2017

Features of the Different National and Regional

Geographical Indication Protection Systems:
Contemporary Models of Registration

Dr GE Evans ©
Centre for Commercial Law,
Queen Mary, University of London, Lincoln’s Inn

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SUI GENERIS PROTECTION OF GI: (ENACTMENTS FOR THE REGISTRATION OF GI)

 OWNERSHIP
 USERS OF GI/TRANSFER/RELIEF
 REGISTERING AUTHORITY, REGISTER
 SCOPE OF ELIGIBLE GOODS/SERVICES
 DEFINITION/S OF GI: ‘AO’; TRIPS; TRIPS PLUS
 NEED FOR, AND NATURE OF LINKAGE BETWEEN PRODUCT AND
PLACE
 GROUNDS FOR REFUSAL OF REGISTRATION OF GI
 RIGHTS CONFERRED BY REGISTRATION LIMITED BY
COEXISTENCE RULE
 AMENDMENTS TO THE CANADIAN TRADE MARKS ACT, 2017
 CETA: GI DEFINITION; ‘LISTED GI’; GI EXCLUSIVE
RIGHTS/GROUNDS FOR REFUSAL; GI EXCEPTIONS; COMMON
NAMES
 TENTATIVE FINDINGS: CONSOLIDATION; CONVERGENCE.

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 ‘SUI GENERIS’:OWNERSHIP

Who is entitled to apply for registration; prospective owner; administrator?

Open: EU:
 Groups of producers where ‘group’ means any association, irrespective of its legal
form, mainly composed of producers or processors working with the same product:
Reg. 1151, Art: 3.
 India s. 11(1) Any association of persons or producers or any organization or
authority …’
 Singapore: Persons who may apply for GI protection: being either a
a. a person or association of persons who is carrying on an activity as a
producer in the geographical area specified in the application with respect to the
goods specified in the application; or
b. a competent authority having responsibility for the GI for which registration
is sought: s. 38.
Limited by type of legal entity:
 China: under the AQSIQ system applicants must be institutions, associations or
enterprises designated or appointed by the government.
 China: MoA Measure (GIAP): applicant must be a professional cooperative
economic organisation of farmers or an industrial association determined by the
government, at or above the county level.

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 SUI GENERIS: USERS OF GI/TRANSFER/RELIEF
Users:
• EU: Association of producers within the defined geographic area.
• India: ‘Registered proprietors’ meaning any association of persons or of producers or
any organisation for the time being entered in the register as proprietor of the GI
(s.1(3)(n) of the Act). Renewal at 10 years: s.18(1). Singapore GI Act: s.50.
– ‘Authorised Users’ meaning the authorised user of a GI registered under the GI
Act clarifies that any person claiming to be the producer of the goods in respect
of which a GI has been registered may apply in writing to the Registrar for
registering him as an authorised user of such GI: (s.1(3)(b); S.17(1)
Transfer/relief from infringement:
• India: GI: non-assignable: s. 24 of the GI Act states that ‘any right to a registered GI is
not a subject matter of assignment, transmission, licensing, pledge, mortgage or any
such other agreement.’
– ‘Authorised users’ and not ‘registered proprietors’ have the right to the use of the
GI in relation to the goods in respect of which the GI is registered: s. 21(1)(b) &
21(1)(c) of the Act.
– ‘Authorised users’ who enter the trade subsequent to the registration can also
be registered as ‘authorised users’.
– Both the ‘registered proprietor’ and the ‘authorised users’ have the right to
obtain relief in respect of infringement of the GI: Section 21(1)(a)).
• China: MoA: users of GIAPs must apply to the registered owner for the right to use
the GIAP, which will enter an agreement with a user regarding the quantity, scope of
use and relevant responsibilities and obligations for using it.
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 SUI GENERIS: OWNERSHIP/USERS/RENEWAL

Open: ‘any producer group’ Limited by form of legal Limited by size; Reg’n:
entity administrative level & by Continuous or
gov’t decision Renewal

EU:…where ‘group’ means
any association,
irrespective of its legal
form: Reg. 1151:
Art: 3.
China: AQSIQ: applicants China: MoA (GIAP): Continuous:
must be associations or applicants must be change
enterprises designated by economic organisations production;
the government. of farmers/industrial territory.
association determined
by the government: at
county/national level.

