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Branding the land: Creating global meanings for local characteristics

Authors:
  • University of Illinois at Chicago School of Law
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Branding The Land: Creating Global Meanings For Local Characteristics
Chapter!6,!in!TRADEMARK!PROTECTION!AND!TERRITORIALITY!CHALLENGES!IN!THE!GLOBAL!
ECONOMY!(Edward!Elgar!Publications!2014)(co-editors!Irene!Calboli!&!Edward!Lee)
Doris Estelle Long*
INTRODUCTION
Despite the power of global brands1 to dominate the market, local brands remain strong
competitors, particularly when the goods reflect local tastes and culture. “Branding the land”
strategies that use geographic designators2 to promote locally produced goods, provide useful
tools for expanding their market.3 In the era of “long tail” economics,4 where such goods
have a perceived uniqueness based on qualities or characteristics derived from the local
environment (terroir) or from the use of traditional production techniques (handicrafts),
“branding the land” can help secure a potentially sustainable domestic industry. But
achieving success in such efforts requires more than stamping local goods with a “geographc
designator.To the contrary, efforts to create successful niche markets may be undermined
by the evolving nature of the territorial relationship between “geographic designators” and
the wide range of products sought to be brought under their imprimatur. Assuring that goods
maintain the special territorially centered features that assure their uniqueness in the
marketplace, while simultaneously conveying meaningful information to consumers about
such features requires more than the simple addition of a geographical indication,5
appellation of origin,6 certification mark,7 collective mark,8 or other trademark that contains a
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* Professor of Law, Director of the Center for Intellectual Property Laws and Chair, Intellectual Property, Information
1 I use the term global brands advisedly. No mark is ever truly global, but many brands play such a dominant role in
diverse geographic markets as to warrant a designation more powerful than the contested terms well-knownor famous.
The brands are generally owned by multinational corporations and often rely on brand loyalty to leverage market share. See
Doris Estelle Long, Is Fame All There Is?: Beating Global Monopolists at Their Own Marketing Game, 40 GEO. WASH.
INTL L. REV 123 (2008) (hereinafter Long, FAME).
2 I am using the term geographic designatorto refer to the use of a geographic term that refers to the territorial origin of the
associated good where such location provides some unique quality, characteristic, or reputation for that good. Such
geographic designators include geographical indications, appellations of origin, denominations of origin, and geographic
marks, including culture authentication marks, certification marks, and collective marks. For definitions of these diverse
geographic designators, see infra notes 9, 27, 28, 67 & 76, respectively.
3 See infra note 12.
4 See, e.g., CHRIS ANDERSON, THE LONG TAIL: WHY THE FUTURE OF BUSINESS IS SELLING LESS OF MORE (2006).
5 See infra note 27.
6 See infra note 28.
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geographic reference to the territorial origin of the associated goods.9 It requires a nuanced
approach that combines the assurance of production control by those most interested in
maintaining product uniqueness with a carefully crafted legal regime that assures that the
nature and meaning of the geographic designators used in connection with such goods
provide consumers with meaningful information about this uniqueness. Present international
regimes must be revised to assure that geographic designators contain adequate safeguards to
assure the quality they signify and the consumer meaning they convey are the same. Without
such revisions, “branding the land” strategies could become yet another failed economic
experiment of the twenty-first century.
II BRANDING THE LAND
Despite the power of global brands, such as Starbucks, McDonald’s, and Coca-Cola, to
dominate the market in the twenty-first century, local marks have survived. The Coca-Cola
and Pepsi-Cola brands are among the most dominant soft drink companies in the world. Yet
despite this dominance, notable local brands remain capable of maintaining a sustained
market share. Inca Kola in Peru maintains approximately a 31 percent dominant market
share.10 Similarly, the Peruvian franchise Bembos Burger Grill maintains a strong local
presence in Lima despite the increasing popularity of Burger King and McDonald’s.11 These
examples demonstrate that local tastes may still form the basis for a strong market presence.
When local tastes are combined with product features derived from human traditions
(handicrafts) or local environmental factors (terroir), the ability to create a viable local
industry may be strengthened.12 Thus, sparkling wine produced locally in the Champagne
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7 See infra note 67.
8 See infra note 76.
9 These include culture authentication marks, discussed infra Section III.
10 Inca Kola, INCA KOLA, http://www.solarnavigator.net/solar_cola/inca_kola.htm (last visited Apr. 21, 2013); see also Eric
J. Lyman, In the Company of Giants Inca Kola, ERICJLYMAN.COM (Oct. 1998), http://www.ericjlyman.com/incakola.html.
(last visited May 5, 2013). Part of this dominance, however, may be due to its subsequent purchase by the Coca-Cola
Company and its promotion as a regional alternative. See John Tagliabue, U.S. Brands Abroad Are Feeling Global Tension,
N.Y. TIMES, Mar. 17, 2003, at C3.
11Luz Marina Garcia et al., Bembos Burger Grill, 1 J. OF INTL BUS. EDUC. 111, 112 (2004), available at
www.neilsonjournls.com/JIBE (last visited May 5, 2013); John S. Wolfe, Peru: Bembos Outcooks McDonalds (March 7,
2010), http://www.johnswolfe.com/business/peru-bembos-outcooks-mcdonalds (last visited May 5, 2013).
12 See, e.g., Cerkia Bramley, A Review of the Socio-economic Impact of Geographical Indications: Considerations for the
Developing World, WORLDWIDE SYMPOSIUM ON GEOGRAPHICAL INDICATIONS, LIMA, JUNE 2224, 2011 (WIPO 2011)
(discussing the positive economic impact of the use of geographical indications on diverse products), available at
www.wipo.int/edocs/mdocs/geoind/en/wipo_geo_lim_11/wipo_geo_lim_11_9.pdf (last visited May 5, 2013); Astrid Gerz,
Dominique Barjolle and Denis Sautier, Geographical Indications (GIs): A Way Forward for Local Development:
International Training Module (UMR Innovation 2007) (providing economic frameworks and analyses of the positive
impact of the use of geographical indications on diverse goods), available at www.intergi.org/Geographical_Indications.pdf
(last visited May 5, 2013); Alexandra Basak Russell, Using Geographical Indications to Protect Artisanal Works in
Developing Countries: Lessons from a Banana Republics Misnomered Hat, 19 TRANSNATL L. & CONTEMP. PROBS. 705
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region of France may have certain qualities derived from the soil, weather, and other
environmental conditions in which the grapes are grown that make its production a
potentially valuable domestic industry.13 Similarly, silk produced in Myesore, India using
traditional practices and designs may appeal to consumers seeking the unique qualities of
handcrafted goods.14 By employing “geographic designators” to market such products,
industry can “brand the land,” making geography a selling point, thereby helping to promote
local industries. Sparkling wine becomes “champagne” and silks become “myesore.Simply
using geographic designators in connection with locally produced goods, however, does not
assure the development of a viable niche market. To the contrary, without domestic laws that
assure that quality control of such geographically “branded”15 goods is maintained in ways
that supplement the consumer meaning embued in the selected geographic designator,
“branding the land” strategies may only add to existing consumer confusion with regard to
many geographic and other territorially linked16 designators.
III SUPPORTING THE CREATION OF LOCAL INDUSTRIES
Some local industries capable of a “branding the land” marketing strategy arise through
historical practices, such as the local brewery that uses traditional processes to create its beer.
