Geographical Indications

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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 .
ICTSD-UNCTAD Project on IPRs and Sustainable Development253.3 The Scope of ProtectionA point repeatedly raised at the TRIPS Council bydemandeurs for GI-extension is that Section 3, unlikeany other part of the TRIPS Agreement, has a singlesubject matter definition (Article 22.1) but makesprovisions for a hierarchy in the scope of protectionbased on an arbitrary categorisation of goods(IP/C/W247/Rev.1; Section 4.1 below). In contrast,Article 27.1 defines the conditions to be met bypatentable subject matter and simultaneously deniesany possible discrimination on the grounds of “place ofinvention, the field of technology and whether theproducts are imported or locally produced”. Thehierarchy in Section 3 is more nuanced than often noted(Escudero, 2001). In addition to the widely noteddifference between Articles 22 and 23, wines enjoyadditional provisions in comparison to spirits throughthe provisions made in Articles 23.3 and 23.4 – thelatter has since been extended to include spirits. Yet, aswe note below, it does not directly follow that Article23.3 (homonymous indications) provides higherprotection to indications for wines in comparison toindications for spirits.Despite the differences in the scope of protection,there are some commonly shared features betweenArticles 22 and 23, which include the following:! Public or ‘Collective’ RightParticularly where GIs are available through a suigeneris legislation (e.g. the EC system), GIs arepublic/collective rights that are not vested in anindividual firm, person or enterprise. According to theSecretariat’s survey, eligibility criteria seek to ensurethat producer associations, public entities, local orregional governments, etc. are the appropriate bodiesinitiating the application process. Moreover, in somecases the producer group is not the owner of the rightbut only a user of the GI much like any other entity thatfulfils the conditions specified by the GI, as such a‘collective’ right. Yet, the survey also notes that injurisdictions, where the legal means are not through asui generis law but, say, through trademark law (e.g.the US system), then it is possible for collective/privaterights like certification marks 38 to be available.! Right to LicenseFollowing from above and in jurisdictions with a suigeneris legislation, the scope of protection does notinclude the ‘right to assign’ an indication – a right thatexists for trademarks (Article 20) and patents (Article28.2) within the TRIPS Agreement 39 . While someobservers may consider this as circumscribing the scopeof protection to GI-holders, it is also appreciated as afeature of GIs that corresponds with itspublic/collective right ethos. To be clear, allenterprises fulfilling the conditions specified in a GIhave the ‘right to use’ the indication but do not havethe ‘right to authorise use’ to others. It is useful to notethat in jurisdictions where the ‘legal means’ areprovided through laws other than a sui generis systemthe right to authorise use might be provided. Thus, forexample, if an IGO is protected as a collective orcertification mark then the owners of the mark possessthe right to license the mark. For example, in the US,the owner of the certification mark usually does notapply the mark (as in the case of trademarks) butassigns or authorises others to use the mark on goods orservices upon their meeting certain requirements(http://www.bitlaw.com/source/tmep/1306_01.html;accessed 13 May 2003).! Confusingly Similar ‘Marks’When comparing the protection granted to GIs to theprotection granted to trademarks, it has been notedthat the latter is relatively expansive since ‘confusinglysimilar marks’ will be automatically consideredinfringing (Harte-Bavendamm, 2000, p64). Incomparison, GIs are not granted any such provision towiden the economic space of an indication to include‘confusingly similar indications’.! Duration of ProtectionIn general, where GIs are protected through a suigeneris legislation, protection is offered without a fixedlimit in time and without procedures for renewal.Where renewal is required this occurs at intervals ofabout 10 years. However, in these jurisdictions it is alsothe case that GIs may lapse and be revoked if it fallsinto disuse or standards are not maintained. In otherjuridical systems, GIs have to follow provisions forrenewal that exist for collective marks, trademarks etc.as the case might be.! Geographical OriginFollowing on from the definition of GIs (Article 22.1),any good to be protected must originate in theterritory, region, or locality indicated in thedesignation.
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Geographical Indications

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