21

Chapter 2 - Geographical Indications – Retrospect and

Prospect

2.1 Understanding Geographical Indications

Some products are unique because they can be produced only in a certain

geographical region and they become reputed because they have certain quality

traits, for instance products such as Champagne, Scotch or Basmati rice. The

important aspect about these products is the link between their quality

characteristics and the geographical attributes of the region where these

products are being produced and manufactured.8

For certain products over a period of time, the particular product made in a

specific place can develop a unique reputation. This reputation is attributed to

various factors and special characteristics present in the place of production, its

people, its climate and its landscape. At times, the reputation is due to the

people or the climate or the landscape alone. Sometimes it is due to a

combination of all the characteristics combined.9

Property rights are often sought for such goods based on the fact that they are

produced in a geographical region which has unique geo-climatic

8 See generally Sanjeev Agarwal & Michael J. Barone, ‘Emerging Issues for Geographical Indication Branding Strategies’, MATRIC Research Paper 05-MRP 9, January 2005 9 Id

22

characteristics and uses traditional skills. These render a unique value to the

product and make replication of these goods elsewhere impossible. Since goods

that originate from another region must, by definition, be different, there can be

no justification for using the same geographical term or sign for them. It will in

fact be a gross misrepresentation to do so. It is in this context that a special right

for such products makes appropriate sense than to provide for an action which

requires proof of misrepresentation.10

Such products are not only agricultural commodities like wine, cheese, rice,

fruits, and coffee and whisky but also refer to handicraft items such as silk

clothes with traditional paintings on them. These products may also be herbal

medicines such as Neem and Turmeric to which quality of the same can be

attributable to a specific geographic region.11

The granting of GI protection dates back to the fifteenth (15) century, when

Roquefort a specialty sheep milk blue cheese from the south of France, was

regulated by a French parliament decree, and was soon followed by similar

regulations of other products in France as well as in other European countries.12

10 Pradyot R. Jena and Ulrike Grote, ‘Changing Institutions to Protect Regional Heritage: A Case for Geographical Indications in the Indian Agrifood Sector at http://www.pegnet.ifw-kiel.de/activities/pradyot.pdf 11 See generally - International Conclave on Traditional Medicine, 16-17th November, 2006 New Delhi, available at http://www.niscair.res.in/conclave/downloadables/Backgrounder.pdf 12 Carina Folkeson - Geographical Indications and Rural Development in the EU at http://biblioteket.ehl.lu.se/olle/papers/0000429.pdf

23

From a historical perspective the sale of products from a particular region were

sought more than those of another region because of a quality trait associated

with the region.

The quality of these products was attributed to various factors such as climatic

conditions, soil fertility, availability of specific raw materials, manufacturing

skills and techniques specific to the region. The marks associated with these

products gave the consumer the confidence as to its quality.

In Europe the laws for the protection of GIs have existed for hundreds of

years.13

For instance as early as 1222 in Yugoslavia a Charter of Steven I

governed the sale of wine. In the middle Ages in the South-West of France, and

also in other French wine producing regions, the sale and consumption of wines

from other regions were prohibited. Only wines originating in the region were

allowed entry into its towns.14

GIs have long been associated with Europe as an entity, where there is a

tradition of associating certain food products with particular regions. A lot of

the impetus for the expansion of GIs emanates from France and other European

nations.

13 Bernard O'Connor - The Law of Geographical Indications, Cameron May, London; 2004 pp. 501. 14 Id

24

GIs are signs which identify a good as originating in the territory of a particular

country, or a region or locality in that country, where a given quality, reputation

or other characteristic of the good is essentially attributable to its geographical

origin.15

There is no universally accepted definition of a GI, but the meaning is primarily

derived from international agreements, and best encapsulates the universal spirit

of the concept of GI.16

Products protected by means of GIs must have qualities linked to the territory

from which they derive. For instance agricultural products typically have

qualities that derive from their place of production and are influenced by

specific local factors, such as climate and soil.17

GI protection involves recognizing a collective exclusive right to the use of a

geographical name or sign on a good. GI may be used for a wide variety of

products, whether natural, agricultural or manufactured. GIs are usually

geographical names, but they can also be composed of symbols and icons as

long as they convey geographical information.

15 See http://www.lexorbis.com/Appellation_Of_Origin_In_The_Milieu_Of_Indicator_Of_A_Geographical_Origin.htm

16 See http://www.carib-export.com/obic/documents/Geographical_Indications.pdf 17 Jorge Larson Guerra, ‘Geographical Indications, in Situ Conservation and Traditional Knowledge’, ICTSD Policy Brief Number 3, November 2010 available at http://ictsd.org/downloads/2011/02/larsen_v4.pdf

25

GIs are recognised as tools for securing the link between product quality and

the region of geographical origin. Items that meet geographical origin and

quality standards may be endorsed with a government-issued stamp which acts

as official certification of the origins and standards of the product to the

consumer.18

GIs are associated with unique products that embody rich cultures and history.

It is also expected that there is a direct link between the distinguishing

characteristics, cultural aspects or the quality of a product and the place of

origin or geographic area.

In order for a product to be seen and the indication to serve the function of a GI,

it must communicate that the product is not only from the noted region but also

has a particular quality or a particular reputation, thereby creating a link

between some characteristic of the product and the particular region where it

was produced.19

Although there are many products that have long been distinguished by their

geographic origins, a product or service may be described and designated as a

GI only where specific aspects of that geography contribute to its uniqueness,

often in the distinctive characteristics and processing associated with the local

18 See generally Cerkia Bramley, Estelle Biénabe & Johann Kirsten, ‘The Economics Of Geographical Indications: Towards A Conceptual Framework for Geographical Indication Research in Developing Countries’, available at http://www.wipo.int/ip-development/en/economics/pdf/wo_1012_e_ch_4.pdf 19 See Jorge Larson Guerra, ‘Geographical Indications, in Situ Conservation and Traditional Knowledge’

26

culture and tradition of its place of origin. Some GIs, such as Basmati (Indo-

Pakistani rice) and Feta (cheese from Greece), may be from a particular place

but do not use direct geographical names.

GIs make it possible to add value to the natural riches of a country and to the

skills of the population, and they give local products a distinguishable identity.

Some examples of GIs are, Darjeeling tea, Parmigiano cheese, Bordeaux wine,

Kobe beef, Idaho potatoes, Jamaica Blue Mountain coffee, and Tequila.

GIs allow producers to create an image of “exoticness” or scarcity that enables

them to obtain premium prices for products that would otherwise be ascribed

commodity status. The main source of this exoticness comes from unique

quality differences that may be attributed to production in a particular

geographical area based on quality characteristics associated with that

location.20

The definition of a geographical indication is flexible enough, as it can protect

the geographical names of localities, regions or countries or any name that

evokes a geographical origin as long as the name meets the above requirements.

At the same time, such a definition clearly excludes rules of origin or

indications of source that indicate only the GI, but not any quality, reputation or

other characteristic of the product. In this vein, rules of origin are a tool for

20 See Rachael M. Williams ‘Do Geographical Indications Promote Sustainable Rural Development?’ available at http://researcharchive.lincoln.ac.nz/dspace/bitstream/10182/585/1/williams_mnrmee.pdf

27

tariff classification and must be distinguished from geographical indications

within the meaning of the TRIPS Agreement.21

The first attempt to harmonize different standards and approaches that

governments used to register GIs was found in the Paris Convention on

Trademarks in 1883.22

Article 1 includes ‘indication of source’ and

‘appellations of origin’ among industrial property, protected by the Convention

and it outlined;

Protection of geographical indications against false indications of source

Protection of geographical indication depends on the law of the country

providing protection.

