PROJECT ON
PROTECTION THROUGH ‘GEOGRAPHICAL INDICATION’ AND PROTECTION THROUGH ‘CERTIFICATION TRADEMARK’-NAT TRADEMARK’ -NATIONAL IONAL AND INTERNAT INTERN ATIONAL IONAL TRENDS SUBMITTED TO – Mr. Sandee S!"an #FACULT$ OF LA% GEOGRAPHICAL INDICATION&
SUBMITTED B$ – L!'() Ra*!r+, ROLL NO. – /0 SEMESTER – 1III
DATE OF SUBMISSION – 20-23-425/
HIDA$ATULLAH NATIONAL LA% UNI1ERSIT$6 RAIPUR
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ACKNO%LEDGEMENTS
To start with at the very outset I would like to thank all people who have helped me in the making of this project. Then very humbly going into special addressing I would like to profusely thank my faculty in charge of subject Law of Geographical indication, Mr. andeep uman. The staffs at the computer lab and Library of the university have also e!tended their total co"operation. The friends circle have always maintained an academic atmosphere and created new ideas and lines of thought for the betterment betterment of this project. Indeed it would be very apt to state here that without the healthy support lent out to me it would have been a failed project which it has hopefully not become and in fact gone in the opposite direction and become a good one. L!'() Ra*!r+, Se"e7er 1III R+88 n+.- /0
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TABLE OF CONTENTS #. $cknowledgement%%%%%%%%%%%%%%%%%%%%%%%& &. $bstract%%%%%%%%%%%%%%%%%%%%%%%%%%%.' (. Introduction%%%%%%%%%%%%%%%%%%%%%%...............) '. *rotection through geographical indication%%%%%%%%%%%%%..+ a -efinition of GI%%%%%%%%%%%%%%%%%%%...............+ b ignificance of Geographical Indications%%%%%%%%%...............+ ).*rotection through geographical indication national trend%%%%%%%.. a India/s e!perience with geographical indication%%%%%%................0 b Impacts of GI registration in India1 ome case%%%%%%%%%%..2
+. *rotection through geographical indication international trend%%%%%.#' a Multilateral treaties%%%%%%%%%%%%%%%%%%.............#) b 3ilateral treaties%%%%%%%%%%%%%%%%%%%%%%..&4 . *rotection through certification of trademark%%%%%%%%%%%%&# a -efinition of 5TM%%%%%%%%%%%%%%%%%%%%%..&# b 5ertification of trademark in India%%%%%%%%%%%%%%%.&& 0. 5onclusion%%%%%%%%%%%%%%%%%%%%%%%%%..&) 2. 6eferences%%%%%%%%%%%%%%%%%%%%%%%%%..&2
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ABSTRACT India, in compliance with the T6I* $greement of the 7T8, enacted 9The Geographical Indications of Goods :6egistration and *rotection $ct, &44( to provide protection to the goods registered under the $ct. Twelve years down the line, evidence from the ground suggests that while there has been some progress in terms of number of goods registered under the $ct, there remain a number of issues and concerns in the conte!t of harnessing the potential commercial benefits out of GI registration in India.
OBJECTI1ES This paper aims to discuss relevant international and national legal regimes aims at GI/s, further it throws some light on recent case laws decided by Indian courts and finally ends with conclusion.
RESEARCH METHODOLOG$ The research is based on analytical method. The source of information comprises of books, articles and journals. The data in this project report is from secondary sources. The topic has been e!tensively researched upon so as to accomplish the goal of completion of the current project report.
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5. INTRODUCTION Geographical indication is an indication which specifies the geographical origin of a product and links it with the essential ;ualities that are present in the product due to the place of origin. It is mainly used to identify agricultural, handicraft, manufacturing goods from a particular territory which has developed a good will in the market due to its special characteristics. The said characteristics include temperature, humidity, soil etc. associated with the territories that are uni;ue, e.g. -arjeeling tea. Geographical indication can be a mark defined by words or numbers or a combination of both. In international transaction, marks of origin include marks of the country of origin and geographical indications. The roots of GI can be traced back to the
1anjeev $garwal > Michael ?. 3arone, @
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4 PROTCTION THROUGH GEOGRAPHICAL INDIACTION
4.5 De9n+n +9 GI Geographical Indication :GI is defined as any indication that identifies a good as originating from a particular place, where a given ;uality, reputation or other characteristics of the good are essentially attributable to its geographical origin. T6I* agreement runs & 9Geographical indications are, for the purposes of this $greement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given ;uality, reputation or other characteristic of the good is essentially attributable to its geographical origin./( The 7orld Intellectual *roperty 8rganisation :7I*8 states that GIs are 9a sign used on goods that have a specific geographical origin and possess ;ualities, reputation or characteristics that are essentially attributable to that place of origin. Most commonly, a geographical indication includes the name of the place of origin of the goods./ ' Brom the above two definitions it can be seen that 9$ Geographical Indication identifies a good as originating in a delimited territory or region where a noted ;uality, reputation or other characteristic of the good is essentially attributable to its geographical origin andCor the human or natural factors there./ )
4.4 S:n9'an'e +9 Ge+:ra,'a8 Ind'a+n7 geographical indication is a geographical name signifying that a product originates in a country or a specific locality. 6ecently, geographical indication :GIs emerged as one of the most
important
instrument
