1 Introduction
For much of its history, the notion of a distinctive link between regional products and their places of origin has been articulated in the language of terroir. This polysemous term acts as a cipher for the influence of geographical origin on the end product’s quality.Footnote 1 As one leading scholar of the concept describes it: ‘Historically, terroir refers to an area or terrain, usually rather small, whose soil and micro-climate impart distinctive qualities to food products. The word is particularly closely associated with the production of wine.’Footnote 2 This type of causal relationship – where the physical geography factors within a region leave their distinctive traces upon the end product – is reflected in the definition of a geographical indication (GI) found in Article 22.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).Footnote 3
According to Article 22.1, a GI is a sign that identifies ‘a good as originating in the territory of a [WTO] 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 geographical origin’ (emphasis added). However, this chapter will focus on the relatively ignored option bracketed between qualities and characteristics – reputation. Ironically, reputation is the least talked about form of linkage between product and place. The analysis which follows considers the question of when a product’s reputation can be said to be essentially attributable to its geographical origin.
This is a question worth investigating because it relates to the very foundation of GI protection. The basis for treating GIs as a distinct intellectual property (IP) regime rests on the notion of a verifiable link between a product and its place of origin.Footnote 4 In the words of the World Intellectual Property Organization (WIPO):
It is important for the justification of the elements of the definition to be made in the most objective manner possible with a view to giving the link a precise and specific form, since this constitutes the basis for the protection of a [GI]. The grant of an exclusive right to a denomination is made only insofar as this right is justified by objective elements and forms of proof. These elements and proof help to make the subject matter for which protection is sought and the reason for such protection understandable, while using, for example, specifications containing these elements in methodological and concrete terms.Footnote 5
The necessity for a causal and objectively verifiable link was also endorsed by the Institut National de l’Origine et de la Qualité (INAO), which has regulated GIs in France since its inception in 1935.Footnote 6 When registering a protected designation of origin (PDO) or protected geographic indication (PGI), a demonstration of the causal interaction between the specificities or characteristics of the area and the characteristics of the product is expected to be provided.Footnote 7
Yet despite the justificatory significance of the link, scholars working in this field have noticed a countervailing trend – a general loosening of the link requirement accompanied by less demanding scrutiny. Driven by the desire to reach strategic multilateral compromises and develop an international consensus in favour of GI protection, proponents of GIs have been relaxing definitional criteria and overlooking enduring ambiguity for decades. In recent work, Irene Calboli has argued for a return to a more rigorous GI definition, which does not stray too far from terroir.Footnote 8 The PGIFootnote 9 is cast as the culprit for the lowering of standards, with its permissive approach to a reputational link and its relatively undemanding requirement that only one stage of the product’s life cycle (its production, or processing, or preparation) take place within the defined region of origin.
In recent work, I have explored the flexibilities and blind spots contained within the European Union’s (EU) GI registration system for agricultural products and foodstuffs, including the limitations of a public certification process when verifying the link between product and place. Within this two-stage process, both the national registrar and the European Commission ultimately work with, and are constrained by, the product specification that is submitted.Footnote 10 A registrar can be provided with a PGI specification that is entirely silent on certain aspects of production, that permits the sourcing of raw materials for a PGI from outside the specified region or that describes the reputation link by merely referring to a few historical sources. Despite this being a unitary EU-wide system operating according to harmonised standards, there is very limited guidance provided by the Commission in terms of the criteria to be satisfied.Footnote 11
Delphine Marie-Vivien is also interested in the apparent attenuation of the link requirement for PGIs, but she explores the potential to accommodate human factors within this less deterministic (in a physical geography sense) form of link. The PGI model has the flexibility to incorporate traditional crafts and textiles within the present EU approach towards GI protection. Therefore, for Marie-Vivien, reputation is the potential vector for admitting such products into the EU’s conceptual framework of GIs.Footnote 12 Crafts, textiles and non-agricultural GIs in general are of interest not just for the EU but for countries in Asia and Africa as well. Thus, reputation as a form of linkage between product and place is presently both a cause for concern – because its loose application undermines the justifications for GI protection – and a potentially flexible option to incorporate non-agricultural products, which demonstrate an appropriate historic connection with a place. Both its peril and potential make this an opportune moment to study the question taken up by this chapter.
Section 2 will identify five reasons why we need to think about the content of the reputation link more closely. While reputation is increasingly being relied upon in GI legislation as well as registration systems, there is a curious absence of criteria that would help to establish this type of link. Section 3 will establish that assistance cannot be found in the drafting history of TRIPS or other contemporaneous legal instruments. It will review the circumstances under which the reputation link was introduced and show that it is normatively hollow. This history suggests that it was incorporated into the draft text of TRIPS as an acceptable compromise, not only between New World opponents and Old World proponents at the General Agreement on Tariffs and Trade (GATT) negotiations leading up to TRIPS, but also as a viable solution for members of the European Community (EC), who were divided over which types of GIs ought to be recognised within Europe. Indeed, reputation was rather hastily incorporated within a framework otherwise premised upon terroir. Therefore, if we are to make meaningful sense of a reputation, which is essentially attributable to origin, then this type of link should be informed by the overall purpose and objectives of sui generis GI protection. The potential components of the reputation link are unpacked in Section 4, which will also relate these criteria back to the foundations for GI protection. Section 5 concludes.
