Wine tourism and co-branding
Introduction
1. Wine tourism is not only a way to re-appropriate and rediscover an important part of the culture of our peoples, both material and immaterial, an important component of the cultural tourism that, today more than ever, in the face of the challenges of climate change, must be protected and developed. Actually wine and food tourism can be a decisive component of a new sustainable development of our economies, even in their components apparently more distant from the agri-food sector: sustainable not only from an environmental point of view, but also from an economic, social and cultural one.
In fact, the reputation enjoyed by a quality wine does not only concern this product, but more generally its territory, which benefits from the positive externalities its wines create, as do all cultural goods and places in general. Therefore we have a legal and moral duty to protect and enhance these externalities, since they can be exploited and enhanced to more effectively sell other quality products and services of the same territory, which in turn reflect positively on it and thus also on wine and wine tourism, making them a competitive plus at an international level. In the global market in which we are called to compete, more and more the winning choice will be to be “glocal”, that is, aware and proud of our own peculiarities, but also ready to put them into play and make them known and appreciated beyond our national and regional borders.
The instrument that the law makes available to us for this work of valorisation and protection is intellectual property, if we know how to make creative and innovative use of it, also making use of the new tools that technology makes available to us and, first and foremost, the web, in its interactive version that is now consolidating and in the new digital environments that are emerging as the metaverse: taking up the new challenges that they pose for what they are, risks and changes, but above all opportunities.
Scope of protection of wine appellations of origin
2. The starting point for legal reflection on this issue is the scope of protection that the law attributes to wine appellations of origin and to the trademarks of these products, and more
generally to territorial trademarks, whether they are linked to a production tradition of a territory or to cultural, material and immaterial assets referring to it.
In an age in which, as has widely been reported, globalization of the economy does not mean simply market globalization but also globalization of the factors of production, and thus deterritorialization – and dematerialization – of the economy1, many quality agricultural products, including wines, at least in the European perspective, are based on an element of strong localization, which is stressed by designations denoting their origin. Yet this strongly “local” element is increasingly in need of “global” protection, i.e. protection not only in the countries of origin but also in the other markets to which these goods are exported. However, while the protection now accorded such designations is usually strong in their countries of origin, we are still very far from having satisfactory protection at the international level which today characterizes trade.
This is probably due to the fact that, unlike other fields of intellectual property such as those of trademarks and patents where, albeit with a series of differences, the position of developed countries is essentially the same, here the interests of those countries with a solid tradition of producing quality local agricultural products (and Europe is at the forefront) conflict strongly with the interests of those countries without such a tradition. The latter tend to favor their own producers who, using the former’s products as a model, distinguish their own goods with designations and symbols recalling the traditions they are inspired by, being commercially “towed along” by them.
The above mentioned conflicting interests explain why the minimum standard of protection which the TRIPs Agreement2 has accorded a series of institutes of intellectual property law for geographical indications is still extremely low. The rule of the TRIPs Agreement which concerns indications of origin in general (Art. 22) only protects them against public deception, while their use together with terms such as “type”, “model” and so forth, which does not mislead as to the origin of the product but undoubtedly involves linkage to the reputation of the “original” product, is only barred for indications relating to wines, for which the level of protection is traditionally higher (Art. 23).
Of course EU legislation is more developed and consistent, given the greater homogeneity of interests to be protected. There has been a succession of Regulations on wines with EC Regulation no. 479/2008 currently being the one in force.
What is worthy of note, however, is the development of scope of protection. While old Regulation (EC) no. 1493/99 only forbade (art. 50) the use of false indications, upon the conditions of articles 23 and 24 of the TRIPs Agreement, in the most recent version of the Regulation protection is granted – just as is the case with spirit drinks, under art. 19 of
1 Thus expressly CARLI, entry Indicazioni di provenienza e denominazioni di origine: II) Ordinamento comunitario, in Enc. Giur. Treccani, vol. X, Roma 1999, p. 3.
2 Agreement on Trade-Related Aspects of Intellectual Property Rights drawn up in Marrakech 1994 within the ambit of the Uruguay Round of GATT (General Agreement on Tariffs and Trade). Italy implemented the TRIPs Agreement by means of Legislative Decree 19 March 1996, no. 198, issued in implementation of the delegation contained in Law 29 December 1994, no. 747.
3
Regulation (EC) no. 110/2008 – against not only public deception, but also “a) any direct or indirect commercial use of a protected name: i) by comparable products not complying with the product specification of the protected name: or [please note the disjunctive: it introduces an alternative case: Editor’s Note] ii) in so far as such use exploits the reputation of an appellation of origin or a geographical indication”3.