of
protecting
;uality,
reputation
2*art II, ection (, $rticle &&.# of T6I* 3 $ccessed from the web site1 http1CCwww.wto.orgCenglishCtratopDeCtripsDeCtDagm(bDe.htmE(, visited on $ugust #4th &4#(
4 $ccessed from the web site1 http1CCwww.wipo.intCgeoDindicationsCenCabout.html, visited on #4"0" &4#(
5 Guide to Geographical Indications1 Linking products and their origins,A $ccessed from the web site1 www.intracen.orgC7ork$reaC-ownload$sset.asp!Fid()2), visited on #4"0"&4#(
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or other character of goods essentially attributable to their geographical origin.+ It
is
valuable to providence, a 9source identifier/ and indicator of ;uality. GI helps to promote its goods @eligible for relief from acts of infringement andCor unfair competitionA. The concern shown by the 7orld Intellectual *roperty 8rgani=ation :7I*8 and 7orld Trade 8rgani=ation :7T8 gave new impetus to protection of GIs. $ccording to the 7I*8 tanding 5ommittee on the Law of Trademarks, Industrial -esigns and Geographical Indications @a geographical indication is best protected under trademark and unfair competition law. Trademark having ac;uired in good faith had to be protected against conflicting geographical indications.A *rotection of GI prevent third parties from passi ng off their products as those originating in the given region. Bamous e!amples are 95hampagne/ for sparkling wine and 96o;uefort/ for cheese from areas of these names in Brance
or
9-arjeeling/
for
tea
from
this
district
in
India. It is
not
necessary for these indications to be geographical names as in the case of 9Beta/ for cheese from Greece or 93asmati/ for rice from India and *akistan as there are no places, localities or regions with these names. *lant varieties developed with traditional knowledge and associated with a particular region can also be protected as geographic al indications. The advantage in such protection is that it is not time"limited. However, needless
to
say,
commercial
benefits
can
be
derived from the protection of geographical indications only when the name becomes reasonably famous.0
4.3 Pr+e'+n ,r+!:, :e+:ra,'a8 nd'a+n na+na8 rend $s a party to the T6I* $greement, India is re;uired to protect GI and hence in order to fulfil that obligation, the Geographical Indications of Goods :6egistration and *rotection $ct, #222 was enacted. It may also be noted that India felt that some of its products have high potential to benefit from GI registration and it was necessary to put in place a comprehensive legislation for registration and for providing ade;uate protection for GI. Bor unless a
6United States Patent and Trademark Ofce, accessed rom the we site! htt"!##www$%s"to$go&#we#ofces#dcom#o'ia#g'oa'i"#geogra"hica'indication$ htm,&isited on 1()*)2(13 +rat -e"ort o the .nternationa' /%rea% o 0.PO, ene&a 13)1+ %', 1*, " 2 *aashree0ata', .nte''ect%a' Pro"ert -ights in gric%'t%re, .ndian 7o%nci' or -esearch on .nternationa' 8conomic -e'ations,9 ICRIER Working Paper :o$44 a&ai'a'e at www$icrier$org#"d#;aashreew$"d , &isited on 1()*)2(13 +|Page
geographical indication is protected in the country of its origin, there is no re;uirement under the T6I* $greement for other countries to e!tend reciprocal protection. The main benefits which accrue from registration under the $ct are as follows1 2
5onfers legal protection to GI in India *revents unauthori=ed use of a registered geographical indication by others
Brom the perspective of a developing country, one of the best features of the Indian $ct is the comprehensive definition given of GI, whereby agricultural, natural and manufactured goods all come under the ambit of GI. This is especially important in the Indian conte!t considering the wide variety of goods that is deserving of protection ranging from agricultural products like 3asmati, -arjeeling tea to manufactured goods such as 3anrasi sari, Jolhapurechappals, 5handeri silk etc. ection ##of the $ct provides that any association of persons, producers, organi=ation or authority established by or under the law can apply for registration of a GI. $nother important aspect of the $ct is the possibility of protecting a GI indefinitely by renewing the registration when it e!pires after a period of ten years. In the domestic conte!t, the Indian $ct has tried to e!tend the additional protection reserved for wines and spirits mandated by T6I* to include goods of national interest on a case to case basis. ection &&.& of the $ct endows the 5entral Government with the authority to give additional protection to certain goods or classes of goods. This is especially important in the developing country conte!t considering that we may not have wines and spirits to protect like the 7est but other e!otic niche products like teas, rice etc.#4
ection &) of the $ct, by prohibiting the registration of a GI as a trademark, tries to prevent appropriation of a public property in the nature of a geographical indication by an individual as a trademark, leading to confusion in the market. $lso, according to section &' of the $ct, a GI cannot be assigned or transmitted. The $ct recogni=es that a GI is a public property belonging to the producers of the goods concerned as such it cannot be the subject matter of
$ll India $rtisans and 5raftworkers $ssociation :$I$5$.&4##. Geographical indications of India1 socioeconomicand development issues, *olicy 3rief, Kew-elhi1 $I$5$.
1( 5ommission on Intellectual *roperty 6ights. &44'.Integrating Intellectual *roperty 6ights and-evelopment *olicy, London1 5ommission on Intellectual *roperty 6ights.
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assignment, transmission, licensing, pledge, mortgage or any contract for transferring the ownership or possession.
