GIs - the EU v US positions and the SEA battlefield

The EU and US do not see eye to eye on GI protection. Until now the non agreement hasn’t been contentious, but the 2020 USTR Special 301 report just released raises the temperature. It argues that the EU position “significantly undermines the scope of trademarks and other IP rights held by U.S. producers”.

The US does not protect GIs specifically, but allows them in practice as certification marks unless they are generic terms and provides some protection to wines through the American Viticultural Area (AVA). However many terms are generic in the US due to the historic immigrant use from the places in question. For example Italian immigrants widely used ‘Parmesan’ in the US rendering it generic in the US for that type of cheese. Meanwhile the EU has a huge GI industry (estimated at E25 million in value in 2014). There are 2 levels of GI protection – Protected Designation of Origin and Protected Geographical Indication. Above this the TRIPS rules protect GIs, with additional protection for wines and spirits, but allow non confusing uses in certain circumstances. The EU and US don’t agree on what constitutes non confusing use.

In SE Asia most countries now have sui generis GI laws. But as in many other markets, a battle is being played out as the US and EU increasingly negotiate IP protections at a bilateral level. EU FTAs with IP chapters propose extensive GI protection. This sits well in economies with strong agri sectors.

Thailand has rapidly built a national GI portfolio of agricultural and non-agricultural products (i.e. handicrafts) – 118 domestic GIs are now registered. It also has 6 foreign GI products registrations from Thung Kula Rong Hai hom mali rice in the EU to Lamphun brocade Thai silk in Indonesia. A series of other Thai GIs are still at application stage,  from Phetchabun sweet tamarind in Vietnam to Doi Tung coffee in Cambodia. Thailand is committed to developing and promoting more GIs from all of its provinces to generate income for communities. It aims to hit a billion dollars in GI based trade in the next 5 years. 

Vietnam has signed an EU FTA (which is awaiting ratification after which they will automatically protect each other's GIs) and is also known to be keen to develop more GIs.  Indonesia has filed one GI in the EU for Kopi Gaya coffee and is trying to develop more domestic GIs.

Meanwhile the US seeks to insist in its negotiations that GI protection must not override legacy trademark rights. Some GI names are incorporated into US trademarks and their export capability is diminished in third countries if GI protection is too strong. The EU typically conditions an FTA to provide mass reciprocal mutual GI recognition. The EU also requests extensive unfair competition type protection against any misleading uses.  The US goes on to argue there is inconsistency in the EU position (notably some exceptions, where some EU countries use others’ GIs as descriptors).

It is unclear how SE Asian countries should approach this, whether to offer wide and reciprocal protection to the EU (therefore enabling EU market access for their GIs), or whether to carve out exceptions for US brands (e.g. California Champagne). So far few of the US trademarks at issue seem to have reached disputes in the region but that will change over time. Thailand clearly intends to use GIs to support its agri and handicrafts sector, and countries with large agri sectors will presumably do the same; which could create a market access barrier to some US brands.

Thai Singapore dispute over cultural heritage

Thailand has been a very active protector of its cultural heritage. They are the leading country in SE Asia for protecting their own GIs. Thai rice, silk and other products have been protected - see earlier posts under the Thailand GI link below right.

Now a more ephemeral object of protection is causing Thai hackles to rise. A company in Singapore announced it will hold a Songkran festival in April. Somgkran is the Thai water festival.  The Tourism Authority of Thailand (TAT) expressed concern and is consulting other state agencies to see if legal action could be taken to protect Thailand’s cultural heritage.

It is hard to see that a festival can be protected as a form of IPR, and in any event there were presumably lots of Thai people in Singapore holding similar events. Still you have to admire Thailand for asserting its rights continually to protect its culture.

 

 

 

 

A Thai business' struggle against infringers abroad

Following on from the Starbucks v Starbung case, Thailand's Nation newspaper published a great story about Doi Chaang, a Thai coffee brand. Doi Chaang coffee is a premium, single-estate, organic Arabica coffee from a Golden Triangle village in Northern Thailand that pursues sustainable agriculture and minimal impact on the natural environment. With a GI in hand they began international promotion with Canadian assistance. Their president Wicha Promyong marketed the product as he has travelled around the world.

However he has also had to fight several IP cases in Japan and South Korea against companies using logos that look like Doi Chaang's albeit with slight changes - like extra words - added to the logos to render them less similar.  He won both cases. Now he is fighting another case in China.

 
This is yet another example of a Thai IP rich business expanding globally (more about which see here). A natural outcome of which will be IP disputes against imitators of their success. And a timely reminder that while IP disputes at MNCs are often part of life, for smaller businesses they can be devastating. Governments would do well to bear that in mind when developing their IP systems.

Smooth as Thai Silk

Isan Indigenous Thai Silk Yarn is a unique textile art in terms of its production process. This gives the silk fabric a texture which is smooth, soft and shiny. The process relies on Isan people’s silk reeling skills. Isan people come from Thailand's northeast near the Lao border. The reeling technique has been passed from generation to generation to become local wisdom. Silk has always been a part of the culture of the Isan region. In fact the Isan region is the origin of all Thai silk.
 