This latter provision (which, as we shall see, derives from the provision adopted earlier for signs protected outside the viticulture and viniculture sector) is particularly significant since, in practice, it accords these designations protection against parasitical exploitation which also operates outside the category of goods to which a designation may belong. Hence these developments have made the Community discipline on the names of viticulture and viniculture products more homogeneous with the discipline on the names of other agricultural products, for which there had been the two-fold protection against public deception and exploiting reputation since its original formulation (with EEC Regulation no. 2081/92, replaced by Regulation (EC) no. 509/2006 and now by EU Regulation no. 1151/20124), both for protected designations of origin (P.D.O.) and for protected geographical indications (P.G.I.). The former may, to some extent, be equated with the designations provided by the Lisbon Agreement, since they presuppose that “the quality” or “the characteristics” of the product bearing the designation – and thus of its objective features – 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”. The latter are more similar to the indications of provenance of the TRIPs Agreement, since they require only that “a specific quality, reputation or other characteristic is attributable to that geographical origin” and that “at least one of the stages of production takes place in the defined geographical area”5.
Appellations of origin and trademark: a comprehensive protection against parasitism
3. Now, then, reputation of wine designations, like that of PDOs and PGIs, is protected directly against any form of parasitical exploitation, even should there be no public deception. This protection may therefore be equated with the protection accorded trademarks with a reputation.
The progressive coming together of the rules on designations of origin and those on trademarks can be seen not only as regards protection against any form of parasitism but also as regards – in strict correlation with the former at the level of balancing interests – the primary importance attributed to the fact that the sign does not mislead, which has always
3 Art. 45 Regulation (EC) no. 479/2008.
4 Regulation (EU) no. 1151/2012, which has also replaced the pre-existing Council Regulation (EEC) no. 2082/92 on T.S.G. (i.e. the traditional names of specific “traditional” agricultural or food products whose specific character does not “consist in provenance or geographical origin”: art. 4 of Council Regulation (EEC) no. 2082/92), thus also bringing the relative rules together into one single piece of legislation.
5 Art. 5. Art. 2 of Regulation no. 92/2081/EEC, however, requires that the entire “production, processing and preparation (of P.G.I.) take place in the defined geographical area”.
been fundamental for designations of origin and has now also become the keystone in the new trademark law.
This two-fold coming together also indicates a possible path towards harmonization of the rules at international level, creating the conditions for overcoming the current divarication between the position of EU Member States and that of non-EU Member States, especially the US and Asian countries. The World Congress of AIPPI (International Association for the Protection of Intellectual Property) held in Gőteborg in October 2006 passed a Resolution6 which proposed a ban on public deception and undue exploitation of commercial reputation as a guideline for resolving, at international level too, frequent conflicts between trademarks and designations of origin. It is extremely significant that this proposal was also approved by the North American delegates, thus indicating a possible path towards harmonization and a workable strategy for settling these conflicts on the basis of current rules.
As a result, in order to tackle (and prevent, if possible) these problems and to turn them in business opportunities, a global management strategy is needed, aimed at adapting the way of managing and even promoting these signs to the different kinds and levels of protection in each jurisdiction, including those that do not grant direct protection to wine appellations except within the strict limits of the TRIPs Agreement and where, therefore, in order to protect them more appropriately, it is necessary to register them as certification or quality marks: the common denominator of protection against deception and against the undue exploitation of their reputation allows us to obtain the result of stretching their scope of protection against any “unauthorized” activity that profits from their reputation.
Use profiting from the reputation of the sign made “with the consent” of the right owner
4. We did not emphasise this adjective “unauthorised” by chance: the exclusivity conferred by intellectual property rights, including those of wine appellations, consists in the right to use their subject matter and to prohibit others from using it, except with one’s own consent. On this consent – provided, of course, that it is only granted for appropriate initiatives – it is therefore possible to build a new model of territorial development, for tourism, but not only for tourism, in which wine appellations, together with the other distinctive signs of territorial authorities and cultural institutions can play an important role.
In fact the rules we mentioned appear appropriate to allow for a legitimate exploitation of the values inherent in “significant” geographical names and wine appellations, in particular through the granting of licences: in fact, the rule we mentioned first and foremost allow territorial public authorities, that are in charge to promote tourism, to make the best use of geographical names and other symbols linked to the territory as a means of exploiting the positive externalities linked to the territory’s fame, not only by prohibiting all forms of free-riding and parasitic exploitation of it but also – in a positive sense – monetising this fame, in
6 See https://www.aippi.org/download/commitees/191/RS191English.pdf.
5 particular by granting these signs for use to companies operating in the territory, naturally imposing precise limits on them to prevent the signs themselves from becoming a source of deception, and thus also acting as a flywheel for the development of initiatives localised in their own territorial area, but also for marketing projects on a global scale.
