Protection Of GI & Areas Of GI Associated With The Lisbon Agreement, 1958 by - V Sona
Protection
Of GI & Areas Of GI Associated With The Lisbon Agreement, 1958
Authored by
- V Sona
ABSTRACT
This research paper provides an
introduction to Geographical Indications (GI), explaining their basic features,
use, and protection as an intellectual property right. If we want to look into
the protection of GI (Geographical Indication) as well as the Lisbon Agreement
of 1958, then one must first be clear of the basic concept of GI. The concept
of GI consists of the definition of GI, the right provided by GI, and the
protection of GI. Protection of GI was
first provided in the Lisbon Agreement of 1958 and then it was naturally
included in the Trade-Related Aspects of Intellectual property Rights Agreement
(TRIPS) since TRIPS was a multilateral treaty on a much larger scale than the
Lisbon Agreement and protection of GI was termed to be a necessary provision to
be included in the TRIPS.
This research paper will also delve
into the Lisbon Agreement of 1958 and its subsequent reforms including the
Geneva Act of 2015 and how this agreement affected the GI protection laws. The
Geneva Act of 2015 which is the amendment of the Lisbon Agreement has now come
to include Geographical Indications in addition to the Appellations of Origins
and that aspect of the amendment will also be touched upon. Apart from the
Lisbon Agreement, this research paper will also elucidate lightly on the Trade-Related
Aspects of Intellectual Property Rights and the provisions for GI protection
listed in the same. The literature reviews presented in this paper will help in
highlighting the present-day governance system of GI protection provided to the
member states.
At the end of this research paper,
the author will provide a conclusion stating the advantages that GI protection
has achieved by being protected under two major multilateral agreements i.e.,
the TRIPS and the Lisbon Agreement and its subsequent amendment.
Keywords: Geographical Indications,
Appellations of Origin, TRIPS, Lisbon Agreement, Protection, Intellectual
Property Rights
OBJECTIVE
OF THE RESEARCH PAPER
·
To
define the provisions relating to Geographical Indications in TRIPS Agreement.
·
To
explain in detail the provisions of the Lisbon Agreement 1958 along with its
2015 amendment included in the TRIPS Agreement.
·
To
explain the minimum protection provided to GI by TRIPS Agreement.
·
To
explain the Appellations of Origin protection provided in accordance with the
Lisbon Agreement, 1958, and its subsequent reforms including the Geneva Act of
2015.
·
To
answer the research question for a better understanding of the topic.
SCOPE OF
THE RESEARCH PAPER
·
The
definition of the term geographical indications will be discussed.
·
GI
and its laws are still in the early stages of evolution. Hence, we will be
discussing the protection provided to GIs by these laws.
·
The
protection provided to GI will be explained in this research paper.
·
Also,
the clauses that are common to TRIPS and the Lisbon Agreement will also be
discussed in this research paper.
·
The
necessity of AO protection laws in India will also be discussed in this
research paper.
RESEARCH
QUESTION
·
Which
areas of the Lisbon Agreement of 1958 as well as its subsequent revisions
including the 2015 amendment are associated with the GI protection laws?
·
Should
India join the Geneva Act of the Lisbon Agreement, 2015?
NOTE
TERMINOLOGY
For the purpose of this research
paper,
·
GI
= Geographical Indications
AO = Appellations of Origin
INTRODUCTION
·
What is Geographical Indication (GI)?
A Geographical Indication (GI) is a
sign used on products with a specific geographical origin and possesses
qualities or a reputation due to that origin. In order to function as a GI, a
sign must identify a product as originating in a given place.[1]
In addition to the above-stated
definition, the product's quality, characteristics, and reputation should be
mandatorily associated with its place of origin. Hence, it should be
established that there is a clear link between the product and its place of origin.
Geographical Indication is generally
used for agricultural products, food items, wines and spirits, handicrafts, and
industrial products.[2]
The term “geographical indications”
in its broad sense includes a variety of concepts used in various international
treaties and national laws such as appellation of origin, the indication of
source, and protected geographical indications.[3]
Article 22.1 of the TRIPS Agreement
defines geographical indication as indications that 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 another characteristic of that
good is essentially attributable to its geographical origin.[4]
The appellation of origin also known
as the Protected Design of Origin (PDO) is a designation representing either
the name of the country, region, settlement, locality or other geographical
indication, as well as an indication derived from such a name that became known
as a result of its use in regards to the goods, special properties, quality,
reputation or other characteristics of which are mainly related to its
geographical origin including the specific environmental conditions and/or
human factors.[5] This
term is defined in the Lisbon Agreement of 1958.
The term indication of source is
defined in the Madrid Agreement of 1891. It is defined as the goods bearing
false or deceptive indications by which one of the countries to which the
Madrid Agreement applies, or a place situated therein, directly or indirectly
as being the country of place or origin.
·
Protection of Geographical Indications (GI)
The minimum standards for the
protection of GIs are stated in Section 3 of Part II in the TRIPS Agreement
from Articles 22 to 24.
Article 22 states that unless a GI is
protected in the country of origin, there is no obligation under the TRIPS
Agreement for other countries to extend reciprocal protection. This means that
while TRIPS provides for the minimum protection of GI on an international level
among the Member states, the Member states will not be able to enjoy the
benefits of these protections until and unless they incorporate GI protection
laws into their own legal system.