The Madrid Agreements from 1891 extended the Paris Convention but major

improvements in the area were not made until the mid-twentieth century.23

The Appellation d’Origine Controlée (AOC) (roughly translated to “term of

origin” or “appellation of origin”) was created and mandated in France in the

1950s, 60s and 70s. The controlled term of origin guarantees the following

product criteria24

:

The product will be produced consistently in the traditional manner

21 Felix Addor & Alexandra Grazioli, ‘Geographical Indications beyond wines and spirits—A Roadmap for Better Protection for GIs’, Journal of World Intellectual Property, vol. 5, No. 6, November 2002, pp. 865-897. 22 See generally http://www.iitrade.ac.in/kmarticle.asp?id=206 23 See generally Amir Zahir, ‘North & South – the WTO TRIPS Agreement: Intellectual Property Disputes and Conflict of Visions’, Respect, Sudanese Journal for Human Rights’ Culture and Issues of Cultural Diversity, (7) March 2008. 24 See Carina Folkeson - Geographical Indications and Rural Development in the EU

28

It will be produced with products from a designated geographical area,

and will be made and at least partially aged in this area.

The characteristics of the product will be consistent and in line with

clearly defined standards;

The production is strictly regulated by a control commission following

AOC defined standards;

The standards outlined were25

:

A seal identifies all AOC products.

To prevent misrepresentation, no part of an AOC name may be used on

a label of product not qualifying for that of AOC.

Producers located in towns where the AOC is the name of the town,

may only list a postal code and not the actual name of the town.

The term “indication of source” is used in Articles 1(2) and 10 of the Paris

Convention for the Protection of Industrial Property of 1883.26

It is also used

throughout the Madrid Agreement for the Repression of False or Deceptive

Indications of Source on Goods of 1891.27

25 Albert Céline, ‘Appellation d’Origine Controlée (AOC) and other official product identification standards’ at http://www.rural.org/publications/aoc.pdf 26 See generally http://www.adb.org/Documents/Produced-under-TA/39255/39255-01-prc-dpta-02.pdf 27 Worldwide Symposium On Geographical Indications, July, 2003 organised by WIPO and USPTO (WIPO Document No: WIPO/GEO/SFO/03/1)

29

There is no definition of “indication of source” in those two treaties, but Article

1(1) of the Madrid Agreement on Indications of Source contains language

which clarifies what is meant by the term. That Article reads as follows:

“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.”28

Consequently an indication of source can be defined as an indication referring

to a country, or to a place in that country, as being the country or place of origin

of a product. It is important that the indication of source relates to the

geographical origin of a product and not to another kind of origin, for example,

an enterprise that manufactures the product.

This definition does not imply any special quality or characteristics of the

product on which an indication of source is used. Examples of indications of

source are the mention, on a product, the name of a country, or indications such

as “made in India”.

The term “appellation of origin” is defined in the Lisbon Agreement for the

Protection of Appellations of Origin and their International Registration, of

1958 (which came into force in 1966).29

The Lisbon Agreement establishes an

28 http://www.wipo.int/treaties/en/ip/madrid/trtdocs_wo032.html#P24_540 29 http://www.wipo.int/lisbon/en/general/

30

international system of protection for appellations of origin which are already

protected under the national law of one of the States party to that Agreement.

Protection is subject to the international registration of that appellation of

origin. Article 2(1) of the Lisbon Agreement defines the term “appellation of

origin” as follows:

“Appellation 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.”30

Under this definition, an appellation of origin can be regarded as a special kind

of indication of source, because the product for which an appellation of origin is

used must have quality and characteristics which are due exclusively or

essentially to its origin. Examples for protected appellations of origin are

“Bordeaux” for wine, “Noix de Grenoble” for nuts, “Tequila” for spirit drinks,

or “Jaffa” for oranges.31

Many other countries have based their controlled place name systems on AOC,

for example Italy’s Denominazione di Origine Controllata (DOC), Spain’s

Denominación de Origen, Portugal’s Denominação de Origem Controlada,

Austria’s Districtus Austria Controllatus and South Africa’s Wine of Origin.

The European way of protecting geographical indications is referred to as sui

generis (meaning ‘of its own kind’).

30 http://www.wipo.int/lisbon/en/legal_texts/lisbon_agreement.html#P15_193 31 See WIPO Document No: WIPO/GEO/SFO/03/1

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The United States also has a variety of laws allowing farmers to control and

label product qualities, the earliest documents on protection dating back to 1922

and the Capper-Volstead Act. The legislation allows any number of farmers to

act cooperatively in “processing, preparing for market, handling, and

marketing” their products by exempting them from certain facets of anti-trust

legislation.32

Today, the United States protects GI under the trademark law, but wine related

GIs are regulated under the Federal Alcohol Administration Act. As such, a US

certification mark protects one or more products and one or more producers or

manufacturers of the products(s) within a specified region. The detailed

analysis of GIs in the US and Europe shall be considered in Chapter 3.

Basic Definition of GI

TRIPS agreement has specifically defined Geographical Indication under Part

II, Section 3, Article 22.1 TRIPS states that: ‘Geographical indications are, for

the purposes of this Agreement, 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.’33

32 Donald M. Barnes & Christopher E. Ondeck, ‘The Capper-Volstead Act: Opportunity Today and Tomorrow / In Commemoration of the 75th Anniversary of the Capper-Volstead Act – available at http://www.uwcc.wisc.edu/info/capper.html 33 http://www.wto.org/english/tratop_e/trips_e/t_agm3b_e.htm#3

32

The World Intellectual Property Organisation (WIPO) states that GIs are ‘a sign

used on goods that have a specific geographical origin and possess qualities,

reputation or characteristics that are essentially attributable to that place of

origin. Most commonly, a geographical indication includes the name of the

place of origin of the goods.’34

From the above two definitions it can be seen that ‘A Geographical Indication

identifies a good as originating in a delimited territory or region where a noted

quality, reputation or other characteristic of the good is essentially attributable

to its geographical origin and/or the human or natural factors there.’35

2.2 Role of GI in the Intellectual Property family

GIs are a branch of Intellectual Property Rights (IPR) which deal with

identification and attribution of a product to a specific geographic location. GIs

are collective IPR, which identify a good as originating in a certain territory or

a region where a given quality, reputation or other characteristics is essentially

attributable to its geographical origin. These indications consist of a name that

is used to designate a product. A geographical indication cannot be created, but

it can be identified and developed.36

34 http://www.wipo.int/geo_indications/en/about.html 35 Guide to Geographical Indications: Linking products and their origins at www.intracen.org/WorkArea/DownloadAsset.aspx?id=37595 36 Dr. Prabuddha Ganguli – Geographical Indications and its evolving contours available at http://www.iips.ac.in/main_book.pdf

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The rationale for granting any intellectual property rights is the furtherance of

the public interest. Exclusive rights afforded by copyright and patents are seen

as a means to encourage authors, performers and inventors to create and share

their works with the public. Trademarks and geographical indications are

afforded protection for different reasons. They are used to balance competing

interests in the market place: to protect consumers from misinformation and

producers from ‘unfair’ business practices.37

Legal protection of GIs has traditionally been based on the idea that

geographical origin endows a product exclusive qualities and characteristics.

