LEGAL PROTECTION FOR THE DEVELOPMENT POTENTIAL

OF GEOGRAPHICAL INDICATIONS

Sc

COMPARATIVE ANALYSIS OF THE LEGAL TOOLS FOR THE

PROTECTION OF GEOGRAPHICAL INDICATIONS IN ASIAN
COUNTRIES

Thesis for LLM (Corporate Law)

Prepared by: Supervised by:

Seema Shams Professor Ali Asghar

260-FSL/LLMCL/F09 Facuhy o f Shariah & Law

FACULTY OF SHARIAH & LAW

INTERNATIONAL ISLAMIC UNIVERSITY ISLAMABAD

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LEGAL PROTECTION FOR THE DEVELOPMENT POTENTIAL OF

&

COMPARATIVE ANALYSIS OF THE LEGAL TOOLS FOR THE

PROTECTION OF GEOGRAPHICAL INDICATIONS IN ASIAN
COUNTRIES
Athesis is submitted in partial fulfilment

of the requirement for the degree of

MASTER IN LAWS [Corporate)

June, 2011

Prepared by: Supervised by;

Seema Shams Professor Ali Asghar

260-FSL/LLMCL/F09 Faculty of Shariah & Law

FACULTY OF SHARIAH & LAW

INTERNATIONAL ISLAMIC UNIVERSITY ISLAMABAD

the Most Beneficent,
the Most Merciful
 FINAL APPROVAL

/
It is certified that we have read the dissertation submitted by Ms. Seema Shams entitled
“LEGAL PROTECTION FOR THE DEVELOPMENT POTENTIAL OF GEOGRAPHICAL
INDICATIONS & COMPARATIVE ANALYSIS OF THE LEGAL TOOLS FOR THE
PROTECTION OF GEOGRAPHICAL INDICATIONS IN ASIAN COUNTRIES” as a partial
fulfillment for the award of degree of LLM Corporate Law. We have evaluated the dissertation
and found it up to the requirement in its scope and quality for the award of degree.

1. Prof. Ali Asghar

Supervisor
Visiting Faculty Member
Faculty of Shariah & Law, IIUI.

2. Mr. Attaullah Khan Mahmood,

Internal Examiner,
Assistant Professor,
Faculty of Shariah & Law, IIUI.'" ■

3. Mr. Muhammad Ayub, ,

External Examiner, ' T- '
Consultant Law, (PTA) Islamabad.
 List of Abbreviations
A O ------ Appellation of Origiii

PIPRO—Pakistan Intellectual Property Rights Organization

C A P ---- Common Agricultural Policy

WIPO— World Intellectual Property Organization

CTM----Certification Trademark

EC-------European Commission

D D A ----- Doha Development Agenda

TM----- Trade Mark

EU------ European Union

G ATT— General Agreement on Tariffs and Trade

GI------ Geographical Indication

GIs----- Geographical Indications

IP-------Intellectual Property

IPO----Intellectual Property Organization

IPRs--- Intellectual Property Rights

PDO---Protected Designation of Origin

PGI---- Protected Geographical Indication

RD-----Rural Development

TRIPS—Trade Related Aspects of Intellectual Property Rights

U S------ United States

W TO--- World Trade Organization

Table of Cases

> A case study of ‘Boseong’ green tea

> The Case of Ceylon Tea

> Basmati Rice Case

 DEDICATION

The thesis is dedicated to myparents and teachers

{ }
 ACKNOWLEDGEMENTS

First of all I’m extremely grateful to Almighty Allah for granting me the ability to

write this thesis.

I wish to acknowledge that Sir Ali Asghar my‘ supervisor who introduced me to the

topic of Geographical Indications. Sir Ali Asghar has been amazingly supportive,

helpful and patient assisting me each time I have hit the wall and thought I couldn’t

move forward

I am thankful to Professor Imran Ahsan khan Nyazee for his guidance and support,

his expen advice and encouragement helps me a lot in the completion of my thesis.

Then there is my teacher Mrs. Beenish Aslam Shaikh who has helped and guides me,

thank you for your support and wisdom. Thank you for helped with the fine tuning

of this thesis.

I want to thanks my Mum for asking me 100 times “how is your thesis going?” I could

never be grateful enough for all that you have done for me. Lam extremely thankful to

God for letting me be part of your lives! Thank you for your support in every single

decision I made.

Then there are aU of the personaHties that I interviewed and bugged with emails,

because I missed some information during the interviews. Thank you for your input

and time which was an essential part of my thesis and best of luck.

{ - }
Thesis Statement

Geographical Indications may be used to enhance commercial value of natural,

traditional and crop products in relation to its origin and better exploitations and

promotions of Geographical Indications would make it possible to afford better

protection for economic interest of the community.

{ - f
 Preface

This Dissertation has been written as a requirement for LLM Corporate Law

Program. In this Dissertation an attempt is made to highlight the beneficial impact of

Geographical Indications for which effective legal protection is necessary to use the

Geographical Indications as a beneficial tool. Geographical indications have not been

paying much attention in the Pakistan, not generally nor in legal literature. In

contrast, Southern European countries and in Asia only India and China have

promoted and appreciated Geographical Indications which is also reflected by the

weight Geographical Indications have received attention*“in their legal literature.

While recent empirical studies suggest that the protection of geographical indications

(GIs) for specialty agricultural products can potentially benefit the rural economy.

The potential of GIs for rural development has fully been recognized by the EU,

which directly links GIs to certification of quality and, indirectly, to rural

development and increasing farmer incomes. GIs are especially important to

communities engaged in traditional agricultural practices, as they provide value when ’

they protect the common reputation of farmers who strive to improve the quality of

their products.

That’s why many countries emphasizing that to extend the protection to agriculture

products, handicrafts and traditional knowledge. We must follow a growing trend of

utihzing GIs to protect their culture, arts, and traditional knowledge.

M y focus is that there is a great need to develop a national legal system for the

protection of Geographical Indications and formulate a proposal for the protection of

GIs. If the GIs are protected in domestic laws then there is a possibility to seek

protection in the foreign countries.

Seema Shams
(2010)

{ }
 Abstract

Geographical Indications (GIs) are collective property r ^ t s , which identify a good as

originating from a specific geographical region. If the producers of GI products can

signal to the consumers the specific qualities their products possess, qualities that are

attributable to the land, then - due to the products ties to their region of production -

GI products are considered to have potentials to benefit rural development. I have

worked on this issue that effective legal protection for GIs has the beneficial impact on

the society especially with reference to Pakistan. The findings reveal that production

of Geographical Indication products in the Asian countries and in the EU have in

many cases contributed to rural development, even though the experience differs a lot

between different regions and products. It also concludes that legal protection is

necessary in order for the benefits stemming from GI production to benefit the

rightful producers and regions. M y focus is on the beneficial impact of GIs and

Comparative analysis of legal tools used in the Asian countries including Pakistan for

the protection of GIs and to propose recommendations for the suitable legal system.

{ VII }
 INTRODUCTION OF THE THESIS

Legal Protection for the Development Potential of Geographical Indications

and
Comparative analysis of the L^al Tools for the Protection of
Geographical Indications in Asian Countries

In recent years Geographical Indications (GIs) has emei^ed as one of the most important

instruments of protecting the “quality, reputation or other character of goods essentially

attributable to their Geographical origin”. Like trademark, Geographical Indications are

valuable to providence. It is a 'source identifier’ and indicator of quality. It helps to promote

goods of particular region or country and “eligible for relief from acts of infringement and/or

unfair competition”.

The Trade Related Aspect of InteUectual Property Rights (TRIPS) Agreement prescribes the

minimum standard of protection for Geographical Indications (GIs) and additional protection

for wines and spirits. Article 23 of the TRIPS Agreement, which grants higher status only to

wines and spirits and excludes other goods and products out of its purview, has generated

considerable resentment. This discrimination or imbalance in protection has led to demands

for additional protection to other goods and products from a number of countries including

Pakistan.

^ The most contentious issue concerning Geographical indications is the extension of enhanced

protection to products other than wines and spirits because the products from the developing

VIII
countries having Geographical Lidications are not on wines and spirits but rather, they relate

to products from agriculture, textiles, and handicrafts. Using the flexibilities available in the

TRIPS Agreement, the majority of the countries adopted sui generis systems of protection to

facilitate the socio-economic development of the producers of GIs.

Chapter 1 will provide an introduction of term “Geographical Indications” and the evolution

of the term in order to understand the basic concept of Geographical Indications.

International systems of protection for Geographical Indications and discusses the

development of Geographical Indications protection globally. This chapter will also examine

the Importance and significance of Geographical Indications and the Difference between

Geographical Indication and Trademarks (legal aspects). This background discussion is

important as it provides the context for the remainder of the study. In this chapter we will

also try to explore the answer to the question that in the presence of trademarks why

Geographical Indications should be treated as a separate category of Intellectual Property law?

Chapter 2 will examine the Development potential of Geographical Indications, its Economic

and Social Benefits and role of Geographical Indications protection for Agricultural Products

and Handicrafts. It will also explore why many countries emphasizing that to extend the

protection of Geographical Indications on an International level to handicrafts and traditional

knowledge and what are the Rationale behind the Extension in the protection available for

Geographical Indications and the arguments in favor and against the increased protection of

Geographical Indications. This chapter will also provide the importance of Geographical

Indications through various case studies.

IX
Chapter 3 will provide the Comparative Legal analysis of legal tools available for the

protection of Geographical Indications of Asian countries. This chapter will also observe that

what is the attraction of Geographical Indications for developing countries, how the

emergence of GI protection systems took place in the Asian countries in order to get the clear

picture of the legal protection of Geographical Lidications in Asia.

Chapter 4 will discuss the Geographical Lidications in Pakistan, Problems regarding

Geographical Indications’ recognition in Pakistan, Pakistan’s situation regarding

Geographical Indications, Scope of the Geographical Indications in Pakistan being an

agricultural country and its implication for economic benefits and the Developments in

Pakistan regarding the Geographical Lidications are sufficient or not.

0
T a b le o f C o n te n ts

Table of Contents........................................................................................................... 1
CHAPTER:!................................................................................................................. 4
Geographical Indications...................................... ................................................................ 4
1.1 Introduction of Geographical Indications................................................................ 4
1.2 Concepts and Legal definition of Geographical Indication:.................................... 6
1.3 Need for Protection...................................................................................................13
1.4 Protection of Geographical Indications at National Level.................................... 14
1.5 International Legal framework for the protection of GIs..................................... 18
1.5.1 Paris Convention for the protection of industrial property 18 83 ........................20
1.5.2 Madrid Agreement for the Repression of False or Deceptive Indications.........22
1.6 Importance and significance of Geographical Indications:....................................27
1.7 Difference between Geographical Indication and Trademarks.............................29
CHAPTER: H...............................................................................................................32
2.1 Introduction........................... ...................................................................................32
2.2 Development Implications of Geographical Indications..................... ..................34
2.3 Geographical Indications protection for Agricultural Products and....................36
2.4 Geographical indications as a development tool.....................................................38
2.5 Economic and Social Benefits of Geographical Indications..................................40
2.6 The Utility of GIs with regard to Traditional Knowledge...................................44
2.7 Geographical Indications have a means of maintaining C ulture.......................... 47
2.8 Costs and Limitations of Geographical Indications as a Development Tool.....48
2.9 The Rationale behind the Extension in protection available for G Is................... 48
2.10 Brief outline of the different positions:...................................................................50
2.10.1 The Demanders..........................................................................................................50
2.11 Arguments in favour of increased protection of Geographical Indication......... 51
2.12 Arguments against increased protection of Geographical Indication...................51
2.13 Importance of Geographical Indications through Case Studies............................52
2.13.1 Quality improvement;............................................................................................ 53
2.13.2 Product marketing:.................................................................................................. 55
2.13.3 Trade policy..............................................................................................................56
2.13.4 Place marketing and tourism :.................................................................................57
2.14 The Case of Ceylon Tea.......................................................................................... 58
CHAPTER: m ....................................................................................................................61
3.1 Introduction..............................................................................................................61
3.2 The attraction of GIs for developing countries.................................................... 62
3.3 Emergence of GI protection systems in Asia........................................................ 64
3.4 Application and importance in South Asia........................................................... 65
3.5 Intellectual Property Rights regimes of the South Asian countries.....................65
3.6 An Analysis of the Legal Tools for the Protection of GIs in A sia ......................67
3.6.1 The Asian legal framework: a comparative analysis..............................................68
CHAPTER: IV_................ ..................................................................................................... ........... 87
4.1 Historical background of Geographical Indications in Indo - Pak......................87
4.2 Geographical Indications in Pakistan...................... ..............................................88
4.3 Problems regarding Geographical Indications’ recognition in Pakistan.............89
4.4 Pakistan’s situation regarding Geographical Indications...................................... 89
4.5 Steps of the Process of Geographical Indication Recognition.............................90
4.6 Scope of the GIs in Pakistan Being an Agricultural Country and its effects....91
•4.7 Whether the Developments in Pakistan regarding the GIs are sufficient...”..... 93
4.8 Can Pakistan Use the IP Tools to Advance their Development Strategy?........ 94
Conclusion and Reconmiendations...................................................................................97
Conclusion...........................................................................................................................97
Recommendations................................................ .............................................................101
APPENDIX: 1 .................................................................................................................. 109
COLLECTIVE MARKS...................................................................................................109
FIRST SCHEDULE..........................................................................................................109
TRADE MARKS ORDINANCE 2001..........................................................................109
APPENDIX: 2 .................................................................................................................. 121

2
, CERTM CATION M ARKS......... .......................... ....................................................... 12 1
SECOND SHEDULE...................................................................................................... 121
TRADE MARKS ORDINANCE 2001................................................... ....................... 121
Bibliography..................................................................................................... "............. 132
Internet Resources..............................................................................................................13 1
 CHAPTER: I

GEOGRAPHICAL INDICATIONS

1.1 Introduction of Geographical Indications

Geographical indications are signs used for goods which indicate the origin or place of

goods\ It is necessary that the goods must have a specific region or place and

characteristics of goods must be due to that region or place^. As for their functions,

Geographical Indications have traditionally played a fundamental foie as source

identifiers by informing consumers about the origin of the goods to which they are

affixed^ “The fundamental concept behind Geographical Indications is that specific

geographic locations yield product qualities that cannot be replicated elsewhere”^. In

other words we can say that Geographical Indications give the information to the

consumer about the quality reputation and characteristics of the product which are

attributable to its Geographical origin^.

1 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice, (2010),Vol. 5, No. 6,442
2 Kal Raustiala and Stephen RMunzer, “The Global Struggle over Geographic Indications”, The
European Journal of International Law Vol. 18 no. 2, (October 19, 2010):338
3 Irene Calboli, “Expanding the protection of geographical indications of origin under trips: “old”
debate or “new” opportunity?”
4 Kal Raustiala and Stephen RMunzer, “The Global Struggle over Geographic Indications”, The
European Journal of International Law Vol. 18 no. 2, (October 19, 2010):338
5 Ibid
A sign will not be considered as a Geographical Indication unless it does not fulfil the

following conditions:

1. It must relate to a good (although in some countries services

are also included, for example in Azerbaijan, Bahrain, Croatia,
Jamaica, and Saint)
2. These goods must originate from a defined area;
3. The goods must have qualities, reputations or other
characteristics which are clearly linked to the geographical
origin of good^.

Actually the Geographical name for the goods has always been used for the purpose of

marketing in order to show that from where the goods came. With the passage of time

people used to associate some Geographical names with the products popular for their

highly desirable unique characteristics^. A working paper titled as “Geographical

Indications: creation and distribution of economic value in developing countries” of

NCCR (National Centre of Competence Research) defines the importance of GI as:

Geographical Indications are often analyzed as a tool to

protect artisan products with a strong link to a territory
against industrial copies and usurpations. Besides this legal
aspect, recent research conducted in European countries has
highlighted the ability of GI produas to create economic value

6 O’Connorand Company, “Geographical indications and TRIPs: 10 Years Later... A roadmap for EU
GI holders to get protection in other WTO Members”, Part I Protection of Geographical Lidications in
160 countries around the world.
7 Oskari Rovamo, “Monopolising Names? The Protection of Geographical Indications in the European
Community” Helsinki University ^Faculty of Law Department of Public Law Project: ‘ Globalisation,
International Law and IPR’ Professor Jan: 1
 and to distribute a certain share of the price premium to the
producers of the raw material in the concerned rural area,®

On the world screen Geographical Indications (GIs) are increasingly recognized as a

tool for securing the link between product quaHty and the region of Geographical

origin’. Most of the countries consider the Geographical Indications as the form of

intellectual property law. In these countries Geographical Indications are either

protected through trade mark system or through separate dedicated laws. If any party

wants to get protection through intellectual property law then it is the requirement

that such party must register their Geographical Indications with authorized body^*^.

The fundamental role of Geographical Indications in this setting, therefore, is that of

providing a credible certification mechanism that solves a real-world information

problem”.

1.2 Concepts and Legal definition of Geographical Indication:

In order to understand the term “Geographical Indications” first we have to analyze

the concepts of Geographical Indications.

8 Sophie Reviron, Erik Thevenod - Mottet and Nadja El Benni, “Geographical Indications: creation
and distribution of economic value in developing countries”, March 2009:5
9 Dwijen Rangnekar, “Geographical Indications: A Review of Proposals at the TRIPS Council”
http://www .iprsonline.org/unctadictsd/docs/GI%20paper.pdf last visited on September 29^010
10 Carsten Fink and Keith Maskus, “The Debate on Geographical Indications in the W TO” p:201
http://www.ppl.nl/bibliographies/wto/files/6531.pdf last visited on October 14, 2010
11 Giancarlo Moschini, Luisa Menapace, and Daniel Pick, “Geographical Indications and the
Competitive Provision of quality in agricultural markets” August 2008

6
Initially “Indications of source” and “appellations of origin” are the terms used in the

treaties administered by the World Intellectual Property Organization (WIPO) with

respect to Geographical Indications. Articles 1(2) and 10 of the Paris Convention for

the Protection of Industrial Property (Paris Convention) and Madrid Agreement for

the Repression of False or Deceptive Indications of Source on Goods of 1891 (the

Madrid Agreement) contains the term “indication of source” and in these two treaties

no definition of indications of sources but article 1(1) of the Madi"id Agreement

described the term in the following words:

All goods bearing a false or deceptive indication by which one

of the countries to which this Agreement applies, or a place
situated therein, is directly or indirectly indicated as beir^ the
country or place of origin shall be seized on importation into
any of the said countries^.
Consequently, an Indication of source can be defined as an
indication referring to a country, or to a place in that country,
as being the country or place of origin of a product. It is
important that the indication of source relates to the
geographical origin of a product and not to another kind of
origin, for example, an enterprise that manufactures the
product. This definition does not imply any special quality or
characteristics of the product on which an indication of source
is used. Examples of indications of source are the mention, on
a product, of the name of a country, or indications such as
“made in

12 Surbhi Jain, “ Effects of the extension of geographical indications: a south Asian perspective”, Asia-
Pacific Development Journal, Vol. 16, No. 2, December 2009J*:67
13 Ibid

7
The Lisbon Agreement for the Protection of Appellations of Origin and their

International Registration of 1958 (Lisbon Agreement) contained the term

“appellation of origin”. Article 2(1) of the Lisbon Agreement describes the term

“appellation of origin” in the following words:

Geographical name o f a country, region, or locality, which serves to designate a

product originating therein, the quality and characteristics o f which are due exclusively or

essentially to the Geographical environment, includes natural and human factors"^^^.

Under this definition, an appellation of origin can be regarded

as a special kind of indication of source, because the product
for which an appellation of origin is used must have a quahty
and charaaeristics that are due exclusively or essentially to its
origin. Examples of protected appellations of origin are
Bordeaux (wine), Noix de Grenoble (nuts), tequila (spirit) and
Jaffa (oranges)^.

In the comparison of the definitions of indication of source, appellation of origin and

Geographical Indication following points can be observed:

Indication of source is the broadest term. It comprises

Geographical Indication and appellation of origin. Indications
of source only require that the product on which the
Indication of source is used originate in a certain Geographical
area. Thus, there are Indications of source, which seem not to
be covered by the definition of Geographical Indication under
the TRIPS Agreement, namely indications of source whose use

14 Ibid
15 Ibid
 on products does not imply a particular quality, reputation or
characteristic of those products. Geographical Indications are
more broadly defined than the appellations of origin. In other
words, all appellations of origin are geographical indications,
but some geographical indications are not appellations of
origin^^.

This is a problematic issue to define and determine the exact scope of the term

Geographical Indications coincided with the national system. However it is difficult to

determine the exact definition and scope of Geographical Indication for instance

“what is a Geographical Indication, and what is not?” ^

Generally the term Geographical Indications used to identify the specific Geographical

region of the agricultural or other products that are a manufacture or grown and such

products derive their unique characteristics and reputation. In this respect the term

Geographical Indications includes “appellations” or “indications” of origin

“Indication of Source” refers to a word, symbol, or device that

indicates that a product originates in a specific geographic
■ region,
“Appellation of Origin” refers to a word, symbol, or device
that indicates that a product originates in a specific geographic
region only when the characteristic qualities are due to the
geographical environment, including natural and human

16 Worldwide symposium on geographical indications, “organized by the World Intellectual Property

Oi^anization (WIPO)and the United States Patent and Trademark Office (USPTO)” San Francisco,
California, July 9 to 11, 2003p:3
17 “Standing committee on the law of trademarks, industrial designs and geographical indications”,
World intellectual property oi^anization, 2002 Geneva.
http://www.wipo.int/edocs/mdocs/sct/en/sct_9/sct_9_4.pdf last visited on September 29, 2010)
18 Irene Calboli, “Expanding the protection of geographical indications of origin tmder trips: “old”
debate or “new” opportunity?” Marquette intellectual property law review, vol. 10:2, P: 184

9
 factors; “Geographical Indication” includes both of the above
concepts^’.

According to TRIPS Agreement Article 22.1

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

The definition of “appellation of origin” available in the Article 2 of the Lisbon

Agreement apparently provides a base for this definition (in the TRIPS Agreement)

but to some extent it is different from Article 2 of the Lisbon Agreement. Article 21.1

of the TRIPS Agreement defines Geographical Indications as “indications which

identify a good whereas Article 2 of the Lisbon Agreement defines appellations

19 Charlie Fu, “Geographical Indications in Multinational Agreements”, The journal of contemporary

legal issues, VOL .19:451,(2010 ): 452
20 Dwijen Rangnekar, “ Geographical Indications: A Review of Proposals at the TRIPS Council” June
2002
2 1 This definition is mainly derived from the definition o f “appellation of origin” established by Article
2 of the 1958 Lisbon Agreement for the Protection of Appellations of Origin and their International
Registration (“the Lisbon Agreement”).
However, where as:
a. Article 22.1 of the TRIPS Agreement defines geographical indications as “indications which
identify a good
Article 2 of the Lisbon defines appellations of origin as “the geographical name ... which serves to
designate a product
b. Geographical indications are thus not restricted to geographical names, but may also include
other signs of geographical significance whether composed of words, phrases, symbols or
emblematic images. In addition, it can readily be seen that Article 22.1 of the TRIPS
Agreement applies to “goods”,
Where as Article 2 of the Lisbon applies to “products”.
c. Moreover, Article 22.1 of the TRIPS Agreement applies to goods “where'a given quality,
reputation or other characteristic is essentially attributable to its geographical origin”.
Where as Article 2 of the Lisbon applies to products “the quality and characteristics of which are due
exclusively or essentially to the geographical environment, including natural and human factors”.

