Central University of

South Bihar

SCHOOL OF LAW AND GOVERNANCE

TOPIC:
Protection of Geographical Indications:
Examining International Standards
Name : Priya Ranjan
Course : B.A. LL.B. (Hons)
Semester : IX
Enrollment No.: CUSB1513125031
Subject : Intellectual Property Right.

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 ACKNOWLEDGEMENT

The project work of “INTELLECTUAL PROPERTY RIGHT” on the topic

“Protection of Geographical Indications: Examining International Standards”.
This project is given by our honorable subject professor “Dr. DIGVIJAY SINGH”
and first of all I would like to thank him for providing me such a nice topic and
making me aware as well providing me a lot of ideas regarding the topic and
the methods to complete the project.

I would like to thank all the Library staffs who helped me to find all the desired
books regarding the topic as the whole project revolves around the doctrinal
methodology of research. I would like to thank to my seniors as well as class
mates who helped me in the completion of this project. I would also like to
thanks to Google and Wikipedia as well as other web sites over web which
helped me in the completion of this project. Last but not the least, thanks to all
who directly or indirectly helped me in completing of this project.

I have made this project with great care and tried to put each and every
necessary information regarding the topic. So at the beginning I hope that if
once you will come inside this project you will be surely glad.

-Priya Ranjan.

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 INDEX

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ABSTRACT

India, in compliance with the TRIPS Agreement of the WTO, enacted ‘The Geographical
Indications of Goods (Registration and Protection) Act, 2003 to provide protection to the
goods registered under the Act. Twelve years down the line, evidence from the ground
suggests that while there has been some progress in terms of number of goods registered
under the Act, there remain a number of issues and concerns in the context of harnessing the
potential commercial benefits out of GI registration in India.

OBJECTIVES

This paper aims to discuss relevant international and national legal regimes aims at GI’s,
further it throws some light on recent case laws decided by Indian courts and finally ends
with conclusion.

RESEARCH METHODOLOGY

The research is based on analytical method. The source of information comprises of books,
articles and journals. The data in this project report is from secondary sources. The topic has
been extensively researched upon so as to accomplish the goal of completion of the current
project report.

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1. INTRODUCTION

Geographical indication is an indication which specifies the geographical origin of a

product and links it with the essential qualities that are present in the product due to the place
of origin. It is mainly used to identify agricultural, handicraft, manufacturing goods from a
particular territory which has developed a good will in the market due to its special
characteristics. The said characteristics include temperature, humidity, soil etc. associated
with the territories that are unique, e.g. Darjeeling tea. Geographical indication can be a mark
defined by words or numbers or a combination of both. In international transaction, marks of
origin include marks of the country of origin and geographical indications.

The roots of GI can be traced back to the Egyptian Civilization wherein the brick-makers
marked bricks to identify origination. In ancient Greece, Thasian wine had demand since it
came from island of Thasos in Macedonia. Given India’s historically vibrant and famous craft
traditions, a number of craft genres and products from the crafts sector qualify as GI goods. 1
If harnessed properly, trade gains from enhanced sale of these GI goods could provide
tremendous socio-economic benefits to the producers.

PROTCTION THROUGH GEOGRAPHICAL INDIACTION

Definition of GI

1
Sanjeev Agarwal & Michael J. Barone, “Emerging Issues for Geographical Indication Branding Strategies,” 9,
January 2005, MATRIC Research Paper, No.5

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Geographical Indication (GI) is defined as any indication that identifies a good as originating
from a particular place, where a given quality, reputation or other characteristics of the good
are essentially attributable to its geographical origin. TRIPS agreement runs 2 ‘Geographical
indications are, for the purposes of this Agreement, indications which identify a good as
originating in the territory of a Member, 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.’3

The World Intellectual Property Organisation (WIPO) states that GIs are ‘a sign used on
goods that have a specific geographical origin and possess qualities, reputation or
characteristics that are essentially attributable to that place of origin. Most commonly, a
geographical indication includes the name of the place of origin of the goods.’4

From the above two definitions it can be seen that ‘A Geographical Indication identifies a
good as originating in a delimited territory or region where a noted quality, reputation or
other characteristic of the good is essentially attributable to its geographical origin and/or the
human or natural factors there.’5

or other character of goods essentially attributable to their geographical origin. 6 It is

valuable to providence, a ‘source identifier’ and indicator of quality. GI helps to promote its
goods “eligible for relief from acts of infringement and/or unfair competition”. The concern
shown by the World Intellectual Property Organization (WIPO) and World Trade
Organization (WTO) gave new impetus to protection of GIs. According to the WIPO
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications “a geographical indication is best protected under trademark and unfair
competition law. Trademark having acquired in good faith had to be protected against
conflicting geographical indications.”7 Protection of GI prevent third parties from passi
ng off their products as those originating in the given region. Famous examples are
‘Champagne’ for sparkling wine and ‘Roquefort’ for cheese from areas of these names in
France or ‘Darjeeling’ for tea from this district in India. It is not necessary for these