Only local producers are entitled to exclusive use of a product name because no

one outside the locale can truly make the same product. In today’s world we are

able to replicate almost any product anywhere, including its qualities and

characteristics. One would think that this would preclude protection from most

geographical names, yet the number of geographical indications seems to be

rising.38

IPRs are granted or denied legal protection and recognition on the basis of the

rules, laws and regulations applicable in a given country, which is generally

based on the historical principle of territoriality. However, problems and

37 Oskari Rovamo, ‘Monopolising Names? The Protection of Geographical Indications in the European Community’ available at http://ethesis.helsinki.fi/julkaisut/oik/julki/pg/rovamo/monopoli.pdf 38 Id

34

disputes as to the right of exclusive use of marks and signs for goods or services

are not uncommon.39

Difficulties and disputes arise, for example, where different parties may try to

claim entitlement to such an exclusive use. Secondly, the same or similar marks

and signs may be used by different parties as a TM or GI or both for the same

or similar products or class of products. Thirdly, different parties may use the

same marks and signs as a TM or GI for different goods or services but one of

these goods or services, and its TM or GI, has had an established reputation or

has been well-known among consumers within the territory or country

concerned.

Intellectual property law is traditionally territorial in nature, but the various

major multilateral agreements on copyright, patent and the other forms of IP

have created a measure of convergence in substantive law across countries. In

the 1980s, the rise of knowledge-based economies made the importance of IP

greater. The growth of technological and especially the internet made copying

of many intellectual property-related protected products far easier.40

39 Thitapha Wattanapruttipaisan, ‘Trademarks and Geographical Indications: Policy Issues and Options in Trade Negotiations and Implementation’, Asian Development Review, vol. 26, no. 1, pp. 166−205. 40 Kal Raustiala and Stephen R. Munzer - The Global Struggle over Geographic Indications, The European Journal of International Law Vol. 18 no. 2, 2007.

35

The current mechanisms of IP protection were primarily designed to cater to the

needs of the modern Research and Development oriented businesses and

industries.

Essentially intellectual property law balances private monopoly rights

guaranteed by the state against the general public. The core rights of copyright

and patent are time-limited: at a certain point, creations move into the public

domain and can be used and copied freely by all.

The importance of the public domain rests on innovation concerns, because

most creations derive from earlier creations, as well as liberty concerns,

because private monopolies on inventions and expressions restrain free

economic competition and may inhibit free expression.

While similar to trademarks, GIs differ in that they attach to goods from a

particular region rather than from a particular producer. A few GIs are well

known across the world, for instance Champagne, however others such as

Kolhapuri Slippers (Chappals) are not necessarily so.41

The recognition of a geographical indication in its country of origin needs to be

understood in the light of IPRs, since the geographical indication associated

with a product signifies the link between the quality, reputation or other

41 Surbhi Jain, ‘Effects Of The Extension Of Geographical Indications: A South Asian Perspective’, Asia-Pacific Development Journal Vol. 16, No. 2, December 2009.

36

characteristic of the product and its geographical origin. The essence of GIs is

that the product is tied to a particular place, which implies that the same

indication may not be used with a product of the same or similar kind produced

elsewhere. 42

Geographical indications being territorial in nature, the territoriality principle

generally associated with the protection of intellectual property rights is also

quite naturally referred to in the field of geographical indications as well.

Indeed, geographical indications are established and protected (or are denied

legal recognition) on the basis of the laws and regulations applicable in a given

territory.43

However, by virtue of the territoriality principle, several international situations

of conflict can arise. For example, identical geographical indications can come

into existence in two or more territories. Or a given geographical name

associated with a product may be protected as a geographical indication in one

or more countries, but the same geographically significant term (or its linguistic

equivalent) may be considered in a third country as a generic expression for that

42 Lina Monten,’Geographical Indications of Origin: Should They Be Protected and Why? - An Analysis of the Issue From the U.S. and EU Perspectives’, January, 2006, 22 Santa Clara Computer & High Technology Law .Journal. 315 43 See generally Dinwoodie, Graeme B., Developing a Private International Intellectual Property Law: The Demise of Territoriality? (November 8, 2009). William & Mary Law Review, Forthcoming; Oxford Legal Studies Research Paper No. 52/2009. Available at SSRN: http://ssrn.com/abstract=1502228

37

product, or as having acquired a secondary meaning under that country’s

trademark law.44

One can argue that once the product of intellectual property for which

protection is granted or claimed has been identified, why it should be necessary

to define more precisely the product (such as geographical area, methods of

production, controls, package, etc.). The main answer is that a GI product

benefits from a certain reputation as long as the basis for such a reputation goes

on existing; in other words, protecting IPRs which are associated to the

reputation requires maintaining the conditions of such a reputation. Therefore it

is imperative that GIs fit in and be defined as a critical part of the IP family.

Protection of IP creates important incentives for innovation and new research

that would not have taken place without the protection. This is due to the high

cost to the innovator and the relatively small, if any, profit the innovator can

make from the innovation unless it is being protected. The monopoly right can

therefore yield benefits to the society in excess of the costs that are incurred.45

Patents are typically granted for innovations that are novel, non-obvious and

that have a practical utility. Copyrights protect the creation of written and

artistic works. These two forms of IP give rise to the production and creation of

44 WIPO Secretariat - Standing Committee On The Law Of Trademarks, Industrial Designs And Geographical Indications- Ninth Session, Geneva, November 11 to 15, 2002 - Geographical Indications And The Territoriality Principle at www.wipo.int/edocs/mdocs/sct/en/sct_9/sct_9_5.doc 45 Josling T, ‘The War on Terroir: Geographical Indications as a Transatlantic Trade Conflict’, 2006, Journal of Agricultural Economics, Vol.57, No.3, 337-363.

38

goods and services that the society values. In other words the outcome of the

patent or the copyright holder’s work can be shared by anyone.

Trade and Service marks differ from patents and copyrights in that the trade and

service marks do not give rise to the production of goods and services that

would otherwise not have been produced or provided. Instead, trade and service

marks give ownership to words and symbols considered to be unique to a

particular organisation or individual; the mark then becomes an asset of the

creator.

Trade and service marks are used by manufacturers, sellers and service

providers to identify a product or a service and distinguish it from other goods

or services. They hardly say anything about the composition or specification of

the goods or services; instead, trade and service marks identify the maker of the

good. The buyer infers information about the features of the good and services

by remembering his or her previous experience with that product or service.

Words that are merely descriptive terms for a good, the good’s features or the

purpose of it, do not qualify as trademarks due to three reasons. First, a

descriptive word does not identify the good of a particular seller. Secondly, if

the law gave monopoly rights to a term of general use it would be unfair

39

competition. The new “owner” of the word would benefit from the general use

of the word, as it was understood before registration.46

Additionally, if a descriptive term were to be registered as a trade or service

mark, the society in general would be deprived of the usage of the word, such

that competing firms could not use that word to describe what they were selling

or producing. Often, the big success of certain brand names makes them

vulnerable to becoming generic by describing a whole class of goods rather

than the product(s) of a particular manufacturer.47

Famous examples of trademarks that became generic are Xerox, Aspirin,

Escalator and Thermos.48

The main argument for advocating trademarks is the existence of information

asymmetry in many markets. The purpose of most trademark laws is primarily

to protect the consuming public, not the trademark owners. Often, the seller has

more and better information about the unobservable features of the goods and

services for sale, than does the consumer. And often, the unobservable features

are the key determinants of the value of the good. In the absence of the marks,

consumers would often pick a product or service with undesirable qualities.49

46 http://www.essp-law.com/trademark.htm 47 Peter Siegelman & Gideon Parchomovsky, ‘Towards an Integrated Theory of Intellectual Property’, available at http://papers.ssrn.com/paper.taf?abstract_id=304064 48 http://www.inta.org/TrademarkBasics/Documents/INTAGenericidePresentation.pptx. 49 Nicholas S Economides, ‘The Economics of Trademarks’ Vol. 78 Trademark Reporter.