10
of origin as “the Geographical name of a country, region, or locality, which serves to

designate a product

Furthermore, the Lisbon Agreement requires that the quality

and the characteristics of the product in question be due
exclusively, or essentially, to the geographical environment,
including natural and human factors. The TRIPS Agreement
covers goods which have a given quaUty, reputation or other
characteristic that is essenti ally attributable to their
geographical origin. It is generally understood that goods
which have “merely” a certain reputation, but not a specific
quality being due to their place of origin, are not covered by
the definition of appellation of origin as provided by the
Lisbon Agreement^.

In Pakistan the term Geographical Indications are defined in Trade Mark Ordinance

2001, as According to Section 2 (xx)

"Geographical Indication", in relation to goods originating in a

particular coimtry or in a region or locality of that country,
means a mark recognized in that country as a mark indicating
that the goods-
(a) Originated in that country, region or locality; and
(b) Have a quality, reputation or other characteristic
attributable to their geographical region^^.

22 Worldwide symposium on geographical indications, “organized by the World Intellectual Property

Organization (WIPO)and the United States Patent and Trademark Office (USPTO)" San Francisco,
California, July 9 to 11, 2003p:3
23 Worldwide symposium on geographical indications, “organized by the World Intellectual Property
Organization (WIPO)and the United States Patent and Trademark Office (USPTO)” San Francisco,
California, July 9 to 11, 2003p:3
24 Trade Mark Ordinance 2001,Sec.2(xx)

11
Section 2(1) (e) of the Indian Act defines a Geographical Indication as follows:

"Geographical Indication", in relation to goods, 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 processii^ or preparation of the goods
concerned takes place in such territory, region or locality, as
the case may be

Geographical Indications have been defined by a number of authors and entities:

According to June Francis and David Robertson, the US Patent and Trademark Office

define it as:

“Indications whido identify a good as originating in the territoiy o f a membery or region or

locality in that territoryy where a given quality reputation or other characteristics o f the

good is essentially attributable to its Geographical origin""^

However, another very straightforward description is given by Kevin Murphy.

25W1PO Asia and the pacific regional symposium on the protection of geographica! indications.
Oi^anized by the World Intellectual Property Organization (WI PO) in cooperation with the
Department of Industrial Policy and Promotion, Ministry of Commerce and Industry, Government of
India and with the assistance of the Japan Patent Office, New Delhi, November 18 to 20, 2003.P:2
26 Sarah M, Faria, “Producers’ Perspectives towards the Geographical Indication Recognition Process
in Brazil - An Analysis of Difficulties Found in the Process and Possible Improvements”, August
2010.p:13
http://etd.ohiolink.edu/send-pdf.cgi/Faria%20Sarah%20M.pdf?ohIoul280298282 last visited on
October 14, 2010

12
"/fe states that Geographical Indications have a more important role than just pointing out

the country o f origin ofagood“.^

Murphy affirms that Geographical Indications “Denote a guarantee of quality and

distinctiveness derived from a combination of unique regional, environmental, and

human influences, such as climate, soil, plants and special methods of production

particularly traditional, collectively observed farming and processing techniques”,^

1.3 Need for Protection

If the Geographical Indications are not adequately protected although they have

valuable reputation in many countries may be misrepresented by the dishonest

commercial representatives. False use of Geographical Indications by unauthorized

user is a great threat to the consumer’s interest and the legitimate producers. If there is

no protection is available then consumers will be easily deceived by the dishonest

commercial representatives and consumers will lead into beUeving to by a genuine

product while they in fact get a worthy less product. In such a case the legitimate

producer will suffer a lot of damages by two ways in one way the valuable business is

taken away from them and on the other hand the estabHshed reputation for their

product and good will of their business will be in danger^. In respect of protection,

27 Ibid
28 Ibid
29 Lisa P Lukosi, “Rational and Prospects of the Protection of Geographical Indications ; An Inquiry",
Journal of Intellectual Property Rights *Vol 12, March 2007 pp 212-223,Indian Law Institute,
Bhagwandas road, New Delhi

13
Geographical Indications may be protected in the national level and/or international

level

1.4 Protection of Geographical Indications at National Level

A t the national level there are many forms for the protection of Geographical

Indications. Protection of Geographical Indications on the national and regional levels

is characterized by the existence of a variety of different legal concepts. Those

concepts were developed in accordance with different national legal traditions and

within a framework of specific historical and economic conditions'^ Geographical

names are normally protected in accordance with national laws in the context of a

wide range of legal disciplines, such as^^:

Laws against unfair competition and Passing off

Consumer protection laws

Laws for the protection of certification marks; or

Special laws for the protection of Geographical Indications or appellations of origin

30 Budi SuratxiOj “Protection of Geographical Indications”, Report, IP Management Review 2, 87-

93,2004
31 San Francisco, California, “Introduction to Geographical Indications and Recent Developments in
the World Intellectual Property Oi^anization(WIPO)” Worldwide Symposium on Geographical
Indications: Oi^anized by the World Intellectual Property Organization (WiPO) and the United States
Patent and Trademark Office (USPTO, July 9 to 11, 2003
32http ://boo ks .goo gle .com/boo ks ?id =8vOOEJledledlwC&pg=PTl&lpg =PTl&ldq=The+Law+of+
Geographical+Indications +By+Bernard+O’Connor&source =blScots=p5V7RzrtaB&sig=IVgOMRs
mZP8q_qMTFw74d38JQ3 Y&hl =en&sa -X & oi =book_result&resnum= I&ct= resvJt#PPA5^I last
visited on October 15,2010

14<
J 1.4.1 Common Law measures for the protection of Geographical
Indications:

a) Unfair Competition:

Many countries have adopted different kinds of protection measures against unfair

business practices. G n international level it got reflection from ‘Article \Qbis into the

Paris Convention at the 1900 Brussels Revision Conference, establishing a basic

international rule concerning protection against unfair competition*. It makes an

obligation of the member states party to the Paris convention to take effective

measures against unfair competition, which defined as: “any act of competition

» contrary to honest practices in industrial or commercial matters

Protection against unfair competition evolved differendy. But the one objective is

similar in all the different approaches that are ‘to provide those in trade with an

effective remedy against unlawful and dishonest business practices of their

competitors’. In order to perform the function of consumer protection and for the

repression of unfair competition some countries have specific statutes^.

In order to prevent the unauthorized use of a

Geographical Indication on the basis of an action against
unfair competition, a plaintiff must regularly show that
the use of the geographical indication in question by an

33 San Francisco, California, “Introduction to Geographical Indications and Recent Developments in

the World Intellectual Property Organization(WIPO)” Worldwide Symposium on Geographical
Indications: Organized by the World Intellectual Property Organization (WIPO) and the United States
Patent and Trademark Office (USPTO, July 9 to 11, 2003.p:5
34 Ibid

15
 unauthorized party is misleading and, as the case may be,
that damages or a likelihood of damages result from such
use. Such an action can only be successful if the
Geographical Indication in question has acquired
distinctiveness; in other words, if ^the relevant public
associates goods sold under that geographical indication
with a distinct Geographical origin and/or certain
qualities or reputation

(b) Passii^ off:

“Countries having a civil-law tradition that provide for some kind of protection for

businesses against unlawful commercial acts from competitors usually base that

protection on general tort law”.

The action of passing off is regarded as the basis of protection against dishonest

business competitors in the countries that follow the common law tradition. The

remedy of passing off is available in the cases where the goods or services of one

person are represented as being the goods or services of another person. In these cases

the plaintiff suffers damage by losing the customers because the defendant led them to'

believe that they were buying the plaintiffs goods, when they actually obtained the

goods of the defendant^^.

35 San Francisco, California, “Introduction to Geographical Indications and Recent Developments in

the World Intellectual Property Organization(WIPO)” Worldwide Symposium on Geographical
Indications: Organized by the W orld Intellectual Property Organization (WlPO) and the United States
Patent and Trademark Office (USPTO, July 9 to 11, 2003.p:5
36 Ibid, 6

16
 Very broadly speajsing, in order to prevent the unauthorized
use of a Geographical Indication through a successful action
for passing off, a plaintiff must establish that goodwill or
reputation is attached to the goods on which the geographical
indication is regularly used and which are suppHed by him,
that the defendant misrepresents to the public that.the goods
offered by him originate from the plaintiff and that he is likely
to suffer damage from such a misrepresentation.^^

1A2 Protection of Geographical Indicauons througji trademarks law:

(a) Certification marks^*:

The protection of a Geographical Indication in the form of a certification mark is

enforced under general trademark law. In principle, an action for infringement of a

certification mark is initiated by the owner of the certification mark^’.

37 Ibid
38 Certification marks are marks which indicate that the goods or services on which they are used have
specific qualities, which may also include geographical origin. The owner of the certification mark
imdertakes to certify that the goods or services on which the certification mark is used have those
qualities. As a basic rule, the owner of the certification mark does not have the right to use the mark.
This principle is also referred to as the “anti-use by owner rule.” Every producer who complies with
standards of production as defined by the owner of the certification mark has the right to use that
mark. The owner of the certification mark, who may be a private or pubUc entity, must ensure that
the goods or services on which the certification mark is used possess the certified quality. In order to
carry out this certification function in a neutral and impartial manner, the owner of the certification
mark has to file, together with the application for the registration of the certification mark, detailed
regulations which prescribe, inter alia, the characteristics certified by the mark, the authorized users and
details concerning the certification and control. As already pointed out, in order to safeguard the
objectivity of the owner of the certification mark, he is not allowed to use the certification mark
himself. Disregard of that rule regularly leads to the invalidity of the certification mark.
39 San Francisco, California, “Introduction to Geographical Indications and Recent Developments in
the World Intellectual Property Organization(WIPO)” Worldwide Symposium on Geographical
Indications: Organized by the World Intellectual Property Organization (WIPO) and the United States
Patent and Trademark Office (USPTO, July 9 to 11, 2003.p:8

17
(b) Collective Marks'^®

Like in the case of certification marks, the protection of collective marks is enforced

under general trademark law. An action for infringement may be brought by the

owner of the Collective mark^\

1.5 Inteniational L^al framework for the protection of Geographical

Indications

Article 22 provides the basic framework for the protection of all GIs, “where the

obligation is for members to provide the legal means for interested parties to secure

protection of their Geographical Indications”. The required legal means are

unspecified and consequendy raise the problem of multiplicity of systems of

protection, but also present an opportunity to members to explore alternative

mechanisms'^^.

40 It has been pointed out that it is difficult to distinguish collective marks from cemfication marks,
and that the difference is one of form rather than one of substance.
Collective marks are owned by a collective body such as, for example, a trade association or an
association of producers or manufacturers, and serve to indicate that the person who uses the collective
mark is a member of that collectivity. Membership in the association that is the owner of the collective
mark is, generally speaking, subject to compliance with certain rules, such as the geographical area of
production of the goods on which the collective mark is used, or standards of production of such goods.
A further difference between the two categories of marks is that the owners of collective marks are
regularly not barred from using the mark themselves.
41 San Francisco, California, “Introduction to Geographical Indications and Recent Developments in
the World Intellectual Property Organization(WIPO)” Worldwide Symposium on Geographical
Indications: Organized by the World Intellectual Property Organization (WlPO) and the United States
Patent and Trademark Office (USPTO, July 9 to 11, 2003.p:8
42 Article 10(2), The Paris Convention for the Protection of Industrial Property 1883
43 Dwijen Rangnekar, “ Geographical Indications: A Review of Proposals at the TRIPS Council” June
2002.p:19 http://www.iprsonline.org/imctadictsd/docs/GI%20paper.pdf last visited on September 29,
2010
 Under Article 22, the scope of protertion is composed of three
components:
• Protection against the use of indications that mislead the
public or are deceptive
• Protection against the use of indications in a manner that are
acts of unfair competition
• Refusal or invalidation of trademarks that contain or consist
of indications, where there it may mislead the public^

International rules for the protection of GIs were first established in several

intellectual property conventions, notably the Paris Convention (originally signed in

1883) and the Madrid Agreement (originally s ^ e d in 1891)^^.

European countries have traditionally advocated that GI

should not be used by unrelated parties because GI identify the
unique qualities, characteristics, and reputation of the products
to which they are affixed; thus, should others use GI
improperly, consumers would be confused as to the origin of
the products'^.

To this claim, the United States and other “new world* countries have generally

responded by pointing out that many GI are generic terms of their soil, such as

44 Ibid
45 Carsten Fink and Keith Maskus, “The Debate on Geographical Indications in the WTO”p:205
http://www.ppl.ni/bibliographies/wto/fiIes/6531.pdf last visited on September 14, 2010
46 Irene Calboli, “Expanding the protection of geographical indications of origin iinder trips: “old”
debate or “new” opportunity?” P:182 http://law.marquette.edu/ip/calboii2.pdf last visited on
September 15, 2010

19
“champagne” or “Chablis,” and, thus, consumers could not be confused as to the

origin of the products identified by these terms

In the midst of this international debate, the adoption of the

Agreement on Trade-Related Aspects on Intellectual Property
Rights5 (TRIPs) in 1994 marked an important victory for the
European approach because it established general minimum
standards for GI protection for all of its signatories'**.

Prior to TRIPs, the most relevant sources for international protection of GI could be

found in three different agreements:'49

1.5.1 Paris Convention for the protection of industrial property 1883:

The Paris Convention on Intellectual Property 1883 was the first step which was

taken on an international level for the protection of Geographical Indications. This

convention provides protection for “indications of source or appellations of

origin”“.According to Article 1(2) of the Paris convention doe protection o f industrial

property has as its object patents^ utility models^ industrial designs^ trademarks, service

marks, trade names, indications o f source or appellation o f origin, and the repression o f

47 Ibid
48 Ibid
49 Ibid, 187
50 O’Connorand Company, Geographical indications and TRIPs: 10 Years Later... A roadmap for EU
GI holders to get protection in other WTO Members, “ Part I Protection of Geographical Indications
in 160 countries aroimd the world” p:2, http://www.anilact.pt/documentos/geoindications.pdf last
visited on October 18, 2010

20
unfair competitiorC' B y analyzing the Article 9 and 10 of the Paris Convention there

is a direction for the member countries to restrict or ‘seize on importations’ goods

bearing ‘direct or indirect false indications of source of the goods’. Remedies are

also provided by the Paris Convention under article 10 for the unlawful i^e of

indications of source of goods^.

r

The Paris Convention receives criticism on the following grounds:

1. “Silent about consumer deception or confusion concerning the Geographical

origin. The Convention was silent regarding the minimum standards of

protection, the level of protection varied according to the domestic laws of the

countries protecting their Geographical Indications”^^.

51 The Paris Convention for the protection of industrial property was agreed in 1883 and
complemented by the Madrid Protocol of 1891. It was revised at Brussels (1900), Washington (1911),
The Hague (1925), London (1934), Lisbon (1958), and Stockholm (1967^, and amended in 1979. As of 1
October 2006 the Paris Convention had 169 signatory states. Available at; http://www.wipo.org,
“Treaties”, “hitellectual Property Protection Treaties”, “Paris Convention”.
52 Oskari Rovamo, “Monopolising Names? The Protection of Geographical Indications in the
European Community” Helsinki University,Faculty of Law Department of Public Law Project:
‘Globalisation, International Law and IPR’ Professor Jan.p; 19
http://ethesis.helsinki.fi/julkaisut/\oik/julki/pg/rovamo/monopoli.pdf last visited on October 18,
2010 ^

53 The words ‘direct or indirect’ were added at the diplomatic conference in Lisbon (1958)
54 O ’Connorand COMPANY, Geographical indications and TRIPs: 10 Years Later... A roadmap for
EU GI holders to get protection in other WTO Members, “ Pan I Protection of Geographical
Indications in 160 countries around the world” p:2,
http://www.anilact.pt/docimientos/geoindications.pdflastvisitedon October 18, 2010)
55 N.S. Gopalakrishnan,Prabha S. Nair & Aravind K. Babu, “Exploring the Relationship between GIs
and TK: A n Analysis of the Legal Tools for the Protection of GIs in Asia”,Intellectual Property Rights
and Sustainable Development, Published by: International Centre for Trade and Sustainable
Development (ICTSD) August 2007.p :ll

21
1.5.2 Madrid Agreement for the Repression of False or Deceptive
Indications of Source on Goods 1891:

The Madrid agreement deals with the protection of Geographical Indications in the

best form as compared to the Paris Convention. In other words, the Madrid

agreement gives slightly h ^ e r level of protection. The object of Madrid agreement is

to specify rules for the repression of false and deceptive indications of source^.

Article 1(1) of the Madrid Agreement provides that:

"All goods bearing a false or deceptive indication by which one
of the countries to which this Agreement appHes, or a place
situated therein, is directly or indirectly indicated as being the
country or place of origin shall be seized on importation into
any of the said countries."^

In order to fulfil the deficiency in the protection of Geographical Indications provided

by the Paris Convention a number of countries agreed to establish an agreement for

the better protection of Geographical Indications so Madrid Agreement for the

Repression of False or Deceptive Indications of Source on Goods, 1891 was

introduced^.

56 Irene calboli, “Expanding the protection of geographical indications of origin under trips: “old”
debate or “new” opportunity?”p:188
http://law.marquette .edu/ip/calboli2,pdf last visited on 15.10.2010
57 Madrid Agreement for the Repression of False or Deceptive Indications of Source of Goods 1891.
58 N.S. Gopalakrishnan J^rabha S. Nair & Aravind K. Babu, “Exploring the Relationship between GIs
and TK: A n Analysis of the Legal Tools for the Protection of GIs in Asia”Jntellectual Property Rights
and Svistainable Development, Published by: International Centre for Trade and Sustainable
Development (ICTSD) August 2007.p:12

22
1.5.3 Madrid Agreement Concernii^ the International Registration of Marks
1891:

Geographical Indications could be protected under the M ^ id

System for the International Registration of Marks as
collective marks, certification marks or guarantee marks. This
means that an international registration system for trademarks,
established by the Madrid Agreement 1891 and the Protocol
relating to the Madrid Agreement Concerning the
International Registration of Marks 1891, could also serve as a
means of protection o f . Geographical Indications
Internationally. However, this system could only be used by
those countries that protect Geographical Indications via a
certification trademarks regime and have no specific rules on
the protection of Geographical Indications^^.

1.5.4 The Stresa Convention 1951:

It was not until the 1950s that the positive regulation of Geographical Indications,

defined according to their dual identity of appellations of origin and indications of

source, was introduced into International law. On June 1, 1951, an International

Convention on the use of Appellations of Origin and Denominations of Cheeses

(known as the Stresa Convention) was signed in the northern Italiaa town of Stresa“ .

The Stresa Convention appHes specifically to cheeses. It

concerns the use of designations of origin and the names of
cheeses. The signatory countries committed themselves to
prohibiting the use of the false designations of origin on their

59 http://boo ks.goo gle.com/boo ks?id = 8vOOEJledledlwC&pg=PTl&lpg=PTl&ldq= The+Law + of+

Geographical + Indications+B y+Bernard + O ’ Connor&source = bl&ots = p5V7RzrtaB&sig=iVgOM Rs
mZP8q_qMTFw74d38JQ3 Y&hl=en&sa = X&oi = bookresult&resnum = l&ct=result#PPA5,Ml iast
visited on October 15, 2010
60 Ibid

23
 territory and to take all necessary measures to ensxire the
application of the Convention^\

1.5.5 Lisbon Agreement for the protection of appellations of origin and their
international registration 1958:

“The Lisbon Agreement of 1958, the most serious attempt to achieve effective and

enforceable international protection for GI, finally provided for a much stricter level

of protection that was extended to all indications of origin, thereby expanding the

protections beyond false or deceptive uses of these indications

For the first time the concept of ‘appellations of origin’ defined in the Lisbon

Agreement of 1958. Article 2(1) of the agreement provides that:

""Appellations o f origin means the geographical name o f a country, region, or

locality, which serves to designate a product originating therein, the quality and

characteristics o f which are due exclusively or essentially to the geographic

environment, including natural and human factors'^.

From' the above definition it becomes obvious that indirect Geographical Indications

or in other words non-geographical names are excluded from protection and make it

essential that there must be a link between the product and the place of origin.^

61 Ibid
62 Irene calboli, “Expanding the protection of geographical indications of origin under trips: “old”
debate or “new” opportunity?”p:188,189 http://law,marquette-edu/ip/calboli2.pdf last visited on
October 15,2010
63 Article 2(1) of Lisbon Agreement 1958
64 N.S. Gopalakrishnan4?*rabha S. Nair & Aravind K. Babu, “Exploring the Relationship between GIs
and TK: A n Analysis of the Legal Tools for the Protection of GIs in Asia”intellectual Property Rights

24
Unlike Paris Convention and Madrid Agreement there is an extension in the scope of

protection which is explained in Article 3 as:

'"Protection shall be ensured in any usurpation or im itation, even i f the true origin

o f the product is indicated or i f the appellation is used in translated form or

accompanied by terms such as % ind” "type"", "'make^'y ''im itation'' or the like"

1.5.6 Trade Related Aspect of Intellectual Property Rights (TRIPS) 1994:

‘TRIPS introduce the concept of ‘Geographical Indications in a groundbreaking

manner’^. TRIPS Agreement is the first multilateral agreement which not only

provides protection for Geographical Indications but also gives a comprehensive

definition of Geographical Indications ^.In the protection of Geographical Indications

TRIPs Agreement considered as a milestone^. The Section 3 of Part II of the TRIPs

Agreement deals with the Geographical Indications. The related articles are from

Article 22 to 24 of the Agreement on TRIPs

and Sustainable Development, Published by: International Centre for Trade and Sustainable
Development (ICTSD) August 2007,p:13
65 Article 3 o f the Lisbon Agreement 1958
66 Teshager W orku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6,442
67 O’Cormorand COMPANY, Geographical indications and TRIPs: 10 Years Later... A roadmap for
EU GI holders to get protection in other WTO Members, “ Part I Protection of Geographical
Indications in 160 countries around the world” p;4
68 Irene calboli, “Expandii^ the protection of geographical indications of origin under trips: “old”
debate or “new” opportunity?”p:190
69 Cancim Agenda: Geographical Indications and Developing Countries.p:l
http://www.ris.org.in/Pbno7.pdflastvisited on October 18, 2010

25
 Article 22 of the TRffs Agreement provides a definition of
geographical indications. They are:
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”^.

The definition provided in the TRIPs Agreement is broader in scope as compare to the

Lisbon model. TRIPs definition extends to indications that confer only “reputation,”

but not necessarily “quality and characteristics” to the goods to which they are

affixed’^^In other words:

This definition expands the Lisbon Agreement concept of

appellation of origin to protect 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. Also, under the TRIPS Agreement a geographical
indication to be protected has to be an indication, but not
necessarily the name of a geographical place on earth. Thus,
for example, "Basmati" Is taken to be an indication for rice
coming from the Indian sub-continent, although it is not a
place name as such. The indication has to identify goods as
originating in the territory of a Member, a region or a locaHty
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 suggests that hcenses for the use

70 O ’Cormorand COMPANY, Geographical indications and TRIPs: 10 Years Later... A roadmap for
EU GI holders to get protection in other WTO Members, “ Part I Protection of Geographical
Indications in 160 countries aroimd the world” p:6,
bttp://wwv.amlact!pt/docunientos/geoindications.pdf last visited on October 18, 2010
71 Irene calboli, “^panding the protection of geographical indications of origin under trips: “old”
debate or “new” opportunity?”p:190 http://law.marquette.edu/ip/calboli2.pdf last visited on October
15, 2010)

26
 of geographical indications cannot be proteaed under the
TRIPS Agreement^.
The TRIPS definition permits Members protect geographical
indications of goods where the quality, reputation or other
characteristic of goods are attributable to their geographical
origin^.