2
Part II, Section 3, Article 22.1 of TRIPS
3
Accessed from the web site: http://www.wto.org/english/tratop_e/trips_e/t_agm3b_e.htm#3.
4
Accessed from the web site: http://www.wipo.int/geo_indications/en/about.html,.
5
Guide to Geographical Indications: Linking products and their origins,” Accessed from the web site:
www.intracen.org/WorkArea/DownloadAsset.aspx?id=37595.
6
6United States Patent and Trademark Office, accessed from the web site:
http://www.uspto.gov/web/offices/dcom/olia/globalip/geographicalindication. htm
7
Draft Report of the International Bureau of WIPO, Geneva 13-17 July, 1998, p 2

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indications to be geographical names as in the case of ‘Feta’ for cheese from Greece or
‘Basmati’ for rice from India and Pakistan as there are no places, localities or regions with
these names. Plant varieties developed with traditional knowledge and associated with a
particular region can also be protected as geographic al indications. The advantage in
such protection is that it is not time-limited. However, needless to say, commercial benefits
can be derived from the protection of geographical indications only when the name
becomes reasonably famous.8

Protection through geographical indication national trend.

As a party to the TRIPS Agreement, India is required to protect GI and hence in order to
fulfil that obligation, the Geographical Indications of Goods (Registration and Protection)
Act, 1999 was enacted. It may also be noted that India felt that some of its products have high
potential to benefit from GI registration and it was necessary to put in place a comprehensive
legislation for registration and for providing adequate protection for GI. For unless a
geographical indication is protected in the country of its origin, there is no requirement under
the TRIPS Agreement for other countries to extend reciprocal protection. The main benefits
which accrue from registration under the Act are as follows:9

 Confers legal protection to GI in India;

 Prevents unauthorized use of a registered geographical indication by others;
 Enables seeking legal protection in other WTO member countries.

From the perspective of a developing country, one of the best features of the Indian Act is the
comprehensive definition given of GI, whereby agricultural, natural and manufactured goods
all come under the ambit of GI. This is especially important in the Indian context considering
the wide variety of goods that is deserving of protection ranging from agricultural products
like Basmati, Darjeeling tea to manufactured goods such as Banrasi sari, Kolhapurechappals,
Chanderi silk etc. Section 11of the Act provides that any association of persons, producers,
organization or authority established by or under the law can apply for registration of a GI.

8
JayashreeWatal, “Intellectual Property Rights in Agriculture, Indian Council for Research on International
Economic Relations,” ICRIER Working Paper No.44 available at www.icrier.org/pdf/jayashreew.pdf
9
All India Artisans and Craftworkers Association (AIACA).2011. Geographical indications of India:
socioeconomicand development issues, Policy Brief, NewDelhi: AIACA.

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Another important aspect of the Act is the possibility of protecting a GI indefinitely by
renewing the registration when it expires after a period of ten years. In the domestic context,
the Indian Act has tried to extend the additional protection reserved for wines and spirits
mandated by TRIPS to include goods of national interest on a case to case basis. Section 22.2
of the Act endows the Central Government with the authority to give additional protection to
certain goods or classes of goods. This is especially important in the developing country
context considering that we may not have wines and spirits to protect like the West but other
exotic niche products like teas, rice etc.10

Section 25 of the Act, by prohibiting the registration of a GI as a trademark, tries to prevent

appropriation of a public property in the nature of a geographical indication by an individual
as a trademark, leading to confusion in the market. Also, according to section 24 of the Act, a
GI cannot be assigned or transmitted. The Act recognizes that a GI is a public property
belonging to the producers of the goods concerned; as such it cannot be the subject matter of
assignment, transmission, licensing, pledge, mortgage or any contract for transferring the
ownership or possession.

