Thursday, May 21, 2015

Can Parmesan Cheese Exist Outside of Parma, Italy?

Trademarks can be tricky, particularly if the trademark contains the name of a geographic region. And more certainly so when the geographically-based name represents a common descriptor for a product.

Consider Scotch whiskey, or parmesan cheese, or Darjeeling tea, Kobe beef, or Roquefort cheese. Each of these products, and numerous others, are described by a geographic region. Many of these products originate and take their names from regions in Europe; Scotch from Scotland, parmesan from Parma, Italy, Darjeeling from an area in West Bengal, India (OK, not Europe, but still), Kobe from Japan's Hyogo Prefecture (ditto), and Roquefort for a region in southern France.

And many of these product originating regions are concerned that similarly named products are manufactured outside of their historical originating zones. For example, the U.S. Department of Agriculture lists some 20 plants in the U.S. that manufacture parmesan cheese.

Today, the World Intellectual Property Organization (WIPO) based in Geneva is enacting what is referred to as the Lisbon Agreement that expands the protection for geographical indicators. This agreement is set out here. The agreement is not being signed by a majority of WIPO members, but by a subset who are extremely concerned with extending legal protections for geographical indicators.

The U.S. is not a signatory to the Lisbon Agreement, and the U.S. Ambassador to the U.N., Pamela Hamamoto, strongly objected to the Lisbon Agreement in that it does not respect IP rights already developed by U.S. businesses. A copy of Ambassador Hamamoto's letter to WIPO is here.

WIPO's Lisbon Agreement does not alter U.S. trademark law, but it could lead to modification of trademark law in European countries that are signatories. U.S. producers of products bearing geographical indicators should be cautious in trading with these signatory countries, and should clearly understanding local IP law.

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