The minimum standard for the protection of Geographical Indications is prescribed in

Article 22 of TRIPs Agreement irrespective of the nature of the goods^'^.

In line with the Paris Convention and the Madrid Agreement,

Article 22 prohibits the use of false GI in the territory of
member countries. According to Article 22(2), member
countries must “provide the legal means . . . To prevent the use
of [GI] in a manner which misleads the public as to the
geographical origin of the good [or] which constitutes an act of
unfair competition within the meaning of Article lOfe of the
Paris Convention.” In contrast with previous agreements.
Article 22 not only provides for broader measures for GI
protection but also sets^minimum standards to be implemented
into the laws of TRIPs member countri^.

1.6 Importance and significance of Geographical Indications:

In the comparison of Geographical Indications with trademarks we can conclude that

in function both are similar for instance:

72 The IPR-Helpdesk is a project of the European Coniinissioa DG Enterprise, co-financed within the
fifth framework programme of the European Community.
http://seed.agron.ntu.edu.twApr/Gl/ipr-helpdesk^.pdf (last visited on September 29, 2010)
73 Ibid
74 O ’Connorand COMPANY, Geographical indications and TRIPs: 10 Years Later... A roadmap for
EU GI holders to get protection "in other WTO Members, “Part I Protection of Geographical
Indications in 160 countries around the world* p: 6,
http://www.anilact.pt/documentos/geoindications.pdf (last visited on October 18, 2010)
75 Irene calboli, “Expanding the protection of geographical indications of origin under trips: “old”
debate or “new" opportunity,^”p: 190,191 http://law.marquette.edu/ip/calboli2.pdf last visited on
October 15, 2010

27
 (1) Both ixidicate the origin of the goods. While the trademark
indicates commercial origin, a GI indicates geographical origin.
(2) Both serve as guarantees of quality. While a trademark
guarantees consistent quality, a GI provides more specific
guarantees such as a defined area of produaion, according to a
certain traditional process etc.
(3) Finally, both trademarks and GIs can act as valuable
commercial brands^^.

“This raises the obvious question: If GIs are trademarks are functionally similar, why

should GIs be treated as a separate category of IP? The answer to this lies in the

historical development of trademark law and the underlying policies supporting GI

protection”^. Along with similarities in functions at the same time we have the

following points of differences between them.

1, Unlike a trademark which usually has a single registered

owner, there exists a collective interest in the protection of
such geographical brands. No single producer from the region
can claim exclusive rights. At the same time othei^ from
outside this region should not be allowed to use this name.
This would deceive consumers as well as unfiairly compete
with the genuine producers. So what is i*equired is a collective
right for aU genuine producers to use the name and a right to
prevent others from misusing it. Trademark law historically
used to vests rights in a single entity. This has now changed
with the introduction of Certification and Collective Marks.
2. The second reason why GIs developed as a separate category
was that trademark rights were not granted for geographical
terms. In order for a trademark to be registeral, a universal

76 Dev Gangjee, “Protecting Geographical Indications as Collective Trademarks: The Prospects and
Pitfalls” nP Bulletin 2006,available at: httpy/www.iip.or.jp/e/e_summary/pdf/detail2005/e 17_14.pdf
last visited on October 27, 2010)
77 Ibid

28
 requirement is that it must be distinctive. However, using a ^
geographical name on the label will usually be descriptive of
the place of production of the goods. So a packet of tea with
the label ‘India’ on it will lead consumers to believe that the
produa originates in India rather than from a specie
producer or company^.

1.7 Difference between Geographical Indication and Trademarks

The interface between GIs and trademarks is complex. As a

general rule, trademarks must be distinctive so as to fulfil the
role of distinguishing goods/services of one manufacturer from^
those of another. This leads to the general proposition that GIs
are excluded from the domain of trademark^.

li
The relationship between trademarks and GFs is complex.
Trademarks generally identify products from a specific
manufacturer. GI’s do not identify a manufacturer (or
producer), but rather the product’s place of origin.
Trademarks imply hiiman creativity. GI’s, on the other hand,
are linked to climate, soil and other factors that are largely
independent of human ingenuity. They are expressions or
symbols (such as a flagj which recognize a product as
originating in a certain country where a given quality,
reputation or other characteristic is attributable to its
geographical origin. Trademarks are wortls, signs, numerals,
and figures that distinguish products of one manufacturer from
another. GI’s apply to all producers in a country, region or
locality. Trademarks can be used by only one entity. They are

78 Dev Gangjee, “Protecting Geographical Indications as Collective Trademarks: The Prospects and
Pitfalls” HP Bulletin 2006,available at: http://www iip.or .jp/e/e_summary/pdf/detail2005Zel7_14.pdf
last visited on October 27, 2010
79 Dwijen Rangnekar, “ Geographical Indications: A Review of Proposals at the TRIPS Coiincil” June
2002.p:21
http://www.iprsonline.org/xanctadictsd/docs/GI%20paper.pdf last visited on September 29, 2010

29
 easier to protect than GFs, but protection requires the active
role of the trademark’s ownei^.

Article 22 concerns the relationship between GIs and trademarks.*^Under Article 22.3

of TRIPS 82 this article does not come into play in the case of the registration of a

trademark which contains or consists of a GI identifying another category of products

as the one identified by the G I In such circumstances, the general standard protection

of article 22.3 applies.83

This Article should be compared with Article 23.284 where the requirement for the

public being misled is absent. Doubtless, this strengthens the scope of protection for

GIs for wines and spirits. 85

As the WTO survey dted earlier indicates, there is no

single mechanism used to protect GFs.

80 Geographical indication, A Discizssion Paper from the International Food & Agricultural Trade
Policy Council^003.p:5
http ://www,agritrade.org/Publications/DiscussionPapers/GLpdf last visited on October 15, 2010
81 Dwijen Rangnekar, “ Geographical Indications: A Review of Proposals at the TRIPS Council”.June .
2002.p:19
http://www.iprsonline.org/unctadictsd/docs/GI%20paper.pdf last visited on September 29, 2010
82 A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse
or invalidate the registration of a trademark which contains or consists of a ^ographical indication
with respect to goods not originating in the territory indicated, if use of the indication in the trademark
for such goods in that Member is of such a nature as to m slead the public as to the true place of origin.
83 Surbhi Jain, “Effects of the extension of geographical indications: a south Asian perspective”, Asia-
Pacific Development Journal, Vol. 16, No. 2, December 2009J*:78
http://www.imescap.org/pdd/publications/apdj_16_2/4Jain.pdf last visited on October 23, 2010
84 The registration of a trademark for wines which contains or consists of a geographical indication
identifying wines or for spirits which contains or consists of a geographical indication identifying spirits
shall be refused or invalidated, ex officio if a Member’s legislation so permits or at the request of an
interested party, with respect to such wines or spirits not having this origin.
85 Dwijen Rangnekar, “ Geographical Indications: A Review of Proposals at the TRIPS Council” June
lO O l.pm http://www.iprsonline.org/unctadictsd/docs/GI%20paper.pdf last visited on September 29,
2010

30
 As a rule, trademarks that contain a GI cannot be
proteaed if the use of the trademark would misled
the public about the true origin of the product. The
TRIPS A^eement allo-s^
Members to refuse or invaHdate trademarks that
contain geographical indications on goods that do not
originate in the territory indicated if the use misleads
the public. The same rule applies to wine and spirits,
but in that case, members can refuse or invalidate the
trademark whether or not the public is misled®^.

pi-

86Geographical indication, A Discussion Paper from the International Food & Agricultural Trade
Policy CounciI^003.p:5http://www.agritrade.oi^/PubIications/DIscussionPapers/GLpdf last visited
on October 15, 2010

31
 CHAPTER: H

DEVELOPMENT POTENTIAL OF GEOGRAPHICAL

INDICATIONS

2.1 Introduction

As the intellectual property rights are gaining importance in the trade at national and

international level, the “harnessing trade benefits” depend on the level of protection

available to the*owners of the IPRs. So the importance and present value o f

Geographical Indications in the world of trade demands comprehensive and effective

protection to goods registered as GI goods

As it becomes more popular, a GI takes on value just like any familiar brand. For

producers^, a GI helps to confer uniqueness or differentiation, and can be used to

grant a measure of protection to what has essentially evolved to represent a brand

name for th^ir product. Besides the value of legal protection, GI status can ostensibly

87“ Geographical Indications o f India Socio- Economic and Development Issues” available a t
hup ://w w w .aiacaonline.org/pdf/poHcy-briefs-geograp hi cal-indications-india-socio-e con omic-
development-issues.pdf last visited on January 24, 2011
88 Producer in relation to goods, means any person who If such goods are agricultural goods, produces
the goods and includes the person who processes or packages six:h goods; If such goods are natural
goods, exploits the goods; If such goods are handicraft or industrial goods, makes or manufactures the
goods, and includes any person who trades or deals in such production, exploitation, making or
manufacturing, as the case may be, of the goods,

32
reduce the information problems faced by consumers when product characteristics are

not readily evident*’.

Geographical Indications of G ood sen su re quality and genuineness of products to the

consumers and better market returns to the producers^\

In order to minimize the risk of counterfeiting^ the legal protection is important for

Geographical Indications. “The legal recognition of a Geographical Indication also

means the setting up of a legal framework to protect the use of the geographical name,

thus. Geographical Indications become exclusivity rights under the legal system of

Intellectual Property”^\

One noted scholar, Stanford University’s Tim Josling, states:

So public authorities may need to do more than provide legal
remedies for deception: they may need to establish a registry,
define quality standards and take steps to protect the
reputation inherent in the GI from devaluation. In either case
“protection” of the GI is essentially a public policy, but the

89 Daniele Giovannucci - Tim Josling - William Kerr - Bernard O ’Connor - May T. Yeung, “guide to
geographical indications linking products and their origins” Inte'mational Trade Centre (TTC) Geneva
2009 P:15
90 Under Articles 1 (2) and 10 of the Paris Convention for the Protection of Industrial Property,
geographical indications are covered as an elenaent of IPRs. They are also covered imder Articles 22 to
24 of the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which was pan of
the Agreements concludii^ the Uruguay Roimd of GATT negotiations.
9 1 R.Kalpana Sastry, “A Case Study Under NAARM-CAS-IP NPI Collaboration Project” Intellectual
Property Management Regime in the Indian National Agricultural Research Systems. National
Academy of Agricultural Research Management Indian Coimcil of Agricultural Research
Rajendranagar, Hyderabad 500407, Andhra Pradesh, India.
92 Coimterfeiting goes along with notorious Industrial Property rights and implies a high risk of
dilution and misleading the consumer. In any case, counterfeiting is a clear case of unfair competition
since counterfeiter take profit of the reputation of the geographical indication.
93 Regional Protection of GIs in Europe, “E.U Asean workshop on geographical indications: a way
Into the market. Presentation by dora de teresa, leg^l adviser of the regulatory coimcil of Designation of
origin “teruel ham” Hanoi, 7-8 October 2003

33
 responsibility for quality maintenance can be assumed by the
public authorities or left to the private sectoi^.

“Nevertheless, that monopoly of use is limited by the territory of recognition, so in

the countries where those types of rights are not acknowledged, there is no

• 9995
protecuon .

2.2 Developmedt Implications of Geographical Indications

The four important components, which are essential for human developments i,e.

Empowerment, productivity, equity and sustainability, can be obtained through

Geographical Indications. In low-income agricultural and artisanal societies,

Geographical Indications gives to the owner a legitimate right and empowers them to

the productive use of these rights. Another feature of Geographical Indications, which

enhances its importance, is that it ‘can be expected to contribute to an equitable

distribution of benefits. The legal-economic incentives could then create a virtuous

cycle of other incentives to nurture and sustain traditional methods and know-how,

which could contribute to intergenerational equity'’^.

9 4 Daniele Giovannucci - Tim Josling - William Kerr - Bernard O’Comior - May T. Yeung, “giiide to
geographical indications linking products and their origins” International Trade Centre (TTC) Geneva
2009 P: 15
9 5 Regional Protection of GIs in Europe, “E.U Asean workshop on geographical indications: a way
Into the market. Presentation by dora de teresa, leg^l adviser of the regulatory council of Designation of
origin “teruel ham" Hanoi, 7-8 october 2003
96 Surbhi Jain, “ Effects of the extension of geographical indications: a south Asian perspective”, Asia-
Pacific Development Journal, Vol. 16, No. 2, December 2009J:8 0 ,8 1

34
Geographical Indications has a close link with the livelihood of the people of a

particular area so it should be taken as a development issue by the South Asian

Countries. Well known products related to Geographical Indications are agriculture,

fisheries, crafts and artisanal works, these sectors providing opportunities for the poor

people of the designated area to generate money. So it is a matter of great concern for

the governments of that region to critically examine the whole supply chain of the

products in order to obtain socio-economic benefits of Geographical Indications.

Because these benefits are not evenly distributed among all the stakeholders like a high

price demanded on the account of Geographical Indications protection such- price

becomes remains in the hands of the powerful participants of the upper stream of the

supply chain and providing no benefits to the weaker section of the chain and this

point destroys the development implications of Geographical Indications protection^.

Initially the South Asian Countries are required to protect IPR in their countries, as

domestic protection because it is the prerequisite for TRIPS Agreement protection. It

is required for the countries ‘to strengthen their databases on Geographical

Indications, their socio-economic and cultural values, associated features such as the

microenterprises they can spin off, and their attraction for tourism or investment’ l l

Anticipating more sophisticated cases of disputes over GIs,

there is a need to determine and codify scientific attributes of

97 Surbhi Jain, “ Effects of the extension of geographical indications: a south Asian perspective”, Asia-
Pacific Development Journal, Vol. 16 ,No. 2, December 2009.P:80.81
98 Ibid

35
 their products on which legal verdias can be based, instead of
relyii^ on subjective, connoisseur-determined statements on
reputation, as is largely the case now (Das 2007)’^.

2.3 Geographical Indications protection for A^cultural Products and

Handicrafts:

The term Geographical Indications is applied for both Agriculture and Handicrafts

and it may include traditional knowledge as well, which has the potential and ability

to capture a consumer m a r k e t G l s are especially important to communities engaged

in traditional agricultural practices, as they provide value when they protect the

common reputation of farmers who strive to improve the quality of their products

The potential of Gls for rural development has fully been recognized by the EU,

which directly links Gls to certification of quality and, indirectly, to rural

development and increasing farmer incomes^°^.Geographical Indications also plays an

important role in the protection of “traditional knowledge-based agricultural products

(TKBAPs) in the international IP framework”

‘Traditional Knowledge-based agricultural products’

(I’KBAPs) refers to the resources among indigenous people

99 Ibid
100 G. E. Evans and Michael Blakeney, “the protection of geographical indications after doha: quo
vadis?” Journal of International Economic Law Advance Access published July 12, 2006
101 D Gangjee, ‘Quibbling siblings: conflicts between trade marks and Gls’ (2007) 82 Chicago-Kent
Law Review 1253 at 1257
102 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6,P:450
103 Ibid, 441

36
 and local communities engaged in agricultural production who
utilize traditional means of produaion. In their standard
definition in regional and international legal instruments,
agricultural products are understood as ‘products of the soil, of
stock-farming and of fisheries and products of first-stage
processing directly related to these products’

The European Commission’s deployment of GIs gives a regulatory model for

developing countries for “small fanning and rural communities”.

European law provides two means of protecting geographical

names for agricultural products and foodstuffs,^ the
Community Regulation on the Protection of Geographical
Indications and Designations of Origin (GI Regulation), in
addition to the Community Trade Mark Regulation (CTM).
Although the GI Regulation was enacted with the express aim
of promoting small agricultural enterprise^'®.

In Europe, a system for their registration is considered as an important part of their

agricultural policy. This system fulfil two main objectives first it “generates income

for small and medium size producers” ^ d second it plays an important role in

“guarantee the sustainability of the rural economy” In a successful attempt to

export this model, the EC negotiated its inclusion in the TRIPS Agreement albeit

limited to wines and spirits

104 Ibid, 442

1 0 5 G. E. Evans, “ The Comparative Advantages of Geographical Indications and Community
Trademarks for the Marketing of Agricultural Products in the European Union”
1 0 6 G. E. Evans* and Michael Blakeney, “the protection of geographical indications after doha: quo
vadis?” Journal of International Economic Law Advance Access published Jxily 12, 2006
1 0 7 Blakeney M., ‘Stimulating Agricultural Innovation’, in K. E. Maskus and J. H. Reichman (eds),
International Public Goods and Transfer of Technology under a Globalized Intellectual Property
Regime (Cambridge, UK; Cambridge University Press, 2005), 367-90.

37
The European Commuiiity and its supporters work for increased protection for

Geographical Indications in other words they support the extension of Geographical

Indications protection for “agricultural products^®®, foodstuffs, and handicrafts”.

Finally in June 2005 European Communities (EC) su rest amendment in the TRIPS

Agreement to provide a multilateral system of registration and enforcement for GIs^"”

and submit a proposal^^°.

2.4 Geographical indications as a development tool

The Geographical Indications have the potential to develop the mral areas. The

Geographical Indications provides an opportunity to the owner to get economic

benefits and excludes the non entided user. These attributes will, in turn, translate into

108 The purpose of protection is to promote agriculture’s role in protecting the rural environment, in
producing safe and high quality food and in contributing to maintaining the attractiveness of rural areas
for the young and new residents.
109 In June 2005, the EC submitted a proposal for amending Section 3 of the TRIPS Agreement with a
view to extending the regime of protection today available for geographical indications on wines and
spirits to geographical indications on all products (‘extension’) and in addition a proposal for the
inclusion of an annex to the TRIPS Agreement establishing a multilateral system of notificadon and
registration of geographical indications (GIs). World Trade Organization, General Council, Trade
Negotiations Committee, Coimcil for Trade-Related Aspects of Intellectual Property Rights, Special
Session on Geographical Indications, Communication from the European Commimities 14 June 2005,
WT/GC/W/547, TN/C/W/26, TN/IP/W/11. See earlier submissions of the EC, 22 June 2000,
IP/C/W/107/Rev.l with respect to the register and submission of 2002 in respect of the extension, IP/
C/W/353,24 June 2002.
110 G. E. Evans* and Michael Blakeney, “the protection of geographical indications after doha: quo
vadis?” Journal of International Economic Law Advance Access published July 12, 2006

38
an equitable distribution of value and benefits to the owners of Geographical

Indications and their communities

Geographical Indications may play an important role in the removal of poverty in the

rural areas. That’s why many countries emphasising that to extend the protection to

handicrafts and traditional knowledge

The EU Commissioner responsible for Agriculture, Rural Development, and Fisheries

cited rural development as one of the contributions of GIs.

Several studies have shown that they GIs have an important

role to play in the regeneration of the countryside since they
ensure that agro-foodstuffs are produced in such a way that
conserves local plant varieties, rewards local people, supports
rural diversity and social cohesion, and promotes new job
opportunities in produaion, processing and other related
services. The needs of today’s population are met, while
natural resources and traditional skills are safeguarded for
generations to come^^.

In other words Geographical Indications can also provide an export opportunity for

small and medium scale businesses“^.One of the most important features of

111 Geographical Indications & Socio-Economic Development, Working Paper 3 December 2008
Daphne Zografos
112 Helene Ubert and Michel Petit, “Are Geographical Indications a Valid Property Right? Global
Trends and Challenges” Development Policy Review, 2009, 27 (5): P:504
113 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products*, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6 , 4 4 2 5 0
114 Victor mosoti, “International mechanisms for the protection of local Agriciiltural brands in central
and eastern Europe” Legal Papers Online August 2006 P:9
http://www.fao.org/legal/prs-ol/lpo60.pdflastvisitedon November 3, .2010

39
Geographical Indication is that it gives a success of the rural development projects and

program by giving the protection to the local products

(Nelson 1970; Josling 2005; Klein and Leffler 1981; Moschini 2004)

Geographical Indications are increasingly viewed as helpful tools for achieving

product differentiation, and can increase economic efficiency because such measures

provide producers with incentives to deliver appropriate supply to the market

2.5 Economic and Social Benefits of Geographical Indications

The World Intellectual Property Organization (WIPO) has also listed those benefits.

In one of its symposiums on Geographical Indications, Surip Mawardi has talked

about those benefits during his presentation on “Establishment of Geographical

Indication Protection System in Indonesia, Case in Coffee.” This reference is suitable

here, because, like Brazil, Indonesia is a developing country and faces problems with

Geographical Indication and protection of property rights as a whole. In his work

Mawardi has written that the Protection Law on Products with Geographical

Indication is important and therefore its application is justified because of the

following benefits it bears;

1 1 5 Helene Dbert and Michel Petit, “Are Geographical Indications a Valid Property Right? Global
Trends and Challer^es” Development Policy Review, 2009, 27 (5): P:505
1 1 6 Jeongwook Suh and Alan MacPherson, “The impact of geographical indication on the
revitalization of a regional economy: a case study of ‘Boseong’ green tea”

40
• Geographical Indications can be used in the domestic and in the international

market in a product’s marketing strategy

• Geographical Indications promote an improvement in the producers’ livelihood, as

it adds more value to the certified product

• Geographical Indications is a tool that rural areas have to develop themselves using

the good reputation of their product’s quality

• Geographical Iiidications can improve the reputation of the product in global trade

• Geographical Indications is seen as an action to evade unfair competition (Mawardi

3)^^.

2.5.1 TKe scxrio-economic utility of Gh

As a study by the United Nations Conference on Trade and Development clearly

recognizes:

Geographical indications reward producers that invest in

building the reputation of a produa. They are designed to
reward goodwill and reputation created or built up by a
producer or a group of producers over many years or even
centuries. They reward producers that maintain a traditional
high standard of quality, while at the same time allowing
flexibility for innovation and improvement in the context of
that tradition^^®.

117 Sarah M. Faria, “Producers’ Perspectives towards the Geographical Indication Recognition Process
in Brazil - An Analysis of Difficulties Found in the Process and Possible Improvements”, August
2010.p:13
http://etd.ohiolink.edu/send-pdf.cgi/Faria%20Sarah%20M.pdfPohioul280298282 last visited on
October 14, 2010
118 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6,442,P:449..

41
The reward that GIs may offer arises from the “substance of the concept” of GIs,

which is to demonstrate a link between the origin of the product to which it is applied

and a given quality, reputation or other characteristic that the product derives from

that o r i g i n G I s carry additional information about the product such as a traditional

production method^.They signify added value and specific qualities of a product from

a region by enabling producers to differentiate their products based on criteria

attractive to consumers. Consumers now seek quality products, authentic products

with a solid tradition behind them, and they are influenced by their social conscience

when choosing products*^^

Most of GIs have the potential to create positive social and

environmental effects for the benefit of rural development.
Even if it is not their major goal, most of them take it into
account for two reasons: to guarantee the promise to
consumers of an artisan, extensive, traditional, ethical
production; to respond to donors’ and public authorities’
concerns. Public support is a strong pillar of the GI systems
institutional framework in European and" developing
coimtries. Most of initiatives have received financial and non-
financial support, mainly Justified by these expected positive
side-effects.
In this context, to prove positive side-effects of GIs on rural
territories is an important issue. If successful, it reinforces
sympathy towards the proteaion of GIs and helps to explain

119W IPO , The Definition of Geographical Indications (Standing Committee on the Law of
Trademarks, Industrial Designs and Geographical Indications, Ninth Session, Geneva, 1 1 -1 5 November
2002) Sct/9/4 [Definition] at para 4...
1 2 0 D Gangjee, ‘Quibbling siblings: conflicts between trade marks and GIs’ (200^ 82 Chicago-Kent
Law Review 1253 at 1257...
1 2 1 Ibid

42
 and justify public support. It would change the political vision
about the relative efficiency of competing food systems, if
reliable methods could compare the global performance
(economic, social, and environmental) of conventional supply
chains and various alternative systems^.