India’s Experience with GI Protection Since the first Indian GI was registered in 2004, 172
GIs have been registered with the GI Registry of India. Of these, more than half (64 per cent)
are handicrafts, more than one fourth (26 per cent) are agricultural products, and the
remaining are food and manufacturing products The trend of GI registration has been mostly
upward with the maximum number of products registered in the year 2008 – 2009. While
handicrafts have been the most registered GIs consistently, agricultural and manufactured
products are increasingly being protected under the GI Act over the past few years Food
products, a more recent addition in the registered GI basket of India, was first granted
protection in 2008 – 2009 when Dharwad Pedha from Karnataka was granted the status of a
registered GI product. The recent increase in manufactured products being registered as GI
can be partially attributed to more foreign products being registered at the Indian GI
Registry.11 In terms of geographical distribution of GIs in India, most GIs have been
registered from the southern states. The state of Karnataka has been the forerunner in
registration of GIs followed by the states of Andhra Pradesh, Kerala and Tamil Nadu. The
10
Commission on Intellectual Property Rights. 2004.Integrating Intellectual Property Rights andDevelopment
Policy, London: Commission on Intellectual Property Rights.
11
Das, K. 2009. Socio-economic implications of protectinggeographical indications in India. New Delhi:Centre
for WTO Studies. http://wtocentre.iift.ac.in/Papers/GI_Paper_CWS_August%2009_Revised.pdf,

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spread of GI recognition is concentrated in the southern states. Products from other states are
getting registered now. At the same time many states, which have several traditional varieties
of agricultural products or handicrafts, are not forthcoming in applying for GIs. There are
only three GIs from all of north east India and none from Uttarakhand. 12 The states of Punjab
and Haryana have no GI either except for a joint GI on Phulkari embroidery along with
Rajasthan. Phulkari is the only GI in India which covers more than one state. Since 2009, 8
foreign (7 manufactured and 1 food) products have been accorded the status of registered GI
under the Indian Act. These are Champagne and Cognac from France, Scotch Whisky from
the United Kingdom, Napa Valley wines from the United States of America, Douro wine
from Portugal, Peruvian Pisco from Peru and Prosciutto di Parma from Italy.

Impacts of GI registration in India:

Some cases A number of observers point out that of all the different types of intellectual
property rights, GI may be more amenable to the particular context of developing countries.
GIs may especially facilitate protection of the collective rights of the rural and indigenous
communities in their indigenous knowledge, ensuring that the entire community which has
preserved the knowledge and has passed it on with incremental refinement over generations,
stand to benefit from the knowledge and that this is not locked up as the private property of
one individual. Other advantages of GIs are that the knowledge remains in the public domain,
the scope of protection is limited to controlling the class and/ or location of people who may
use the protected indication and the rights can potentially be held in perpetuity as long as the
product-place link is maintained. Also, holders of a GI do not have the right to assign the
indication, thus, preventing its transfer to non-locale producers. Evidence on the socio-
economic impacts of GIs in the Indian context are, however, limited although anecdotal
evidence suggests that GIs have significant implications for producers in developed and
developing countries. Interestingly, the collective nature of GIs also brings to the fore
significant collective action related problems across various stages of organization and
governance. For example, a group of producers may take the initiative in the GI registration
process, while others not willing to join initially may join later thereby attempting to free-ride
on the efforts of the forerunners. In India, there are many GIs that are registered in the names
12
Das, A. 2008. Geographical indications: UNCTAD’sinitiative in India, Presentation at UNDP RCC,
UNDPCambodia and Economic Institute of Cambodia,Phnom Penh, September 4.
http://hdru.aprc.undp.org/ext/regional_workshop_2008/pdf/Das_s3.pdf

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of some central or state government departments or bodies, yet there is no homogeneity
among those initiatives and involvements across states. A number of studies have also found
that GIs could lead to exclusion of many from enjoying the benefits. Firms with better
bargaining positions may also end up making disproportionate share of the economic value
generated from securing protection. It is against this backdrop that our study has tried to
assess the situation on the ground with respect to number of registered GIs, through indepth,
field level case studies as well as primary survey based on a standard questionnaire prepared
for the purpose. Some of these case studies include Muga silk of Assam, Banaras brocades
and saris, Malabar pepper and Vazhakulam Pineapple, all of which are registered GIs. 13

