Geographical Indications: An Overview

“I do not feel obliged to believe that the same God who has endowed us with sense,
reason, and intellect has intended us to forgo their use.” - Galileo Galilee

The whole world in its present form is driven by the innovation, which no doubt has
changed a Gramophone Record to an I-Pod, an abacus to a computer, a penny mail to E-
Mail, TV Antenna to Dish TV, Bank to an ATM machine, bullock carts to BMW’s and
so on. All these innovations are the creation of human mind constituting the intellectual
property. So to bring these innovations before the society every business house invests in
advertising signs such as names or other distinctive logos, signs or devices used on
products, services, companies and now, on web site on the internet. For this purpose there
is a particular category of distinctive signs, which identifies a product, whose qualities, or
other characteristics or just reputation, is closely associated with a particular geographical
area.

A Geographical Indication (GI) of origin is essentially a place name that identifies the
geographic source of a good and signifies a distinctive quality, reputation, or other
characteristic of the good that is essentially attributable to that geographic source. Names
such as ‘Darjeeling’, ‘Basmati’, ‘Champagne’, etc are examples of some such well
known GIs that are associated throughout the world with products of a certain nature and
quality.

Which should be given protection in order to ensure that it is used in industrial and other
activities for the betterment of society, to obtain financial gain for the owner, & to
motivate others to create further intellectual work? The essential and constituent link
between the products origin and their quality or reputation has always been the essential
element or sine qua non, on which various jurisdictions have construed GI protection.
This protection typically takes the form of “rights” (Intellectual Property Rights) afforded
to the owner to use this intellectual property towards these purposes, and expressly
forbidding others from making similar use of such property.

Well-known examples of these are ‘Champagne’ for sparkling wine from this district in
France, ‘Scotch’ for whisky from Scotland or ‘Darjeeling’ for tea from this district in
India known as geographical indications and represents enormously valuable goodwill
built up over years of association by consumers with the product and the geographical
area.

A geographical indication is a sign used on goods that have a specific geographical

origin. The goods (agricultural, natural or manufactured goods, handicraft and industry
goods like food stuff) possess qualities or a reputation that are due to that place of origin.
Since these qualities depend on the geographical place of production, a specific link
exists between the products and their place of origin. For example, ‘Kanjeevaram silk’
denotes the product from Kanjeepuram in South India, ‘Kolhapuri chappals’ from
Kolhapur and ‘Aplhonso mangoes’ from Mumbai.
Origin
The GIs in its earliest form can be traced back to the Egyptian Civilization where the
brick-makers in order to indicate the origin related resistance of bricks and stones with
which pyramids were made used these marks. Its relevance can be linked to ancient
Greece, where Thasian wine from the island of Thasos in Macedonia fetched a price of
20 drachmas for 20 liters. One also learns that Parmigiano or Comté dates back to the
13th century and that Washington potato can be traced to the 19th century. Over the past
centuries, European countries have taken the lead in identifying and protecting their
intellectual properties. The first intellectual property laws (albeit in crude forms)
appeared in Venice in the 15th century, in England in the 17th century, followed by other
industrialized countries in the 18th century. GIs, as an idea, too, are of European origin,
with a subgroup of countries, namely, France, Italy, and Portugal, taking a special interest
in promoting them.

GIs have also historically served as indicators of the commercial quality of the goods that
they identify. Traditionally, GIs have been used primarily to identify agricultural
products that derive their qualities from their place of production and are influenced by
specific local factors, such as climate and soil. ‘Idaho’ potatoes or ‘Bordeaux’ wines are
examples of famous GI for agricultural products. Agricultural products, however, are not
the only products that can be or are identified by GI. Unique qualities, due to the
materials and labor associated with the place where they are manufactured, have also
characterized products, such as ‘Swiss’ watches, etc. Another notable feature as regards
GIs is the very special type of right that they grant to their beneficiaries. GIs cannot be
‘owned’ by just one or a few owners. Similarly, GIs cannot be licensed because their use
strictly depends on their relation with the geographical place they identify. Instead, GIs
are traditionally owned and exercised collectively by all those persons that are residing
and producing products in those geographical areas. GIs first gained currency in the
1800s, when there was a move to define territories and organize production of special
products. But the term ‘geographical indication’ was for the first time used in the Trade
Related Aspects of Intellectual Property Rights agreement.

