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“I do not feel obliged to believe that the same God who has endowed us with sense, reason, and intellect has intended us to forgo their use.” - Galileo Galilee
The whole world in its present form is driven by the innovation, which no doubt has changed a Gramophone Record to an I-Pod, an abacus to a computer, a penny mail to E-Mail, TV Antenna to Dish TV, Bank to an ATM machine, bullock carts to BMW’s and so on. All these innovations are the creation of human mind constituting the intellectual property. So to bring these innovations before the society every business house invests in advertising signs such as names or other distinctive logos, signs or devices used on products, services, companies and now, on web site on the internet. For this purpose there is a particular category of distinctive signs, which identifies a product, whose qualities, or other characteristics or just reputation, is closely associated with a particular geographical area.
A Geographical Indication (GI) of origin is essentially a place name that identifies the geographic source of a good and signifies a distinctive quality, reputation, or other characteristic of the good that is essentially attributable to that geographic source. Names such as ‘Darjeeling’, ‘Basmati’, ‘Champagne’, etc are examples of some such well known GIs that are associated throughout the world with products of a certain nature and quality.
Which should be given protection in order to ensure that it is used in industrial and other activities for the betterment of society, to obtain financial gain for the owner, & to motivate others to create further intellectual work? The essential and constituent link between the products origin and their quality or reputation has always been the essential element or sine qua non, on which various jurisdictions have construed GI protection. This protection typically takes the form of “rights” (Intellectual Property Rights) afforded to the owner to use this intellectual property towards these purposes, and expressly forbidding others from making similar use of such property.
Well-known examples of these are ‘Champagne’ for sparkling wine from this district in France, ‘Scotch’ for whisky from Scotland or ‘Darjeeling’ for tea from this district in India known as geographical indications and represents enormously valuable goodwill built up over years of association by consumers with the product and the geographical area.
A geographical indication is a sign used on goods that have a specific geographical origin. The goods (agricultural, natural or manufactured goods, handicraft and industry goods like food stuff) possess qualities or a reputation that are due to that place of origin. Since these qualities depend on the geographical place of production, a specific link exists between the products and their place of origin. For example, ‘Kanjeevaram silk’ denotes the product from Kanjeepuram in South India, ‘Kolhapuri chappals’ from Kolhapur and ‘Aplhonso mangoes’ from Mumbai.
The GIs in its earliest form can be traced back to the Egyptian Civilization where the brick-makers in order to indicate the origin related resistance of bricks and stones with which pyramids were made used these marks. Its relevance can be linked to ancient Greece, where Thasian wine from the island of Thasos in Macedonia fetched a price of 20 drachmas for 20 liters. One also learns that Parmigiano or Comté dates back to the 13th century and that Washington potato can be traced to the 19th century. Over the past centuries, European countries have taken the lead in identifying and protecting their intellectual properties. The first intellectual property laws (albeit in crude forms) appeared in Venice in the 15th century, in England in the 17th century, followed by other industrialized countries in the 18th century. GIs, as an idea, too, are of European origin, with a subgroup of countries, namely, France, Italy, and Portugal, taking a special interest in promoting them.
GIs have also historically served as indicators of the commercial quality of the goods that they identify. Traditionally, GIs have been used primarily to identify agricultural products that derive their qualities from their place of production and are influenced by specific local factors, such as climate and soil. ‘Idaho’ potatoes or ‘Bordeaux’ wines are examples of famous GI for agricultural products. Agricultural products, however, are not the only products that can be or are identified by GI. Unique qualities, due to the materials and labor associated with the place where they are manufactured, have also characterized products, such as ‘Swiss’ watches, etc. Another notable feature as regards GIs is the very special type of right that they grant to their beneficiaries. GIs cannot be ‘owned’ by just one or a few owners. Similarly, GIs cannot be licensed because their use strictly depends on their relation with the geographical place they identify. Instead, GIs are traditionally owned and exercised collectively by all those persons that are residing and producing products in those geographical areas. GIs first gained currency in the 1800s, when there was a move to define territories and organize production of special products. But the term ‘geographical indication’ was for the first time used in the Trade Related Aspects of Intellectual Property Rights agreement.