Inda’7 E;eren'e <, GI Pr+e'+n
ince the first Indian GI was registered in &44', #& GIs have been registered with the GI 6egistry of India. 8f these, more than half :+' per cent are handicrafts, more than one fourth :&+ per cent are agricultural products, and the remaining are food and manufacturing products The trend of GI registration has been mostly upward with the ma!imum number of products registered in the year &440 &442. 7hile handicrafts have been the most registered GIs consistently, agricultural and manufactured products are increasingly being protected under the GI $ct over the past few years Bood products, a more recent addition in the registered GI basket of India, was first granted protection in &440 &442 when -harwad *edha from Jarnataka was granted the status of a registered GI product. The recent increase in manufactured products being registered as GI can be partially attributed to more foreign products being registered at the Indian GI 6egistry.## In terms of geographical distribution of GIs in India, most GIs have been registered from the southern states. The state of Jarnataka has been the forerunner in registration of GIs followed by the states of $ndhra *radesh, Jerala and Tamil Kadu. The spread of GI recognition is concentrated in the southern states. *roducts from other states are getting registered now. $t the same time many states, which have several traditional varieties of agricultural products or handicrafts, are not forthcoming in applying for GIs. There are only three GIs from all of north east India and none from ttarakhand. #& The states of *unjab and Haryana have no GI either e!cept for a joint GI on *hulkari embroidery along with 6ajasthan. *hulkari is the only GI in India which covers more than one state. ince &442, 0 foreign : manufactured and # food products have been accorded the status of registered GI under the Indian $ct. These are 5hampagne and 5ognac from Brance, cotch 7hisky from the nited Jingdom, Kapa Nalley
11 -as, J. &442. ocio"economic implications of protectinggeographical indications in India. Kew -elhi15entre for 7T8 tudies. http1CCwtocentre.iift.ac.inC*apersCGID*aperD57D$ugustO&442D6evised.pdf, accessed on ?anuary ), &4#&.
12 -as, $. &440. Geographical indications1 K5T$-/sinitiative in India, *resentation at K-* 655, K-*5ambodia
and
Institute
of
5ambodia,*hnom
*enh,
eptember
'.
http1CChdru.aprc.undp.orgCe!tCregionalDworkshopD&440CpdfC-asDs(.pdf, accessed on ?anuary &4, &4#&
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wines from the nited tates of $merica, -ouro wine from *ortugal, *eruvian *isco from *eru and *rosciutto di *arma from Italy.
I"a'7 +9 GI re:7ra+n n Inda= S+"e 'a7e7
$ number of observers point out that of all the different types of intellectual property rights, GI may be more amenable to the particular conte!t of developing countries. GIs may especially facilitate protection of the collective rights of the rural and indigenous communities in their indigenous knowledge, ensuring that the entire community which has preserved the knowledge and has passed it on with incremental refinement over generations, stand to benefit from the knowledge and that this is not locked up as the private property of one individual. 8ther advantages of GIs are that the knowledge remains in the public domain, the scope of protection is limited to controlling the class andC or location of people who may use the protected indication and the rights can potentially be held in perpetuity as long as the product"place link is maintained. $lso, holders of a GI do not have the right to assign the indication, thus, preventing its transfer to non"locale producers.
13-wivedi, J., . 3hattacharjya. &4#&. 6estore glory ofthe3anarasi sari, The Hindu 3usiness Line, -ecember&#, &4#&. http1CCwww.thehindubusinessline.comCopinionCrestore"glory"of"the"banarasi
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Muga Silk of Assam
Muga silk is a registered GI from the state of $ssam.Historical evidence suggests that $ssam/s silk industry had reached the pinnacle of perfection by the th century $.-. 3anabhatta, the author of Harshacharita informs us that king 3haskara Narma of Jamarupa :ancient $ssam presented to Harshavardhana silken towels as @silken and pure as the autumn moon/s night...A:cited in ahai and 3arpujari, op.cit.. In the present day, muga silk constitutes the state/s most popular e!port product after $ssam tea. The *atent Information 5entre of the $ssam cience Technology and
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inspection mechanism, as re;uired by the law, $T<5 has proposed employing the services of the eri 3io Lab of the Institute of $dvanced tudy in cience and Technology, Guwahati, for ;uality control. $n inspection body is yet to be constituted. Hence, at this stage, even after si! years of registration, GI in muga cannot give any guarantee of ;uality or authenticity.
Banaras brocades and saris
93anaras brocades and saris/ secured registration under the GI $ct in eptember &442, with the application filed by nine organisations vi=. 3anaras 3unkaramiti, Human 7elfare $ssociation :H7$, joint director industries :eastern =one, director of handlooms and te!tiles ttar *radesh Handloom Babrics Marketing 5ooperative Bederation,
$ssociation
:<*<$,
3anarasiNastradyogangh,
3anaras
Hath
JarghaNikasamiti and $darsh ilk 3unkarahkariamiti. The weaver community predominantly constitutes poor Muslims and -alits and the structure of production is based on a hierarchy of kothdars :wholesale dealers, master weavers and other weavers. 7ith the objective of understanding the actual impact of registration on the ground level, T<6I researchers conducted a multi"stakeholder consultation at Naranasi interacting with registered users, 3anarasi ari traders, bunkars:weavers, government officials, local buyers, KG8 representatives, cottage manufacturing units etc. The consultations indicated that the 3anarasi sari industry is impacted by a host of variables in terms of raw material and labour issues, the socio"economic aspects of the region, and, to some e!tent, the pitfalls of e!cessive liberalisation and legislation. The changing economic and market situation has resulted in reduced income for weavers who cannot even meet their basic needs, causing malnutrition and widespread poverty throughout the traditional weaver community. uch destitution and despondency among the weavers has forced them to commit suicide or has precipitated employment shifts, as evidenced by MGK6
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market. Moreover, there is a tenfold rise in the number of operating power"looms in the district of Naranasi itself, although certain other studies put higher estimates. Most power" loom owners have been producing cheap imitation products in large numbers to meet the growing demand, withcomputerised designs.
