Canaan Bridges Consulting Inc. | long read| First published in Canaan Bridges Monthly
Strategy matters to how you position your food, beverage or agricultural products in consumer markets. When the proprietary value of your food product matters, and more than one options are available for intellectual property (IP) monetisation, what factors should influence your IP choice? We talk about this in the context of trademark protection and geographical indications (GIs) designation for food and agri-based products below.
If you have eaten FETA made in Greece, drank Champagne from France, used Argan Oil from Morocco in your hair, brewed Colombian coffee, drank Quebec’s Ice wine, then you have consumed origin-based food protected with a GI designation. GIs are words or symbols used on products to convey that there is a direct and traceable relationship between the product and its place of origin. This relationship is derived from the quality, characteristics or reputation of the product, which should be directly traceable to where the product was made.
Global consumer markets are often saturated by many products serving the same or similar purposes. Without a means of distinguishing one product from another , it is challenging for competitors to stand out in the marketplace. Trademarks are indicators of source. They are used in a commercial context to create distinctions between products and services, and to capitalize on market share, thereby building brand values. While GIs are also used to distinguish products from others in consumer markets, there are still significant differences between the two types of IP, especially where protecting origin based foods is concerned.
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Factor | Trademarks | Geographical Indications |
| Ownership | Trademarks can be owned by an individual, or an entity. The rights can be licensed or assigned to others for use during the course of trade. | GIs are collective rights owned either by a producer group, a collective, or sometimes by a competent government authority. Based on the nature of the rights involved, it cannot be licensed for use by others who operate outside the GI Designated food scheme. |
| Nature | Certification Marks share a few commonalities with GI designations. However, there are several differences. The foods associated with GIs usually embody significant cultural , historical and/or social welfare considerations that cannot be adequately captured under a trademark designation. | GIs are sometimes registered as certification marks in countries that do not have separate laws that pertain specifically to their protection. It is not uncommon for a food or agri-product to be registered as a GI in its country of origin, and as a certification mark in a foreign country where protection is not readily available. |
| Term of Protection | Registered trademarks are renewable every ten years (in most jurisdictions across the world). Registered trademarks can be cancelled, expunged, or, their registration can be amended to reduce the goods or food services that the mark can be used in association with. | GIs that are registered under a sui-generis or semi-sui generis system are not easily cancelled; they are often indefinite rights. In some countries, they cannot be cancelled, unless the name has become generic. This means that food producers have an exclusive right to use the GI name on products in commerce. In some countries, the rights will prohibit competitors from using words such as “‘style”‘ “like”” and so on, on their products. |
| Monetization | Because the trademark is owned by a firm, individual or conglomerate, the revenue generated from its monetization belongs to its owners and/or licensees.There is no obligation (even if corporate social responsibility measures are in place) to incorporate social welfare goals into its business model. | When food and agri-based GI schemes operate effectively, there is a keen interest in integrating sustainable development considerations into projects in and around GI designated zones. |
| Scope | There are few limits to the types of food and agri-based products that trademarks can be associated with. Prospective trademark applicants are more concerned with whether their marks are trademark registrable, based on the eligibility criteria in the country of registration. | GIs are produced in specified areas called de-limited zones. Some codes of practice specify that if at least one of the production processes takes place within the de-limited zone, the GI designation applies. Generally then, if no part of the foods’production takes place in the de-limited zone, food producers are not authorized to use the GI designation on their products. |
The specification requirements involved in obtaining a GI designation, in particular, ensuring that the product remains well aligned with its origin and is in fact a collective right, rules out GI registration as a first choice for several food enterprises.
Another worthwhile consideration is the level of GI protection available for the designation in foreign markets. There is no guarantee that products distributed and sold in countries which have minimum levels of protection for GIs will have exclusive rights to GI names in consumer markets. For example: X is registered as a cheese GI in country Y, and is exported to country Z. Country Z protects GIs as trademarks. X is therefore a registered trademark for cheese in country Z. Competitor ”ZP” who resides in country Z is permitted to label, market and sell cheese as ”X style cheese”‘, “Z, imitation of X styled cheese” and similar wording to this effect without infringement. This is permissible unless domestic legislation permits otherwise.
The importance of trademarks and GIs to your monetization strategy will ultimately depend on the objectives and structure of your food ventures. At times, both indications of source may complement an emerging or existing food based product. In other instances, where strong alignments exist, GIs may be a more favourable option, especially if there are reciprocity of protection in the product’s main export markets.
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