UNIVERSITY OF PETROLEUM & ENERGY STUDIES COLLEGE OF LEGAL STUDIES BA.,LLB (HONS.) SEC- A SEMESTER- 8 ACADEMIC YEAR: 2010-2015
SESSION: JANUARY-MAY
PROJECT
FOR INTELLECTUAL PROPERTY LAW (LLBL) Under the Supervision of: ANURADHA NAYAK NAME:
ADITI GUPTA, ABHISHEK CHHABRA, ABHISHEK OJHA
SAP NO:
500012340, 500011974, 500011----
ROLL NO R450210007,R450210005, R450210006
INDEX
CHAPTER-1 INTRODUCTION CHAPTER-2 THE LEGAL FRAMEWORK IN INDIA
INDIA’S EXPERIENCE WITH GEOGRAPHICAL INDICATION PROTECTION
CHAPTER-3 IMPACT OF GEOGRAPHICAL INDICATION IN INDIA: SOME CASES
MUGA SILK OF ASSAM
BANARAS BROCADES AND SARIS
MALABAR PEPPER
VAZHAKULAM PINEAPPLE
CHAPTER-4 THE TRIPS AGREEMENT AND GEOGRAPHICAL INDICATIONS CHAPTER-5 THE SCOPE OF PROTECTION CHAPTER-6 THE WAY HEAD
INDEX
CHAPTER-1 INTRODUCTION CHAPTER-2 THE LEGAL FRAMEWORK IN INDIA
INDIA’S EXPERIENCE WITH GEOGRAPHICAL INDICATION PROTECTION
CHAPTER-3 IMPACT OF GEOGRAPHICAL INDICATION IN INDIA: SOME CASES
MUGA SILK OF ASSAM
BANARAS BROCADES AND SARIS
MALABAR PEPPER
VAZHAKULAM PINEAPPLE
CHAPTER-4 THE TRIPS AGREEMENT AND GEOGRAPHICAL INDICATIONS CHAPTER-5 THE SCOPE OF PROTECTION CHAPTER-6 THE WAY HEAD
1
GEOGRAPHICAL INDICATIONS AND DISPUTE BETWEEN SIMILAR PARTIES CHAPTER-1 INTRODUCTION
A geographical indication (GI) acts as a mechanism that helps producers differentiate their products from competing products in the market and enables producers to build a reputation and goodwill around their products that will fetch a premium price. A number of studies attest to the potential economic benefits of GI registration. A consumer survey undertaken in the European Union in 1999 found that 40 per cent of the consumers would pay a premium of 10 per cent for origin-guaranteed products (WTO, 2004). Despite the fact that the GI concept is yet to mature in India, an United Nations Conference on Trade and Development (UNCTAD) study has revealed that GI registered agricultural products can fetch a price premium of 10 –15 –15 per cent whereas for non-agricultural products it would be to the tune of 5 -10 per cent (Das, 2008). The inclusion of GIs within the TRIPS Agreement is a reflection of the EC’s negotiating success. negotiating success. This also draws attention to previous frustrated attempts at securing an international treaty on IGOs and the insufficiency of closely related IPRs, viz. ‘i ndications of source’ and ‘appellations of origin’. The term ‘indications of source’ is used in the Paris Convention (Articles 1*2+ and 10) and the Madrid Agreement. Three key elements constitute the notion: (a) there is a clear link between the indication and geographical origin (e.g. ‘made in …’) rather th an any other criterion of origin (e.g. ‘made by …’); (b) unlike other IGOs, there is no requirement for distinguishing qualities or attributes of the good; (c) the protected indication can be constituted by words or phrases that directly indicate geographical origin or phrases, symbols or iconic emblems associated with the area of geographical origin. The concept of geographical indication has its origin in 19th century Europe and has considerably evolved since then. The current international framework is laid down in Article 22 of the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement which mandates
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http://ipindia.nic.in/girindia/ http://ipindia.nic.in/girindia/
member countries to provide 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 GIs. The TRIPS defines GIs as ‘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’ (Article 22). Under Article 22, the scope of protection is composed of three aspects:
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 it may mislead the public.
Article 22.2.a prohibits the use of indications (words, phrases, images or symbols) that will mislead/ deceive the public about the good’s geographical origin. Article 22.2.b prohibits any use of GI that constitutes an act of unfair competition as defined in Article 10bis of the Paris Convention. The language of Article 10bis indicates that in order to prohibit such acts as acts of unfair competition, it has to be established that their use is misleading or will create confusion to the public, and that damages result or there is likelihood of damages resulting from such use of GI. As per Article 22.3 of TRIPS, registration of GI as trademarks shall be refused or invalidated at the request of an interested party, if their use is likely to mislead the public as to the true place of origin. Most countries including developing countries disallow the registration of geographical names as trademarks, unless these have attained secondary meaning. The TRIPS Agreement provides for two levels of protection for GI. What Article 22 provides is the basic level or a minimum standard of protection whereby all GI must be offered protection against use which would deceive the public or constitute an act of unfair competition. The second kind of protection, in Article 23, is a higher standard of protection specifically for wines and spirits. This article confers protection on GIs on wines and spirits per se or in absolute terms, without requiring any test of confusion or likelihood of deception to be met. In the special case of wines and spirits, Article 23.1 of TRIPS prohibits the use of translations of GI or
attachment of expressions such as ‘kind’, ‘type’, ‘style’, ‘imitation’ to products not originating from the place indicated, even where the true origin is clearly indicated. Thus, ‘Champagne style sparkling wine, Made in the USA’ would be prohibited even though this is evidently not misleading.
