Administrative Appeals Tribunal decision in Provolone case causes controversy

Costa Rica

The Costa Rican Administrative Appeals Tribunal has rejected the opposition filed by a local company against the registration of PROVOLONE VALPADANA as a geographical indication.

The local company argued that the term 'Provolone' is of common use and refers to a specific type of cheese; therefore, it could not be considered as a geographical indication. In addition, the opponent argued that the European Union and the Consorzio Tutela Provolone Valpadana allow the use of the term 'Provolone' by different national and international cheese producers, since it has always been considered as a generic term.  

However, Costa Rica's highest administrative authority disregarded the fact that an individual or a state cannot own a generic term, and even ignored the protection that a geographical indication has in its country of origin. Therefore, cheese producers around the world are able to commercialise Provolone cheese in every country except Costa Rica, where they will be requested to change the labels and name of their goods.

The abovementioned decision not only damages local producers, but also gives international producers a negative image about commercialising their products within the Costa Rican market. In addition, the decision goes against the international principle of fair practices in the food trade, established in the Codex Alimentarius issued by the World Health Organisation and the Food and Agriculture Organisation of the United Nations.

The Costa Rican Authorities should keep in mind that trademark protection is tied to commercialisation and that, therefore, any decision will have a direct impact on local producers and importers. A lack of investigation and substantive analysis will result in unfavourable international consequences for the country.

María del Pilar López and Laura Valverde, Zürcher Lawyers, San Jose

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