademark-based systems (e.g. certification marks), sui generis systems (for GIs) (e.g. the EU system), mixed systems and the application of laws on commercial behaviour (unfair competition, passing off). See Calboli (2014a), p. 67.

  54. 54.

    As of 2016, these bilateral wine agreements between the European Union and third countries number 20, notably with Australia (1994), Mexico (1997), South Africa (1999), Chile (2002), Canada (2003) and the USA (2006).

  55. 55.

    EU–Switzerland Agreement on the Protection of Designations of Origin and Geographical Indications for Agricultural Products and Foodstuffs of 19 January 2011 signed in Strasbourg, OJ L 297.

  56. 56.

    Agreement between the European Union and Georgia on Protection of Geographical Indications of Agricultural Products and Foodstuffs of 14 July 2011 signed in Brussels, OJ L 93.

  57. 57.

    Economic Partnership Agreement between the CARIFORUM States, of the one part, and the European Community and its Member States, of the other part of 15 October 2008 signed in Bridgetown, Barbados, OJ L 289.

  58. 58.

    Stabilisation and Association Agreement Between the European Communities and their Member States, of the one part, and the Republic Of Albania, of the other part of 12 June 2006 signed in Luxembourg, OJ L 107; Stabilisation and Association Agreement between the European Communities and their Members States, of the one part, and the Republic of Serbia, of the other part of 29 April 2008 signed in Luxembourg, OJ L 278; EU–Bosnia Herzegovina Stabilisation and Association Agreement of 16 June 2008 signed in Luxembourg, OJ L 164 (SAA Agreement).

  59. 59.

    Free Trade Agreement between the European Union and its Member States, of the one part, and the Republic of Korea, of the other part of 6 October 2010 signed in Brussels, OJ L 127. Free Trade Agreement between the Swiss Confederation and the People’s Republic of China of 6 July 2013 signed in Beijing, China.

  60. 60.

    See European Commission 2016, “Agriculture and Geographical Indications (GIs) in TTIP – A Guide to the EU’s Proposal” of 21 March 2016, pp. 8–10, available at: http://trade.ec.europa.eu/doclib/docs/2016/march/tradoc_154372.pdf (accessed 2 September 2016).

  61. 61.

    The Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, adopted on 20 May 2015.

  62. 62.

    Becoming a State Party to the Lisbon Agreement then becomes more attractive. In addition, the Geneva Act raises the level of protection of GIs and creates the possibility for international organisations, including the EU, to become full members. See Gervais (2015).

  63. 63.

    For a proposition to restrict GI protection and permit the use of GIs only on products entirely originating from the GI-denominated region, see Calboli (2014a), p. 59.

  64. 64.

    Gangjee (2012), p. 95.

  65. 65.

    According to the European Commission, “GIs are key to EU and developing countries’ cultural heritage, traditional methods of production and natural resources” and according to a European study into the multifunctional dimension of regional products, GIs have “a high heritage dimension”. The cultural heritage argument concerning GIs is also followed by a growing number of developing states. As of 2012, around 1065 agricultural and foodstuff GIs, some 1561 wine PDO/PGIs and 325 spirit GIs have been registered in the EU. Registered foodstuff names are mostly names of fruit, vegetables, cereals and cheese. The other main categories of products concerned are meat and meat products and oils, mostly olive oils. More than 80% of GIs are registered in six Member States: Italy, France, Spain, Greece, Portugal and Germany. A 2012 study for the Commission estimated the value of GI products in 2010 at €54.3 billion, of which half was due to wine. See Matthews (2014); Gangjee (2012), p. 90; Calboli (2014a), p. 24.

  66. 66.

    This distinction is governed by the list in Art. 53, para. 2 of the QS Regulation, whereby a major change is one that: (a) relates to the essential characteristics of the product; (b) alters the link between a given quality, the reputation or other characteristic of the product and the geographical origin of the product (referred to in Art. 5, para. 2, which concerns the requirements for geographical indications); (c) involves a change in the name or any part of the name of the product; (d) affects the defined geographical area; (e) represents an increase in restrictions on trade in the product or its raw materials. If there is a major change, the modified product specification must be assessed according to the processes outlined in Arts. 49 to 52. In effect, the modified specification must be re-assessed from the beginning. Art. 5, para. 2 sets out the requirements for something to be a “geographical indication”, namely a name which identifies a product: (a) originating in a specific place, region or country; (b) whose given quality, reputation or other characteristic is essentially attributable to its geographical origin; (c) at least one of the production steps of which take place in the defined geographical area. For further details of what is required, Art. 7 sets out the necessary elements of the product specification.