But others, such as craft-based industries, may require more than the creation of an
appropriate legal regime to protect the geographic designators they will use to market their
products. They need domestic laws that assure that the quality of such goods remains
authentically unique. In creating such laws, countries must look beyond traditional trademark
procedures and develop a legal regime for the protection of indigenous arts and practices,
which could form a commercial base for new products and “brand the land” identities. Such
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(Spring 2010) (describing the economic impact of protection for the geographical indication for the Montecristi hat from
Ecuador). But cf. Dwijen Rangnekar, The Socio-Economics of Geographical Indications: A Review of the Empirical
Evidence from Europe (UNCTAD and ICTSD 2004) (examining the differential economic impact of the use of geographical
indications on diverse goods); Tim Josling, The War on Terroir: Geographical Indications as a Transatlantic Trade
Conflict, 57 J. AGRIC. L. 337 (2006) (describing the adverse effect the geographical indication CHIANTI CLASSICO had on
the ability of Italian wine producers to market a modifiedChianti wine; the wine was later successfully marketed under the
Super Tuscandesignator).
13 Admittedly, claims to a special terroir relationship between the soil and the vine of certain French wines may be somewhat
attenuated as a result of the use of American roots to combat Phylloxera in the nineteenth century. See Franc de Pied and
Historical Reconstruction, HTC EXPERIMENTS (December 20, 2012), http://htcexperiments.org/2012/12/20/franc-et-pied-
and-historical-reconstruction (last visited May 5, 2013). The presence of such roots, however, arguably does not alter the
impact that different climates and other environmental factors may have on the wine produced.
14 See Press Release, 28 Products Registered as Geographical Indications, Government of India, Department of Commerce
(November 9, 2006) (Myesore registered as GI for silk in India in 2006), available at commerce.nic.in (last visited May 5,
2013).
15 I am using the term brandin the broader generic sense in which businesses use the term. See Long, FAME supra note 1.
Thus, champagne serves as a brand since it promotes an arguably unique sparkling wine to consumers, even if it does
not qualify as a trademarkin the legal sense due to lack of distinctiveness.
16 Such territorially linked designators include culture authentication marks placed on goods created by indigenous peoples,
using traditional knowledge. See discussion infra Section III.
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“traditional knowledge,” including protected folk art, may ultimately provide brand identities
that have the potential to compete on a global scale because of the unique qualities of the
goods associated with the application of such traditional knowledge.
The protection of traditional knowledge seeks to recognize and protect the creative and
innovative works of indigenous groups, even if such works do not fit within current
categories of traditional intellectual property. There is no presently agreed upon definition for
the concepts of “traditional knowledge” or “traditional cultural expressions”—the copyright
related subset of “traditional knowledge. Generally, however, to qualify as a potentially
protectable form of traditional knowledge, the practice or work in question must be based on
traditions that have been transmitted from generation to generation.17 These are not
necessarily works that represent “snapshots” of indigenous culture. To the contrary, part of
the nature of traditional knowledge is that such traditions continue to evolve in response to a
changing environment.18 Generally, traditional knowledge includes a wide variety of spiritual
and cultural beliefs and practices. Works based on traditional knowledge are most often
currently considered part of the public domain because of their long existence or their present
identification as part of a nation’s cultural patrimony. Such forms would include (but not be
limited to) fables, stories, myths, rituals, costumes, folk medicine, and other elements of pre-
literate society that combine to form cultural “expression” or heritage.19 Because most
folklore and ritual lack identifiable creators or holders of rights, their protection poses unique
problems for intellectual property regimes.20 Such protection, however, under domestic sui
generis or expanded intellectual property regimes would allow local groups to develop local
industries to commercialize those aspects of traditional knowledge that the relevant rights
holders want to commercialize.21
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17.See, e.g., Cathryn A. Berryman, Toward More Universal Protection of Intangible Cultural Property, 1 J. INTELL. PROP. L.
293, 297 (1994); Doris Estelle Long, Traditional Knowledge and the Fight for the Public Domain, 5 J. MARSHALL INTELL.
PROP. L. REV. 316, 321 (2006) (Long, FIGHT); Angela R. Riley, Straight Stealing: Towards an Indigenous System of
Cultural Property, 80 WASH. L. REV. 69 (2005). See generally WIPO, THE PROTECTION OF TRADITIONAL CULTURAL
EXPRESSIONS: DRAFT ARTICLES (2012); WIPO, THE PROTECTION OF TRADITIONAL KNOWLEDGE: DRAFT ARTICLES (2012).
18 See MICHAEL F. BROWN, WHO OWNS NATIVE CULTURE? 4268 (2003).
19 See, e.g., Berryman, supra note 17, at 310; Paul Kuruk, Protecting Folklore Under Modern Intellectual Property Regimes:
A Reappraisal of the Tensions Between Individual and Communal Rights in Africa and the United States, 48 AM. U. L. REV.
769, 77680 (1999); Long, FIGHT supra note 17, at 31821; Riley, supra note 17, at 77.
20 See, e.g., Doris Estelle Long, The Impact of Foreign Investment on Indigenous Culture: An Intellectual Property
Perspective, 23 N.C. J. INTL L. & COM. REG. 101, 269 (1998); Kuruk, supra note 19, at 78899; Riley, supra note 17, at 80.
21 Not all traditional knowledge is protected for purposes of commercialization. To the contrary, sacred works are often
protected to avoid such commercialization. See Daniel Gervais, 11 CARDOZO J. INTL & COMP. L. 467, 469 (2003) (defining
sacred traditional as the opposite of profane or secular, the extreme forms of which are commercially exploited); Peter Yu,
Traditional Knowledge, Intellectual Property, and Indigenous Culture: An Introduction 4 n.16 (describing the confidential
nature of many sacred ceremonies), available at http://www.peteryu.com/tk.pdf (last visited May 5, 2013). A complete
traditional knowledge protection scheme would need to address such works, as well as those for which commercialization is
permitted. See Doris Estelle Long, Trade Secrets and Traditional Knowledge: Strengthening International Protection of
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The sale of authentic, traditional knowledge-based works not only supports the
development of local industries, it provides a strong basis for developing local marks that can
compete without the large resource expenditures required to challenge a global mark.
Traditional knowledge holders can avoid these expenditures, because generally no global
mark can be associated with the same types of goods. By their very nature, being based on the
practices of a particular tribe, authentic goods utilizing traditional knowledge should be
relatively unique. This uniqueness should help prevent legitimate producers from marketing
competing goods under a globally famous non-indigneous-based brand.
Authentication is a critical component in developing local brands and industries. It
prevents locally produced goods from being “hijacked” by non-local producers and helps
prevent de-culturalizing uses of cultural goods. Many countries, including India, Mexico, and
Brazil, have successfully utilized geographic designations to support the marketing of
tradition-based local goods.22 The issue presented in crafting an adequate legal regime that
assures that the meaning of such designators adequately communicates the true nature and
quality of those goods to consumers is discussed more thoroughly below in Section IV.
Tradition-based goods, however, create a separate problem of authentic meaning that exists
outside the scope of any geographic designator that may be used to market the products. It is
the problem of cultural authentication, including an assurance of adequate respect for the
traditions and culture used to create such goods.