Malabar pepper
Malabar pepper is famous for its ;uality. It is classified under two grades garbled and un" garbled. History is replete with instances of foreigners coming to the Malabar 5oast to trade in Indian spices in general and pepper in particular. It is stated that the e!orbitant price of pepper during the middle ages, a trade which was monopoli=ed by the Italians, forced the *ortuguese to seek a sea route to reach India. *epper is used as a spice and it has also got medicinal properties. Malabar pepper is cultivated in the geographic regions comprised in the Malabar region of the erstwhile Madras *residency. Kow these areas comprise in the states of Jerala, Jarnataka and Tamil Kadu. Malabar pepper accounts for around &) per cent of the entire world/s supply of pepper. This pepper is uni;ue for its sharp, hot and biting taste. Highly aromatic, with a distinctive fruity bou;uet, it has the perfect combination of flavour and aroma. In order to protect the brand value of Malabar pepper, the pices 3oard applied for a GI registration and after completing the formalities the registration was granted. $s pepper is e!ported in huge ;uantities, there was a feeling that the GI tag would give better legal protection against counterfeit products, more visibility to the brand etc. Kone of the respondents interviewed by T<6I researchers were aware of any infringement action initiated against any of the counterfeit producers. Therewas also a general feeling that it is the traders who reap benefit out of the GI tag and not the farmers. The general mood in the sector at the time of field visit was a worry over the declining price in pepper. There were demands that there should be a complete ban on future trades in pepper.
Vazhakulam Pineapple
There was considerable interest shown among the academia and practicing lawyers about the GI tag for Na=hakulam *ineapple. ome interviews were conducted by T<6I researchers as a result of this. *ineapple is produced as a commercial fruit crop in India. The main pineapple
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producing states are Jerala, 7est 3engal, $ssam and Tripura. Na=ahkulam, known as the *ineapple 5ity, islocated in Muvattupu=ha taluka of
to unite and strengthen the pineapple farmers to create awareness on farming and marketing issues to provide assistance in seeking financial and technical help from various government
and non"government agencies $nd to engage in promotion activities.
The Kadukkara $gro *rocessing 5ompany Ltd. is a public limited company with a shareholding pattern of 4 per cent held by farmers and (4 per cent by the state of Jerala. K$*5L is involved in the production of many pineapple based products like pineapple juice, pineapple fruit candies among others. The Jerala $gricultural niversity was instrumental in providing the scientific details needed for the GI registrati on and is involved as the inspection body to regulate the ;uality standard parameters. The purpose of going for a GI registration was for brand value. Ko case of infringement has come to the notice so far. The office bearers
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of the farmers association were very candid in e!plaining that the major benefit of the GI registration was the greater visibility of the brand. Most of the farmers are big farmers who have taken land for lease. The lease land mainly comes from the rubber plantations, during their replantation time. In the first (' years of replantation, pineapple is cultivated as an inter crop. These plantations would stretch from )4 #44 acres. It is cultivated as an intercrop in coconut farms too. There are farmers who have resorted to pineapple cultivation as the main crop. There was a feeling among the representatives of the farmers/ association that as GI is intended to help the marketing of the product as it brings in more brand visibility, the farmers are not directly benefitted. The general feeling to be gathered after interaction was that direct benefit for farmers was not seen as the purpose of GI tag.