Muga Silk of Assam Muga

silk is a registered GI from the state of Assam. Historical evidence suggests that Assam’s
silk industry had reached the pinnacle of perfection by the 7th century A.D. Banabhatta, the
author of Harshacharita informs us that king Bhaskara Varma of Kamarupa (ancient Assam)
presented to Harshavardhana silken towels as “silken and pure as the autumn moon’s
night...”(cited in Sahai and Barpujari, op.cit.). In the present day, muga silk constitutes the
state’s most popular export product after Assam tea. The Patent Information Centre of the
Assam Science Technology and Environment Council (ASTEC) secured registration for
muga in 2006, which is incidentally the first registered GI from the northeastern region.
While ASTEC is the registered proprietor of the muga GI, till date, there are no registered
users. One to one interviews with weavers and silk traders in the town of Sualkuchi revealed
very low awareness about the GI protection of muga. While the price of muga has been rising
over the last few years, that has little to do with GI registration. The reason for the high prices
of the muga yarn, according to the various stakeholders interviewed, are diminishing area
under muga cultivation owing to rubber cultivation, diseases at the cocoon stage, loss
incurred due to the outdoor nature of muga rearing, and so on. Nevertheless, higher prices
have not been able to encourage the farmers to hold on to muga cultivation. As a result, muga
has become almost three times more expensive, compared with other similar varieties of silk.
Apparel with 100 per cent muga yarn is rarely produced these days, except to cater to the
13
Dwivedi, K., S. Bhattacharjya. 2012. Restore glory oftheBanarasi sari, The Hindu Business Line, December21,
2012. http://www.thehindubusinessline.com/opinion/restore-glory-of-the-banarasi

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state emporiums, or for special orders. Muga is often blended with imported tussar silk from
China or with other indigenous silk yarn such as pat. Meanwhile, as observed in the field,
power-loom is getting increasingly popular for muga weaving, dealing a further blow to
handloom weavers. In an interview, an applicant for registered use of muga observed that
fabric woven on the power-loom has certain advantages and could be the only way out for
entrepreneurs like him as many weaversare leaving the profession owing to un-remunerative
wages. Regarding the setting up of a quality control and inspection mechanism, as required
by the law, ASTEC has proposed employing the services of the Seri Bio Lab of the Institute
of Advanced Study in Science and Technology, Guwahati, for quality control. An inspection
body is yet to be constituted. Hence, at this stage, even after six years of registration, GI in
muga cannot give any guarantee of quality or authenticity.

Banaras brocades and saris

‘Banaras brocades and saris’ secured registration under the GI Act in September 2009, with
the application filed by nine organisations viz. Banaras Bunkar Samiti, Human Welfare
Association (HWA), joint director industries (eastern zone), director of handlooms and
textiles Uttar Pradesh Handloom Fabrics Marketing Cooperative Federation, Eastern UP
Exporters Association (EUPEA), Banarasi Vastra Udyog Sangh, Banaras Hath Kargha Vikas
Samiti and Adarsh Silk Bunkar Sahkari Samiti. The weaver community predominantly
constitutes poor Muslims and Dalits and the structure of production is based on a hierarchy of
kothdars (wholesale dealers), master weavers and other weavers. With the objective of
understanding the actual impact of registration on the ground level, TERI researchers
conducted a multi-stakeholder consultation at Varanasi interacting with registered users,
Banarasi Sari traders, bunkars(weavers), government officials, local buyers, NGO
representatives, cottage manufacturing units etc. The consultations indicated that the Banarasi
sari industry is impacted by a host of variables in terms of raw material and labour issues, the
socio-economic aspects of the region, and, to some extent, the pitfalls of excessive
liberalisation and legislation. The changing economic and market situation has resulted in
reduced income for weavers who cannot even meet their basic needs, causing malnutrition
and widespread poverty throughout the traditional weaver community. Such destitution and
despondency among the weavers has forced them to commit suicide or has precipitated
employment shifts, as evidenced by MGNREGA (Mahatma Gandhi National Rural

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Employee Guarantee Act) benefits. It could be gathered from the fieldwork that the promise
of geographical indication protection has not curbed the menace of fakes. Machine based
cheap product imitations continue to be sold. Cheap raw material imports have led to the sale
of what are known as Kelasaris, in the name of Banarasi saris. These use banana tree resin to
create threads which are then polished to give the look of silver or gold thread. Chinese
imitation saris, pegged at much lower prices, are flooding the market. Moreover, there is a
tenfold rise in the number of operating power-looms in the district of Varanasi itself,
although certain other studies put higher estimates. Most powerloom owners have been
producing cheap imitation products in large numbers to meet the growing demand,
withcomputerised designs. Enforcement under the legal regime is frustrated further through
absence of will onthe part of GI holders to take action against the imitators. Despite the
stakeholders being aware of the deleterious impact of sales of fake saris, complex market
dynamics enforces silence among all concerned.

