Geographical Indications

ICTSD-UNCTAD Project on IPRs and Sustainable Development7actualising the economic potential of this element of the scope of protection. In contrast,under Article 23.1 an indication cannot be used in translated form thus constraining the scopeof free-riding on an indication.In general terms, Section 3 allows for refusal or invalidation of a trademark, which containsor consists of a GI when the said goods do not originate in the territory indicated. However,comparing Article 22.3 and 23.2 we note there are significant differences in the scope ofthese provisions: Article 22.3 has a requirement for the consumers to be misled, whereasArticle 23.2 does not have this contingency. The relationship between trademarks and GIs iscomplex and unanswered questions remain. In particular, under what circumstance will a GItake precedence over a trademark and vice versa and it is also not clear whether the two cancoexist (cf. Box 5).A range of situations can be identified where indications are literally true but nonethelesstheir use is considered misleading. This may be the case with deceptive indications and/orhomonymous indications. Article 22.4 makes provisions for protection against deceptiveindications. The case for homonymous indications for (only) wines is quite similar. Article23.3 envisages honest use of the indication by producers in each of the different countriesand obliges each Member to “determine the practical conditions under which thehomonymous indications in question will be differentiated from each other”, while ensuringequitable treatment of producers and that consumers are not misled.Finally, Article 23.4 obliges Members to enter into negotiations on establishing a multilateralregister for the notification and registration of GIs for wines to facilitate their protection.This provision was later extended to include spirits.GI-Extension: Analysing the TRIPS Council DebateUsing submissions to the TRIPS Council as datum (Box 6) the paper identifies three themes:(a) the ‘negotiating balance’ achieved at the time of the Uruguay Round, (b) insufficiency oradequacy of the scope of protection available under Article 22 (in contrast to Article 23), and(c) the potential impact of GI-extension on trade, consumers and TRIPS obligations. As such,the debate on GI-extension is not concerned with the definition of GIs (Article 22.1) but withthe inherent hierarchy in the level of protection in Section 3. Demandeurs repeatedly drawattention to the unique feature of Section 3 where, unlike any other Section in the TRIPSAgreement, a single subject matter definition is complemented by a hierarchy in the scope ofprotection.As for the first theme, demandeurs and those opposing GI-extension present a sharedunderstanding that the different levels of protection within Section 3 is the result of aspecific political and trade balance negotiated during the Uruguay Round. This leads to twoquestions: (a) is there any justification for maintaining the hierarchy in Section 3? and (b) is