  67. 67.

    Japan, for example, registered a GI for its territory for the ICH element “Washoku, traditional dietary cultures of the Japanese, notably for the celebration of New Year Washoku”, which was inscribed on the Representative List in 2013. See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, 2013, Nomination File for Washoku, traditional dietary cultures of the Japanese, notably for the celebration of New Year, p. 11, available at: http://www.unesco.org/culture/ich/doc/download.php?versionID=20649 (accessed 18 October 2016).

  68. 68.

    See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, 2011, Nomination File for Weaving of Mosi, pp. 7–8, available at: http://unesco.org/culture/ich/doc/download.php?versionID=13427 (accessed 2 September 2016). Argentina registered a GI for its territory for its ICH element “The Randas of time, a safeguarding model of textile art at El Cercado”, named to be inscribed in 2016 on the Register of best safeguarding practices. See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, 2015, Nomination File for the Randas of time, a safeguarding model of textile art at El Cercado, pp. 5, 13, available at: http://unesco.org/culture/ich/doc/download.php?versionID=40552 (accessed 2 September 2016). Turkey registered a GI for its territory for its ICH element “Traditional Craftsmanship of Çini-making”, named to be inscribed in 2015 on the Representative List. See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, 2016, Nomination File for Traditional craftsmanship of Çini-making, p. 8, available at: http://unesco.org/culture/ich/doc/download.php?versionID=40366 (accessed 2 September 2016).

  69. 69.

    Trademark “Cremona Liuteria” No. 753373, Nice Classification: 15, 16, 41; date of registration 23 January 2001 (priority 29 September 2000). See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, 2012, Nomination File for Traditional violin craftsmanship in Cremona, pp. 8, 19, available at: http://unesco.org/culture/ich/doc/download.php?versionID=16813 (accessed 2 September 2016). A second example is that of Spain, Greece and Italy which registered an EU trademark for the ICH element “Mediterranean diet”, inscribed in 2013 on the Representative List. The “Mediterranean diet” involves “the set of skills, knowledge, rituals, symbols and traditions, ranging from the landscape to the table, which in the Mediterranean basin concerns the crops, harvesting, picking, fishing, animal husbandry, conservation, processing, cooking, and particularly sharing and consuming the cuisine” in Cyprus, Croatia, Spain, Greece, Italy, Morocco and Portugal. The EU trademark “We Are What We Eat MedDiet Mediterranean Diet”, also known as the “MedDiet Quality Label”, was registered in 2015 by several public entities of their respective registration states. Despite its registration as an individual trademark, in practice it serves a similar role to collective trademarks (for the sake of simplicity, hereinafter it will be referred to as a collective trademark). See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage, 2013, Nomination File for Mediterranean diet, p. 6, available at: http://unesco.org/culture/ich/doc/download.php?versionID=20926 (accessed 2 September 2016). The trademark is registered as an individual trademark by the following collective legal entities: from Italy UNIONCAMERE, the Centro Servizi Promozionali per le Imprese – Azienda Speciale della Camera di Commerci di Caligari and the Forum delle Camere di Commercio dell’Adriatico e dello Ionio; from Spain the Fundacion Dieta Mediterranea and AEMO; from Greece the cultural foundation The Routes of the Olive Tree and the Messinian Chamber of Commerce & Industry. The trademark at stake has the following details: “We are what we eat meddiet Mediterranean diet”, No. 014442396, Nice Classification: 35, 41, 43, registered on 28 December 2015, available at: http://www.wipo.int/branddb/en/showData.jsp?ID=EMTM.014442396 (accessed 2 September 2016). There are also countries that registered the trademark which are not among those that registered the ICH element on the Representative List: from Egypt the Confederation of Egyptian European Business Associations, from Tunisia INRAT, and from Lebanon the Chamber of Commerce, Industry and Agriculture of Beirut and Mount Lebanon. These countries are party to the “Mediterranean Sea Basin Programme” which “is part of the new European Neighbourhood Policy (ENP)” that “aims at reinforcing cooperation between the European Union (EU) and partner countries regions placed along the shores of the Mediterranean Sea with regards to the promotion and certification of foods, practices and restaurants through the ‘Med Diet Quality Label’”, see MedDiet Partnership, last updated 18 November 2015, available at: http://med-diet.eu/P42A0C467S872/Partnership.htm (accessed 4 September 2016).