In commercializing traditional knowledge-based goods, authentication marks must be
created that assure that culture and tradition-based goods are offered in a manner that respects
the culture and traditions of the holders of the traditional knowledge represented by the
associated goods.23 “Culture authentication” marks can serve as powerful tools for enhancing
local identity brands. The value of culture authentication marks, however, must be secured by
limiting the use of traditional symbols to authentic goods and other uses approved by the
legitimate holders of the incorporated traditional knowledge. These limits are required on two
grounds. First, such restrictions help secure the value of local brand identities in the
marketplace by maintaining both their uniqueness as well as their relationship to tradition-
based works (further enhancing their value as authenticating signifiers). Second, these limits
ensure that any traditional symbols will not be used in contravention of cultural traditions.
While this latter goal is not directly related to the commercial valuation of culture
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Indigenous Innovation, in THE LAW AND THEORY OF TRADE SECRECY, CH. 19 (Rochelle Cooper Dreyfuss and Katherine
Strandberg eds., 2011) (Long, TRADE SECRETS).
22 See supra note 12.
23 See Terri Janke, Minding Culture: Case-Studies on Intellectual Property and Traditional Cultural Expressions, Case
Study Eight: Indigenous Arts Certification Mark 3–4 (2003), available at
http://www.wipo.int/tk/en/studies/cultural/minding-culture/studies/finalstudy.pdf (discussing main objectives of an
authentication system); Mariana Annas, The Label of Authenticity: A Certification Trade Mark for Goods and Services of
Indigenous Origin, 3 ABORIGINAL L. BULL., Mar. 1997, at 4. Often the holders of such traditional knowledge are the tribe
itself. See Long, TRADE SECRETS, supra note 21.
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authentication marks, establishing a procedure that provides an adequate balance between the
rights of indigenous peoples and the needs of the marketplace furthers both the goals of
respect for the human rights of traditional knowledge holders and the needs of developing
countries for viable branded goods that can compete successfully in the global marketplace.
Culture authentication marks may not necessarily comprise geographic designators, but
they nonetheless represent designators linked to precise territorial areas (homelands) and
present the same issues of meaning and signification as other geographic designators. For
example, the Maori historically have inhabited New Zealand. Maori-made goods, therefore,
have a strong land connection to New Zealand. Marks associated with the Maori, such as the
toi-iho mark to indicate authentic Maori-made goods,24 therefore represent products with a
geographic connection to New Zealand. So long as such goods remain authentic, then the
geographic and quality significations incorporated in the culture authentication mark should
be conveyed to consumers (assuming adequate promotion of the significance of the mark as
meaning “Maori-made goods”).25 Other culture authentication marks, however, are not so
transparent in their meanings. Consider the example of two indigenous groups located in the
United States: the Cherokee Nation and the Iroquois (the Haudenosaunee). Members of the
Cherokee Nation have traditionally been located within the geographic boundaries of the
United States. By contrast, members of the Iroquois live in two countries, the United States
and Canada, due to an historical division of territory in which the Iroquois had no voice.
Similar to the issues of conflicting geographies for purely geographic designators discussed
below in Section IV, the award of rights to a culture authentication mark must be crafted with
regard to reducing the potential consumer confusion that may arise. A designator of
“Iroquois” for tradition-based goods created by members of the Canadian Iroquois and
marketed in the United States would not accurately portray the true geographic origin of the
goods in question or the nature of those goods. Such lack of clarity is particularly critical
where practices between geographically dispersed tribes have diverged, as in the case of the
some Iroquois-produced goods. While the U.S. Iroquois forbid any commercialization of
ceremonial “False Face Masks,”26 Canadian Iroquois offer hand-carved versions for sale on
the Internet. In Canada, “Iroquois” false face masks would be an accurate designator of the
geographic and cultural characteristics of the goods. In the United States, it would be
misleading.
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24 The toi-ihomark, registered in New Zealand by the Maori, is used to promote and sell authentic, quality Maori arts and
crafts.Welcome to toi iho, TOI IHO, http://www.toiiho.co.nz (last visited Apr. 21, 2013).
25 See discussion infra Section III.
26 See Chief Leon Shenandoah, Haudenosaunee Confederacy Policy On False Face Masks (2001), available at
http://www.peace4turtleisland.org/pages/maskpolicy.htm (last visited May 5, 2013).
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IV GEOGRAPHICAL INDICATIONS AND THE STRENGTHENING OF
LOCAL IDENTITY
Local brand values are also enhanced through a rationalized system of protection for
geographical indications,27 appellations of origin,28 and other geographic signifiers that
represent local characteristics.29 Trademarks are source identifiers that by their very nature
are generally owned by a single holder and represent a privately owned business asset.30 By
contrast, geographical indications and other geographic designators represent collective
signifiers.31 They are used by the producers of a particular good from a particular region as a
consumer signal for geographically linked qualities. CHAMPAGNE for sparkling wines,32
IDAHO for potatoes,33 KALAMATA for olives,34 DARJEELING for tea,35 and
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27 Geographical indications are generally geographic terms and other indicators of the geographic origin of a particular good
where a given quality, reputation, or other characteristic is attributable to the geographic source of the product. See, e.g.,
TRIPS, art. 22(1) (defining geographical indications as indications which identify a good as originating in the territory of a
Member, or a region or a locality of that territory, where a given quality, reputation or other characteristic of the good is
easily attributable to its geographical origin); Council Regulation 510/2006, art. 2(1)(b), 2006 O.J. (L 93) 12, 14 (EC)
(defining a geographical indicationas the name of a region, a specific place or, in exceptional cases, a country, used to
describe an agricultural product or a foodstuff: originating in that region, specific place or country, and which possesses 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).
28 An appellation of origin has been defined as the geographical name of a country, region or locality which serves to
designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the
geographical environment, including natural and human factors.Lisbon Agreement for the Protection of Appellations of
Origin and their International Registration art. 2(1), Oct. 31, 1958, last amended Sept. 28, 1979, 923 U.N.T.S. 205
[hereinafter Lisbon Agreement] (emphasis added); see also Council Regulation 510/2006, art. 2(1)(a), 2006 O.J. (L 93) 12,
14 (EC) (defining a designation of originas a name of a region, a specific place or in exceptional cases, a country, used to
describe an agricultural product or a foodstuff: originating in that region, specific place or country, the quality or
characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural
and human factors, and the production, processing and preparation of which take place in the defined geographical area).
29 Other geographic signifiers include protected designations of originsand geographic indicia of production, such as
made in Greece.
30 Because valid trademarks must generally be subject to quality control to maintain their source designating function, see,
e.g., Dawn Donut Co. v. Harts Food Stores, Inc., 267 F.2d 358, 367 (2d Cir. 1959), most marks are generally owned by a
single holder that exercises control over the authorized use of the mark, see TRIPS, art. 15(1) (defining trademarks as signs,
capable of distinguishing the goods or services of one undertaking from those of other undertakings) (emphasis added).
31 Geographical indications are generally registrable by a group of producers of the relevant product. See, e.g., Council
Regulation 510/2006, art. 5, 2006 O.J. (L 93) 12, 14 (EC) (specifying that [o]nly a group shall be entitled to apply for
registration”). Similarly, collective marks are registered by a collective entity. See United States Trademark Law, 15 U.S.C.
§ 1127 (2006) (defining a collective mark as one used by the members of a cooperative, an association or other collective
group or organization) (emphasis added). Collective marks, and their role in proteting local characteristics, are discussed
more fully infra Section IV. Certification marks, when used to certify the geographic origin of a product are also generally
owned by collective entities, including governmental organizations, since these are most likely to have the critical ability to
exercise the appropriate level of control over the certification of qualifying goods. See US Trademark Manual of Examining
Procedure (TMEP) § 1306.02(b) (April 2013 edition).
