ABSTRACT
Geographical Indications over time have emerged as a potential tool for the socio-economic development of a country. Geographical Indications are valuable assets for the producers of the designated origin as it helps to acquire a higher reputation and premium price. Since the Paris Convention, efforts have been made to protect the geographical origin of a product to boost international trade. Other concepts such as “Appellation of Origin”, and “Indication of Sources” were developed but “Geographical Indication” acquired an independent identity only under the TRIPS agreement. Although the TRIPs Agreement has recognized geographical indication as a separate form of intellectual property right under Section 3 to the satisfaction of the European Community, the protection provided to geographical indication is not harmonious and balanced. An unjustified hierarchy has been created in respect of the protection of wines and spirits on one hand and all other products eligible for protection under the geographical indication on the other hand. This leads to a series of debates in the world trade organization, to address the anomalies in the regime of geographical indication so that it can stand on equal footing with other forms of Intellectual Property Rights.
INTRODUCTION
The saga of human evolution has witnessed many developmental milestones and most significantly the marked genetic mutations reflected in man’s physique and features proclaiming his geographical ancestry and habitat. The ethnicity of the people, including the arts, crafts, goods, and trade coming from the region are unmistakably stamped with the distinctive style and attributes of their geographic origin and the goods like the inhabitants acquire a reputation linked to the region.
In fact, in many historical accounts, stories, fables, and folklore reference has been made to numerous products that have been uniquely distinctive and are the proud hallmark of the region in which they are produced like the Greek “Feta Cheese” made traditionally in Greece from ewe’s milk and finds mention in Homer’s Odyssey.[1] These specialized products are presumed to be the unique outcomes of the geo-climatic conditions, soil, intellectual ability & skills of the producer, or some specialty attached to that region that could not be replicated independently of the region. Consequently, a certain value and a price tag got attached to these products, which became a harbinger of the growth and wellbeing of that region and nation.
It is believed that artisans of Egypt were the first users of region-derived indication when the brick makers used a mark to indicate the origin of the bricks and stones used for building pyramids. During that time, the geographical indication was used as a sign of the quality and strength of the stones. In ancient Greece, Thespian wine from the Island of Thesos, in the Macedonia region, yielded a prime price of 20 drachmas for 20 liters for the unique quality. Even the use of place names for products like Parmigieno or Comté (also called Gruyère de Comté, a French cheese made from unpasteurized cow’s milk in the Franche-Comté region of eastern France) dates back to the 13th century. As such, in the 13th century, the producers had tried to use the origin as a marketing tool for deriving the premium price associated with the products.[2]
Although the association of products with their place of origin has been in vogue for a long time, the concept of “Geographical Indication” is a relatively recent phenomenon in the Intellectual Property Rights parlance. Geographical Indication indicates the rootedness of the product in the local environment which confers upon it a quality, characteristics, or a reputation, in such a striking manner that the name of the product itself includes a reference to the place of origin.
A geographical indication is a territorial name that conveys an attribute of a product or the goodwill of producers of that place. It is a unique category of intellectual property rights with collective ownership, linking a product with its place of origin and the producers. Geographical indications serve as a source identifier to indicate goods originating in a particular territory or region or locality in that region. Where the product’s quality is not directly observable to the consumer, the system of geographical indications represents a quality signal providing information about the product’s geographical origin and its quality. Geographical indications are indications of quality that let consumers know that goods come from an area where a given quality, reputation, or characteristics of goods are due to their geographical origin, which cannot be replicated elsewhere.[3]
Over the course of time, these Geographical Indications become valuable assets for the producers, fetching higher premium prices as the consumers are willing to pay more for the Geographical Indication designated products because of the elimination of uncertainty on the quality and origin of the product. The consumers are assured that these products come from the right region with desired qualities.
A consumer study organized by the EU Commission in 1999 has estimated that 40 percent of the consumers are willing to pay a premium of 10 percent for the origin-guaranteed products (EU Commission 2003). A consumer study by EU Commission has further highlighted that GI provides value addition to the producers by facilitating product diversification and maintaining specific quality standards. In product-specific studies, the Jamaica Bru Mount Coffee received a premium of US$ 14.50 per Kg, in comparison to benchmark prices of Columbia miles.[4]
The study by the European Commission has further highlighted that GI provides value addition to the producers by facilitating product diversification and maintaining specific quality standards. The French GI-designated cheese is sold at a premium of 2 Euro per Kg. over other non-protected cheese. Likewise, Italian Toscano Oil is sold at a premium of 20 percent, since it was registered as a GI in 1998. Further many of these products whose names are protected have experienced enhanced export during the post-GI period. It has been estimated that 85 percent of French wine exports and 80 percent of EU exported spirits use GIs as a marketing tool for promoting products both in the domestic and export markets. The trends have pointed out that products once registered can act as a riding force for free trade. Today Italian producers are calling their “Parama ham” the number one ham in Canada because of the protection of the product through the GI act and its widespread appreciation and acceptance by the consumers in Canada.[5]
Apart from the commercial potential, geographical indication also helps to protect the traditional knowledge, traditional cultural expressions, and cultural identity of a community associated with the product or its process of production. As Geographical Indication is a unique form of intellectual property rights that gives the collective right to the producers and enables them to protect their age-old traditional and cultural practices which may lose their identity over time and earn their livelihood.