40

On top of that, producers would choose to produce goods or services with the

cheapest possible unobservable qualities, since they, without the marks, would

be unable to transmit to the consumer signals of the unobservable high qualities

of their goods.

Basically, trade and service marks provide information in summary form,

through a symbol that the consumer identifies with a specific combination of

features. This is efficient and time saving for the consumer, it promotes brand

competition, which leads to higher quality goods in the marketplace, and

furthermore, allows the consumer to get the quality that they are paying for.50

In other words, the risk that the consumers get confused would be eliminated. If

confusion exists in the market, and products with a similar name but with other

features (such as lower quality) exist, the success of the trademark will be

limited.51

To expand, the producer receives a price mark-up for products appreciated by

the consumers. The negative aspect of trademarks is that the protection of law

that is offered is still a form of monopoly right, which distorts the market.

50 See generally Christopher Lovelock & Lauren Wright, ‘Principles of Service Marketing and Management’, available at http://www.scribd.com/doc/9691385/Customer-Service-Principles-of-Service-Marketing-and-Management 51 See generally http://www.nowsell.com/marketing-guide/trademark.html

41

Essentially, GIs are valuable for the same reasons that trade and service marks

are important and valuable. Hence, GIs functions as assets for producers and the

designations further serves as a means for consumers to distinguish between

different products. Furthermore, protection of GIs prevent the terms from

becoming generic. This is especially true when some products, such as

Champagne, which are essentially GIs get used to refer to sparkling wines.

As in the case with trade and service marks, the main argument for advocating

GIs is the existence of information asymmetry. Hence, consumers are protected

from confusion by receiving information on a products geographical origin, at

the same time as producers can signal the exact value of their product, which

allow appreciated producers to receive price premiums for their products.

The major difference between trademarks and GIs is that GIs are linked with

territory; a trademark can be sold and re-localized but not a GI. Furthermore, a

trademark is an exclusive individual right whereas a GI is accessible to any

producer of the locality or region concerned. Though there are important

differences between GIs and trademarks, it should be noted that the use of a GI

may be combined with a trademark which identifies a specific producer within

the geographical area.52

52 See generally Giulio Enrico Sironi, ‘Protection of Trademarks and Geographic Indications’ available at http://ipr2.org/storage/Sironi_GIs-EN940.pdf

42

2.3 GI under International Agreements – Scope and Extent

Local and national laws protecting the geographical origin of products have

existed for hundreds of years in Europe. With the expansion of international

trade during the 19th

century, GI protection was included in international

agreements on the protection of intellectual property.53

France was the first country to take the initiative and enact a comprehensive

system for the protection of geographical indications that later influenced the

making of both national laws and international treaties.54

The TRIPS Agreement is not the first invocation of GIs in international law,

though it can be said that it is the most important. GI protection was part of the

Paris Convention for the Protection of Industrial Property (1883), but under a

different label (‘false indications’). The 1891 Madrid Agreement for the

Repression of False or Deceptive Indications also addresses GIs, though it has

relatively few parties. In the 20th century, the Lisbon Agreement on

53 Study on the protection of geographical indications for products other than wines, spirits, agricultural products or foodstuffs. November 2009, Study commissioned by the Directorate General for Trade of the European Commission available at http://trade.ec.europa.eu/doclib/docs/2011/may/tradoc_147926.pdf 54 William van Caenegem. (2003) "Registered Geographical Indications Between Intellectual Property and Rural Policy—Part II". http://epublications.bond.edu.au/law_pubs/4

43

Appellations of Origin (1958) set the standard until the negotiation of TRIPS.

National law on GIs is even older.55

The TRIPs Agreement’s protection of geographical indications is quite unusual

in that the Agreement first provides for general protection for all geographical

indications, and then affords special, elevated protection to geographical

indications that concern wine and spirits.56

An interesting aspect of the TRIPs Agreement’s on geographical indications

protection is the fact that the TRIPs Agreement itself calls for continued

negotiations regarding further protection of geographical indications in certain

areas of the Agreement. The same have been discussed at length later in this

chapter.

2.3.1 GI history in the WTO & TRIP’s Provisions

The term “Geographical Indication” has been around for many decades, but it is

really since the World Trade Organisation (WTO) Agreement on TRIPS

entered into force in the mid-1990s, that it has come into common use.

55 See Kal Raustiala and Stephen R. Munzer - The Global Struggle over Geographic Indications 56 See generally Justin Hughes, ‘Champagne, Feta, and Bourbon: The Spirited Debate about Geographical Indications’, 58 Hastings Law Journal. 299 (2006).

44

The concept of GI comes from the concept of “country of origin” or a regional

or sub-regional geographic origin. Over time, some locations, regions, or

countries become synonymous with producing high-quality products. Producers

from those locations can benefit from the “geographic origin” image, which is a

set of generalized beliefs about specific products from that geographic origin on

a set of attributes.57

International protection of origin-labeled products has a long history.58

Today,

international IP and related laws offer two main options for GI protection.

These include (a) defense against unfair competition; and (b) positive protection

through registration mainly under sui generis systems or through trademarks. 59

The Uruguay Round of the GATT negotiations began in 1986, precisely when

India’s development policy making process was at a watershed. By the time

India launched its massive economic reforms package in 1991, marking a

paradigm shift in its policy, the Uruguay Round negotiations were well under

way, paving the path towards Marrakesh in 1994 and the establishment of the

WTO. India remained a cautious and somewhat passive player during the initial

years of the Uruguay Round negotiations, given its long legacy of inward

looking development strategy and protectionist trade policy regime.60

57 Warren J Bilkey & Erik Nes. 1982. ‘Country-of-Origin Effects on Product Evaluations.’ Journal of International Business Studies (13) pp. 89-99. 58 Petra van de Kop, Denis Sautier, and Astrid Gerz, ‘Origin-Based Products- Lessons for pro-poor market development’, Bulletins No: 372 of the Royal Tropical Institute (KIT), Netherlands. 59 Paul J Heald, ‘Trademarks and Geographical Indications: Exploring the Contours of the TRIPS Agreement’, 29 Vanderbilt Journal of Transnational Law, 635 (1996). 60 Dr. Sudhir Ravindran & Ms. Arya Mathew, ‘The Protection of Geographical Indication in India – Case Study on ‘Darjeeling Tea’.

45

However, at Doha India wanted to extend protection under GI beyond wine and

spirit, to other products. A number of countries wanted to negotiate extending

this higher level of protection to other products as they see a higher level of

protection as a way to improve marketing their products by differentiating them

more effectively from their competitors and they object to other countries

“usurping” their terms. Some others opposed the move, and the debate has

included the question of whether the Doha Declaration provides a mandate for

negotiations.61

The development of international rules on GIs has been a result of distinct

periods before and after TRIPS.62

These distinct periods may be summarized as:

(a) before the negotiation and passage of the TRIPS Agreement;

(b) after the adoption of TRIPS obligations by member countries;

(c) the post-TRIPS period marked by the:

i) Doha negotiations and

ii) Developments in bilateral and regional trade arrangements as well as

developments at World Intellectual Property Organization (WIPO).