CHAPTER-2
The Legal framework in India
2
As a party to the TRIPS Agreement, India is required to protect GI and hence in order to fulfill that obligation, the Geographical Indications of Goods (Registration and Protection) Act, 1999 was enacted. It may also be noted that India felt that some of its products have high potential to benefit from GI registration and it was necessary to put in place a comprehensive legislation for registration and for providing adequate protection for GI. For unless a geographical indication is protected in the country of its origin, there is no requirement under the TRIPS Agreement for other countries to extend reciprocal protection. The main benefits which accrue from registration under the Act are as follows:
Confers legal protection to GI in India;
Prevents unauthorized use of a registered geographical indication by others;
Enables seeking legal protection in other WTO member countries.
From the perspective of a developing country, one of the best features of the Indian Act is the comprehensive definition given of GI, whereby agricultural, natural and manufactured goods all come under the ambit of GI. This is especially important in the Indian context considering the wide variety of goods that is deserving of protection ranging from agricultural products like Basmati, Darjeeling tea to manufactured goods such as Banrasi sari, Kolhapure chappals, Chanderi silk etc. Section 11of the Act provides that any association of persons, producers, organization or authority established by or under the law can apply for registration of a GI. Another important aspect of the Act is the possibility of protecting a GI indefinitely by renewing the registration when it expires after a period of ten years. In the domestic context, the Indian Act has tried to extend the additional protection reserved for wines and spirits mandated by TRIPS to include goods of national interest on a case to case basis. Section 22.2 of the Act endows the Central Government with the authority to give additional protection to certain goods or classes of goods. This is especially important in the developing country context 2
http://www.lawyersclubindia.com/articles/Geographical-Indications-in-India-Law-Procedure16.asp#.UycynmAW0UU
considering that we may not have wines and spirits to protect like the West but other exotic niche products like teas, rice etc. Section 25 of the Act, by prohibiting the registration of a GI as a trademark, tries to prevent appropriation of a public property in the nature of a geographical indication by an individual as a trademark, leading to confusion in the market. Also, according to section 24 of the Act, a GI cannot be assigned or transmitted. The Act recognizes that a GI is a public property belonging to the producers of the goods concerned; as such it cannot be the subject matter of assignment, transmission, licensing, pledge, mortgage or any contract for transferring the ownership or possession.
India’s Experience with GI Protection
3
Since the first Indian GI was registered in 2004, 172 GIs have been registered with the GI Registry of India. Of these, more than half (64 per cent) are handicrafts, more than one fourth (26 per cent) are agricultural products, and the remaining are food and manufacturing products. The trend of GI registration has been mostly upward with the maximum number of products registered in the year 2008 – 2009. While handicrafts have been the most registered GIs consistently, agricultural and manufactured products are increasingly being protected under the GI Act over the past few years (see figure 2) Food products, a more recent addition in the registered GI basket of India, was first granted protection in 2008 – 2009 when Dharwad Pedha from Karnataka was granted the status of a registered GI product. The recent increase in manufactured products being registered as GI can be partially attributed to more foreign products being registered at the Indian GI Registry. In terms of geographical distribution of GIs in India, most GIs have been registered from the southern states. The state of Karnataka has been the forerunner in registration of GIs followed by the states of Andhra Pradesh, Kerala and Tamil Nadu. The spread of GI recognition is concentrated in the southern states. Products from other states are getting registered now. At 3
The Protection of Geographical Indications in India: Issues and Challenges
the same time many states, which have several traditional varieties of agricultural products or handicrafts, are not forthcoming in applying for GIs. There are only three GIs from all of north east India and none from Uttarakhand. The states of Punjab and Haryana have no GI either except for a joint GI on Phulkari embroidery along with Rajasthan. Phulkari is the only GI in India which covers more than one state. Since 2009, 8 foreign (7 manufactured and 1 food) products have been accorded the status of registered GI under the Indian Act. These are Champagne and Cognac from France, Scotch Whisky from the United Kingdom, Napa Valley wines from the United States of America, Douro wine from Portugal, Peruvian Pisco from Peru and Prosciutto di Parma from Italy.
Why does Geographical Indication need protection?
4
Geographical Indications denotes the origin and the quality of products which have acquired reputation and goodwill over time. False use of geographical indications by dishonest traders, for example "KANCHIPURAM" for sarees, which was not made in the Kanchipuram area of Tamil Nadu in India, is detrimental to purchasers and legitimate producers. Hence geographical indication needs protection.
Classification of Goods Almost all jurisdictions including India follow International Classification system in which goods have been grouped into classes 1 to 34 for registration.
Rights conferred by registration The registration of a geographical indication confers on the authorized users the exclusive right to use the geographical indication in relation to the goods in respect of which it is registered. The Registration offers better legal protection for an action for infringement.
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http://www.wto.org/english/tratop_e/trips_e/gi_background_e.htm
Who Can Apply For A Geographical Indications Any association of persons, producers, organization or authority established by or under the law can apply. The applicant must represent the interests of the producers of the concerned goods.
Who is an authorized user in relation to a Geographical Indication A producer of goods can apply for registration as an authorized user, with respect to a registered Geographical Indication. He should apply in writing in the prescribed form along with prescribed fee.
Filing and Prosecuting Geographical Indications Applications
5
An application for registration of geographical indication shall be in prescribed Form (Form GI-1 for the registration of a Geographical Indication in Part A of the Register by an Indian applicant; Form GI-2 for a convention application; an application for goods falling in different classes by an Indian applicant in Form GI-3 and an application for registration of goods falling in different classes from a convention country in Form GI-4). The application should include the various requirements and criteria for processing a geographical application as follows:
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How the indication serves to designate the goods as a GI?