Singapore: a Renewal 10
person/association of years: s. 50.
persons who are producers;
or competent authority: s.
38.

Renewal 10
India Any association of years: s.18.
persons or producers or any
organization or authority: s.
11(1).’

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 ‘SUI GENERIS’: REGISTERING AUTHORITY, REGISTER

National/regional authority responsible for examination:

Agricultural/other authority:
EU: national/EU: UK/DEFRA (department of agriculture…); and Commission/GI
Committee/DG Agriculture: Reg. 1151/2012: Arts. 48-53.
 Japan: Ministry of Agriculture, Forestry and Fisheries (MAFF);
 China: Administration of Quality Supervision Inspection and Quarantine
(AQSIQ): local/national: the initial application is reviewed by the local
authorities; then re-examined by the competent authority at the national level.
 Ministry of Agriculture (MOA) Measure (GIAP): county/national: examined by
the provincial government’s administrative department for agriculture; after
which the MOA’s Agricultural Product Quality Safety Centre is responsible
for the examination.
Intellectual Property Office (IPO)/Special Division:
 India: under the Controller-General of Patents, Designs and Trade Marks is also the
Registrar of GI; the GI Registry is located in Chennai: s.3(1).
 Singapore: Registry of GIs within the Intellectual Property Office of (IPOS).

Publicly available register and character:

– EU: Commission’s online “DOOR” database: name; status; documents;
– India: GI Register is divided into Part A and Part B: s.6(1). The particulars
relating to the registration of GI/authorised owners are incorporated in Part A;
while the particulars relating to the registration of the authorised users are
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contained in Part B (s.7).
 SUI GENERIS: SCOPE OF ELIGIBLE GOODS/SERVICES
Classification of goods? Limited? Comprehensive?
Limited:
• EU: agri/food products: cheese; oils; wool; bread, pasta, cakes and biscuits;
chocolate: Reg. 1151 Annex 1: Implementing Reg. 668.
– Proposed EU protection of non-agricultural products e.g. ‘Solingen Knives’.
• China: agricultural products: AQSIQ: area and plantation products; MoA: agricultural
products: MoA Measures: Art. 2 defines ‘agricultural products’ to include plants,
animals, micro-organisms and the products thereof obtained from agricultural
activities.’
• Singapore: “goods” means any natural or agricultural product or any product of
handicraft or industry: s. 2.
• Comprehensive:
• India: use of Nice System with Comptroller’s discretion: s.8. S.1(3)(f) defines 'goods' to
mean any: ‘Agricultural goods; Natural goods; Manufactured goods or; Goods of
handicraft or of industry and includes food stuff;’
• A single or divisional application may be made for registration of a GI for different
classes of goods: s.11(3).
• Gov’t may also nominate products for registration: e.g. Darjeeling tea.

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 SUI GENERIS: SIGNS PROTECTED

EU: FORMS OF GI:

Words/Images/symbols?
EU: Words: ‘designation of origin’ and ‘geographical indication’ are both named which
identify a product: Art. 5.
Thailand: “Geographical Indication” means name, symbol or any other thing which is used
for calling or representing a geographical origin and can identify the goods originating
from such geographical origin where the quality, reputation or other characteristic of the
goods is attributable to the geographical origin: s. 3.

Direct and indirect GI? A name that does not include a place name may be registered as a
GI if its production/reputation it is widely understood to be linked to a particular region.
– EU: Prosciutto di Parma; ‘Finocchiona’, a processed meat associated with Tuscan
region, is a registered PGI
– Japan: Tottori Sakyu Rakkyo (sand dune scallions from Tottori prefecture).
Indirect: Kiritanpo (rice cylinders from Akita Prefecture)
– India: Indirect GI: the Act states: the names having indirect reference to their
geographical origin are also eligible for registration E.g. ‘Basmati’ for rice.