Malabar pepper

Malabar pepper is famous for its quality. It is classified under two grades – garbled and
ungarbled. History is replete with instances of foreigners coming to the Malabar Coast to
trade in Indian spices in general and pepper in particular. It is stated that the exorbitant price
of pepper during the middle ages, a trade which was monopolized by the Italians, forced the
Portuguese to seek a sea route to reach India. Pepper is used as a spice and it has also got
medicinal properties. Malabar pepper is cultivated in the geographic regions comprised in the
Malabar region of the erstwhile Madras Presidency. Now these areas comprise in the states of
Kerala, Karnataka and Tamil Nadu. Malabar pepper accounts for around 25 per cent of the
entire world’s supply of pepper. This pepper is unique for its sharp, hot and biting taste.
Highly aromatic, with a distinctive fruity bouquet, it has the perfect combination of flavour
and aroma. In order to protect the brand value of Malabar pepper, the Spices Board applied
for a GI registration and after completing the formalities the registration was granted. As
pepper is exported in huge quantities, there was a feeling that the GI tag would give better
legal protection against counterfeit products, more visibility to the brand etc. None of the
respondents interviewed by TERI researchers were aware of any infringement action initiated
against any of the counterfeit producers. Therewas also a general feeling that it is the traders
who reap benefit out of the GI tag and not the farmers. The general mood in the sector at the

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time of field visit was a worry over the declining price in pepper. There were demands that
there should be a complete ban on future trades in pepper.

Vazhakulam Pineapple

There was considerable interest shown among the academia and practicing lawyers about the
GI tag for Vazhakulam Pineapple. Some interviews were conducted by TERI researchers as a
result of this. Pineapple is produced as a commercial fruit crop in India. The main pineapple
producing states are Kerala, West Bengal, Assam and Tripura. Vazahkulam, known as the
Pineapple City, islocated in Muvattupuzha taluka of Ernakulam district. The pineapple
cultivation in that region started in the forties. It is a variety called Mauritus which is
cultivated in this region. The pineapple produced in this region has a distinct taste. It is very
sweet and not very juicy. Because of these features, there is a huge demand for Vazhakulam
Pineapple. From 1985 onwards, many farmers started taking up large scale commercial
cultivation of this pineapple. Because of less juice content in the fruit, this variety of
pineapple is mainly consumed as a fruit. These distinctive features were noticed in pineapples
grown in an area roughly falling within 60 kms in and around Vazhakulam.These areas fall
under the revenue districts of Ernakulam, Idukki, Kottayam and Pathanamthitta. However 90
percent of the pineapple is produced in Vazhakulam area only. The farmers attribute the
distinctive taste of the pineapple to the soil in the region. The main demand for Vazakkulam
pineapple comes from the state of Kerala only. The export market is mainly the Gulf
countries. As the fruit has to be consumed within 4 -5 days of harvesting, exporting does not
make much of commercial sense. In order to protect the brand name, GI application was
jointly filed by the Pineapple Farmers Association, Nadukkara Agro Processing Company
Ltd. (NAPCL), and the Kerala Agricultural University. The Pineapple Farmers Association is
a registered society under the Charitable Societies Act. It was formed in 1990 mainly to
address the marketing issues.More than 500 pineapple farmers are members of this
Association. The main objectives of the association are:

 To unite and strengthen the pineapple farmers;

 To create awareness on farming and marketing issues;

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  To provide assistance in seeking financial and technical help from various
government and non-government agencies;
 And to engage in promotion activities.

The Nadukkara Agro Processing Company Ltd. is a public limited company with a
shareholding pattern of 70 per cent held by farmers and 30 per cent by the state of Kerala.
NAPCL is involved in the production of many pineapple based products like pineapple juice,
pineapple fruit candies among others. The Kerala Agricultural University was instrumental in
providing the scientific details needed for the GI registration and is involved as the inspection
body to regulate the quality standard parameters. The purpose of going for a GI registration
was for brand value. No case of infringement has come to the notice so far. The office bearers
of the farmers association were very candid in explaining that the major benefit of the GI
registration was the greater visibility of the brand. Most of the farmers are big farmers who
have taken land for lease. The lease land mainly comes from the rubber plantations, during
their replantation time. In the first 3–4 years of replantation, pineapple is cultivated as an
inter crop. These plantations would stretch from 50 – 100 acres. It is cultivated as an
intercrop in coconut farms too. There are farmers who have resorted to pineapple cultivation
as the main crop. There was a feeling among the representatives of the farmers’ association
that as GI is intended to help the marketing of the product as it brings in more brand
visibility, the farmers are not directly benefitted. The general feeling to be gathered after
interaction was that direct benefit for farmers was not seen as the purpose of GI tag.

