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focal point around which the issues of lineates the appellation of origin to
geographical indications revolve. How- mean:1
ever, under the TRIPS Agreement WTO “Geographical name of a country, re-
members are not required to extend pro- gion, or locality, which serves to desig-
tection to the geographical indications if nate a product originating therein, the
it becomes generic for the goods. This quality and characteristics of which are
provision is likely to be abused. The dan- due exclusively or essentially to the geo-
ger is that the goods well- known by its graphic environment, including natural
geographical origin having reputation and human factors.”
and/or characteristics may be termed ‘ge- The country of origin is the “country
neric’ and thereby it may cease to get whose name, or the country in which is
protection of geographical indications .Be situated the region or locality whose
that as it may, Article 24 sets out certain name constitutes the appellation of origin
exceptions to this protection. which has given the product its reputa-
Another basic issue arising out of Arti- tion.”2
cle 23(4) of the TRIPS Agreement relates The latter defines the expression ‘indi-
to multilateral system of geographical cations of source’ to mean:3
indications. There is a sharp division “Goods bearing a false or deceptive
among the WTO members about the indications by which one of the countries
model. to which this agreement applies, or a
The conflict between trademarks and place situated therein, directly or indi-
geographical indications and its resolu- rectly indicated as being the country or
tion has also been debated which has place of origin”.
given rise to various conflicting propos- However, the expression ‘geographical
als. indications’ under the TRIPS Agreement
This paper seeks to examine the basic has been defined as “indications which
issues relating to TRIPS Agreement in identify a good as originating in the terri-
Part I and the law and practice relating to tory of a member, or a region or locality
protection of geographical indications in in that territory, where a given quality,
India in Part II. reputation or other characteristic of the
good is essentially attributable to its geo-
Concept of Geographical Indications graphical origin.”4
The geographical indication owes its Let us turn to examine the controversy
origin from the Paris Convention, 1883. about the additional protection provided
Even though the Convention did not use under Article 23 of the TRIPS Agreement.
the said expression, Article 1(2) of the
Convention used the expressions ‘appel- Current Controversy about Higher
lation of origin’ and ‘indications of Level of Protection Given only to
source’. The scope of the aforesaid ex- Wines and Spirits
pression has been delineated in Lisbon Article 23 of the TRIPS Agreement
and Madrid Agreements. The former de- raises three important issues, namely:
SRIVASTAVA: GEOGRAPHICAL INDICATIONS UNDER TRIPS AGREEMENT 11
1 Why higher level of protection Agreement –the US and EU. [Such] divi-
has been provided only for wines sions also existed among other developed
and spirits under Article 23? countries and among developing coun-
2 Whether the aforesaid higher tries…” The final text of the Agreement
level of protection under Article reflects these divisions and, in mandating
23 be extended to some other further work, recognizes that agreement
goods or products? could not be reached in a number of im-
3 What administrative cost is in- portant areas6. Whatever may be the ex-
volved in giving higher level of planation, the outcome was that the cur-
protection to other products and rent text of TRIPS Agreement provides a
goods? basic standard of protection and a higher
In order to understand the aforesaid is- standard specifically for wines and spirits.
sues it would be desirable to mention the The inclusion of higher standard does not
advantages flowing from Article 23. The refer to the unique characteristics of
additional protection under Article 23 wines and spirits but was rather a com-
have several distinct advantages as com- promise reached in negotiations7. Be that
pared to Article 22: (1) The protection is as it may, the negotiation reveals the suc-
absolute and unqualified. It even prohib- cess story of EU.
its the translation of geographical indica-
tions or attachment of the expression such Issue No 2
as ‘kind’, ’type’, ’style’ or ‘imitation.’(2) Whether the higher level of protection
There is an obligation to refuse or invali- of geographical indications given only to
date the registration of trademark, which wines and spirits under Article 23(1) of
constitutes or consists of geographical the TRIPS Agreement be extended to
indications. (3) There is an obligation to other products? This issue arose as
enter into negotiation to increase protec- pointed out in previous section due to
tion. In the light of above we propose to imbalances in protection under Article 23.
examine the aforesaid issues. India, therefore, sought additional protec-
tion for geographical indications of their
Issue No 1 goods such as basmati rice, Darjeeling
In order to examine this issue it would tea, alphonso mangoes and Kolhapuri
be pertinent to refer to the report of UK chappals (shoes), etc., as in case of wines
Commission on Intellectual Property and spirits under the TRIPS Agreement.