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 SUI GENERIS: DEFINITION/S OF GI

Distinguish the dual and/or single, broader definition: latter implementing minimum
standard in TRIPS Art. 22; former on Lisbon Agreement AO.
• EU: Dual definitions PDO/PGI: Regulation 1151/12:
– Designation of origin definition of PDO (PDO): Art. 5(1): linkage between
product and place ‘exclusively due’ to natural and human factors. The
Regulation refers to “the production steps”.
• originating in a specific place/region/country;
• whose quality or characteristics are essentially or exclusively due to a
particular geographical environment with its inherent natural and human
factors.
– PGI: Art.5(2) defines more broadly a “geographical indication” as a name
which identifies a product:
• originating in a specific place, region or country,
• where a given quality, reputation or other characteristic of the product is
essentially attributable to its geographical origin, and
• at least one of the production steps of which take place in the defined
geographical area.

Singapore: Single definition: “geographical indication” means any indication used in

trade to identify goods as originating from a place, provided that —
(a) the place is a qualifying country or a region or locality in a qualifying
country; and (b) a given quality, reputation or other characteristic of the goods is
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essentially attributable to that place: s.2 GI Act.
 SUI GENERIS: DEFINITION/S OF GI

It is possible to discern even in single definition, a basis in TRIPS/Lisbon models:

China: AQSIQ: Decree 78: Regulation on Protection of Products of Geographical
Indications, 2005: protects products that derive their quality, reputation or other
characteristics from their geographical origin: that is, products that are:
• grown or cultivated in the region; or
• made, wholly or partially, of raw materials from the region and produced or
processed in accordance with particular techniques used in the region.
MoA Measures: ‘special agricultural product indications’: which are:
• territorial names’ and
• indicate that the product is from a specific area
• that the quality and major characteristics of the products mainly lie in the
natural and ecological environment as well as cultural and historical factors of
the area.

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 SUI GENERIS: DEFINITION/S OF GI: TRIPS-PLUS

Single, ‘TRIPS Plus’, definition:

India: GI Act: s.1(3)(e): GI means:
‘an indication which identifies such goods as agricultural goods, natural goods
or manufactured goods as originating, or manufactured in the territory of a
country, or a region or locality in that territory, where a given quality,
reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods
one of the activities of either the production or of processing or preparation of
the goods concerned takes place in such territory, region or locality, as the
case may be.’
• Note the additional requirement: in case of manufactured goods, one of the
activities of either the production, or processing, or preparation must also
take place in the place of its geographical origin. E.g. The Act will not allow
the final product to be designated as ‘Darjeeling tea’, unless the processing also
takes place within the Darjeeling region, as provided in the specification for the
GI ‘Darjeeling Tea’.
• Handicrafts: the Indian GI definition refers to the ‘geographical environment,
with its inherent natural and human factors’: Section 11(2)(a) of the GI Act. The
inclusion of ‘human factors’ becomes essential where handicraft products of
Indian origin are registrable: e.g. ‘Kancheepuram silk’ is product from Tamil
Nadu whose reputation is attributable to the know-how of the silk workers.
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 SPECIFICATION: NEED FOR, AND NATURE OF LINKAGE

• Linkage requirement: i.e. as to how the geographical indication serves to

designate the goods as originating from the concerned territory of the country or
region or locality in the country.
• EU : the definition of the geographical area ... Article 7
– the details bearing out the link with the geographical environment or the
geographical origin within the meaning of Article 2(2)(a) ...
– details of the inspection structures: Article 10;
• India: GI Act: also requires a statement about linkage: …in respect of specific
quality, reputation or other characteristics of which are due exclusively or
essentially to the geographical environment, with its inherent natural and human
factors, and the production, processing or preparation of which takes place in
such territory, region or locality…’: s. 11 GI Act.
Singapore:
• Linkage requirement: evidence of ‘the quality, reputation or other characteristic of
the goods and how that quality, reputation or other characteristic is attributable to
the place from which the goods originate’;
• The relevant geographical area;
• Foreign GI registrations: ‘evidence that the GI has obtained recognition or
registration as a GI in the qualifying country of origin’.