  70. 70.

    See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage (2014), Nomination File for Argan, practices and know-how concerning the argan tree, pp. 8–9, available at: http://unesco.org/culture/ich/doc/download.php?versionID=30323 (accessed 5 September 2016). Another example is that of Greece, which registered an EU designation of origin for its ICH element “Know-how of cultivating mastic on the island of Chios”, inscribed in 2014 on the Representative List. The ICH concerns the traditional cultivation of aromatic resin mastiha, extracted from the shrub pistacia lentiscus. An application for a protected designation of origin (PDO) for Masticha Chiou (mastic resin) and for Mastichelaio Chiou (mastic oil, extracted from the resin) was made in 1997 by the Union of Khios Mastic Producers along with the responsible department of Greece. The European Commission registered the designation of origin at stake on 24 January 1997. See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage (2014), Nomination File for Know-how of cultivating mastic on the island of Chios, pp. 2, 4, available at: http://unesco.org/culture/ich/doc/download.php?versionID=30342 (accessed 5 September 2016). The EU designation of origin at stake has the following details: “Μαστίχα Χίου”, class 2.5, registered on 24 January 1997, dossier number EL/PDO/0017/1558. A final example is that of Slovenia, which registered an EU GI for its ICH element “Traditional production of the Kranjska klobasa” (Carniolan sausage), named to be inscribed in 2015 on the Representative List; however the nomination file was referred back and eventually withdrawn. The relevant GI was registered first in Slovenia by the non-profit association Kranjska klobasa Business Interest Association based on a domestic law of 2008. An application for a protected geographical indication (PGI) in the European Union for Kranjska klobasa was made in March 2009 by the Slovenian government. The European Commission registered Kranjska klobasa on 6 January 2015. See Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage (2015), Nomination File for Traditional production of the Kranjska klobasa, pp. 2, 4, 5, 9, 11, available at: http://unesco.org/culture/ich/doc/download.php?versionID=35526 (accessed 5 September 2016). The EU geographical indication at stake has the following details: “Kranjska klobasa”, class 1.2, dossier number SI/PGI/0005/00764, registered on 7 January 2015.

  71. 71.

    According to the Nomination File for Argan, p. 9: “[T]his indication requires that users of the ‘argan oil’ label respect specifications guaranteeing the quality of the product obtained in compliance with traditional manufacturing, production and marketing standards. Such a geographical indication gives argan women considerable added value in their work and encourages them to continue applying their traditional skills”.

  72. 72.

    A first group of cases involves the appropriation of Māori intangible cultural expressions: in Lego toys in Denmark (2001); in Philip Morris cigarettes in Israel (2005–2006); and in a television advertisement by Fiat in Italy (2006). A second group of cases involves the misappropriation of traditional songs by rock groups.

  73. 73.

    See list of trademarks at WIPO Global Brand Database, available at: http://www.wipo.int/branddb/en/?q={%22searches%22:[{%22te%22:%22tea%20board%20of%20india%22,%22fi%22:%22HOL%22}],%22filters%22:[{%22fi%22:%22STATUS%22,%22te%22:%22ACT%22,%22co%22:%22OR%22}]} (accessed 15 September 2016).

  74. 74.

    The Darjeeling district in the Indian State of West Bengal.

  75. 75.

    In particular to Japan, Russia, the U.S. and EU countries, such as France, Germany and the Netherlands.

  76. 76.

    As such or together with more specific wordings, such as the composite trade mark “Genuine Bavarian Beer & Device”.

  77. 77.

    See list of trademarks at WIPO Global Brand Database and DOOR Database (Database of Origin & Registration), available at: http://ec.europa.eu/agriculture/quality/door/registeredName.html?denominationId=121 (accessed 20 September 2016).

  78. 78.