2 Why We Need to Talk about Reputation
There are at least five compelling reasons why we should think more carefully about reputation as the basis for the link between product and place. First, the GI definition in Article 22.1 of TRIPS is by now well established as the international reference point. This is evident in national or multilateral definitions that map on to Article 22.1.Footnote 13 Reputation is therefore an independent and sufficient basis for satisfying the definition of a GI. However, it is a form of linkage that will inevitably be subjected to testing. The ongoing TRIPS negotiations regarding the establishment of a multilateral register for wine and spirit GIs have witnessed deliberations on whether registration notifications should include ‘details of the quality, reputation or other characteristics of the wine or spirit essentially attributable to its geographical origin’.Footnote 14 The requirement for such details at the time of international registration is also reflected in the ‘work-in-progress’ composite text of the multilateral register.Footnote 15 A notification could include a declaration of conformity with the definition of a GI in Article 22.1 of TRIPS. Not satisfying Article 22.1 could potentially be a basis for refusing protection within the territory of a participating member.Footnote 16 Yet, the reputation link in Article 22.1 remains poorly understood.
Second, the TRIPS definition of GIs has recently been accommodated within Article 2(1)(ii) of the Geneva Act of the Lisbon Agreement 2015.Footnote 17 The Lisbon system has established an international registration system for qualifying geographical designations, which are recognised at the national level. Scrutinising international registrations for compliance with the definition of a GI is once again a concern here, but a more immediate one. Where the ‘reputation … of the good is essentially attributable to its geographical origin’, it will now qualify for international registration. The Geneva Act provides for both the initial refusal of the effects of international registration by a Contracting Party (Article 15) and the possibility of subsequent invalidation (Article 19). Both refusal and invalidation proceedings require the grounds to be stated.Footnote 18 During the deliberations leading up to the adoption of the Geneva Act, ‘grounds based on failure to meet the definition of an appellation of origin or a geographical indication’ were specifically envisioned as a reason for invalidation.Footnote 19 Similarly, a refusal to recognise a GI can be based on any ground, including failure to satisfy the definitional provisions.Footnote 20 Thus, a more developed sense of when a reputation is ‘essentially attributable’ to the product’s geographical origin is a necessary prelude to any such challenges.
If the first two reasons relate to multilateral obligations and international norms, the next three draw upon developments within the EU context, but the insights are more broadly applicable. The third reason is conveyed most conveniently by statistics. As of 29 February 2016, the Database of Origin and Registration (DOOR) indicated that PGI registrations were maintaining their lead over PDO registrations in the EUFootnote 21 – there were 671 registered PGIs and 604 registered PDOs.Footnote 22 One principal difference between the two types of GI is that for a PGI to be registered a product’s ‘given quality, reputation or other characteristic is essentially attributable to its geographical origin’, whereas for a PDO, the product’s ‘quality or characteristics are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors’.Footnote 23 It is evident that the reputational basis for registration, with its attendant flexibility, is proving to be popular.
Fourth, recent pronouncements from the Court of Justice of the European Union (CJEU)Footnote 24 have confirmed that the EU’s harmonised regime for GI protection, set out in Regulation 1151/2012 and its predecessors, is exhaustive and pre-empts national GI registration systems to the extent that they regulate the same subject matter.Footnote 25 Therefore, where a regional product’s reputation is causally attributable to its geographical origin, it can no longer be protected by national protection systems, such as passing off or unfair competition law, which have historically protected GIs.Footnote 26 As a recent dispute concerning Greek Yoghurt highlights, such a geographical designation has to be registered at the EU level, failing which it is apparently left vulnerable, without any legal protection at the national level.Footnote 27 The objective is to channel all suitably qualified subject matter into the unitary EU regime in order to achieve complete harmonisation. However, the CJEU case law suggests that simple geographical designations can continue to be protected at the national level, for instance, under unfair competition law. The court has recently summarised the position as follows:
[It] is apparent from the case-law that whilst the aim of Regulation No 2081/92 [which previously regulated GIs for agricultural products and foodstuffs] is to provide a uniform and exhaustive system of protection … that exclusivity does not preclude, however, the application of rules governing the protection of geographical designations which fall outside its scope … It is apparent [both from the preamble to the Regulation and the PGI definition] that the rules on protection laid down by that provision cover only designations relating to products for which there is a specific link between their characteristics and their geographical origin.Footnote 28
Consequently, it seems that the CJEU endorses a distinction between a PGI-type reputation that is objectively or causally attributable to origin and a non-PGI type reputation, where a product may be subjectively or ‘romantically’ connected to its region of origin in the eyes of consumers but for which there is no objective basis. The latter may still be protected under national unfair competition law, provided it does not unjustifiably impede the free movement of goods within the internal market. In the United Kingdom (UK), this distinction was at issue in Greek Yoghurt, where subjective reputation was described in the following manner:
It is impossible to do much more than speculate as to why that substantial proportion of the relevant public think that [thick and creamy] Greek yoghurt is special. Some may … make a romantic association between Greek yoghurt and a Greek holiday. Some may think that Greeks use manufacturing methods that give it its special thick and creamy texture. Few would probably know how or why.Footnote 29
Ultimately, what mattered for the requirements of the tort of passing off was that a subjectively held and commercially valuable reputation contingent upon Greek origin existed which could be protected against misrepresentation. We therefore need clearly identified and workable criteria in order to distinguish between these two types of reputation associated with geographical origin, because only subjective reputation will continue to be protected at the national level within the EU.