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 SUI GENERIS: GROUNDS FOR REFUSAL OF REGISTRATION OF GI

EU: AO model:
• ‘Generic nature, conflicts with names of plant varieties and animal breeds, with
homonyms and trade marks’: Art. 6.
Trade mark model/hybrid:
India: S. 9: in addition to…the prohibition on the registration of names determined
to be generic*; not protected in their country of origin; The Act stipulates that a GI
shall not be registered where:
– the use of which would be likely to deceive or cause confusion; or
– contains scandalous or obscene matter;
– contains any matter likely to hurt the religious susceptibilities of any
class…’

• Singapore: likewise Singapore: s. 41: where the similarity to the absolute and
relative grounds of refusal of trade mark law are more conspicuous.

* Genericness: EU (Art. 6: 1151/India (s.9) have a multifactor test.

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 SCOPE OF EXCLUSIVE RIGHTS

Compare the scope of protection: EU: ‘AO’ model:

• EU: Art. 13 broad protection: any direct or indirect commercial use; any misuse,
imitation or evocation, even if the true origin of the product is indicated or if [GI] is
accompanied by …style….; or any other false or misleading indication.
• ‘So-called ‘absolute’ protection: the GI is effectively reserved for use by producers
in the defined geographical area.
• Contrast: trade marks where only those that a well-known are provided with
protection against anti-dilution infringement.
India ‘hybid model’: Rights Conferred by Registration: s. 22: unauthorised use
includes:
• Use [of the GI] that …‘indicates or suggests that such goods originate in a
geographical area other than the true place of origin of such goods in a manner
which misleads the persons as to the geographical origin of such goods; or use [of
the GI] ‘which constitutes an act of unfair competition [Paris 10bis] including all
acts of such a nature as to create confusion …; false allegations in the course of
trade of such a nature [cause] discredit…: see Tea board, India v ITC Limited 2011
HC Calcutta: Application for preliminary injunction for infringement ‘Darjeeling
Louge’ Hotel: failed.
• ‘Reservation of name’ for specially designated products; the Indian government
may accord additional protection amounting to ‘any misuse, imitation or evocation’
to such products.

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 RIGHTS CONFERRED BY REGISTRATION LIMITED BY COEXISTENCE RULE

Adoption of coexistence rule (WTO: US v EU – GI:DS 174 2006):

• EU: ‘a trade mark the use of which contravenes Article 13(1) which has been
applied for, registered… in good faith within the territory of the Union, before the
date on which the application for protection of the designation of origin or
geographical indication is submitted to the Commission, may continue to be used
and renewed for that product notwithstanding the registration of a designation of
origin or geographical indication’: Reg.1151 Art. 14(2):‘Bavaria Holland’ v later PGI
‘Bavaria’ for beer: C‑343/07 2009 CJEU.
• Singapore GI Act provides for derogations from exclusive rights of the GI against
prior: s. 11, including prior users of un/registered trade marks which are identical
or similar to GIs, where the trade marks were applied/registered…in Singapore:
before 1999; or before the GI … was protected in its country .. of origin; and well-
known marks [Paris 6bis].