International Protection of geographical indications

(1) Multilateral treaties: + Paris Convention for the Protection of Industrial Property
The Paris Convention for the Protection of Industrial Property provides for the protection of
indications of source against any misleading use. In this respect, Article 10 of the Paris
Convention sets forth that in cases of “direct or indirect use of a false indication of the source
of the goods or the identity of the producer, manufacture or merchant” Article 9 of Paris
Convention should be applicable14. Article 9 of the Paris Convention provides for that goods
bearing a false indication of source are subject to the following measures: seizure upon
importation into countries party to the Paris Convention, or within the country where the

14
http://www.wipo.int/treaties/en/ip/paris

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unlawful affixation of the indication of source occurred or within the country of importation.
This seizure shall take place at the request of the public prosecutor, or any other competent
authority, or any interested party. However, Article 9(5) and (6) of the Paris Convention
allow that countries party to the Paris Convention whose national laws do not permit seizure
on importation of inside the country to replace those remedies by either a prohibition of
importation or by any other nationally available remedy. It has therefore been said that
Article 9 and 10 of the Paris Convention do not introduce a higher international standard for
protection of, inter alia, indication of source, but merely binds States party to that Convention
to apply the national treatment principle 15 . Article 10bis of the Paris Convention sets out the
basic international standard for protection against acts of unfair competition. Although the
use of false indications of source is not mentioned on the non-exhaustive list of acts which
are prohibited under Article 10bis (3), such use arguably constitutes an act of competition
contrary to honest practices in industrial or commercial matters and, thus, is covered by
Article 10bis (2). The provisions of the Paris Convention which have dealt with so far
concern the use of false indications of source. However, there are cases in which the use of an
indication of source which is literally true may still be misleading or deceptive. This may be
the case where a given geographical name exists in two different countries, but was used as
an indication of source only products originating from that place in one country. Use of that
indication of source by producers from the other country cannot be regarded as use of a
“false” geographical indication, although consumers may be deceived by such use.

+ Madrid Agreement for the Repression of false or deceptive indications of source of goods
The Madrid Agreement for the Repression of False or Deceptive Indications of Source of
Goods is a special agreement within the framework of the Paris Union. The Agreement aims
at the repression not only of false, but also of deceptive, indications of source. The Madrid
Agreement exceeds the Paris Convention on three points. First, it extends the protection to
misleading geographical indications, Article 1(1). 16 This Article provides that any product
bearing a false or deceptive indication by which one of the States apply to the Madrid
Agreement or a place situated therein is directly or indirectly indicated as being the country
or place of origin, must be seized on importation into any of the States party to the Madrid
Agreement. Second. Article 3bis, which was adopted by the Revision Conference of London
(1934), prohibits the use of false representations on the product itself and in advertising or

15
Marcus Hopperger, International Protection of Geographical Indications – The present situation and prospect
for future development.
16
http://books.openedition.org/iheid/652?lang=en

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other forms of public announcements17. Third, Article 4, which prohibits member countries
from treating divergent views in reference to the construction of the provision exist (for
example, regarding the use of terms like “type”, “style” with the indication), and thus its
practical use is very restricted.

+ Lisbon Agreement for the Protection of appellation of origin and their international
registration The Lisbon Agreement was an attempt to secure effective and enforceable
protection of geographical indications on a new basis. Its focus is not restricted to the border
measures, as in the Paris Convention or the Madrid Agreement, but also includes adoption of
a registration system comparable to that of trademarks, drafted after the model of the “Madrid
Agreement concerning international registration of marks”. The object of the Lisbon
Agreement concerns appellations of origin, as defined in Article 2(1). According to Article
2(1) of the Lisbon Agreement, “(1) … “appellation of origin” means the geographical name
of a country, region, o locality; which serves to designate a product originating therein, the
quality and characteristics of which aredue exclusively or essentially to the geographical
environment, including natural and human factors.

The main feature of the agreement is that these appellations of origin are recognized and
protected as such in the country of origin and registered at the International Bureau of WIPO.
Thus, the various countries are free to adopt any form of procedure to register geographical
indications, be it by judicial or administrative determination. Once registered, a geographical
indication is protected in other member countries “in accordance with this agreement”
(Article 1). The countries have to ensure that any kind of usurpation or imitation is prohibited
under their laws, including the use of terms like “type”, or “style” along with the indication
(Article 3); no geographical indication can be deemed generic in any other country as long as
it is protected in its country of origin (Article 6)The main problem with the Lisbon
Agreement is that very few states have become members. Two critical points have prevented
important nations from joining. First, international protection is granted only if the
geographical indication if protected in the country of origin “as such”; hence, the concept of
protection through the law of unfair competition or the law of advertising is not recognized.
A number of states are not willing to transform their system of protection in order to be
compatible with the standards of the Lisbon Agreement. Second, the Agreement does not
make exceptions for terms that have already become generic in some member countries. The

17
http://www.wipo.int/edocs/mdocs/sme/en/wipo_smes_lhe_07/wipo_smes_lhe_07_www_81475.do c

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issue of generic-ness is one of the difficult problems on the international level which has
hindered the negotiating process of TRIPS.