The Class of goods;
The territory;
The particulars of appearance;
Particulars of producers;
An affidavit of how the applicant claim to represent the interest;
The standard bench mark or other characteristics of the GI;
The particulars of special characteristics;
http://www.wto.org/english/tratop_e/trips_e/gi_background_e.htm
Textual description of the proposed boundary;
The growth attributes in relation to the G.I. pertinent to the application;
Certified copies of the map of the territory
Special human skill involved, if any;
Number of producers; and
Particulars of inspection structures, if any, to regulate the use of GI.
Upon filing of the application accompanied by prescribed fees, a number will be alloted. The application would be examined on turn to check whether it meets the requirements of the GI Act and Rules. After issuance of the Examination Report submission would be considered. If no objections is raised it would be accepted and would be advertised in the Geographical Indications Journal. An opposition can be lodged within a maximum of four month period. If the opposition is dismissed, the application will proceed to registration in Part A of the Register. After a geographical indication is registered any person claiming to be the producer of the registered geographical indication can file an application for registration as an authorised user in Part B of the Register.
Duration of a geographical indications The term of a geographical indications registration is for a period of ten years. The renewal is possible for further period of 10 years each. If a registered geographical indication is not renewed, it is liable to be removed from the register.
Remedies For Infringement The Act also provides criminal remedies. First, the intentional falsification of a geographical indications will bear a prison sentence of at least six months. This may be extended to three years and be accompanied by a fine. Second, the police may conduct search and seizure operations without any warrant. In essence, unauthorized parties may not use geographical indications if such use is likely to mislead the public as to the true origin of the product.
CHAPTER-3
Impacts of GI registration in India: Some cases
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A number of observers point out that of all the different types of intellectual property rights, GI may be more amenable to the particular context of developing countries. GIs may especially facilitate protection of the collective rights of the rural and indigenous communities in their indigenous knowledge, ensuring that the entire community which has preserved the knowledge and has passed it on with incremental refinement over generations, stand to benefit from the knowledge and that this is not locked up as the private property of one individual (Sahai and Barpujari, 2007). Other advantages of GIs are that the knowledge remains in the public domain, the scope of protection is limited to controlling the class and/ or location of people who may use the protected indication and the rights can potentially be held in perpetuity as long as the product-place link is maintained (Commission on Intellectual Property Rights, 2004). Also, holders of a GI do not have the right to assign the indication, thus, preventing its transfer to non-locale producers. Evidence on the socio-economic impacts of GIs in the Indian context are, however, limited although anecdotal evidence suggests that GIs have significant implications for producers in developed and developing countries (Jena and Grote, 2007) . Interestingly, the collective nature of GIs also brings to the fore significant collective action related problems across various stages of organization and governance (Das, 2009). For example, a group of producers may take the initiative in the GI registration process, while others not willing to join initially may join later thereby attempting to free-ride on the efforts of the forerunners. In India, there are many GIs that are registered in the names of some central or state government departments or bodies, yet there is no homogeneity among those initiatives and involvements across states. A number of studies have also found that GIs could lead to exclusion of many from enjoying the benefits (Gopalakrishnan et.al (2007), Rangnekar (2009)). Firms with better bargaining positions may also end up making disproportionate share of the economic value generated from securing protection (Rangnekar, 2004). 6
The Protection of Geographical Indications in India: Issues and Challenges
It is against this backdrop that our study has tried to assess the situation on the ground with respect to a number of registered GIs, through indepth, field level case studies as well as primary survey based on a standard questionnaire prepared for the purpose. Some of these case studies include Muga silk of Assam, Banaras brocades and saris, Malabar pepper and Vazhakulam Pineapple, all of which are registered GIs.
Muga Silk of Assam Muga silk is a registered GI from the state of Assam. Historical evidence suggests that Assam’s silk industry had reached the pinnacle of perfection by the 7th century A.D. Banabhatta, the author of Harshacharita informs us that king Bhaskara Varma of Kamarupa (ancient Assam) presented to Harshavardhana silken towels as “silken and pure as the autumn moon’s night...”(cited in Sahai and Barpujari, op.cit.). In the present day, muga silk constitutes the state’s most popular export product after Assam tea. The Patent Information Centre of the Assam Science Technology and Environment Council (ASTEC) secured registration for muga in 2006, which is incidentally the first registered GI from the north-eastern region. While ASTEC is the registered proprietor of the muga GI, till date, there are no registered users. One to one interviews with weavers and silk traders in the town of Sualkuchi revealed very low awareness about the GI protection of muga. While the price of muga has been rising over the last few years, that has little to do with GI registration. The reason for the high prices of the muga yarn, according to the various stakeholders interviewed, are diminishing area under muga cultivation owing to rubber cultivation, diseases at the cocoon stage, loss incurred due to the outdoor nature of muga rearing, and so on. Nevertheless, higher prices have not been able to encourage the farmers to hold on to muga cultivation. As a result, muga has become almost three times more expensive, compared with other similar varieties of silk. Apparel with 100 per cent muga yarn is rarely produced these days, except to cater to the state emporiums, or for special orders. Muga is often blended with imported tussar silk from China or with other indigenous silk yarn such as pat. Meanwhile, as observed in the field, power-loom is getting increasingly popular for muga weaving, dealing a further blow to handloom weavers. In an interview, an applicant for registered use of muga observed that fabric woven on the power-loom has certain
advantages and could be the only way out for entrepreneurs like him as many weavers are leaving the profession owing to un-remunerative wages. Regarding the setting up of a quality control and inspection mechanism, as required by the law, ASTEC has proposed employing the services of the Seri Bio Lab of the Institute of Advanced Study in Science and Technology, Guwahati, for quality control. An inspection body is yet to be constituted. Hence, at this stage, even after six years of registration, GI in muga cannot give any guarantee of quality or authenticity.