The fifth reason for seeking greater clarity is that the European Commission is proposing to extend the EU’s GI regime to non-agricultural products and handicrafts. Its interest was signalled in a Green Paper in 2014,Footnote 30 which drew upon a prior study exploring the potential to register crafts and textile products from across the EU.Footnote 31 The Commission’s proposal recognises that non-agricultural products may also possess a link to a region, which can either be a terroir or reputation-based link:
This link to a geographical location can also apply to non-agricultural products. In some cases, such as marble and stone, the strength of the link is comparable to that for agricultural products … In principle, the stronger the link, the more credible and authentic a product will be in the eyes of the consumer. However, certain GIs may be based entirely on human rather than natural inputs, or on reputation.Footnote 32
Reputation attributable to geographical origin could be used as a criterion in addition to, or as an alternative to, a particular quality or inherent characteristic of the product. This would allow GI protection to be extended only to products that have already developed a recognised reputation among consumers.Footnote 33
If reputation is to be put to work in this context, then we need to better understand how it can be anchored in or ‘essentially attributable’ to the place of origin.
3 Reputation: A Compromise or Compromised?
Historical research confirms that we are unlikely to find the answers we seek within the text or travaux of TRIPS. This section documents (a) how reputation was included within the TRIPS definition as a compromise; and (b) how it was an incompletely conceived compromise, because reputation was hastily amalgamated within a paradigm otherwise dominated by a terroir-based approach to GI protection. This compromise unfolded in two broad stages. To fully account for the presence of the reputation link in TRIPS, we have to first acknowledge a prior reconciliation within Europe as part of the historical backdrop to the EU’s own harmonised GI regime for agricultural products and foodstuffs.
3.1 Two Paradigms of Geographical Indication Protection
Wine is the archetypal GI product. Since the latter part of the nineteenth century, successive legislative experiments directed at regulating wine appellations in France showcase the extent to which terroir-thinking gradually characterised the nature of the link between product and place.Footnote 34 The transition from the appellation d’origine (AO) to the appellation d’origine contrôlée (AOC) reveals that a naturally deterministic understanding of terroir, which was reliant on physical geography factors such as soil, sunlight, orientation and elevation, gave way to a more holistic understanding which also included production techniques and human influences.Footnote 35 The terroir approach was adopted by Southern European countries with a wine-growing tradition, including Italy, Spain and Portugal. Within this paradigm, reputation was an additional factor to be considered cumulatively, after an objectively verifiable causal connection was established between a product’s qualities and its region of origin.
The paradigm is perhaps best exemplified by Article 2 of the Lisbon Agreement of 1958.Footnote 36 Article 2(1) requires that the ‘quality or characteristics of [the product] are due exclusively or essentially to the geographical environment’, while Article 2(2) additionally stipulates that when identifying the country of origin we have to look for the country containing the place ‘which has given the product its reputation’. This is made explicit in Lisbon’s Geneva Act of 2015, where Article 2(1)(i) defines an appellation of origin as ‘any denomination … consisting of or containing the name of a geographical area, or another denomination known as referring to such area, which serves to designate a good as originating in that geographical area, where the quality or characteristics of the good are due exclusively or essentially to the geographical environment, including natural and human factors, and which has given the good its reputation’ (emphasis added).