The most famous and lucrative GIs today all have origins in developed countries, for
example, Cognac, Roquefort Cheese, Tequila, Pilsen, Napa Valley Wines, Scotch
Whisky, Sherry, Parmigiano Reggiano, Teruel and Parma Hams, Tuscany olives, and so
on. Most items pertain to drinks, meat, cheese, fruits, vegetables and, sometimes, clothing
and crafts. An overwhelming share of protected GIs in Europe belongs to wines and
spirits, whose trade value runs into billions of dollars. the better-known examples of GIs
in Asia are: Basmati rice, Phu Quoc fish sauce, Long Jing tea, Himalayan waters,
Alphonso and Sindhri mangoes, Hunza apricots, Bhutanese red rice, Mongolian
cashmere, Pakistani shaul (windproof woolen fabric) and ajrak (designs from Sindh),
jasmine (Hom Mali) rice and Thai silk, Lao Agar fragrance, Sumatra Mandheling coffee,
Shaoxing alcohol, Maotai, Xuancheng art paper, and Ceylonand Darjeeling teas. The
prospective consumers are thus, told that the products to which they are affixed come
from an area where a given quality, reputation or other characteristic of the products is
essentially attributable to their geographic origin.
Geographical Indications - As a TRIPS concern
TRIPS defines GIs as indications (words, phrases, symbols, images) that identify a good
as originating in the territory of a WTO Member, or region or locality in that territory,
where a given quality, reputation or other characteristic of the good is essentially
attributable to its geographical origin. This definition draws on two established concepts:
Indication of Source (IS) and Appellation of Origin (AO), which trace their formal
origins to, respectively, the 1893 Paris Convention and the 1958 Lisbon Convention on
Appellations of Origin and their Registration. IS refers generally to any expression or
sign used to indicate that a product originates in a country, or a specific place (for
example, Made in Mongolia), while AO refers to the geographical name of a country or
locality (for example, Champagne), which serves to designate a product originating
therein, whose characteristics are exclusively or essentially due to that geographical
environment.

The TRIPS Agreement requires that WTO Members provide the legal means for
interested parties to prevent the use of a GI that: (1) indicates or suggests that a 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; or (2) constitutes an act of
unfair competition. The TRIPS definition highlights the source-indicating capacity of the
indication. Not every indication can rise to the level of a GI. There must be a link
between at least one characteristic of the good and the particular region where it was
produced. In turn, that link must be material to the consumer’s purchasing decision.

The proposal tabled by the European Union centers around a register for geographical
indications administered by the WTO Secretariat. Member states would be responsible
for supplying geographical indications to the Secretariat, and protection would become
automatic in other member states unless objections were raised within one year. The
procedure thereby closely resembles the one under the Lisbon Agreement. Proposals by
the U.S. and Japan also called for an international register, yet without any binding effect
on WTO member states. It has often been argued that such a distinction between different
categories of a singularly defined IPR is inconsistent with the rest of the TRIPs
Agreement, because no other singularly defined IPR provides for different levels of
protection for different categories of goods. Also, from a commercial perspective, there
seems to be no salient difference between GIs on wines and spirits and those on other
goods. It is submitted that till the time the hierarchy provided for by Section 3 is
eliminated, the integrity of the TRIPs Agreement as an intellectual property instrument
will remain questionable. As far as the implications of the above hierarchy are concerned,
it must be noted that in order for a GI to get protection under Article 22, the undue use of
it has to mislead the public as to the geographical origin of the product or must constitute
an act of unfair competition. This is referred to as the ‘misleading test’ requirement of
Article 22. There is no such requirement as far as Article 23 is concerned. So, a producer
may mention the product’s true origin on the label and use a GI for his product even if it
does not originate in the territory purported.