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AMENDMENTS TO THE TRADE MARKS ACT OF CANADA:
CANADA-EU CETA IMPLEMENTATION ACT 2017

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 AMENDMENTS TO THE CANADIAN TRADE MARKS ACT

The Comprehensive Economic and Trade Agreement (CETA), 2016 between Canada
and the EU includes provisions pertaining to GI for not only wine and spirits, but
also agri/food products such as cheese, meat and olives. It is enacted in the
Canada-EU CETA Implementation Act, March 7, 2017, Bill C-30.
• CETA contains a trading list of well-known GIs. By virtue of the list in Annex 20-A
and Article 20, those GIs are reserved. Annex 20-A [Part A] lists almost 200
European food names for products sold in Canada.
• CETA provides that the use of GIs such as ROQUEFORT will be reserved in
Canada to products imported from European regions where they originate.
• Whereas currently Parma Ham in Canada is given priority as a prior registered
trade mark, when CETA is ratified the GI PROSCIUTTO DI PARMA will finally be
authorized to use the name when sold in Canada.
• CETA includes provisions to preserve trade mark rights and limit the impact on
current users. For example, the following terms commonly used in Canada will
continue to be free to use in the Canadian market, regardless of product origin:
e.g. 'Parmesan'; 'Bavarian beer'.
• Current users 'Feta' and 'Gorgonzola' will also be able to continue using such
terms.
• Future users will be able to use such terms only if accompanied by expressions
such as 'type', 'style' or 'imitation'.
• Canadian producers will retain the ability to use elements of compound GI: e.g.
although 'Brie de Meaux' will be protected, the term 'brie' can be used on its own.
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 CETA: DEFINITION: GI

EU-Canada Comprehensive Economic and Trade Agreement (CETA)

Sub-section C – Geographical Indications:
Article 20.16 – Definitions: For the purposes of this Sub-section:
geographical indication means an indication which identifies an
agricultural product or foodstuff as originating in the territory of a Party, or a
region or locality in that territory, where a given quality, reputation or other
characteristic of the product is essentially attributable to its geographical origin;
and

product class means a product class listed in Annex 20-C:

* [WTO] PRODUCT CLASSES: e.g. dry-cured meats means dry cured meat
products falling under Chapter 2 and heading 16.01 or 16.02 of the Harmonized
System.

Article 20.17 –Scope

This Sub-section applies to geographical indications identifying products falling
within one of the product classes listed in Annex 20-C.

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 CETA: ‘LISTED GI’

• Article 20.18 – Listed geographical indications: For the purposes of this Sub-section:
• the indications listed in Part A of Annex 20-A are geographical indications which
identify a product as originating in the territory of the European Union or a region or
locality in that territory; and
• the indications listed in Part B of Annex 20-A are geographical indications which
identify a product as originating in the territory of Canada or a region or locality in
that territory.

Part A Geographical Indications Identifying a Product Originating in

the European Union
• Spreewälder Gurken fresh and processed vegetable products
Germany
• Φέτα* Feta cheeses Greece
• Roquefort cheeses France
• Prosciutto di Parma dry-cured meats Italy
• Grana Padano cheeses Italy
• Parmigiano Reggiano cheeses Italy

Part B Geographical Indications Identifying a Product Originating in

Canada [Nil] 19
 CETA: GI: EXCLUSIVE RIGHTS/GROUNDS FOR REFUSAL
Article 20.19 – Protection for geographical indications listed in Annex 20-A
2. Enforcement/infringement of rights include: the use of a geographical indication of
the other Party that….
 does not originate in the place of origin specified in Annex 20-A for that geographical
indication; or
 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; [Does that include Art. 13 ‘evocation’?] and
 any other use which constitutes an act of unfair competition within the meaning of
Article 10bis of the Paris Convention …
3. The protection referred to in subparagraph 2(a) shall be provided even where the true
origin of the product is indicated or the geographical indication is used in translation or
accompanied by expressions such as "kind", "type", "style", "imitation" or the like.