    Bavarian breweries export significant quantities of their beer worldwide. For example, in 2000, they exported 2159 hectolitres to Australia and 1,095,189 hl to Europe. In 2002, in Europe, they exported 1,374,930 hl and 1,725,660 hl in 2004. A big portion of these European exports were to Italy: approximately 620,000 hl (57 per cent) in 2000; 809,000 hl (59 per cent) in 2002; and 895,000 hl (52 per cent) in 2004.

  79. 79.

    Srivastava (2005), p. 324 et seq.

  80. 80.

    Ibid.

  81. 81.

    Trademark Trial and Appeal Board, judgment of 12 January 2006, Tea Board of India v. the Republic of Tea, Inc., 80 USPQ2d p. 1881.

  82. 82.

    Knaak (2015), pp. 843–867.

  83. 83.

    Blakeney (2014a), p. 125.

  84. 84.

    Federal Court of Justice of Germany (BGH), judgment of 22 September 2011, Bayerisches Bier II, I ZR 69/04.

  85. 85.

    Higher Regional Court Munich (Oberlandesgericht – OLG), judgment of 25 October 2012, Bavaria Holland Beer II, 29 U 5084/03.

  86. 86.

    See Draheim and Piattelli (2012), and Börner (2013).

  87. 87.

    See Knaak (2015), p. 843.

  88. 88.

    Court of Appeal of Turin, judgment of 28 February 2011, Bavaria NV v. Bavaria Italia, No. 299/07.

  89. 89.

    Court of Justice, judgment of 8 September 2009, case C-478/07, Budĕjovický Budvar, národní podnik v. Rudolf Ammersin GmbH. See also Draheim and Piattelli (2012).

  90. 90.

    Italian Court of Cassation, judgment of 20 September 2012, Bayerischer Brauerbund v. Ufficio Italiano Brevetti e Marchi, No. 15958.

  91. 91.

    Supreme Court of Spain (STS), judgment of 3 June 2009, Verband Bayerischer Ausfuhrbrauereien v. Bavaria, N.V., No. 397/2009.

  92. 92.

    See Knaak (2015), p. 843.

  93. 93.

    Federal Court of Australia, judgment of 30 April 2009, Bavaria NV v. Bayerischer Brauerbund eV, No. 428.

  94. 94.

    In another example, Chocosuisse, Union des Fabricants Suisses de Chocolat, a cooperative society constituted in Bern, Switzerland, is responsible for protecting the worldwide reputation and goodwill of its members, over 18 Swiss-based chocolate manufacturers, all of which are located in Switzerland. Swiss-based chocolate manufacturers export significant quantities of chocolate worldwide. In 2014 they produced 183,738 tonnes of products varying from bars and small formats to confectionery and powder. Of these products 63 per cent (115,474 tonnes) were exported to 152 countries. In particular, in Europe, they exported 62 per cent of the total amount of exports, see chocosuisse.ch/chocosuisse/en/documentation/facts_figures.html (accessed 2 September 2015). Chocosuisse registered the collective trademarks “Switzerland” and “Swiss” in relation to chocolate in Europe. Although these indications are not registered as GIs, they are recognised as conveying a certain standard of quality and reputation of genuine Swiss chocolate. As a result, Chocosuisse has brought successful actions against the use of the indication: in the UK against Cadbury for its “Swiss Chalet” chocolate, and in Malaysia against Maestro Swiss for its “Maestro Swiss” brand name based on the Malaysian Geographical Indication Act of 2000. See “SWISS” Trademark No. 001484005, Nice Classification: 30, WIPO Global Brand Database, available at: http://www.wipo.int/branddb/en/showData.jsp?ID=EMTM.001483981, and “Switzerland” Trademark No. 001483981, Nice Classification: 30, WIPO Global Brand Database, available at: http://www.wipo.int/branddb/en/showData.jsp?ID=EMTM.001484005 (accessed 5 October 2016). In this case, country-by-country enforcement of the collective trademark “Swiss Chocolate” was carried out by Chocosuisse in the UK and Malaysia.