Thus a producer can profit by free-riding on the renown of a famous GI and at the same
time claim that it is not misleading the consumer. On the contrary, Article 23 ensures that
GIs associated with wines and spirits are accorded a higher level of protection, in cases
where they are used to identify the same products. The protection provided by Article 23
applies to cases when a GI associated with a specific kind of wine/spirit is wrongfully
used on another wine/spirit not originating from the place identified by the GI concerned.
However, the general protection of Article 22 applies in cases where the GI associated
with wines/spirits be abusively used on products other than wines/spirits, not originating
from the place indicated by the GI. For example, the Indian GI ‘Darjeeling’ identifying
tea was used on say, biscuits from France. By way of illustration, if Article 23 is
amended to include other products than wines and spirits, it would prevent any tea
company from marketing its orthodox tea as ‘Darjeeling tea, produce of that country’ or
as ‘Darjeeling type tea’, with the true origin of the product indicated elsewhere. As of
now, Article 22 does not provide for this kind of protection and injured parties have no
recourse in cases where someone else free-rides on their goodwill. Additionally, if such a
trend is allowed, it also puts the GIs at risk of becoming ‘generic names’ over time.
Article 22.1 of the TRIPS Agreement defines geographical indications which are
protected by the TRIPS Agreement 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".

Although, there is one identical definition for all geographical indications, Section 3 of
Part II of the TRIPS Agreement provides for two different levels of protection for
geographical indications. Article 22 covers geographical indications for products other
than wines and spirits. In contrast to Article 23, Article 22 limits the protection of
geographical indications to cases where the public is misled by the use of a geographical
indication as to the true geographical origin of the product, or where such use constitutes
an act of unfair competition ('misleading test'). Article 23 provides for so called
"additional" protection of geographical indications in the field of wines and spirits. Under
Article 23, there is no need to prove that the public is misled or that there is unfair
competition by using a certain geographical indication. The use of accompanying
expressions such as "style", "type", "kind", "imitation" or the like are prohibited qua lege
and protection is also provided when the indication is used in translated form.

The burden of proof does not rest with the plaintiff of the geographical indication. Under
Article 23, competitors not producing within the geographical area are simply prevented
from using the corresponding denomination, and they may not use trademarks containing
or consisting of geographical indications used to identify wines or spirits (subject to the
exceptions provided for in Article 24). Hence, the protection in Article 23 for
geographical indications for wines and spirits is notably enhanced compared to that
provided in Article 22 for geographical indications for other products, which relies on the
'misleading test'. The current differentiation regarding the level of protection for
geographical indications made by the TRIPS Agreement in Article 23 for wines and
spirits and in Article 22 for all other products is reminiscent of the perception of the
relevance of geographical indications in the pre-TRIPS era. It is the result of a
compromise agreed upon at the time of the Uruguay Round, which mandated further
work to improve protection for geographical indications. The requirement of the
'misleading test' in Article 22 is tailored to suit unfair competition or consumer protection
regulations but not intellectual property protection. Compared to the protection granted
by Article 23 to geographical indications for wines and spirits, it does not provide a
sufficient intellectual property protection for the benefit of the producers entitled to use a
geographical indication. It enables free-riding by other producers on the renown of a
geographical indication.

A producer may use a geographical indication for his product, even if it does not
originate in the territory purported, as long as the product's true origin is indicated on the
label. Thus, a producer can profit from the use of a "famous" geographical indication and
argue at the same time that it is not misleading the consumer. As an example of such a
misguidance, let us just think of the case where a producer uses the geographical
indication 'Geneva' on a clock-face, even though the clock does not originate from
Geneva, but engraves the true origin on the back of the clock. This has been effectively
exploited in Europe but is yet to be put into practice in developing nations where
traditional goods (agricultural and non-agricultural) have been in existence for centuries.
The provisions are yet to be effectively explored by governments in most developing
countries. It may also be noted that once the geographical indication has been registered
in a country one must proceed to have it internationally accepted so that it is globally
recognized as a geographical indication.

Significances
Quality can be measured by a number of factors, e.g. by way of trade marks, certain
methods of production (e.g. biological products), by way of parameters such as
environmentally friendly, but also by geographical region. The potential in Asia is
enormous. One only need think of coffee products originating from, e.g. Indonesia. It is
beyond doubt that the century-long promotion of quality teas from Darjeeling, Assam and
Ceylon has been economically beneficial to these regions, and has contributed to the
development of tea. The same could be possible for Indonesian coffee. The same could
also be possible for the Thai silk industry that in the future might wish to develop further
grades in quality beyond the general indication “Thai Silk”.