61 See Generally December 2008 Package: Briefing Notes- Intellectual property: Geographical indications and biodiversity available at http://www.wto.org/english/tratop_e/dda_e/status_e/gi_e.htm 62 Tegan Brink, ‘Perspectives On Geographical Indications: Prospects for the Development of the International Legal Framework’, Presentation at the International Symposium on Geographical Indications, Beijing, 26-28 June 2007 at http://www.wipo.int/edocs/mdocs/geoind/en/wipo_geo_bei_07/wipo_geo_bei_07_www_81778.pdf

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The Pre TRIPS Provisions

The pre TRIPS agreements, did not seek to provide protection for GIs as a

prescriptive matter. Rather, all of these agreements addressed particular needs,

gaps, and challenges in cross-border trade in goods.63

The international protection of GIs, in one form or another, dates back to the

time of the adoption of the Paris Convention for the Protection of Industrial

Property in 1883. Under the Paris Convention, the scope of protected subject

matter, in terms of Article 1.2 included ‘indications of source and appellations

of origin’.

The protection required to be offered by the members of the Paris Convention

was to assure nationals of other Convention members’ effective protection

against unfair competition.

Article 10bis of the Convention defines an act of unfair competition as “any act

of competition contrary to honest practices in industrial and commercial

matters”.64

Acts specifically prohibited by the Paris Convention include, among others,

“indications or allegations the use of which in the course of trade is liable to

63 Ruth L. Okediji, ‘The International Intellectual Property Roots Of Geographical Indications’ Chicago-Kent Law Review 2007 [Vol 82:3] 1329-1365. 64 http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P213_35515

47

mislead the public as to the nature, the manufacturing process, the

characteristics, the suitability for their purpose, or the quantity, of the goods.”

A few years after the Paris Convention, The Madrid Agreement for the

Repression of False or Deceptive Indications of Source on Goods came into

force in 1891. The Madrid Agreement expanded protection by prohibiting

products with false and deceptive indications of origin.

However, the Madrid Agreement did not protect generic terms and further

allowed national courts to determine which indications of origin are generic. As

a result, with the exception of wine, which is specifically excluded from generic

treatment by Article 4, the national courts were free to develop different

approaches to the Madrid Agreement and often have provided limited

protection for foreign GIs. This article is noteworthy, since it constitutes a

departure from the general rule that the conditions of protection of an indication

of source and, in particular, whether a specific indication of source is

considered generic, are to be determined by the country in which protection is

sought.

Moreover, the small number of signatories, thirty-five in all, has limited the

scope of the international GI protection the Madrid Agreement provides.

48

One of the results of the Lisbon Diplomatic Conference of 1958, which had

attempted, inter alia, to improve the international protection for geographical

indications within the framework of the Paris Convention and the Madrid

Agreement on Indications of Source, was the adoption of the Lisbon Agreement

for the Protection of Appellations of Origin and their International

Registration.65

The Lisbon Agreement was adopted in 1958 and revised at Stockholm in 1967.

It entered into force on September 25, 1966, and is administered by the

International Bureau of WIPO, which keeps the International Register of

Appellations of Origin.66

The Lisbon Agreement provided additional protection for GIs. The Lisbon

Agreement defined an appellation of origin under Article 2(1) as “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.”67

The Lisbon Agreement however only protects GIs to the extent they are

protected in the country of origin. Article 2 (2) of the Lisbon Agreement defines

65 See WIPO Document No: WIPO/GEO/SFO/03/1 66 Amy P. Cotton, ‘123 Years At The Negotiating Table And Still No Dessert? The Case In Support Of Trips Geographical Indication Protections’, Chicago-Kent Law Review 2007 [Vol 82:3] 1295-1316. 67 http://www.wipo.int/lisbon/en/general/

49

the “country of origin” as “the country whose name, or the country in which is

situated the region or locality whose name, constitutes the appellation of origin

that has given the product its reputation”.

The key elements from the definition note that68

:

First, the requirement that the appellation of origin should be the geographical

denomination of a country, region or locality means that the appellation is to

consist of a denomination that identifies a geographical entity in the country of

origin.

Secondly, the requirement that the appellation of origin must serve to designate

a product originating in the country, region or locality concerned means that, in

addition to identifying a place, the geographical denomination in question must

be known as the designation of a product originating in that place – requirement

of reputation.

The third requirement concerns the quality or characteristics of the product to

which the appellation of origin relates, which must be due exclusively or

essentially to the geographical environment of the place where the product

originates. The reference to the geographical environment means that there is to

be a qualitative connection between the product and the place in which the

product originates. The geographical environment is determined on the one

68 Key concepts on GIs at http://www.origin-gi.com/index.php?option=com_content&view=article&id=44&Itemid=42&lang=en

50

hand by a set of natural factors (such as soil and climate), and on the other hand

by a set of human factors – for instance, the traditional knowledge or know how

used in the place where the product originates).

The impact of the Lisbon Agreement's GI protection however has been limited

mainly because many states have been unwilling to enact legislation enforcing

added GI protection. However an effect of registration under the Lisbon

Agreement is that the international registration of an appellation of origin

assures it of protection, without any need for renewal, for as long as the

appellation is protected in the country of origin.69

Under the Lisbon Agreement International registration must be applied for by

the competent Office of the country of origin, in the name of any natural

persons or legal entities, public or private, having a right to use the appellation

according to the applicable national legislation. The International Bureau of

WIPO has no competence to examine the application with respect to substance;

it may only make an examination as to form. Under Article 5(2) of the Lisbon

Agreement, the International Bureau notifies the registration without delay to

the Offices of the countries party to the Lisbon Agreement.70

In accordance with Article 5(3) to (5), the Office of any State party to the

Lisbon Agreement may, within a period of one year from the receipt of the

69 Sergio Escudero, ‘International Protection of Geographical Indications and Developing Countries’, Trade-Related Agenda, Development And Equity (T.R.A.D.E.), Working Papers 10, South Centre, July 2001. 70 www.wipo.int/lisbon/en/legal_texts/lisbon_agreement.html

51

notification of registration, declare that it cannot ensure the protection of a

given appellation, indicating the grounds for refusal as discretionally

determined by each country. The registered appellation enjoys protection in all

countries not having refused it. However, if third parties had been using the

appellation prior to the notification of the registration, the Office of that country

may grant them a maximum of two years in which to terminate such use

(Article 5(6)).

The protection conferred by international registration is unlimited in time.

Article 6 provides that an appellation that has been granted protection cannot be

deemed to have become generic, as long as it is protected as an appellation of

origin in the country of origin.71

Article 7 provides that the registration need not be renewed and is subject to

payment of a single fee. An international registration ceases to have effect only

in two cases: either the registered appellation has become a generic name in the

country of origin, or the international registration has been canceled by the

International Bureau at the request of the Office of the country of origin.72

71 Protection of Geographical Indications on the International Level through Multilateral Treaties at http://www.wipo.int/edocs/mdocs/sme/en/wipo_wasme_ipr_ge_03/wipo_wasme_ipr_ge_03_2.pdf 72 See generally The Lisbon System: International Protection for Identifiers of Typical Products from a defined Geographical Area at http://www.wipo.int/freepublications/en/geographical/942/wipo_pub_942.pdf

52

Like the Madrid Agreement, the Lisbon Agreement too has a small membership

and as on date there are only twenty-seven members / contracting parties to the

Lisbon Agreement.

