Dr. Andrea Zappalaglio

Senior Research Fellow

Intellectual Property and Competition Law

andrea.zappalaglio(at)ip.mpg.de

Fields of Law:

Intellectual Property Law, WTO Law

Areas of Interest:

Geographical Indications, Patent Law, Trademark Law, Traditional Knowledge, International Intellectual Property Law, Private International Law

Academic Résumé

2016 - 2018

Adjunct Professor
University of Milan, Italy

2017 - 2018

Graduate Teaching Assistant in Patent Law
University of Oxford, GB

2014 - 2018

DPhil
University of Oxford, GB

2013 - 2014

LL.M
University College of London, GB

2006 - 2012

Combined Bachelor and Master Degree in Law
University of Milan, Italy

Academic Prizes and Honours

  • GlaxoSmithKline Prize for Excellence in Intellectual Property and Technology Law
    University College of London

  • Clarus Press Award
    University College of Dublin

  • P. Frassi Award for Industrial Property Law
    Universität Mailand

Memberships

  • International Association for the Advancement of the Teaching and Research in Intellectual Property (ATRIP)

  • Action Institute Italy

Publications

Books and Monographs

The Transformation of EU Geographical Indications Law: the Present, the Past and the Future of the Origin Link (forthcoming), Taylor & Francis, Boca Raton 2020.

    Journal Articles

    Sui Generis Geographical Indications for the Protection of Non-Agricultural Products in the EU: Can the Quality Schemes Fulfil the Task?, IIC - international review of intellectual property and competition law 2019, 03.12.2019 (together with Flavia Guerrieri, Suelen Carls). DOI

    • This paper analyses the suitability of the extension of the EU quality schemes – Protected Designations of Origin (PDOs) and Protected Geographical Indications (PGIs) – to the protection of non-agricultural products. In particular, the work develops an original investigation on the nature of these goods and assesses whether it is compatible with the scope of protection of the EU sui generis GI system, which is determined by the different origin link that characterises the two abovementioned quality schemes. The research, by applying a mixed comparative/empirical methodology and building upon a previously unpublished dataset, develops an analysis divided into three parts, reaching the following conclusions. First, if sui generis GIs were chosen as the means to protect non-agricultural products, the French legislation on the sui generis protection of handcrafts should be considered as the best practice. Second, the empirical analysis shows that, since non-agricultural goods are characterised by a loose link to a specific place, predominantly based on the on the product’s history and on its distinctive traditional method of production, PGIs seem to be fit for the purpose. Indeed, the analysis of a sample of non-terroir agricultural products protected by PGIs will highlight this parallelism. Third, evidence shows that PDOs could be useful only in a small number of cases while the rationale of Traditional Specialities Guaranteed (TSGs), despite not being origin labels, can be useful to define products that cannot be linked to a specific area by physical or natural elements. Therefore, the EU legislator should take these elements into consideration if it decides to extend the EU GI regime to non-agricultural products.

    The Debate Between the European Parliament and the Commission on the Definition of Protected Designation of Origin: Why the Parliament Is Right, IIC 50, 5 (2019), 595 - 610. DOI

    • On 1 June 2018 the EU Commission presented a Proposal for the reform of the EU CAP, including different aspects of the EU sui generis GI rules. In particular, this Institution has put forward an amendment to the definition of protected designations of origin (PDO), according to which the “human element” of the link between the product and the place, that has always been a key part of the concept of appellation of origin/PDO, should become optional, to be taken into consideration only “when relevant”. Allegedly, this amendment should enhance clarity and simplicity within the EU GI system. The present opinion disagrees and invites the Commission to reconsider the proposed reform. Indeed, on the one hand, this seems to be based on a disputable notion of the PDO origin link; on the other, it is likely to have a modest impact on the structure of the applications as the human element will always be relevant in order to establish a convincing terroir link. Thus, the goals that the Commission is determined to pursue – namely, the simplification of the system and the acceleration of the registration procedure – will hardly be achieved. More specifically, this opinion submits that this specific amendment concerning the definition of a PDO should not be included in the future reform of the EU Law of Geographical Indications because: (1) it is based on an idea of GI protection that was discarded with the introduction of the EU sui generis GI regime in 1992; (2) it adopts a disputable concept of terroir; (3) it could potentially weaken the foundations of PDO and makes it less justifiable with respect to third countries; and (4) it is apparently inconsistent with the recent reform of the Lisbon Agreement, that the Commission itself is endorsing and recommending to the EU Member States.

    The Role Played by the US Government in Protecting Geographical Indications, World Development 98 (2017), 35 - 44 (together with Caroline Le Goffic). DOI

    • Unlike what is usually thought, the US public institutions play a crucial role in the protection of Geographical Indications (GIs), as trademarks or as AVAs appellations of origin for wines, to guarantee that all legitimate operators have the right to use GIs. Although the US institutions and scholars have often criticized the EU sui generis GI regime, practice shows that the two systems have much more in common than what emerges superficially. Indeed, in the US several collective marks aimed at protecting indications of geographical origin are managed and funded by public bodies or agencies. Furthermore, the US practice often procedurally recalls the European regime of GI protection and, in general, the overall development of the US system shows that it is heading toward a regime that is at least very compatible with, if not similar to, the EU one. Finally, concepts such as “terroir”, that is one of the theoretical pillars of the French–European GI regime, are increasingly accepted in the US context as well. Therefore, the analysis conducted shows how the practical aspects of the management of GIs in the US contrasts with the traditional narrative according to which GI protection in the US, guaranteed by trademarks, the self-regulated system of private law, and the European administrative-based system are substantively different and irreconcilable.