The most famous and lucrative GIs today all have origins in developed countries, for example, Cognac, Roquefort Cheese, Tequila, Pilsen, Napa Valley Wines, Scotch Whisky, Sherry, Parmigiano Reggiano, Teruel and Parma Hams, Tuscany olives, and so on. Most items pertain to drinks, meat, cheese, fruits, vegetables and, sometimes, clothing and crafts. An overwhelming share of protected GIs in Europe belongs to wines and spirits, whose trade value runs into billions of dollars. the better-known examples of GIs in Asia are: Basmati rice, Phu Quoc fish sauce, Long Jing tea, Himalayan waters, Alphonso and Sindhri mangoes, Hunza apricots, Bhutanese red rice, Mongolian cashmere, Pakistani shaul (windproof woolen fabric) and ajrak (designs from Sindh), jasmine (Hom Mali) rice and Thai silk, Lao Agar fragrance, Sumatra Mandheling coffee, Shaoxing alcohol, Maotai, Xuancheng art paper, and Ceylonand Darjeeling teas. The prospective consumers are thus, told that the products to which they are affixed come from an area where a given quality, reputation or other characteristic of the products is essentially attributable to their geographic origin.
Geographical Indications - As a TRIPS concernTRIPS defines GIs as indications (words, phrases, symbols, images) that identify a good as originating in the territory of a WTO 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. This definition draws on two established concepts: Indication of Source (IS) and Appellation of Origin (AO), which trace their formal origins to, respectively, the 1893 Paris Convention and the 1958 Lisbon Convention on Appellations of Origin and their Registration. IS refers generally to any expression or sign used to indicate that a product originates in a country, or a specific place (for example, Made in Mongolia), while AO refers to the geographical name of a country or locality (for example, Champagne), which serves to designate a product originating therein, whose characteristics are exclusively or essentially due to that geographical environment.
The TRIPS Agreement requires that WTO Members provide the legal means for interested parties to prevent the use of a GI that: (1) indicates or suggests that a good originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; or (2) constitutes an act of unfair competition. The TRIPS definition highlights the source-indicating capacity of the indication. Not every indication can rise to the level of a GI. There must be a link between at least one characteristic of the good and the particular region where it was produced. In turn, that link must be material to the consumer’s purchasing decision.
The proposal tabled by the European Union centers around a register for geographical indications administered by the WTO Secretariat. Member states would be responsible for supplying geographical indications to the Secretariat, and protection would become automatic in other member states unless objections were raised within one year. The procedure thereby closely resembles the one under the Lisbon Agreement. Proposals by the U.S. and Japan also called for an international register, yet without any binding effect on WTO member states.
It has often been argued that such a distinction between different categories of a singularly defined IPR is inconsistent with the rest of the TRIPs Agreement, because no other singularly defined IPR provides for different levels of protection for different categories of goods. Also, from a commercial perspective, there seems to be no salient difference between GIs on wines and spirits and those on other goods. It is submitted that till the time the hierarchy provided for by Section 3 is eliminated, the integrity of the TRIPs Agreement as an intellectual property instrument will remain questionable. As far as the implications of the above hierarchy are concerned, it must be noted that in order for a GI to get protection under Article 22, the undue use of it has to mislead the public as to the geographical origin of the product or must constitute an act of unfair competition. This is referred to as the ‘misleading test’ requirement of Article 22. There is no such requirement as far as Article 23 is concerned. So, a producer may mention the product’s true origin on the label and use a GI for his product even if it does not originate in the territory purported.
Thus a producer can profit by free-riding on the renown of a famous GI and at the same time claim that it is not misleading the consumer. On the contrary, Article 23 ensures that GIs associated with wines and spirits are accorded a higher level of protection, in cases where they are used to identify the same products. The protection provided by Article 23 applies to cases when a GI associated with a specific kind of wine/spirit is wrongfully used on another wine/spirit not originating from the place identified by the GI concerned.