By contrast, in other European jurisdictions, GIs were protected under unfair competition law.Footnote 37 Historically, unfair competition has been used in different senses. It is variously an umbrella term for a cluster of tortious actions (or their equivalents in delict), an individual tort by itself or the basis for a specific statutory regime. What unites the different approaches is their emphasis on misconduct. All of these iterations seek to regulate the activities of traders in the marketplace and enable courts to cry foul when business practices overstep their limits. For example, while it may be permissible for a trader to claim her goods are better than those of a rival, or even to claim that those of her rival are objectively inferior, it will not be permissible to lie to customers about the source or quality of her goods, or unjustifiably disparage the products of her rival.Footnote 38 Consequently, WIPO identifies ‘at least one objective that is common to all different approaches, and that is to provide those in trade with an effective remedy against unlawful and dishonest business practices of their competitors’.Footnote 39 Germany and the UK are two prominent jurisdictions that favoured such an approach to GI protection.Footnote 40
As opposed to the information being specified ex ante, in a cahier des charges or product specification required by registration-based systems under the terroir paradigm, the unfair competition approach adopted a different methodology for identifying a regional product, determining its region of production and legally recognizing those entitled to use the geographical name on their products. These answers would only crystallise within the context of an individual dispute, on a case-by-case basis. Furthermore, recognition and protection were dependent upon the communicative content of the sign. The designation would inevitably be protected against deceptive uses or misrepresentations and, depending on the national regime in question, potentially against misappropriating or free-riding uses as well. Protection in turn was contingent upon consumer perception. From the consumers’ perspective (and that of the trade), did a geographical designation used on certain products have a reputation in the market? Would the relevant public expect the product to come from a specific region? Would they expect it to be made in accordance with certain techniques and processes (for example, a minimum ageing requirement for whisky) even if they were unclear on the precise details? If so, consumer expectations would be protected together with the reputation of the product.
It is crucial to point out that within the unfair competition paradigm the paramount consideration is whether a valuable reputation exists in the marketplace for a regional product. Its existence could be established through direct and indirect evidence such as sales figures, mentions in the media or consumer surveys. That reputation did not have to be essentially or causally attributable to geographical origin in the manner that the terroir approach requires.Footnote 41 Reputed geographical designations were treated in the same way as trade names or unregistered (trade) marks, which also had reputations worth protecting. Given this detachment from any terroir, i.e. causal connection requirement, an unfair competition approach to GIs can range beyond agricultural products to accommodate reputed manufactured as well as artisanal products, such as Solingen steel, Brussels lace and Swiss clocks. It can also scale up to protect national-level reputations for products such as Jamaican rum, which would otherwise be impermissible under a terroir approach where homogenous geographical features need to be identifiable within a region.
3.2 Accommodating Reputation within a Terroir Paradigm: The EU Compromise
The extent to which the terroir and unfair competition approaches to GI protection were equally legitimate was directly tested before the CJEU in the decades preceding the adoption of a harmonised EU-wide system of protection. Throughout the 1970s and 1980s, only the former was recognised as a legitimate category. During this period, the case law was characterised by suspicion towards national labelling regimes that protected simple or quality-neutral GIs of source, which could potentially have operated as disguised restrictions on the free movement of goods within the common market.Footnote 42 The French AO concept, with its purportedly objective link between origin and quality, provided an acceptable basis for prohibiting the use of appellations by those outside the designated regions. It would take several years before the Court acknowledged the protection of a valuable reputation, alongside the prevention of unfair competition, as an alternative basis for restricting the use of geographical designations. Two prominent decisions of the CJEU bracket this transition.
In the Sekt/Weinbrand decision,Footnote 43 the validity of German legislation, which restricted the use of certain wine designations, was challenged. It reserved the designations ‘Sekt’ and ‘Weinbrand’ to domestic products and the appellation ‘Praedikatssekt’ to wines produced in Germany from a fixed minimum proportion of German grapes. The German law further prescribed that imported sparkling wine and wine brandy not in compliance with these conditions had to use different terminology (‘Schaumwein’ and ‘Branntwein aus Wein’).Footnote 44 The European Commission queried the German legislation’s compatibility with the former Article 28 (now Article 34 of the Treaty on the Functioning of the European Union (TFEU)) on the basis that by claiming generic terms as indirect geographical designations, it favoured domestic production and operated as a measure equivalent to a quantitative restriction on imports. Germany responded that while it might be a restriction, it was justified on the basis of protecting consumers and legitimate producers against unfair competition. Therefore, it was a permissible exception to Article 28 contained in Article 30 (now Article 36 TFEU). In dismissing the German argument, the CJEU made the following observation:
These [wine] appellations only fulfil their specific purpose [i.e. to safeguard producers against unfair competition and prevent consumers being misled] if the product which they describe does in fact possess qualities and characteristics which are due to the fact that it originated in a specific geographical area.
As regards indications of origin in particular, the geographical area of origin of a product must confer on it a specific quality and specific characteristics of such a nature as to distinguish it from all other products (emphasis added).Footnote 45
Since this qualitative link was not invoked, restrictions on these terms were found to be unjustified. It should be noted that the outcome of the decision was not considered objectionable. Such expressions were arguably generic at the time, so in trying to artificially impose a specific geographical limitation, the contested legislation was vulnerable on this ground alone. However, the reasoning that was applied proved divisive.
