Geographical Indications &
Extension of
Enhanced Protection beyond Wines and Spirits
By Malavika Kumar
Geographical Indications (herein after referred to as GIs) are a form of intellectual property rights. A Geographical Indication is a sign which identifies a product as originating from a location that has given that product a special quality or reputation or other characteristic. For instance, "Darjeeling" (India famous for its tea) or "Mocha" (Yemen for coffee) and “Bordeaux” (France for wine).Though the term GI has been defined in varied manner, Article 22.1 of the Agreement on Trade Related Aspects of Intellectual Property Rights (herein after referred to as TRIPS) denotes GIs as follows:
“indications which identify a good as originating in the territory of a
Member, or region or locality in that territory, where a given quality, reputation or other characteristic of the good is
essentially attributable to its geographical origin.”
“Geographical indications are understood by consumers to denote the origin and the quality of products. Many of them have acquired valuable reputations which, if not adequately protected, may be misrepresented by dishonest commercial operators.
False use of geographical indications by unauthorized parties is detrimental to consumers and legitimate producers. The former are deceived and led into believing to buy a genuine product with specific qualities and characteristics, while they in fact get a worthless imitation. The latter suffer damage because valuable business is taken away from them and the established reputation for their products is damaged.”[1]
GI Related Concepts
Indications of Source & Appellations of Origin
There are two Agreements which deal with indications of source - Paris Convention for the Protection of Industrial Property of 1883[2]and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods of 1891.Though neither of the two treatises explicitly define indications of source the Madrid Agreement clarifies the term through Art.1 (1) which reads thus:
“All goods bearing a
false or deceptive indication by which one of the countries to
which this Agreement
applies, or a place situated therein, is directly or indirectly
indicated as being
the country or place of origin shall be seized on importation into any
of the said
countries.”
Based on the above definition an indication of source can be defined as :
Any expression or sign used to
indicate that a product or a service originates in a country,
region or a specific place, without any element of quality or reputation.[3]
Thus indications of source merely denote the direct geographical origin/place of the product. They do not include within their scope any distinct quality, characteristic or reputation of the product which can be attributable of the place of origin of such product. (E.g. Munchen Bier)
The term Appellations of Origin has been defined in the Lisbon Agreement[4] as follows:
“ ‘appellations of
origin’ means 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.”
From the above definition it can be inferred that a product to be protected as an “appellation of origin” must express a direct geographical name or a country, region or locality from which it originates (E.g. Stilton Cheese).Moreover the element of reputation is excluded from the purview of the above definition. Further, it is to be noted that the TRIPS definition[5] of a GI is inclusive of the term appellations of origin.
Existing Approaches for Protection of Geographical Indications
Unfair Competition
Protection against unfair competition at the international level is afforded through the inclusion of Art.10bis Paris Convention[6]. It requires all States party to the Paris Convention to provide effective protection against unfair competition, which is defined as “any act of competition contrary to honest practices in industrial or commercial matters.”[7]However at the national level different countries have adopted different statutes but the common thread underlying all the statutes is to provide those in trade with an effective remedy against unlawful and dishonest business practices of their competitors.
Protection under the Trademark Law
The United States protects geographical indications through its existing trademark regime - usually as certification and collective marks. Such a regime is already familiar to businesses; both foreign and domestic thus requires no additional commitment of resources.
The U.S. Trademark Act provides that geographic names or signs-which otherwise would be considered primarily geographically descriptive and therefore unregistrable as trademarks or collective marks without a showing of acquired distinctiveness in the United States- can be registered as certification marks.
When a geographical term is used as a certification, mark two elements are of basic concern: first, preserving the freedom of all the persons in the region to use that term and, second, preventing abuses or illegal uses of the mark which would be detrimental to all those entitled to the use of the mark.[8]
Collective Trademarks and collective service marks indicate commercial origin of goods or services just as “regular” trademarks and service marks do, but as collective marks they indicate origin in members of a group rather than in the origin in any one member.
