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Geographical Indications PDF
Indications
An Introduction
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Foreword
This publication provides an introduction to geographical indications (GIs), explaining
their basic features, use and protection as an intellectual property right. Written for
non-experts, it is a starting point for readers seeking to learn more about the topic.
This publication was prepared by the Design and Geographical Indication Law
Section of the World Intellectual Property Organization (WIPO), composed of María
Paola Rizo, Nathalie Frigant and Violeta Jalba, under the supervision of Marcus
Höpperger. The authors express their sincere thanks to Daphne Zografos, Traditional
Knowledge Division of WIPO, Matthijs Geuze, International Appellations of Origin
Registry of WIPO, and Valentina Jiménez-Burger for their valuable comments.
GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Table of contents
page 6 18 Geographical indications as
a means to preserve traditional
knowledge and traditional
Introduction
cultural expressions
page 8
page 21
Key concepts
Developing a geographical
8 What is a geographical indication? indication - what is involved?
Introduction
Since the adoption of the Agreement on The inclusion of indications of source and
Trade-Related Aspects of Intellectual appellations of origin and the specific ref-
Property Rights (the TRIPS Agreement) erence to a series of agricultural products
in 1994, which contains a section on in early versions of the Paris Convention
geographical indications (GIs), this form are clear evidence that the 19th century
of intellectual property (IP) has attracted diplomats who negotiated the international
increasing attention from policymakers convention, primarily to protect inventions
and trade negotiators, as well as pro- shown at international exhibitions, had not
ducers (mostly of agricultural products), overlooked this, arguably, most ancient
lawyers and economists across the form of intellectual asset. Famous ancient
world. It is undoubtedly because of the brands are sometimes associated with
TRIPS Agreement section on GIs that the products that have a specific geographi-
issue now appeals to more and more na- cal origin and go back as early as the 5th
tions beyond the rather restricted list of century BC, such as wine from the Greek
countries that have traditionally pursued island of Chios, referred to as an expensive
active GI policies. luxury good in classical Greece.
GIs have traditionally been considered to The period following the conclusion of the
be IP. Article 1(2) of the Paris Convention Paris Convention saw numerous efforts
for the Protection of Industrial Property aimed at increasing the level of multila-
of 1883 (Paris Convention) refers to “in- teral protection afforded to indications of
dications of source” and “appellations of source and appellations of origin, which led,
origin” as objects of industrial property. among others things, to the adoption of
Paragraph (3) of the same article speci- the Madrid Agreement for the Repression
fies that the term “industrial property” is of False or Deceptive Indications of Source
not limited to “industry and commerce” on Goods of 1891, and the Lisbon Agree-
proper, but applies also to agricultural and ment for the Protection of Appellations of
extractive industries and to all manufac- Origin and their International Registration
tured or natural products, such as “wines, of 1958 (Lisbon Agreement), and to the
grain, tobacco leaf, fruit, cattle, minerals, inclusion, in the TRIPS Agreement, of a
mineral waters, beer, flowers and flour”. special section on GIs.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
There is an abundant literature addressing Success stories from the world of GIs
the legal effects, rights and obligations demonstrate that GIs, if well managed, are
flowing from the various multilateral agree- intangible assets with interesting potential
ments on GIs, as well as an ever-growing for product differentiation, the creation of
number of bilateral agreements containing added value, as well as spin-off effects in
chapters on GIs. This publication offers areas related to the primary product for
an introduction to GIs for readers new to which the GI is known.
the subject. It provides an overview of key
definitions, basic policy considerations
concerning the protection of GIs and an
introduction to salient IP law-related issues.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Key concepts
What is a geographical indication?
…indications which identify a good as originating in the territory of a Member [of the World
Trade Organization], or a region or locality in that territory, where a given quality, reputation
or other characteristic of the good is essentially attributable to its geographical origin.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Source: www.inao.gouv.fr
Confédération générale des producteurs de lait de
brebis et des industriels de Roquefort, www.roquefort.fr
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Photo: CIGC
Can geographical indications only
be used for agricultural products?