    (i) In the UK, Chocosuisse brought a passing-off action against Cadbury for its “Swiss Chalet” chocolate bar, featuring a picture of a snow-capped mountain and a Swiss-style chalet. The packet bore the word “Cadbury” in the familiar script and also the “glass and a half” logo. The action was successful: the Court of Appeal ordered Cadbury to be restrained from passing off non-Swiss chocolate with the name “Swiss Chalet”, which was taken by a significant section of the public in England to mean chocolate made in Switzerland. See Court of Appeal of England and Wales, judgment of 25 February 1999, Chocosuisse Union des Fabricants Suisses de Chocolat and others v. Cadbury Ltd., No. 826.

    (ii) In Malaysia, Chocosuisse brought an action against Maestro Swiss Chocolate, a Malaysian company, which marketed and manufactured a line of Vochelle chocolates bearing a “Maestro Swiss” house trademark. Chocosuisse objected to the words “Maestro Swiss” for potentially misleading the public that they were Swiss chocolates. Chocosuisse claimed extended passing off and breach of the Malaysian Geographical Indications Act. This action was successful: the Court of Appeal held that extended passing off was established since there was a likelihood of confusion of the public that the Maestro Swiss Chocolate came from Switzerland as the details of Malaysian origin were on the back of the packaging, which members of the buying public do not normally examine. However, the Court of Appeal held that, while “Maestro Swiss” was in conflict with the “Swiss Chocolate” GI, the Malaysian trademark pre-dated the Malaysian Geographical Indication Act, and therefore could not be found illegal according to this act. See Federal Court of Malaysia, judgment of 3 February 2016, Chocosuisse Union des Fabricants Suisses de Chocolat & Ors v. Maestro Swiss Chocolate Sdn Bhd & Ors, [2010] 3 MLJ p. 676.

  95. 95.

    QS Regulation, Art 13.3.

  96. 96.

    Regulation (EC) No. 864/2007 of 11 July 2007 on the Applicable Law to Non-Contractual Obligations (Rome II), Art. 8. See the ECJ in Budĕjovický Budvar, loc. cit., para. 79: the “mechanism” for protection of GIs lato sensu intended “is distinguished by the fact, derogating from the principle of territoriality, that the protection conferred is determined by the law of the Member State of origin and by factual circumstances and perceptions in that state. See also ECJ, judgment of 10 November 1992, case C-3/91, Exportur S.A. v. LOR SA and Confiserie du Tech, paras. 12, 13 and 38.

  97. 97.

    Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters in Lugano of 30 October 2007, OJ L 339/3 (Lugano Convention).

  98. 98.

    Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters of 27 September 1968, signed in Brussels (Brussels Convention), then Regulation (EC) No. 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters of 22 December 2000, signed in Brussels (Brussels I Regulation), and now Regulation (EU) No. 1215/2012 of the European Parliament and of the Council on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast) of 12 December 2012, signed in Brussels (Brussels I Regulation Recast), Art. 22.4.

  99. 99.

    See American Law Institute (2008).

  100. 100.

    See European Max Planck Group (2013).

  101. 101.

    See Basedow et al. (2010).

  102. 102.

    See Waseda University Global COE Project (2010), Commentary on Principles of Private International Law on Intellectual Property Rights, Joint Proposal Drafted by Members of the Private International Law Association of Korea and Japan, available at: http://win-cls.sakura.ne.jp/pdf/28/08.pdf (accessed 21 May 2015).

  103. 103.

    European Max Planck Group (2013), Art. 1:101, para. 3, lit. (a).

  104. 104.

    See Falconi (2013).

  105. 105.

    See Ubertazzi (2012b).

  106. 106.

    In the current provisional draft, the first guideline on “scope” emphasises that “1. These Guidelines apply to civil and commercial matters involving intellectual property rights which are connected to more than one country. 2. ‘Intellectual property right’ means […] geographical indication and similar rights”.

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Correspondence to Benedetta Ubertazzi.

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Benedetta Ubertazzi is a fellow of the Alexander von Humboldt Foundation; legal expert representing the Italian Ministry of Foreign Affairs in multinational negotiations at the UNESCO Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage since 2010; and member of the International Law Association Committee on Intellectual Property and Private International Law since its inception in 2010.

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Ubertazzi, B. EU Geographical Indications and Intangible Cultural Heritage. IIC 48, 562–587 (2017). https://doi.org/10.1007/s40319-017-0603-0

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Keywords

  • UNESCO
  • European Union
  • International Law Association
  • Intangible cultural heritage
  • Geographical indications