This possibility is even more significant – and a harbinger of triggering virtuous circles, both for municipal and regional coffers and for local economic activities – where the territory is linked to typical production (first and foremost, wines and other agro-food, but not them only: think of typical handicrafts or cultural institutions), because in this case it is possible to imagine registrations of individual or collective trademarks, aimed at exploiting the fame of wines and other typical products in order to promote the territory’s activities more generally, thus using the trademark instrument as a flywheel for growth and development, and at the same time as a source of income (through the collection of licence fees and possibly territorial merchandising activities).
Of course, even in this case, the consolidated rights of third parties, even only to the use in non-distinctive function of these signs, must be preserved: even if it cannot be excluded that a changed perception of the public may lead to the forfeiture of these prior rights or allow different forms of exploitation in distinctive function.
The same rationale, of course, hold with reference to the rules on wine appellations and other designations of origin and geographical indications existing in the geographical territory of interest, which allow the Consortia to promote, again also with a view to territorial enhancement, an active use of such signs in relation to products or services even other than the “typical” ones for which they are used and first and foremost for tourism purposes, but also for other businesses rooted in the territory.
In fact, it should not be forgotten that the primary interest of the parties entitled to use a wine appellation or denomination of origin/geographical indication is to promote the sign in question, expanding its reputation (and therefore its value and attractiveness) as much as possible, exactly as is the case for the owners of individual or collective trademarks. And it is undeniable that this objective – and the objective of promoting wine and food tourism – can also be achieved through use referring to products/services that are totally different from those for which the designation enjoys direct protection (including true and proper merchandising activities), also to benefit other activities of the territory on the international market.
At least in Europe, to this purpose we can take advantage of the new EU rules, given that Article 45 of the EU Trademark Regulation in its current wording expressly establishes that “groups” (Community definition of the role of consortia) among other things can adopt “measures aimed at improving the effectiveness of the regime” (and effectiveness that can be improved, by definition, also by strengthening the reputation of the sign on the market) as well as “measures for the enhancement of products”.
6. A viable territorial enhancement and competitiveness project for both wine tourism country reputation and business
5. In this perspective, both territorial trademarks and wine appellations or PDOs/PGIs (and the corresponding collective or quality trademarks intended to protect them in countries that do not allow their protection as such) lend themselves to being used in:
(i) targeted licensing operations, not only for merchandising products (such as gadgets or luxury products that can represent the territory), but also for products or services of not strictly “promotional” types (for example, machine tools or industrial products in general) or, in the case of wine appellations or PDOs/PGIs, for products that do not correspond to the typical products covered by the wine appellation or PDO/PGI, but which nevertheless have a link with the typical products covered by it and with the territory, in particular (and preferably) in that they are manufactured at least in part in the territory itself, and for which the use of that sign, perhaps together with the trade mark, may constitute added value, especially on international markets;
(ii) creation of synergies with tourism, hotel and restaurant operators located in the places of interest and interested in legitimately exploiting the signs covered by the project;
iii) co-branding operations with third parties (e.g. the already existing partnership “Franciacorta and Alitalia”), aimed at promoting the signs of interest also abroad;
iv) realisation of promotional and/or cultural events abroad, again with a view to mutual promotion of the territorial signs and those of the licensees/co-branders.
In this way, it is possible to imagine synergies between local authorities and/or consortia and enterprises, which translate into business paths with a global perspective, since foreign markets (and especially the new large markets opened up by globalisation) are those on which the appeal of foreign typical products may assume the greatest power of attraction, of course on the assumption that they are made known and recognised by the public, which once again emphasises the relationship between material products and culture. The key, once again, will be public perception, which is the decisive element both in establishing whether a sign is protectable and in delimiting its scope of protection.
These opportunities, too, are thus consistent with a new balance between exclusivity, competition and contracts, in which protection can only be accorded to what this protection really requires, in the awareness of the fact that rules are called upon to regulate concrete realities and that their justification is closely linked to the human experience of these realities, according to a perspective, which we might call natural law, of the adaptation of law to the interpersonal relations of real life.
CESARE GALLI, UNIVERSITY OF PARMA
