THE NATIONAL AND INTERNATIONAL TRENDS OF PROTECTING THE GEOGRAPHICAL INDICATIONS

Author: B. Lekshmi, 2nd Year, BBA LL.B, Government Law College, Thrissur.

INTRODUCTION

Geographical Indication is an identification mark that is given to the goods and products which are produced in a specific area or a territory. This Geographical Indication helps a person to identify and associate the product with its area of origin. This area of origin contains certain reputation, characteristics or qualities which make them unique. Geographical Indication can be given to any kind of goods such as natural goods, agricultural goods and even for artificial goods. The Geographical Indication provides certain attributes to the place where the manufacture, production or preparation of these kinds of goods are made. This article gives a brief insight  about the  concept, Historical background, importance of GI and the important International Conventions regarding protecting GIs. It also gives a wide view  about  the protection of GIs both nationally and internationally and the problems regarding protecting GIs along with some case laws.

CONCEPT OF GEOGRAPHICAL INDICATION

GIs are  basically used to prevent the unauthorised use of a registered geographical indication by others. A Geographical Indication allows a good or a product to be recognised by the particular region. It should be the speciality of that territory, i.e. that particular product should not be made or manufactured in any other place. It should be the speciality of that particular territory. For preventing such unauthorised use by others, every geographical indication is tagged. The geographical indication provides security to that unique goods. Geographical Indication tag is an indication to recognize the origin of the particular good.

Geographical Indication prevents replicating the tagged products so in another way it provides legal assurance under Section 2 (1)(e)[1]. The GI tags are given to only those goods and products which are excellent in their quality. This tag helps the customer to identify the quality of the product and their level of satisfaction also increases which in turns increases the revenue of the producers and the employment in the region as it would open the international door for the producers. The concept of Geographical Indication is simple and it is well known to any consumer who goes with the Geographical Identification tag such as the ‘ Darjeeling tea’ and the ‘Roquefort cheese’.

HISTORICAL BACKGROUND

For every good that we produce or sell, we can see a unique identification mark or a symbol. This symbol or the mark is later associated with that unique product. It helps us to identify it from the rest of the products. Similarly, the Geographical Indication helps us to identify goods to a particular territory or a region. Egyptian Civilization is regarded as the first one to adopt the concept of Geographical Indications. The brick- makers of the Egyptian Civilization used to mark the bricks and stones which were used to build the pyramids. This was done to recognise the origin of the brick . Not only in Egyptian Civilization but the relevance of Geographical Indication can be seen in  Greece and also in other European countries also. The Thasian wine from the Macedonia, Parmigiano from the 13th century, Washington Potato of the 19th century are all examples of Geographical Indications[2].

Intellectual property laws started to emerge following the industrial revolution where the industrialized countries started to make laws regarding protecting their goods. Initially, these laws were made in a crude form,i.e.,it was not well defined. Their only aim was  to protect the goods that they produce and to stop the duplication of the products. It started in Venice in the 15th century and the 18th century. Portuguese started the first Appellation system to protect and safeguard their oldest wine tradition and reputation of Port from the Douro region of Portugal. France is the first country to afford protection to Geographical Indication through legal instrument AOC[3]. This concept emerged with the law of 1919 which established the GIs as collective intellectual property and granted legal recognition for its protection which was followed by England in the 17th century, and the other industrialized countries in

IMPORTANCE OF GEOGRAPHICAL INDICATION

There is a great importance of Geographical Indication. It should be well preserved and protected.  It helps in preserving the knowledge and heritage, for fair competition and also for International Trade which will increase the revenue of the territory and also the job opportunities.