As it is coupled with higher incomes and returns there is also fear of imitation, misrepresentation, misquotation, and misuse of Geographical Indication by non-genuine producers, who could by this way pocket profits actually meant for actual producers and deceive consumers who wanted genuine indigenous products.
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is the first multilateral agreement to provide recognition and definition to the term “Geographical Indication”. However, prior to this, there were two concepts linked to the term geographical indication. These are “indication of the source” and “appellation of origin” which were geographical identifiers. Both were incorporated into other international treaties and conventions. “Indication of source”, appears in the Paris Convention for the protection of Industrial Property 1883 and also in the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods 1891.[6]Neither the Paris Convention nor the Madrid Agreement gave a definition for indication of Source. Article 1(2) of the Paris Convention, while defining objects for the protection of industrial property, refers to “indication of source or appellations of origin”.“Indication of source” are signs that indicate a product originates in a specific geographical region, for example, labels saying “Made in Germany”, “Product of the USA” or “Swiss Made”.
The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (1958), though was the first of such Agreements to define the term ‘appellations of origin’, but it did not use the term ‘geographical indications. Article 2(1) of the Agreement defines ‘appellations of origin’ to mean “the geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are exclusively or essentially due to the geographical environment, including natural and human factors”[7]. Hence, the essential conditions for an appellation of origin to be protected under the Agreement are that it has to have a geographical name and the quality and characteristics of such appellation of origin should be essentially linked to the geographical area.
But the concept of “Geographical Indication” is more than just a source identifier and is broader than the appellation of origin. Article 22(1) of the WTO Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS) concluded as part of the Uruguay Round trade negotiations, provides a basic definition of the term geographical indications as follows:
” ‘Geographical Indication’, in relation to goods, means an indication which identifies a good as originating in the territory of a member, or a region or locality in that territory, where a given quality, reputation, or another characteristic of the good is essentially attributable to its geographical origin.”
TRIPS Agreement has granted minimum standards of protection to Geographical Indication under Section 3 of the agreement which all the WTO member countries are bound to follow. But TRIPS Agreement does not mandate a specific system for the protection of geographical indication. Therefore, members of WTO were allowed to choose the appropriate ways for the implementation of the TRIPS agreement. Due to different approaches adopted by different member States, it can be said that the implementation of geographical indication has occurred in the most diverse and uncoordinated manner.
In an increasingly globalized economy, Geographical Indications have become much more than a mere category of intellectual property rights. They play an important economic role. They serve to protect intangible assets such as market differentiation, reputation, and quality standards. But in respect of the protection of Geographical Indication under the TRIPS agreement, the anomaly of inconsistent treatment is a highly debatable and emotional issue. TRIPS agreement provides two levels of protection on the basis of product categories. While Article 22 of the TRIPS agreement provides a basic and general level of protection to products, Article 23 of the TRIPS agreement provides a higher and more absolute level of protection only for wines and spirits. There are no logical or legal reasons that could justify two different levels of protection in the field of geographical indication.[8]Several developing countries including India have been highly critical of this approach because of its adverse trade implications. Therefore, it is necessary to address the aversive provisions of the TRIPS agreement relating to the protection of Geographical Indication.
To treat geographical indications for wines and spirits differently from those for other products is substantively unjustified. The geographical origin confers, whether due to natural or human factors, intrinsic qualities to a good that a similar product without this origin will not have. The geographical origin, from a commercial point of view, has the same importance for all products. Often, the trade value of geographical indications for products other than wines and spirits is even higher than the specific geographical indications for a wine or a spirit. Examples include famous geographical indications such as Darjeeling tea, Carolina rice, Maine lobster, and Bukhara carpets. With the extension of Art. 23, the existing imbalance of Section 3 of the TRIPs Agreement will disappear, providing the same level of effective protection to geographical indications for all products.[9]
Hierarchy in the Protection of Geographical Indication
TRIPS Agreement provides a minimum standard of protection in respect of each intellectual property right which all WTO members have to comply with. However, it is left to the member countries to adopt their own legal mechanism to implement the mandates of the TRIPs agreement. Therefore, countries across the globe differ considerably in dealing with the protection of geographical indication. In countries like the United States and United Kingdom geographical indication is protected under Trademark law as a certification mark, in countries like Japan and Germany geographical indication is protected as a collective mark, and in countries like France and India protection is accorded to geographical indication through sui generis legislation. In respect of geographical indication, TRIPs mandates dual-mode of protection. Basic level protection has been provided to all designated products and advanced level protection has been accorded only to Wines and Spirits.[10]
Basic Standards of Protection