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
SWISS WATCHES
The terms “Switzerland” or
The term SWISS or SWISS MADE for watches “Swiss” can be used on a watch if:
is commonly understood as referring to a high- • its movement (the motor of the watch)
quality watch manufactured in Switzerland. is Swiss;
Swiss watches enjoy a great reputation. But • its movement is cased up in Switzerland;
what does “Swiss made” actually mean for and
a watch? • the manufacturer carries out the final
inspection in Switzerland.
A Swiss Ordinance of December 23, 1971, gov-
erns the use of the appellation “Switzerland” A movement is considered
or “Swiss” for watches. This law sets out the to be Swiss if:
conditions under which these indications can • it has been cased up in Switzerland;
be used on watches. As stated on the Federa- • it has been inspected by the manufacturer
tion of the Swiss Watch Industry’s website, in Switzerland; and
the understanding is that “Swiss quality for • the components of Swiss manufacture
watches depends on the amount of work ac- account for at least 50 per cent of the
tually carried out on a watch in Switzerland, total value, without taking into account
even if some foreign components are used in it”. the cost of assembly.
Photo: © Richemont
Source: Ordinance governing the use of the appellation “Switzerland” or “Swiss” for watches, of December
23, 1971. See also the website of the Federation of the Swiss Watch Industry at www.fhs.ch
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
“(1)… the geographical denomination of a country, region, or locality, which serves to des-
ignate a product originating therein, the quality or characteristics of which are due exclu-
sively or essentially to the geographical environment, including natural and human factors.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Developing a geographical
indication - why?
Interest in GIs has thrived in recent years. Brand recognition is an essential aspect
The obligation, under the TRIPS Agree- of marketing. Geographical indications
ment, for Members of the World Trade convey information about the origin-bound
Organization (WTO) to protect GIs has, to characteristics of a product. They there-
a large extent, triggered this attention. But fore function as product differentiators
beyond that, what creates the attraction? on the market by enabling consumers
The short answer is that they are seen as to distinguish between products with
useful tools in marketing strategies and geographical origin-based characteristics
public policies, for which there has been and others without those characteristics.
growing interest in the last two to three Geographical indications can thus be
decades. a key element in developing brands for
quality-bound-to-origin products.
Geographical indications
as differentiation tools in
marketing strategies: from mere
source indicators to brands
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
A number of studies indicate that, under In the Jura Mountains, a medium-sized moun-
appropriate conditions, GIs can contrib- tain range north of the Alps in eastern France,
ute to development in rural areas. The winters are harsh and long. The mountains
entitlement to use a GI generally lies with are not suitable for growing cereals, but their
regional producers, and the added value varied flora and large prairies are perfect for
generated by the GI accrues therefore to obtaining high-quality cow’s milk.
all such producers.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
protection of a GI prohibits the transfer of unsustainable, and the skills and knowl-
the indication to producers outside the edge involved in the technique to be lost.
demarcated region.
Geographical indications can provide pro-
While GIs do not directly protect the tection for TK and TCEs against misleading
subject matter generally associated with and deceptive trading practices. They can
TK or TCEs, which remains in the public also benefit indigenous communities by
domain under conventional IP systems facilitating the commercial exploitation of
and is open to misappropriation by third TK and TCEs, and encouraging TK-based
parties, they can indirectly contribute to economic development. Geographical
their protection in several ways. indications provide indigenous com-
munities with a means to differentiate
First, GI protection recognizes the cultural their products and benefit from their
significance of TK and TCEs and can help commercialization, thereby improving
preserve them for future generations. For their economic position.
example, in designing a GI scheme for a
product, the production standards, also
known as the “code of practice” or “regu-
lations of use”, may include a description
of a traditional process or TK.