4.0 Inerna+na8 Pr+e'+n +9 :e+:ra,'a8 nd'a+n7 #5& M!88aera8 reae7 1 P *aris 5onvention for the *rotection of Industrial *roperty The
*aris 5onvention for the *rotection of Industrial *roperty provides for the protection of indications of source against any misleading use. In this respect, $rticle #4 of the *aris 5onvention sets forth that in cases of @direct or indirect use of a false indication of the source of the goods or the identity of the producer, manufacture or merchantA $rticle 2 of *aris 5onvention should be applicable #'. $rticle 2 of the *aris 5onvention provides for that goods bearing a false indication of source are subject to the following measures1 sei=ure upon importation into countries party to the *aris 5onvention, or within the country where the unlawful affi!ation of the indication of source occurred or within the country of importation. This sei=ure shall take place at the re;uest of the public prosecutor, or any other competent authority, or any interested party. However, $rticle 2:) and :+ of the *aris 5onvention allow that countries party to the *aris 5onvention whose national laws do not permit sei=ure on importation of inside the country to replace those remedies by either a prohibition of importation or by any other nationally available remedy. It has therefore been said that $rticle 2 and #4 of the *aris 5onvention do not introduce a higher international standard for protection of, inter alia, indication of source, but merely binds tates part y to that 5onvention to apply the national treatment principle #) . $rticle #4bis of the *aris 5onvention sets out the basic international standard for protection against acts of unfair competition. $lthough the
14http1CCwww.wipo.intCtreatiesCenCipCparis 15 | P a g e
use of false indications of source is not mentioned on the non"e!haustive list of acts which are prohibited under $rticle #4bis :(, such use arguably constitutes an act of competition contrary to honest practices in industrial or commercial matters and, thus, is covered by $rticle #4bis :&. The provisions of the *aris 5onvention which have dealt with so far concern the use of false indications of source. However, there are cases in which the use of an indication of source which is literally true may still be misleading or deceptive. This may be the case where a given geographical name e!ists in two different countries, but was used as an indication of source only products originating from that place in one country. se of that indication of source by producers from the other country cannot be regarded as use of a @falseA geographical indication, although consumers may be deceived by such use. P Madrid $greement for the 6epression of false or deceptive indications of source of goods The Madrid $greement for the 6epression of Balse or -eceptive Indications of ource of Goods is a special agreement within the framework of the *aris nion. The $greement aims at the repression not only of false, but also of deceptive, indications of source. The Madrid $greement e!ceeds the *aris 5onvention on three points. Birst, it e!tends the protection to misleading geographical indications, $rticle #:#.#+ This $rticle provides that any product bearing a false or deceptive indication by which one of the tates apply to the Madrid $greement or a place situated therein is directly or indirectly indicated as being the country or place of origin, must be sei=ed on importation into any of the tates party to the Madrid $greement. econd. $rticle (bis, which was adopted by the 6evision 5onference of London :#2(', prohibits the use of false representations on the product itself and in advertising or other forms of public announcements#. Third, $rticle ', which prohibits member countries from treating divergent views in reference to the construction of the provision e!ist :for e!ample, regarding the use of terms like @typeA, @styleA with the indication, and thus its practical use is very restricted.
< =ison greement or the Protection o a""e''ation o origin and their internationa' registration The =ison greement was an attem"t to sec%re 15 Marcus Hopperger, International *rotection of Geographical Indications The present situation and prospect for future development.
16http1CCbooks.openedition.orgCiheidC+)&Flangen 1+http1CCwww.wipo.intCedocsCmdocsCsmeCenCwipoDsmesDlheD4CwipoDsmesDlheD4DwwwD0#').do c
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e>ecti&e and enorcea'e "rotection o geogra"hica' indications on a new asis$ .ts oc%s is not restricted to the order meas%res, as in the Paris 7on&ention or the ?adrid greement, %t a'so inc'%des ado"tion o a registration sstem com"ara'e to that o trademarks, drated ater the mode' o the ?adrid greement concerning internationa' registration o marks9$ The o;ect o the =ison greement concerns a""e''ations o origin, as de@ned in rtic'e 2A1B$ ccording to rtic'e 2A1B o the =ison greement, A1B C a""e''ation o origin9 means the geogra"hica' name o a co%ntr, region, o 'oca'itD which ser&es to designate a "rod%ct originating therein, the E%a'it and characteristics o which ared%e eFc'%si&e' or essentia'' to the geogra"hica' en&ironment, inc'%ding nat%ra' and h%man actors$9 The main feature of the agreement is that these appellations of origin are recogni=ed and protected as such in the country of origin and registered at the International 3ureau of 7I*8. Thus, the various countries are free to adopt any form of procedure to register geographical indications, be it by judicial or administrative determination. 8nce registered, a geographical indication is protected in other member countries @in accordance with this agreementA :$rticle #. The countries have to ensure that any kind of usurpation or imitation is prohibited under their laws, including the use of terms like @typeA, or @styleA along with the indication :$rticle ( no geographical indication can be deemed generic in any other country as long as it is protected in its country of origin :$rticle +The main problem with the Lisbon $greement is that very few states have become members. Two critical points have prevented important nations from joining. Birst, international protection is granted only if the geographical indication if protected in the country of origin @as suchA hence, the concept of protection through the law of unfair competition or the law of advertising is not recogni=ed. $ number of states are not willing to transform their system of protection in order to be compatible with the standards of the Lisbon $greement. econd, the $greement does not make e!ceptions for terms that have already become generic in some member countries. The issue of generic"ness is one of the difficult problems on the international level which has hindered the negotiating process of T6I*. P T6I*s $greement T6I*s $greement provide for the protection of geographical indications in ection (. 7e can observe that this ection encompasses into five main categories of issues1 definition and scope of a geographical indication, minimum standards and common protection provided for geographical indications corresponding to all kinds of products, additional protection for geographical indications for the wines and spirits, negotiation and