Article 22(2) of the TRIPs Agreement obliges all the WTO member countries to adopt effective legal measures in respect of Geographical Indication so that any interested party aggrieved by the use of false geographical indication can take legal recourse if such use misleads the public as to the true place of origin and constitutes an act of unfair competition. However, it is left to the member countries to choose their own suitable legal ways to protect geographical indication. Therefore, Article 22 (2) has two requirements to be fulfilled to allege a violation. Firstly, legitimate users have to prove that the public is misled by such false use, and secondly, that such false use amounts to ‘unfair competition. An act of unfair competition is to be interpreted in terms of 10bis of the Paris Convention (1967).[11] The wordings of Article 22(2) are relatively broad and leave ample space for free riders to take benefits out of this. For instance, if the true place of origin is mentioned in the product in which the false Geographical Indication is applied, it is very difficult to prove that the public is misled. For instance, a tea producer from Kenya may use the world-famous appellation “Darjeeling” on the package of his tea with the aim of free-riding on the reputation of “Darjeeling Tea”. But he can claim that he is not misleading the public simply by mentioning the true origin of his product which is ‘Kenya’ somewhere in the package, even if it is done in such a manner that is not noticed by the buyers. Therefore, this misleading test does not persuade to be a good tool to produce sufficient protection for legitimate geographical indication users. Since it does not prevent a producer from using a geographical indication on a product originated outside the geographical region implied by the indication, simply because its true place of origin is demonstrated in its package. Moreover, the “misleading test” required to avail protection under Article 22(2) can lead to many legal complexities at the global level also. Because whether the public is misled or not is a matter of interpretation and different country has a different perceived interpretation of this misleading test based on their national laws and regulations. Thus, this “misleading test” also leaves room for legal inconsistencies. Even in respect of the protection of geographical indication under trademark law, dual treatment exists. Article 22(3) of the TRIPS Agreement mandates member countries to refuse any application for registration or invalidate any earlier registration of a trademark if it contains any false misleading geographical indication. So, in order to get protection against any false use of the trademark for products other than wines and spirits, the aggrieved party has to prove that the public is misled by such use.[12]
Higher Standards of Protection
Article 23(1) of the TRIPs Agreement provides legal measures exclusively for Wines and Spirits. It mandates all the WTO member countries to provide legal protection against false use of geographical indication in respect of wines and spirits even if it is not misleading the public and the true place of origin is indicated. Member Countries shall also provide legal protection against the use of any geographical indication for wines and spirits in translated forms or accompanied by an expression such as ‘type’, ‘style’, ‘kind’ etc.[13] In sharp contrast to the public misleading test required in the general scheme of Article 22, Article 23 provides a higher level of protection in respect of wines and spirits. False use of geographical indication is absolutely prohibited even if the true origin of the product is mentioned in the label or if the indication is accompanied by any expression which may give the false impression that such product has any linkage to the well-known geographical indication. For example, the use of ‘Indian Champagne’ or ‘Champagne-like wine from India’ would be prohibited under Article 23 even public is not misled or that use does not constitute an act of unfair competition. Thus, the protection under Article 23 is absolute and unqualified. Moreover, in respect of protection under trademark law also wines and spirits enjoy exclusive protection. Article 23(2) of the TRIPs agreement mandates member countries to prohibit the registration of a trademark that contains a false geographical indication in respect of wines and spirits even if it does not cause any public confusion and deception in respect of the place from where it originates.
The absence of an effective shield to the products other than wines and spirits gives ample scope to the unauthorized users to free ride on the reputation of the products other than wines and spirits. This may be the reason why India could not prevent, a Texas-based US company from selling rice produced in America as ‘traditional basmati style’ or ‘American basmati’ when the original basmati rice originates from the Indian sub-continent.[14] In addition, Article 23(4) of the TRIPs Agreement provides that there shall be negotiation among the WTO member countries in the TRIPS Council for the establishment of a multilateral notification and registration system for geographical indications of wines (not the spirit). A multilateral register facilitates one single register among all WTO member countries which will maintain the details of all registered Geographical Indications of all WTO member countries. But there are no such corresponding provisions in respect of other products in Article 22. Thus, this article grants one more privilege to the right holders of geographical indications relating to wine. Since all the member countries of WTO-TRIPs are not wine-producing countries, establishing a multilateral register only for wine is unjustified. A multilateral register of geographical indication among WTO members is very essential because it will provide a “one-stop” shop mechanism covering all WTO members. Such a register would be simpler and cheaper for everybody. There would be less confusion among consumers.[15]
Need For Uniform Protection for All Products
The lack of uniform international protection under the TRIPS agreement in respect of geographical indication, along with the inability to reach a global consensus to remedy this, has placed many geographical Indications under the threat of becoming generic. A geographical indication becomes generic when it becomes a general descriptor for a type of product and loses its source-identifying capacity. Geographical indication names such as ‘French Fries’, ‘Bermuda’, or even ‘Rasgola’ became generic, because their respective right holders could not regulate the production and limit the use only to the producers of that particular geographical region. So over time they have lost their claim as the original producers of these products and have become common names for particular categories of goods which no longer originate from France or Bermuda or Bengal only. When a geographical indication turns into a generic name, it loses its economic value also. Although geographical indication is a unique form of intellectual property right as it is a community right unlike patent, trademark, or copyright which creates a private right but it stands on equal footing with other forms of intellectual property rights. But in respect of geographical indication TRIPs have made discrimination by providing a dual level of protection based on product categories which is not the case in any other forms of intellectual property rights. Since only a single definition of a geographical indication