+ TRIPs Agreement TRIPs Agreement provide for the protection of geographical indications
in Section 3. We can observe that this Section encompasses into five main categories of
issues: definition and scope of a geographical indication, minimum standards and common
protection provided for geographical indications corresponding to all kinds of products,
additional protection for geographical indications for the wines and spirits, negotiation and
review of section 3 on geographical indications and exceptions to the protection of
geographical indications. According to Article 22 of the TRIPs Agreement, "geographical
indications are, for the purposes of this Agreement, indications which identify a good as
originating in the territory of a Member, 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.” This definition seems to be based on the concept of appellation of
origin contained in Article 2 of the Lisbon Agreement. Nevertheless, it is broader because it
confer protection to goods which merely derive a reputation from their place of origin
without possessing a given quality or other characteristics which is due to that place. In
contrast, the Lisbon Agreement requires that the quality and the characteristics of the product
in question are due, exclusively or essentially, to the geographical environment, including
natural and human factors. Goods which have merely a certain reputation but not a specific
quality, to their place or origin are thus not covered by the Lisbon Agreement. According to
the TRIPS Agreement, a geographical indication to be protected as such, needs just to be "an
indication", but not necessarily the name of a geographical place on earth. This "indication"
has to identify goods as originating in the territory of a Member (could be the name of a
WTO country Member), a region or a locality of that territory. This definition also indicates
that goods to be protected should originate in the territory, region or locality to which it is
associated. This means that licenses for the use of geographical indications cannot be
protected under the TRIPS Agreement. The definition given by the Agreement provides
Members with alternatives to link the protected geographical indication with the product
concerned: a given quality, or reputation or other characteristic of the good should be
"essentially attributable to its geographical origin". In other words, the TRIPs Agreement
provides Members with at least three independent criteria for the protection of a given
product through a geographical indication: quality, reputation or other characteristic of the
good attributable to its geographical origin. Article 22 of the TRIPS Agreement provides

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protection for all geographical indications. In this respect, WTO Members should provide the
legal tools so that interested parties can prevent the use of any means in the designation or
presentation of a good, that indicates or suggests that the good originates in a geographical
area, other than the true place of origin in a manner which misleads the public as to the
geographical origin of the good. They can also prevent any use which constitutes an unfair
competition act, within the meaning of Article 10bis of the Paris Convention. The Agreement
does not specify the legal means to protect geographical indications. It is left to Members to
decide what those means should be. The other important element in this respect is that the use
of a geographical indication, to be inconsistent with the provision of this Agreement, should
be done in a manner that may mislead the public as to the true geographical origin of the
product. Inother words, the use of a geographical indication which does not mislead the
public as to its true origin - according to Article 22 - should not be considered as an
infringement of the TRIPS Agreement. Also according to Article 22(b), whether the use of a
geographical indication constitutes an unfair competition act, it is Article 10bis of the Paris
Convention that applies and not any other meaning, for instance under domestic regimes.
Regarding the linkage between a trademark and a geographical indication, Article 22 of the
TRIPS Agreement provides that Members should refuse or invalidate the registration of a
trademark which contains or consists of a geographical indication with respect to goods not
originating in the territory indicated, but only if use of the same in the trademark for such
good in that Member's country is of such a nature as to mislead the public as to the true place
of origin. In implementing Section 3 of the Agreement, Members should not diminish the
protection of geographical indications that existed in that Member immediately prior to the
date of entry into force of the WTO Agreement. In accordance with Article 24.9 of the TRIPS
Agreement, there is no obligation to protect geographical indications which are not or cease
to be protected in their country of origin, or which have fallen into disuse in that country.
This is the golden rule for the protection of any geographical indication. Thus, protection
abroad is dependent on continuing domestic protection. . Article 23 of the TRIPS Agreement
provides additional protection for geographical indications for wines and spirits. "Additional
protection" means that geographical indications for wines and spirits shall be protected under
Article 22 "plus" Article 23 on additional protection for geographical indications for wines
and spirits. These provisions give geographical indications for wines and spirits stronger
protection than that provided in Article 22 for all products. According to the text of the
TRIPS Agreement, the first distinction to be made in this respect is that the protection given
to geographical indications for wines is not the same granted for spirits, though both products