The basic economic function of geographical indications

is to protect the goodwill of products to which they
relate. There is no agreed definition of goodwill, at least
in international trademark law. It can be conveniently
defined as the “tendency or likelihood of a consumer to
repurchase goods or services based upon the name or
source of goods and services” (WlPO 2003)“^.

Following are the equitable distribution of value and benefits to the owner of

Geographical Indications and their communities:

1. The owners of Geographical Indication will provide with the opportunity to

get economic benefits from their Geographical Indication.

2, The owners of Geographical Indication have the right to exclude non entitled

users by creating a barrier to entry into a niche market segment

It is widely believed that an effective protection of a

Gl-produa, by way of preventing loss of value through
copying, free riding or usurpation, could facilitate in increasing

122 Sophie Reviron, “Geographical Indications: creation and distribution of economic value in
developing countries" March 2009.P:21
http ://phasel. nccr-trade.or g/images/storie s/publications/IP 5/repor t_IP5_GI_Value_2009.pdf last
visited on October 18, 2010
123 Surbhi Jain, “ Effects of the extension of geographical indications: a south Asian perspective”, Asia-
Pacific Development Journal, Vol. 16, No. 2, December 2009.P:68
124 Workir^ Paper 3 Daphne Zografos, “Geographical Indications & Socio-Economic Development”,
December: 2008. P.12

43
 the inflow of cash income in the community involved in its
production. Hence, GI is often cited as a tool that has the
potential to contribute to rural development, though
indirectly, through a reduction in income poverty of the rural
poor^.

“Social benefits such as the creation of employment, the retention of the population in

rural areas and the possibility to generate tourism w ill also benefit the owners of a

Geographical Indication and the conamunity as a whole”

2,6 The utility of Geographical Indications with regard to Traditional

Knowledge

There is no specific definition of the term "traditional knowledge’ and also it is

difficult to distinguish it from other knowledge. We have some relevant terms with

“traditional knowledge”, as “indigenous knowledge”, “local knowledge”, “folk

knowledge”, and “community knowledge” etc. But it is better to use the term

“traditional knowledge” here, in order to avoid possible ambiguities.

* * t ■ •
The definition of TK provided by the African Group in its submission to the World

Intellectual Property Organization (WIPO):

"T/f is thus the totality ofaU knowledge and practices, whether explicit or im plicit

used in the management o f socio-economic and ecologicalfacets o flife''^ .

125 Kasturi Das, “ Socioeconomic Implications of Protecting Geographical Indications in India” Center
of WTO studies, Aug;iist 2009
126 Working Paper 3 Daphne Zografos, “Geographical Indications & Socio-Economic Development”,
December: 2008. P .12

44
Geographical Indications is also considered as an important instrument for the

protection of traditional knowledge. This is because, ""Geographical Indication as an

instrument o f intellectual property (IP ) protection has certain peculiar features, which in

contrast to other WRSy are considered to be relatively more amenable to the customary

practices o f the indigenous communities

2.6.1 The suitability of Geographical Indications for protecting TK

Geographical Indications are the most appropriate and a suitable way for protecting

TKBAPs. For the following reasons:

First, in IP regimes GIs are unique in the sense that GIs are based upon “collective

traditions and a collective decision-making process”^ Geographical Indications apply

to all producers who live in that particular area or location which gives rise to a

quality or reputation indicated by Geographical Indications^.

Second, GIs relate to the old knowledge of the product and their cultural

importance^\ As Geographical Indications is a part of intellectual property law so

most of the other IPRs provide exclusive rights to the person who creates new

127 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6,442
128 Kasturi Das, “ Socioeconomic Implications of Protecting Geographical Indications in India” Center
of WTO studies, August 2009
129 S. Singhal, “Geographical Indications and Traditional Knowledge”, Oxford Journal of Intellectual
Property Law &: Practice0IPLP) (2008) 11,732 at 733
130 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6,446
131 Ibid, 447

45
knowledge that’s why other IPRs are not suitable to protect TK-based products^^,

“GIs do not reward “new inventions”, they reward the goodwill and reputation that

producers who use traditional methods created or built up in a geographical

territory”

Third, The beneficial impact of Geographical Indications depends upon the

maintenance of collective tradition. In other words, Geographical Indications provides

benefits to its rights holders as long as they maintain collective

tradition^.Geographical Indications provides protection for production methods

which can be changed and modified according to the circumstances GIs do not restrict

to one method of the given product. In this way GIs allow evolution of the product

this characteristic of GIs makes it suitable for the protection of TK-based products^^

“GIs recognize the quality and reputation of cultivations by particular communities

indefinitely, and prohibit others from free-riding off that reputation, as long as natural

and cultural characteristics in the relevant place of cultivation are maintained”

132 Ibid
133 T Cottier and M Panizzon, ‘Legal perspectives on TK: the case for intellectual property protection’
(2004)7JIEL 371 at 380.
134 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6,447
135 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6,447
136 Ibid

46
17 Geographical Indications have a means of maintaining Culture

Culture can be an economic asset^^. Cultural heritage is the most important part of a

particular area and Geographical Indications can be a useful tool to protect the cultural

heritage of the area. Developing countries considers the traditions and cultural

knowledge as the most valuable assets. Geographical Indications gives opportunity to

the consumers to get knowledge about the culture, traditions, art and traditional craft.

It becomes obvious from the history that developing countries need to take strong

measures to protect their cultures otherwise they will lose their valuable cultural

heritage^*.

Culture plays an important role in configuring and

contextual izing Gl-products - not only in terms of stabilizing
particular repertoires of ‘good farming’ but also in terms of
notions of authenticity and origin of products. As protection
transforms cultural values into economic value and re­
organizes supply chains, it also impinges on existing patterns
of use of the protected products (and their intemiediate
inputs)

137 See generally chris hayter & Stephanie casey pierce, nat‘l governors ass‘n, ctr. For best practices, arts
& the economy; using arts and culture to stimulate state economic development (2009), available at
http://www.nga.org/Files/pdf/0901artsand economy.pdf.
138 Alexandra Basak Russdl, “Using Geographical Indications to Protect Artisanal Works in
Developing Cotmtries: Lessons from a Banana Republic’s Misnomered Hat*, Transnational law &
Contemporary problems, vol. 19:705, Spring 2010:p:727
139 Dr, Dwijen RANGNEKAR; “ The International Protection of Geographical Indications: The
Asian Experience” CSGR and the Law School, University of Warwick UNCTAD / ICTSD Regional
Dialogue “Intellectual Property Rights (IPRs), Innovation and Sustainable Development” 8 - 1 0
November; Hong Kong, SAR, People’s Republic of China.

47
2.8 Costs and Limitations of Geographical Indications as a
Development Tool

It is universally established that successful Geographical Indications become the

sources of many social and economic benefits in developing countries. But for the

attainment of these benefits well organized policy for Geographical Indications are

required.

The economic and social benefits attributed to geographical

indications through the creation of value in the market place
require investment, such as in production methods, the
development of reliable supplies of raw materials and quaKty
controls. These costs, which may be significant, are to be
borne by the owners of geographical indications, be it the
producers or their governments.^'’^

2.9 The Rationale behind the Extension in protection available for

Geographical Indications:

Following are the few rationales which are given for the extension of Geographical

Indications protection for the products (agricultural products, foodstuffs, and

handicrafts) other than wine and spirit.

a.All products of Geographical Indication other than wine and spiritare facing

the problem of legitimate method of marketing such good, so, they are inneed of

140 Working Paper 3 Daphne Zografos, “Geographical Indications & Socio-Economic Development”,
December: 2008. P. 13

48
satisfactory extension in Geographical Indications (under TRIPs) for all products.

W TO (2001 b) is in favour of such extension.141

b. There are some reasons on the basis of which certain products are given undue

protection as presents, there are no authorized rules. The reasons are:^'‘^

1. The products having particular quality due to a specific region

2. The products may be counterfeited. O r the products not having

the desired quality

C. The products and the consumers will be given identity and variety of choice

respectively under extended protection

d- Extension would not only provide opportunities for trade but also encourage

healthy agricultural competition and contribute to the betterment of rural

communities. Furthermore it would provide local protection like GIs 145.

e. Wide-ranging establishment of GI protection would sufficient enough to carry

out business activities and developments among different member states of WTO

without any priority to one member state. In addition to that TRIPS Agreement

endows with sufficient proofs that flexibility on the basis of exception and transitional

periods cannot affect trade flow, production and exportation of products. 146

141 Surbhi Jain, * Effects of the extension of geographical indications: a south Asian perspective”, Asia-
Pacific Development Journal, Vol. 16, No. 2, December 2009J*:77
142 Ibid
143 Ibid
144 Ibid, 77.78
145 Ibid, 77
146 Ibid, 77

49
 f. Although implementation of new law requires administrative costs, in given

perspective W TO is the assigning authority for the implementation of costs, in the

testimony of TRIPS. Increased level of protection does not involve new cost but it

would be applied to those countries who are claiming for the first for other products.

Conversely, extending would lower the legal cost, mentioned in TRIPS in relation to

wine and spirit protection type^^^.

2.10 Brief outline of the different positions:

2.10.1 The Demanders:

The countries that support the extension of Article 23 to other products as well as a

multilateral register for wines and spirits are the European Union and some Eastern

European countries (non-EU members), China, Iceland, India, Kenya, Mauritius,

Nigeria, Pakistan, Sri Lanka, Switzerland, Thailand, Tunisia, Turkey, Jamaica and

several other Caribbean and Andean countries, as well as several African countries.

2.10.2 The Joint Proposal Group;

The group opposing an extension of Article 23 are the United States, Argentina,

Australia, Brazil, Canada, Chile, Chinese Taipei, Colombia, Costa Rica, Djibouti,

Dominican Republic, El Salvador, Guatemala, Hong Kong, Japan, Malaysia, Mexico,

147 Surbhi Jain, “ Effects of the extension of geographical indications: a south Asian perspective*, Asia-
Pacific Developmeiit Journal, Vol. 16, No. 2, December 2 0 0 9 :77

50

■9 :
New Zealand, Paraguay, the Philippines, South Africa and Uruguay. Instead they

support the idea of a voluntary notification and enforcement system within the WTO.

2.11 Argiiments in favour of increased protection of Geographical

Indication

a) Export market can get a.bpom by additional protection of Geographical Indication

for all types of goods.

b) Additional protection can avoid free-riding in vale particularity of aU such goods.

c) Article 22 contains ambiguity regarding the enforcement of protection for

Geographical lndications for goods other than wine and spirit.

Article 22 is also responsible for hoodwinking and unjust treatment towards the

pubhc for the protection of Geographical Indications^'^.

2.12 Arguments against increased protection of Geographical Indication

a) The legal and administrative costs associated with extending the scope Article 23.1

would be significant; -

b) There is no evidence of failure of Article 22 to protect Geographical Indications for

products other than wines and spirits;

c) There is no evidence to radicate whether extending the scope of Article 23.1 to

products other than wine and spirits would result in more effective protection than is

akeady afforded to those products under Article 22;

148 Carina Folkeson, “Geographical Indications and Rural Development in the EU*p:21.22
http://biblioteket.ehl.lu.se/olle/papers/0000429.pdf last visited on November 2, 2010

51
 Additional protection could close-off future market access opportunities in

emerging industries and result in uncertainty concerning the continued use in existing

markets;

e) Consumer confusion would be caused through the disappearance of terms

customarily used to identify products which will, in turn, increase search and

transaction costs for consumers and potentially prices as w ell”^

2.13 Importance of Geographical Indications througji Case Studies

A case study of ‘Boseong’ green tea

Boseong is a country which is located in the southern coastal area of the Korean

peninsula. Its specialty is green tea because it has the warm and rainy climate which is

a suitable condition for the cultivation of green tea. In Boseong there are eighteen

producers engaged in the production of green tea properly operating under the cover

of Geographical Indications. One of the authors in order to analyze or evaluate the

contribution or beneficial impacts of Geographical Indications conducted the

interviews of the eighteen producers. Furthermore, the officials of local government

were also interviewed because the contribution of government of Boseong in the

implementation of Geographical Indications was remarkable. Interviews were

149 Carina Folkeson, “Geographical Indications and Rural Development in the EU”p:21.22
http://biblioteket.ehl.lu.se/olle/papers/0000429.pdf last visited on November 2, 2010)

52
conducted in February 2006. The objective of the interviews was to address the

following issues:^

1. To observe the impact of Geographical Indications on the sale and production.

2. The role of Geographical Indications in the rising import competition through

trade liberalization.

3. The role of Geographical Indications in the preservation of culture and heritage

and in the tourism sector.

4. The process of implementation of Geographical Indications.

5. The interaction between producers for quality control.

2.13.1 Quality improvement:

The most important and prominent effect of Geographical Indication pertains to the

quaUty control and improvement in the quality of the product. AH the eighteen

producers regarded it the most salient aspect of Geographical Indications. One of the

producers noted that:

Since the introduction of the geographical indication system,

the image of Boseong green tea has been greatly enhanced.
While the image of Boseong tea was vague in the past, the
geographical indication m ^e the im^e more evident because

1 5 0 Jeongwook Suh and Alan MacPherson, “The impact of geographical indication on the
revitalization of a regional economy: a case study of ‘Boseong’ green tea”, Area Vol. 39 No. 4, pp. 518-
527, 2007, ISSN 0004-0894 ®The Authors. Journal compilation ® Royal Geographical Society (with The
Institute of British Geographers) 2007,p:520
1 5 1 Ibid

53
 the geographical indication means that the quality of the
product has been officially acknowledged. We are very proud
of the fact that Boseong green tea is the first product to have
been officially registered as a geographical indication in Korea.
In this era of trade liberalization, quantity or price is no longer
effective to cope with cheap imported agricultural products
from countries such as China, for example. Now is the time to
compete with quality^^.

One of the officials of the local government commented in the following words:

The thing that we put the most emphasis on with regard to the
geographical indication. is quality control so* that Boseong
green tea can be continuously acknowledged as a reliable
brand. To make Boseong green tea an internationally famous
brand like French Cognac for example, we think the most
important thing is to continuously strengthen quality
man^ement. Geographical indication should fail unless
appropriate quality control is guaranteed. Therefore we are
making efforts to enhance the quality and to keep the quaUty
standardized^^^.

For quality control, persons concerned with the Geographical Indication including

green tea producers, local officials and experts in research institutes regularly have

‘quality evaluation meetings’. One producer explained that

We randomly pick up Boseong green teas with geographical

indication in the markets and bring them to the evaluation
meeting place. The persons concerned evaluate them through

1 5 2 Ibid
1 5 3 Jeoagwook Stih and Alan MacPherson, “The impact of geographical indication on the
revitalization of a regional economy: a case study of ‘Boseong’ green tea”. Area Vol. 39 No. 4, pp. 518-
527, 2007, ISSN 0004-0894 ® The Authors. Journal compilation ® Royal Geographical Society (with The
Institute of British Geographers) 2007.p:522

54
 senses such as taste, color, and smell. In addition, we compare
our products with like-products from other regions. In this
process we give advice for inferior products to enhance the
quality and keep the quality standardized. Because the local
producers share the same experience and meet often, it is easy
to communicate with each other to reach a common
understanding. Because even one or two products which fall
behind the quality requirement can damage the whole image of
Boseong green tea, this quaKty evaluation meeting functions as
a kind of peer pressure and plays an important role for quality
control^^.

For the registration of Geographical Indication it is one of the conditions ‘that the

producers should be organised as the same legal person, the producers tend to be tied

to a common fate’. This condition plays a vital role in the ‘information sharing,

education and training in a cooperative manner to strengthen learning effects

regarding quality improvement’. Information sharing among the producers organized

under the same legal person is the key factor in making the Boseong green tea industry

highly unified

2.13.2 Product marketing:

From the results of the interviews it became clear that Geographical Indications had a

best and positive impact ‘on prices and production levels, largely as a result of

improved marketing.’ The emergence of Geographical Indications, the market value

and price of Boseong green tea has increased by 90 per cent as a result of its enhanced

1 5 4 Ibid
1 5 5 Ibid

55
image and brand value’. This fact can be proved that the prices of the non- Boseong tea

produced in Korea have not changed to any significant degree. One producer noted

that:^^

Since the geographical indication, the consumers’ recognition

and price of Boseong green tea has increased, which in turn has
contributed to the increase of production. On average the
production grows by 20-30% every year. Taking into account
the fact that a lot of additional tea tre^ were planted recently
more accelerated production can be expected in 3-4 years
when the trees can produce teas^^^.

2.13.3 Trade policy

From the interviews result it becomes clear that Geographical Indication has the

potential and expected that it can function as an effective tool to cope with trade

Hberahzation. ‘Korea’s current import tariff on green tea amounts to 514 per cent, and

these high tariffs have been in place for several decades. Currendy, the price of green

tea in Korea is fully four times h ^ e r than the competitive International price’.

If the import tariff is reduced in accordance with WTO

directives, then domestic green tea producers may have
difficulty competing with cheaper imports. In fact, according
to the interview results, most producers feel seriously
threatened by the trend toward trade liberalization. However,
they admitted that in this globalization era the trend of trade
liberalization is inevitable. In-particular, they answered that

156 Jeongwook Suh and Alan MacPherson, “The impact of geographical indication on the revitalization
of a regional economy: a case study of ‘Boseong’ green tea”, Area Vol. 39 No. 4, pp. 518-527, 2007,
ISSN 0004-0894 ® The Authors. Journal compilation ® Royal Geographical Society (with The Institute
of British Ge ograp hers) 2007 .p: 52 3
157 Ibid

56
 the geographical indication can be a good policy to cope with
trade liberalization^^.

According to one producer,

We cannot block open market policy that conies with the

WTO or FTAs. However, if the geographical indication brings
about quality improvement and enhances consumers’
recognition of our products, I think trade liberalization may
come as an opportimity rather than a threat^^’.

These results suggest that quality improvement via geographical indication can be a

critical element in coping with trade liberalization. If consumers’ recognition of

domestic agricultural products increases to the extent that they perceive such products

as luxury brands, then domestic products may be able to compete with cheaper

imports via product differentiation (Lillywhite et a l . 2005)^“.

2.13.4 Place marketing and tourism:

The impact of Geographical Indication on the market place and tourism remains

positive. ‘The producers and local officials responded that since Geographical

Indication, tourist numbers visiting Boseong have increased substantially because of

the enhanced image of the place’. In the survey conducted by the Korea Tourism

Organization in 2004, it was concluded that Boseong was selected by the visitors as the

158 Jeongwook Suh and Alan MacPherson, “The impact of geographical indication on the revitalization
of a regional economy: a case study of ‘Boseong’ green tea”, Area Vol. 39 No. 4, pp. 518-527, 2007,
ISSN 0004-0894 ® The Authors, journal compilation ® Royal Geographical Society (with The Institute
of British Geographers) 2007.p:523
159 Ibid
160 Ibid

57 ■
most favourable visiting place among Koreans. It can be easily said that Geographical

Indications not only enhanced the commercial value of the product but also marketing

the place. Geographical Indication positively contributes in presenting the image of

the place. Local government is properly taking advantages from the enhanced place

image by conducting tea festivals. ‘As a result, the number of tourists visiting Boseong

has sharply increased to 5.5 million in 2004’

According to the official in the local government:

Since the geographical indication, the general pubUc’s

recognition of Boseong has become higher and "better. The
equation that ‘Boseong is green tea and green tea is Boseong’
has been rooted in the minds of the general public. With the
current well-being trend, the tourists to Boseong have been
greatly growing. We are trying for the general pubHc to relate
Boseong to the word of rest or relaxation*^.

2.14 The Case of Ceylon Tea:

Sri Lanka gets importance due to its teas with unique flavours and aroma. One of the

best teas of Sri Lanka is traditionally known as “Ceylon Tea”. It has a global market

and the main buyers of this tea are Australia, Europe, Japan, and North America. This

sector is creating a job opportunity for more than 3000,000 people. Today, tea

161 Jeongwook Suh and Alan MacPherson, “The impact of geographical indication on the revitalization
of a regional economy: a case study of ‘Boseong’ green tea”, Area Vol. 39 No. 4, pp. 518-527, 2007,
ISSN 0004-0894 ® The Authors. Journal compilation ® Royal Geographical Society (with The Institute
of British Geographers) 2007.p;524
162 Ibid

58
accounts for approximately 15 % of the agriculture exports of Sri Lanka. The process

of preparing tea is the main reason for its high quality‘s Tea is plucked by hand

usually two leaves and a bud*^ which is considered as another major reason for the

unique quality of Ceylon Tea. During the manufacture of pure Ceylon Tea no

artificial flavouring or preservatives are added, which makes the tea unique. In order

to export best quality product in the foreign market several precautionary measures

takes place such as anything does not cope with the standards is rejected. Sri Lanka is

the largest exporter, bringing in over US$700 million in earnings to support over 1

million people^^.

Today Sri Lanka is the world’s third biggest tea producer

and the industry is the main source of foreign exchange
earnings. Out of the total 21% of the GDP from
agricultural export the tea industry accounts for 15%. Its
production is around 9% of the share globally and also
accounts for 19% of the market share. The major export
countries are the U.S. ($1.8 billion), U.K., Germany,
Japan, and Be^um. Moreover, Russia, countries of the

163 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu,^ “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”Exploring the Relationship between Geographical
Indications and Traditional Knowledge,August 20071 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD).
164 It is only the bud and two youngest leaves that are plucked that give the flavour and aroma. The
first quality inspection is made in the muster sheds where the leaf is weighed. In the factory the leaves
are withered using large blowers and they are cut to bring out the juices for fermentation. During
fermentation the himiidity, temperature and fermentation time are well controlled to ensure that the
flavour and aroma are not lost. Once the fermentation is completed the leaf is fired, to lock in the
flavour, to dry it to improve the keeping qualities.
165 Swamim Wagle, “Geographical Indications as Trade-Related Intellectual Property; relevance and
implications for human development in Asia-Pacific” Asia-Pacific Trade and Investment Initiative,
UNDP Regional Centre in Colombo, January 2007

59
 Commonwealth of Independent States (CIS), UAE, Syria
and Turkey are Sri Lanka’s other minor tea export
• 166
countnes .

It is proved that the GI “Ceylon Tea” is playing a major role in the socioeconomic

development and providing a large number of benefits to the people of Sir Lanka. If

there is one it can be protected through the GI because of its wide reputation. It is also

important to note that a higher level of protection is internationally needed to ensure

better socioeconomic benefits^^.

166 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in A sia"^ploring the Relationship between Geographical
hidications and Traditional Knowledge, August 20071 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD).
167 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional Knowledge,August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD),

60
 CHAPTER: m
COMPARATIVE LEGAL ANALYSIS OF
SELECTED ASIAN COUNTRIES

3.1 Introduction

Many countries from Asia are active members of the demander group for Gl-extension

at Geneva^^.Differerices in the form and substance of GI protection have long been a

transadantic trade i r r i t a n t T h e EU countries have protected GIs for a long time

through a sophisticated system of sui generis GIs that incorporate stringent criteria

The Asian countries had GIs protections for products long before the TRIPS

Agreement. But legal protection as envisaged under the TRIPS Agreement seems never

to have existed in these countries. So an attempt is made to examine the nature and

content of the legal tools adopted to protect GIs*^^According to the Article 22 of the

TRIPS ""unless a G I is protected in a country o f its origin there is no obligation under the

168 Dr. Dwijen Rangnekar; “ The International Protection of Geographical Indications: The Asian
Experience” CSGR and the Law School, University of Warwick UNCTAD / ICTSD Regional
Dialogue “Intellectual Property Rights (EPRs), Innovation and Sustainable Development” 8 - 1 0
November; Hong Kong, SAR, People’s Republic of China
169 T Josling, “The war on terroir: geographical indications as a transatlantic trade conflict” (2006) 57
Journal of Agricultural Economics 337-363 at 338.
170 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6,444
171 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K, Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 j Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD).