However, the general protection of Article 22 applies in cases where the GI associated with wines/spirits be abusively used on products other than wines/spirits, not originating from the place indicated by the GI. For example, the Indian GI ‘Darjeeling’ identifying tea was used on say, biscuits from France. By way of illustration, if Article 23 is amended to include other products than wines and spirits, it would prevent any tea company from marketing its orthodox tea as ‘Darjeeling tea, produce of that country’ or as ‘Darjeeling type tea’, with the true origin of the product indicated elsewhere. As of now, Article 22 does not provide for this kind of protection and injured parties have no recourse in cases where someone else free-rides on their goodwill. Additionally, if such a trend is allowed, it also puts the GIs at risk of becoming ‘generic names’ over time.
Article 22.1 of the TRIPS Agreement defines geographical indications which are protected by the TRIPS Agreement as:"indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin".
Although, there is one identical definition for all geographical indications, Section 3 of Part II of the TRIPS Agreement provides for two different levels of protection for geographical indications. Article 22 covers geographical indications for products other than wines and spirits. In contrast to Article 23, Article 22 limits the protection of geographical indications to cases where the public is misled by the use of a geographical indication as to the true geographical origin of the product, or where such use constitutes an act of unfair competition ('misleading test'). Article 23 provides for so called "additional" protection of geographical indications in the field of wines and spirits. Under Article 23, there is no need to prove that the public is misled or that there is unfair competition by using a certain geographical indication. The use of accompanying expressions such as "style", "type", "kind", "imitation" or the like are prohibited qua lege and protection is also provided when the indication is used in translated form.
The burden of proof does not rest with the plaintiff of the geographical indication. Under Article 23, competitors not producing within the geographical area are simply prevented from using the corresponding denomination, and they may not use trademarks containing or consisting of geographical indications used to identify wines or spirits (subject to the exceptions provided for in Article 24). Hence, the protection in Article 23 for geographical indications for wines and spirits is notably enhanced compared to that provided in Article 22 for geographical indications for other products, which relies on the 'misleading test'. The current differentiation regarding the level of protection for geographical indications made by the TRIPS Agreement in Article 23 for wines and spirits and in Article 22 for all other products is reminiscent of the perception of the relevance of geographical indications in the pre-TRIPS era.
It is the result of a compromise agreed upon at the time of the Uruguay Round, which mandated further work to improve protection for geographical indications. The requirement of the 'misleading test' in Article 22 is tailored to suit unfair competition or consumer protection regulations but not intellectual property protection. Compared to the protection granted by Article 23 to geographical indications for wines and spirits, it does not provide a sufficient intellectual property protection for the benefit of the producers entitled to use a geographical indication. It enables free-riding by other producers on the renown of a geographical indication.
A producer may use a geographical indication for his product, even if it does not originate in the territory purported, as long as the product's true origin is indicated on the label. Thus, a producer can profit from the use of a "famous" geographical indication and argue at the same time that it is not misleading the consumer. As an example of such a misguidance, let us just think of the case where a producer uses the geographical indication 'Geneva' on a clock-face, even though the clock does not originate from Geneva, but engraves the true origin on the back of the clock. This has been effectively exploited in Europe but is yet to be put into practice in developing nations where traditional goods (agricultural and non-agricultural) have been in existence for centuries. The provisions are yet to be effectively explored by governments in most developing countries. It may also be noted that once the geographical indication has been registered in a country one must proceed to have it internationally accepted so that it is globally recognized as a geographical indication.
Quality can be measured by a number of factors, e.g. by way of trade marks, certain methods of production (e.g. biological products), by way of parameters such as environmentally friendly, but also by geographical region. The potential in Asia is enormous. One only need think of coffee products originating from, e.g. Indonesia. It is beyond doubt that the century-long promotion of quality teas from Darjeeling, Assam and Ceylon has been economically beneficial to these regions, and has contributed to the development of tea. The same could be possible for Indonesian coffee. The same could also be possible for the Thai silk industry that in the future might wish to develop further grades in quality beyond the general indication “Thai Silk”.