  1. Preserving the Knowledge and Heritage of the Territory: – A goods with a Geographical Indication tag gives a unique identity of that particular territory where the goods are produced or manufactured. Geographical Indication has huge importance in their respective territory’s tradition as well as in economy. There is a lot of effort put into producing or manufacturing each Geographical Indications. It requires certain knowledge about the product and the development of such knowledge takes an eternity which owes it to the geographical environment and human interactions. These knowledge are vulnerable to be misused by making duplicates of the product. Also, the effort which is taken for producing the goods shall be rewarded and the world shall recognise them. For all these purposes the urge for preserving knowledge and heritage. Article 37 of the International Conference on Intellectual Property has declared overtly that the skill and heritage of any local community must be protected from unfair competition and should be adequately paid[4]. Geographical Indications are quite suitable for the protection of traditional knowledge since they are based upon the collective traditions and collective decision-making process. It protects and rewards traditional knowledge besides promoting their evolution.[5] The definition of the term “Appellations of origin” was discussed in the Lisbon Agreement. The Lisbon Agreement gave more attention to protecting and globalizing the importance of traditional knowledge. It gives more emphasis on the International level. “Appellations of origin” suggests that there must be a qualitative link between the produced and the geographical area. The term Geographical area includes natural factors such as soil, human factors or climate. This agreement agrees and establishes the strong relation between the traditional knowledge and its protection and.       
  2. Fair Competition: – As the world and the markets around the world are open due to globalization, the chances of fair competition is very less. There are huge chances of copying an item or the duplication of the item which leads to unfair competitions in the market. By doing so, it not only causes defamation but also creates a loss of trade and profit, loss of potential trade and damage to dilution[6]. In order to protect the goods from these losses and damages, there are several laws regarding this on both National and International levels. It ensures the fair competition. India has framed the Competition Act and the USA has recognized the concept of unfair competition in the most celebrated case of International News Service v. Associated Press[7]. Paris Convention is a settler agreement which assures there is a successful way of preserving against prejudiced competition. Fair competition is very necessary not just because it helps the growth of the territory but also for those who work hard to make this product.
  3. International Geographical Indication helps to develop the trade in the global market. By looking at the tag of a GI, one can identify the quality products. This will help the nations to develop their reputation and the good will also their intellectual property value also increases. This will help to gain high prices at the international markets. Australia has the intellectual property valued of $30b and it is increasing[8].  But some necessary steps should be taken for protecting the GIs as there is high risk of being wrongfully used. It would result in a huge loss and also a damage to the reputation and the goodwill of the nation. Several countries such as India, Pakistan have demanded protection of GIs.

INTERNATIONAL CONVENTIONS

There have been many conventions and agreements internationally and regional agreements are made regarding the GIs. But the four most important agreements are Paris Convention,  Madrid Agreement, Lisbon Agreement, TRIPS Agreement.

  1. The Paris Convention for the Protection of Industrial Property, 1883: – This is the one of the earliest International legal frameworks which granted protection for the GIs. It was revised six times later. It is the initial multilateral agreement which provided protection of indication of source and appellations of origin. This convention arose mainly for protecting industrial property and intellectual property beyond the national territories. This convention gave broad meaning and understanding on the term of industrial property. It also gave regulations regarding false indication of source. {Article 10(b) of the convention obliges members to assure their nationals effective protection against unfair competition[9]}. 
  2. The Madrid Agreement (Agreement for the Repression of False or Deceptive Indications of Source of Goods 1891): – This agreement was adopted in 1891 which was later revised in 1911 (Washington), 1925 (Hague), 1934 (London) and 1958 (Lisbon). The term Geographical Indication is not used in this agreement, ‘indications of source’ is the relevant source used in this agreement. This agreement tried to overcome the shortcomings of the Paris Convention. Under Article 3(b) use of false representations are prohibited[10]. However, there is a special exclusion of ‘products of the wine’ from the exercise of this provision. Madrid Agreement is still in force but it is not a part of the TRIPS Agreement.
  3. The Lisbon Agreement, 1958: – This agreement was concluded in Lisbon and was revised in Stockholm in 1967 and was amended in 1979. This agreement was a model while drafting for the TRIPS Agreement. Under this agreement, Article 2(1) defines the term ‘Appellations of origin’. This was the introductory agreement which explained this term. Article 3[11] of the agreement extended its protection to include any usurpation or imitation. This agreement could overcome the shortcomings of both the Paris Convention and the Madrid Agreement.
  4. TRIPS Agreement: – It is the most recent agreement on ‘Indications of geographical origin’. Trade- Related Aspects of Intellectual Property, Rights of 1994 (TRIPS) is a part of the WTO Agreement. Section 3 of the agreement consists of Articles 22, 23 and 24 which exclusively deals with geographical indications. {Article 22(1) defines geographical indication, which becomes the first international legal instrument in which the term geographical indications appears[12]}. The members are free to implement more laws than prescribed in TRIPS but those laws should not contravene the existing laws of the TRIPS.