Under the US regime it is possible to protect geographical indications as trademarks. As per the principles of the US Trademark law, geographic terms or signs which are geographically descriptive or misdescriptive of the origin of goods are barred from being registered as trademarks.[9] But where a geographic sign has “acquired distinctiveness” or a “secondary meaning” (i.e. the sign not only identifies the goods and services but also describes the source of such goods and services) in such cases the geographic sign is protectable as a trademark.
National GI Registration
Statutes (Sui Generis Regime)
To give effect to the treaty obligation under the TRIPS Agreement a number of countries have legislated statutes at the national level so as to protect the GIs in their home countries. Once such legislation is “The Geographical Indications of Goods (Registration and Protection) Act, 1999[10] passed by the Parliament of India. The Act contains several important definitions viz. “geographical indications”, “goods”, “producers” etc. The said Act also provides for the establishment of a Geographical Indications Registry and prohibits the registration of a geographical indication as a trademark.
The National GI Registration Statutes are in compliance with the TRIPS Agreement and aim to protect the indigenous products peculiar to each nation from being exploited by foreign companies on foreign soil.
International Registration
(Treaties)[11]
The principal international treaties that confer GI protection are:
Thus lack of active participation in the Lisbon Agreement gave way to the formulation of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).
Scope of Protection of GIs under TRIPS Agreement
Part II Section 3 of TRIPS:
Article 22 deals with the definition of GIs and lays down the general standards of protection that must be available to all GIs in order to avoid misleading the public and preventing unfair competition;
Article 23 though limited in its scope, confers additional protection for wines and spirits. The Article prohibits the use of expressions such as “type”, “like”, “kind” in relation to a GI for wines and spirits;
Article 24 outlines the requirements for future negotiations aimed at
increasing the protection of individual GIs conferred under Article 23, it further
indicates exemption of generic terms from protection and also provides certain assorted exceptions to GI protection.
Extending the Scope of Art 23(TRIPS)
WTO Members are currently engaged in a new Round of trade negotiations, the Doha Round. Listed as an issue of particular importance in the Doha Ministerial Declaration is the extension of the additional protection, currently provided only to GIs for wines and spirits to GIs for all other products. The issue of extension is of particular importance not only to developed but also to developing countries because of the value of the remunerative marketing of the agricultural, handicraft and artisan production.[12]
As mentioned earlier, geographical indications are currently afforded basic level of protection under Art.22 of the TRIPS Agreement. At the crux of the issue before the WTO is whether the higher level of protection conferred by Art 23[13] has to be extended beyond wines and spirits. Addressing this issue, are three sets of proposals submitted to the WTO representing two main lines of arguments. Firstly, E.U.’s detailed proposal, secondly the Joint Proposal[14] and thirdly Hong Kong/ China Proposal.
The European Union backed by various other countries[15] proposes to advocate extension of enhanced protection currently available to wines and spirits to all other products as well. In this regard it calls for an amendment to the TRIPS Agreement by adding an annex to Art.23.4 and also for the establishment of a multilateral registration system.[16]
Opposing the E.U.’s proposal for extension are the Joint Proposal member countries who argue that the existing protection under Art.22 of TRIPS is adequate. They caution that providing enhanced protection would be a burden and would disrupt existing legitimate marketing practices.[17]
Hong Kong/China propose for an “Alternative Model for a Multilateral System of Notification and Registration of Geographical Indications Established under Article 23.4 of the TRIPS Agreement.”