The controversy stemmed from the implication that reputation-based geographical designations did not fall within the limited exceptions to the free movement of goods principle. As the AO appeared to be the only legitimate category of GI worthy of being exempted from a free movements challenge, the decision provoked forceful critiques.Footnote 46 A measure of their potency is the outcome in the CJEU’s subsequent Exportur decision.Footnote 47 Here, the issue was whether the Spanish geographical designations ‘Touron Alicante’ and ‘Touron Jijona’ could be used on nougat confectionery produced in France. These were protected designations under a Franco-Spanish Treaty,Footnote 48 notwithstanding the absence of an objective or terroir-based link. The Court held that despite this, such designations ‘may nevertheless enjoy a high reputation amongst consumers and constitute for producers established in the places to which they refer an essential means of attracting custom. They are therefore entitled to protection.’Footnote 49 Celebrating this vindication of the reputational basis for GI protection, Professor Beier argued that any harmonised EU regime which represented the AO ideal alone would have been a ‘monstrosity’.Footnote 50
With this eventual judicial recognition of both the terroir and reputation approaches, there is ample evidence that the EU’s harmonised regime for agricultural products and foodstuffs, introduced by Regulation 2081/92,Footnote 51 institutionalised this compromise. It fused these two distinct approaches together within a common framework premised upon registration-based legal recognition. The Regulation begins with the concession that ‘existing practices make it appropriate to define two different types of geographical description, namely protected geographical indications and protected designations of origin’.Footnote 52 The solution was therefore to create two ‘doorways’ into the GI registration system in Article 2. PDOs could be applied to products of which ‘the quality or characteristics … are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors’ (emphasis added). In contrast, PGIs envisioned a looser form of link and were available for products ‘which [possess] a specific quality, reputation or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which take place in the defined geographical area’ (emphasis added). However, both types of GIs would be granted equal protection. This ‘two doorways’ compromise has been maintained in the successors to Regulation 2081/92, namely Regulation 510/2006 and Regulation 1151/2012.Footnote 53
The existence of two different types of GIs attests to the underlying fissures and factionalism in the lead up to the original Regulation. Writing at the time of its enactment, one commentator noted that on ‘14 July 1992, contrary to common belief and indeed much to general amazement, the EC Regulations on the “protection of designations of geographical origin” … were passed by the European Council despite the number of disputed issues which remained unresolved until the last moment’.Footnote 54 The initial French memorandum submitted in 1988 was restricted to designations of origin, along the lines of the AO, which was subsequently supported by Italy and Spain.Footnote 55 However, the draft text of the Commission’s proposed Regulation contained references to both PGIs and PDOs.Footnote 56 The influence of the AO model remains visible in the Opinion of the Economic and Social Committee, which reveals glimpses of terroir-thinking at crucial junctures. Thus, while acknowledging the importance of protecting a product’s reputation, the Committee noted that the ‘special characteristics of the food involved derive from their origin, soil conditions, geographical and climatic environment, the varieties and species used, and the way they are prepared or produced. It is these factors which give the product its name and reputation in the marketplace.’Footnote 57
During this phase, the drafting process involved negotiations between two competing Northern and Southern groups. Marina Kolia observed that when the proposals reached the European Parliament in September of 1991, GI protection was again restricted to PDOs and ‘the applicants were required to produce convincing evidence that the product’s characteristics were essentially due to the geographical origin’.Footnote 58 The European Parliament did not accept the proposal in this form and the draft Regulation returned to the Commission, where it was further debated. At this stage, Germany began ‘to promote the idea of a very broad category under which all geographical names would be mutually recognised’.Footnote 59 When faced with the option of a single broad definition, which would have diluted the cachet of the AO concept, negotiators revived the PGI as an alternative option. Eventually, an acceptable compromise was arrived at in the form of two distinct pathways into registration and the crisis was averted.
3.3 The EU Compromise as the Multilateral Template
There is a convincing documentary trail which reveals that the internal compromise between the German (unfair competition prevention by emphasising reputation) and French (terroir logic premised on a qualitative link) approaches went on to inform the EC’s position in multilateral negotiations. The EC’s recognition of a reputation-based link was visible in its proposal during – the ultimately unsuccessful – WIPO negotiations for the revision of the Paris ConventionFootnote 60 in 1990. The issue under discussion was whether there was an alternative to the existing categories of a simple, quality-neutral indication of source (IS) (e.g., Made in China) and the more demanding AO (e.g., Bordeaux).
[The EC Representative suggested that] in order for a geographical indication to be ‘protectable’, some kind of link must exist between the geographical area to which the indication refers and the goods which originate from that area. [The EC further suggested that] protectable geographical indications should be those which ‘designate a product as originating from a country, region, or locality where a given quality, reputation or other characteristic of the product is attributable to its geographical origin, including natural and human factors’. It was explained that this ‘quality link’ was broader than the restrictive definition of ‘appellation of origin’ under the Lisbon Agreement … [According to the EC proposal] the link need not consist of a given quality but may consist of a given ‘reputation or other characteristic’ and such characteristic need not be ‘exclusively or essentially’ attributable to its geographical origin.Footnote 61
Two important ingredients of the TRIPS definition – the stand-alone reputation option to establish the link and the relative loosening of this link – were introduced at this stage.Footnote 62 The EC was also very clearly drafting its own harmonised GI regime in accordance with its position during the Uruguay Round negotiations. The Commission’s draft for Regulation 2081 specifically notes:
[The draft Regulation] also broadly reflects the position which the Community has defended in the international negotiations on intellectual property in GATT.