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review of section ( on geographical indications and e!ceptions to the protection of geographical indications.$ccording to $rticle && of the T6I*s $greement, Qgeographical indications are, for the purposes of this $greement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given ;uality, reputation or other characteristic of the good is essentially attributable to its geographical origin.A This definition seems to be based on the concept of appellation of origin contained in $rticle & of the Lisbon $greement. Kevertheless, it is broader because it confer protection to goods which merely derive a reputation from their place of origin without possessing a given ;uality or other characteristics which is due to that place. In contrast, the Lisbon $greement re;uires that the ;uality and the characteristics of the product in ;uestion are due, e!clusively or essentially, to the geographical environment, including natural and human factors. Goods which have merely a certain reputation but not a specific ;uality, to their place or origin are thus not covered by the Lisbon $greement. $ccording to the T6I* $greement, a geographical indication to be protected as such, needs just to be Qan indicationQ, but not necessarily the name of a geographical place on earth. This QindicationQ has to identify goods as originating in the territory of a Member :could be the name of a 7T8 country Member, a region or a locality of that territory. This definition also indicates that goods to be protected should originate in the territory, region or locality to which it is associated. This means that licenses for the use of geographical indications cannot be protected under the T6I* $greement. The definition given by the $greement provides Members with alternatives to link the protected geographical indication with the product concerned1 a given ;uality, or reputation or other characteristic of the good should be Qessentially attributable to its geographical originQ. In other words, the T6I*s $greement provides Members with at least three independent criteria for the protection of a given product through a geographical indication1 ;uality, reputation or other characteristic of the good attributable to its geographical origin. $rticle && of the T6I* $greement provides protection for all geographical indications. In this respect, 7T8 Members should provide the legal tools so that interested parties can prevent the use of any means in the designation or presentation of a good, that indicates or suggests that the good originates in a geographical area, other than the true place of origin in a manner which misleads the public as to the geographical origin of the good. They can also prevent any use which constitutes an unfair competition act, within the meaning of $rticle #4bis of the *aris 5onvention. The $greement does not specify the legal means to protect geographical indications. It is left to Members to decide what those means should be. The other important e lement in this respect is that the use
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of a geographical indication, to be inconsistent with the provision of this $greement, should be done in a manner that may mislead the public as to the true geographical origin of the product. Inother words, the use of a geographical indication which does not mislead the public as to its true origin " according to $rticle && " should not be considered as an infringement of the T6I* $greement. $lso according to $rticle &&:b, whether the use of a geographical indication constitutes an unfair competition act, it is $rticle #4bis of the *aris 5onvention that applies and not any other meaning, for instance under domestic regimes. 6egarding the linkage between a trademark and a geographical indication, $rticle && of the T6I* $greement provides that Members should refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, but only if use of the same in the trademark for such good in that MemberRs country is of such a nature as to mislead the public as to the true place of origin. In implementing ection ( of the $greement, Members should not diminish the protection of geographical indications that e!isted in that Member immediately prior to the date of entry into force of the 7T8 $greement. In accordance with $rticle &'.2 of the T6I* $greement, there is no obligation to protect geographical indications which are not or cease to be protected in their country of origin, or which have fallen into disuse in that country. This is the golden rule for the protection of any geographical indication. Thus, protection abroad is dependent on continuing domestic protection. . $rticle &( of the T6I* $greement provides additional protection for geographical indications for wines and spirits. Q$dditional protectionQ means that geographical indications for wines and spirits shall be protected under $rticle && QplusQ $rticle &( on additional protection for geographical indications for wines and spirits. These provisions give geographical indications for wines and spirits stronger protection than that provided in $rticle && for all products. $ccording to the te!t of the T6I* $greement, the first distinction to be made in this respect is that the protection given to geographical indications for wines is not the same granted for spirits, though both products have common additional protection. *rotection for both, wines and spirits, is the same according to $rticles &(.#, &(.& and &'.# of the T6I* $greement. $n e!tra"additional protection for geographical indications only for wines is provided in $rticle &(.( and &(.'. The additional protection for wines and spirits encompasses three main elements1 Birst, in providing the legal means for interested parties to prevent the use of a geographical indication identifying wine and spirits not originating in the place indicated by the geographical indication, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by e!pressions such as @kindA, @typeA, @styleA,
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@imitationA or the like. econd, in refusingor invalidating the registration of a trademark for wines or spirits which contains or consists of a geographical indication identifying wines or spirits, respectively at the re;uest of an interested party. Third, in calling Members for negotiations aimed to increase protection for individual geographical indications for wines and spirits. . $rticle &'.# of the T6I* $greement provides that Members have agreed to enter into negotiations for increasing the protection of individual geographical indications under $rticle &( that is to say only with respect to geographical indications related to wines and spirits, which are referred to in the heading of $rticle &(. The same $rticle &' call upon the 5ouncil for T6I* to keep under review the application of the provisions of ection ( of the $greement, indicating that the first of such reviews shall take place within two years of the entry into force of the 7T8 $greement. $ny matter affecting compliance with the obligations under the provisions of the $greement may be drawn to the attention of the 5ouncil, which at the re;uest of a Member would consult with any Member in respect of that matter. . Binally, ection ( of the $greement establishes a series of e!emptions to the protection of geographical indications. 8ne of these e!emptions provides that nothing in ection ( prevents a Member to continue the use of a particular geographical indication of another Member identifying wines or spirits in connection with goods or services by any of its nationals who have used that geographical indication in a continuous manner with regard to the same goods or services in the territory of that Member either :a for at least #4 years preceding #) $pril #22' or :b in good faith preceding that date. $rticle &'.) states that when a trademark have been ac;uired or registered in good faith before the date of application of the $greement in that Member or before the geographical indication was protected in its country of origin, measures adopted to implement ection ( shall not prejudice eligibility for or the validity of the registration of a trademark or the right to use a trademark, on the basis that such trademark is identical with or similar to, a geographical indication. The third
