Grafting the Old and New World: Towards a Universal Trademark Register that Cancels Generic IGO Terms

Abstract

Territoriality is one of the important principles of trademark law; however, the principle of territoriality is problematic and leads to many conflicts in the era of globalized trade and e-commerce. The European Union (EU) and Switzerland have a doctrine of maximalist protection of Indications of Geographical Origin (IGOs) via public orchestrated registers that defy the territoriality principle. The EU and Switzerland face concomitant problems to promote rural development and authentic quality products based on their terroir. In contrast, the US and other New World countries are harnessing their existing trademark systems to protect IGOs and further innovation. US and other New World countries are also letting products with generic geographical names compete in their home and international markets. Specificity, protecting a sign only for designated goods or services, is another important principle of trademark law that can be and has been criticized. Without specificity, non-competitors would not be allowed to erode or tarnish the distinctiveness of a sign, no matter whether it is a trademark or IGO. The Geographical Indications (GI) provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) are the legal result of a political compromise between Old and New World countries. Where the two camps did not succeed multilaterally, they each have pursued their policy aspirations within their national jurisdiction and internationally via Free Trade Agreements (FTAs) and specialized bilateral IGO agreements. In 2019, the People’s Republic of China (PRC), one of the most important growth markets for IGOs, signed a specific IGO agreement with the EU, and in 2020 an FTA with the US which includes preferential IGO-related provisions. These recent normative developments suggest that the PRC’s IGO obligations are being rearranged. Combining the best of both systems, could create vital hybrids that could lead the way to new IGO standards for a future multilateral IGO agreement.