Banaras brocades and saris
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‘Banaras brocades and saris’ secured registration under the GI Act in September 2009, with the application filed by nine organisations viz. Banaras Bunkar Samiti, Human Welfare Association (HWA), joint director industries (eastern zone), director of handlooms and textiles Uttar Pradesh Handloom Fabrics Marketing Cooperative Federation, Eastern UP Exporters Association (EUPEA), Banarasi Vastra Udyog Sangh, Banaras Hath Kargha Vikas Samiti and Adarsh Silk Bunkar Sahkari Samiti. The weaver community predominantly constitutes poor Muslims and Dalits and the structure of production is based on a hierarchy of kothdars (wholesale dealers), master weavers and other weavers. With the objective of understanding the actual impact of registration on the ground level, TERI researchers conducted a multi-stakeholder consultation at Varanasi interacting with registered users, Banarasi Sari traders, bunkars (weavers), government officials, local buyers, NGO representatives, cottage manufacturing units etc. The consultations indicated that the Banarasi sari industry is impacted by a host of variables in terms of raw material and labour issues, the socio-economic aspects of the region, and, to some extent, the pitfalls of excessive liberalisation and legislation (Dwivedi andBhattacharjya, 2012). 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. Such destitution and despondency among the weavers has forced them to commit suicide or has precipitated employment shifts, as evidenced by MGNREGA (Mahatma Gandhi National Rural Employee Guarantee Act) benefits. It 7
The Protection of Geographical Indications in India: Issues and Challenges
could be gathered from the fieldwork that the promise of geographical indication protection has not curbed the menace of fakes. Machinebased cheap product imitations continue to be sold. Cheap raw material imports have led to the sale of what are known as Kela saris, in the name of Banarasi saris. These use banana tree resin to create threads which are then polished to give the look of silver or gold thread. Chinese imitation saris, pegged at much lower prices, are flooding the market. Moreover, there is a tenfold rise in the number of operating powerlooms in the district of Varanasi 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, with computerised designs. Enforcement under the legal regime is frustrated further through absence of will on the part of GI holders to take action against the imitators. Despite the stakeholders being aware of the deleterious impact of sales of fake saris, complex market dynamics enforces silence among all concerned.
Malabar pepper Malabar pepper is famous for its quality. It is classified under two grades – garbled and ungarbled. History is replete with instances of foreigners coming to the Malabar Coast to trade in Indian spices in general and pepper in particular. It is stated that the exorbitant price of pepper during the middle ages, a trade which was monopolized by the Italians, forced the Portuguese to seek a sea route to reach India. Pepper is used as a spice and it has also got medicinal properties. Malabar pepper is cultivated in the geographic regions comprised in the Malabar region of the erstwhile Madras Presidency. Now these areas comprise in the states of Kerala, Karnataka and Tamil Nadu. Malabar pepper accounts for around 25 per cent of the entire world’s supply of pepper. This pepper is unique for its sharp, hot and biting taste. Highly aromatic, with a distinctive fruity bouquet, it has the perfect combination of flavour and aroma. In order to protect the brand value of Malabar pepper, the Spices Board applied for a GI registration and after completing the formalities the registration was granted. As pepper is exported in huge quantities, there was a feeling that the GI tag would give better legal protection against counterfeit products, more visibility to the brand etc. None of the respondents interviewed by TERI researchers were aware of any infringement action initiated
against any of the counterfeit producers. There was also a general feeling that it is the traders who reap benefit out of the GI tag and not the farmers. The general refrain was that farmers do not get any extra benefit from the GI tag, which is also corroborated by findings from the TERI survey discussed later. The general mood in the sector at the time of field visit was a worry over the declining price in pepper. There were demands that there should be a complete ban on future trades in pepper.
Vazhakulam Pineapple There was considerable interest shown among the academia and practicing lawyers about the GI tag for Vazhakulam Pineapple. Some interviews were conducted by TERI researchers as a result of this. Pineapple is produced as a commercial fruit crop in India. The main pineapple producing states are Kerala, West Bengal, Assam and Tripura. Vazahkulam, known as the Pineapple City, is located in Muvattupuzha taluka of Ernakulam district. The pineapple cultivation in that region started in the forties. It is a variety called Mauritus which is cultivated in this region. The pineapple produced in this region has a distinct taste. It is very sweet and not very juicy. Because of these features, there is a huge demand for Vazhakulam Pineapple. From 1985 onwards, many farmers started taking up large scale commercial cultivation of this pineapple. Because of less juice content in the fruit, this variety of pineapple is mainly consumed as a fruit. These distinctive features were noticed in pineapples grown in an area roughly falling within 60 kms in and around Vazhakulam. These areas fall under the revenue districts of Ernakulam, Idukki, Kottayam and Pathanamthitta. However 90 per cent of the pineapple is produced in Vazhakulam area only. The farmers attribute the distinctive taste of the pineapple to the soil in the region. The main demand for Vazakkulam pineapple comes from the state of Kerala only. The export market is mainly the Gulf countries. As the fruit has to be consumed within 4 -5 days of harvesting, exporting does not make much of commercial sense. In order to protect the brand name, GI application was jointly filed by the Pineapple Farmers Association, Nadukkara Agro Processing Company Ltd. (NAPCL), and the Kerala Agricultural University.
The Pineapple Farmers Association is a registered society under the Charitable Societies Act. It was formed in 1990 mainly to address the marketing issues. More than 500 pineapple farmers are members of this Association. The main objectives of the association are:
to unite and strengthen the pineapple farmers;
to create awareness on farming and marketing issues;
to provide assistance in seeking financial and technical help from various government and non-government agencies;
and to engage in promotion activities.