is given under TRIPs in respect of all products, there is no logical justification for dual treatment in the field of geographical indication. Higher protection to wines and spirits does not implicate any superior position of wines and spirits. It is only the result of negotiations made during the Uruguay Round. The geographical origin confers on the product, whether due to natural or manmade factors, some intrinsic qualities which cannot be found in other similar products originated in a different geographical origin. Therefore, geographical indication carries the same trade value for all products. But due to the insufficient protection given under Article 22 of the TRIPs agreement, developing countries that are mostly rich in agriculture, natural resources, handloom, and handicraft are not able to reap the potential commercial benefit of geographical indications. Therefore, to provide harmonious and balanced protection in the field of geographical indication Article 23 level of protection must be extended to all products and not only to wine and spirit. The extension would open new market opportunities for small-scale producers, and local rural communities in developing and least developed countries. Because products covered by adequate geographical indication protection can yield more income than traditional raw commodities exports. [16]
Exceptions To The Protection of Geographical Indication
Article 24 of the TRIPs Agreement opens the scope for future negotiations among TRIPs member countries in respect of the protection of geographical indication and allows some exceptions to Article 22 and 23 of the TRIPs agreement that members countries can envoke while implementing geographical indication protection in their national legislations. Article 24(1) provides that member countries should enter into negotiations to extend the scope of protection given under Article 23 of the TRIPs Agreement. Different countries have adopted different interpretations of this mandate. According to the demandeurs of the extension of additional protection beyond wines and spirits, this mandate actually opens the scope for future negotiations on the matter of whether and how Article 23 level of protection can be extended to all products eligible for protection under the regime of geographical indication. However, some member countries claim that the built-in agenda should only cover the extension of the protection of individual geographical indications for wines and spirits. But this is illogical to limit the negotiation mandate only to wines and spirits because they already enjoy enhanced protection under Article 23 and such a mandate would add to the imbalance that already exists in the arena of geographical indication. Article 24 (2) imposes on the Council for TRIPs a watchdog role to review the application of Articles 22, 23 & 24. Any matter that hinders the effective implementation of these provisions shall be brought to the notice of the TRIPs Council. Article 24(3) to 24(9) deals with the exceptions to the protection of geographical indication. These exceptions can be discussed under the following sub-headings:
Prior Higher Protection Not To Be Dismissed
Article 24(3) is not an exception but a standstill clause that states that Section 3 of the TRIPs Agreement shall not invalidate or dismiss any prior protection of geographical indication existing in any member country on the date of entry into force of the Agreement. This provision actually re-emphasizes the essence of Article 1 of the TRIPs Agreement which says that members may implement in their laws more extensive protection than is required under TRIPs. If any protection in respect of geographical indication exists in any member country which is at par or even more extensive than the protection given under Section 3 of the TRIPs Agreement, on or before the entry into force of the TRIPs Agreement, i.e. 1st January 1995, then the same shall not be disturbed.[17]
Prior Continuous Use
Article 24(4) addresses the question of the continuous use of geographical indication for wines and spirits. If a geographical indication for wines and spirits has been used in a continuous manner by the nationals or domiciliaries of any member country with regard to the same or related goods and services in that territory, the user can continue to use it if the two conditions are fulfilled: Firstly, the geographical indication should be in continuous use in that territory at least for 10 years preceding 15th April 1994 and secondly, the continuous use should be in good faith prior that date. The most famous example of continuous use is the case of Budweiser beer. The dispute is mainly between the two beer companies of the United State and the Czech Republic over the right to use the trademark name “Budweiser”. It is a long legal battle since 1907, which resulted that the Czech Company Budvar’ having the right to use the name “Budweiser” in beer bottles in most of Europe, and the U.S Company ‘Anheuser –Busch InBev’ has this privilege in North America. In North, America Budvar sells its beer under the name ‘Czechvar’ instead of ‘Budweiser, and in Europe, AB InBev sells its beer under the name ‘Bud’ instead of ‘Budweiser’. Although the US-based company may continue to use the brand name ‘Budweiser” in some countries pursuant of trademark agreements but its trademark registration in European Community has been denied because the Czech company Budvar proved that they had been using ‘Budweiser’ as a brand name on beer since five years prior the date of filing of the application for trademark registration in EU. Due to the prior continuous use both the companies are allowed to use the term ‘Budweiser’ as per the terms of the agreement between them.
Prior Identical Trademark
Article 22 and 23 of the TRIPs agreement mandate member countries to refuse or invalidate the registration of a trademark that contains false geographical indication if it misleads the public and in the case of wines and spirits even if the public is not misled. But Article 24(5) is an exception to this general rule. Article 24(5) of the TRIPs Agreement has provided a safety belt to those identical trademarks which are registered without any malafied intention either before the coming into force of Section 3 of the TRIPs Agreement or before the particular geographical indication is registered in its country of origin. Those immune trademarks shall have the ‘right to use’ even if identical with registered geographical indications. The ‘right to use’ a trademark is to be interpreted in terms of Article 16 (1) of the TRIPs agreement which gives the owner of a registered trademark exclusive right to prevent the use of any identical or similar mark which can lead to confusion. This protection is also available in case of the presence of an identical geographical indication if it causes confusion. So this would be a general ‘first in time, first in right’ system and the earlier of the protected mark or indication would prevail.
