Geographical Indications

18Dwijen Rangnekar - Geographical Indications1. GIs under TRIPS refers explicitly to ‘indicationswhich identify a good’, whereas earlier treaties(viz. Madrid and Lisbon Agreements) focus onproducts. This difference between ‘goods’ and‘products’ have implications on the subject matterprotected, i.e. whether services are included orexcluded (cf. Box 3).2. GIs are indications pointing to the ‘geographicalorigin’ of a product to a given country, region orlocality, whereas appellations of origin mustnecessarily be geographical names of countries,regions or localities 19 . Thus, not only iconicsymbols but also script or language that imputesgeographical origin are permissible. Finally, asnoted above, GIs can be denominations that arenot ‘direct geographical names’ (such as Basmati).3. ‘Reputation’ is an additional element along with‘given quality’ and ‘other characteristics’ toconstitute the notion of GI. This goes beyond theLisbon Agreement's exclusive focus on ‘quality andcharacteristics’ of a product 20 . In other words,under the TRIPS Agreement, ‘reputation’, ‘quality’and ‘other characteristics’ are each in their ownright a sufficient condition, ceterius paribus, forthe grant of a GI. Consequently, goods having acertain ‘reputation’ but no specific qualityattributable to their place of origin would remainoutside the remit of appellations of origin, butwould fulfil the TRIPS definition.Naturally, questions arise as to how the definition istranslated into regulation and practice. It has beennoted that, in comparison to other TRIPS-obligations,GI-implementation has occurred in the most diverse anduncoordinated manner (Watal, 2001, p264). This lack ofharmony undermines the Agreement’s general objectiveof establishing a predictable multilateral system of rulesand disciplines protecting IPRs treaty and the desire topromote effective and adequate protection of IPRs (cf.Preamble to the TRIPS Agreement) 21 . The onlycomprehensive information on the implementation ofthe obligation concerning GIs exists in the WTOSecretariat’s (2001) review under Article 24.2(IP/C/W/253). This review covered 37 countries – mostof which are developed countries and a few beingeconomies in transition. (See Table 1). Due to the smallnumber of countries covered, questions may be raisedon the representativeness of the survey. Moreover, theabsence of developing countries is notable. Finally,information collated by the Secretariat throughresponses by Member countries appears to beincomplete. For example, in Andean Pact countries(Ecuador, Peru and Venezuela in Table 1) the legalmeans for protecting IGOs include collective marks andtable 1 does not reflect this reality.Section 3 only obliges Members to provide the ‘legalmeans for interested parties’ to secure their rights. Asthe legal means are not specified, Members are free todetermine the most appropriate legal means. TheSecretariat survey is a useful resource in identifyingalternative legal means to fulfil this obligation, wherethe following three categories appear to be standardpractice:! Laws focussing on business practicesUnder this category no specific provision for protectionof IGOs is made available. Instead, indirect protection isoffered through provisions that prohibit certain businesspractices that involve IGOs, such as consumerprotection and unfair competition. In some instancesreference is also made to provisions of common law,e.g. passing off. Briefly, the essence of provisions underthis category is “not whether the IGO as such is eligiblefor protection but whether a specific act involving theuse of an IGO has contravened the general standardscontained in the law relating to unfair competition,consumer protection, trade description, food standards,etc.” (IP/C/W/253, para 11).! Trademark lawProvisions under this category fall into two broadgroups, one concerns protection against registration anduse of IGOs as trademarks and the other concernsprotection of IGOs against unauthorised use. Throughthe former, protection is offered against theregistration of trademarks that contain or consist ofIGOs which may mislead or confuse consumers as to thegeographical origin of the product. The latter group ofprovisions allow for the protection of IGOs as collective,certification or guarantee marks, which protect againstunauthorised use by third parties. Interestingly,evidence exists of ‘individual trademarks’ as fulfillingthe role of an IGO where only one enterprise producingthe good in question exists (e.g. an enterprisecontrolling a natural resource like mineral springs).! Special means of protectionIncluded within this category are legal means that areeither dedicated to the protection of IGOs and thoseprovisions for special protection of IGOs within otherlaws (e.g. trademarks, marketing and labelling laws). Ithas been observed that dedicated IGO laws tend toprovide stronger protection.