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Presented by Goutam Suresh Tampi, 483, LLM-IPR

TRIPS provide protection of Geographical Indications in Article 22 and

additional protection for Geographical Indications of Wines and Spirits in Article 23. TRIPS defines Geographical Indications as 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. under Article 22.1. Types of Geographical Indications (as per Carlos M Correa): a) Simple, quality-neutral Geographical Indications of Source, which only explains that the product originates in the place designated by designation of source b) Qualified Geographical Indications having particular descriptive meaning because character, quality or reputation are essentially attributable to a country, region or locality, and hence used to designate a product. They are called appellations of origin.

Prior to TRIPS, Geographical Indications were protected under:

1. Paris Convention: Article 1.2 indications of source or appellations of origin but does not define these concepts. Article 10(1)specifically protects indications of sources, but not appellations of origin and states that sanctions mentioned in Article 9 for goods unlawfully bearing a TM or false TM apply to any false indication of source of a product. But it does not apply to indications which mislead public, but are not false Article 10bis protection against Unfair Competition for use of confusing, false or misleading Geographical Indications Article 10terprovides that legal remedies must be assured to repress all acts under Articles 9, 10 and 10bis. WTO members being obliged to comply with provisions of Paris Convention, they are subject to these provisions too, other than Article 22 and 23 or TRIPS.

2. Madrid Agreement: Articles 1 & 2 Explain the cases and the methods to seize and adopt similar measures in case of products bearing false or deceptive indication Article 3bisobliges the States party to prohibit use of all indications capable of deceiving public as to source of goods in connection with sale or display or offering for sale any related goods. Article 4Courts of each country have to decide which appellations, on account of generic character can be excluded from protection of Madrid Agreement 3. Lisbon Agreement on the Protection of Appellations of Origin and their ReGeographical Indications tration: Article 1participating countries will protect appellations of origin of other countries registered under International Bureau of WIPO, till such registration is maintained in Lisbon register. However, contracting parties are provided an option to refuse registration of an internationally registered appellation of origin within 1 year However, Lisbon Agreement does not apply to members of TRIPS as per its Article 2.1

Article 22 Protection of Geographical Indications 1. 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. 2. In respect of geographical indications, Members shall provide the legal means for interested parties to prevent: a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question 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;

any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin. 4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory.
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Article 23 Additional Protection for Geographical Indications for Wines and Spirits 1. Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, 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. (4) 2. The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated, ex officio if a Members legislation so permits or at the request of an interested party, with respect to such wines or spirits not having this origin. 3. In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled. 4. In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system. Footnote 4 : Notwithstanding the first sentence of Article 42, Members may, with respect to these obligations, instead provide for enforcement by administrative action.

Article 22: Article 22.1 defines Geographical Indications. Few important characteristics of Geographical Indications under Art. 22.1 are: It applies only to goods, but it does not explain what nature of goods are protected. To be a GI, the sign must identify a good to be originating from specific territory. Goods to be protected under Geographical Indications must be originating (mined or grown or manufactured) from the identified territory Members need not protect Geographical Indications of a good only because of the reason that another member country provides such protection Essentially is the only term which helps the interpretation that Geographical Indications Protection can be extended to those goods whose production partially is taking place in other territories. Protection of Geographical Indications of good is only provided if a relationship is established between the goods: Quality Reputation Other characteristics With the originating territory. Quality refers to objective properties of goods. Reputation refers to what perceptions influence the public in making purchasing decisions w.r.t goods. identify a good as originating in a certain location explains that one must establish a link between certain goods and a location. Article 22.1 adds reputation as one of the conditions for protection under Geographical Indication, unlike Lisbon Agreement.

Article 22.2 provides means of protection to be offered to Geographical Indications by members. A member must provide legal means to protect interested parties. Under Article 22.2(a), Protection extends to use of any means in designation or presentation which is actually very broad, extend even to graphical or pictorial representation of a good. But, however this is limited to the designation misleading the public. It does not explain who constitute public . Article 22.2(b) further extends scope of protection if such use causes unfair competition. Article 23 limits the flexibilities offered in Art. 22.2. it is further limited under Art. 24 exceptions to rules. Article 22.3 further elaborates the protection offered in Art. 22.2(a) that protection will not be offered to those Geographical Indications which are misleading public. Also, the measures adopted in this scenario would be to:

REFUSE future application of registrations INVALIDATing existing Registrations Permitted under national law There should be a determination before they act ex officio to ensure if public is misled by use of Geographic Term.