PROTECTION OF GEOGRAPHICAL INDICATION – NATIONAL

 If we look back at the history of India, we can see various ways of protecting GIs in the Ancient period – Indus Civilization, Vedic Society, Pre-Mauryan Period, Post-Mauryan Period, Medieval Period and also in the Modern Period even in the British rule.

There were no special provisions or law related to the Geographical Indication and its protection till 1999 in India. Therefore, there was no provision for registering GIs and there were no statutory provisions to protect them. Due to this, there was a huge number of misuses of goods outside India regarding the origin of source. This resulted in disputed cases like turmeric, neem and basmati. Prior to this legislation, India did not have any law to protect the GIs but our geographical indication such as Darjeeling tea was much sought after. Darjeeling tea was sold under the Geographical tag of the place. It was well-settled that there is a huge demand for this tea and there is definitely a place for this in the global market. So, there is an adequate need for protecting the GIs to avoid such unfair exploitation, the Parliament enacted the legislation of Geographical Indications of Goods (Registration and Protection) Act, 1999 which came into force from 15th September, 2003. The legislation is administered through the Geographical Indication Registry under the overall charge of the Controller General of Patents, Design and TradeMarks[13]. Exclusion of non certified persons from embezzling geographical indications would safeguard it  from deception. The country of origin should protect its Geographical Indications otherwise there will be no obligation for other nations to hold out the reciprocal protection under the TRIPS. So, in order to protect the GIs of India, the Geographical Indications of Goods (Registration and Protection) Act, 1999 was made. 

PROTECTION OF GEOGRAPHICAL INDICATION – INTERNATIONAL

There are various Conventions and Agreements made for protecting the GIs internationally such as the Paris Convention, the Madrid Agreement and there are various regional agreements made in the same concern. Apart from this the GIs are protected through the system of Civil and Common laws. Countries such as the U.K, U.S.A, New Zealand, India, etc follow the system of Common law of jurisprudence. This system offers a remedy by way of advancing the action against an aggrieved party. Countries that follow civil law jurisprudence are Russia, France and most of the European countries where case law does not have any determinative role in judicial or administrative proceedings and codified law is the only source of enforcement of rights and remedies. There are several forms available for protection of GIs. For this the certification trademarks, collective trademark, Sui Generis Forms are used. Model Law on GIs was proposed by the WIPO in 1975. This model law acts as a standard which may be adapted and customized to the local needs and conditions. It also defines the Appellations of origins and the indications of source. This system also proposes for the registration of appellations of origin and includes an optional provision permitting national courts to decide whether a particular name has become generic in that country.