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Photo: TAMMACHAT Natural Textiles
GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Developing
a geographical indication –
what is involved? 2
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
• obtaining legal protection for the The actual time taken to develop a com-
GI and designing an enforcement plete GI scheme may depend on some
strategy. of the following factors, among others:
Moreover, those steps are not single, • the number and level of obstacles to
isolated acts. Protecting a GI does not legal protection of the GI – domesti-
only involve obtaining a right through cally or in foreign markets; and
registration or other appropriate means,
but also enforcing that right. Verification • the existence of institutional support.
and control must take place regularly
throughout the lifetime of a GI, not just
once. Promoting the GI is a continuing
process. In short, a GI scheme must be
managed throughout its existence.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Protecting geographical
indications – a step in
developing a geographical
indication
Why protect a geographical is registered as an individual trademark
indication? by a company.
Geographical indications are more than Protecting a GI enables those who have
just a name or a symbol. They reflect a the right to use the indication to take mea-
reputation strongly linked to geographi- sures against others who use it without
cal areas of varying sizes, thus giving permission and benefit from its reputation
them an emotional component. A GI’s free of charge (“free-riders”). Protecting
reputation is a collective, intangible asset. a GI is also a way to forestall registra-
If not protected, it could be used without tion of the indication as a trademark
restriction and its value diminished and by a third party and to limit the risk of
eventually lost. the indication becoming a generic term.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
It is important for several reasons that Limiting the risk of the geographical
those who have the right to use a GI indication becoming a generic term
prevent its unauthorized use, not only
to avoid losing business, but also, in the Where a GI is no longer associated with
longer term, to ensure the GI is used only a product characteristically linked to a
in relation to products that possess the geographical origin but used instead as
qualities or characteristics to which it the common name to designate the prod-
owes its reputation. Use of a GI for lower uct, it is said to have become a generic
or different-quality products most likely term. In such a case, the indication can
results in tarnishing its reputation. be used by anyone to designate a type
of product rather than a product with a
distinct geographical origin and specific
Forestalling registration geographical qualities or characteristics.
of the geographical indication as It can no longer serve as a distinctive sign
a trademark by a third party or be used in a product differentiation
strategy. Protecting a GI and enforcing the
An unprotected GI may be registered as right obtained over it contribute to reduc-
a trademark by an individual producer or ing the risk of that indication becoming a
company, for goods identical or similar to generic term.
those identified by the GI. This is likely to
occur at the international level for indica-
tions protected in one jurisdiction but not An example of a GI that has become a generic
in others. For jurisdictions in which the GI term is Camembert for cheese. This name can
is not protected, the indication may be now be used on any camembert-type cheese
considered a distinctive sign available made anywhere in the world.
for registration as a trademark. The first
to file for registration would obtain the In contrast, Camembert de Normandie is
trademark, which might give them the a French appellation of origin for a cheese
right to exclude use of the indication by produced only in Normandy
anyone else, including the producers who
had historically used it in their country
of origin.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Protection for a GI is usually obtained by acquiring a right over the sign that constitutes
the indication. That right can be a specific right designed for GIs (a sui generis right),
which may be called, for instance, a protected GI, a denomination of origin or an ap-
pellation of origin. The right acquired can also be a collective or a certification mark.