In the Uruguay Round negotiating group on intellectual property, the Community proposed a definition of, and appropriate protection for, geographical indications, including designations of origin, which the Commission has taken into account.Footnote 63
During the Uruguay Round negotiations, it is widely acknowledged that the EC was the driving force behind the TRIPS GI provisions.Footnote 64 As for the drafting of Article 22.1, a helpful resource was the Secretariat’s synoptic table of proposals accumulated by early 1990.Footnote 65 The EC’s proposed definition closely resembled the final TRIPS version with its reputation link option, save for the addition of ‘geographical origin, including natural and human factors’. The core of this definition remained stable until the final TRIPS text was adopted, presumably because it was acceptable to those countries which protected GIs either under unfair competition or trademark law.Footnote 66 Countries that were opposed to sui generis GI protection, including the US and Australia, found the relatively broad definition with its acknowledgement of reputation acceptable. This definition established common ground by including certification and collective marks within the GI definition. After all, these were established categories of marks and potential vectors for the protection of a collectively sustained reputation.
Therefore, while the TRIPS definition was ultimately acceptable as a bridge to span the – primarily trans-Atlantic – divide over GIs, the origins of this European proposal can be traced to an internecine dispute between European neighbours. However, the compromise superficially glosses over a fundamental distinction: the unfair competition or trademark approach was amenable to protecting a regional product’s reputation without any necessity for a causal link requirement. The very existence and commercial value of the reputation was a sufficient basis for protection. This proves to be an awkward fit within a GI definition, which originated in a terroir paradigm and saw reputation, as an additional factor, dependent upon the existence of a causal connection between a product’s desirable qualities or characteristics and its geographical origin.
Once this history is retrieved, there are clear traces that the two paradigms of terroir and unfair competition have been inelegantly fused together within TRIPS. Clashing styles of conceptual architecture remain obvious. For a start, there is the central puzzle of having to prove that a product’s commercially valuable reputation is also essentially attributable to geographical origin in a causally verifiable manner. Section 4 considers how we might best make sense of this. Furthermore, how are we to define the boundaries of the region of origin for a product which has a reputation-based link? A study by WIPO observed that the standard criterion for delimiting a region of origin includes natural features (rivers, contour lines); geographical characteristics (soil drainage, climate, elevation); human influences (choice of plant variety, method of production); historical associations; and economic considerations (equivalence of yield).Footnote 67 Several of these criteria are more relevant for a terroir link and will be inapplicable for reputation-based products.
Moreover, TRIPS suggests that the name of an entire country could qualify as a GI. While this is acceptable under a reputation-based approach, it is unlikely under a terroir one, which requires a geographical region to be both relatively homogenous and distinctive in order to influence the product.Footnote 68 Finally, while TRIPS applies to goods, it does not prohibit GIs being recognised for services. Switzerland, Estonia, Uruguay, Peru, Korea and Morocco are some countries that recognise GIs for services in the hospitality, banking, financial, or health and traditional healing sectors.Footnote 69 While a well-regarded local service may give rise to a valuable reputation – perhaps solely based on human factors with their attendant mobility – and qualify for protection under the unfair competition paradigm, how is this essentially attributable to geographical origin? These are just some of the unresolved questions that have arisen from the fusion of two previously distinct paradigms.
4 From Geography to History: An ‘Essentially Attributable’ Reputation
Now for the difficult question: what kind of reputation ought to be ‘essentially attributable’ to geographical origin? Without clear guidance, there is a very real risk that the established unfair competition or trademark approach to measuring reputation will be inappropriately transplanted into the sui generis GI context. For these regimes, establishing a sign’s reputation is relevant primarily in two situations:
(a) Does the trademark applicant’s or unfair competition claimant’s sign qualify for protection? Here, a sign may initially be a descriptive or otherwise unsuitable term (e.g., STAPLES for office supplies),Footnote 70 but over time and through marketing efforts, the relevant public can be taught that the sign indicates a specific commercial source. The success of this process of education is measured via the doctrines of acquired distinctiveness or secondary meaning.Footnote 71
(b) What is the scope of protection available? Reputed or famous trademarks are granted a broader penumbra of protection both under the likelihood of confusion test (which prevents use of the trademark on dissimilar goods or services, or even in the absence of registration) and via causes of action collectively referred to as ‘dilution’ which all rely on a non-confusing but otherwise wrongful association being made between the claimant and defendant’s signs.Footnote 72
These approaches seek to determine (a) what percentage of the relevant public are familiar with the sign; and (b) for certain types of claims such as tarnishment, what do the public think about the sign to begin with? Therefore, reputation has a quantitative as well as a qualitative dimension, but it is concerned with contemporary consumer perception. This is reflected in the direct, as well as circumstantial, categories of evidence that are admissible to establish its existence. Therefore, in both the EU and the US, courts will consider factors such as the market share of the product sold under the sign; the intensity, geographical extent and duration of use; the investment in advertising and promotion; the extent of consumer recognition via survey evidence; trade recognition; and unprompted media coverage.Footnote 73 However, the trademark and unfair competition approaches focus on whether the reputation exists at the relevant time and not how it came about, let alone why it arose in a particular place.