PROBLEMS RELATED TO PROTECTING GEOGRAPHICAL INDICATIONS

Since the Paris Convention, there are many efforts taken to protect the GIs. One of the key features of protecting the GI is by providing the specific area of production which is defined by the judge in the course of litigation over the right to utilize a given geographical indication. If those determinations are not made and there is any difficulty in the court within the country, then it becomes more difficult and complex for a court located in a country that is not the country of origin. The local public will be misled by the unsanctioned utilization of the GIs. There is a conflict between Trademarks and GIs. There are other challenges such as foreign registration. In order to claim a GI under the sui generis system, the claimants have to provide distinctive facts about the products and its production. Darjeeling tea is the only Indian GI with legal protection in foreign countries. Another main issue is the enforcement within and outside India. Once a product gets a legal right, it should be well enforced. There may be several cases of infringement and duplication of the product which should be dealt in the court. Also, there may be disputes from the competitors regarding the quality of the product. The rights of the producers are sometimes denied and there is a huge chance of exploitation. Promotion, Brand- Building and Marketing also adds problems in protecting the GIs. It becomes challenging for those who lack the reputation in the global market. Novelty consumption must be replaced by sustained consumption. There are no effective quality checks in the market and the duplication of a particular product will lead to the damage in the reputation and the goodwill of the nation.

CASE LAWS

  • INDIAN CASES
  • Imperial Tobacco Co. of India Ltd. V. Registrar of Trade Marks & Another[14].

The issue of whether a geographical name without any relevance to the trade can be registered as a trademark was raised in this case. The trademark registration used a wrapper to pack a cigar with a snow-clad hill in the outline and the word ‘Simla’ written prominently in various panels. The registrar rejected the application for registration. The company filed an appeal before the Calcutta High Court. The Calcutta High Court disallowed the appeal and laid down certain principles.

  • Dyer Meakin Breweries v. Scotch whisky Association[15]

This case is an important and significant case in the Indian Jurisprudence because it is the first case where the ratio of Spanish Champagne cases was relied on in asserting the rights in the court. An application filed by Dyer Meakin Breweries to register the mark ‘Highland Chief’ in respect of a product described as ‘malted whisky’. The trademark also had a  symbol of the Scottish man wearing a feather bonnet. Highland is a region in Scotland which is well known for its whisky. This petition was opposed by SWA. The Assistant Registrar of Trademarks rejected the application of the opposition as there was no evidence to indicate that the words ‘Highland Chief’ is associated with the whisky produced in Scotland.  However, SWA’s appeal was accepted by the High Court of Delhi and the decision was made by a single judge. Dyer appealed to the Appellate Bench of the High Court of Delhi but the court upheld the decision made by the single judge and this case further became a well-known false trade description within the meaning of Indian Trade and Merchandise Marks Act,1958.

  • Khoday Distilleries Ltd. V. Scotch Whiskey Association and Anor.[16]

This case was an appeal before the High Court of Madras against an order passed by the Assistant Registrar of Trademarks in a rectification, expunging the trademark ‘Peter Scot’ registered in the name of Khody distilleries. The rectification was filed by the SWA as it would create a confusion as to origin. This is one of the prominent cases of upholding the rights in a geographical location.

  • U.K. CASE
  • The Champagne Case

The main issue of this case was whether the use of the term Spanish champagne in respect of sparkling wine which was not produced by the Champagne houses amounted to a tort of passing in accordance with the laws in England. The plaintiffs were the producers of wine in the Champagne district. This case is also known as the famous Spanish Champagne Case[17]. The plaintiffs alleged that wine produced by the Champagne Houses is a naturally sparkling wine produced in the Champagne District and it has been well known in the trade in the public throughout the U.K.as Champagne and has a high reputation which is completely supported by the evidence and could not be seriously contested.

Therefore, it is established that the ‘Champagne’ in this country means the wine produced in the Champagne district of France by the plaintiffs and the other growers of the country and the shippers of that district and Champagne in this country has not come to mean a type of wine whatever maybe the situation of some other French wines in this respect. The defendant’s wine therefore is not champagne and it is untruthful to describe it as such.

This case extended the law of passing off the quality and kind of goods. It extended protecting the products named after the precise geographical location. This is the first case to recognise the rights of the trader. It also laid down the conditions to protect against misuse of a geographical origin.