The Thai Department of Intellectual Property of Thailand has continued its push to develop and market the products of its people by filing GIs in Thailand and Vietnam.  The Thai GI was filed on August 1^st, 2013 under the number 6-2013-00001.

The development of unique cultural skills combined with bio-resources continues to be a Thai IP focus.

Thailand seek GI protection in Vietnam

Thailand is an active protector of its GIs (click on the Thailand GI link below right for more news). Now it is expanding protection in the SE Asian region too, by seeking a GI certification for Thai silk in Vietnam. The function of GIs is to enable recognition for producers which can be leveraged in the international market. It is an underutilized IPR tool for businesses in SE Asia, given the vast number of products made in specific locales across the continent. Thailand is impressing in its widespread use of GIs.

Pajchima Tanasanti, director-general of the IPD said "Thai silk...produced in the Northeast of Thailand, has a unique texture. GI certification will ...help promote the fame of Thai silk, but also result in added value for farmers and producers." 

Thai policy has been to seek certification first for agricultural products around the world, but that is now being expanded to handicrafts. This will be the first Thai handicraft product to receive a GI certification from abroad. The Thai Queen is a backer of the Thai silk industry.

In Vietnam 35 GI certifications have been registered. They include Peruvian pisco and Scotch Whisky but most are domestic. Vietnam has also sought a GI regstration in Thailand for its Buon Ma Thuot coffee. Of the GIs registered in Thailand this is the first from another ASEAN state.

More Thai GI certifications sought in Europe

Hot on the tails of Hom Mali rice (see here), come 3 more Thai applications for GIs in Europe. The products are: Sung Yod Rice from Phatthalung Province in Southern Thailand, as well as "Doi Chang" coffee and "Doi Tung" coffee from the north of the country.

Pajchima Tanasanti, director-general of the Thai Intellectual Property Department reported to media that the application for Sung Yod Rice will be filed when he visits Brussels this week. The rice is known for its high nutritional content as well as being the Thai Queen's favorite! Meanwhile the two coffees Doi Chang and Doi Tung come from the hills of Chiang Rai - these applications have been filed and are awaiting GI certification from the EU.

Thailand impresses with the sophistication of its appreciation that creating IP leads to more valuable commercialization of the underlying product.

Thai GI achieves EU protection

IP Komodo has often been disappointed by the lack of interest from SE Asian governments in protection of their domestic IP internationally (well perhaps Singapore aside). See here for previous concerns.

So here is a tale of SE Asian IP success. Thai Hom Mali rice is a Thai speciality; a non glutinous naturally aromatic white rice variety grown in 5 specific provinces of Thailand. In 1959 they registered the name as a Geographical Indication in Thailand and later on in several other Asian countries. Thailand has for some time been keen on GI Protection for its food and artisan products.

Now through a European Commission regulation Khao Hom Mali Thung Kula Rong-Hai has been accorded EU protected GI status. It was granted by the European Commission under the European Council regulation no. 510/2006. After publication in the EU GI Gazette in 2010, the Governments of Belgium, France, Italy, Netherlands and the UK filed objections. They argued that “Khao Hom Mali” is a generic term and requested it be packaged outside of Thung Kula Rong-Hai area, including in Europe. But in February 2013 the oppositions were rejected and the GI was granted.

Believed to be the first EU GI from Thailand or even South East Asia this GI shows what local industries can do with their IP if they put their minds to it.



 

Thailand to get first S E Asian EU GI

According to the Nation newspaper, Thai HOM MALI jasmine rice should receive Geographical Indication (GI) protection from the European Union in 2012. Approval from Brussels in coming months will make it the first South East Asian product to get a GI certification from the EU. There were initial objections as to how strictly it was produced and packed in the specific area of NE Thailand, but the applicant overcame these. There is some excitement in Thailand over this because of the significance of GI protection for exclusivity and higher prices. Thailand has been the most active country in his region in obtaining and promoting GIs. 

IP Komodo's friends at Rouse worked on this.

Thailand GIs

Thailand continues to be active in registering Geographic Indications (GIs).  This is prompted by strong local industries such as silk and foods. But there has also been cooperation with the EU on various fronts. This includes EU help on registration systems, as well as support from major European GI owners (like the Champagne Committee), and most interestingly of all an EU project on commercialising GIs, leading to some real commerical deals being done, e.g. between some of the champagne houses and the Thai silk industry. As a result Thailand is becoming somewhat of a centre for GIs in Asia. 



The latest one is from the Napa Valley Vintners, the nonprofit organisation of the 420 Napa Valley wineries. Thailand will now protect the California wine region from misuse of its name.

IP Komodo understands that 35 GIs have now been registered in Thailand of which 27 are from local Thai producers. The IP office publishes an impressive brochure on all the local producers and their histories. Many involve tasty Thai foods, which IP Komodo thinks would be tasty if he didn't live only on dead meat.