32 See Lisbon Registration No. 231 (registered Dec. 20, 1967).
33 See IDAHO POTATOES GROWN IN IDAHO, Registration No. 2,914,309.
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ROQUEFORT for cheese,36 all provide significant consumer information regarding the
products with which they are associated. But beyond being information purveyors,
geographical indications, like trademarks, may represent reputational quality that can have
significant market value for the producers who use them. As Ludwig Baeumer points out:
The reputation connected with geographical indications typically exists not only in
the country where the geographical area to which the indication refers is located, but
also in other countries, in many cases even worldwide. Indeed, many of the products
for which geographical indications are used are marketed in many countries of the
world and represent a substantial share of the volume of exports of certain
countries.37
Despite the useful role that geographical indications may play in establishing local
market identities, they remain among the most contested rights in international intellectual
property law. At the center of the dispute is the relationship between local geographic
identities and global trademarks. Currently, the global protection of geographic designators is
based on two distinctive and contradictory theories of protection. As protected under TRIPS,
“geographical indications” are a particular category of geographic designators that are
generally protected against misleading uses.38 To qualify for protection, the designators must
be “indications which identify a good as originating in the territory of a 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.”39 By definition, a protectable
geographical indication can arise simply due to reputation, with no need for any unique
environmental causation. Moreover, the use of the term “indication,” as opposed to “name,”
potentially allows protection for symbols and other geographic depictions, thereby providing
a broader range of choices for local “brand the land” efforts.40
TRIPS, however, poses significant impediments to the use of local identities as a
counterbalance to the power of global marks. First, the so-called “first in time, first in right”
rule provides that trademarks take precedence over subsequently adopted geographical
indications.41 When a trademark has been applied for or registered in good faith, or rights
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34 See Door Database, ec.europa.edu/agriculture/quality/door/list.html (kalamata registered in Greece in 1996 as PDO)(last
visited May 5, 2013).
35 See DARJEELING, Registration No. 2,685,923.
36 See ROQUEFORT, Registration No. 571,798.
37 Ludwig Baeumer, The International Protection of Geographical Indications, WIPO SYMPOSIUM ON THE INTERNATIONAL
PROTECTION OF GEOGRAPHICAL INDICATIONS (1991).
38 TRIPS, art. 22.
39 Ibid. art. 22.
40 DANIEL GERVAIS, THE TRIPS AGREEMENT: DRAFTING HISTORY AND ANALYSIS 190191(2nd ed. 2003).
41 TRIPS, art. 24(5).
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have been acquired through good faith use before the related geographical indication is
protected in its country of origin, the right of use or registration of the mark cannot be
“prejudiced by the geographical indication.42 This first-in-time right assures that
geographical indications remain subsidiary to trademarks because the best they can hope for
is coexistence when conflicts arise. At worst, trademarks may well take precedence, at least
in those instances when a likelihood of confusion exists between the two.43
Most significantly, Article 24 of TRIPS allows member countries to decline to protect
geographical indications if the indication is “identical with the term customary in common
language as the common name for such goods or services in the territory of that Member.”44
This “country of use” veto explains why “Chablis” is a protected geographical indication in
France but is an unprotected generic term for white wine in the United States.45 Finally, while
TRIPS requires an absolute prohibition against the use of geographical indications for wines
and spirits that did not originate in the specified location,46 subject to a relatively
circumscribed grandfather clause,47 it allows all other geographical indications to remain
unprotected unless their use misleads the public as to the geographical origin of the good or
constitutes an act of unfair competition.48
By contrast, the Lisbon Agreement for the Protection of Appellations of Origin and their
International Registration (Lisbon Agreement) provides for heightened protection, yet for a
narrower range of protected geographic designators. Under the Lisbon Agreement, protected
appellations are limited to the “geographical name of a country, region or locality, which
serves to designate a product originating therein.”49 Protected appellations are further limited
to those geographic designators that indicate a “quality and characteristics … due exclusively
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42 Ibid.
43 See, e.g.., Florent Gevers, Conflicts Between Trademarks and Geographical Indications The Point of View of the
International Association for the Protection of Industrial Indications (AIPPI), in SYMPOSIUM ON THE INTERNATIONAL
PROTECTION OF GEOGRAPHICAL INDICATIONS 143, 15253 (1995) (contending that if geographical indications qualify as
signs under TRIPS, art. 16, they are prohibited from co-existence if they cause a likelihood of confusion with a pre-existing
trademark); see also Council Regulation 2081/92, art. 14, 1992 O.J. (EC) (rejecting co-existence as a sufficient remedy to
potential conflicts between geographical indications and trademarks).
44 TRIPS, art. 24(6).
45 Institut Natl Des Appellations DOrigine v. Vinters Intl Co., 958 F.2d 1574, 1581 (Fed. Cir. 1992); see also Vine
Products Ltd. v. MacKenzie & Co., Ltd., [1969] R.P.C. 1, 2526 (Ch.) (finding sherry is generic in the United Kingdom).
46 TRIPS, art. 23.
47 Ibid. art. 24(4) (permitting members to allow continued use of geographical indications for wines and spirits where such
indications were used in a continuous manner for at least 10 years preceding 15 April 1994 or in good faith preceding
that date).
48 Ibid. art. 22(2).
49 Lisbon Agreement, art. 2 (emphasis added).
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or essentially to the geographical environment, including natural or human factors.”50 Similar
limitations are contained in the European Union’s Regulation on the Protection of
Geographical Indications and Designations of Origin for Agricultural Products and
Foodstuffs.51
At the heart of the major disputes between those who follow TRIPS and those who
follow the Lisbon approach is the ability of non-originating countries to eliminate protection
for geographic designators based on the generic nature of the term in the country of use.
While TRIPS allows such genericide, Lisbon does not. Under Lisbon, so long as the
appellation remains protected in its country of origin, it must be protected in any country of
use, regardless of its local significance.52
The precedence of local meanings over country-of-use meanings would make geographic
designators potent sources for “branding the land” strategies. The assurance of a single global
identity, which could not be lost through over-popularization such as when trademarks
become generic, would give owners of such geographic designators a powerful incentive to
create strong quality significations. But under TRIPS, such precedence is absolutely
precluded.53 The permitted country-of-use veto under TRIPS makes the development of
strong local value identities problematic on a global scale. Even more problematic is the
limited scope of protection for exclusive geographic designators. Because TRIPS only
requires absolute protection for indications relating to wines and spirits,54 the ability to
develop a strong competitive market based on geographical indications remains limited.
The rationalization of the global protection for geographical indications has been slow.
Yet such rationalization is absolutely required to strengthen the value of local identities.
Current efforts to expand the categories of absolute protection beyond wine and spirits, or to
create a global register of protected designators, have faltered. The strengthening of local
brand values represented by geographic designators cannot continue without a rationalized
system for protection. This rationalized system should eliminate the major points of conflict
between the Lisbon and TRIPS systems of protection in a manner that assures a strengthening
of the value of such indications as an alternative to well-known marks and other global
brands. Such strengthening, however, must also maintain the appropriate balance between
geographic designators and trademarks to assure consumers receive accurate information
from the use of geographic designators.
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50 Ibid. (emphasis added).