61
TRIPS Agreement for other country to extend reciprocal protection""^. It is argued that a

carefully structured legal protection of GIs could facilitate the socio-economic

development of producers of GIs products including those local and village

communities in developing countries

3.2 The attraction of GIs for develojping coimtries

The developing countries have long suggested amendment in the Paris Convention

regarding the cancellation of a registration of a mark, and the prohibition of the use of

a mark, “if the mark contains a GI of a country from which the associated goods do

not originate and similar goods are now or later produced in the named geographical

region”^^^because the developed countries have already secured protection for their GIs

to aid in their export trade, and, at the same time, have permitted the geographical

names of developing countries to become registered as marks, thus effectively

frustrating the use by developing countries of their geographical names

In this context, the interest of developing countries in GIs has

traditionally been for the primacy of GIs over trade marks to
be used to prevent the establishment, in developed countries,
of trade mark rights in geographic names where distinctive
biodiversity resources in the south are cultivated, which, in

172 Kaushik Laik, “Roll of Intellectual Property in Economic Growth”, Journal of Intellectual
Property Rights Vol 10, November 2005, pp 465-473
173 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”JExploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007] Intellectual Property Rights and Sustainable
Development, A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD).
174 WR Brookhart et al., “Current International Legal Aspects of Licensing and Intellectual Property”
(American Bar Association, Chicago, 1980) at 19.
175 Ibid

62
 effect, hinders the exports of goods from developing countries
to larger markets^^^.

In Doha negotiations the major supporters of GIs the EU and Switzerland highli^ted

the two hot issues in the WTO: an amendment to the TRIPS that would require

disclosure of origin of genetic materials used in patent applications and the extension

of high-level protection enjoyed by GIs for wines and spirits to GIs in other

goods^^.The EU puts India as an example who is in favour of GIs protection because

its economy is based upon its distinct culture, which it also exports in the form of saris

^(traditional dress worn primarily by Hindu women), specialty teas (Darjeeling,

Assam), and rice varieties (such as Basmat^^®.

It appears that developing countries are taking interest in the subject of Geographical

Indications. And some countries considering the Geographical Indications as an

instrument that may contribute to’ a remunerative marketing of an agricultural

.production based upon traditional cultivation m e t h o d s T h e interest of the

developing countries can be derived from the fact that many developing countries like

176 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6,p:445.446
177 WTO, Communication from Albania, Brazil, China, Colombia, Ecuador, the European
Commimities, Iceland, India, Indonesia, the Kyrgyz Republic, Liechtenstein, the Former Yugoslav
Republic of Macedonia, Pakistan, Peru, Sri Lanka, Switzerland, Thailand, Turkey, the ACP Group, and
the African Group, Draft Modalities for TRIPS Related Issues, TN/C/W/52 (19 July 2008).
178 European Commission, External Trade, Intellectual Property, TRIPs and Geographical Indications:
EU submits Three Communications on Geographical Indications, Brussels, 24 June 2002,
http ://europa.eu .int/comm/ trade/issues/sectoral/intell_property/wto_nego/in tel4.htm
179 Teshager Worku Dagne, “Harnessing the development potential of geographical indications for
traditional knowledge-based agricultural products”, Oxford Journal of Intellectual Property Law &
Practice,(2010),Vol. 5, No. 6,p:445.446

63
Chile, Brazil, Argentina, India, Malaysia, Singapore, Thailand, Jordan, and Egypt have

developed their sui generis system for the protection of Geographical Indications,

between 1996 and 2004. According to the WlPO’s review of the IP of TK. reports that

Venezuela and Vietnam protects TK through GIs. India and Pakistan, have registered

GI protections over diverse goods of immense export value, after widely publicized

disputes involving Darjeeling tea, Basmati rice, and Jasmine rice^®°.

3.3 Emergence of GI protection systems in Asia

Geographical Indication has been considered as an important development tool in

Asia. But the information regarding their development aspects even in the major

countries of that area is not on a high level. In this region China is taking new steps

and strong measures with respect to introduce a new system for the Geographical

Indications^^\In China the products for which the Geo^aphical Indications are

available such as: ""agricultural products^ foodj traditional Chinese medicine^ handcrafts^

etc and registered geographical indication products are fruitSy tea^ riccy v^getabley poultryy

flowersy yellow winCy heanSy etc^^^....

180 Ibid
181 Danieie Giovannucci - Tim Josling - William Kerr - Bernard O’Connor - May T. Yeung, “guide to
geographical indications Linking products And their origins "Geneva 2009p:68.69.
182 ASEM Working Group on Intellectual Property: Meeting on Geographical Indications, “GIs
playing an important role in rural development"

64
3.4 Application and importance in South Asia
In South Asia the case of Basmati rice heated up the importance of Geographical

Indications. The important examples of Geographical Indications are in South Asia

include: Himalayan waters, Alphonso and Sindhri mangoes, Bhutanese red rice,

Pakistani shu (windproof woollen fabric) and ajrak (designs from Sindh), jasmine

(Horn Mali) rice, Ceylon and Darjeeling teas, and Phulkari of Pakistan, among

others’^.

3.5 Inteflectual Property Rights regimes of the South Asian coimtries

Pakistan, Sri Lanka and India are taking progressive measures for IPR regimes while

Afghanistan, Nepal and Bhutan are struggling in order to get a place in the world

trade.

Pakistan does not have a sui generis system of GI protection yet. In Pakistan the

protection is available for Geographical Indications under the country’s Trade Marks

Ordinance, 2001 and the Trade Marks Rules, 2004, This includes:

183 Basmati, a variety of Oryza sativa, is the fragrant, long, slender rice with a nutty flavour that has
been grown in the northern parts of the Indian subcontinent for hundreds of years. Among the
hundred or more types of aromatic rice in the world, basmati is probably the most expensive—India
earns over $400 million annually in basmati exports. In September 1997, Texas-based RiceTec Inc. was
awarded Patent No. 5663484 on basmati rice lines and grains by the United States Patent and
Trademark Office (USPTO): This caused a furore in the subcontinent, and provoked India to lodge an
immediate protest. RiceTec had made 20 patent claims, essentially covering: (a) rice plants with
characteristics identical to basmati; (b) grain produced by such plants; and (c) a method of selecting rice
plants, based on the starch index test. Following the challenge by India, in September 2000 RiceTec
withdrew 4 of its 20 claims. In March 2001, USPTO told RiceTec that, of its remaining claims, only
three were approved, issuir^ it a varietal patent to market the types of basmati developed by it, and not
cultivated and bred traditionally by farmers in India and Pakistan.
184Surbhi Jain, “ Effects of the extension of geographical indications: a south Asian perspective”, Asia-
Pacific Development Journal, Vol. 16, No. 2, December 2009P:80.81

65
 (a) Special laws for the protection of Geographical Indications or appellations of

origin;

(b) Trademark laws in the form of collective marks or certification marks;

(c) Laws against unfair competition;

(d) Consumer protection laws;

(e) Specific laws or decrees that recognize individual Geographical Indications

Sri Lanka protects Geographical Indications through their own country provisions

which are available in "part ZX, chapter X X X m under the new Intellectual Property Acty

passed on 12 November 2003^, The protection available for Geographical Indications is

broader in scope and provides strong protection for agricultural products and also has

the provision for homonymous GIs. The Act contains the identical definition of

Geographical Indications to article 22.1 of the TRIPS Agreement

As it is clear to us that for the protection of Geographical Indications Sri Lanka has a

sui generis system but has no registration system, on this point Sri Lankan

Geographical Indications protection system receives criticism that this system of

protection is similar to copyright protection and vulnerable. And for Geographical

Indications protection is also available through trademark laws which make the

country courts overloaded in order to provide remedies

185 Surbhi Jain, “ Effects of the extension of geographical indications: a south Asian perspective”, Asia-
Pacific Development Journal, Vol. 16, No. 2, December 2009,P:80.81
186 Ibid
187 Ibid

66
A major deficiency in the new law for the protection of Geographical Indications is

that it does not provide protection for handicrafts and fishery products. '^Section 103

(marks)j sections 160 and 161 (unfair competition)^ of the Intellectual Property Act are

the sections which provides protection for Geographical Indications^**.

India has a sui generis system for the protection of Geographical Indications. In India

Geographical Indications are protected and governed by Geographical Indication o f

Goods (Registration and Protection) Act 1999. The examples of Geographical Indications

in India are: Basmati Rice, Darjeeling Tea, Kanchipuram Silk Saree, Alphanso Mango,

Nagpur Orange, K olh ^ u ri Chappal, Bikaneri Bhujia, Agra Petha, malabar pepper.

3.6 An Analysis of the Legal Tools for the Protection of Geographical

Indications in Asia

Under this heading we will examine the nature contents and usefulness of the legal

tools for the protection of Geographical Indications used by India, Thailand, Malaysia,

Singapore, Indonesia, Jordan, China and Pakistan. And also we will try to examine that

whether these adopted legal tools by the Asian countries are contributing in the

development of the producers of these countries socially and economically**^.

188 Ibid
189 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”Exploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned b y «the Internationa! Centre for Trade and Sustainable
Development (ICTSD).

67
 In Asian countries, Pakistan and China gives protection to the products

through trademark laws while other above mentioned countries had adopted sui

generis laws of different nature from each other according to their circumstances. The

main objective of these countries while making laws in their countries for protecting

different kinds of Geographical Indications available there, to promote their socio­

economic conditions of their producers. From a thorough study the laws protecting

Geographical Indications of these Asian countries it becomes obvious to us that they

provide h ^ e r protection to the products of agriculture, textile, and handicrafts from

their countries similar two that are available in the TRIPs for wine and spirit. They

also have the different standards and strategies for the quality controP”

3.6.1 The Asian legal framework: a comparative analysis

In the pre TRIPs era in Asian countries the des^ations were protected trough

business practices such as unfair competition, consumer protection, and food

standards. With the emergence of the modem trademark law after , the industrial

revolution, a new form of protection through collective and certification marks came

into existence^^\The protection available under TRIPs is not contrary to the

prevailing protection in other words TRIPs' Agreement does not remove the

190 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Toois for the
Protection of Geographical Indications in Asia”3xploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the Internationa! Centre for Trade and Sustainable
Development (ICTSD).p: 18
191 Ibid, 19

68
prevailing system of protection. But the main objective of the TRJPs Agreement is to

provide strong, effective and systematic protection for Geographical Indications. And

provides international standards for the protection, the protection under TREPs can be

either through business practices, trademark law or sui generis options.

We will here see the response of the Asian countries towards the TRIPs standards for

the protection of Geographical Indications, the laws of India, China, Thailand,

Malaysia, Singapore, Indonesia, Jordan and Pakistan, all of which are analyzed.

The comparative analysis is limited to four major headings:

(a) Conceptualization of Geographical Indications;

(b)The nature of protection;

(c) Institutional arrangement for administration.

(d) The Legal Mechanisms for Quality Control

(a) Conceptualization of Geographical Indications

Under this heading we wiU try to get a clear picture of the term GIs and its definition

in different countries. The definitions adopted by all the sui generis laws are according

to the TRIPs Agreement. Under the laws of Thailand, Malaysia,Singaporeand

192 Ibid
193 Geographical Indications Protection Act, B.E. 2546, section 3 defines GI “means a name, sign or
anything which is used to call or represent a geographical origin which can identify that the product
originating from that geographical origin is the product of quality, reputation or any unique
characteristic of that geographical origin".
194 The Geographical Indications Act, 2000 section 2 defines GIs as “an indication, which identifies any
goods as originating in a country or territory or a region or a locality in that country or territory,

69
Jordan^’^ are confined to that of TRIPS definition.*’^ The definition of GIs in

Indonesia is according to the TRIPs Agreement but with the addition that

“Geographical environmental factors, including the factors of nature, the people, or

combination of the two factors must be responsible for the specific characteristics and

quality of the goods bearing the GIs” ^^. In Indian legislation the definition of

Geographical Indication provides wider scope of protection.

“Geographical Indications in relation to goods means an

indication which identifies such goods as agricultural goods,
natural goods or manxifactured goods as originating, or
manufactured in the territory of 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

where a given quality, reputation or other characteristic of the good is essentially attributable to their
geographical origin”.
195 The Geographical Indications Act, 1?99 section 2 defines GIs, as “any indication used in trade, to
identify goods as originating from a place provided that (a) the place is a qiialifying country or region or
locality in the qualifying country; and (b) a given quality, reputation or other characteristic of the good
is essentially attributable to that place”.
196 Geographical Indications Law for the Year 2000 Article 2 defines GIs as “any indication, which
identifies a good as originating in the territory of a specific country, or a region or locality of that
territory where a given quality, reputation or other characteristic of the good is essentially attributable
to its origin”.
197 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD) .p; 19
198Law of The Republic of Indonesia Number 15 Year 2001 Regardir^ MARKS, Article 56 (1) defines
GIs as “a sign indicating the place of origin of the goods, which due to its geographical environment
factors, including the factor of the nature, the people or the combination of the two factors, gives a
specific characteristic and quality on the goods produced therein”.

70
 concerned takes place in such territory, region or locality as
the case may be”^^.

This definition properly prescribes the identification of designation eligibility for the

protection and also elaborates the geographical factors that clearly establish the link

with the product^. Majority of Asian nations are in the support that the term

'Geographical Lidications must cover the wide range of products as possible to be

designated by the GIs^‘. The legislations of India,^ Thailand,^ Malaysia^ and

Singapore^ permits to include natural, agricultural, handicraft and industrial products

in the definition of goods designated by the GIs while on this point Indonesia and

Jordan remain silent. Thus the majority of laws increase the scope and coverage of

domestic protection of Geographical Indications^. All the laws adopt silence on the

199 The Indian Geographical Indications Act, 1999 section 2 (e).

200 N.S. Gopalakrishnan, Pfabha S. Nair & Aravind K, Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”Exploring the Relationship between Geographical
Indications and Traditional Knowledge^August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICT SD) .p: 20
201 Ibid, 20
202The Geographical Indications Act, 1999 section 2. 1. (f) defines goods as “...any agricultural, natural
or manufactured goods or any goods o f handicraft or of industry and includes food stuff.”
203 Section 3 Goods" means thirds which can be purchased, exchanged or transferred whether they
originate by nature or they are agricultural products including handicraft and industrial products.
204 Geographical Indication Act 2000 section. 2 "goods" means any natural or agricultural product or
any product of handicraft or industry.
205 Geographical Indicauon Act 1999 section. 2 "goods" means any natural or agricultural product or
any product of handicraft or industry;
206 N.S, Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional KnowledgeAugust 2007 Intellectual Property Rights and Sustainable
Development, A Study Commissioned by the International Centre for Trade and Sustainable
Devel opment (ICT SD) .p:20

71
extension of Geographical Indications protection in the field of services. In Asian

countries only Pakistan and China provide protection of Geographical Indications

through trademark law^. The definition of Geographical Indications provided by the

legislations of Pakistan^ and China^^° is according to the mandate of TRIPs

agreement^^^ The Trademark Ordinance of Pakistan defines goods broadly to include

anything subject to trade, manufacture or commerce^^. It is interesting to note that

unlike other Asian countries, in China and Pakistan the GIs could designate goods and

services^^.

207 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable
Development A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD) .p:20
208Ibid, 20
209 The Trademark Ordinance 2001, Pakistan, section 2: “Geographical indications, in relation to
goods originating in a particular country or in a region or locality of that country, means a mark
recognized in that country as a mark indicating that the goods- (a) originated in that country, region or
locality; and (b) have a quality, reputation o r other characteristic attributable to their geographical
region”.
210The Trademark Law of the People’s Republic of China, Section 16 (explanation). Geographical
indications mentioned in the preceding paragraph are indications, which identify a good as originating
in a region, where a given quality, reputation or other characteristic of the goods is essentially
attributable to its natural or human factors.
211 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”^Exploring the Relationship between Geographical
Indications and Traditional Knowledge^^ugust 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD) .p:20
212 The Trademark Ordinance 2001 of Pakistan, Section 2(i) read: "goods" means anything which is
subject of trade, commerce or manufacture”.
213 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Siistainable
Development A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD) .p:21

72
 It is evident from this analysis that the intention of these
countries is to cover all categories of GIs within the
definition, keeping in mind the nature of the products in
which GIs are used domestically. It is also clear that these
countries have attempted to satisfy the obligations
stipulated in the TRIPS Agreement. 214

(b) Nature of protection:

IndiaThailand^^^ Malaysia^^ and Indonesia^^® establish a registration system and

from the provisions it .becomes obvious that protection is also available for the

unregistered Geographical Indications in these countries through different ways. On

the other hand no system of registration prescribed by the Singapore and Jordan. “At

the same time, Singapore provides that rights under the trademark laws or passing off

are not affected by its laws”^^\ Protection against unfair competition acts which are

considered as misleading the public regarding the place of-origin of the goods is

available in all the above mentioned countries except Indonesia. The term unlawful

use is defined in Thailand,^ as it includes ‘unfair competition and consumer deception

214 Ibid
215 ladia, Chapter 2, 3 and 4 deals with the pamculars of registration. Section 20(2) provides that
“Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods
as the goods of another person or the remedies in respect thereof.
2 1 6 Chapter 2 of the Law of Thailand provides for registration of the GIs, but does not expressly
provide that unregistered GIs are prevented from enjoying the passing off remedy. So it is assumed ttiat
Thai being a common law country protects tmregistered GIs under the passing off remedy.
2 1 7 Malaysia, The Geographical Indications Act, 2000, section. 3 Protection under this Act shall be
given to a geographical indication (a) regardless whether or not the geographical indication is registered
imderthis Act.
218 In Indonesia, unregistered GIs are protected as source of origin (Article 59) and they enjoy the same
rights enjoyed by the registered GIs (Article 60).
219 Singapore, The Geographical Indications Act, 1999, section. 12.
220 See section 27.

73
as to the place of origin of the goods and in I n d o n e s i a i t is not defined’. Singapore^

and Jordan^, considered “the unfair competition and consumer deception are, inter

alia as prohibited acts or uses”. In Malaysia against these acts remedies in the form of

injunction and damages^^ are available. In India such acts are considered as acts

constituting infringement^/^.

Having different approach, all the laws seem to meet the standard of the TRIPs

Agreement and provide legal protection for Geographical Indications against

“consumer deception and unfair competition”^ .

In China and Pakistan the nature of protection is different like China expressly

indicates that “marks consisting of signs or indications designating the geographical

origin of goods and services are eligible for registration as certification trademarks in

Part B of the Register”

221 Indonesia, Article 57(1) The Right Holder to a Geographical Indication may file a lawsuit against an
iinlawful user of the Geographical Indication, in the form of claim for damages and an order for
stopping the usage as well as disposal of labels of the Geographical Indication concerned which have
been imlawfully used.” But the Act never defines the unlawful uses of the GL
222 Singapore, sections. 3(1) and (2).
223 Jordan Article 3,
224 Malaysia, section. 5.
225 The Indian Geographical Indications Act, 1999, section. 22 (1).
226 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of C^ographical Indications in Asia”^xploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD).p:22
227 Ibid
228 Trademark Ordinance, China, section 64 (3).
229 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD) ,p:22

74
 The definition of certification in China is a type of
trademark which is controlled by an oi^anization capable
of supervising a type of goods or service and which is
used in respect of goods or services by other
organizations or individuals who do not belong to the
said organization, with a view to certifying the origin,
raw material, mode of manufacture of goods or
performance of services, quality or other
characteristics^.'

In Pakistan there are three different ways are available for the protection of

Geographical Indications.

1. GIs designating goods or services could be registered as

trademarks if they have acquired distinctiveness prior to
the application for registration^^
2. It also permits GIs to be registered as collective,
3. Or certification marks.^V^^

For the protection of Geographical Indications in Pal^tan the owner can enjoy three

options. But the question why these three options are available, the answer this

question is still 'not available. Both China^and Pakistan^^protect the prior uses of the

230 Trademark Law of China, section 3.

231 The Trademark Ordinance 2001, Pakistan, section. 14.
232The Trademark Ordinance 2001, Pakistan, Schedule I& II.
233 N.S. Gopalakrishnan, Prabha S. Nair & Afavind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”, Exploring the Relationship between Geographical
Indications and Traditional Knowledge, August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD),p:23
234 Trademark Ordinance, China, section.64 (4) Nothing in this Ordinance shall entitle the proprietor
of a certification trade mark that consists of signs or indications described in subsection (3) to interfere
with or restrain the use by any person of any signs or indications the use of which is in accordance with
honest practices in indtistrial or commercial matters (in particular, by a person who is entitled to use a

75
GIs, which are registered as a trademark, collective m ark^ and certification mark^^ as

the case may be." So it becomes obvious that in both the countries the remedies are

available in the form of passing off for unregistered Geographical Indications. China

and Pakistan provides high level of protection for all the Geographical Indications

which is available to the wine and spirits

geographical name). See also section 33 (1) Nothing in this Ordinance shall entitle the proprietor or a
registered user of a registered trade mark to interfere w ith or restrain the use by any person of a trade
mark identical with or nearly resembling it in relation to goods or services in relation to which that
person or a predecessor in title of his has continuously used that trade mark from a date anterior-(a) to
the use of the first mentioned trade mark in relation to those goods or services by the proprietor or a
predecessor in title or his, or (b) to the registration of the first-mentioned trade mark in respect of those
goods or services in the name of the proprietor or a predecessor in tide of his, whichever is the earlier,
or to object (on such use being proved) to'that person being put on the register for that identical or
nearly resembling trade mark in respect of those goods o r services imder section 22. (2) The references
in subsection (1) to the use of a trade mark by a person's predecessor in titie shall, as respects use in
relation to services before the commencement of the Trade Marks (Amendment) Ordinance 1991 (44 of
1991), be construed as references to use by any predecessor of his in business. Also see section 3 4. No
registration of a trademark shall interfere with- (a) any bona fide use by a person of his own name or of
the name of his place of business, or of the name, or of the name of the place of business, of any of his
predecessors in business (b) the use by any person of any bona fide description of the character or
quality of his goods, not being a description that would be likely to be taken as importing any such
reference as is mentioned in section 27(l)(b) or in section 67(l)(b); or (c) the use by any person of any
bona fide description of the character or quality of his services, not being a description that would be
likely to be taken as importing any such reference as is mentioned in section 27A(l)(b) or in section
67A(l)(b). . . . . .
235 The Trademark Ordinance 2(X)1, Pakistan, Entry 3 (2) of Schedule I & n The proprietor of such a
mark shall not be entitled to prohibit the use of the marks or indications in accordance with honest
practices in industrial or commercial matters, in particular, by a person who is entided to use a
geographical name.
236 Collective marks are owned by a collective body like a trade association and serve to indicate that
goods or services displaying the mark are produced by an enterprise that is a member of the collective
body. As membership to the association entails some qualifying standards, the collective mark is a
distinctive sign conveying the said standards (i.e. quality, origin, etc.) o f the trade association.
237 Certification marks are marks which indicate the goods or services on which they are used have
specific qualities, produced in a particular way, have met a service standard and maybe, though not
necessarily, of certain geographical origin. As a general rule the owner of a certification mark does not
‘use’ the mark but licenses it to other enterprises and certifies that the goods or services carrying the
mark are of a certain qviality. These are frequently used by bodies certifying industrial standards and are
used by anybody that meets the standards set by the owner of the certification mark.
238 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”Exploring the Relationship between Geographical

76
Thus it is evident that the provisions of the majority of the countries satisfy the

minimum standards prescribed in the TRIPS in this regard^’.

