Geographical Indications

24Dwijen Rangnekar - Geographical Indicationsthe eligibility for or validity of registration of thetrademark or the ‘right to use’ the trademark. As such,the exception is directed to the scope of protectionavailable, viz. Articles 22.3 and 23.2, where provisionsfor refusal or invalidation of a trademark that consistsof or contains of a GI exist. The contingencies for thisexception to be considered applicable include the ‘goodfaith’ of the trademark-holder in question and the timewhen the trademark was acquired, viz. either beforethe provisions of this Section came into force in thecountry or before the GI was protected in its country oforigin. However, questions remain as to where theburden of proof lies and establishing ‘bad faith’ isjuridically problematic.the case of ‘Cabernet Sauvignon’ (Gervais, 1998, p136).Article 24.6 is widely considered as an exemption fromprotecting indications that are deemed generic.Article 24.7 is another exception that is directed atnegotiating the very complex trademark-GI relationship.The Article establishes a time limit (5 years) and acontingency (‘bad faith’) with respect to the exercisingthe right to invalidate or refuse registration oftrademarks that consist of or contain an indication. Toexercise their right with respect to an indication againsta trademark, the GI-holder(s) must initiate their actionwithin five years. The five-year period is calculated asfollows (Gervais, 1998, p137),“This test [i.e. establishing good faith] is sometimesdifficult to apply, as evidence of bad faith is not alwayseasy to produce. Showing bad faith based entirely oncircumstances is sometime rendered more difficult inlegal systems that presume good faith until the contraryis shown. In applying the test, the fact that anindication is particularly well-known and/or used(directly or indirectly) by undertakings located in ornear the ‘true’ place of origin should be taken intoaccount.” (Gervais, 1998, p136)Article 24.6 is an exception that concerns generic GIsacross all goods and includes a specific application ofthis principle in the instance of ‘products of the vine’(including those spirits made from vine). The first partof Article 24.6 allows exceptions from obligations inSection 3 where a term is customary in commonlanguage as a common name for certain goods andservices (e.g. ‘china’ for porcelain) 35 . As such, there aretwo tests to be established for the exemption: the termis customary in common language and it is the commonname for certain goods and services. Gervais (1998,p136) suggests that experts might be required todetermine whether a term is used in the ‘commonlanguage’ as opposed to specialist or ‘jargon’ use. Thesecond part of Article 24.6 is a specific application ofthe same principle for ‘products of the vine’. Here,Members are exempt from protecting indications thatare identical with the ‘customary name’ of a grapevariety in the territory at the date of entry into force ofthe WTO Agreement 36 . Thus, beyond the contingency ofthe date, the use of this exception requires thedemonstration that an indication is considered the‘customary name’ of a grape variety. Evidence ofwidespread use would be considered sufficient, as in“The request for the measure just described must bepresented (made known officially) not more than fiveyears after the ‘adverse’ (opposed to trademarks) use ofthe protected indication had become generally known(a factual criterion to be judged on a case by casebasis), or five years after the date of registration (withprevious or simultaneous publication) of the trademarkif it predates the other test.”This is clearly a complex exception that aims atproviding a degree of legal security to trademarkholders,but which will see difficult legal disputes.Article 24.8 recognises the right of a person to usehis/her name or the name of their predecessor inbusiness in the course of trade. This right iscircumscribed by requiring the name not to “misleadthe public”. Consequently, names that the competentauthority consider misleading will be not allowed.Article 24.9 is framed as a ‘dependency’ exception(Gervais, 1998, p137) that exempts Member countriesfrom protecting indications that are either notprotected in their country of origin or those that ceaseto be protected in their country of origin or are indisuse. It is suggested that this exception is aimed atthose indications that are destined only for exportmarkets (Gervais, 1998, p137). In other words, a GImust be protected nationally before an obligation forprotection falls on other Member countries.Consequently, in the absence of prior protection in thehome country, claims of misappropriation are legallyincorrect and reflect a misunderstanding of theobligations under Section 3 and, in particular, of thisexception 37 .