The opinion of member countries over the point of extension is highly contentious. The pro-extension countries argue that since Art.22 does not prevent the use of a GI in a translated form accompanied by expressions such a “kind” “like” “type”, these GI’s may be susceptible to dilution to the point that they may become generic. Opponents of extension counter strike that the risk is being over stated as “commercial experience clearly indicates that genuine, internationally registered GIs will always command a premium on world markets.”[18]
Pros and Cons of Extension
Diverse views have been exchanged at the WTO regarding the extension proposal. For the purpose of study, the impact of extension has been examined in the following sectors:
Impact on the relationship between Trademarks and Geographical
Indications
The proponents of extension advocate that reference to “wine” in Article 23.2 should be replaced by a reference to “goods.” Members are of the opinion that extension shall prove beneficial to producers from geographical locations, representative associations, as well as other interested parties by facilitating a more effective and less costly protection of geographical indications against trademarks.[20] Moreover, while deciding the issue of registration of a trademark, it would be simpler for the judges or other authorities to refer to a single objective criterion of the existence of a geographical origin for the product identified by the trademark consisting of a geographical indication.[21]
The opponents state that GI extension would missile conflicts with trademarks thereby restraining the trademark owner from using his marks or that the trademark owner be unable to stop other manufacturers from using similar terms that confused the consumers. In response to extension, it is further argued that the ‘extensionists’ inclination of giving geographical indications a priority over all established trademarks is devoid of any reason and therefore lacks substantial justification as to why one form of intellectual property needs to take precedence over the other.[22]
Impact on the treatment of Homonymous Geographical Indications
Proponents state that since Article 22.4 would continue to protect similar but not identical GIs, it shall also continue to apply where goods, name of territory, region or locality of a the Member protected as a GI is in conflict with similar names but doesn’t correspond to an existing location within a certain territory. This will help in preservation of the cultural diversity and colonization/ emigration flows and to foster trade solutions where markets would to be kept open for homonymous GIs due to the presence of adequate solutions for the co-existence of all products.
In response to the above, opponents are of the view that “trade fostering” would lead to serious challenges. The compliance and application of the practical conditions, being dependent upon third country, shall restrict trade and claw back condition will further hamper the co- existence of Homonymous GIs, as linked to the condition of traditional and consistent use.[23]
Impact on
Consumers
The Friends of GI or demandeurs express that the impact of extension will be beneficial to the consumers, who would be in a better position to make choices as more accurate information would be available at their disposal. Moreover the theory of extension is in tune with the principles of market oriented economy as it provides the consumers with free choice in deciding whether or not to buy a product with a specific geographical origin and special characteristics.
On the contrary, opponents are of the view that consumers are not currently confused with regard to the products they wish to purchase due to the standard protection under Article 22.The opponents further state that consumers would end up paying higher prices for products bearing GI protection as extension is bound to increase costs to the industry on account of re-naming, re-packing and re-labeling the products which in turn will have to be borne by the consumers.[24]
Impact on Producers
It is perfectly legal under the TRIPS to sell yoghurt of Bulgarian taste or feta of Bulgarian type.[25]This is due to the fact that Article 22 does not prevent free riding on the reputation of a product which displays unique features and a specific quality due to its geographical origin by other products bearing the same geographical indication but produced in other regions and not possessing the same qualities. To over come this anomaly, the proponents advocated amendment to Article 23.The draft proposal[26] contemplates that each Member shall provide legal means to the party interested to prevent use of geographical indications identifying “goods for such goods not originating in the place indicated by the geographical indication in question…”This amendment would offer better protection to legitimate producers of a product identified by a geographical indication against the illegal use of GIs for such category of products.
The opponents are of the view that the current protection under Article 22 and its implementation through the trademarks, certification marks system provides adequate protection for the GIs and that many countries are already taking advantage of this system of protection, for example “Stilton for cheese, ”Parma” for ham, “Swiss for chocolate. And therefore it is argued that the perception that Article 22 protection is insufficient springs from the fact of failure of Members to effectively and appropriately implement the existing obligations under Article 22.[27]
Burden of Expenditure and Procedure
The proponents have a positive answer to the question on whether Article 23 protection would reduce the burden and costs and increase effectiveness. They state that extension would offer a less costly and a greater legally secure protection for all GIs, both national and foreign. Secondly it observed that extension would not entail specific burdens on national administrations, other than that of developing legislation concerning the subject matter of extension as well as providing the interested parties legal means to stop abusive use of GIs. Thus the costs linked with protection of GIs will be borne by the producers and consumers’ associations and not the national administration.[28]
In response to the proponents the following issues have been raised:
Extension would require considerable amount of resources to set up the system and ongoing resources for its maintenance. Further, replacement of national systems not involving registration by a multilateral register would ultimately shift the burden of administering and enforcing geographical indication rights from the right holders onto the government. Finally the workload of trademark offices would increase sharply due to the fact that Article 23 applies “even where geographical indication is used in translation.”[29] Thus the opponents view extension as a burdensome and expensive procedure.