51 Council Regulation 2081/92, art 2(a), 1992 O.J. (L 208) 2 (EC). The regulation also contains the identical definition for a
geographical indicationas in TRIPS. Ibid. art. 2(b); see also Decision No. 344 on Common Provisions on Industrial
Property, para. 129, Oct. 21, 1993, 34 I.L.M. 1635 (Andean Cmty.).
52 Lisbon Agreement, art. 6.
53 TRIPS, art. 24(6).
54 Ibid. art. 23.
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Because geographic designators serve a local branding function, their protection should
be based upon the same general principles as those governing international trademarks. These
principles include recognition of the need for exclusive rights, limitation of protection to
those designators that have a quality-differentiation value, and prevention of consumer
confusion regarding the quality/source of designated products. Geographic designators by
their descriptive nature—at a minimum, they describe the geographic origin of the goods—
are relatively weak brands. Protection should be limited to those designators that have
acquired some level of marketplace significance. Such significance may not necessarily rise
to the level of “distinctiveness” required to qualify as a trademark,55 but it should have some
level of recognition as a quality, characteristic, or reputation signifier in the marketplace.
Without such significance, there seems little reason to protect an indicator because it has no
relative value in the marketplace.56
For local brands to compete effectively in the global marketplace, such brands must
represent some level of quality to consumers, or they will not affect consumer choice in the
absence of emotional or other non-market-driven bases. While requiring a level of quality
distinctiveness would most likely necessitate a certain level of reputational expenditures
(probably through some form of advertising), such expenditures would be useful in
strengthening the brand value of local identities. Like trademarks, use of a geographic
designator, or its registration, is not alone sufficient to imbue the designator with value on a
practical level. Without commercialization of the meaning of the geographic designator,
including the characteristics of the goods associated with it, such designator will have a
limited impact on the ability of the producers to broaden the market for their goods.
Heightened consumer protection is a critical component of a rationalized system for
protection of geographic designators. The determination of the accuracy of a geographic
designator is not always easy, particularly when the product has been processed or prepared
in one region using raw materials from another region, such as Tequila produced in Texas
from imported blue agave cactus57 and Parma hams produced in London from Parma-raised
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55 Trademarks must be distinctiveto be protected. See, e.g., TRIPS, art. 15; Paris Convention for the Protection of
Industrial Property, art. 6quinquies; United States Trademark Law, 15 U.S.C. § 1052 (2006).
56 See Doris Estelle Long, Branding the Land: Geographic Indications and the Limits of Territoriality (2007) (draft on file
with author) (Long, BRANDING); Kal Raustiala and Stephen Munzer, The Global Struggle Over Geographic Indications,
18 EUR. J. OF INTL L. 337 (2007).
57 Tequila Rose described as a combination of strawberry cream liquor with a splash of tequilaat Tequila Rose
Strawberry, MCCORMICKDISTILLING.COM, http://mccormickdistilling.com/tr/strawberry.php (last visited Apr. 21, 2013). But
cf. Railean Silver Agavedescribed as an American Agave Spiritthat is perfect for Authentic Texas Margaritasat
Premium Blue Agave | El Perico Silver | American Agave, RAILEAN.COM, http://www.railean.com/products/el-perico-
silver.html (last visited Apr. 21, 2013).
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pigs.58 Consumer confusion may also arise regarding the nature of the designated goods from
the use of homonyms,59 or from cross-border geographic regions. Many geographic regions
extend beyond national borders, giving rise to potentially conflicting claims. The most
famous may be the dispute between Peru and Chile regarding the right to use the term “pisco”
in connection with a particular liquor. While both claim to be derived from the practices of
the Inca in this region of South America, the two “piscos” have distinctly different tastes.60
Perhaps most problematic of all, despite the relationship between the geographic
designation and physical territory, not every name for a geographic region is unique. To the
contrary, immigrants from one country often named new locations after their former homes.
Thus, when immigrants settled in the United States and established breweries using
traditional techniques from their home countries, conflicts over the use of the geographic
designators were inevitable. The fights between the holder of the Budweiser mark in the
United States61 and the Budweiser Budvar mark in the Czech Republic have been epic in
nature. They include the registration in 2005 of Budweiser as a protected geographical
indication in the European Union.62
Similarly, when Portugal officially recognized a new region called “Torres Vedras” in
1989, a potential conflict with the well-known TORRES mark for wine (owned by a Spanish
wine producer) arose. Under the governing European Wine Regulation, the subsequently
adopted geographic designator would take precedence over the TORRES trademark.63 The
Regulation was subsequently changed to avoid this result by providing that a well-known
“brand name” may coexist with an identical geographic designator for wine provided the
“brand name” was registered at least 25 years before the official recognition of the
geographic designator and used without interruption.64 A contrary rule giving precedence to
geographical indications would undeniably have supported local identity in Portugal. Neither
the former rule, nor its present incarnation, however, resolves the problem of consumer
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58 Case C-108/01, Consorzio del Prosciutto di Parma and Salumificio S. Rita SpA v. Asda Stores, Ltd. and Hygrade Foods,
Ltd. (2003) (use of Parma for ham that was obtained from Parma but packaged in the UK violated rights under protected
desgination of origin).
59 TRIPS expressly provides that homonymous geographical indications may be protected for wines except where the
indication falsely represents to the public that the goods originate in another territory.TRIPS, arts. 22(4) & 23(3).
60 See generally Gonzalo Gutierrez, El Pisco: Apuntes para La Defensa Internactional de la Denominaction de Origen
Peruana Fondo Editorial del Congreso del Peru (2005); Pisco Liquer Dispute between Chile and Peru,
http://www1.american.edu/ted/pisco.htm (last visited May 5, 2013).
61 U.S. Reg. No. 0064125.
62 Budejovikcy Budvar: Label Protection as per place of origin at www.budejovickybudvar.cz/en/o-
spolecnosti/znacky/ochrana-oznaceni.html (last visited May 5, 2013).
63 See Council Regulation 1576/89, art. 40(3), 1989 O.J. (EC) (providing that when a brand nameof a wine conflicts with
a geographical indication, the name can continue to be used only until December 31, 2002, and only if it was registered no
later than December 31, 1985).
64 See Council Regulation 3897/91, 1991 O.J. (L 368) 5 (EC).
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signification in the case of conflicting geographic designators.
In the era of globalization, a rule that automatically threatens trans-border commerce
should be disfavored. While the first-in-time precedence rule of TRIPS65 might arguably have
the benefit of predictability,66 such a principle does not necessarily serve the needs of the
marketplace for a viable method for securing greater market share for locally produced goods
while simultaneously providing accurate consumer significations connected to geographic
designators. Where potentially conflicting geographic designators arise, quality
differentiation combined with confusion reduction warrants protecting the term with the
greatest identification value. If the previously existing trademark continues to maintain its
role as a distinctive source identifier, then such distinctiveness should not be eroded by a
subsequently adopted geographic designator for a similar or related good. Continued
protection, however, makes little sense from a policy basis if the trademark owner has not
taken reasonable efforts to protect the mark against the loss of distinctiveness posed by a
geographical indication, including reasonable policing efforts. Furthermore, prior registration
should not grant a trademark owner pre-emptive rights if the mark itself was adopted in a bad
faith attempt to gain pre-emptive rights to a developing geographic designator. In the case of
a valid dispute between a legitimate trademark and a good faith geographic designator, the
effectiveness of alternative methods for resolving the conflict, including disclaimers, should
be considered. In all cases, the goal should be to protect the legitimate expectations of brand
owners while ensuring that the public receives accurate information about the products at
issue. Without a process for insisting on such distinctions, the value of geographic
designators as meaningful consumer signifiers remains problematic and “branding the land”
remains uncertain at best.