Use of Generic Terms
Article 24(6) of the TRIPs Agreement in its first part provides that member countries are under no obligation to provide protection to any geographical indication which is a common name for goods or services in respect of which it is applied, in the territory of that member. The second part of this article is a specific application of the same rule for ‘product of vine’. Members are under no obligation to protect any indication that is identical with the ‘customary name’ of a grape variety in their territory at the date of entry into force of the WTO Agreement. Article 24(6) does not use the term ‘generic’, but rather uses the phrase ‘customary in common language’.
Procedural Counterpart of Article 24(5)
Article 24(5) provides that, Trademark identical to a geographical indication will remain valid if it has been registered in good faith prior to TRIPs Agreement or if it has been registered before the geographical indication was protected in its country of origin. Article 24(7) provides that to avail of this right, the geographical indication holder must initiate the action within five years from the date when the use of protected geographical indication in ‘bad faith’ had become generally known or five years after the date of registration of the trademark if the registration takes place prior to the notice of adverse use. So, Article 24(7) is the procedural counterpart of Article 24(5).
Use of Personal Names
Article 24 (8) provides that protection of geographical indication under Section 3 of the TRIPs Agreement does not prevent any person from using that person’s or his predecessor’s name in the business, but if such use misleads the public then this exclusion will not be available. The determining factor in this provision is to focus on whether or not the use has or is very likely to mislead the public.
Not Protected In Country of Origin
Article 24(9) provides that “there shall be no obligation on the part of member countries to protect geographical indications which are not or cease to be protected in their country of origin, or which have fallen into disuse in that country”. In this regard, it is different from the protection of Patents which is independent of their treatment in the country of the invention. This exception has necessitated the member countries to first protect their valuable geographical indication in their country of origin. Because, unless geographical indication is protected in its country of origin, other member countries are under no obligation to honor the same. Therefore, India enacted The Geographical Indications of Goods (Registration and Protection)Act, 1999; to facilitate the registration of geographical indications of India and to provide protection to them.
Analyzing Ongoing Debates on Geographical Indication in The WTO
The scope of protection granted under TRIPs for geographical indication is limited to prevent the use of any geographical indication by producers not from the region designated by the geographical indication. It is also limited to preventing any act which constitutes unfair competition. Moreover, there are many unfinished agendas that are still pending at the WTO discussion table. There are mainly three issues in respect of geographical indication which are currently under negotiation in the WTO. They are-
- Creation of a multilateral register of a geographical indication for wines and spirits;
- Extension of the scope of the higher level of protection currently granted only to wines and spirits to all other Geographical Indications;
- European Communities’ “Claw-back” proposal in the agriculture negotiations
Debate On Multilateral Register For Wines
When concluding the TRIPs Agreement, it was agreed that there should be future negotiations on the establishment of a system where multilateral notification and registration of geographical indications for wines can be made and eligible geographical indications will get protection from all WTO members participating in the system by making one single registration. However, it is left to the member countries to decide the time frame of such negotiation and their mode of participation in the multilateral system. As per Article 23(4) of the TRIPs Agreement, there shall be negotiations among WTO member countries in the TRIPs Council for the establishment of a multilateral system of notification and registration of eligible geographical indications for wines, in order to facilitate more stringent protection of geographical indication for wines. However, the Singapore Ministerial Declaration of 1996 extended the scope of the provision to cover spirits as well. In the Singapore Ministerial Declaration, the establishment of a multilateral register was identified by the TRIPS Council as one of the built-in agenda items of the TRIPs Agreement which was an unfinished business of the Uruguay Round. The negotiation began in the TRIPS Council in 1997 and was subsequently subsumed by the Doha Development Agenda. In Paragraph 18 of the Doha Declaration, it was agreed to negotiate the establishment of a multilateral system of notification and registration of geographical indications for wines and spirits by the Fifth Session of the Ministerial Conference.[18] Pursuant to the Doha Declaration and the decision of the Trade Negotiation Committee (TNC) in February 2002, negotiations on the register have been held in the special sessions of the TRIPs Council. Due to the wide divergence on key questions of such a register, Special Session was unable to complete the negotiation by the Fifth WTO Ministerial Conference of Cancun. Since then negotiations are taking place within the overall time frame of the Doha Round. The issues on which member countries have not been able to reach a consensus are mainly pertaining to firstly, what will be the legal effects of the establishment of a multilateral register on the member countries and secondly, what will be the mode of participation, i.e. whether mandatory or voluntary.
So far, three proposals have been submitted by the member countries in respect of the mode of participation, and legal effects of the multilateral register.