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have common additional protection. Protection for both, wines and spirits, is the same
according to Articles 23.1, 23.2 and 24.1 of the TRIPS Agreement. An extra-additional
protection for geographical indications only for wines is provided in Article 23.3 and 23.4.
The additional protection for wines and spirits encompasses three main elements: First, in
providing the legal means for interested parties to prevent the use of a geographical indication
identifying wine and spirits not originating in the place indicated by the geographical
indication, even where the true origin of the goods is indicated or the geographical indication
is used in translation or accompanied by expressions such as “kind”, “type”, “style”,
“imitation” or the like. Second, in refusingor invalidating the registration of a trademark for
wines or spirits which contains or consists of a geographical indication identifying wines or
spirits, respectively at the request of an interested party. Third, in calling Members for
negotiations aimed to increase protection for individual geographical indications for wines
and spirits. . Article 24.1 of the TRIPS Agreement provides that Members have agreed to
enter into negotiations for increasing the protection of individual geographical indications
under Article 23; that is to say only with respect to geographical indications related to wines
and spirits, which are referred to in the heading of Article 23. The same Article 24 call upon
the Council for TRIPS to keep under review the application of the provisions of Section 3 of
the Agreement, indicating that the first of such reviews shall take place within two years of
the entry into force of the WTO Agreement. Any matter affecting compliance with the
obligations under the provisions of the Agreement may be drawn to the attention of the
Council, which at the request of a Member would consult with any Member in respect of that
matter. . Finally, Section 3 of the Agreement establishes a series of exemptions to the
protection of geographical indications. One of these exemptions provides that nothing in
Section 3 prevents a Member to continue the use of a particular geographical indication of
another Member identifying wines or spirits in connection with goods or services by any of
its nationals who have used that geographical indication in a continuous manner with regard
to the same goods or services in the territory of that Member either (a) for at least 10 years
preceding 15 April 1994 or (b) in good faith preceding that date. Article 24.5 states that when
a trademark have been acquired or registered in good faith before the date of application of
the Agreement in that Member or before the geographical indication was protected in its
country of origin, measures adopted to implement Section 3 shall not prejudice eligibility for
or the validity of the registration of a trademark or the right to use a trademark, on the basis
that such trademark is identical with or similar to, a geographical indication. The third
exception refers to the fact that nothing in Section 3 of the Agreement shall require a Member

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to apply its provisions in respect of a geographical indication of any other Member with
respect to goods or services for which the relevant indications is identical with the term
customary in common language as the common name for such goods or services in the
territory of such Member.

(ii) Bilateral Treaties :- Bilateral treaties have a long tradition in the field of the protection
of geographical indications. Among the treaties, two models have been predominant: the first,
to reserve certain region indications for the products of a certain region without determining
which exact geographical area is to be protected; the second, to include a definition of the
geographical area that is to be protected by a geographical indication. Neither of the two
models has yielded effective protection because the parties failed to determine the scope of
protection. An example of the first model is the treaty between Portugal and the United States
of 1910, in which the name “Porto” and “Madeira” were to be protected by the United States;
in that case the United States decided to implement the protective provision by means of the
law of advertising. As a result, the discussion regarding whether or not the duty to “protect”
these terms included a prohibition of “Porto” or “Madeira” accompanied by “kind” or “type”,
debated since the Madrid Agreement, was simply carried over into this agreement. The same
geographical indication was protected by a treaty between Portugal and Germany of 1908, in
which Germany agreed to reserve the same representations not only for Portugal in general,
but for goods that originated in Douro (Porto) and the island of Madeira. As a model for
international protection, however, this specification made little progress. After the failure of
the Lisbon Agreement, a new type of treaty was developed. Lists of protected geographical
names accompany the agreements, and the producers from each of these regions retain
exclusive right to use the name. The scope of protection is then determined under the law of
the country of origin. As a result, the country of origin controls the requirements for the
legitimate use of certain geographical indications at home and abroad. No country has to alter
its own laws inorder to accomplish greater protection under the regime of a international
treaty. Rules of one country are “exported” together with its goods into another country. In
this manner, a number of critical stumbling-blocks are avoided, but sum problems have
emerged as well. In each case of alleged violation, the court must apply the law of the
country of origin instead of its own laws (which would be applicable under the Conflict of
Laws Rules of most countries). Thus, the objection of the United States to the Lisbon
Agreement, i.e, that American courts would be bound by the decisions of a foreign
jurisdiction, would apply to these agreements as well.

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