V TRADEMARKS: THE “OTHER” GEOGRAPHIC DESIGNATOR
There is no question that geographical indications and appellations of origin can serve
the role of recognizable consumer “brands” to support geographically sourced goods. These
indications can authenticate geographically sourced goods and can be used by all qualifying
producers/sellers/providers of such goods. Certification marks serve a similar purpose where
such marks are used to “certify” the geographic origin of the goods.67 They can also help
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65 TRIPS, art. 24(5).
66 Such predictability, however, is doubtful given the lack of clear rules on how to determine precedence and the right of
coexistence in certain instances. See WTO Panel Report, European Communities Protection Of Trademarks And
Geographical Indications For Agricultural Products And Foodstuffs, WT/DS174/R paras. 7.614, 7.619, 7.625 (2005).
67 See TMEP §1206.01 (defining certification marks under US law as including marks that certify that goods or services
originate in a specific geographic region). A certification mark is used to certify that a product meets certain specifications
and can serve as a valuable means of protecting signifiers that certify regional source or quality, including geographic
designators. See United States Trademark Law, 15 U.S.C. §1127 (2006) (defining a certification mark as any word, name,
symbol or device or any combination thereofused to certify regional or other origin, material, mode of manufacture,
quality, accuracy or other characteristics of such persons goods or services or that the work or labor on the goods or services
was performed by members of the union or other organization).
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assure that branded goods contain the necessary geographically based qualities to support
successful “branding the land” strategies since they require the specification of the qualities
that are being certified. In the United States, certification marks have largely assumed the
place of geographical indications,68 protecting such diverse geographic designators as
DARJEELING,69 ROQUEFORT,70 and JAMAICAN BLUE MOUNTAIN COFFEE.71
For geographic designators registered as certification marks, the registering entity has a
strong interest in maintaining the certification obligations that assure the branded goods retain
the necessary geographically sourced features to assure continued uniqueness in the
marketplace. While there is no absolute prohibition against altering these obligations, there is
a limitation to the degree of change that can be made. Fundamentally, a cheese cannot be
certified “Roquefort” unless it is produced in Roquefort, France. Certain qualities may be
altered if such changes do not alter the fundamental nature of the certification.72
Although certification marks facially appear capable of protecting the authentication and
consumer signification needs of geographic designators, they, nevertheless, remain somewhat
disfavored in many countries.73 This disfavor may arise from the perception that heightened
use demands, including advertising, exist to secure trademark protection. These heightened
use demands generally arise from the need to prove that an arguably descriptive term, such as
a geographic indicator of origin, has achieved a level of consumer recognition to qualify as a
distinctive source designator.74 As a practical matter, geographical indications also require
use to become effective “brands.”75 But legal protection of such indications has no
distinctiveness obligation.
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68 See US Patent and Trademark Office, Geographical Indication Protection in the United States (undated).
69 DARJEELING, Registration No. 2,685,923.
70 ROQUEFORT, Registration No. 571,798.
71 JAMAICAN BLUE MOUNTAIN COFFEE, Registration No. 1,414,598.
72 See TMEP § 1306.06(g)(i) (providing under U.S. law that the statement of specifications does not have to include details
of the specifications of the characteristic being certifiedbut urging the inclusion of more detailed specifications in the
application file if practicable).
73 Among the countries that do not presently provide protection for certification marks, per se, are the European Union,
Japan, Mexico, Russia and the Czech Republic.
74 See Geographical Indications and TRIPS: 10 Years Later… A Roadmap for EU GI holders to get protection in other WTO
Member Countries, COMMISSION OF THE EUROPEAN UNION COMMUNITIES (2007) (describing diverse problems posed by
countries using a certification mark system of protection for geographical indications). The United States, however, does not
require distinctiveness for certification marks. See TMEP, §13-6.02; United States Trademark Law, 15 U.S.C. §1052(e)(2)
(2006).
75 See Long, BRANDING supra note 56; Raustiala, supra note 56; Robert Brauneis and Roger E. Schechter, Geographic
Trademarks and the Protection of Competitor Communication, 96 TRADEMARK REP. 782, 817 (2006) (arguing that the
majority of geographic terms used as marks are neither clearly descriptive nor clearly arbitrarydue to consumerslack of
knowledge of the qualities associated with products from a particular geographic area).
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Certification marks also pose a potential issue with regard to the ownership of the mark.
There is no obligation that the mark owner represent the producers of the goods, merely that
it have the capability of certifying compliance by those who seek to apply the mark with the
applicable specifications. In fact, in many countries, governmental agencies often hold such
registrations. By contrast, collective marks76 not only provide branding and signification
benefits similar to geographical indications; they also provide marketing and producer control
possibilities that are not necessarily available under certification mark regimes. Collective
marks also allow the costs of marketing a new good, or at least popularizing that good, to be
spread over a larger number of interested parties.
Although legally certification marks, geographical indications, and the like may be
protectable upon use, as noted above,77 in reality goods bearing such indications are only
successfully marketed if the consuming public is made aware of the special value which
goods bearing such indications provide. For example, although “champagne” may be a
protectable geographical indication for sparkling wine from the Champagne region of France,
the term itself has gained a certain cachet among consumers in the United States as a result of
a concerted advertising campaign designed to encourage them to choose French sparkling
wine over local equivalents.78
In the real-world marketplace, simply attaching a geographical indication (or a collective
mark) does not generate sales. Informing consumers of the desirable nature of the good
bearing such indication does. The costs of advertising, however, can be prohibitive for
smaller or locally based industries. Collective marks, or more specifically the organizations
which own such marks, provide the immediate potential for both the creation of necessary
advertisements to promote the new collective “brand” and the spreading of costs among the
members of the collective organization who will be the direct beneficiaries of such
advertising. They also provide a critical basis for the development of investment clusters,
which can be used to organize and promote local handicraft industries. For example, the
village of Cumbe in Peru sought to promote the Chirimoya fruit raised by the villagers
through the registration of the collective mark “Chirimoya Cumbe.According to a report on
the issue by Luis Alonso Garcia Muňoz-Najar, the village chose a collective mark as opposed
to an appellation of origin because the village itself wanted to be the owner of the mark and
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76 Collective marks are generally used to promote goods or services rendered by a specified group, such as a union or
franchise. See United States Trademark Law, 15 U.S.C. § 1127 (2006) (defining a collective mark as one used by members
of a cooperative, an association, or other collective group).
77 See discussion supra Section III.
78 Champagne only comes from Champagne, CHAMPAGNE BUREAU USA, http://www.champagne.us (last visited Apr. 21,
2013).
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in control of its use, including the rules governing the application of the mark to the
Chirimoya.79
While the definition of a collective mark may vary among those countries that recognize
this type of mark, at the heart of a collective mark is the collective organization that is the
owner of the mark. Quite simply, a collective mark, by its very definition, cannot exist
without such an organization. The need for such a collective organization makes the
ownership of a collective mark essentially a four-step process. First, the organization to own
the mark must be created. Second, once the organization is established, a collective mark
must be selected. For geographic designators, the mark can be as simple as the geographic
term that describes the origin of the goods or may also contain images or symbols designed to
enhance its attractiveness to potential consumers. Third, advertising to enhance the use of the
collective mark as an authenticator of desirable goods is required. Finally, registrations to
protect the new collective mark to be featured prominently in such advertisements must be
filed in appropriate countries. Despite these initial start-up costs, collective marks can serve
as a critical component in marketing handicrafts and other local goods.