In the pre-TRIPS period, there was also a multiplicity of regional and bilateral

agreements on GIs involving both developed and developing countries as well

as product specific treaties. One of the earliest bilateral agreements is the 1932

Convention between El Salvador and France concerning the Protection of

Appellations of Origin. Product specific agreements included the International

Convention for the Use of Appellations D’Origine and Denominations of

Cheeses commonly known as the Stresa Convention of 1951 and the

International Agreement on Olive Oil and Table Olives of 1986.

In general, however, it is fair to say that until the entry into force of the TRIPS

Agreement, global protection of GIs was mainly based on the limited protection

offered under the Paris Convention. It would also be significant to note that the

Paris Convention and the Lisbon Agreement had great influence on the TRIPS

agreement, specifically in relation to GIs.

Overview of TRIPS

The TRIPS Agreement, which provides a comprehensive definition of a GI, is

the first truly multilateral agreement for the international protection of GIs.

53

In order to understand the development of the legal frame work adopted

nationally with respect to GIs, it is essential to understand some of the main

features of the TRIPS agreement.

The salient features of the TRIPS Agreement are73

:

Standards: In respect of each of the main areas of intellectual property covered

by the TRIPS Agreement, the Agreement sets out the minimum standards of

protection to be provided by each Member. Each of the main elements of

protection is defined, namely the subject-matter to be protected, the rights to be

conferred and permissible exceptions to those rights, and the minimum duration

of protection.

The Agreement sets these standards by requiring, first, that the substantive

obligations of the main conventions of the WIPO, the Paris Convention for the

Protection of Industrial Property (Paris Convention) and the Berne Convention

for the Protection of Literary and Artistic Works (Berne Convention) in their

most recent versions must be complied with.

With the exception of the provisions of the Berne Convention on moral rights,

all the main substantive provisions of these conventions are incorporated by

reference and thus become obligations under the TRIPS Agreement between

TRIPS Member countries.

73 http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=5074

54

The relevant provisions are found in Articles 2.1 and 9.1 of the TRIPS

Agreement, which relate, respectively, to the Paris Convention and to the Berne

Convention. Secondly, the TRIPS Agreement adds a substantial number of

additional obligations on matters where the pre-existing conventions are silent

or were seen as being inadequate. The TRIPS Agreement is thus sometimes

referred to as a Berne and Paris-plus agreement.

Enforcement: The second main set of provisions deals with domestic

procedures and remedies for the enforcement of intellectual property rights. The

Agreement lays down certain general principles applicable to all IPR

enforcement procedures. In addition, it contains provisions on civil and

administrative procedures and remedies, provisional measures, special

requirements related to border measures and criminal procedures, which

specify, in a certain amount of detail, the procedures and remedies that must be

available so that right holders can effectively enforce their rights.

Dispute settlement: The Agreement facilitates dispute resolution amongst

WTO Members about the respect of the TRIPS obligations subject to the

WTO's dispute settlement procedures.

In addition the Agreement provides for certain basic principles, such as national

and most-favoured-nation treatment, and some general rules to ensure that

procedural difficulties in acquiring or maintaining IPRs do not nullify the

substantive benefits that should flow from the Agreement. The obligations

55

under the Agreement will apply equally to all Member countries, but

developing countries will have a longer period to phase them in.

With respect to GIs TRIPS74

outlines the follows:

Section 3 of Part II of the TRIPS Agreement contains a set of international rules

on geographical indications with an almost universal applicability and

enforceability. The scope of protection for geographical indications under the

TRIPS Agreement may be characterized as follows:

Protection is limited to qualified geographical indications. For the purposes of

the TRIPS Agreement protection needs only to be granted to:

"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"

(Article 22.1).

Though this definition resembles the one contained in the Lisbon Agreement, it

adds “reputation” as one of the conditions that (like quality or other

characteristic) an indication may meet in order to attract protection under the

Agreement.

74 Available at http://www.wto.org/english/tratop_e/trips_e/t_agm3b_e.htm#3

56

Secondly protection extends to any good i.e. it covers not only food and

agricultural products (the main domain of concern for geographical indications)

but also manufactured products (e.g. watches, textiles, etc.) where certain

characteristics, reputation or quality may be attributed to its geographical

origin. It has also been discussed whether geographical indications, as defined,

may cover services and not only physical goods.75

Though such an

interpretation is unlikely to prevail if a dispute were brought to a panel in WTO,

Members may consider extending protection of geographical indications to

services, as currently provided for in a few countries.76

Also protection is not limited to "direct" indications of origin, but embraces

"the use of any means in the designation or representation of a good that

indicates or suggests" a certain geographical origin (Article 22.2.b).

The use of homonymous geographical indications is prevented when though

literally true as to the territory, region or locality in which the goods originate,

they falsely represent to the public that the goods originate in another territory

(Article 22.4).

A special, stronger, protection is provided for geographical indications for

wines and spirits.

75 Lynne Beresford, Geographical Indications: The Current Landscape, 17 Fordham Intellectual Property Media and Entertainment Law Journal. 979 (2007) 76 Correa, C.M., 2002. Protection of Geographical Indications in Caricom Countries at http://www.crnm.org/documents/studies/Geographical%20Indications%20%20Correa.pdf

57

Under the TRIPS Agreement, Members have considerable leeway to determine

the means to protect geographical indications:

“In respect of geographical indications, Members shall provide the legal means

for interested parties to prevent:

1. The use of any means in the designation or representation of a good that

indicates or suggests that the good in question 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;

2. Any use which constitutes an act of unfair competition within the

meaning of Article 10bis of the Paris Convention (1967)” (Article 21.2).

Members should, however, apply trademark law in a manner consistent with

said protection. A Member shall, ex officio if its legislation so permits or at the

request of an interested party, refuse or invalidate the registration of a

trademark which contains or consists of a geographical indication with respect

to goods not originating in the territory indicated, if use of the indication in the

trademark for such goods in that Member is of such a nature as to mislead the

public as to the true place of origin" (Article 22.3).

Nevertheless, the Agreement shall not affect the eligibility or validity of

trademarks applied for, registered or acquired through use in good faith, which

are identical to a geographical indication, if they were applied for or the rights

58

acquired before the date of application of the TRIPS Agreement provisions in

the relevant Member or before the geographical indication is protected in its

country of origin, (Article 24.5).

In cases where the previous conditions are not met Members may, in addition,

subject the right to challenge a trademark applied for or acquired to a five year

time limit. Members are not obliged to recognize rights relating to geographical

indications if these are identical with a term "customary in common language as

the common name" for certain goods or services in those countries (Article

24.6). The same applies to the "products of the vine for which the relevant

indication is identical with the customary name of a grape of a variety" existing

as of the date of entry into force of the TRIPS Agreement.

Article 23 contains a number of rules specifically related to geographical

indications providing for an additional protection to wines and spirits. These

rules state:

1. 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 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

59

accompanied by expressions such as "kind", "type", "imitation" or the

like.

2. The registration of a trademark for wines which contains or consists of a

geographical indication identifying wines or spirits which contains or

consists of a geographical indication identifying spirits shall be refused

or invalidated, ex officio if domestic legislation so permits or at the

request of an interested party, with respect to such wines or spirits not

having this origin.