The Nadukkara Agro Processing Company Ltd. is a public limited company with a shareholding pattern of 70 per cent held by farmers and 30 per cent by the state of Kerala. NAPCL is involved in the production of many pineapple based products like pineapple juice, pineapple fruit candies among others. The Kerala Agricultural University was instrumental in providing the scientific details needed for the GI registration and is involved as the inspection body to regulate the quality standard parameters. The purpose of going for a GI registration was for brand value. No case of infringement has come to the notice so far. The office bearers of the farmers association were very candid in explaining that the major benefit of the GI registration was the greater visibility of the brand. Most of the farmers are big farmers who have taken land for lease. The lease land mainly comes from the rubber plantations, during their replantation time. In the first 3 –4 years of replantation, pineapple is cultivated as an inter crop. These plantations would stretch from 50 –100 acres. It is cultivated as an intercrop in coconut farms too. There are farmers who have resorted to pineapple cultivation as the main crop. There was a feeling among the representatives of the farmers’ association that as GI is intended to help the marketing of the product as it brings in more brand visibility, the farmers are not directly benefitted. The general feeling to be gathered after interaction was that direct benefit for farmers was not seen as the purpose of GI tag.
CHAPTER-4 The TRIPS Agreement and Geographical Indications
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Section 3 of Part II of the TRIPS Agreement makes provisions for the protection of GIs. Like any other section of the TRIPS Agreement it begins with a subject matter definition which also set out the conditions for protection (Article 22.1). To qualify for protection, an indication must (i)
identify the good and its area of geographical origin,
(ii)
possess a given quality, reputation or other characteristics, which
(iii)
is essentially attributable to its area of geographical origin.
Articles 22.2-22.4 establish the basic obligation for the protection of all GIs. Members must provide the “legal means for interested parties” to secure protection of their GIs. As the legal means are not specified, Members are free to determine the appropriate implementation mechanism (cf. Article 1.1). Under Article 22, protection is composed of three elements: (a) protection against the use of indications in a manner that might mislead or deceive the public, (b) protection against the use of indications in a manner that constitute acts of unfair competition, and (c) provisions for refusal or invalidation of trademarks that contain or consist of indications, where such may mislead the public. Article 23 contains additional obligations for providing the ‘legal means’ for the protection of indications of wines and spirits. The additional protection offered to wines and spirits begins with Article 23.1 which borrows language from Article 3 of the Lisbon Agreement. Article 23.1 prohibits the use of GIs for wines and spirits “even where the true origin of the good is indicated or the geographical indication is used in translation or accompanied by expressions such as ‘kind’, ‘type’, ‘style’, ‘imitation’ or the like”. Paralleling the provisions in Article 22, provisions exist for invalidation or refusal of trademarks that ‘contain or consist’ of GIs 8
Geographical Indications A Review of Proposals at the TRIPS Council: Extending Article 23 to Products other than Wines and Spirits ,By Dr. Dwijen Rangnekar
identifying wines or spirits (Article 23.2). Importantly, unlike Article 22.3, the use of the GI in a trademark does not have to be considered misleading for Article 23.2 to be invoked. The next provision in Article 23 relates specifically to homonymous indications where there is an obligation to “determine the practical conditions under which the homonymous indications in question will be differentiated from each other”, while ensuring equitable treatment of producers and that consumers are not misled (Article 23.3). Finally, Article 23.4 obliges Members to enter into negotiations “concerning the establishment of a multilateral system of notification and registration” of GIs for wines to “facilitate” their protection. A variety of commentators have noticed that the built-in agenda for further negotiations and review in this Section was the only possible outcome to overcome the deep conflicts that existed on GIs. The first provision for further negotiations relates to a multilateral register for GIs of wines (cf. Article 23.4, see above). Article 24.1 makes explicit provisions for further negotiations aimed at “increasing the protection of individual geographical indications under Article 23” and cautions Members from using the exceptions listed in Articles 24.4-24.8 as either an excuse to avoid negotiations or conclude bilateral or multilateral agreements. While reference to Article 23 here has been understood to circumscribe the provisions to wines and spirits, some Members (i.e. demandeurs) consider this interpretation as ‘narrow’ and ‘legalistic’ and suggest the reference to Article 23 is not to the category of goods but to the means of protection. Article 24.2 instructs the TRIPS Council to maintain a ‘watchdog role’ over the operations of this Section, the first such review being within two years of the entry into force of the WTO Agreement. The Council has also been instructed to “take such action as may be agreed to facilitate the operation and further objectives of this Section”. A series of exceptions are included in Article 24 that aim at balancing interests of GI-holders with those of the wider public and other users of indications. Article 24.3 is not an exception, but a standstill clause that seeks to preserve TRIPS-plus standards of protection that may have existed in some Member countries at the time the WTO Agreement came into force (1 January 1995). Article 24.4 is an exception related to GIs for wines and spirits that permits the “continued and similar use” of GIs for wines and spirits by those who have used that indication
in a “continuous manner with regard to the same or related goods or services” in that territory for at least 10 years preceding 15 April 1994 or in good faith preceding that date. Article 24.5 is an exception relating to all GIs and aims to negotiate the relationship between trademarks and GIs, i.e. Articles 22.3 and 23.2. The exception states that a trademark acquired or registered in good faith either (a) before the date of application of the provisions of Section 3 or (b) before the GI in question has been protected in its country of origin should not prejudice the eligibility for or validity of registration of the trademark or the ‘right to use’ the trademark. Furthermore, Article 24.7 establishes a time limit (5 years) and a contingency (‘bad faith’) with respect to the exercising the right to invalidate or refuse registration of trademarks that consist of or contain an indication. Article 24.6 is an exception that concerns generic GIs across all goods and includes a specific application of this principle for ‘products of the vine’ (thus, including those spirits made from vine). The first part of Article 24.6 allows exceptions from obligations in Section 3 where a term is customary in common language as a common name for certain goods and services (e.g. ‘china’ for porcelain). The second part of Article 24.6 exempts Members from protecting indications that are identical with the ‘customary name’ of a grape variety in the territory at the date of entry into force of the WTO Agreement (e.g. Cabernet Sauvignon). Article 24.8 recognises the right of a person to use his/her name or the name of their predecessor in business in the course of trade. This right is circumscribed by requiring the name not to “mislead the public”. Article 24.9 is framed as a ‘dependency’ exception that exempts Members from protecting indications that are either not protected in their country of origin or those that cease to be protected in their country of origin or are in disuse.