    The Exhaustion of Trademarks in the PRC compared with the US and EU experience: a dilemma that still needs an answer, EIPR 38, 10 (2016), 610 - 619.

      International exhaustion of trade marks and parallel imports in the US and the EU: how to achieve symmetry?, Queen Mary Journal of Intellectual Property 5, 1 (2015), 68 - 86.

        The Protection of Geographical Indications: Ambitions and Concrete Limitations, Edinburgh Student Law Review 2, 4 (2015), 89 - 102.

          Reviews

          Review of: Hein, Wolfgang; Moon, Suerie: Informal Norms in Global Governance. Human rights, intellectual property rules and access to medicines, Ashgate, Farnham 2013, XVIII, 241 S., ISBN 978-1-4094-2633-2 hbk., (2014) 130 (Jun) Law Review Quarterly, 524.

            Research Papers

            The Puzzle of Reputation in EU Protected Geographical Indications: Can Traditional Specialities Guaranteed Provide a Solution?, 2018, 5 pp. DOI

            • In EU GI Law, Protected Geographical Indications have become the predominant quality scheme and, in particular, the history of the product and their relationship with the area of origin has become the main origin link. This linking factor can lead to distortions, however. These notes reflect on the contribution that Traditional Specialities Guaranteed could provide to correct these issues. They lead to the conclusion that this is an idea worth exploring, although it has its drawbacks too.

            1899-1963: the untold story of the Italian model of GI protection and how it failed, European Policy for Intellectual Property Conference, Oxford, 2016.

              InnovAction Life Sciences (Action Institute, 2016), 2016, 31 pp. (together with Tommaso Giommoni et al.).

              • The Italian economy, as the latest data suggest (GDP + 0.6%), seems on the path to recovery. To return to a sustained growth, however, the country must not only repair its fractured economy, but must also invest in the new sectors that are driving global innovation: the digital economy as well as the life sciences. Action Institute, through the InnovAction project, has already written about the Italian digital economy and how it could contribute to the country’s new growth. Today, we want to briefly survey another key sector, life sciences. The Policy Brief highlights that there is a large space in which to manoeuvre to boost the already productive life sciences sector. Action finds four critical points in the legislative system that, if modified, could potentially further increase the sector’s efficiency and innovative potential. First of all, overcoming the “Academic Privilege” by shifting patents’ ownership to universities instead of individual inventors would put the sector in line with its global peers. This reform, together with a revision of the criteria for the allocation of public funds among universities and the transformation of the Technology Transfer Offices (TTOs) into highly specialized profit centres, have the potential to create a much more favourable ecosystem for the sector’s innovation and profitability. Fiscal incentives as well, however, need to adapt in order to further promote R&D. During 2015, lawmakers have already introduced new instruments such as the tax credit and the Patent Box to support these investments. Action recommends to further enhance these instruments by (1) shifting to indefinite extension for the tax credit and (2) aligning the Patent Box with the more favourable tax structures applied in other EU countries. Lastly, Action recommend changes to the sector’s financing structure by (1) overcoming the current logic of public transfers and (2) promoting an incentive package for venture capital firms to start playing a national and not regional role. The proposal below aims to develop practical solutions to enhance the Life Sciences sector in Italy in terms of capacity to produce research and to create links with the business to be submitted to policy-makers.
              • https://www.actioninstitute.org/en/pubblicazione/innovaction-life-sciences/

              The Piadina Romagnola Mess. A New Legal Case for an Old Question: What Is a GI?, 2015. DOI

              • This contribution analyses the “Piadina Romagnola PGI” case, recently decided by the Italian administrative courts. The case reveals an interesting theoretical contrast between two ways of interpreting the function and the essence of EU GIs, in particular in the field of PGI products, i.e. recipe-based or know how-based product whose link to the place of origin cannot be scientifically proved (unlike PDO “terroir products”). It will be concluded that the problem that emerges from this case is a real one and, although it is not possible to provide a universal answer, the concept of PGI may need to be re-conceptualized in the near future.

              The Protection of Traditional Knowledge within WTO Legal Frame: (Again) a TRIPs Failure?, 2014, 14 pp. DOI

              • The present paper is aimed at sharing my sceptical views concerning the future of the TRIPs Agreement and its ability to provide solutions to the current challenges in the field of International Intellectual Property Law (IIP). In particular, this analysis will focus on the failure to provide protection for Traditional Knowledge (TK) through the law of Geographical Indications (GIs). It will be argued that TRIPs was not drafted with the intention of starting a new course in the history of IP law by reconciling the needs of IP exporters with those of countries without an IP tradition. As a result, we have an unbalanced system that is impossible to reform and incapable of playing a role in the protection of TK. Currently, the principal occupation of an IIP specialist is not to understand how to reform the TRIPs, but rather how to bypass it. Thus, it will be suggested that informal norms, whose importance is increasing in modern international law, can play an interesting role in the IIP field as well.

              Go back to go forward? New Indications of Geographical Origin for a New Developmental Policy, University of Edinburgh, 2014.

                Lectures

                04/09/18
                Linking Products and Place: a focus on PGI
                Location: Berlin

                Courses