(c) Institutional arrangement for administration;

Indian law prescribed a strong institutional legal framework for the administration

and protection of Geographical Indications.

The application for registration of GIs and their

authorized users is to be made to the Registrar of
Geographical Indications. For the purpose of registration,
a register of geographical indications is maintained at the
Head Office of the Geographical Indications Registry
(Chennai) in which all the registered GIs are entered with
the names, addresses and a description of the proprietors,
the names, addresses and a description of the authorized
users and such other matters relating to the registered GIs
as prescribed^*. The Register of GIs contains two parts:
Part A containing detail of registration of the GIs and
Part B containing the particulars of authorized users^'^\
Procedures for registration are the same for both
classes^^^ GIs ma^ be registered in respect of any or aU of
the goods comprised in such class of goods as may be
classified by the Registrar and in respect of a definite
territory of a country, region or a locality as the case may
be^'*^. Goods are to be classified according to the

Indications and Traditional KnowledgeAugust 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD).p:23
239 Ibid
240 The Indian Geographical Indications Act,1999, section. 6.
241 The Indian Geographical Indications Act,1999, section.7.
242 The Indian Geographical Indications Act,1999, section. 17 (3).'
243 The Indian Geographical Indications Act,1999, section. 8(1).

77
 International Classification of Goods for the purpose of
registration of the GIs^'”. Procedures for registration are
also detailed along with particulars to be furnished with
the appKcation^'‘^ Registration is vahd for a period of 10
years and is subject to renewal^V^^^.

In Malaysia aU the powers regarding the administration of Geographical Indications

are vested with the Registrar of Geographical Indications and he is also bound to

maintain a GIs register which contains all the important particulars and records. “A

Central GIs Office with branch offices is established under the Act and documents

filed at the Branch Offices are deemed to have been filed at the Central Office”

No registration mechanism is available in Singapore and Jordan, the institutional

mechanism for administration of the GIs is left to the law courts where the affected

parties can opt to undertake law suits^^^.

In China if any person is interested and claiming to be entided to the registration of

geographical indications must apply in writing and in the prescribed manner.

In China the application of GIs is treated like an ordinary trademark application in all

respects. When the application is accepted whether absolutely or conditionally, the

applicant has to advertise the application as accepted and it will also be subject to

244 The Indian Geographical Indications Act, 1999, section. 8 (2),

245 The Indian Geographical Indications Act, 1999 , sections. 10 & 11. Also Rule 32 & 25.
246 The Indian Geographical Indications Act, 1999, section. 18.
247 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Bahu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”Exploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable
Development, A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICT SD) .p:23.24
248 Ibid
249 Ibid

78
opposition. After giving due hearing to the parties, and following *all the necessary

formaKties like to consider the evidence, imposing conditions and limitations,

amendments, and modifications, the registration would be allowed,^

In Pakistan it is also requires that for the registration of Geographical Indications

application is to be made to the registrar of the trademark along with the regulations

governing the use of the mark^\ specifying the persons authorized to use the mark,

conditions for membership of the association, conditions for the use of the mark and

any sanctions against misuse in the case of a Collective Mark^^

The regulations are to be approved by the Registrar taking

into account" compliance with the requirements to be
furnished along with the application and that they are not
contrary to public policy or morality^^ For a certification
mark, the Registrar has to also look into whether the applicant
is competent to certify the goods or services for which the
mark is proposed to be registered.^ If all the requirements are
met, the application would be accepted and then the regulation
is published.^^ All other procedures in respect of trademark
registration would be followed^. ,

250 N.S. Gopalakrishnan, Prabha S, Nair & Aravind K Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional K n o w l e d g e 2007 Intellectual Property Rights and Snstainabie
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD).p:24
2 5 1 The Trademark Ordinance 2001, Pakistan, Entry 6 (1) o f Schedule 2 & Entry 5 (1) of Schedule 1
252 The Trademark Ordinance 2001, Pakistan, Entry 6 (1) of Schedule 2 & Entry 5 (2) o f Schedule 1.
253 The Trademark Ordinance 2001, Pakistan, Entry 6 (1) o f Schedule 1 and Entry 7 (1) of Schedule 2.
254 The Trademark Ordinance 2001, Pakistan, Entry 7 (1) of Schedule 2.
255The Trademark Ordinance 2001, Pakistan, Entry 7 & 8 of Schedule 1 and Entries 8 & 9 of Schedule,
2
256 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable

79
 (d) The Legal Mechanisms for Quality Control

The main objective of protecting Geographical Indications is to protect the interest (in

maintaining the reputation of the GIs) of the consumer than ensure and protect the

quality of the product. Though TRIPs does not describe any specific method for

quality control system but makes it implied obligation for national laws of the

signatories to establish a legal mechanism for quality control under Article 22(2).

While protectLQg Geographical Indications the quality of the product could be ensured

through various ways. In one way by adopting a direct approach and makes a

prerequisite in the legislation for the method of quality control system. In this context

the EC Regulations for the protection of GIs on agricultural products and foodstuffs^

are the best example according to Article 4 of the Regulation to claim protection it is

necessary that product specifically contains quality. The other approach could be to

leave it to the parties to establish it before the court of law when there is infringement

ofGIs^.

A notable feature of all the sui generis laws examined is that they do not contain any

specific provision for quality control. Still, some of the provisions relating to

Development. A Study Commissioned by the Internationai Centre for Trade and Sustainable
Development (ICTSD).p:24

257 Council Regulation (EC) No. 510/2006 of 20, March 2006, Official Journal of the European Union,
31.3.2006, L 93/12.
258 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional Knowledge ^August 2007 Intellectual Property Rights and Stistainable
Development, A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD).p:25

80

■1 -
registration of GIs in these laws could be read as providing some inbuilt mechanism

for quality controP^

Only in Indonesia the protection of Geographical Indications is available only on the

basis of quality or unique features. In other words quality or the peculiar feature is

made the basis for protection^.

In Singapore the importance is given to the prior use and use of GIs is the

precondition for the p r o t e c t i o n , n o reference regarding quality is available.

It appears that whenever there is an allegation of prohibited

uses of GIs, the plaintiff has to establish the quality b'ased on
prior use of the GIs and the reputation acquired. The prior
user concept seems to be introduced in Singapore to ensure
that only actual manufacturers of the product are entitled to
use the GIs and others could use only with permission. This
will enable the producers to maintain the quality of the
product and also compels them to join together and protea
the reputation of the GIs“^.

259 Ibid
260 Article 56 (7) of law of Indonesia.
261 Singapore, section 2 read: “Use means use as part of, or in connection with — (a) any transaction,
including a purchase, sale or exchange; (b) any importing or exporting; (c) any advertisement; or (d) any
invoice, wine list, catalogue, business letter, business paper, price list or other commercial document”.
Also see section 4 “Subject to the provisions of this Act, if it is established to the satisfaction o£ the
Court that the defendant to an action brought under section 3 (1) has carried out or is carrying out an
act to which section 3 applies, the Court may grant to the plaintiff one or both of the following: (a) an >
injunction (subject to such terms, if any, as the Covut thinks fit) to restrain the further carrying out of
the act; (b) damages or an account of profits.
262 N.S. Gopalakrishnan, Prabha S, Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”^ p lo rin g the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD),p:25,26

81
In India^, Thailand^ and Malaysia^ the detail about the quality reputation and other

characteristics of the GIs were the prerequisites at the time of registration. Only

Jordan is the Asian country in which laws no direct or indirect reference is available

for quality control^.

263 In India, under the GIs Rides the applicant has the obligation to explain how the GIs serves to
designate the goods as originating from the territory, region or locality as the case may be in respect of
quality, reputation o r other characteristics which are due exclusively or essentially to the geographical
environment with its inherent natural and human factors and the production, processing or preparation
which takes place in such place. It also insists on description of the human creativity involved if any.
The application must also specify the standards for the use of GIs as regards the production,
exploitation, making or manufacture of the goods and particulars of the mechanism to ensure that the
standards, quality, integrity and consistency or other special characteristics are maintained by the
producers, makers or manufacturers of the goods. The application must also detail the particulars of
special human skill involved, the uniqueness of the geographical environment, or other characterisdcs
associated with the GIs. Similarly, the application in respect of the registered proprietor and the
authorized users of the GIs must contain a statement of the period during which, and the person by
whom, the GIs have been used in respect of the goods specified in the applicadon. The applicant has to
file an affidavit testifying to such use with exhibits showing the GIs as used, the volimie of sale under
that GI, definite territory and related particulars. These provisions could be treated as an attempt to
ensure prescribed standards of manufacture and quality.
264 In Thailand, the application must indicate the product using the GIs, details about the quality,
reputation and other characteristics of the goods, and the relationship between the product and the
geographical origin. After registration, the producers in the geographical area and the traders get the
right to use the GIs. It is important to note that even though there is an obligation to provide details on
the quality, reputation and other characteristics, the law of Thailand only prohibits the use of GIs in a
manner causing confusion as to the geographical origin, quality, reputation or other characteristics of
the goods. It is doubtful whether this provision could ensure quality of the products by users,
particularly traders. Permitting the use of GIs by traders without proper qtiality control could result in
dilution of the value of the GI causing irreparable injury to acmal producers.
265 In Malaysia also, there is an obligation to give the details of the quality, reputation or other
characteristics of the goods in the application for registration of GIs. The certificate of registration will
contain the GIs registered, the demarcated geographical area, the name and address of the person in
whose name the GIs is registered, the concerned goods, the quality, reputation and other characteristics
of the goods and any conditions for \ise etc. Thus the intention of the Act is to ensure quality control.
The right to use is limited to producers carrying out activities in the geographical area specified in the
register in accordance to the quality, reputation or other characteristics. This ensures qiiality control
and puts the responsibility on the actual producers in the geographical area. Even though dealers and
traders are included in the definition of producers, they must also carry out their activities in the
specified geographical area.
266 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”, Exploring the Relationship between Geographical
Indications and Traditional Knowledge, August 2007 Intellecmal Property Rights and Sustainable

82
China provides adequate provisions for die qpality mechanism dirough die

certification and collective mark systems. According to certification mark:

“a mark which is controlled by an organization capable of

supervising a type of goods or service and which is used in
respect of goods or services by other organizations or
individuals who do not belong to the said organization with a
view to certifyii^ the origin, raw material, mode of
manufacture of goods or performance of services, quality or
other characteristics”

In Pakistan, it is specifically provided that the collective or certification marks

registered in respect of a GI should not be misleading as to character or significance^^’.

The application for registration is to be" filed with the Registrar along with the

regulations governing the use of the mark^, specifying the persons authorized to use

the mark, conditions for membership of the association, conditions for the use of the

Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD) .p;27
267 Trademark Act of China, section 3.
268 The applicant for the registration of a GI as certification mark in China has to transmit to the
Registrar draft regulations for governing the use of the mark concerned including instances where the
proprietor is to certify goods or services and to authorize the use of the markl62. The approved
regulations shall be deposited with the Registrar and shall be open to inspectionl63. The processing of
the application w ill be in relation to the competency of the applicant to certify, whether the draft
regulations are satisfactory and whether registration w ill result in public advantagel64. Registration
gives the proprietor and the persons authorized by them the exclusive right to use the mark in relation
to the goods concemedl65. It is their responsibility to ensure the quality as specified in the regulation
before permitting anyone to use the mark. The deposited regulations can be altered, expunged or varied
with the consent of the Registrar
269 The Trademark Ordinance 2001, Pakistan, Entry 5(1), Schedule 2 and Entry 4 (1), Schedule 1, See
Appendix 1 and 2
270 The Trademark Ordinance 2001, Pakistan, Entry 6 (1) of Schedule 2 and Entry 5 (1) o f Schedule 1.
See Appendix 1 and 2

83
mark and any sanctions against misuse in the case of a collective mark^’. In addition to

this the persons authorized to use the certification mark, the characteristics to be

certified by the mark, the manner in which the certifying body shall test the

characteristics and supervise the use of the mark, and other related matters, must also

be mentioned^. These provisions indicate that a quality control mechanism has been

deliberately built into the system. The position becomes stronger in Pakistan since the

collective or certification mark is subject to revocation owing to the failure of the

proprietor to secure observance of the regulations governing the use of the mark^.

Thus it is clear that the majority of the countries examined

address the issue of quality control and some of them,
particularly Malaysia, mandate that the actual producers
ensure that standards of quality are maintained. In some other
countries like India it is the responsibility of the registered
owner and user of the GIs to ensure the maintenance of the
quality of the goods^'^.

From the above analysis of the legislations of Asian countries following concluding

points can be derived In order to satisfy the obligations under TRIPs Asian countries

have adopted different approaches. For all the Asian countries GIs protection is a new

271The Trademark Ordinance 2001, Pakistan, Entry 5 (2) o f Schedule 1, See Appendix 1
272 The Trademark Ordinance 2001, Pakistan, Entry 6 (2) of Schedule 2, See Appendix 2
273 The Trademark Ordinance 2001, Pakistan, Entry 13 of Schedule I and Entry 15 of Schedule II, See
Appendix 1 and 2
274 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development ^CTSD) .p:28

84
initiative. It is evident from the facts that for foreign GIs owner the remedies are

available in the form of passing off in order to prevent the abuse of GIs even before

TRIPs. Other remedies like passing off, certification mark and collective mark

registration are available as an alternative way of protection GIs for the panies in all

the Asian countries. The most important point derived in the context of TRIPs

agreement is that if the GIs are protected in domestic laws then there is a possibility to

seek protection in the foreign countries.

It becomes clear to us from the analysis of laws regarding Geographical Indications of

various countries that all the countries going into the support of the fact that “human

contribution” is one of the main factors to recognize the GIs protection. It clearly

shows from the study that no law expressly links the GIs with TK.

Legal measures and the status of a legally protected category will of course become a

cause of the many beneficial impacts like improved sbcio'economic conditions such as

improvement in the quality of life, educational standards economic stabiHty, social

responsibility and many other related conditions for the group (people engaged in the

production of the products using Geographical Indications).

By promoting exports and capture a foreign market gives an opportunity for the
expansion of trade which would surely add to the development of the communities at

the same time this fact demands extension of tJie GIs protection equal to that of wine

and spirits to other products. In the laws of China and Pakistan no separate conditions

are maintained regarding special requirements for Geographical Indications. It is

85
required that if this could be added in the law then this system could actively protect

Geographical Indications.

In short, it is clear that aU the Asian Countries provide protection which is prescribed

by the TRIPS for wine and spirit to all the categories of products. The products of all

these countries not only have a domestic market but also have an export market as

well.

86
 CHAPTER: IV
GEOGRAPHICAL INDICATIONS IN PAKAKISTAN

4.1 Historical background of Geographical ladications in Indo - Pak

Pakistan and India realized the need or importance of protection of Geographical

Indications when the case of Basmati Rice came on screen. In this case the US patent

office issued in 1997 a patent for new three strains of rice. ‘These strains could be sold

under the name ''Basmati'', referring to a particular form of rice - long-grained,

aromatic, and associated with the plains of Punjab. In 1998 the US Rice Federation

submitted that the term ''Basm ati'' was generic and referred to a specific type of

aromatic rice\ In order to prevent the US grown rice from being advertised and sold

by the name of Basmati US and Indian civil society organizations filed a petition and

in May 2001 the US Department of Agriculture and the US Federal Trade

Commission rejected the petition. Neither considered that the labeling of rice as

""American-grown Basm ati" was misleading, and deemed "Basm ati" to be a generic term.

After the protest of India and Pakistan against the use the name ""Basmati", the US

patent office disallowed the patent holder from using the generic name ‘"Basmati'^^.

In Pakistan, an appHcation for a GI on Basmati protected as a collective

trademark under Section 82 of the Trade Mark Ordinance 2001 has been filed on

275 “Summary of the presentation ,Link between Geographical Indications and Traditional
Knowledge”, O ’Connor and Company European lawyers.p:2

87
December 2005, in the form of regulation. The objective of the legal protection is to

protect the economic prosperity of the Basmati farmers and to fecilitate the action

against infringement

4.2 Geographical Indications in Pakistan

Pakistan provides protection of Geographical Indications under the trademark

law in the form of collective marks or certification marks. The definition of GIs of

Pakistan^ is in conformity with TRIPS. The Trademark Ordinance of Pakistan

defines goods broadly to include anything subject to trade, manufacture or

commerce^. It is interesting to note that unlike other Asian countries, in Pakistan the

GIs could designate goods and services. The general prohibitions applicable to the

registration of trademarks like marks contrary to public order, morality, misleading

the public etc, are also applicable in the case of registration of a GIs as collective or

certification be marked^. As in Pakistan^ prior uses of Geographical Indications is

276 Depline Marie-Vivien, “From Plant Variety Definition of Geographical Indication Protection: A
Search for the Link Between Basmati Rice and India/Pakistan”, The Journal of World Intellectual
Property (2008) Vol ll,N o .4 , 336
277 The Trademark Ordinance 2001, Pakistan, section 2: “Geographical indications, in relation to
goods originating in a particular country or in a region or locality of that country, means a mark
recognized in that country as a mark indicating that the goods- (a) originated in that country, region or
locality; and (b) have a quality, reputation o r other characteristic attributable to their geographical
region”.
278 Section 2(i) read: "goods" means anything which is subject of trade, commerce or manufacture”.
279 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”, Exploring the Relationship between Geographical
Indications and Traditional Knowledge, August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD).p:24
280 The Trademark Ordinance 2001, Pakistan, Entry 3 (2) of Schedule I &II The proprietor o f such a
mark shall not be entitled to prohibit the use of the marks or indications in accordance with honest

88
protected, which are registered as a trademark, collective mark or certification mark as

the case may be. From this it can be derived that the remedies of passing off are

available for unregistered Geographical Indications

4.3 Problems r^arding Geographical Indications’ recognition in

Pakistan

In Pakistan, there are three different ways in which one could protect GIs. The first

option is that GIs designating goods or services could be registered as trademarks if

they have acquired distinctiveness prior to the application for registration^^. It also

permits GIs to be registered as collective, or certification m a r k s T h u s the owner of

the GI has three options. It is not clear why such options are created. It appears that

this may result in confusion when the law is put into practice^.

4.4 Pakistan’s situation regarding Geographical Indications

GIs receive some protection in the Pakistan Trademark Ordinance 2001, which

has’been promulgated and enforced. A draft Ordinance on GIs of Goods (Registration'

practices in industrial or commercial matters, in particular, by a pereon who is entitled to use a

geographical name.
281 N.S. Gopalakrishnan, Prabha S. Nair & Aravind K* Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”, Exploring the Relationship between Geographical
Indications and Traditional Knowledge, August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the Internationa! Centre for Trade and Sustainable
Development (ICTSD) .p:24
282 The Trademark Ordinance 2001, Pakistan, section. 14.
283 The Trademark Ordinance 2001, Pakistan, Schedule I & II, See Appendix 1 and 2
284N.S. Gopalakrishnan, Prabha S. Nair & Aravind K. Babu, “An Analysis of the Legal Tools for the
Protection of Geographical Indications in Asia”,Exploring the Relationship between Geographical
Indications and Traditional Knowledge August 2007 Intellectual Property Rights and Sustainable
Development. A Study Commissioned by the International Centre for Trade and Sustainable
Development (ICTSD),p:28

89
and Protection) has not yet been promulgated^^. It becomes clear that well protected

Geographical Indications have the potential of ,socioeconomic benefits. The role of

GIs in the socioeconomic development needs effective protection of Gl-product

because through this effective protection we can protect the rights of the community

involved in its production from copying, free riding or usurpation. GIs regarded as a

tool for rural development because indirectly it plays a very significant role in the

reduction of poverty and increases the inflow of cash income. The importance and

commercial value of GIs the legal protection of GI assumes enormous significance.

Without such protection the unfair business practices like competitors not having

legitimate right on a GI might ride free on its reputation can’t be controlled. “In order

to rule out its misuse and to tap the potential economic and socio-economic benefits

emanating from this IP, it is essential to ensure an appropriate legal protection for GIs

at the national as well as the international level” ^ .

4.5 Steps of the Process of Gec^raphical Indication Recognition

Importantly, more extensive protection is envisioned in the draft legislation for

GIs, Geographical Indications of Goods (Registration and Protection), which awaits

approval and enactment. Interestingly, there are media reports concerning Pakistan’s

285 “Geograpliical Indications as Trade-related intellectual property; Relevance and implications for
human development in Asia-Pacific”Discussion Paper, “Geographical Indications as Trade-related
intellectual property” Asia-Pacific Trade and Investment Initiative UNDP Regional Centre in
Colombo: January 2007P:24
286 Kasturi Das, “Socioeconomic Implications of Protecting Geographical Indications in India” August
2009

90
effort to get US support in protecting 100 GIs through a special treaty (Ahmed,

2003)"^.

4.6 Scope of the Geographical Indications in Pakistan being an

agricultural cou n try and its implication for benefits

GIs have a high potential of increasing the reputation of a product, which has many

benefits:

An economical value for producers

■JL

• Higher quality leads to h ^ e r benefits

• Better identification in the market tends toincrease consumer attraction

• No high cost for producers

More benefits for producers

• Administration certifies production and guarantees good quality

• Producers association and goes in the same way altogether

• They get advice and support from the regulatory body experts Multi sectional

benefits, such as:

-.i

• Development of rural areas and a stronger implicationwith a specific territory

■ Environmental issues: protecting the land

• Promoting stronger links between people and the region'.288

287 Dr, Dwijen RANGNEKAR; “The International Protection of Geographical Indications: The Asian
Experience", CSGR and the Law School, U niversity of W arwick UNCTAD / ICTSD Regional
Dialogue “Intellectual Property Rights (IPRs), Innovation and Sustainable Development” 8 - 1 0
November; Hoag Kong, SAR, People’s Republic of China.