So when is a reputation ‘essentially attributable’ to its geographical origin? The answer to this is a work in progress, but presently cumulative evidence relating to three aspects is required:Footnote 74
(a) contemporary reputation;
(b) historic reputation; and
(c) the history of the product, including the specific production techniques which gave rise to the distinctive product within that region.
The three aspects are interrelated and overlap with each other. Therefore, contemporary reputation can be gauged by resorting to familiar categories of evidence (consumer surveys, sales figures, trade opinion, etc.) that are similar to the trademark or unfair competition approach. However, there is an important difference. The purpose here seems to be to measure continuity, or ongoing vitality, as opposed to the extent of the product’s fame or renown. Thus, it should be proved that the designation continues to function as a GI for consumers in at least the country of origin. In turn, continuity suggests that the present reputation rests on the product’s historic reputation. One of the central tasks here is to identify the characteristic features which set this product apart – characteristics which have made it distinctive when compared with similar cheeses or textiles or crafts. These characteristic features have sustained the product’s historic reputation over time. The purpose of the historical analysis is therefore to establish a basis for the product’s reputation – which is attributable to its distinctive features. Finally, regarding the product’s history, the aim is to identify a causal connection between the product’s distinctive or characteristic features, which have sustained the historic as well as contemporary reputation, and the natural and/or human factors within the geographical region of origin.
For reputation-based GIs, this often involves the identification of specific production techniques (human factors) and an explanation for why they historically developed within that region, in response to environmental, socio-economic or cultural conditions specific to a place. The reputation link can be restated as follows: (a) contemporary reputation builds upon (b) historic reputation, which accreted over time around the specific or distinctive features of the product, and (c) these features of the product in turn were causally attributable to natural/human factors specific – but not necessarily unique – to the region of origin.
This is the ‘turn to history’ alluded to in this chapter’s title. The historical evidence required by stages (b) and (c) is directed towards identifying the ‘first uses of the name, accompanied as far as possible by the first descriptions of the product’.Footnote 75 The historical evidence should link the name of the product to a specific geographical region through the context surrounding the uses of the name. It should also identify the distinctive features of the product, which give the product a stable core of identity over time, and this provides the foundation for developing a reputation. Bérard and Marchenay identify some of the sources that can substantiate this.Footnote 76 While documentary sources are helpful, a local product may have only been known in the region of origin or have been produced primarily for domestic consumption, thereby leaving few textual traces. Oral history can therefore fill in the gaps or even provide much of the basic data.
The oral history of a product can be compiled through multiple interviews across the product’s supply chain and with members of the local community. In terms of documentary sources, of
particular interest are various works by an increasing number of learned societies [in the 19th and 20th centuries] that relied on the testimony of local experts. Other sources of information range from administrative and technical reports to agricultural journals, treaties and statistics. Food and gastronomic history can also help to shed light on these products … [Sources] range from administrative documents (surveys, censuses, statistics, decrees, legal cases, regional commodity prices), travel logs and food guides to directories of regional specialities and motoring and touring guides [as well as] local archives.Footnote 77
These sources should be cross-referenced with local-level economic data relating to production where possible. There is of course a difference between a rigorous historical approach, which adopts valid historiographical and methodological techniques, and an instrumental account, which selectively dips into historical materials to tell a partial story or which embraces mythological origins.Footnote 78
This approach to ‘essentially attributable’ reputation is evident for PGIs in the EU, as some recent registrations have illustrated. Take the example of the ‘Polvorones de Estepa’, a soft and crumbly Spanish Christmas confection (shortbread) made from flour, sugar, milk and nuts from the city of Estepa in Andalucia.Footnote 79 Its product specification states that the ‘link between “Polvorones de Estepa” and the geographical area is based on the product’s reputation. That reputation is over a century old. In that time, the confections have been made to the same recipe.’Footnote 80 Historical materials are used to establish that (i) an identifiable or stable product recipe has existed for some time; (ii) the product has enjoyed a reputation for some centuries; and (iii) confectioners were employed in that region to meet the demand from Seville and Madrid (making this a socio-economic origin story).Footnote 81 Documentary sources draw on the archives of a convent, which includes old recipes; the contributions of an individual confectioner (e.g. a method of baking and a process of refining and toasting the flour) who provided what would become the modern template; evidence of product sales dating back to 1959; and more recent (1980s and 1990s) references from the press, especially around the time of Christmas, as well as the product’s inclusion within inventories of traditional foods.Footnote 82