eFce"tion reers to the act that nothing in Section 3 o the greement sha'' reE%ire a ?emer to a""' its "ro&isions in res"ect o a geogra"hica' indication o an other ?emer with res"ect to goods or ser&ices or which the re'e&ant indications is identica' with the term c%stomar in common 'ang%age as the common name or s%ch goods or ser&ices in the territor o s%ch ?emer$ #& B8aera8 Treae7 3ilateral treaties have a long tradition in the field of the protection of
geographical indications. $mong the treaties, two models have been predominant1 the first, to reserve certain region indications for the products of a certain region without determining which e!act geographical area is to be protected the second, to include a definition of the
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geographical area that is to be protected by a geographical indication. Keither of the two models has yielded effective protection because the parties failed to determine the scope of protection. $n e!ample of the first model is the treat y between *ortugal and the nited tates of #2#4, in which the name @*ortoA and @MadeiraA were to be protected by the nited tates in that case the nited tates decided to implement the protective provision by means of the law of advertising. $s a result, the discussion regarding whether or not the duty to @protectA these terms included a prohibition of @*ortoA or @MadeiraA accompanied by @kindA or @typeA, debated since the Madrid $greement, was simply carried over into this agreement. The same geographical indication was protected by a treaty between *ortugal and Germany of #240, in which Germany agreed to reserve the same representations not only for *ortugal in general, but for goods that originated in -ouro :*orto and the island of Madeira. $s a model for international protection, however, this specification made little progress. $fter the failure of the Lisbon $greement, a new type of treaty was developed. Lists of protected geographical names accompany the agreements, and the producers from each of these regions retain e!clusive right to use the name. The scope of protection is then determined under the law of the country of origin. $s a result, the country of origin controls the re;uirements for the legitimate use of certain geographical indications at home and abroad. Ko country has to alter its own laws inorder to accomplish greater protection under the regime of a international treaty. 6ules of one country are @e!portedA together with its goods into another country. In this manner, a number of critical stumbling"blocks are avoided, but sum problems have emerged as well. In each case of alleged violation, the court must apply the law of the country of origin instead of its own laws :which would be applicable under the 5onflict of Laws 6ules of most countries. Thus, the objection of the nited tates to the Lisbon $greement, i.e, that $merican courts would be bound by the decisions of a foreign jurisdiction, would apply to these agreements as well.
3 PROTECTION THROUGH CERTIFICATION OF TRADEMARK 3.5 Cer9'a+n "ar( - $ certification mark certifies the nature or origin of the goods or
services to which it has been applied. This includes the region or location or origin, materials of construction, method or mode of manufacture or provision, ;uality assurance, accuracy of the goods or services or any definable characteristic of the goods or services. It can also certify manufacture or provision of services by members of a union or other organi=ation to
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certain standards. The sole purpose of a certification mark is to indicate that certain standards have been met. ection &:# :e of Indian Trade Marks $ct defines a certification mark as Qa mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, ;uality, accuracy or other characteristics from goods or services not so certifiedQ. $ certification mark on a product may indicate the following1 The e!istence of a product certification agreement between the manufacturer and an organi=ation with national accreditation for both testing and certification Legal evidence that the product was successfully tested in accordance with a nationally accredited standard Legal assurance that the accredited certification organi=ation has ensured that the product that was successfully tested is identical to that which is being offered for sale Legal assurance that the successful test has resulted in a certification listing, which is considered public information and sets out the tolerances and conditions of use for the certified product, to enable compliance with the law through listing and approval use and compliance Legal assurance that the manufacturer is being regularly audited by the certification organi=ation to ensure the maintenance of the original process standard that was employed in the manufacture of the test specimen that passed the test. The function of a certification mark, unlike a trademark, is not to indicate source of origin but to certify that the goods or services in relation to which it is applied are certified by the proprietor of the mark as to certain characteristics of the goods or services. The presence of a certification mark on a product or service will give the consumer guidance and the resulting confidence in deciding whether to make a particular purchase or not. $ certification mark is used by various merchants to indicate that their products and services have certain characteristics, such as a specific level of product ;uality or a certain geographic origin.
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3.4 Cer9'a+n Mar(7 n Inda
$n application for a 5ertification mark can be filed as a single or a multi"class application in the prescribed form with the Indian Trade Marks 6egistry. The form must be submitted along with draft regulations governing the certification mark. The regulations must specify1 •
-escription of the $pplicant
•
The nature of the $pplicantRs business
•
*articulars of infrastructure like 6>-, technical manpower support
•
$pplicantsR competence to administer the certification scheme
•
$pplicantsR financial arrangement
•
$n undertaking from the $pplicant that there will be no discrimination against any party if it meets the re;uirements set down in the regulations
•
The characteristics of the mark which will be indicated by the certified goods or in relation to rendering of certified services
•
The manner of monitoring the use of the mark in India
•
The people authori=ed to use the certification mark
•
The characteristics to be certified by the certification mark
•
How the certifying or standards tests these characteristics and supervises the use of the mark
•
-ispute resolution procedures
•
uch other relevant particulars as may be called for by the 6egistrar.
In addition to the above, the applicant is re;uired to submit a statement of case, along with the application, setting out grounds on which it relies, in support of the application.