3. In the case of homonymous geographical indications for wines,

protection shall be accorded to each indication, subject to the provisions

of paragraph 4 of Article 22. Each Member shall determine the practical

conditions under which the homonymous indications in question will be

differentiated from each other, taking into account the need to ensure

equitable treatment of the producers concerned and that the consumers

are not misled.

4. In order to facilitate the protection of geographical indications for

wines, negotiations shall be undertaken in the Council for Trade-Related

Aspects of Intellectual Property Rights concerning the establishment of

a multilateral system of notification and registration of geographical

indications for wines eligible for protection in those Members

participating in the system" (Article 23).

60

There is not a wider coverage in terms of the type of protected indications (only

those covered by the definition of Article 22.1). The additional protection stems

from the following:

a) there is no need to prove that the public is misled or that there is unfair

competition;

b) the exclusion of "delocalizing" additions, i.e., references to the "type" or

"style" of a product which allude to its true geographical origin;

c) a provision stronger than the general one (Article 22.3) with respect to

the refusal and invalidation of trademarks for wines which contain or

consist of a protected indication;

d) the establishment of a multilateral system of notification and registration

for wines is provided for.

However, the continued use of a geographical indication of another Member

identifying wines and spirits shall not be affected where such a use takes place

"in connection with goods or services by any of its nationals or domiciliary who

have used that geographical indication in a continuous manner with regard to

the same or related goods or services in the territory of that Member either (a)

for at least ten years preceding the date of the Ministerial Meeting concluding

the Uruguay Round of Multilateral Trade Negotiations or (b) in good faith

preceding that date"(Article 24.4).

61

In addition to the exceptions mentioned above, Article 24.8 and 24.9

specifically excludes the application of Section 3 as follows:

Article 24.8 states that the provisions of this Section shall in no way prejudice

the right of any person to use, in the course of trade, his name of his

predecessor in business, except where such name is used in such a manner as to

mislead the public.

Article 24.9 stipulates that there shall be no obligation under this Agreement 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". A provision

that is similar to Article 1.2 under the Lisbon Agreement.

In a unique provision in the whole Agreement, under Article 24.1 Members can

undertake "to enter into negotiations aimed at increasing the protection of

individual geographical indications under Article 23" (i.e., those relating to

wines and spirits).

The exceptions provided for in Article 24 shall not be used to refuse to conduct

negotiations or to conclude bilateral or multilateral agreements. This means that

despite that Members are not obliged to confer protection in cases governed by

an exception (see Article 1 of the TRIPS Agreement), they may be forced to

enter into negotiations.

62

The Council for TRIPS can also undertake consultations and "action as may be

agreed to facilitate the operation and further the objectives of this Section"

(Article 24.2).

The TRIPS Council shall also be required to keep under review the application

of the provisions on the protection of geographical indications.

The obligation under Section 3 (Part II) as seen above is non-specific; in that,

Articles 22 and 23 require the provision of ‘legal means’ for the protection of

GIs to be available for interested parties. The TRIPS Agreement neither

specifies the preferred legal means nor does it identify the range of legal

options. It has been suggested that this reflects the diverse range of legal means

for the protection of GIs existing at the time of Uruguay Round negotiations.77

The reform of IP systems in WTO Members, particularly the developing and

least developed among them, to implement their obligations under the TRIPS

Agreement are far from complete. Nevertheless, new rules and obligations on

GIs continue to come into play through various processes.78

77 Dr. Dwijen Rangnekar; CSGR and the Law School, University of Warwick- UNCTAD / ICTSD Regional Dialogue, ‘Intellectual Property Rights (IPRs), Innovation and Sustainable Development’ 8 – 10 November; Hong Kong, SAR, People’s Republic of China at http://www.iprsonline.org/unctadictsd/dialogue/docs/Rangnekar_2004-11-08.pdf 78 Sisule F. Musungu, ‘The Protection of Geographical Indications and the Doha Round: Strategic and Policy Considerations For Africa’, QUNO IP Issue Paper NO. 8, December 2008.

63

The commonly shared features between Articles 22 and 23 of TRIPS, include

the following79

:

‘Public’ or ‘Collective’ Right - Particularly where GIs are available through a

sui generis legislation (e.g. the EC system, Indian Law), GIs are

public/collective rights that are not vested in an individual firm, person or

enterprise. According to the Secretariat’s survey, eligibility criteria seek to

ensure that producer associations, public entities, local or regional governments,

etc. are the appropriate bodies initiating the application process.80

Moreover, in some cases the producer group is not the owner of the right but

only a user of the GI much like any other entity that fulfills the conditions

specified by the GI, as such a ‘collective’ right. Yet, the survey also notes that

in jurisdictions, where the legal means are not through a sui generis law but,

say, through trademark law (e.g. the US system), then it is possible for

collective / private rights like certification marks to be available.81

The same

will be seen later in the Chapter dealing with Trademarks/Collective marks and

GIs.

79 See Dr. Dwijen Rangnekar – ‘Geographical Indications’, A Review of Proposals at the TRIPS Council: Extending Article 23 to Products other than Wines and Spirits, June 2003 at http://www.iprsonline.org/resources/docs/Rangnekar%20-%20GI%20-%20Blue%204.pdf 80 See generally Sachin K Bhimrajka, ‘ Study on Relationship of Competition Policy and Law and Intellectual Property Rights’ at http://www.cci.gov.in/images/media/ResearchReports/sachin_report_20080730103728.pdf 81 See http://www.bitlaw.com/source/tmep/1306_01.html

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2.3.2 The Doha Development Round – key issues

The protection of GIs has, over the years, emerged as one of the most

contentious IPR issues in the realm of the TRIPS agreement of the WTO. 82

At the Fourth Ministerial Conference in Doha, Qatar, in November 2001 WTO

member governments agreed to launch new negotiations. They also agreed to

work on other issues, in particular the implementation of the present

agreements. The entire package is called the Doha Development Agenda

(DDA).83

The negotiations take place in the Trade Negotiations Committee and

its subsidiaries, which are usually, either regular councils and committees

meeting in “special sessions”, or specially-created negotiating groups. Other

work under the work programme takes place in other WTO councils and

committees.

The DDA was the Fourth Ministerial Conference undertaken by the World

Trade Organization (WTO), taking place in Doha, Qatar, in 2001. The DDA’s

aim was twofold. On the one hand it was to strengthen the global multilateral

trading system. On the other it aimed to establish conditions in order to increase

global welfare with a special focus on the needs of developing countries.

82 Chia, S. Y. 2010. Regional Trade Policy Cooperation and Architecture in East Asia. ADBI Working Paper 191. Tokyo: Asian Development Bank Institute. Available: http://www.adbi.org/working-paper/2010/02/02/3450.regional.trade.policy.east.asia/ 83 For a general reading on the Doha Agenda see http://www.wto.org/english/thewto_e/whatis_e/tif_e/doha1_e.htm

65

Thereby the DDA intends to support developing countries to reach the standard

they are aiming at and integrating further them in the global market. Though the

initial negotiations failed all of the unsettled items from the DDA still

remain at the center of all follow-up Ministerial Rounds, which failed all

together.

The Fifth Ministerial Conference in Cancún, Mexico, in September 2003, was

intended as a stock-taking meeting where members would agree on how to

complete the rest of the negotiations. But the meeting was soured by discord on

agricultural issues, including cotton, and ended in deadlock on the “Singapore

issues”. Real progress on the Singapore issues and agriculture was not evident

until the early hours of 1 August 2004 with a set of decisions in the General

Council (sometimes called the July 2004 package).