91
For all the above mentioned benefits need strong legal protection and detailed

institutional framework. While recent empirical studies su re st that the protection of

Geographical Indications (GIs) for specialty agricultural products can potentially

benefit the rural economy, the system remains relatively under-utilized by the

majority of countries.^

The case of Basmati rice has prompted the Pakistani Government to undertake a

serious evaluation of the need to provide enhanced protection for national products,

especially agricultural produce and cultural heritage. Agriculture remains a major

economic activity in Pakistan. The region produces many high quality agricultural

product, fruits and vegetables. Because of their good quality and reputation however,

some of these products are subject to extensive counterfeiting. Their well known

names are also being used illegally to market products of lesser quality. This remains a

big problem. . It is therefore necessary to e?qplore ways in which it may be solved, so

that producers can reap the benefits of their high quality produce.^

GIs also highlight qualities of a product which are due to

human factors associated ^with the place of origin of the
products, such as specific manufacturing skiUs and traditions
for example Handicraft Of Hala (Sind), similarly Knives
manufactured in Wazirabad (Punjab) and very recently a
workshop was held on a kind of a embroidery named as

288Dora de Teresa, “Regional Protection of GIs in Europe”, E.U ASEAN workshop on geographical
indications: a way into the market, Hanoi, 7-8 October 2003
289 G. E. Evans, “ The Comparative Advantages of Geographical Indications and Com m unity
Trademarks for the Marketing of Agricultural Products in the European U nion”
290 Victor Mosoti, “international mechanisms for the Protection of local Agricultural brands in Central
and eastern Europe” August 2006

92 i
 Phulwari in Lahore Pakistan introduced by three sisters called
now Batool Sisters, which is originated from the region of
Multan etc. That place of origin may be a village or town, a
region or a country

In Pakistan variety of products are widely considered as potential candidates

for protection: Peshawari Chappal, Kashmiree Shawls, Multani Sohan Halwa and

Nehari (Khursheedkhan, 2001).^

4.7 Whedier the Developments in Pakistan regarding the Geographical

Indications are sufficient:

In Pakistan the legislation on Geographical Indications protection is in the infancy

stage. Developments in Pakistan regarding the Geographical Indications are not

sufficient. Legal protection will allow producers of Pakistan to enjoy more benefits

accruing from the protection as such products will be relatively more competitive in

the global market. And at the same time they may contribute to the Pakistan’s

economy in other words it will be able to generate income for the country when the

relevant producers obtain a better rate of returns. In the meantime, consumers will be

better off than previously since they would have more choices of products with high

and distinctive quality. Resultandy they wiU not be easily misled as far as the true

origins or indications of such products are concerned. Another supporting argument

291 Shazia Tasleem & Co, “Geographical Indications - IP in Pakistan” Ju ly 12, 2008
292 Dr. Dwijen Rangnekar; “The International Protection of Geographical Indications: The Asian
Experience”, CSGR and the Law School, U niversity of W arwick UNCTAD / ICTSD Regional
Dialogue “Intellectual Property Rights (IPRs), Innovation and Sustainable Development” 8 - 1 0
November; Hor^ Kong, SAR, People’s Republic of China.

93
for providing a legal protection is that in international level Pakistan is the member of

the group who support and demand the extension of the scope of TRIPs additional

protection for products other than wines and spirits. So convinced of economic and

social benefit as well as great trade potential inherent in Geographical Indications, it is

the responsibility of Pakistan which has most of her interests on agricultural products,

should consider her position, to legislate a law and "take developmental steps on the

priority basis. Otherwise the objective of Pakistan to improve economy and

developments in a rural area will not be attained.

4.8 How can Pakistan use the IP Tools to advance their development
strategy? Comparison with International Developments

In the flow of the ever-changing globalized environments, it is a coimtry policy to

support the developments and e^ o rts of Pakistani goods using indigenous knowledge

and intellects and to foster the development of Pakistani intellectual properties while

utilizing the abundant domestic raw material.

I I ■ ■

Like other developing countries, Pakistan has to consider that two fundamental

principles, natural resource and traditional knowledge, can be helpful to support the

development of grass root economy. In this regard the Geographical Indications,

therefore, are going to play an important role as, if properly used they can become an

effective marketing tool of great economic value. It is generally accepted that

293 Suraphol Jaovisidha, “Protection of Geographical Indications - “Thailand’s Perspective” Prepared

for the EU-ASEAN Workshop on Geographical Indication: A w ay into the market Hanoi, 7 - 8
October 2003

94
Geographical Indications are not only beneficial for the producers but also for the

consumers by protecting them from deceptions. From the consumer’s point of view,

GI gives them certain expectation as to the characteristics of the product. From the

perspective of the producers, as GI high light quality and unique characteristic of

products, the products bearing a Geographical Indication implies that certain

standards have been met.^At the same time Geographical indications supports the

products and increase its price in the market than a product without any indication.

In particular, geographical indications may be used to enhance

the commercial value of natural, traditional and craft products
of all kinds if their particular characteristics may be attributed
to their geographical origin. A number of products that come
from various regions are the result of traditional knowledge
and processes implemented by one or more communities in a
given region.
The special characteristics of those products are appreciated by
the public, and may be symbolized by the indication of the
source used to identify the products. Better exploitation and
promotion of geographical indications would make it possible
to afford better proteaion for the economic interests of the
local communities and to preserve our traditional
knowledge.^^ . . ,

Some of Pakistani products are internationally well known but most are not. In this

regard it is the responsibility of the Pakistani Government to launch different projects

for the Pakistani product of the local commodities so that they register some market

294 Suraphol Jaovisidha, “Protection of Geographical Indications - “Thailand’s Perspective” Prepared

for the EU-ASEAN Workshop on Geographical Indication: A w ay into the market Hanoi, 7 - 8
October 2003
295 Ibid

95
shares domestically and, if possible, as ejqports. Pakistan has the potential to develop

some of its national products to be qualified for Geographical Indication protection.

After accepting the importance of .^Geographical Indications, like many other

developing countries, Pakistan should consider their position to support the extension

of the scope of TRIPs additional protection to products other than wines and spirits.^

Pakistani products which could be considered as Geographical Indications products,

for example, “Kashmir Shawls, Multani Sohan Halwa, Nehari, Kinuo (oranges) albeit

the need of relevant future research to establish a link between products and the place.

In this respect, it is also important to note that the degree to which Geographical

Indication protection would be beneficial for a country depends on how well prepared

a country is to adapt itself to this new genre of intellectual property.^

In this regard this would require coordination and sustained efforts from both

government and the private sector. The first task here is to develop products with

higher standards to meet the market demand arid to have an appropriate legal regime

298
and the public sphere of the protection of Geographical Indication.

296 Ibid
297 Suraphol Jaovisidha, “Protection of Geographical Indications - “Thailand’s Perspective” Prepared
for the EU-ASEAN Workshop on Geographical Indication: A w ay into the market Hanoi, 7 - 8
October 2003
298 Ibid

96
 Concliision and Recdmmendations
Conclusion

On the world screen Geographical Indications emerged as an important area in

Intellectual Property Right regime. An empirical study shows that awareness and

interest in developing countries has also increased. The main objective of the

protection of Geographical Indications in International and national level is to

facilitate the international trade and to protect the interest of the consumers for

deception. Special protection given to wine and spirit on international level is the clear

example in this respect.

The utility of Geographical Indications in the rural development is immensely

tremendous. In Asian countries it has been established that survival of a large number

of village communities depends on the income generating from marketing their

products \3smg Geographical Indications. After getting the analysis of the legal

framework of the Asian countries, it becomes obviously clear that the products using

geographical indications from Asian countries are not wine and spirit but they mosdy

relate to the textiles, agriculture, and handicrafts.

Although, there are no minimum strict standards laid down in the TRIPS, the

countries have adopted different modes according to their domestic legislations. Other

countries which have no adequate laws in their national legislations, they adopt the

existing international GIs standards for the protection of their products.

97
After analyzing the interaational and national law, the main objective that comes

forward is the protection given to the consumers. The main products of the Western

countries are wines and spirits, and much protection has been given to these products

in the laws. South Asian countries demand an equivalent protection to their products

as their products is related to agriculture, handicrafts and textile.

The growing need and importance of Geographical Indications reflects that it would

be beneficial to widen the scope of Geographical Indications and apart from

agricultural products other industrial goods must be included in the cover of

Geographical Indications. In this regard it is the responsibility of aU the members of

WTO to work for the effective protection of Geographical Indications because there is

a great need to establish a comprehensive mechanism for reducing the unfair practices

or false use of Geographical Indications.

Chapter 1 provided the background and the basic concept of Geographical Indications

in the light of various legal international mechanisms. In International level Paris

Convention (1883) —false indication, Madrid Agreement (1891) —false and deceptive

indication, Lisbon Agreement (1958) —define appellation of origin, TRIPS Agreement

(1994) are available for the protection of Geographical Indications. This chapter also

highlights the need and importance of Geographical Indications and basic differences

between Trademarks and Geographical Indications. From the existing studies two

main objectives come forward for the protection of Geographical Indications: one is to

98
protect the good will of the producers and second is to protect the interest of the

consumers from deception.

Chapter 2 added the beneficial impact of Geographical Indications and the role of

Geographical Indications in the rur^ development. Several studies have shown that

Geographical Indications have an important role to play for the betterment of the

communities. Article 22 of the TRIPS contains the definition and general standards for

GIs protection and gives the free hand to the member states to implement the legal

means to protect their GIs. Article 23 of TRIPS provides additional protection for

wine and spirits. We find that TRIT^ provides same definition for all geographical

indications without considering the categories of products, but provides two levels of

protection of article 22 basic protections available for all GIs in general and in article

23 additional protections are provided for wine and spirits. There is no strong reason

or logic which could justify this discriminatory treatriient.

So many countries want to utilize the GIs as beneficial tool arid demand for extension

of the protection available for GIs for all the products equal to the protection

mandated by TRIPS for wines and spirits.

Chapter 3 set out the comparative analysis of the legal tools available for the

protection of Geographical Indications in Asian countries. Majority of the Asian

countries that realize the importance^ of Geographical indications, by utilizing the

available possibilities under the TRIPS Asian countries are providing effective and

higher forms of protections for all the products which the TRIPS provides only for

99
wine and spirits. In order to maintain the reputation of their Geographical Indications

and to facilitate the international trade adequate and effective provisions have been

included in their laws to achieve the advantages of GIs for their communities.

Chapter 4 articulated the position of Pakistan regarding Geographical Indications. As

quoted earlier that Pakistan does not have a sui generis system of GI protection yet. In
f
Pakistan the protection is available for Geographical Indications under the country’s

Trade Marks Ordinance, 2001 and the Trade Marks Rules, 2004. The protection

through Collective Marks and Certification Marks in Pakistan is not adequate because

there is a deficiency which becomes the cause of misuse of Geographical Indications

such as in this law in of Pakistan no separate conditions regarding requirements for

Geographical Indications are mentioned. Non-serious attitude of Government of

Pakistan towards the law making process regarding Geographical Indications

protection causing massive damage to the socio-economic development of Pakistan.

Insufficient Government action regarding Geographical Indications is the main hurdle

in the rural development in Pakistan because in the rural areas most of the people

generating their income from marketing their traditional handicrafts, agricultural

products, textile products etc. There is an urgent and great need that Government

should take serious legislative measure regarding Geographical Indications protection.

100
Recommendations

This final section of the thesis concludes with the recommendations.

It is established that Pakistan indeed has products which could potentially benefit

from Geographical Indications protection. As discussed in chapter II that proper and

successful valorisation of the products through the use of Geographical Indications

could lead to improve the value of the product in the market and helps the producer

to earn a premium. However due to absence of the separate law for the protection of

Geographical Indications and the lack of institutional framework within which to

valorise these products are the basic hurdles due to these hurdles the Geographical

Indications which is regarded as an important rural development tool is not being

utiHzed. Along with that the producers lose valuable intellectual property in their

products.

Importandy traditional products represent the culture and traditions of the people.

Old skills and traditional processes of making goods which have survived and

developed are the backbone of our cottage industry. It is established that Pakistani

Handicrafts have the foreign market and become a profitable trade. So Geographical

Indications law should be made with the objective of promoting goods bearing

Geographical Indications in the export market

101
To protect the Geographical Indications domestically it is recommended for the

Pakistani Government to provide for the development of an institutional framework.

This could be done only by way of sui generis system for the protection of

Geographical Indications and should not be limited to the protection under the

existing Trade Marks system. .

As we have seen that India has the strong institutional arrangement for the protection

of Geographical Indication in the chapter IE under the heading of “The Asian legal

framework: a comparative analysis”. There is a great need for serious attempts to

capture a foreign market for Pakistani products one of the priorities, necessaiy to

improve the quality of life of people in rural areas of Pakistan,

As Pakistan is an agricultural state, our economy depends to a large extent on the

contribution of agriculture; strong laws regarding Geographical Indications dealing

with the protection of agricultural products are the dire need of the time; until and

unless agricultural products are not protected our producer can’t compete in the

international market. Strong national legislation is required on urgent basis.

To be most effective. Geographical Indications require investment in local

management structures and participatory methods in order to form a strong legal

system for protection. In this respect recommendations are divided in to following

three categories.

A. Legislative measures for the protection of Geographical Indications in Pakistan

B. Promote awareness of the GI for Pakistani products ^

102
 C. Action Plan Strategy

A. Legislative measures for the protection of Geographical Indications

' in Pakistan

While drafting a law for the protection of Geographical Indications, it must be

considered that it is in full compliance with the TRIPS. Equal protection must be

given to all kinds of goods or products such as Agricultural, Industrial goods and

Handicrafts. It is essential that participatory approach is to foUow in order to discuss

the policy goals and to provide for appropriate measures at local level. Institutional

Arrangement for the administration of GIs is required. In order to obtain valuable

advantages and the promotion of Geographical Indications in Pakistan following steps

is necessary in this regard.

I. Set up an appropriate, efficient and strong legal framework,

n. Control and monitoring wing,

m. Rules for quaUty control system.

rV. Select products deserving GI protection.

I. Set up an appropriate, efficient and strong legal framework.

In order to achieve social and economic benefits, Pakistani government to have a

strong Geographical Indications policy. For the administration of Geographical

Indications protection a detailed institutional framework is required through which

103
the value of the Pakistani products can be increased. It is recommended that Pakistan

government take into consideration the potential of the Geographical lndications and

use it properly to improve the rural development and there is great need to protect the

national assets from foreign appropriation:

Firstly it is required to draft a GIs Ordinance having following su^ested rules and

regulations.

(a) Geographical Indications Board.

For administration of GIs it is recommended that setting up a Geographical

indications wing for the establishment of the “Geographical Indications Board” for the

enforcement and implementation of the GI system. It is proposed that as a strong

regulatory authority the Board may consists of the Secretary Ministry of Industry

could be the Board Chair Person and the Registrar Department of Patent, Design and

Trademark, should be the Board Member. And the representatives of the Government

and public organizations.

(b) System of Registration.

Registration affords better legal protection to facilitate an action for Infringement.

The authorized users can exercise the exclusive right to use the Geographical

Indication. In the light of this establish a system of registration and notification for all

the products bearing Geographical Indications. It is recommended that registration

register must contain two parts. Part A should be reserved for the registration of

Geographical Indications products with their specifications and qualities. And part B

104
should be reserved for the particulars of authorized users. In this registration system

the other related issues of registration such as Cost of registration, application, notice

of opposition, extension of time, certificate, amendments of registration, revocation of

registration; Cost of litigation, opposition, appeal. It will depend on the complexity of

the case; Time frame for registration and protection should be set.

IL Control and monitoring wing.

Firstly in order to obtain socio-economic benefits in the rural area of Pakistan it is

suggested that to establish a control and monitoring wing with the responsibilities to

control and monitor the whole supply chain of the products. Because these benefits

are not evenly distributed among aU the stakeholders like a high price demanded on

the account of Geographical Indications protection such price becomes remains in the

hands of the powerful participants of the upper stream of the supply chain and

providing no benefits to the weaker section of the chain and this point destroys the

development implications of Geographical Indications protection.

Secondly to monitor the Organization of the prodiicers in a collective smictiire (GI

societies), there has to be organization of producers. Most are weak as institutions.

This needs to be strengthened. For minimizing the conflicts between growers or

producers with respect to the membership of a particular association for a product.

Because for the registration of GIs it is one of the conditions ‘that the producers

should be organised as the same legal person. This condition plays a vital role in the

105
 ‘information sharing, education and training in a cooperative manner to strengthen

learning effects regarding quality of the product.

nL Rules for quality control system.

The method of quality control system should be incorporated as a prerequisite in the

legislation for the protection of Geographical Indications. In this context as we have

seen in chapter EQ under the heading of “The I^gal Mechanisms for Quality Control”

that the EC Regulations on the protection of Geographical Indications (on agricultural

products and foodstuffs) is the best example (Council Regulation (EC) No. 510/2006)

according to Article 4 of the Regulation to claim protection it is necessary that

^ product specifically contain quality.

It is recommended that to establish of Research wing for Quality control with proper

rules for quality control system. Experts in research wing must conduct regularly

quality evaluation meetings. Because the most important thing is to continuously

strengthen quaUty management. GIs should fail unless appropriate quaHty control is

guaranteed. Therefore it is required to inaking efforts to enhance the quality and to

keep the quality standardized.

IV. Select products deserving GI protection.

It is suggested that to draw up a Pakistani database of local products based on local

traditions. This would provide a policy makers a clear indication of what stands to be

lost if protection is not provided.

106
 B. Promote awareness of the GI for Pakistani products

Best possible efforts should be made to sensitize and establish a committee with the

responsibility to arrange or conduct a nationwide campaign for the creation of

awareness among the various stakeholders of Handicrafts and Textile sectors on the

advantages or benefits of Geographical Indications. The committee should identify

potential of the products and facilitates Geographical Indications registrations of the

products. As Pakistan is a country rich in culture and Handicrafts is also the part of

the cultural heritage of the country.

C. Action Plan Strategy

Pakistan needs to develop strong Strategic plan, a successful GI can’t be obtained

without a consistent focus and an explicit sequence of agreed steps. Developing a plan

helps to determine the choice of structures and standards at the origin level.

Strategy I:

A t the first stage it is su^ested that Government should made a plan for properly

Implementation and enforcement of the new law and regulations for the smooth

running of Geographical Indication wing for the administration of Geographical

Indications system which includes registration process and quality control mechanism.

Strategy U:

Another important factor that influence the success of Geographical Indication is

strong organizational and institutional structure. Institutional Strengthening Capacity

107
building and inter-institutional coordination, feasibility studies for specific products

by assessing the economic, social and technical Interest for protection under the GL

Strategy HI:

The creation and training of the public and private agencies, and association involved

in GI issue, on-line access should be provided for all kinds of information relating to

Geographical Indications.

A promotional policy will not succeed if the product is not differentiated, poorly

defined or inadequately controlled.

108
 APPENDIX: 1

COLLECTIVE MARKS

FIRST SCHEDULE

TRADE MARKS ORDINANCE 2001

General

The provisions of this Ordinance shall apply to collective marks subject to

the provisions contained in this Schedule.

Signs of which a collective mark may consist

In relation to a collective mark the reference in clause (xlvii) of section 2 ^ to

distinguish goods or services of one undertaking form those of other undertaking

shall be construed as a reference to distinguishing goods or services of members

of theassociation which is the proprietor of the mark from those of other

undertakings.

Indication of geographical or^in

(1) Notwithstanding the provisions of clause (c) of sub-section

(1) of section 14^, a collective mark may be registered which

299 Section 2 (xlvii) of Trade Marks Ordinance 2001

In this Ordinance, unless there is anything repugnantin the subject or context.
[...... ]
(xlvii) "trade mark" means any mark capable of being represented graphically which is capable of
distinguishing goods or services of one undertaking from those of other undertakings;
300 Section 14(1)(c) of Trade Marks Ordinance 2001
Absolute grounds for refusal of registration
(1) The following shell not be registered, namely;
[........ ]
109
 consist of marks or indications which may serve, to distinguish

the geographical or^in of the goods or services.

(2) The proprietor of such a mark shall not be entided to

prohibit the use of the marks or indications in accordance with

honest practices in industrial or commercial matters, in

particular, by a person who is entided to use a geographical

name.

4. Collective mark not to be misleading as to character or significance

(1) A collective mark shall not be registered if the public is liable

to be misleading as regards the character or significance of the

mark, in particular, if it is likely to be taken to be something

other than a collective mark.

(2) The Registrar may accordingly require that a mark in respect

of which application is made for registration include some

indication that it is a collective mark.

(c) trade marks which consist exclusively of marks or indications which m ay serve, in trade, to
designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of
production of goods or of rendering of services, or other characteristics of goods or services

110
 (3) Notwithstanding the provisions of sub*section {/) of section

an application may be amended so as to comply with any

such requirement.

5. Reg^lations govemii^ use of collective mark

(1) A n ^plication for registration of a collective mark may be

filed with the Registrar along with regulations governing the use

of the mark.

(2) The regulations referred to in sub-Para (1) shall specify the

persons authorized to use the mark, the conditions of

membership of 'the association and, where they exist, the

conditions of the use of the mark, including any sanctions

against misuse.

(3) Any further requirement with which the regulations referred

to in sub-Para (1) shall have xo comply .may be imposed as may

be prescribed.

301 Section 27 (7) of Trade Marks Ordinance 2001

If the tribunal is of opinion that it is fair and reasonable in all the circumstances of the case to do so,
may at any time, whether before or after acceptance, correct any error in, or in connection with, the
application or may permit the applicant to amend his application upon such terms as it may think fit;
Provided that no amendment or correction shall be permitted in the application which substantially
affects the identity of the trade mar or extends the goods or services covered by the application;
Provided further^that if the amendment or correction in the application is permitted after the
application has been advertised, the amendment or correction shall also be published.

I ll
6. Approval of regulations by the Registrar

(1) A collective mark shall not be registered unless the

regulations governing the use of the mark- (a) comply with the

requirements of Para (2) of Para 5 and any further requirement

as may be prescribed; and (b) are not contrary to public policy

or to accepted principles of morality.

(2) Before the end of the prescribed period after the date of the

publication for registration of a collective mark, the applicant

f shall file the regulations with the Registrar and pay the

prescribed fee failing which the application shall be deemed to

have been withdrawn.

7. Procedure of acceptance or refusal of applications

(1) The Registrar shall consider whether the requirements

specified in sub-Para (1) of Para 6 are duly met.

(2) If it appears to the Registrar that such requirements are not

met, he shall inform the applicant and give him an opportunity,

within such period as the Registrar may specify, to make

representation or to file amended regulations.

(3) If the applicant fails to satisfy the Registrar that such

requirements are met, or to file regulations amended so as to

112
 meet them, or fails to respond before the end of die specified

period, the Registrar shall refuse the application.

(4) If it appears to the Registrar that such requirements, and the

other requirements for registration, are met he shall accept the

applications and shall proceed in accordance with section 28^;

302 Section 28 of Trade Marks Ordinance 2001

Publication, opposition proceedings and observations.
(1) When an application for registration of a trade mark has been accepted, whether absolutely or
subject to conditions or limitations, the Register shall, as soon as m aybe after acceptance, cause
the application as accepted, together with the conditions and limitations, if any, subject to
which it has been accepted, to be advertised in the Journal, and for all legal purposes,
advertisement of the trade mark in the Journal shall constitute sufficient notice of acceptance of
the trade mark;
Provided that the Registrar m ay cause an application to be advertised before acceptance where
it appears to him that it is expedient by reason of any exceptional circumstances so to do, and
where an application has been so advertised the Registrar may, if he thinks fit. advertise it again
when it has been accepted, but shall not be bound so to do;
Provided further that where an application is advertised by reason of any special circumstances
under the above proviso, the Registrar shall simiiltaneously notify the exceptional
circimistances which led him so to do.
(2) Any person may, within two months from the date of the advertisement or readvertisement of
an application for registration or within such further period not exceeding two months in the
aggregate, as the Registrar, on application made to him in the prescribed manner and on
payment of the prescribed fee, may allow, give notice to the Registrar of opposition to the
registration.
(3) The notice under subjection (2) shall be given in writing in the prescribed manner, and shall
include a statement of the grounds of opposition.
(4) The Registrar shall serve in the prescribed manner a copy of the notice on the applicant, and
within one month from the applicant of such copy of the notice of opposition, or within such
further period not exceeding two months in the aggregate, as the Registrar, on application
made to him in the prescribed manner and on payment of the prescribed fee. may allow, the
applicant shall send to the Registrar in the prescribed manner a counter-statement of the
grounds on which He relies for his application, and, if he does not do so he shall be deemed to
have abandoned his application.

(5) If the applicant sends the counter-statement referred to in sub-section (4) .the Registrar shall
serve in the prescribed manner a copy of the coimter-statement on the opponenL If the
opponent deems necessary, he may within one month from the receipt of such copy of the

113
8. Regulation tx>be published

(1) The regulations governing the use of a collective mark shall

be publisheH and notice of oppositions may be given, and

observation may be made, relation to the matters specified in

sub-para (1) of para 6.