There could also be an enormous potential for the use of geographical indications with respect to tropical fruit. Israel joined the Lisbon Agreement for the Protection of Appellations of Origin in order to have its famous Jaffee oranges protected. Thus, quality controls have boosted the customer confidence. GIs cannot be licensed because their use strictly depends on their relation with the geographical place they identify. Instead, GIs are traditionally owned and exercised collectively by all those persons that are residing and producing products in those geographical areas. Most importantly, GIs confer to their legitimate users the exclusive rights to use this distinctive designation, which grants it additional economic value. As for their functions, GIs have traditionally played a fundamental role as source identifiers by informing consumers about the origin of the goods to which they are affixed. GIs also help in promoting the goods of a particular area insofar as they avoid consumer confusion by preventing inappropriate use of GI by unauthorized parties.
Most GIs potentially draw on products related to agriculture, fisheries, crafts and artisan products. These sectors remain important to the lives of the poor. This point is important when one considers that other IPR categories such as patents, trademarks and copyrights are overwhelmingly owned by industrialized countries and their wealthy corporations, which spend significant resources on research, development and marketing. Ninety seven per cent of all patents worldwide belong to the industrialized countries, including 80 per cent of those granted in developing countries (HDR 1999). GIs, in contrast, have the potential to be more evenly owned: even subsistence based societies, with low levels of technology, can promote their traditional products and know how.
In The Scotch Whisky Association, William Grant and Sons Limited, William Grant and Sons International Limited and William Grant and Sons Distillers Limited v. Golden Bottling Limited , the relief prayed for by the plaintiffs was granted and the defendant and those acting under the defendant were restrained from using the word 'Scot' or any other word similar thereto in the whisky manufactured and sold by the defendant. Similar rulings were adopted by the Delhi High Court as in Time Incorporated v. Lokesh Srivastava and Anr., Microsoft Corporation v. Yogesh Popat and Anr. and Cartier International B.V. v. Cartier Enterprises.
There is no justification for two levels of protection for geographical indications. The difference in treatment according to products concerned is an anomaly in the intellectual property system of the TRIPS Agreement. Geographical indications stand on an equal footing with other intellectual property rights such as trademarks or copyright. In none of the other fields of intellectual property rights is a difference made in the level of protection of those rights according product categories. A uniform level of protection applies.
There are no logical or legal reasons which could justify two different levels of protection in the field of geographical indications. There is no substantive justification for a discriminatory treatment between geographical indications for wines or spirits and those for other products. Since the adoption of the TRIPS Agreement, Member awareness of the need for sufficient protection of geographical indications for all products has continued to grow. Also, the ongoing negotiations in the field of industrial and agricultural products, as pursued by the WTO, shows the growing importance of extending the level of protection for geographical indications for wines and spirits for geographical indications to all products. Such protection is an invaluable marketing tool and an added value for exports because it increases the chances of market access for such goods.
The extension of the so-called "additional" protection of Article 23 to geographical indications for products other than wines and spirits must be part of the global vision of a multilateral trade system. Nations have to understand the fact that the protection for GIs is best provided under national laws because it is not the provisions of the treaty but actual national laws that provide protection in relation to GIs. For example, even if a general extension of the Article 23 is provided, it may not result in an effective protection of the GIs, unless the laws of the member countries at the national level have a uniform protection regime.
The geographical origin, from a commercial point of view, has the same importance for all products. The extension of the level of protection of geographical indications for wines and spirits to geographical indications for all other products is in the best interest and to the benefit of all WTO Members: It is not a North-South issue. Every country – whether developed, developing or in transition – has products which are the fruits of its culture and know-how, and its unique blend of soil, water or climate, and which, therefore, deserve effective protection. At a time when further trade liberalisation is being striven for, it seems, particularly in relation to the negotiations going on in the field of agriculture, a natural corollary that Members should be able to fully reap the advantages of their geographical indications when competing with their products on the liberalized world market. This can only be done effectively by granting them additional protection against erosion of their geographical indications.
In conclusion, Bulgaria, Cuba, the Czech Republic, Egypt, Iceland, India, Liechtenstein, Mauritius, Nigeria, Sri Lanka, Switzerland, Turkey and Venezuela propose that the TRIPS Council continues its negotiations and starts without any further delay to work out the legal modalities necessary to eliminate the existing deficiencies in the TRIPS Agreement in the field of the protection of geographical indications with a view to reach a mutually agreeable solution.
The author can be reached at: apkaKarni@legalserviceindia.com / Print This Article
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