- European Community Proposal
European Community [hereinafter referred to as ‘EC’] and their member states envisage a mandatory system of notification and registration with strong legal effects. Under this scheme, the multilateral system for registration of geographical indication pertaining to wines and spirits shall be applicable to all WTO members. Each member state is entitled to notify its domestic geographical indications that fulfill the requirements of the geographical indication as defined under Article 22(1) of the TRIPs Agreement to the WTO Secretariat. If there is any regional, bilateral, or multilateral agreement that provides protection to those geographical indications should also be notified to WTO Secretariat. Upon receipt, the Secretariat shall circulate the notification among the member countries, and any member country within 18 months from the date of such circulation can challenge the registration on any of the four grounds namely: i) the notified geographical indication does not fall within the definition of ‘geographical indication’ given under Article 22(1) of the TRIPs Agreement; ii) the notified geographical indication is not protected in its country of origin; iii) the notified geographical indication is a generic term for wines and spirits within Article 24(6) in the member country challenging the registration; iv) the notified geographical indication is a false- homonymous indication under Article 22(4) of the TRIPs Agreement. If there is no opposition within 18 months then the geographical indication for wine and spirit shall be registered. The multilateral register shall be available online, accessible to all the WTO members, and to the public.[19]
As per the Joint Proposal submitted by the United States, Canada, Chile, and Japan the multilateral system of notification and registration would be strictly voluntary. This system would be binding only on those member states who express their interest to the WTO Secretariat. Member states willing to avail the service of this scheme shall give notification of geographical indications for wines or spirits protected in its country of origin, to the WTO Secretariat. On receipt, the WTO Secretariat shall enter the same in the multilateral register for wines and spirits, which will be maintained online. It shall be accessible to all member countries and to the public. Participating members, at any time, may withdraw their previously registered geographical indication for wines and spirits from the register and may also terminate their participation by giving written notification to WTO Secretariat to that effect. Participation in this multilateral system by all the members of WTO would be recommendatory but not mandatory. This model of the multilateral system of notification and registration has been supported by many countries like Australia, New Zealand, Argentina, Costa Rica, etc.[20]
The Hong Kong China model has adopted a middle path that is neither as mandatory as the EC proposal nor as flexible as the US proposal. In the line with US proposal under the Hong Kong proposal, participation in the multilateral system of notification and registration would be voluntary but registration will create certain legal effects on the participating members, as provided in the EC proposal. Members willing to avail the protection under this scheme shall notify the administering body of geographical indications for wines and spirits protected in their place of origin. After the receipt of notification, the administering body shall undertake the examination of the notification, and upon satisfaction, the same shall be entered into the multilateral register. On registration administering the body will serve a copy of the certificate of registration to all participating countries. Moreover, the administering body on annual basis will also serve a copy of the register to all the participating countries for their reference. The register will be available on the WTO website to access by participating countries and the public. According to the Hong Kong Proposal, in all participating countries, the registration of geographical indication for wines and spirits under this scheme shall be admitted as prima facie evidence of the ownership of the indication. The Hong Kong proposal also suggests that the registration and notification system shall be subject to review every four years from the date of its establishment.[21]
The countries urging for a higher level of protection for all products beyond wines and spirits argue that the establishment of a multilateral register should be tied to the demand for higher protection. Which means that a multilateral system of notification and registration will grant absolute protection of geographical indication to all products, and not only to wines and spirits? Therefore both the issues i.e. establishment of a multilateral register and extension of the higher level of protection must be considered as a single issue.
Debate On Extension of Article 23 Level Protection To All Products
It has been realized by a group of countries that the dual-level of protection granted under the TRIPs Agreement is unjustified and against their common interest. Countries that are mostly known as “Friends of GI” (including India, European Union, Bulgaria, China, the Czech Republic, Hungary, Kenya, Mauritius, Nigeria, Pakistan, Sri Lanka, Switzerland, Thailand, Turkey, etc.) have been continuously highlighting the vulnerability of geographical indication designated products other than wines and spirits in the WTO forum from quite some time and arguing for absolute protection for all products without any discrimination.[22] These countries claim that there is no valid ground for such differential treatment of agricultural products, handloom and handicrafts, and other natural or manufactured products and point out the inefficiency of Article 22, which leaves ample scope for competitors to free-ride on the reputation of geographical indication because no legal action can be taken against the perpetrators so long as they mention the true origin of the product.[23] On the other hand, the United States and some other like-minded countries (including Australia, New Zealand, Canada, Argentina, Chile, Uruguay, etc.) are against such an ‘extension’ of additional protection given to wines and spirits, to all other products. According to them, protection provided under Article 22 of the TRIPs agreement is efficient to protect geographical indication, and providing any additional protection to other products would be a costly affair. Moreover, they also oppose the extension on the ground that, more strict protection of geographical indication would affect free trade among nations and producers’ activities as many products will have to be relabelled, which may result in consumer confusion. They argue that any changes in the TRIPs agreement will mean reopening of TRIPs agreement, but they claim that there is no mandate in the TRIPS Agreement, which may form the legal basis for negotiating such an extension.