In 2003, the Doha Development Agenda was dealt a severe blow after the

Ministerial Conference in Cancun, Mexico, failed spectacularly to agree upon

how to proceed with the round. Without the willingness of developed countries

to commit to decreased agricultural protection and subsidies and of developing

countries to engage in the Singapore issues (which include investment,

competition policy, government procurement, and trade facilitation) , the

meeting failed to deliver any consensus.

The deadlock was broken in Geneva when the General Council agreed on the

“July package” in the early hours of August 1st, 2004. The main achievements

66

of the meeting include a road map for the future elimination of agriculture

export subsidies, new commitments to discipline trade-distorting farm

subsidies, and commitment to reduce agriculture tariffs to achieve substantial

improvements in market access while allowing for flexibility in the treatment of

sensitive products.

There was also agreement to initiate negotiations on trade facilitation, with the

objective to expedite the movement, release, and clearance of goods to

substantially reduce red-tape and improve customs procedures around the

world. The other Singapore issues were dropped. The delay in reaching

agreement meant that the original January 1st, 2005, deadline for finishing the

talks could not be met. Unofficially, members aimed to complete the next phase

of the negotiations at the Hong Kong Ministerial Conference in December

2005, including full “modalities” in agriculture and market access for non-

agriculture products, and to finish the talks by the end of the following year.

The original 1 January 2005 deadline was missed. After that, members

unofficially aimed to finish the negotiations by the end of 2006, again

unsuccessfully. Further progress in narrowing members’ differences was made

at the Hong Kong Ministerial Conference in December 2005, but some gaps

remained unbridgeable and Director-General Pascal Lamy suspended the

67

negotiations in July 2006. Efforts then focused on trying to achieve a

breakthrough in early 2007.84

By early 2008, substantial progress has been made in the Doha Round

negotiations in narrowing or resolving differences in negotiating positions. As a

result, a WTO Ministerial Conference was held in Geneva during July 21-29,

2008, in hopes of resolving the remaining differences.

However, the Ministerial Conference failed to narrow the gap on the most

contentious issues. In order to revive the negotiations before momentum was

lost, the chair of the WTO’s Committee on Agriculture released a new draft text

in December 2008, referred to as a “modalities framework” (i.e., specific

formulas and timetables for reducing trade-distorting farm support, tariffs, and

export subsidies, and for opening import markets). The “modalities framework”

summarized the current mutually agreed changes to existing disciplines, as well

as highlighting the areas of disagreement. As such, it was an attempt to lock in

the status of current concessions, while adding detail to outstanding issues and

providing a basis for further, more specific talks.

The WTO Ministerial Conference, the highest-level WTO governing body, met

in Geneva November 30 to December 2, 2009. The conference was not a

negotiating session for the Doha Round, but one of its main agenda items was

the Doha Round work program for 2010. Director-General Lamy had said that

84 See generally The Doha Declaration explained available at http://www.wto.org/english/tratop_e/dda_e/dohaexplained_e.htm

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the 2009 Ministerial Conference would be “an important platform for ministers

to send a strong signal of commitment to concluding the Doha Development

Round.” At the Ministerial, the U.S. Trade Representative, Ambassador Kirk,

stressed that to address gaps in the agriculture and other negotiations, the

multilateral negotiations in the Doha Round need to be supplemented with

sustained direct bilateral engagement, especially with advanced developing

countries. The WTO Director-General had called for a stock taking during the

last week of March 2010 to assess whether concluding the Doha Round in 2010

is “doable”.

Since the launch of the Doha Round of Multilateral Trade Negotiations the

WTO Members have, among other subjects, been negotiating possible rules for

enhanced protection of GIs.

There are two main issues being addressed. The first relates to the

establishment of a multilateral register for wines as mandated in Article 23 of

the TRIPS Agreement. The second issue relates to whether the level of

protection provided for wines and spirits under Article 23 of TRIPS, including

the requirement to establish a multilateral register for wines, should be extended

to cover all products.

In these negotiations, WTO Members remain sharply divided on a range of

procedural and technical points. The differences range from political issues

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such as mandates through to substantive questions regarding the costs and

benefits of the various proposed solutions.

Those opposing extension argue that the existing (Article 22) level of protection

is adequate. They caution that providing enhanced protection would be a burden

and would disrupt existing legitimate marketing practices. India, along with a

host of other likeminded countries pressed an ‘extension’ of the ambit of Article

23 to cover all categories of goods.

However, countries such as the United States, Australia, New Zealand, Canada,

Argentina, Chile, Guatemala and Uruguay are strongly opposed to any

‘extension’. The ‘extension’ issue formed an integral part of the Doha Work

Programme (2001). However, as a result of the wide divergence of views

among WTO members, not much progress has been achieved in the

negotiations and the same remains as an ‘outstanding implementation issue’.85

The subject of GIs is rather contentious, involving a significant split in views on

the WTO / TRIPS agreement protecting GIs; protection is currently limited to

GIs for wine and spirits. The European Union, India, Thailand, Kenya,

Switzerland and Turkey as also some Eastern European countries such as

Poland and Hungary wish to extend Article 23 WTO / TRIPS to protect all GI

products. These nations also wish this extension to involve the establishment of

85 Sidley Austin Brown & Wood, ‘Updated Analysis Of The Doha Round Of Trade Negotiations: New Opportunities & Challenges For Global Business’ available at http://www.sidley.com/db30/cgi-bin/pubs/dohaupdate.pdf

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a legally binding multilateral register for GI products. Australia, Canada,

Guatemala, New Zealand, Paraguay, Philippines and United States do not

support this extension.86

The Doha Development Agenda discussions about food GIs raise important

questions of policy regarding GIs and rural development, private (personal)

versus communal rights, traditional versus new creations, the expansion of the

protections offered for foods other than wines and spirits and the trade effects

of GIs, among others. Other issues are more technical and result from the

current TRIPS text, e.g., TRIPS provides less extensive protections for GIs for

foods than for trademarks or for wines and spirits. For example, the Agreement

permits on food labels the use of the word "style" or "type" in combination with

a GI, so long as consumers are not misled and there is no unfair competition. In

addition, the Agreement does not provide for an international registry, mandate

the international recognition of food GIs, or require that they be enforced.

India, along with a number of other countries has sought extended protection

for GIs especially in light of Article 23 of the TRIPS agreement. The additional

protection has been sought for products other than wine and spirits.87

On 21 April 2011, Darlington Mwape of Zambia circulated a 5-page report to

the Trade Negotiations Committee as did chairs of all the Doha Round

86 Josephberg, K., D. Lange, et al. (2003). "WTO Members Oppose New Geographical Indications Protections." Intellectual Property & Technology Law Journal 15(2): 23. 87 Doha Work Programme- The Extension of Additional Protection for GIs to Products other than Wines and Spirits at https://www.ige.ch/e/jurinfo/documents/j10409e.pdf

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negotiating groups. He concluded by saying that: “All delegations have made a

genuine effort to find common language while defending their interests. (…) I

do believe that working on treaty language formulations regarding the

structure, operation and implications of the Register has — for the first time —

helped all delegations to have a clearer view of each other’s positions,

proposals and wordings. While I am aware that there still is a long way to go, I

do believe that the Draft Composite Text (…) provides a good basis on which to

continue negotiations towards a multilateral system of notification and

registration for geographical indications for wines and spirits.”88

88 http://www.wto.org/english/tratop_e/trips_e/gi_background_e.htm#wines_spirits