Many holders of geographical indications have the potential ability to spread the costs of
brand advertising over potential users of the mark. Yet such “licensing” fees may run counter
to local laws governing the use of such geographical indications.80 By contrast, collective
marks, by their very nature, are held by collective entities composed of members who can be
charged membership fees, portions of which can be targeted for brand marketing. Moreover,
such collective organizations can serve a vital commercial development role by helping to
bring together clusters of related businesses that can use their expertise to create a chain of
value with the potential to enhance the market placement of their goods. By bringing together
experts in a given field, the collective organization has the potential to organize competitive
groups that can craft valuable production standards for the associated goods provided by their
membership. More importantly, such a collection of experts potentially has the ability to
assure that any such rules are enforced so that branded goods retain their market value.
Absent specific legal prohibitions against such activities under domestic association laws,
collective organizations provide a ready source of both expertise and funding to create and
promote new brand identities.
Theoretically, geographical indications provide consumers information about the
geographic origin of the associated goods and, consequently, the unique qualities or
characteristics of such goods. For example, the term “tequila” tells consumers that the clear
liquid that they are drinking came from the tequila region of Mexico and has a slightly smoky
taste. By contrast, a collective mark may not necessarily be a “brand” mark per se, although
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79 See Chirimoya Cumbe - The Value of a Name, WIPO, http://www.wipo.int/sme/en/case_studies/chirimoya.htm (last
visited Apr. 21, 2013).
80 See Peruvian Framework Law on Regulatory Boards for Denominations of Origin (Law No. 28331), Art. 3 (2004) (no fees
established for authorization of right to use registered denomination of origin).
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most countries, including the United States, allow collective marks to be used by members on
goods.81 At its heart, a collective mark is a mark of association. It authenticates the associated
goods because they are affiliated with a collective entity which itself certifies (through
membership) the quality or characteristic of the goods. Thus, a collective mark assures
consumers of the quality of the good because the collective entity authenticates the goods
through its membership qualifications and use regulations for control of its mark.
Furthermore, collective marks are not limited to the narrow “uniqueness” that may be
imposed on certification marks or geographical indications. Briefly, appellations of origin are
limited to certifying qualities or characteristics that arise from environmental factors due to
the geographic source of the good.82 Geographical indications are similarly restricted
although they may be applied to goods that have achieved a certain reputation based on
geographic location without the need for any particular environmentally based quality or
characteristic.83 Certification marks are generally required to certify some aspect of the good
that is quantifiable. For example, in the United States, certification marks must be used “to
certify regional or other origin, material, mode of manufacture, quality, accuracy, or other
characteristics of such person’s goods or services or that the work or labor on the goods or
services was performed by members of a union or other organization.”84
Collective marks, by contrast, can create a brand identity from the simple banding
together or clustering of producers and sellers who have decided to create a market based on
their collectivity alone. Subject to the limits of unfair competition and related laws, a
collective organization can create a market demand for a product even if the only unique
aspect of that product is that a member of the organization produced it. It is, thus, the only
one of the geographically based designators that can be used to create market demand based
on a reputation for quality, potentially without the need for any particular unique
geographically based characteristic. In essence, a collective mark can be used to gain an
economic and market advantage for the collective based on its ability to signify that goods
bearing such marks are of a particular quality because they are produced by the collective
according to its regulations, even if such quality is not otherwise locally derived.
Collective marks also provide a significant basis on which to assure that tradition-based
goods are authentic because they have the potential to grant the holders of the traditional
knowledge used in creating the goods the right to control its commercialization. Some
countries, such as Mexico, limit the members of a collective to “legally incorporated
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81 See United States Trademark Law, 15 U.S.C. §1127 (2006) (defining a collective mark as being used by the members of
a cooperative, an association or other collective group or organization).
82 See supra note 6.
83 See generally TRIPS, art. 22.
84 See United States Trademark Law, 15 U.S.C. §1127 (2006) (defining a certification mark as including certifications of
regional or other originof the good).
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associations of producers, manufacturers, merchants or providers of services who use the
mark “to distinguish in the market the products or services of their members from products or
services of non members.”85 These more limited enumerations do not expressly prevent
indigenous groups from qualifying as an appropriate collective organization, although they do
appear to limit membership to those members of the tribe who actually participate in the
production of the goods themselves.
VI RECONFIGURING ENFORCEMENT POLICIES TO PROTECT LOCAL
IDENTITIES
To give local identities the support they need to create broader market appeal, it is not
enough to create strong cultural authentication and geographic designator regimes. The power
to enforce those rights must also be enhanced. A critical legal tool in enhancing such
enforcement efforts is a well-staffed and well-supported domestic trademark office. This
office is the logical repository for registration activities for the full panoply of geographic
quality signifiers, including geographical indications (and their associated designators
including appellations of origin), culture authentication marks, collective marks, and
certification marks. These source and quality signifiers represent valuable business assets and
potential investment opportunities. They can serve as potential security for commercial
growth and development. On the public side of the balance, they also serve as guarantors of
quality for the goods and services with which they are associated. But to serve as investment
tools, governments must quickly and, even more importantly, correctly grant registration
rights.
Finally, the creation of strong local identities cannot be secured unless mark owners are
protected against unauthorized uses. In addition to depressing the price for goods below a
competitive rate for producers of new goods, counterfeiting undermines consumer confidence
in the marketplace. Counterfeiting activities are not limited to well-known marks. To the
contrary, if a product is perceived to have some level of market power, it will be
counterfeited. Counterfeiting denies the local brand owner any financial reward for his or her
efforts and places the less well-established brands at risk of being unable to overcome any
reputational harm in the marketplace that counterfeit goods might cause. Such harm may be
particularly problematic for local producers using “branding the land” strategies since the
reputation of all locally produced goods can be harmed by an inauthentic counterfeit of
inferior quality.
Achieving local brand-enhancing enforcement, however, requires local governments to
reconfigure their enforcement policies to recognize the significance of geographic designator
protection to domestic industrial and commercial growth. Under a reconfigured policy,
registration and enforcement are no longer activities undertaken by developing countries to
support the monopolizing efforts of global mark owners. To the contrary, they serve as
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85 Trademark Law of Mexico, Article 96 (emphasis added).
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critical steps in the creation of valuable and viable local identities, which in turn serves the
domestic growth that is at the heart of sustainable economic development. This reconfigured
policy, however, must go beyond merely authorizing greater funds for enforcement or
training of appropriate enforcement officials. Enforcement policies that would include
protection of all geographic designators must be part of the country’s overall domestic
development agenda. Local governments should combine these policies with domestic
policies regarding consumer education and financial and training assistance for local
entrepreneurs, so that local values can be protected and enhanced. This requires a
reconfiguration of the mission of domestic trademark offices. Instead of serving as mere
registries for source designators, domestic offices must expand their role. Trademark offices
should coordinate to provide educational programs and support to local businesses regarding
the value of their local identities and the methods for enhancing global marketing efforts.
In Peru in the 1990s, for example, the Peruvian Intellectual Property Office (INDECOPI)
served as a liaison between local business persons and members of the local financial
community to assist both sides in realizing the economic and legal value of source
designators used on privately owned commuter van lines in the city of Lima. Such assistance
not only helped the van owners successfully combat third parties who used their marks on
gypsy vans, but also encouraged local investment in a growing industry. Similarly,
enforcement should be viewed as an arm of commercial development. Such reconfigurations
are critical to ensuring the necessary domestic support for the growth of local identity values
as a branding tool to expand the market potential for locally produced goods.