As per the opponents, Geographical Indications that have acquired a distinct identity of their own can also be protected as certificate marks in other countries, thus there is no need for an extension. But it is to be noted that registration as a certification mark in other countries will not grant 23 levels of absolute protection, because a product protected in one country is not automatically protected in other countries. Moreover, it is an additional burden on the producers to obtain certification marks in every country. But the extension of additional protection beyond wines and spirits can be an effective step in the direction of fulfilling the main purpose of the Geographical Indication system. The issue of extension of additional protection beyond wines and spirits was a part of the discussions in the fourth Ministerial Conference of the WTO held at Doha in November 2001, which launched a new round of negotiations known as the “Doha Development Round”. The legal mandates for the extension of additional protection to all products can be found mainly in paragraphs 12 and 18 of the Doha Declaration. Paragraph 18 of the Doha Declaration stated that in order to complete the unfinished work of the TRIPs Council on the implementation of Article 23.4 of the TRIPs Agreement, there shall be negotiation among the WTO member countries on the establishment of a multilateral system of notification and registration of geographical indications for wines and spirits.[24] The negotiation shall be undertaken within the Fifth session of the Ministerial Conference. Moreover, it was stated that the matter relating to the extension of a higher level of protection of geographical indications beyond wines and spirits shall also be addressed in the Council for TRIPs, in the light of paragraph 12 of the Doha Declaration. Paragraph 12 of the Doha Declaration which would be the guiding lamp in the matter of extension of protection suggested two possibilities: Firstly Where there is any specific negotiating mandate in this declaration, the relevant implementation issues shall be addressed under that mandate only; and SecondlyThe other pending implementation issues shall be addressed as a matter of priority by the relevant WTO bodies, which shall report to the Trade Negotiations Committee (TNC), established under paragraph 46 of the Doha Declaration by the end of 2002 for appropriate action.
Member countries have adopted different interpretations of this paragraph in the view of the ‘extension’. Proponents of the extension such as India, Bulgaria, the European Union, Sri Lanka, Thailand, Turkey, etc. argue that there is a clear mandate to launch the ‘extension’, and the opponents of the extension claim that there is no mandate in Doha Ministerial Declaration for such an extension. Paragraph 39 of the Hong Kong Ministerial Declaration (13th -18th December 2005) provides that WTO Director-General should speed up his consultation on the outstanding implementation issues under paragraph 12(b) of the Doha Declaration without prejudice to the member countries’ position. Moreover, the General Council shall review the progress of the consultation, and based on these consultations WTO members are instructed to decide on appropriate action not later than July 31, 2006.
Debate On Ec’s “Claw-Back” Proposal In The Agriculture Negotiations
In respect of geographical indications for agricultural products, prior to the 2003 Cancun Ministerial Conference EC submitted a list of geographical names of European origin, that have been used by other countries either as a generic term or had been registered as a trademark in their countries. The aim of this proposal is to reverse such generic names to geographical indications and to limit their use for the producers in the geographical locations to which such indication refers. This proposal is known as ‘clawback’ because it focuses on reoccupying the exclusivity of producers of such terms which are in widespread use internationally. If this proposal is accepted, many WTO members would require invalidating conflicting registered trademarks and giving protection to geographical indications of EU that have turned into generic names. Such an obligation will ultimately lead to the removal of exceptions available under Article 24 of the TRIPs Agreement. Such a move received considerable opposition from the United States and other like-minded WTO countries as they believe that the negotiating mandate on agriculture set by Doha Ministerial Conference did not mention geographical indications.
Analysis
Goods assume value if linked to the perceived exoticness of the locality of production, uniqueness of the product and it being not commonly available as a commodity. In various studies conducted across Europe, some interesting consumer behaviors came to light, chief among them being that consumers were willing to pay a premium price for GI-designated products because of the elimination of uncertainty on the quality and origin of the product. In the battle for monopolistic conquests, the welfare of the consumers is usually overshadowed by the ambitions of the producers. Geographical Indication helps consumers by serving as a market differentiation tool and could also curtail market failure arising out of information asymmetry between buyers and sellers. More importantly, geographical indications effectively serve as a guarantee and assurance of authentic quality products, thereby minimizing consumer deception.
But there are many controversial provisions in respect of the protection of geographical indication under the TRIPs Agreement that adversely affects many developing countries in harnessing the potential benefits of geographical indication. The protection given to geographical indication for products other than wines and spirits under the TRIPs Agreement is not at all sufficient in today’s era of global trade competition. Because the protection of a geographical indication in its country of origin is an easy task but protection of geographical indication in foreign countries is a herculean task as registration of geographical indication in foreign countries involves lots of technicalities, the appointment of watchdog agencies to keep an eye on any misappropriation in foreign countries involve lots of expenses, and fighting of legal battles in foreign countries require lots of resources. Therefore, a more advanced level of protection is required beyond wines and spirits to tap maximum benefits out of those valuable assets. Non-wine producing member countries of the TRIPs Agreement have been facing lots of difficulties in protecting their valuable geographical indication in the international trade, because of the unjustified and illogical lower level of protection given under TRIPs. The debate on whether or not the absolute protection provided for the geographical indications of wines and spirits under the TRIPS agreement, should be extended to other products is a complex legal issue and equally political and emotional which requires extensive discussions. But any provision which is discriminatory towards all the non-wine producing countries, or against the principle of just and equity, or benefiting only a particular type of product must be subject to review. Any denial of the same is not only against the principles of natural justice but also against rule of law. Moreover, many valuable geographical indications are on the verge of turning into generic terms due to the inefficiency of Article 22 of the TRIPs Agreement. The need for a multilateral system of registration for all products and not only for wines and spirits is another demand that developing countries are making in the WTO discussion table. Therefore it is necessary for WTO to consider the grievances of developing countries on just and equitable grounds, otherwise, the entire geographical indication system will lose its spirit.
