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 runs2 ‘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

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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France or ‘Darjeeling’ for tea from this district in India. It is not necessary for these
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,

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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organization or authority established by or under the law can apply for registration of a GI.
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

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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has been the forerunner in registration of GIs followed by the states of Andhra Pradesh, Kerala
and Tamil Nadu. The 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

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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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
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

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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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 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

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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 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

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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
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;

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  To create awareness on farming and marketing issues;
 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

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

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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
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 principle15 . 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

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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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 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

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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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 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

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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
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

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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 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

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to the fact that nothing in Section 3 of the Agreement shall require a Member 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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