CHAPTER-5 The Scope of Protection
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A point repeatedly raised at the TRIPS Council by demandeurs for GI -extension is that Section 3, unlike any other part of the TRIPS Agreement, has a single subject matter definition (Article 22.1) but makes provisions for a hierarchy in the scope of protection based on an arbitrary categorisation of goods (IP/C/W247/Rev.1; Section 4.1 below). In contrast, Article 27.1 defines the conditions to be met by patentable subject matter and simultaneously denies any possible discrimination on the grounds of “place of invention, the field of technology and whether the products are imported or locally produced”. The hierarchy in Section 3 is more nuanced than often noted (Escudero, 2001). In addition to the widely noted difference between Articles 22 and 23, wines enjoy additional provisions in comparison to spirits through the provisions made in Articles 23.3 and 23.4 – the latter has since been extended to include spirits. Yet, as we note below, it does not directly follow that Article 23.3 (homonymous indications) provides higher protection to indications for wines in comparison to indications for spirits. Despite the differences in the scope of protection, there are some commonly shared features between Articles 22 and 23, which include the following:
Public or ‘Collective’ Right
Particularly where GIs are available through a sui generis legislation (e.g. the EC system), GIs are public/collective rights that are not vested in an individual firm, person or enterprise. According to the Secretariat’s survey, eligibility criteria seek to ensure that producer associations, public entities, local or regional governments, etc. are the appropriate bodies initiating the application process. Moreover, in some cases the producer group is not the owner of the right but only a user of the GI much like any other entity that fulfils the conditions specified by the GI, as such a ‘collective’ right. Yet, the survey also notes that in jurisdictions, where the legal means are not
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Geographical Indications A Review of Proposals at the TRIPS Council: Extending Article 23 to Products other than Wines and Spirits ,By Dr. Dwijen Rangnekar
through a sui generis law but, say, through trademark law (e.g. the US system), then it is possible for collective/private rights like certification marks38 to be available.
Right to License
Following from above and in jurisdictions with a sui generis legislation, the scope of protection does not include the ‘right to assign’ an indication – a right that exists for trademarks (Article 20) and patents (Article 28.2) within the TRIPS Agreement39. While some observers may consider this as circumscribing the scope of protection to GI-holders, it is also appreciated as a feature of GIs that corresponds with its public/collective right ethos. To be clear, all enterprises fulfilling the conditions specified in a GI have the ‘right to use’ the indication but do not have the ‘right to authorise use’ to others. It is useful to note that in jurisdictions where the ‘legal means’ are provided through laws other than a sui generis system the right to authorise use might be provided. Thus, for example, if an IGO is protected as a collective or certification mark then the owners of the mark possess the right to license the mark. For example, in the US, the owner of the certification mark usually does not apply the mark (as in the case of trademarks) but assigns or authorises others to use the mark on goods or services upon their meeting certain requirements .
Confusingly Similar ‘Marks’
When comparing the protection granted to GIs to the protection granted to trademarks, it has been noted that the latter is relatively expansive since ‘confusingly similar marks’ will be automatically considered infringing (Harte-Bavendamm, 2000, p64). In comparison, GIs are not granted any such provision to widen the economic space of an indication to include ‘confusingly similar indications’.
Duration of Protection
In general, where GIs are protected through a sui generis legislation, protection is offered without a fixed limit in time and without procedures for renewal. Where renewal is required this occurs at intervals of about 10 years. However, in these jurisdictions it is also the case that GIs may lapse and be revoked if it falls into disuse or standards are not maintained. In other
juridical systems, GIs have to follow provisions for renewal that exist for collective marks, trademarks etc. as the case might be.