There could also be an enormous potential for the use of geographical indications with
respect to tropical fruit. Israel joined the Lisbon Agreement for the Protection of
Appellations of Origin in order to have its famous Jaffee oranges protected. Thus, quality
controls have boosted the customer confidence. GIs cannot be licensed because their use
strictly depends on their relation with the geographical place they identify. Instead, GIs
are traditionally owned and exercised collectively by all those persons that are residing
and producing products in those geographical areas. Most importantly, GIs confer to their
legitimate users the exclusive rights to use this distinctive designation, which grants it
additional economic value. As for their functions, GIs have traditionally played a
fundamental role as source identifiers by informing consumers about the origin of the
goods to which they are affixed. GIs also help in promoting the goods of a particular area
insofar as they avoid consumer confusion by preventing inappropriate use of GI by
unauthorized parties.
Most GIs potentially draw on products related to agriculture, fisheries, crafts and artisan
products. These sectors remain important to the lives of the poor. This point is important
when one considers that other IPR categories such as patents, trademarks and copyrights
are overwhelmingly owned by industrialized countries and their wealthy corporations,
which spend significant resources on research, development and marketing. Ninety seven
per cent of all patents worldwide belong to the industrialized countries, including 80 per
cent of those granted in developing countries (HDR 1999). GIs, in contrast, have the
potential to be more evenly owned: even subsistence based societies, with low levels of
technology, can promote their traditional products and know how.

Case-laws
In The Scotch Whisky Association, William Grant and Sons Limited, William Grant and
Sons International Limited and William Grant and Sons Distillers Limited v. Golden
Bottling Limited , the relief prayed for by the plaintiffs was granted and the defendant
and those acting under the defendant were restrained from using the word 'Scot' or any
other word similar thereto in the whisky manufactured and sold by the defendant. Similar
rulings were adopted by the Delhi High Court as in Time Incorporated v. Lokesh
Srivastava and Anr. , Microsoft Corporation v. Yogesh Popat and Anr. and Cartier
International B.V. v. Cartier Enterprises

Conclusion
There is no justification for two levels of protection for geographical indications. The
difference in treatment according to products concerned is an anomaly in the intellectual
property system of the TRIPS Agreement. Geographical indications stand on an equal
footing with other intellectual property rights such as trademarks or copyright. In none of
the other fields of intellectual property rights is a difference made in the level of
protection of those rights according product categories. A uniform level of protection
applies. There are no logical or legal reasons which could justify two different levels of
protection in the field of geographical indications. There is no substantive justification for
a discriminatory treatment between geographical indications for wines or spirits and
those for other products. Since the adoption of the TRIPS Agreement, Member awareness
of the need for sufficient protection of geographical indications for all products has
continued to grow. Also, the ongoing negotiations in the field of industrial and
agricultural products, as pursued by the WTO, shows the growing importance of
extending the level of protection for geographical indications for wines and spirits for
geographical indications to all products. Such protection is an invaluable marketing tool
and an added value for exports because it increases the chances of market access for such
goods. The extension of the so-called "additional" protection of Article 23 to
geographical indications for products other than wines and spirits must be part of the
global vision of a multilateral trade system. Nations have to understand the fact that the
protection for GIs is best provided under national laws because it is not the provisions of
the treaty but actual national laws that provide protection in relation to GIs. For example,
even if a general extension of the Article 23 is provided, it may not result in an effective
protection of the GIs, unless the laws of the member countries at the national level have a
uniform protection regime.
The geographical origin, from a commercial point of view, has the same importance for
all products. The extension of the level of protection of geographical indications for
wines and spirits to geographical indications for all other products is in the best interest
and to the benefit of all WTO Members: It is not a North-South issue. Every country –
whether developed, developing or in transition – has products which are the fruits of its
culture and know-how, and its unique blend of soil, water or climate, and which,
therefore, deserve effective protection. At a time when further trade liberalisation is being
striven for, it seems, particularly in relation to the negotiations going on in the field of
agriculture, a natural corollary that Members should be able to fully reap the advantages
of their geographical indications when competing with their products on the liberalized
world market. This can only be done effectively by granting them additional protection
against erosion of their geographical indications.

In conclusion, Bulgaria, Cuba, the Czech Republic, Egypt, Iceland, India, Liechtenstein,
Mauritius, Nigeria, Sri Lanka, Switzerland, Turkey and Venezuela propose that the
TRIPS Council continues its negotiations and starts without any further delay to work out
the legal modalities necessary to eliminate the existing deficiencies in the TRIPS
Agreement in the field of the protection of geographical indications with a view to reach
a mutually agreeable solution