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Article 23 of TRIPS
The current subjects of debate among Members the WTO, over the years, relating to the rights in geographical indications are around Article 23. They relate to extending the higher level of protection afforded by Article 23(1) beyond wines and spirits to other products, and the creation of a multilateral register for wines and spirits, as recommended in Article 23(4). Article 22 is accepted as offering a standard level of protection, which is that, such protection that would ensure avoidance of acts that would mislead the public and acts amounting to unfair competition whereas the additional protection to geographical indication for wines and spirits to be made available under Article 23(1) is that domestic legislation of a Member shall provide that it would be an infringement of a geographical indication, ‘even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like’.
Article 23 states as follows:
“Additional Protection for Geographical Indications for Wines and Spirits
- Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like.
- The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated, ex officio if a Member’s legislation so permits or at the request of an interested party, with respect to such wines or spirits not having this origin.
- In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled.
- In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system.”
Article 23(4) provides for the establishment of a multilateral system of notification and registration of geographical indication for wines eligible for protection in those Members participating in the system. It has recommended that negotiations be undertaken in the Council for TRIPS for that purpose. The objective is to achieve reciprocity in the recognition of geographical indications for wines. So far no agreement has been reached on evolving a system acceptable to all the countries to which geographical indications in wines are material. On the issue of higher protection for other products also there has been no unanimity and the Council for TRIPS has not made any progress even though the Doha Ministerial Declaration of November 20, 2001 recommended that such implementation issues should be dealt with on a priority basis.
The following is the position according to the information available at WTO[1].
Multilateral System of Notification and Registration
The European Union is reported to have submitted a proposal, necessitating an amendment to Article 23(4), urging that registration of the geographical indication would establish a “rebuttable presumption” that it is to be protected in other WTO members. This would not apply, according to the EU note, in a country that has lodged a reservation, on permitted grounds, within a specified period. Some grounds would be: where the name has become generic or when it is not covered by the definition of the law of that Member of a geographical indication. If no reservation is made, the Member would not be able to refuse protection on these grounds after the term has been registered.
Hong Kong and China submitted a proposal that was a variant of the EU proposal. They recommended that a registered term would enjoy a more limited “presumption” than under the EU proposal, and only in those countries choosing to participate in the system.
On the other hand, Argentina and certain other countries are stated to have submitted a joint proposal, the substance of which is:
There is no need to amend the TRIPS agreement, but the TRIPS Council may set up a voluntary system where notified geographical indications would be registered in a database, which would be available for consultation for countries agreeing to participate in this system, for taking decisions on protection in their own countries. “Non-participating members would be “encouraged” but “not obliged” to consult the database.”
As far as the issue relating to the multilateral system of notification and registration of geographical indications for wines is concerned, the recording of the status of these discussions by the Chairman of the Council for Trade – Related Aspects of Intellectual Property Rights (Special Sessions) is explicit. He has said: “Despite the active engagement of delegations and the detailed discussion of the proposals, it is a matter of concern that the level of convergence in these negotiations has not significantly expanded in the period since the last Ministerial Conference. In particular, important differences remain on two key issues: – the extent to which legal effects at the national level should be consequent on the registration of a geographical indication for a wine or a spirit in the system; and the question of participation, including whether any legal effects under the system should apply in all WTO Members or only in those opting to participate in the system”.[2]
Extension of additional protection to all products
India, the European Union and certain countries have advocated the extension of protection, on the ground that it would enable them to improve marketing their products by differentiating them more effectively from their competitors. The United States and certain countries, have opposed it on the ground that it would be a burden and disrupt existing legitimate marketing practices.
WIPO Initiatives
WIPO has been holding biennial symposia for exchange of views of producers of GI products, administrators and specialists on issues and experience relating to geographical indications. The last one was held in June, 2007 in Beijing, jointly organized by WIPO and China’s State Administration for Industry and Commerce. The unfinished work for the Council for TRIPS viz. a multilateral system for notification and registration of geographical indications for wines and extending the additional protection given to wines to other products are recurring subjects at these meetings. The divergence of views is marked. There has been no progress.
Concerns for India
The experience of a US patent for Basmati rice and another for turmeric should be taken as possible indicators of the potential hazards to which India’s vast and varied traditional knowledge in the making and growing a large number of goods are exposed. In the case of the former, it was largely the opposition from non-governmental organizations that effectively neutralized the patent. The patent for turmeric for its wound healing properties was defeated by the efforts of the Council of Scientific and Industrial Research, Government of India. The two cases are only the tip of the iceberg. India should embark on an extensive search and cataloguing of valuable forms of traditional knowledge which will the criteria for eligibility for registration as geographical indications under the Act, and get them registered under the Act and with WIPO under the Lisbon Agreement. The resources necessary for this purpose can only come from the Government. Non-governmental organizations should only be expected to support the process through campaigning and creating awareness in India of the need for protecting these rights. That would be a proactive step, and besides establishing certainty relating to rights, would also eliminate the avoidable dissipation of enormous resources, after the event, in challenging piratical registrations in overseas countries that that may not always be able or willing to use common yardsticks in the evaluation of the merits. Justifiably, they may not also understand in cases like, the Madurai Malli, the jasmine flower from Madurai, a southern district of Tamil Nadu, the basis of the claim, whereas they understand claims relating to tea, coffee and such products better and the differences in wines and spirits much better, Needless to add that understanding the magnitude of the issue and its economic importance would be a significant first step.
[1]TRIPS : Geographical Indications, ‘Background and the current situation’ at www.wto.org
[2]Report by the Chairman, Ambassador Manzoor Ahmad, to the Trade Negotiations Committee, TN/IP/14, November 23, 2005
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