Trademark Registration authorities of member countries can however, act so, only if:

Article 22.4 can be interpreted that such Homonymous Geographical Indications will have no protection, if it is proved to public that goods originate in another country,

ISSUES w.r.t Art. 22:

Protection is limited only to Goods and not services. 1.1. Peru, Lichenstein and Switzerland offer Geographical Indications protection s or services 1.2 . No Limitation as to nature of goods for which Geographical Indications can be protected. 2. Identification is restricted to territory without any geographical or political limitation, causing slight ambiguity.
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Article 23: It provides an additional protection for Wines and Spirits, which is a higher level of protection than other goods. It helps countries of European Commission basically. Article 23.1 makes it clear that wines and spirits deserve a higher level of protection than other goods. Protection should be granted in order to prevent the use of indications identifying wines or spirits not originating in the place indicated by geographical indication in question, subject to exceptions discussed below, even in cases where: 1. The true origin of good is indicated 2. The geographical indication is used in translation 3. The indication is accompanied by delocalizing, expressions such as kind, type, style, imitation or the like. Footnote 4 to Art. 23.1, limits member countries to provide enforcement exclusively on administrative procedures may be because some countries provide protection for Geographical Indications in administrative form. This stands as an exception to the requirement that members must enforce civil judicial procedures under Article 42

Article 23.2 does not give an absolute prohibition, but provides specific grounds for refusing or invalidating trademark of wine. Members have no obligation to give chances to interested party for doing the same, unless domestic law states so. Article 23.3 is similar to Article 22.4 , but puts Members on an additional obligation in case the products are wines. Spirits are not mentioned here. Members must determine practical conditions under which homonymous indications in question can be distinguished from each other. There are 2 conditions prescribed for such determination: 1. Equitable treatment for procedure concerned 2. Consumers should not be misled Article 23.4 requires Member states to undertake negotiations for establishment of a multilateral system of notification and registration for protection of Geographical Indications of Wine, and members are free to opt out and decide to not participate,

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ISSUES w.r.t Article 23 Art. 23.1 requires members to provide legal means of protection for Geographical Indications identifying wines and spirits, but does not explain how to achieve this objective. Wines and Spirits are not defined in Article 23.1 Wines may include beverages derived from grapes and other alcoholic beverages such as rice and fruit wines. Status of protection under Geographical Indications for lesser alcoholic or lower as alcoholic beverages are not known as Spirit is not defined. Art. 23.1 only protects identical indications, NOT similar indications. Article 23 provides higher level of protection for Wines and Spirits, while Article 22 provides lower level (in comparison) to other goods. Since services are not protected under Geographical Indications in TRIPS, this is a disadvantage to countries where goods never include wines or spirits, but has other goods or services which require Geographical Indications protection. Art. 23.2 unlike Art. 22.3, applies to trademarks, that include, as one of their elements, indications of wines or spirits, but not to the case of registration of similar or modified indications. In Article 23.3, some members wanted to create a system covering spirits as well. Some members agreed at Doha Ministerial Conference to negotiate the establishment of a multilateral system of notification and registration of geographical indications for wines and spirits by Fifth Session of Ministerial Conference.

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Some members resist creation of another system that would grant further protection and trade advantages precisely to those members that keep high barrier in the field of agriculture. Thus, following main observations were made under this scenario: Only some European Countries, US, Chile, South Africa, Australia and Argentina are concerned with quality wine production. Rest of the countries have little or no interest in a system which would only improve possibility of enforcing geographical indications Art. 23.4 only asks for a system to facilitate protection of Geographical Indications of Wine, and not to strengthen or expand his situation. System would be concerned with Geographical Indications registration and notification, which is viewed differently in different countries System so formed would be based on voluntary rather than binding participation Many countries would feel that establishment of system as proposed by EC would require to conduct a trade-related negotiations for just one single tariff- line product, a process viewed as too burdensome and unjustified. Opposition system supposed that it would be too expensive for many developing countries, and put them in a weak position, where geographical indications exist.

India enacted Geographical Indication of Goods (Registration

and Protection) Act 1999 because of Basmati Rice Controversy. This incident was an eye opener for India because till then, though India was a party to TRIPS, she had provided no statutory protection to Geographical Indications by recognizing them as Intellectual Property Right. Judiciary in India, however has been active in preventing persons to take unlawful advantage of Geographical Indications even before India enacted a Statute to protect GI. In Scotch Whisky Association v Pravara Sahakar Karkhana, AIR 1992 Bom 294, Scotch Whisky Association succeeded in preventing defendants from selling their whisky under the description Blended with Scotch along with device of Scottish drummer a kilt or tartan and the word Drum Bearer.

1. Correa, M, Correa, Intellectual Property Rights, the WTO and Developing Countries: The TRIPS Agreement and Policy Options 2. STANDING COMMITTEE ON THE LAW OF TRADEMARKS, INDUSTRIAL DESIGNS AND GEOGRAPHICAL INDICATIONS ON GEOGRAPHICAL INDICATIONS AND THE TERRITORIALITY PRINCIPLE, Document prepared by the Secretariat (Last viewed on October 01, 2013 at 10.00AM) <https://www.google.co.in/url?sa=t&rct=j&q=&esrc=s&source=web&cd =1&ved=0CDsQFjAA&url=http%3A%2F%2Fwww.wipo.int%2Fedocs%2 Fmdocs%2Fsct%2Fen%2Fsct_9%2Fsct_9_5.doc&ei=a9dKUqvIOojkrAe t6oCwBA&usg=AFQjCNG7TV56Ob0D8xXMK9Mp3CYxtFttaA&sig2=tI aENnMdJ-kUVx74ZDjT2A&bvm=bv.53371865,d.bmk> 3. IP/C/W/253, available at <http://www.wto.org>, (last viewed on October 01, 2013 at 10.00AM) 4. Dr. Ahuja, V.K., Law Relating to Intellectual Property Rights 5. Resource Book on TRIPS and Development, UNCTAD-ICSTD