Rights. The Commission in its report has It argued that the additional protection
given the true picture of the negotiation would deliver enhanced benefits via in-
process involved on the geographical in- creased trade opportunities for members
dications section of the TRIPS Agree- and producers and, more effective protec-
ment which according to it “were among tion for consumers and ultimately would
the most difficult” ones5. Indeed “this promote export of such products.
stemmed from clear divisions between In a paper submitted jointly by India
the main proponents of the TRIPS along with Egypt, Indonesia, Cuba, Do-
12 J INTELLEC PROP RIGHTS, JANUARY 2004
conditions. Such tea has a distinctive and ine product. However, this reasoning is
naturally occurring quality and flavour. rejected. Again, such a line of argument
Darjeeling tea has since long acquired an seems to lead to dangerous … conse-
international reputation and is a clearly quences when applied to other fields of
identifiable geographical indication. intellectual property rights. There is no
Complaints were received from time to valid argument why it should be different
time from all over the world that tea sold for geographical indications. The exam-
as ‘Darjeeling’ did not always originate ple of ‘feta’ cheese cited in document
from the Darjeeling plantation district of IP/C/W/289 (and basmati rice) may serve
India and hence the consumers were be- as an example of the potential danger of a
ing deprived of the special quality and famous geographical indication becoming
flavour that they expect from Darjeeling a generic if it is widely used with a de-
tea as a product of geographical indica- localizing indication.14”
tion. Quite apart from this, another glar-
ing instance of naked misuse of geo- Non- effectiveness of Article 22 Protection
graphical indications is the incidence of It has been argued by countries oppos-
patenting basmati rice by RiceTec Inc in ing the move for extending the scope of
United States on 2 September 1997, Article 23.1 that the TRIPS Agreement
which supports the case of the country already obliges members to facilitate the
pleading for additional protection of cer- protection of geographical indications for
tain goods under Article 23(1). all goods. It also provides members with
Our view is fortified by the communi- the flexibility to implement their obliga-
cation sent to WTO on 14 September tion in a manner most appropriate to their
2001 from the permanent mission of individual legal system and practice15.
Switzerland and supported by several They have cited some examples as to how
other members of WTO. In the said Article 22 operates to ensure effective
communication it is stated that “one of protection for geographical indications
the key reasons for advocating extension for products other than wines and spirits
is a desire to prevent more geographical include16:
indications from becoming generic — ‘Darjeeling’ (India) for tea17; ‘Stil-
through their use in translated form or by ton’ (Great Britain) for cheese18; ‘Swiss’
the use of a corrective or de-localizing (Switzerland) for chocolate19; and
indications for products which are not ‘Roquefort’ (France) for cheese20 - pro-
from the place of origin mentioned by the tected by the United States as registered
geographical indications used or do not certification marks.
possess the particularities and quality — ‘Suisse/Swiss’ (Switzerland) for
characteristics owed to that origin. In chocolate; ‘Indian Spices’ (India) for
document IP/C/W/289, it is maintained spices; ‘Ceylon’ (Sri Lanka) for tea;
that such use and the fair imitation of a ‘Florida’ (US) for oranges; ‘Freiburger’
product often enhances the intrinsic value (Switzerland) for cheese; ‘Stilton
of a geographical indication or the genu- Cheese’ (Great Britain) for cheese – pro-
14 J INTELLEC PROP RIGHTS, JANUARY 2004
It is submitted that there is also no regarding the purpose, nature, scope, pro-
force in the argument of the countries cedure, cost and effect of the proposed
opposing the move for extension of Arti- multi-lateral system for the notification
cle 23 on the ground that the demand, if and registration of geographical indica-
accepted, would require amendment in tions. This issue has received momentum
the law or require issuance of notification since the Ministerial Conference at Doha
by the concerned government. Even as- in November 2001. Thus, Para 18 of
suming that the arguments have some Doha Round, inter alia, declares:
force one would have expected to know With a view to completing the work
as to how many countries have taken leg- started in the Council for Trade-Related
islative steps in compliance of Art 23-1 of Aspects of Intellectual Property Rights
the TRIPS Agreement. The countries (Council for TRIPS) under the implemen-
opposing the move for any change in Ar- tation of Art 23.4 we agreed to negotiate
ticle 23 have not addressed this point. the establishment of a multi-lateral sys-
Quite apart from above it may be tem of notification and registration of GIs
added that in the absence of any reliable for wines and spirits by the 5th Session of
economic assessment it is difficult to an- the Ministerial Conference….