Another product that illustrates the historical approach to reputation is ‘Carnikavas nēģi’ for fresh or cooked Latvian river lampreys.Footnote 83 The specification states that the ‘link between the product and the geographical area is based on the reputation of “Carnikavas nēģi” and the skills of the local fishermen and fish processors who preserve ancient traditions and methods’. Since fishing was a major source of income for the region, special techniques were developed to discover optimum fishing spots based on knowledge of the habits of the fish, influence of weather conditions and the need to adapt to the river changing its course. Ensuring that fishing practices favour sustainable fish stocks is also recorded in the specification. The specification very clearly claims that the product’s reputation, which can be traced back to the seventeenth century, is attributed to the human skills – relating to both fishing and processing – which have been passed down through the generations: ‘The taste characteristics of “Carnikavas nēģi” are connected with the skills of the residents of Carnikava in catching and preparing them; these skills have been preserved since the 17th century and are based on manual work and experience.’Footnote 84
Therefore, this more overtly historical approach to the product emphasises the human contribution. Bérard and Marchenay underscore this by saying that
historical rooting entails an identification of the skills and practices that have been developed and transmitted by successive generations. Historical depth must be linked to the collective know-how that has been passed down to the present generation, while bearing in mind that the transmission of know-how does not rule out evolution. Otherwise, history threatens to serve as a means of justifying would-be heritage products on the basis of a place’s reputation – not on the specific qualities of the product concerned.Footnote 85
Bringing human skills into the frame – via the link requirement, where the natural and human factors in a region have a causal influence on the distinctive features of the product – implies that we should be concerned with ‘living history’. Mere long-standing production in a region is not sufficient; it is the human skills and techniques which give the product its distinctive features over time, and there is often a place-based explanation for how and why these skills and techniques arose and have adapted. Consequently, the human contribution has a normative dimension. Such products deserve protection because of the collective, inter-generational transmission of savoir faire, or potentially because local products help to actively make the place itself.Footnote 86
5 Conclusion
For a legal regime initially founded upon a causation narrative drawn from physical geography, the turn to history is admittedly difficult but also contains intriguing possibilities. The purpose of this chapter was to set out a more GI-specific approach to reputation, by asking when it ought to be essentially attributable to the place of origin. This historical turn is worth engaging with because in the absence of a more appropriate reputational link between product and place, sui generis GI protection becomes unjustifiable. If contemporary commercial reputation becomes the benchmark, the boundary with trademark or unfair competition law breaks down and the justification for GIs, as a separate regime based on the causal connection between product and place, collapses.
Two concluding case studies illustrate the danger of adopting a simplified notion of reputation. In 2006, JAM NAGARFootnote 87 was applied for as a GI for petrol, fuel, liquefied petroleum gas and diesel-related goods before the Indian GI registry. The applicant, Reliance, had established what it claims is the world’s largest fuel refinery complex at Jamnagar in Gujarat, in western India.Footnote 88 The refinery complex had won awards and the applicant alluded to the superior (technological) quality of its refinery processes, which it claimed had earned the refinery complex a positive contemporary reputation. However, nowhere did it explain why a sign designating a relatively new and highly industrial complex could satisfy the ‘essentially attributable’ requirement on the basis of quality, characteristics or reputation. This seems to be a clear case of contemporary commercial reputation being a sufficient basis for GI registration.
The second case study relates to an ongoing dispute at the time of writing, concerning the PGI ‘Piadina Romagnola’, a flat bread made in the area around the Italian Adriatic coast of the Romagna Riviera.Footnote 89 The dispute is complicated and involved a challenge both to the definition of the geographical region by a producer excluded from it and by small-scale ‘kiosk’ producers of piadene sold in side-street outlets.Footnote 90 In an appeal to the CJEU seeking to cancel the PGI, it was noted that ‘these organisations disputed the fact that, for the purposes of the envisaged PGI, industrially-produced piadine were being treated as equivalent to piadine produced on a small-scale basis and sold in street-side outlets’.Footnote 91 Despite these objections, the Italian authorities registered the application, which allowed the industrially produced flat bread to use the PGI, thus ignoring the history in the product specification which records that small-scale, artisanal production is what gave rise to the reputation in the first place.Footnote 92 The historic basis for reputation should inform the definition of acceptable production techniques, whereas in this case the reputation is instead viewed as an autonomous, commercially valuable intangible. Such a reputation can certainly be protected as certification marks or against unfair commercial practices, but not as a GI insofar as a meaningful link to the region of origin is required. The proposal considered in this chapter is suggested as one plausible method of satisfying that link to origin for products with a reputation.
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