Geographical Origin
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Following on from the definition of GIs (Article 22.1), any good to be protected must originate in the territory, region, or locality indicated in the designation. The scope of protection for GIs under TRIPS is largely based on the principles that ground the basis for protecting GIs, viz. protection against the use of indications in a manner that might either mislead the public or be construed as deceptive and protection against the use of indications in a manner that are acts of unfair competition. In addition, provisions exist in TRIPS that aim at negotiating the relationship between trademarks and GIs, which have clear economic implications on the commercial value and possible appropriation of rents within an indication. Consequently, we will address these provisions as part of the scope of protection. In a similar sense, provisions exist for dealing with deceptive indications and indications that are homonymous – both of which have impact on the economic value of protected indications. Finally, provisions for creating a multilateral register for notification and registration of indications are relevant in discussing the scope of protection. Hence, in our framework there are six components to the scope of protection: 1. Misleading the Public
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Following on from the Paris Convention and the Madrid Agreement, provisions exist to prohibit the use of indications (words, phrases, symbols and images) that will mislead the public about the good’s geographical origin. Thus, the use of iconic symbols like the pyramids or the Taj Mahal to infer the good’s association with Egypt and India respectively or the use of a language or script to impute erroneous geographical origin is prohibited. Consequently, under Article 22.2(a), the holder of the infringed indication has to bear the burden of proof in establishing that consumers have been misled. Article 23.1 indirectly implements this principle by providing 10
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for stronger protection by directly prohibiting the use of indications for wines and spirits on wines and spirits that do not originate in the place indicated by the GI in question even where the true origin of the goods is indicated. Moreover, the translated use of indications for wines and spirits by phrases such as ‘like’, ‘imitation’, etc. is also strictly prohibited40. To continue, the burden of proof is nominal in that it requires verifying the true geographical origin of the goods deemed to be infringing. By way of illustration, labelling a pack of bananas as ‘Antarctica bananas’ is permitted as it would not be considered as misleading the public. However, the label ‘Antarctica Merlot’ is strictly prohibited under Article 23.1, even though it is not considered misleading. 2. Unfair Competition The second element of the scope of protection, protection against the use of indications in a manner that are deemed to be acts of unfair competition as defined in the Paris Convention (Box 4), is considered an important achievement given the opposition to earlier attempts at revising the Paris Convention to include IGOs (see Conrad, 1996, quoted in Watal, 2001). Article 22.2(b) incorporates this element for all GIs. According to WIPO’s International Bureau, affecting this element of the scope of protection might require significant effort: “In order to be successful in such an action, the plaintiff must show that the use of a given geographical indication by an unauthorised party is misleading and, as the case may be, that damages or a likelihood of damages results from such use. An action against the unauthorised use of a geographical indication based on unfair competition can only be successful if the geographical indication in question has acquired distinctiveness or, in other words, if the relevant public associates goods sold under that geographical indication with a distinct geographical origin and/or certain qualities. Since law suits based on passing off or unfair competition are only effective between the parties of the proceedings, the distinctiveness of a given geographical indication must be shown every time that geographical indication is enforced.” (WIPO – International Bureau, 2000, paragraph 44). The International Bureau’s treatment of the subject does not make clear whether the problem identified is unique to the application of these legal principles to GIs or whether this is a generic
problem concerning principles of unfair competition. In the absence of detailed research, we speculate that some trademark holders might find it easier to police their marks in the international economy because of their global presence and resource endowment. This is the case with producer associations of financially lucrative GIs, e.g. Scotch Whisky and Champagne. It is said that the Scotch Whisky Association employs at least four full-time lawyers who are at any one time pursue over 50 legal actions worldwide (Freedman, 1994). Blakeney (2001) reviews key legal decisions where relevant principles of ‘passing off’ and ‘unfair competition’ have been applied. Prima facie, it is difficult to imagine that an association of indigenous communities would be similarly endowed in terms of legal experience or expandable resources. Moreover, the need to repeatedly establish the same principle in every jurisdiction that a potential violation is identified and the demand to demonstrate the public’s association with the indication are clearly demanding41. Consequently, one might be motivated to agree with the view expressed in the quote above. In addition, as we noted earlier, under Article 23.1 indications for wines and spirits cannot be used in translated form. 3. Trademarks and GIs Stemming from initial proposals submitted by the EC, Switzerland and Australia are provisions aimed at negotiating the trademark-GI relationship (Gervais, 1998, p127). In general terms, TRIPS allows for refusal or invalidation of a trademark which contains or consists of a GI when the said goods do not originate in the territory indicated. However, comparing Article 22.3 and 23.2 we note there are significant differences in the scope of these provisions. Simply stated, Article 22.3 has a requirement for the consumers to be misled, whereas Article 23.2 does not have this contingency. 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. Consequently, the general proposition that GIs are excluded from the domain of trademarks (Blakeney, 2001). Yet, there are many conceivable and real instances where a trademark consists of or contains a GI. For example, the use of Antarctica as a trademark for bananas is considered permissible as there is no deceptive element in terms of implying
geographical origin (WIPO – International Bureau, 2001, paragraph 103). Moreover, trademarks can consist of GIs in other circumstances, such as when the use of a GI is entirely fanciful, though not denoting geographical indication per se, and the trademark is considered distinctive as in the case of ‘Mont blanc’ for high quality writing equipment and ‘Thames’ for stationery (Harte-Bavendamm, 2000; Blakeney, 2001). It could also be the case that the reputation of a trader endows the GI with secondary significance leading to an identification of the trader as such. In such instances, a trademark can consist of a GI and examples of this situation include ‘Oxford University Press’, Schwartauer for high quality jams, etc. manufactured in North German town of Bad Schwartau. The overlap between the two domains of IPRs is real and imminent. The disciplines in the TRIPS Agreement provide, at best a “delicately balanced solution” (WIPO – International Bureau, 2000), or at worst an unclear and yet to be negotiated relationship (cf. Box 5). 4. Deceptive Indications
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A range of situations can be identified where indications are literally true but nonetheless their use is considered misleading. This may be the case with deceptive indications and/or homonymous indications. Article 22.4 makes provisions for protection against deceptive indications. Gervais (1998, pp126-27) presents a hypothetical case of emigrants from a former imperial country having settled in the colony in a region which they eventually name as the same name of the region of their origin. Naturally, these expatriates could use the same indication for the same goods. Through Article 22.4, producer groups in the ‘original’ region in the imperial country could prohibit use of the indication by the expatriates. 5. Homonymous Indications Homonymous indications refer to that set of indications where the indications originate in different countries but are actually spelt or pronounced similarly. A wellknown example is that of ‘Rioja’ – an indication for wine originating in regions with the same name in Spain and in Argentina. As noted in earlier, honest use of the indication by producers in each of the different
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countries is envisioned and Article 23.3 obliges each Member to “determine the practical conditions under which the homonymous indications in question will be differentiated from each other”, while ensuring equitable treatment of producers and that consumers are not misled. Escudero (2001, p29) in his study of this provision ends with the rhetorical question: “The question to be asked is whether this constitutes really an additional protection to geographical indications for wines *…+ We think it does not”. 6. Multilateral Register The TRIPS Agreement obliges Members to enter into negotiations “concerning the establishment of a multilateral system of notification and registration” of GIs for wines to “facilitate” their protection (Article 23.4). In its 1996 Annual Report, the TRIPS Council envisaged, with respect to the negotiations under Article 23.4, to initiate preliminary work on relevant issues. It stated that “Issues relevant to a notification and registration of geographical indications for spirits will be part of this preliminary work” (IP/C/W/8, paragraph 34). The 1996 Singapore Ministerial Declaration then endorsed “the reports of the various WTO bodies”42. Members differed in their understanding and interpretation of this endorsement; in particular there was no consensus on the inclusion of spirits in the aforementioned multilateral register (Escudero, 2001, p30). These doubts were removed, however, with the express reference to spirits in the Doha Ministerial Declaration43. The establishment of a register of protected indications could enhance the scope of protection for indications included within the register if these were to be protected across all jurisdictions44. By lowering the transaction costs associated with gaining protection, the register can be considered an important component that increases the level of protection for indications of wines and (now) spirits. One commentator suggests that developing countries might benefit by supporting the development of a register so as to establish a common list of protected indications (Watal, 2001, p274). This strategy would help diminish some of the discriminatory provisions in the protection of GIs.