VII CONCLUSION
A “branding the land” strategy is no guarantor that locally produced goods will secure a
wider market appeal. Geographic designators may be imbued with unclear meanings of
quality that make their use as brand identities problematic. Terms such as “Virupakshi Hill”
for bananas and “Dongshan bai lu sun” for asparagus may have little meaning beyond the
geographic borders of the originating country at present. Others, such as “champagne,” may
be more evocative of a certain lifestyle than the true nature of the associated goods. But
where adequate advertising and other informational activities are used to promote clear
consumer meanings, geographic designators can serve as powerful “brands” in the “long tail”
economy of the twenty-first century.
To achieve their potential, “branding the land” strategies must be supported by legal
regimes that actually encourage the creation of geographically or culturally unique goods that
can be marketed under a geographic designator. This includes goods that embody the
traditional knowledge of indigenous peoples. International protection regimes must be
revised to strengthen the consumer signification of geographic designators and to reduce
consumer confusion when conflicting uses arise. Fortunately, in crafting “branding the land”
strategies, there are numerous geographic designators to choose from. Geographical
indications and appellations (denominations) of origin are obvious choices. For groups such
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as the holders of traditional knowledge, who seek even stronger control over the goods
bearing such designators, collective marks may be a more desirable choice. But until legal
regimes are better rationalized, any “branding the land” scheme will remain an uncertain
strategy at best.
Article
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This article reviews the international provisions applicable to the protection of geographical indications of origin (GIs) and elaborates on the benefits of GI protection for local development and consumer information. Yet, this article supports that these benefits are dependent on a strict linkage between the GI-denominated products and the territory from which they originate. This article also highlights how the current definition of GIs has loosened this linkage and criticizes this development. In particular, this article supports that today GIs have essentially transformed into marketing tools, which can play a strategic role in international trade in agricultural, food-related, and other products due to the competitive advantage that GIs can grants because of the evocative power that is embodied in the geographical terms. This development, however, questions the theoretical premise for protecting GIs as intellectual property rights altogether. Ultimately, this article advocates against this development and calls for a stricter enforcement of the territorial linkage between GI-denominated products and the terroir. © 2015, Max Planck Institute for Innovation and Competition, Munich.
Article
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The presence of foreign investment and the subsequent development of a commercial culture that facilitates participation in the global marketplace can have an adverse impact on indigenous culture. The “Coca-colonization” of non-Western, non-capitalist societies has become the new economic imperialism of developed countries. From eco-tourism to cultural tours and souvenir artifacts, culture has been transformed into a commodity that can be merchandised and sold across international borders. This “commodification” of culture is often achieved without the consent or participation of the holders of such cultural rights, particularly when those holders are indigenous peoples. This Article contends that even though the commodification and de-culturization of native and indigenous culture may be enhanced by the intellectual property protection regimes enacted by the developing countries at the behest of foreign investors, intellectual property does not have to play so narrow a role. To the contrary, despite the potential for misuse in supporting the commodification and de-culturization of native and indigenous culture, properly-crafted intellectual property laws may not only meet the protection demands of foreign investors but can actually shield a country’s cultural heritage against the leveling forces of globalizing de-culturization. The Article suggests several methods developing countries can use to create the intellectual property regimes demanded by foreign investors while also preserving indigenous culture from unwanted commodification. It demonstrates how copyright, moral rights, trade secret, patent and even trademark laws can be modified to protect indigenous culture while meeting international standards under TRIPS. While balancing the contrasting goals of economic growth and protection of indigenous culture is not an easy one, it may well be a matter of cultural survival.
Article
Incidents involving theft of indigenous peoples' traditional knowledge and the blatant appropriation of culture have become more widely acknowledged in recent decades. It is now apparent that international, national, and tribal laws must work together to protect the cultural property of indigenous groups. However, tribal law, which provides vital cultural context, must serve as the foundation. Unlike top-down legal systems, tribal laws reflect tribal economic systems, cultural beliefs, and sensitive sacred knowledge in nuanced ways that national and international regimes simply cannot. Accordingly, this Article offers two central reasons why the development of tribal law is critical for indigenous peoples to direct their own cultures and destinies in a technological world. First, the essence of sovereignty for indigenous peoples means exercising their inherent authority to define tribal laws and be governed by them. The development and enforcement of tribal legal systems reinforces tribal sovereignty and affirms principles of self-determination. Additionally, when extant and ascertainable, tribal law can influence dominant legal systems. Adjudicatory bodies increasingly draw on tribal law to address issues that go to the essence of tribal life. Focusing on the sui generis, tribal law systems of federally recognized tribes in the contiguous United States, this Article examines in detail the actions tribes are undertaking to ensure the preservation of their cultural property.
  • John S Wolfe
John S. Wolfe, Peru: Bembos Outcooks McDonalds (March 7, 2010), http://www.johnswolfe.com/business/peru-bembos-outcooks-mcdonalds (last visited May 5, 2013).
A Review of the Socio-economic Impact of Geographical Indications: Considerations for the Developing World) (discussing the positive economic impact of the use of geographical indications on diverse products)
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  • Cerkia Bramley
See, e.g., Cerkia Bramley, A Review of the Socio-economic Impact of Geographical Indications: Considerations for the Developing World, WORLDWIDE SYMPOSIUM ON GEOGRAPHICAL INDICATIONS, LIMA, JUNE 22–24, 2011 (WIPO 2011) (discussing the positive economic impact of the use of geographical indications on diverse products), available at www.wipo.int/edocs/mdocs/geoind/en/wipo_geo_lim_11/wipo_geo_lim_11_9.pdf (last visited May 5, 2013);
Geographical Indications (GIs): A Way Forward for Local Development: International Training Module (UMR Innovation 2007) (providing economic frameworks and analyses of the positive impact of the use of geographical indications on diverse goods)
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Astrid Gerz, Dominique Barjolle and Denis Sautier, Geographical Indications (GIs): A Way Forward for Local Development: International Training Module (UMR Innovation 2007) (providing economic frameworks and analyses of the positive impact of the use of geographical indications on diverse goods), available at www.intergi.org/Geographical_Indications.pdf (last visited May 5, 2013);
Toward More Universal Protection of Intangible Cultural Property
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See, e.g., Cathryn A. Berryman, Toward More Universal Protection of Intangible Cultural Property, 1 J. INTELL. PROP. L. 293, 297 (1994);
Traditional Knowledge and the Fight for the Public Domain
Doris Estelle Long, Traditional Knowledge and the Fight for the Public Domain, 5 J. MARSHALL INTELL. PROP. L. REV. 316, 321 (2006) ( " Long, FIGHT " );
Protecting Folklore Under Modern Intellectual Property Regimes: A Reappraisal of the Tensions Between Individual and Communal Rights in Africa and the United States, 48 AM
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See, e.g., Berryman, supra note 17, at 310; Paul Kuruk, Protecting Folklore Under Modern Intellectual Property Regimes: A Reappraisal of the Tensions Between Individual and Communal Rights in Africa and the United States, 48 AM. U. L. REV. 769, 776–80 (1999); Long, FIGHT supra note 17, at 318–21; Riley, supra note 17, at 77.
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