The Protection of Geographical Indications Through FTAs and the Collision with Prior User Rights

Abstract

The EU’s extraterritoriality strategy of geographical indication (GI) protection through free trade agreements (FTAs) generates a conflict of rights between the cross-border protection of GIs and the prior user rights in the rest of the world. It constitutes a more specific attempt by the EU to obtain additional protection outside its territory for agricultural products. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provides for specific exceptions to GI exclusive rights. The exceptions enable the continuity of use of protected terms under certain conditions.

Although the different forms of protection are welcome to distinguish and add value to products, extraterritorial protection through FTAs collides with pre-existing private rights modifying the principle of non-retroactivity of international treaties, affects competition and constitutes a market access restriction for local and imported products.

The concerns relate to the request for exclusivity for common names that have become part of the public domain, trademarks obtained in good faith, and names of plant varieties and animal breeds. In short, the objection is to undermine the rights of producers outside European territory, granted under the TRIPS exceptions, affecting GATT/WTO principles and the balance of rights and obligations resulting from the Uruguay Round.

Affiliated Research Fellow, Max Planck Institute for Innovation and Competition, Munich, Germany. Member of the Observatory of Buenos Aires and of the Board of Directors of the “Smart IP for Latin America” Association. Head of the Specialization Program in Negotiations and International Trade in Agro-industries, University of Buenos Aires (UBA) School of Agricultural Sciences. Researcher, UBA Centre for Interdisciplinary Studies on Industrial and Economic Law (CEIDIE). Professor, Master Program in Intellectual Property, FLACSO Argentina. Professor, Latin American Integration Institute, University of La Plata School of Legal and Social Sciences.