The view that extension imposes the rigors of cost on the government is not totally agreeable. This is partly due to the fact that the costs of administration with regard to GI protection have already been imposed at the national levels with the enforcement of the TRIPS Agreement. Moreover, what is really essential at this stage is to establish a forum to discuss the amount of technical assistance that needs to be rendered to Member states that lack the requisite infrastructure and systems to implement extension.
In conclusion, as observed by the E.U., geographical indications are intellectual property rights which stand on an equal footing with trademarks, designs and patents. And since none of the intellectual property rights discriminate among categories of products in granting protection, a GI should also be allowed to function in the same way as any other I.P. Since there are no legal or commercial reasons to restrict effective protection only to GIs for wines and spirits such protection should therefore be extended to other products as well.[30] Thus in the light of the above discussions, it can be concluded that the issue which is required at the WTO with greater propensity is not the justification of extension but achieving the same in a balanced manner.
Internet Resources
[1] WIPO-International Bureau, 2002.
[2] Art.1(2) and 10 of Paris Convention.
[3] Felix Addor and Alexandra Grazioli - Geographical Indications beyond Wines and Spirits. A Roadmap for Better Protection of Geographical Indications in the WTO/TRIPS Agreement.
[4] Art.2.1 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (1985)
[5] Art.22.1 of the TRIPS Agreement.
[6] Inclusion of Art.10bis Paris Convention at 1900 Brussels Revision Conference.
[7] Standing Committee on the Law of Trade Marks, Industrial Designs and Geographical Indications- www.wipo.int
[8] www.uspto.gov
[9] Ibid
[10] Act 48 of 1999
[11] Doha’s Impact on TRIPS:
Balancing Geographical Indications Protection-Clark.W.Lackert -www.wto.org
[12] Ibid 2
[13] Art.23.1 TRIPS Agreement- Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like.
[14] Joint Proposal- TN/IP/W/10 has been put forward by U.S., Canada, Argentina, Australia, Chile, Costa Rica, Dominican Republic, Ecuador, El Salvador, Honduras, Japan, Mexico, New Zealand, and Chinese Taipei.
[15] Countries advocating extension are Guinea, India, Jamaica, Kenya, Madagascar, Mauritius, Morocco, Pakistan, Romania, Srilanka, Switzerland, Thailand, Tunisia and Turkey.
[16]
E.U. Proposal Document- TN/IP/W/11
[17] www.wto.org
[18] Future Solutions for Protecting Geographical Indications Worldwide-Anselm Kamperman Sanders.
[19] Document No. WT/GC/W/546, TN/C/W/25-www.wto.org
[20] IP/C/W/353, Para
20-www.docsonline.wto.org
[21] Ibid 16
[22] Ibid
[23] “Protection of Geographical Indications, Interest of the Developing Countries & State of Play in Doha Round” by Raja Tahir Majeed.
[24] Document No. IP/C/W/386, Para 26;
Australia,IP/C/M/38, Para 81-www.docsonline.wto.org
[25] Bulgaria,IP/C/M/37/Add.1, Para 115
[26] Document No. TN/C/W/14
[27] Canada, IP/C/M/37/Add.1 Para.121
[28] Switzerland, IP/C/M/38, Para’s 204-105; WT/GC/W/540/Rev.1
[29] Japan, IP/C/M/38, Para 183.
[30] Document No. TN/C/W/14, page 1