swer the issues raised by such members. The matter was taken up, as a follow
In this connection it would be relevant to up action, in the Trade Negotiation
refer to the observations made by the UK Committee. The Committee agreed on
Commission on Intellectual Property 1 February 2000 wherein it was resolved
Rights that the administrative burden in to take up the matter in the Sixth Special
giving effect to new legislation for those Session of the TRIPS Council. Accord-
countries without current protection ingly, the matter was taken up in the Spe-
would not appear that great 26. Further cial Session of the TRIPS Council on 29-
TRIPS Agreement does not require any 30 April 2003.However, the Special Ses-
formal national registration system for sion witnessed ‘widely divergent propos-
geographical indications, and therefore als’28, inter alia, on the issues discussed
the burden and costs of compelling en- below:
forcement falls on the holders of the geo-
graphical indications, not upon the Gov- The Basic Issues
ernment.27 A perusal of the debates29 on multi-
lateral system for the notification and reg-
Policy Debate on Multilateral System istration of geographical indications in
of Registration of Geographical Indica- the various sessions of TRIPS Council
tions suggests the following issues relating to
Article 23(4) of TRIPS Agreement:
The Context (i) What is meant by the expression
One of the most pressing issues of “in order to facilitate the protec-
geographical indications arising out of tion” occurring under Article
Article 23(4) of the TRIPS Agreement is 23(4)?
16 J INTELLEC PROP RIGHTS, JANUARY 2004
(ii) What is meant by the expression WTO may challenge the registration
a “system if notification and reg- within a period of 18 months on any one
istration”? of the four grounds, namely, (i) non-
(iii) What should be the procedure for compliance with the definition of geo-
registration? graphical indications under Article 22(1);
(iv) What would be cost involved in (ii) absence of protection in the country
registration to the government, of origin; (iii) genericness within the
procedure, consumer and admin- meaning of Article 24(6), and (iv) use of
istrative bodies? geographical indication is misleading un-
(v) What would be the legal effect of der Article 22(4). After expiry of the
the proposed registration?30 stipulated period, the geographical indica-
(vi) What would be the mechanism tions would become fully and indefinitely
for settling differences regarding protected in all member States.33This
geographical indications?31 proposal has also been supported by
(vii) What would be the role of Secre- Hungary 34.
tariat?
US Model
The joint proposal of United States,
Models for Multi-lateral System for the Notifi- Canada, Chile and Japan provides a sys-
cation and Registration of Geographical Indica-
tions tem of voluntary registration that is bind-
The multilateral system of notification ing only on those seeking to participate in
and registration is key to the geographical the system. Participating members would
indications. However, there is a sharp make use of the register while examining
division among the WTO members about trademark applications containing or con-
the model. There are four different pro- sisting of geographical indications. Non-
posals. Let us now turn to examine them. participating WTO members would be
encouraged to make similar use of regis-
EC Model ter.35 Since then the proposal has been
European Community and their mem- supported by Argentina, Australia, Co-
ber States envisage a system of full regis- lumbia, Costa Rica, Dominion Republic,
tration. Under the Scheme member States Ecuador, El Salvador, Guatemala, Hon-
are required to notify their domestic geo- duras, Namibia, New Zealand, Philip-
graphical indications together with copies pines and Chinese Taipei36.