Art. 20.19: trade mark containing GI: ground for refusal/invalidation:

6. The registration of a trademark which contains or consists of a geographical
indication of the other Party listed in Annex 20-A shall be refused or invalidated, ex
officio if a Party's legislation so permits or at the request of an interested party, with
respect to a product that falls within the product class specified in Annex 20-A for that
geographical indication and that does not originate in the place of origin specified in
Annex 20-A for that geographical indication.
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 CETA: GI: EXCEPTIONS

Article 20.21 – Exceptions include:

Common food names continue in use: Notwithstanding Articles 20.19.2 and
20.19.3, Canada shall not be required to provide the legal means for interested
parties to prevent the use of the terms listed in Part A of Annex 20-A (e.g.
Gorgonzola; Feta) when the use of such terms is accompanied by expressions
such as "kind", "type", "style", "imitation" or the like and is in combination with a
legible and visible indication of the geographical origin of the product concerned.

Grandfathering: Article 20.21 (2) confirms that those who were selling GI listed in
Part A of Annex 20-A e.g. Feta prior to October 2013 can continue to use the
names, but new entrants to the Canadian market will be required to add qualifiers
such as “kind,” “type,” “style” or “imitation.”

Coexistence: Art. 20.21(5): If a trademark has been applied for or registered in

good faith, or if rights to a trademark have been acquired through use in good
faith, in a Party before the applicable date set out in paragraph 6, measures
adopted to implement this Sub-section in that Party shall not prejudice the
eligibility for or the validity of the registration of the trademark, or the right to use
the trademark, on the basis that the trademark is identical with, or similar to, a
geographical indication.

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 CETA: GI: EXCEPTIONS: OWN NAME; COMMON NAMES

Translation: If a translation of a geographical indication is identical with or

contains within it a term customary in common language as the common name for
a product in the territory of a Party, or if a geographical indication is not identical
with but contains within it such a term, the provisions of this Sub-section shall not
prejudice the right of any person to use that term in association with that product
in the territory of that Party. (7)

Common names: The provisions of this Sub-section [i.e. provisions re: GI] shall
not prejudice the right of any person to use, or to register in Canada a trademark
containing or consisting of, any of the terms listed in Part A of Annex 20-B (e.g.
Parmesan); and Subparagraph (a) [the long EU list] does not apply to the terms
listed in Part A of Annex 20-B (e.g. Parmesan); in respect of any use that would
mislead the public as to the geographical origin of the goods. (11)
The use in Canada of the terms listed in Part B of Annex 20-B shall not be subject
to the provisions of this Sub-section. (E.g. The term "comté" in association with
food products when used to refer to a county (for example "Comté du Prince-
Edouard“.) (12)

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 CONCLUSION: TENTATIVE FINDINGS

• Trend to convergence of sui generis and trade mark models, prompted by

FTAs e.g. CETA. Bi-directional:
 E.g. Sui generis enactments (Indian and Singapore GI Acts); and
 E.g. Trade mark acts (notably, Canadian CETA Implementation Bill,
2017) will contain terminology, expressions and concepts common to
both models including, on the one hand, the breadth of exclusive
rights [TRIPS Art. 23]; and on the other, derogations on the exercise of
those rights.
• Trend to consolidation within regional/national laws:
 E.g. Regional: in relation to laws of Member States, the EU GI
Regulation held to be a ‘uniform and exhaustive sui generis system:
EUIPO Guidelines: Bud/Ammersin CJEU; reflected also in EU Trade
Mark law amendments to Directive and EUTM Regulation.
 E.g. National: in relation to the comprehensive nature of the Indian
definition of a GI.

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 GI REGIONAL/NATIONAL LAWS CITED

• EU Regulation 1151/2012 on the protection of geographical indications and

designations of origin for agricultural products and foodstuffs;
• Japan: Act for Protection of Designated Agricultural, Forestry and Fishery
Products and Foodstuffs 2014
• China: The AQSIQ: Decree 78: Regulation on Protection of Products of
Geographical Indications, 2005.
– China: MoA introduced Measures for the Administration of Geographical
Indications of Agricultural Products in December 2007.
• India: The Protection of Geographical Indications in India: Geographical
Indications of Goods (Registration and Protection) Act, 1999
• Singapore: Geographical Indications Act (“Act”) 2014
• Thailand: Protection of Geographical Indications Act, 2003.

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