A GI right enables those who have the right to use the indication to prevent its use
by a third party whose product does not conform to the applicable standards. For
example, in the jurisdictions in which the Darjeeling GI is protected, producers of
Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in the tea
gardens of Darjeeling or not produced according to the standards set out in the code
of practice for the Darjeeling GI. However, a protected GI does not enable the holder
to prevent someone from making a product using the same techniques as those set
out in the GI standards.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
An indication of source provides information The Madrid Agreement for the Repression
about the geographical origin of a product, of False or Deceptive Indications of Source
but does not imply any special quality or on Goods extends the protection afforded
characteristic of the product for which it is to false indications of source under the
used. Examples of indications of source are Paris Convention to deceptive indications
the mention, on a product, of the name of a of source as well. Deceptive indications are
country, or indications such as “made in…”, those which, although literally true, may be
“product of…”. An indication of source can also misleading. This would be the case where, for
be composed of symbols or iconic emblems example, there are homonymous place names
associated with the area of geographical origin. in two different countries, but only one place
is known for the production of a particular
The Paris Convention stipulates that, in cases good. If the name were used on goods from
of use of false indications of source on goods, the similarly named place, the indication of
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
source would be considered deceptive as the Finally, the TRIPS Agreement contains excep-
public would likely be led to believe that the tions to the obligation to provide protection for
good came from a different place. GIs. A first exception applies to GIs for wines
and spirits only, for those WTO Members in
The TRIPS Agreement (1994) which the indications have been used in a
continuing and similar manner for a number
The TRIPS Agreement, one of the WTO Agree- of years. A second exception applies where a
ments, is applicable to all WTO Members. It trademark has been acquired in good faith in
includes a section on the protection of GIs the territory of a WTO Member before the date
(Part II, Section 3). of application of the TRIPS Agreement in that
WTO Member, or before the GI is protected
Section 3 of the TRIPS Agreement sets forth a in the country of origin. A third exception
definition of a GI and contains a general obliga- applies where the indication is considered by
tion for WTO Members to provide protection a WTO Member to be the customary term in
against misleading use of a GI and against use common language (the common name) for
that constitutes an act of unfair competition. It the identified goods or services.
also requires Members to refuse or invalidate
registration of a trademark that contains or
consists of a GI with respect to goods not
originating in the territory indicated, if use
of the indication on the trademark for such
goods might mislead the public as to the true
place of origin.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
By adopting Law No. 322-XV of 18.07.2003 on the Declaration of the Complex “Combinatul de
Vinuri “Cricova” S.A.”, an Object of the National-Cultural Heritage of the Republic of Moldova,
the Parliament created a special regime for the use of the GI “Cricova” for wine.
This law recognizes “Cricova” as part of the country’s cultural heritage and as a landscape
complex of national importance.
“Cricova” is famous for its unique underground labyrinths. The greatest part of “Cricova’s”
wine production facilities is placed underground, at a depth of 60-80 meters, creating a huge
underground wine city with avenues, streets and broadways.
These labyrinths offer a truly unique, favorable microclimate that gives typicity to the wines.
All year round, the naturally constant temperature there remains at +12° to +14°C, and the
humidity at about 97 to 98%, the most propitious conditions for developing and aging exqui-
site, fine wines. This humid, cool environment contributes to the formation of the authentic
character of “Cricova” wine products.
© Cricova
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
(b) Collective marks and certification mark does not itself have the
certification marks4 right to use the mark.
Some countries protect GIs under trade- Protection for GIs registered as collective
mark law, more specifically through collec- or certification marks is provided for under
tive marks or certification marks. This is the general trademark law. In other words,
case, for example, in Australia, Canada, protection is afforded against use in the
China and the United States of America. course of trade by third parties without
the owner’s consent, of identical or similar
What is meant by a collective mark or signs for identical or similar goods, where
certification mark (or, in some countries, such use would result in a likelihood of
guarantee mark) differs from country to confusion5.
country. However, a common feature of
these types of marks is that they may be
used by more than one person, as long
as the users comply with the regulations
of use or standards established by the
holder. Those regulations or standards
may require that the mark be used only
in connection with goods that have a
particular geographical origin or specific
characteristics.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Source:
ROMARIN www.wipo.int/romarin
Consorzio del Formaggio Parmigiano-Reggiano
Consejo Regulador de la Denominación
de Origen Calificada Rioja
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Protecting geographical
indications abroad
Why protect your geographical • through the Madrid System for the
indication abroad? International Registration of Marks (in
which the GI concerned is protected
Intellectual property rights are governed by in the country of origin as a collective
the “territoriality principle”. The effects of a or certification mark); and
right obtained in a particular jurisdiction are
limited to the territory of that jurisdiction. • by concluding bilateral agreements
Thus, where a right over a GI is obtained between States or commercial part-
in one jurisdiction, it is protected there but ners.