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$ certification mark application is similar in many respects to an ordinary trade mark application. 8nce the application is filed, the proceedings will be similar to that of e!amination and registration of a trademark application. Typically, the 6egistrar shall cause the application for registration of a certification trade mark to be identified in the first instance, as to whether it satisfies the re;uirements purported by the Indian Trade Marks $ct. The criteria for determining the registrability of a certification trade mark in India during e!amination cover similar grounds to those as other trademarks. $ certification mark must be capable of distinguishing the certified goods or services but the ;uestion of distinctiveness may be decided in a different way as the most important part for consideration is whether the certification mark is capable of distinguishing the certified goods or services from those not so certified, rather than distinguishing the goods or services of one business from the similar goods or services of another business. 5ertification marks are generally given for compliance with certain standards, but are not limited to any specific group of enterprises as in the case of 5ollective mark. Bor a certification mark to be valid and enforceable, the owner of the mark should not use it with their own goods and services. Instead, the owner can only authori=e others to use it. In addition, the owner has to oversee othersR use of the certification mark to ensure that the mark is being properly used. 5ertification marks perform a different role than a normal trademark. Though a certification mark is also capable of distinguishing the certified goods or services in respect to its origin, material, and mode of manufacture or performance of services, ;uality, or correctness, it can be used only in accordance with defined standards. 5ertification marks may be used together with the individual trademark of the producer of a given good. The 6egistrar is not allowed to refuse, amend, modify, etc. an application, without giving the $pplicant an opportunity to be heard. If the $pplicant complies with the re;uirements of the Indian Trade Marks $ct, the mark will be accepted in due course. The Trade Marks 6egistry thereafter advertises the certification mark in the Trade Marks ?ournal. The mark remains open to opposition by a person interested to oppose the application for registration. If there is no opposition against the proposed registration or the opposition proceedings have been decided in favor of the $pplicant, the Trade Marks 6egistry will proceed to grant the 6egistration. $ssignment or transmission of certification marks is possible but only with the prior consent of the 6egistrar of Trade Marks, for which an application has to be made in the prescribed manner. This ensures that the new owner is competent to be the approved certifier.
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ome Indian the state enforced certification marks are listed below1 •
II mark used for industrial products which certifies that the products conform to a set of standards laid by the 3ureau of Indian tandards
•
B*8 mark used for processed fruit products in India which certify that the products were manufactured in a hygienic Rfood"safeR environment.
•
$gmark used on agricultural products to certify that they conform to a set of standards approved by the -irectorate of Marketing
and
Inspection, an agency of
the Government of India. •
The Kon *olluting Nehicle mark used on motor vehicles to certify conformity to the 3harat tage
•
3I Hallmark used to certify the purity of gold jewelry.
•
The Indian 8rganic certification mark used on organically farmed food products to certify that the products conform to the specifications of Kational tandards for 8rganic *roducts, &444.
•
0. CONCLUSI1E DIFFERENCE The T6I*s agreement deals with Geographical Indications under $rticles &&"&' and re;uires that each member country put in place a system to protect Geographical Indications. $s per the T6I*s agreement, Geographical indications 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 ;uality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
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The T6I*s $greement re;uires that each member country provide legal means of protecting Geographical Indications. The 7T8 recogni=es that a variety of means may be employed to protect GIs for e!ample, India enacted the Geographical Indications $ct in #222, other countries protect GIs under their certification trademark regimes. $ certification trademark :5TM, as the name indicates, is a mark that certifies the nature or origin of the goods or services to which it has been applied. 8ne obvious difference between a 5TM and a GI is that the former has a broader scope. 7I*8e!plains1 A CTM application can include, for example, reion or location or oriin, materials of construction, method or mode of manufacture or pro!ision, "ualit# assurance, accurac# of the oods or ser!ices or an# definable characteristic of the oods or ser!ices. It can also certif# manufacture or pro!ision of ser!ices b# members of a union or other orani$ation to certain standards. $ GI, on the other hand, is only an indication :or certification of the geographic origin of goods :not services, 5TMs cover services and ;uality or characteristics of the goods that are directly attributable to the geographic origin.
>. REFERENCES *rotection of geographical indications and designations and designations of origin in Italy, Trademark 7orld, 7I*8, #22(C#22' International *rotection of Geographical Indications The present ituation and *rospect for Buture -evelopment, Mr. Marcus Hopperger, in ymposium on the International *rotection of Geographical Indications, 5ape Town, outh $frica, eptember #222.
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6ecent -evelopments in the 5ouncil for T6I* :7T8, Mrs. Thu"Lang Tran 7asescha, in ymposium on the International *rotection of Geographical Indications, 5ape Town, outh $frica, eptember #222. *rotection of Geographical Indications in outh $frica, Mrs. $nne tern, in ymposium on the International *rotection of Geographical Indications, 5ape Town, outh $frica, eptember #222. *rotection of geographical indications in outh $frica, Mr. Hermann 6ademeyer, in ymposium on the International *rotection of Geographical Indications, 5ape Town, outh $frica, eptember #222. The *rotection of Geographical Indications in the nited tates of $merica, Ms. Lynne 3eresford, in ymposium on the International *rotection of Geographical Indications, 5ape Town, outh $frica, eptember #222. *rotection of Geographical Indications1 The $pproach of the
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*rotection of Geographical Indications in *ortugal, Mr. 5onstatino Lopes *alma, in ymposium on the international protection of geographical indications, Bunchal, *ortugal, #22(. *rotection of geographical indications under 7I*8 treaties and ;uestions concerning the relationship between those treaties and the T6I* $greement, Ludwig 3aeumer, -irector, Industrial *roperty Law -epartment, 7I*8, in ymposium on the geographical indications,
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