CHAPTER-6 The Way Ahead
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An analysis of the legal framework as well as experiences with registered GIs, both from the case studies and the survey indicate the presence of a number of challenges. An important dimension of GI is that it does not protect knowledge or technology as such. It only protects the name or indication. This essentially means that the famous Banarasi sari can be produced anywhere in the world but it cannot be named ‘Banarasi sari’. For a price-conscious consumer, it might not make much sense to buy GI certified products at a premium, if the same product is available elsewhere. Some of the other challenges are given below. The question of beneficiaries One of the main problems is the ambiguity in the definition of the term ‘producer’ in the legislation which does not distinguish between real producer, retailer or dealer. As a result of this, the benefits of the registration may not percolate down to the real producer as is seen in the case studies of muga silk and the Banarasi sari and as also attested to by the respondents of our survey. Appropriate Identification of products Currently, government activities related to GI is concentrated mostly on registering GI products where the state governments are acting in haste. Identification of GI based products and their registration is happening without adequate due thoroughness. Groups filling for GI registration do not assess the commercial prospect of a GI product in the domestic and international markets or the potential of such registration in contributing towards the future growth of the product as well as the socio-economic implication for the communities involved in the supply chain.
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The Protection of Geographical Indications in India: Issues and Challenges
Defining the characteristics As Rangnekar’s study of Goa feni (2009) elucidates, GI status could lead to the creation of ‘clubs’ (connoting exclusion of many others), with the use of a GI permissible only by those who adhere to the specification, thus, being similar to club rules. Gopalakrishnan et.al (2007) also observes that as of now, traders enjoy more economic benefits than the actual producers of GIs and hence, recommends that the right to use the registered GIs must be confined to the actual producers of the GIs from the identified geographical area and only with their permission, the traders and others involved in the trade could use the GIs. Defining geographical boundaries
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Defining the exact geographical boundaries of a product is often a big challenge, particularly in the context of non-agricultural products. For example, Banarasi saris are woven not just in the city but in the rural areas of the same district as well as in some neighbouring districts. Similarly, Baluchari sari, another GI registered product, originated in a village called Baluchar in the district of Murshidabad. But the village does not exist anymore as it has been swallowed by a river. With time this form of weaving was almost lost and was revived later. However, in the process of revival, weavers of Bishnupur in the district of Bankura played a larger role than the weavers in Murshidabad. These two places are about 200 Kms apart. Hence, the question is which region should be the legitimate one in GI registration. Since the state government agencies have taken a lead role in the process of registration, they have tended to include the entire state for registration for GI which may not be appropriate. Post-registration follow-up Moreover, post-registration, there is need for promotion and continuous awareness building particularly among the consumers (AIACA, 2011). There currently exists no standard procedures for consultation before registration and it is most probable that pre- application process may end up in inadequate consultations with various stakeholders including retailers. While marketing and promotion efforts may need sustained commitment of resources, yet there is no 14
The Protection of Geographical Indications in India: Issues and Challenges
guarantee of such success particularly for new GI products. There is also constant need for building capacity and awareness about GIs among various stakeholders including consumers, as highlighted by respondents in our survey. All these issues will need to be addressed for GI registration to serve the desired goals of providing an assurance of quality to the consumers and socio-economic benefits to the producers. Registration in foreign countries The challenges associated with GI protection also include technicalities involved in the registration process in various foreign countries, high expenses incurred in appointing a watchdog agency to get information on misappropriation, and f inancial resources that are needed for pursuing legal battles, etc. (Das, 2008). Sometimes, specifying the production processes, uniqueness and geographical information tends to be very technical and expensive. In some countries, GI registration can be given only to an association of producers, whereas in India most of the GIs are owned by government agencies. Involvement of stakeholders 15 As our survey indicates, primary stakeholders like producers, traders, farmers, artisans etc. are not consulted at the pre-application stage, with all registered users surveyed claiming that they have not been consulted. As a result of this, the real objectives of the Act are not met leading to registration that may fail to achieve the desired outcome. This is important to deal with some of the challenges like identifying products, defining their characteristics, defining geographical boundaries, etc.
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The Protection of Geographical Indications in India: Issues and Challenges