This article has been written by Ipsita Kaushik, Assistant Professor, School of Public Policy and Law Assam Rajiv Gandhi University of Cooperative Management, Assam.
References:
[1] A. Maheshwari, Building Brands Through GIs, 75, 80 in WTO, TRIPS and Geographical indications (GIs) (T.K.Rout & B. Majhi, 1st ed., 2014).
[2] T. K. Rout, GIs in the Domain of Intellectual Property Rights (IPRs),8, 9 in WTO, TRIPS and Geographical indications (GIs) (T. K. Rout & B. Majhi, 1st ed., 2014).
[3]V. Singh, The Law of Geographical Indications: Rising above the Horizon, 56 (1st ed.,2017).
[4]T.N. Singh, GIs and Socio-Economic Development, 65, 70 in WTO, TRIPS and Geographical Indication (GIs) (T. K. Rout and B. Majhi, 1st ed. 2014).
[5]Ibid
[6]Geographical Indications: An Introduction, World Intellectual Property Organisation, https://www.wipo.int/edocs/pubdocs/en/geographical/952/wipo_pub_952.pdf, last seen on 10/09/2021.
[7]World Intellectual Property Organisation, https://www.wipo.int/treaties/en/registration/lisbon/summary_lisbon.html, last seen on 05/08/2021.
[8] S. Chaturvedi, India, the European Union and Geographical Indications: Convergence of interests and challenges ahead, Discussion Paper No. 35, Research and Information System for the Non-Aligned and Other Developing countries (New Delhi), 2002.
[9]V. Singh, The Law of Geographical Indications: Rising above the Horizon, 56 (1st ed.,2017).
[10] S. C. Srivastava, Geographical Indications under TRIPS Agreement and Legal Framework in India: Part I, 9 Journal of Intellectual Property Rights, 9,11 (2004).
[11]UNCTAD-ICTSD, Resource Book on TRIPS and Development , available at https://unctad.org/en/PublicationsLibrary/ictsd2005d1_en.pdf (2005), last seen on 05/08/2021.
[12]D. Rangnekar, Geographical Indications A Review of Proposals at the TRIPS Council: Extending Article 23 to Products other than Wines and Spirits, UNCTAD-ICTSD Issue Paper 4 (2003) available at
https://unctad.org/system/files/official-document/ictsd2003ipd4_en.pdf, last seen on 11/09/2021.
[13] K. Das, Protection of Geographical Indications: An Overview of Select Issues with Particular Reference to India, Centre for Trade and Development Working Paper Series 8 (2007) available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1587372 last seen on 10/ 09/ 2021.
[14] M. Agdomar, Removing the Gr ving the Greek from Feta and Adding K eta and Adding Korbel t orbel to Champagne: o Champagne: The Paradox of Geogr x of Geographical Indications in International Law , 18 Fordham Intellectual Property, Media & Entertainment Law Journal. 542 (2007).
[15] S. Jain, Effects of the Extension of Geographical Indications: A South Asian Prospective, 16 Asia -Pasific Development Journal, 65, 66 (2009).
[16]A. C. Lang, On the Need to Expand Article 23 of the Trips Agreement, 16, The Duke Journal of Comparative and International Law, 487, 488 (2006).
[17]V. Singh, The Law of Geographical Indications: Rising above the Horizon, 56 (1st ed.,2017 .
[18]TRIPS Geographical Indications: Background and The Current Situation, available at https://www.wto.org/english/tratop_e/trips_e/gi_background_e.htm> last seen on 13/09/2021.
[19]World Trade Organisation, WTO Document WT/GC/W/547 TN/C/W/26 TN/IP/W/11 available at https://docs.wto.org/dol2fe/Pages/FE_Search/FE_S_S009-DP.aspx, last seen on 12/ 09/2021.
[20]World Trade Organisation, WTO Document TN/IP/W/10/Rev.4 available at https://docs.wto.org/dol2fe/Pages/FE_Search/FE_S_S009-DP.aspx last seen on 13/09/2021.
[21]World Trade Organisation, WTO Document TN/IP/W/8, available at https://docs.wto.org/dol2fe/Pages/FE_Search/FE_S_S009-DP.aspx , last seen on 11/09/2021.
[22] World Trade Organisation, WTO Document TN/C/W/14, available at https://docs.wto.org/dol2fe/Pages/FE_Search/DDFDocuments/38712/Q/TN/C/W14.pdf last seen on 10/09/2021.
[23]A.Felix and A. Grazioli, Geographical Indications Beyond Wines and Spirits: A Roadmap for a Better Protection for Geographical Indications in the WTO TRIPS Agreement, 5 Journal of World Intellectual Property 865, 867 (2002) .
[24]World Trade Organisation, WTO Document WT/MIN(01)/DEC/1, available at <www.wto.org/english/thewto_e/ minist_e/min01_e/mindecl_e.htm> last seen on 10/ 10/ 2021.