  • American Case
  • City of Carlsbad et al v. Kutnow et al[18]

The city of Carlsbad had been known for many years for its sole and exclusive owner of the mineral springs. The water had been known for its peculiar healing, medicinal and curative qualities. This city had been selling the crystalline and power forms of these salts obtained by evaporating the water by the description ‘Carlsbad Sprudel Salts’ both in powder and crystal forms. The defendant Mr. Hermann Kutnow had been using the name improved effervescent Carlsbad powder and the improved Carlsbad to designate in preparation which was not an original Carlsbad product.

The plaintiffs sued the defendant for violating the rights in the trade of the name. The Circuit Court injuncted the defendants. On appeal, the circuit court affirmed the decision and prevented anyone from using that name  to induce the public to accept a genuine artificial salt, not the Carlsbad spring.

CONCLUSION         

In this growing world it is highly important and necessary to protect the Geographical Indications both nationally and internationally as it serves a great role in the economy of a country. It shows the traditions and geographical culture of a territory. It helps us to understand various unique products by providing a geographical indication tag, one can easily know its quality. There are high chances of duplication of a product which must be dealt very seriously. For that, there are laws both nationally and internationally. The various conventions and agreements all over the world give more emphasis on the need for  protecting the Geographical Indications such as the Paris Convention. Geographical Indication is an emerging field of Intellectual Property which shall be well protected.


[1]  Geographical Indications of Goods (Registration and Protection) Act, 1999, No. 48, Acts of Parliament, 1999 (India).

[2]Sivakumar.S ,  ‘Legal Protection of Geographical Indications an Analysis’, Chapter III, pg. 47.

[3] Phillips, Roderick , ‘ A short History of Wine’, pg. 49-52,(2000).

[4] Budi Suranto, “Protection to Geographical Indications,” IP Management Review, 87-93 (2004).

[5] Felix Addor Alexander Grazioli, (G.I. beyond wine and spiritsA roadmap for better protection of G.I. in the WTO TRIPS Agreement), Journal of WIPO, 893-895 (2002).

[6] H Canty, Heads of Damages in passing off,  EIPR ,407 (1996).

[7] 248 U.S. 215 (1918).

[8] IP Australia, Intellectual property government open live data, Government of  Australia (Nov. 12,  2017), https;//www.ipaustralia.gov.au/about-us/news-and-community.

[9] The Paris Convention for the Protection of Industrial Property protection, art 10(b), Mar. 20, 1883, as revised, Dec. 14, 1900, Jun. 2, 1911, Nov. 6, 1925, Jun. 2, 1934, Oct. 31, 1958, Jul. 14, 1967, Sept. 28, 1979,  828 U.N.T.S.

[10] The  Madrid Agreement Concerning International Registration of Marks art 3(b), Apr. 14, 1891, 23 U.S.T. 1353, 828 U.N.T.S.

[11] The Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration art. 2(1), Oct. 31, 1958, as revised, Jul. 14, 1967, 923 U.N.T.S.

[12] Agreement on Trade-Related Aspects of Intellectual Property Rights art. 22(1), Apr. 15, 1994,Marrakesh Agreement Establishing the World Trade Organization, Annex 2, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994).

[13] Geographical Indications of Goods (Registration and Protection) Act, 1999, No. 48, Acts of Parliament, 1999 (India).

[14]Imperial Tobacco Co. of India Ltd. v. Registrar of TradeMarks, (1997) AIR  Cal 413 (India).

[15] Dyer Meakin Breweries v. Scotch Whisky,  (1980) AIR  Del 125 (India)

[16] Khoday Distilleries Ltd. V. Scotch Whiskey Association, (1999)  Mad 274 (India)

[17] J. Bolinger and others v. Costa Brava Wine Company, Ltd., (1959) 3 All E.R. 800.

[18] Decided by the Circuit Court of Appeals, Second Circuit on 2nd Dec. 1895, 68 Fed 794.


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