not abroad. In other jurisdictions, the GI
would face the risks usually associated Bilateral agreements
with lack of protection. Protection in each
of the markets in which the GI product is Two States or two trading partners
commercialized is therefore paramount. (usually customs territories) may agree
In order to protect a GI abroad, there may to protect each other’s GIs under a
be a requirement to first protect the GI in bilateral agreement. Such agreements
the country of origin. may be independent treaties or form
part of a wider trade agreement. There
How are geographical are numerous examples of this type of
indications protected abroad? agreement, particularly in the wine and
spirits sector. Some date back to the
There are four main routes for protecting mid-twentieth century, but they continue
a GI abroad: to be a common way to protect GIs, as
evidenced by the number of agreements
• by obtaining protection directly in the negotiated in recent years that are not
jurisdiction concerned; limited to wine and spirits.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
DARJEELING
Country
Nature and subject matter of registration
CANADA • Official Mark 0903697 for DARJEELING logo
International • Collective Mark 528696 for DARJEELING logo for Austria,
Registration France, Germany, Italy, Montenegro, Portugal, Serbia,
(Madrid system) Spain, Switzerland
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
One option for protecting GIs is directly in The Lisbon Agreement was established
the jurisdiction concerned. As explained to facilitate the protection of appellations
previously, GIs are protected through a of origin at the international level. It offers
wide variety of approaches in different a means of obtaining protection for an
jurisdictions, and often by a combina- appellation of origin originating in one
tion of two or more methods. Protection Member State in the territories of all other
under laws against unfair competition members through a single registration
and protection as a sui generis right, called “an international registration”.
collective mark or certification mark are
generally the modes of protection made
available in different jurisdictions. Right
owners may use the means available in
the jurisdiction of interest and, where more
than one mode of protection is available,
they will need to determine which option
is most suitable to their needs.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
BAROLO
International Registration
No. 1034838 in class 31, for star apple fruits
NAPA VALLEY
Lübecker Marzipan
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Conclusion
Although they are one of the oldest forms GIs as IP can throw overboard even the
of IP, GIs have only recently become the most balanced, development-oriented
subject of generalized interest. In many GI scheme.
countries, the need to comply with obliga-
tions under the TRIPS Agreement triggered The booklet outlines some of the current
this focus on GIs. Countries soon realized threats facing unprotected GIs, and sum-
that there is potential value in this form of marizes the modes of protection available
IP. The fact that GIs are embedded in a at the national and international levels.
territory means they can be effective tools
for promoting locally-based development.
Their close linkage with tradition suggests
that they can have a positive impact on
the preservation of TCEs and TK. With the
increasing recognition of GIs’ multifunc-
tional character, the challenge will be to
design and implement a comprehensive
GI scheme that could constitute the basis
for sustainable development.
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GEOGRAPHICAL INDICATIONS: AN INTRODUCTION WIPO
Giovannucci, Daniele et al., Guide to Geographical The Lisbon System, WIPO Publication No. 942.
Indications, Linking Products and their Origins,
International Trade Centre, Geneva, 2009. Intellectual Property and Traditional Cultural
Expressions/Folklore, Booklet 1, WIPO Publica-
Rangnekar, Dwijen, The Socio-Economics of tion No. 913.
Geographical Indications: A Review of Empirical
Evidence from Europe, UNCTAD-ICTSD Project Intellectual Property and Traditional Knowledge,
on IPTs and Sustainable Development Series, Booklet 2, WIPO Publication No. 920.
Issue Paper 8, 2004.
42
For more information contact WIPO
at www.wipo.int
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+4122 338 91 11
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+4122 733 54 28