Geographical Indications

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26Dwijen Rangnekar - Geographical IndicationsThe scope of protection for GIs under TRIPS is largelybased on the principles that ground the basis forprotecting GIs, viz. protection against the use ofindications in a manner that might either mislead thepublic or be construed as deceptive and protectionagainst the use of indications in a manner that are actsof unfair competition.In addition, provisions exist in TRIPS that aim atnegotiating the relationship between trademarks andGIs, which have clear economic implications on thecommercial value and possible appropriation of rentswithin an indication. Consequently, we will addressthese provisions as part of the scope of protection. In asimilar sense, provisions exist for dealing with deceptiveindications and indications that are homonymous – bothof which have impact on the economic value ofprotected indications. Finally, provisions for creating amultilateral register for notification and registration ofindications are relevant in discussing the scope ofprotection. Hence, in our framework there are sixcomponents to the scope of protection:1. Misleading the PublicFollowing on from the Paris Convention and the MadridAgreement, provisions exist to prohibit the use ofindications (words, phrases, symbols and images) thatwill mislead the public about the good’s geographicalorigin. Thus, the use of iconic symbols like the pyramidsor the Taj Mahal to infer the good’s association withEgypt and India respectively or the use of a language orscript to impute erroneous geographical origin isprohibited. Consequently, under Article 22.2(a), theholder of the infringed indication has to bear theburden of proof in establishing that consumers havebeen misled. Article 23.1 indirectly implements thisprinciple by providing for stronger protection bydirectly prohibiting the use of indications for wines andspirits on wines and spirits that do not originate in theplace indicated by the GI in question even where thetrue origin of the goods is indicated. Moreover, thetranslated use of indications for wines and spirits byphrases such as ‘like’, ‘imitation’, etc. is also strictlyprohibited 40 . To continue, the burden of proof isnominal in that it requires verifying the truegeographical origin of the goods deemed to beinfringing. By way of illustration, labelling a pack ofbananas as ‘Antarctica bananas’ is permitted as it wouldnot be considered as misleading the public. However,the label ‘Antarctica Merlot’ is strictly prohibited underArticle 23.1, even though it is not consideredmisleading.2. Unfair CompetitionThe second element of the scope of protection,protection against the use of indications in a mannerthat are deemed to be acts of unfair competition asdefined in the Paris Convention (Box 4), is considered animportant achievement given the opposition to earlierattempts at revising the Paris Convention to includeIGOs (see Conrad, 1996, quoted in Watal, 2001). Article22.2(b) incorporates this element for all GIs. Accordingto WIPO’s International Bureau, affecting this elementof the scope of protection might require significanteffort:“In order to be successful in such an action, the plaintiffmust show that the use of a given geographicalindication by an unauthorised party is misleading and,as the case may be, that damages or a likelihood ofdamages results from such use. An action against theunauthorised use of a geographical indication based onunfair competition can only be successful if thegeographical indication in question has acquireddistinctiveness or, in other words, if the relevant publicassociates goods sold under that geographical indicationwith a distinct geographical origin and/or certainqualities. Since law suits based on passing off or unfaircompetition are only effective between the parties ofthe proceedings, the distinctiveness of a givengeographical indication must be shown every time thatgeographical indication is enforced.” (WIPO –International Bureau, 2000, paragraph 44)The International Bureau’s treatment of the subjectdoes not make clear whether the problem identified isunique to the application of these legal principles to GIsor whether this is a generic problem concerningprinciples of unfair competition. In the absence ofdetailed research, we speculate that some trademarkholders might find it easier to police their marks in theinternational economy because of their global presence
ICTSD-UNCTAD Project on IPRs and Sustainable Development27and resource endowment. This is the case with producerassociations of financially lucrative GIs, e.g. ScotchWhisky and Champagne. It is said that the Scotch WhiskyAssociation employs at least four full-time lawyers whoare at any one time pursue over 50 legal actions worldwide(Freedman, 1994). Blakeney (2001) reviews keylegal decisions where relevant principles of ‘passing off’and ‘unfair competition’ have been applied. Primafacie, it is difficult to imagine that an association ofindigenous communities would be similarly endowed interms of legal experience or expandable resources.Moreover, the need to repeatedly establish the sameprinciple in every jurisdiction that a potential violationis identified and the demand to demonstrate thepublic’s association with the indication are clearlydemanding 41 . Consequently, one might be motivated toagree with the view expressed in the quote above. Inaddition, as we noted earlier, under Article 23.1indications for wines and spirits cannot be used intranslated form.Box 4: Unfair Competition under the ParisConventionPursuant to Article 10bis of the Paris Convention, unfaircompetition means “any act of competition contrary tohonest practices in industrial or commercial matters”,which includes the following:(1) All acts of such anature as to create confusion by any means whateverwith the establishment, the goods, or the industrial andcommercial activities, of a competitor;(2) Falseallegations in the country of trade of such a nature as todiscredit the establishment, the goods, or the industrialand commercial activities, of a competitor;(3)Indications or allegations the use of which in course oftrade is liable to mislead the public as to the nature,the manufacturing process, the characteristics, thesuitability for their purpose, or the quality of the goods.3. Trademarks and GIsStemming from initial proposals submitted by the EC,Switzerland and Australia are provisions aimed atnegotiating the trademark-GI relationship (Gervais,1998, p127). In general terms, TRIPS allows for refusalor invalidation of a trademark which contains or consistsof a GI when the said goods do not originate in theterritory indicated. However, comparing Article 22.3and 23.2 we note there are significant differences in thescope of these provisions. Simply stated, Article 22.3has a requirement for the consumers to be misled,whereas Article 23.2 does not have this contingency.The interface between GIs and trademarks is complex.As a general rule, trademarks must be distinctive so asto fulfil the role of distinguishing goods/services of onemanufacturer from those of another. Consequently, thegeneral proposition that GIs are excluded from thedomain of trademarks (Blakeney, 2001). Yet, there aremany conceivable and real instances where a trademarkconsists of or contains a GI. For example, the use ofAntarctica as a trademark for bananas is consideredpermissible as there is no deceptive element in terms ofimplying geographical origin (WIPO – InternationalBureau, 2001, paragraph 103). Moreover, trademarkscan consist of GIs in other circumstances, such as whenthe use of a GI is entirely fanciful, though not denotinggeographical indication per se, and the trademark isconsidered distinctive as in the case of ‘Mont blanc’ forhigh quality writing equipment and ‘Thames’ forstationery (Harte-Bavendamm, 2000; Blakeney, 2001). Itcould also be the case that the reputation of a traderendows the GI with secondary significance leading to anidentification of the trader as such. In such instances, atrademark can consist of a GI and examples of thissituation include ‘Oxford University Press’, Schwartauerfor high quality jams, etc. manufactured in NorthGerman town of Bad Schwartau. The overlap betweenthe two domains of IPRs is real and imminent. Thedisciplines in the TRIPS Agreement provide, at best a“delicately balanced solution” (WIPO – InternationalBureau, 2000), or at worst an unclear and yet to benegotiated relationship (cf. Box 5).
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Geographical Indications

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