(2) The provisions of sub-para (1) shall be in addition to any

other grounds on which the application may be opposed or

observations made.

9. Regulations to be open to inspection

The regulations governing the use of a registered collective mark

shall be open to public inspection in the same way as the

Register.

counter-statement, or within such further period not exceeding two months in the aggregate, as
the Registrar, bn application made to him in the prescribed manner and 6n payment of the
prescribed fee, may allow, send to the Registrar in the prescribed manner a rejoinder.
(6) If the opponent sends a rejoinder, the Registrar shall send in the prescribed manner a copy of
the rejoinder to the applicant,
(7) Any evidence upon which the opponent and the applicant may rely shall be submitted in the
prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give
an opportunity to them to be heard, if they so desire.
(8) The Registrar shall, unless the proceedings are discontinued or dismissed, after giving to the
opponent and to the applicant an opportunity of being heard, decide whether, and subject to
what conditions or limitations, if any, registration is to be permitted.
(9) If the Registrar is of opinion that it is fair and reasonable in all circumstances of the case to do
so, he may, on request made in the prescribed manner, permit correction of any error in, or
any amendment of, a notice of opposition, a counter^tatement, or a rejoinder on such terms as
he thinks just.

114
10. Amendment of regulations

(1) An amendment of the regulations governing the use of a

registered collective mark shall not be effective unless and until

the amended regulations are filed with the Registrar and accepted

by him.

(2) Before accepting any amended regulations the Registrar may,

in any case where it appears to him expedient to do so, cause

them to be published.

(3) If the Registrar does so, a notice of opposition may be give,

and observations may be made, relating to the matters specified

in sub-para (1) of para 6.

11. Infringement of rights of authorized user

The following provisions shall apply in relation to an

authorized user of a registered collective mark as in relation to a

licensee of a trade mark, namely:-

(a) Sub-section (7) of section 40“^;

(b) Sub-section (2) of section 51^; and

303 Section 40 (7) of Trade Marks Ordinance 2001

A person who applies a registered trade mark to material intended to be used for labeling or packaging
goods shall be treated as a party to any use of the material which infringes the registered trade mark if
when he applied the m ark he knew or had reason to believe that the application of the mark was not
duly authorised by the proprietor or a licensee.
304 Section 51 (2) of Trade Marks Ordinance 2001

115
 (c) Section 53^^.

12 Infringement of a registered colkctive mark

(1) The provisions of this para shall have effect as regards the

rights of an authorized user in relation to infringement of a

registered collective mark.

(2) An authorized user shall be entided, subject to any agreement

to the contrary between him and the proprietor, to call on the

proprietor to take infringement proceedings in respect of any

matter which affect his interests.

(3) If the proprietor- (a) refuses to do so; or (b) fails to do so

within two months after being called upon, the authorized user

may bring the proceedings in his own name as if he were the

proprietor.

In considering what order, if any should be made, the High Court or District Court shall consider
whether other remedies available in a action for infringement of the registered trade mark would be
adequate to compensate the proprietor and any licensee and protect their interests.
305 Section 53 of Trade Marks Ordinance 2001
Infringing goods, material or articles may be treated as prohibited.-
(1) The proprietor of the registered trade mark may give notice in writing to the Collector of
Customs that
(a) he is the proprietor of the registered trade mark;
(b) at a time and place specified in the notice, goods which, in relation to that registered
trade mark are infringing goods, material or article, or bear false indications as to their
source or the identity of their manufacture are expected to arrive in Pakistan from
outside Pakistan and that they are subject to the control of the customs authorities
under the Customs Act, 1969 (IV of 1969): and
(c) He requests the Collector of Customs to treat such goods as prohibited goods.

116
(4) Where infringement proceedings are brought under this para,

the authorized user may not, without the leave of the High

Court, proceed with the action unless the proprietor is either

joined as a plaintiff or added as a defendant.

(5) The provisions of para (4) shall npt affect the grating of

interlocutory relief on an application by an authorized user

alone.

(6) A proprietor who is added as a defendant as provided in sub-

para (4) shall not be made liable for any costs in the action unless

he takes part in the proceedings.

(7) In infringement proceedings brought by the proprietor of a

registered collective mark, any loss suffered or likely to be

suffered by authorised user shall be taken into account, and the

High Court or a District Court may give such directions as it

"thinks fit as to the extent to which the plaintiff shall hold the

proceeds of any pecuniary remedy, on behalf of such users.

117
13.Additional grounds for revocation of registration

Apart from the grounds of revocation provided for in section

73^, the registration of a collective mark may be revoked on

306 Section 73 of Trade Marks Ordinance 2001

Revocation of registration
(1) The registration of a trade mark may be revoked on'any of the following groimds, namely:-
(a) That within the period of five years following the date of compledon of registration
procedure it has not been put to bona fide use in Pakistan by the proprietor or by an
authorised user thereof, in relation to the goods or services for which it is registered
and there are no proper reasons for its non-use;
(b) That the bona fide use has been suspended for an uninterrupted period of five years
and there are no proper reasons for its non-use;
(c) That in consequence of acts or inactivity of the proprietor, it has become the common
name in the trade for a product or service for which it is registered; and (d) that in
consequence of the use made of it by the proprietor or with his consent in relation to
the goods or services for which it is registered, it is liable to mislead the public,
particularly as to the nature, quality or geographical origin of those goods or services.
(2) For the purpose of sub-section (1), use of a trade mark shall include use in a form differing in
elements which do not alter the distinctive character of the mark in the form in which it was
registered.
(3) The registration of a trade mark shall not be revoked on the grounds specified in clause (a) or (b) of
sub-section (1), if such use, as it referred to in those clauses, is commenced or resumed after the expiry
of the five years period and before the application for revocation is made, shall only be regarded if the
preparation for commencement or resumption began before the proprietor became aware that the
application is made.
(4) An application for revocation m ay be made by an interested party to the Registrar, except that
(a) If proceedings concerning the trade mark in question are pending in the High Court or a District
Court, the application shall be made to the High Court or, as the case m ay be, the District Court; and
(b) In case the application is made to the Registrar, he may at any stage of the proceedings refer the
application to the H igh Court or a District Court.
(5) Where grounds for revocation exist in respect of only some of the goods or services for which trade
mark is registered, revocation shall relate to those goods or services only.
(6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be
deemed to have ceased to that extent as from-
(a) The date of the application for revocation; or
(b) If the Registrar, the High Court or a District Court is satisfied that the grounds for revocation
existed at an earlier date, that date.

118
 any of tie following grounds, namely:- (a) that the manner in

which the mark has been used by the proprietor has caused it to

become liable to mislead the public in the manner referred to in

sub-para (1) of para 4; (b) that the proprietor has failed to

observe, or to secure the observance of, the regulations

governing the use of the mark; or (c) that an amendment of the

regulations governing the use of mark has been made so that

such regulations- (i) no longer comply with requirement of sub-

para (2) of para 5, and any further conditions as may prescribed;

or (ii) are contrary to public policy or to accepted principles of

morality.

14. Additional grounds for invalidity of registration

Apart from the grounds of invalidity provided for in section

80^^, the registration of a collective mark may be declared

(7) Where the registration of a trade mark is revoked or declared invalid on the ground that the
registration was secured in bad faith, the applicant shall be barred from applying for registration of the
identical or similar trade mark for two years form the date of revocation or invalidation, whatever the
case m ay be.
307 Section 80 of Trade Marks Ordinance 2001
Grounds for invalidity of registration.
(1) The registration of a trade m ark may be declared invalid on the groLind that the trade mark was
registered in breach of section 14 or any of the provisions thereof.
(2) Where the trade mark was registered in breach of clause (b), (c) or (d) of sub-section (1) of section 14,
it shall not be declared invalid if, in consequence of the use which has been made of it, it has after
registered acquired a distinctive character in relation to the goods or services for which it is registered.
(3) The registration of a trade mark m ay be declared invalid on the ground that there is- (a) an earlier
trade mark in relation to which the conditions set out in sub- section (1), (2) or (3) of section 17 obtain;

119
 invalid on the ground that the mark was registered in breach of

the provisions of sub-para (1) of para 4, or sub-para (1) of para 6.

or (b) an earlier right in relation to which the condition set out in sub-section (4) of section 17 is
satisfied, unless the proprietor of that earlier trade mark or other earlier right has consented to the
registration.
(4) An application for declaration of invalidity may be made by an interested party either to the
Registrar or to the High Court or a District Court, except that-
(a) If proceedings concerning the trade mark in question are pendir^ in the High Coun
or a District Court, the application shall be made to the High Court or a District
Court; and
(b) hi any other case, if the application has been made to the Registrar, he may at any
stage of the proceedings refer the application to the High Court or a District Court.
(5) In the case of bad faith in the registration of a trade mark, the Registrar may apply to the High
Court or a District C oun for a declaration of the invalidity of the registration.
(6) Where the grounds of invalidity exist in respect of only some of the goods or services for which the
trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.
(7) Where the registration of a trade mark has been declared invalid to any extent, the registration shall
to that extent be deemed never to have been made provided that this shall not affect the transactions
past and closed.

120
 APPENDIX; 2

CERTIFICATION MARKS

SECOND SHEDULE

TRADE MARKS ORDINANCE 2001

General

The provisions of this Ordinance shall apply to certification

marks subject to the provisions contained in this Schedule.

Signs of which certification mark niay consist

In relation to a certification mark the reference in clause (xlvii)

of section 2^ to distinguish goods or services of one undertaking

from those of other undertaking shall be construed as a reference

to distinguishing goods or services which are certified from those

which are not.

Indication of geographical origin

1) Notwithstanding the provisions of clause (c) of sub­

section (1) of section 14^, a certification mark may be registered

308 Section 2 (xlvii) of Trade Marks Ordinance 2001

In this Ordinance, unless there is anything repugnant in the subject or context.
[...... ]
(xlvii) "trade mark" means any mark capable of being represented graphically which is capable of
distinguishing goods or services of one undertaking from those of other undertakings;

309 Section 14(1)(c) of Trade Marks Ordinance 2001

Absolute grounds for refusal of registration

121
 which consist of signs or indications which may serve, in trade,

to designate the geographical origin of the goods or services.

2) The proprietor of such a mark shall not be entided to

prohibit the use of the signs or indications in accordance with

honest practices in industrial 'or commercial matters, in

particular, by a person who is entitled to use a geographical

name.

Nature of proprietor's business

A certification mark shall not be registered if the proprietor

carries on a business involving the supply of goods or services of

the kind certified.

Certification mark not to be misleading as to character or significance

1) A certifications mark shall not be registered if the public

is hable to be misled as regards the character or significance, of

the mark, in particular, if it is likely to be taken to be something

other than a certification mark.

(2) The following shell not be registered, namely;

[......... ]
(c) trade marks w hich consist exclvisively of marks or indications w hich may serve, in trade, to
designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of
production of goods or of rendering of services, or other characteristics of goods or services

122
 -(2) The Registrar may, accordingly, require that a mark in

respect o£ which application has been made for registration

include some indication that it is a certification mark.

(3) Notwithstanding the provisions of sub-section (7) of section

27^^°, an application may be amended so as to comply with any

such requirement.

6. Regulations governing use of cerDfication mark

(1) An appKcation for registration of a certification mark may be

filed with the Registrar along with regulations governing the use

of the mark.

(2) The regulations referred to in sub-para (1) shall indicate who

shall be authorized to use the certification mark, the

characteristics by the mark, how the certifying body shall test

those characteristics and supenrise the use of the mark, the fee, if

any, to be paid in connection with the operation of th e‘mark

and the procedures for resolving disputes.

310Section 27 (7) of Trade Marks Ordinance 2001

If the tribunal is of opinion that it is fair arid reasonable in all the circumstances of the case to do so,
may at any time, whether before or after acceptance, correct any error in, or in coimection with, the
application or may permit the applicant to amend his application upon such terms as it may think fit;
Provided that no amendment or correction shall be permitted in the application which substantially
affects the identity of the trade mar or extends the goods or services covered by the application;
Provided further that if the amendment or correction in the application is permitted after the
application has been advertised, the amendment or correction shall also be published.

123
 (3) Any further requirements with which the regulation referred

to in sub-para (1) shall have to comply may be imposed as may

be prescribed.

7. Approval of regulations by the Registrar

(1) A certification mark shall not be registered unless- (a) the

regulations governing the use of the mark- (i) comply with the

requirements of sub-para (2) ^of para 6, and any further

requirements, as may be prescribed; and (ii) are not contrary to

public policy or to accepted principles of morality; and (b) the

applicant is competent to certify the goods or services for which

the mark is to be registered.

(2). Before the end of the prescribed period after the date of the

application for registration of a certification mark, the applicant

shall file the regulations with the Registrar and pay the

prescribed fee, failing which the application shall be deemed to

be withdraw.

8. Procedure for acceptance or refusal of application

(1) The Registrar shall consider whether the requirements

specified in sub-para (1) of para 7 are met.

124
 (2) If it appears to the Registrar that such requirements are not

met, he shall inform the applicant and give him an opportunity,

within such period as the Registrar may specify, to make

representations or to file amended regulations.

(3) If the applicant fails to satisfy the Registrar that such

requirements are met, or to file regulation amended so as to meet

them, or fails to respond before the end of the specified period,

the Registrar shall refuse the application.

(4) If it appears to the Registrar that such requirements, and the

other requirements for registration, are met, he shall accept the

application and shall proceed in accordance with section 28^”.

311 Section 28 of Trade Marks Ordinance 2001

Publication, opposition proceedings and observations.
(5) When an application for registration of a trade mark has been accepted, whether absolutely or
subject to conditions or limitadons. the Register shall, as soon as m ay be after acceptance, ca\ise
the application as acceptedj'together with the conditions and limitations, if any, subject to
which it has been accepted, to be advertised in the Journal, and for all legal purposes,
advertisement of the trade mark in the Journal shall constitute sufficient notice of acceptance of
the trade mark;
Provided that the Registrar may cause an application to be advertised before acceptance where
it appears to him that it is expedient by reason of any exceptional circumstances so to do, and
where an application has been so advertised the Registrar may, if he thinks fit. advertise it again
when it has been accepted, but shall not be bound so to do;
Provided further that where an application is advertised by reason of any special circumstances
imder the above proviso, the Registrar shall simultaneously notify the exceptional
circimistances which led him so to do.
(6) Any person may, within two months from the date of the advertisement or re-advertisement of
an application for registration or within such further period not exceeding two months in the
aggregate, as the Registrar, on application made to him in the prescribed manner and on

125
9. Regulations to be published

The regulations governing the use of a registered certification

mark shall be published and notice of opposition may be given,

and observations may be made, relating to the matters specified

in sub^ara (1) of para 7, in addition to any other grounds on

which the application may be opposed or observations made.

payment of the prescribed fee, may allow, give notice to the Registrar of opposition to the
registration.
(7) The notice under sub-section (2) shall be given in writing in the prescribed manner, and shall
include a statement of the grounds of opposition.
(8) The Registrar shall serve in the prescribed manner a copy of the notice on the applicant, and
within one month from the applicant of such copy of the notice of opposition, or within such
.further period not exceeding two months in the aggregate, as the Registrar, on application
made to him in the prescribed manner and on payment of the prescribed fee. M ay allow, the
applicant shall send to the Registrar in the prescribed manner a counter-statement of the
grounds on which he relies for his application, and, if he does not do so he shall be deemed to
have abandoned his application.
(5) If the applicant sends the counter-statement referred to in sub-section (4) .the Registrar shall
serve in the prescribed manner a copy of the counter-statement on the opponent. If the
opponent deems necessary, he m ay within one month from the receipt of such copy of the
counter-statement, or within such further period not exceeding two months in the aggregate, as
the Registrar, on application made to him in the prescribed manner and on payment of the
prescribed fee, may allow, send to the Registrar in the prescribed manner a rejoinder.
(6) If the opponent sends a rejoinder, the Registrar shall send in the prescribed manner a copy of
the rejoinder to the applicant.
(7) Any evidence upon which the opponent and the applicant may rely shall be submitted in the
prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give
an opportunity to them to be heard, if they so desire.
(8) The Registrar shall, unless the proceedings are discontinued or dismissed, after giving to the
opponent and to the applicant an opportunity of being heard, decide whether, and subject to
what conditions or limitations, if any, registration is to be permitted.
(9) If the Registrar is of opinion that it is fair and reasonable in all circumstances of the case to do
so, he may, on request made in the prescribed manner, permit correction of any error in, or
any amendment of, a notice of opposition, a coimter-statement, or a rejoinder on such terms as
he thinks jusL

126
10. Regulations to be open to inspection

The regulations governing the use of a registered certification

mark shall be open to be public inspection in the same way as

the Register.

11. Amendment of regulations

(1) An amendment of the regulations governing the use of a

registered certification mark shall not be effective unless and

until the amended regulations are filed with the Register and

accepted by him.

(2) Before accepting any amended regulations the Registrar may,

in any case where it appears to him expedient to do so, cause

them to be published.

(3) If he does so, a notice of opposition may be given, and

observations may be made, relating to the matters specified in

sub-para (1) of para 7.

12. Consent to assignment of reg^tered certification mark

The assignment or other transmission of a registered

certification mark shall not be effective without the consent of

the Registrar.

127
13. Infringement of r ^ ts of authorised xiser

The following provisions shall apply in relation to an authorised

user of a registered certification mark as in relation to a licensee

of a trade mark, namely:-

(a) Sub-section (7) of section 40^^;

(b) Sub-section (2) of section 51^^; and

(c) Section

14. The High Court or a District Court to take into account loss suffered by

authorised users

In infringement proceedings brought by the proprietor of the

registered certification mark any loss suffered or likely to e

312 Section 40 (7) of Trade Marks Ordinance 2001

A person who applies a registered trade niark to material intended to be used for labeling or packaging
goods shall be treated as a party to any use of the material which infringes the registered trade mark if
when he applied the m ark he knew or had reason to believe that the application of the mark was not
duly authorised by the proprietor o ra licensee.
313 Section 51 (2) of Trade Marks Ordinance 2001
In considering what order, if any should be made, the High Court or district Court shall consider
whether other remedies available in a action for infringement of the registered trade mark w ould be
adequate to compensate the proprietor and any licensee and protect their interests.
314 Section 53 of Trade Marks Ordinance 2001
Infringing goods, material or articles may be treated as prohibited.-
(1) The proprietor of the registered trade mark m ay give notice in w ritii^ to the Collector of Customs
that
(a) He is the proprietor of the registered trade mark;
(b) At a time and place specified in the notice, goods which, in relation to that registered trade
mark are infringing goods, material or article, or bear false indications as to their source or the
identity of their manufacture are expected to arrive in Pakistan from outside Pakistan and that
they are subject to the control of the customs authorities under the Customs Act, 1969 (IV of
1969): and
(c) He requests the Collector of Customs to treat such goods as prohibited goods.

128
 suffered by authorised user shall be taken into account and the

High Court or a District Court may give such directions as it

thinks fit as to the extent to which the plaintiff shall hold the

proceeds of any pecuniary remedy on behalf of such users.

15.Additional groimds for revocation of registration

Apart from the grounds of revocation provided for in section

73^^, the registration of a certification mark may be revoked on

315 Section 73 of Trade Marks Ordinance 2001

Revocation of registration
(1) The registration of a trade m ark may be revoked on any of the following grounds, namely
(a) That within the period of five years following the date of completion of registration
procedure it has not been put to bona fide use in Pakistan by the proprietor or by an
authorised user thereof, in relation to the goods or services for which it is registered
and there are no proper reasons for its non-use;
(b) That the bona fide use has been suspended for an uninterrupted period of five years
and there are no proper reasons for its non-use;
(c) That in consequence of acts or inactivity of the proprietor, it has become the common
name in the trade for a product or service for which it is registered; and (d) that in
consequence of the use made of it by.the proprietor or with his consent in relation to
the goods or services for which it is registered, it is liable to mislead the public,
particularly as to the nature, quafity or geographical origin of those goods or services.
(2) For the purpose of sub-section (1), use of a trade mark shall include use in a form differing in
elements which do not alter the distinctive character of the mark in the form in which it was
registered.
(3) The registration of a trade mark shall not be revoked on the grounds specified in clause (a) or (b) of
sub-section (1), if such use, as it referred to in those clauses, is commenced or resumed after the expiry
of the five years period and before the application for revocation is made, shall only be regarded if the
preparation for commencement or resumption began before the proprietor became aware that the
application is made.
(4) An application for revocation may be made by an interested party to the Registrar, except that
(a) if proceedings concerning the trade mark in question are pending in the High Court
or a District Court, the application shall be made to the High Court or, as the case
m aybe, the District Court; and

129
 any of the following grounds, namely:- (a) that the proprietor

has begun to carry on such a business as is specified in para 4; (b)

that the manner in which the mark has been used by the

proprietor has caused it to become Uable to mislead the public in

the manner referred to in sub-para (1) of para 5; (c) that the

proprietor has failed to observe, or to secure the observance of,

the regulations governing the use of the mark; (d) that an

amendment of the regulations has been made so that the

regulations- Q no longer comply with the requirements of sub­

para (2) of para 6, and any further conditions as may be

prescribed; or (ii) are contrary to public policy or to accepted

principles of morality; or (e) that the proprietor is no longer

competent to certify the goods or'services for which the mark is

registered*

16. Additional grounds for invalidity of registration

Apart from the grounds of invaUdity provided for in section

the registration of a certification mark may be declared

(b) in case the application is made to the Registrar, he may at any stage of the proceedings
refer the application to the High C ourt or a District Coun.
(7) Where the registration of a trade mark is revoked or declared invalid on the groimd that the
registration was secured in bad faith, the applicant shall be barred from applying for registration of the
identical or similar trade mark for two years form the date of revocation or invalidation, whatever the
case may be.
316 Section 80 of Trade Marks Ordinance 2001

130
 invalid on the ground that the mark was registered in breach of

the provisions of para 4, sub-para (1) of para 5 or sub-para (1) of

para

Grounds for invalidity of registration.

(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was
registered in breach of section 14 or any of the provisions thereof.
(2) Where the trade mark was registered in breach of clause (b), (c) or (d) of sub-section (1) of section 14,
it shall not be declared invalid if, in consequence of the use which has been made of it, it has after
registered acquired a distinctive character in relation to the goods or services for which it is registered.
(3) The registration of a trade mark may be declared invalid on the groimd that there is- (a) an earlier
trade mark in relation to’which the conditions set out in sub- section (1), (2) or (3) of section 17 obtain;
or (b) an earlier right in relation to which the condition set out in sub-section (4) of section 17 is
satisfied, xmless the proprietor of that earlier trade mark or other earlier right has consented to the
registration.
(4) An application for declaration of invalidity may be made by an interested party either to the
Registrar or to the High Court or a District Court, except that- . . ,
(a) if proceedings concerning the trade mark in question are pending in the High Court
or a District Court, the application shall be made to the High Court or a District
Court; and
(b) in any other case, if the application has been made to the Registrar, he may at any
stage of the proceedings refer the application to the High Court or a District C ourt.
(5) In the case of bad faith in the registration of a trade mark, the Registrar may apply to the High
Court o ra District Court for a declaration of the invalidity of the registration.
(6) Where the grounds of invalidity exist in respect of only some of the goods or services for which the
trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.
(7) Where the registration of a trade mark has been declared invalid to any extent, the registration shall
to that extent be deemed never to have been made provided that this shall not affect the transactions
past and closed.

131
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