of any regional, bilateral or multi-lateral Hong Kong Model
agreements protecting such geographical Hong Kong, China envisages a regis-
indications along with proof of compli- tration system at WTO level to which
ance with the definition of GIs under Ar- member States may communicate their
ticle 22(1) of the TRIPS to the WTO Se- respective geographical indications. The
cretariat.32 Thereupon, the Secretariat will notification of the geographical indication
notify all the members of WTO about will be examined only on formal grounds
such submission. Any member of the at WTO level, i.e. whether or not the
SRIVASTAVA: GEOGRAPHICAL INDICATIONS UNDER TRIPS AGREEMENT 17
Act, 1994 provides that trademarks that graphical area of any use of that
consist exclusively of signs or designa- trademark;
tion which serve to indicate geographical (iii) the duration, extent and geo-
origin should not be registered. Sections graphical area of any promotion
49 and 50 provide for the registration of of the trademark, including ad-
geographical names as certification and vertising or publicity and presen-
collective marks. tation, at fairs or exhibition of the
Position in India goods or services to which the
In India, the Trade Marks Act, 199940, trademark applies;
and the Geographical Indications of (iv) the duration and geographical
Goods (Registration and Protection) Act, area of any registration of or any
1999, modelled on the lines of TRIPS publication for registration of that
Agreement contain specific provisions for trademark under this Act to the
the resolution of conflict between extent they reflect the use or rec-
trademark and geographical indications. ognition of the trademark; and
Thus Section 9 of the Trade Marks Act,
inter alia, provides that the trademarks (v) the record of successful enforce-
which consist exclusively of marks or ment of the rights in that trade-
indications which may serve in trade to mark; in particular, the extent to
designate the kind, quality, quantity, in- which the trademark has been
tended purpose, values, geographical ori- recognized as a well-known
gin or the time of production of the goods trademark by any court or regis-
or rendering of the service or other char- trar under that record.41
acteristics of the goods or service shall Where a trademark has been registered
not be registered. However, a trademark in good faith disclosing the material in-
shall not be refused registration before the formation to the Registrar or where right
date of application for registration it has to trademark has been acquired through
acquired a distinctive character as a result use in good faith before the commence-
of the use made of it or is well-known ment of this Act, then, nothing in this Act
trademark. shall prejudice the validity of the registra-
The Registrar shall, while determining tion of that trademark or right to use that
whether a trademark is a well-known trademark on the ground that such trade-
trademark, follow the following norms: mark is identical with or similar to a well-
(i) the knowledge or recognition of known trademark.
that trademark in the relevant sec-
tion of the public including The Geographical Indications of
knowledge in India obtained as a Goods (Registration and Protection) Act,
result of promotion of the trade 1999, contains special provisions relating
mark; to trademark and prior user. Thus Section
(ii) the duration, extent and geo- 25 prohibits registration of geographical
indications as trademarks. However, Sec-
SRIVASTAVA: GEOGRAPHICAL INDICATIONS UNDER TRIPS AGREEMENT 21
tion 26 protects a trademark which con- garia, The Czech Republic, Georgia,
tains or consists of a geographical indica- Hungary, Iceland, Jamaica, the Kyrgyz
tion which has been applied for or regis- Republic, Liechtenstein, Moldova, Nige-
tered in good faith under the trademarks ria, Slovenia, Switzerland and Turkey by
law or where such trademarks have been communication dated 14 September
used in good faith before the commence- 2001.42 Be that as it may, the attempt of
ment of the proposed legislation or before patenting basmati rice by RiceTec Inc in
the date of filing of an application for reg- the United States and thereby misleading
istration of a geographical indication. It the consumer as to the geographical ori-
also provides that this Act shall not apply gin of goods and false labeling of Darjee-
to geographical indication with respect to ling tea by producers (as in the case of
goods or class or classes of goods, which wines and spirits) have already caused
have become the common name of such serious damage to India, and raised the
goods in India on or before Ist January eyebrow of several members of WTO
1995. It protects the right of any person to including India. However, several other
use his name or the name of his predeces- members of WTO have objected to such a
sor in business except where such name is move. In order to justify the demand of
liable to cause confusion or mislead the WTO members asking for extension of
public. It further provides that no action the coverage of Article 23 one may refer
in connection with the use of registration to the following remarks of the UK
of a trademark shall be taken after five Commission of Intellectual Property
years from the date from which such use Rights on giving higher protection to
or registration which infringes any geo- wines and spirits under Article 23 of the
graphical indication registered under this TRIPS Agreement:
Act has become known to the registered (i) It has no legal basis.
proprietor or the authorized user. (ii) It does not refer to unique charac-
teristics of wines and spirits.
Conclusions (iii) It is merely a compromise
There is lot of resentment among sev- reached in negotiation.
eral members of WTO regarding Article It is a story of success of European
23 of the TRIPS Agreement, which grants Community and failure of other countries
higher status only to wines and spirits and to gain anything but subjected to the addi-
excludes other goods and products out of tional burden in case of wines and spirits.
its purview. This discrimination or imbal- Indeed the demands of the WTO mem-
ance in protection has led to demands for bers of giving higher protection to bas-
additional protection to other goods and mati rice, Darjeeling tea and other prod-
products from a number of countries in- ucts are based on continued infringement
cluding India, Pakistan, Mauritius, Sri of geographical indications by some
Lanka, Kenya, Egypt, Indonesia, Cuba, countries. What is more disturbing is that
Dominican Republic of Honduras and even countries such as US, which gives
Nicaragua followed by Bangladesh, Bul- protection to Darjeeling tea, etc. allows
22 J INTELLEC PROP RIGHTS, JANUARY 2004