Article 22 provides for minimum
protection of GI but Article 23 provides for the additional protection of GIs
only if the GI is concerned with wines and spirits. This means that wines and
spirits-related GIs should be protected even if there is no risk of misleading
or unfair competition. Only in the cases of wines and spirits, the TRIPS takes
an overprotective stance whereas in other cases it only provides for the bare
minimum protection.
Whereas Articles 22 and 23 of the
TRPIS Agreement provide provisions relating to the protection of GIs, Article
24 lays down certain exceptional cases where the protection given to a GI may
be withdrawn or nullified. In some cases, geographical indications do not have
to be protected or the protection provided is limited. For example, when a name
has become a common/generic term such as the word “cheddar” refers to a
particular type of cheese not necessarily made in Cheddar, UK and when a term
has already been registered as a trademark are the instances where a GI can
cease to exist. [6]
TRIPS is the multilateral agreement
that governs the protection granted to GIs on an international level. Before
TRIPS was enacted, there was no multilateral agreement that contained all the
provisions regarding the protection of GIs. Some provisions were listed here
and there in different conventions before the enactment of TRIPS but there was
no uniform code that governed the whole world. For example, the Madrid
Agreement of 1891 contained provisions related to the indication of source
whereas the Paris Convention of 1883 and Madrid Agreement of 1958 contained
provisions related to the appellation of authority. But since these agreements
were not signed by a large number of countries, none of the above-mentioned
agreements except the TRIPS could provide for a uniform code that could protect
the GIs of the member nations on a large scale.
LITERATURE
REVIEW
1. MEGHNA BISWAS, TRIPS AGREEMENT AND
EXTENDED PROTECTION OF GEOGRAPHICAL INDICATIONS, 4 INT’l J.L. MGMT. &
HUMAN. 2872 (2021)[7]
This research paper discusses the
provisions for the protection of GI under the Trade-Related Aspects of
Intellectual Property Rights (TRIPS). The author of this paper first starts off
by first writing about the historical background of the TRIPS and how it first
came into being. Then she states what geographical indication is in detail.
After the author has explained both TRIPS and GI, she starts the next section
of this research paper which established the relationship between TRIPS and GI.
Articles 22 and 23 of the TRIPS that provide protection to GI are elucidated in
detail by the author. In the end, the author concludes this research paper by
presenting her opinion that the protection of GI has gone stale in the past few
years and that the protection of GI as presented under Article 23 should be
extended to other goods apart from just wines and spirits. The research gap
that can be identified in this research is that the author did not mention
Article 24 of the TRIPS which also covers provisions related to the protection
of GI anywhere in this paper.
2. MICHAEL HANDLER, THE WTO GEOGRAPHICAL
INDICATIONS DISPUTE, 69 MOD. L. REV. 70 (2006)[8]
This paper discusses the legal issues
related to geographical indications between the EC, Australia, and the USA. A
dispute ongoing in the World Trade Organization (WTO) has been addressed in
this paper by the author. The dispute has been popularly known as European
Communities – Protection of Trademarks and Geographical Indications for
Agricultural Products and Foodstuffs. The Dispute Settlement Body of WTO was
asked by the US and Australia to decide on the issue of whether the European
Communities’ way of providing protection to their own GIs was in accordance
with the provisions of the TRIPS Agreement. The author then discusses the
significance of this dispute since this is one of the major disputes that
discusses the protection of GI pertaining to food items. Though the author
states that this dispute, even if ruled against the EC, will not force them to
change their protection provisions, he is hopeful that this will help other
countries also aggressively opt for WTO dispute settlement mechanisms in case a
dispute arises. The research gap that can be identified in this research paper
is that the author does not provide a conclusion to this paper and does not
provide any measures that can be taken by Australia and US to resolve this
dispute in a more advantageous manner.
3. IRINA KIREEVA & BERNARD O’CONNOR,
GEOGRAPHICAL INDICATIONS AND THE TRIPS AGREEMENT: WHAT PROTECTION IS PROVIDED
TO GEOGRAPHICAL INDICATIONS IN WTO MEMBERS, 13 J. WORLD. INTELL. PROP. 275
(2010)[9]
The research paper starts off by
stating the definition of Geographical Indications as it is recorded in the
TRIPS Agreement. Then, the author moves on to elucidate the various types of
protection that can be provided to a GI in a member state of the WTO such as
passive protection and sui generis protection. Afterward, the process of how
registering a GI and obtaining international-level GI protection among the
member states is explained by the author of this research paper. The protection
of GI as trademarks is also discussed by the author in this paper. Many famous
GIs are mentioned in this paper such as Darjeeling Tea to help the readers of
the paper understand the dynamics involved in the protection of GI under TRIPS.
The research gap that could be identified in this paper is that the author
failed to touch upon the provisions of the TRIPS protecting the GI amongst
member states. The author did not make a mention of either Articles 22, 23, or
24 of the TRIPS in this paper that explicitly deal with GI protection.
4. TUNISIA L. STATEN, GEOGRAPHICAL
INDICATIONS PROTECTION UNDER THE TRIPS AGREEMENT: UNIFORMITY NOT EXTENSION, 87
J. PAT. & TRADEMARK OFF. SOC’Y 221 (2005)[10]
The paper starts off by introducing
the different aspects related to TRIPS that are connected to the protection of
GIs. After explaining TRIPS provisions, the author then moves on to discuss
exactly what geographical indications are. Then the reason why GI is provided
protection is elucidated by the author. One research gap that can be identified
here is that instead of starting from Article 22 of the TRIPS to explain the GI
protection provisions provided by the GI, the author starts directly by
explaining Article 23 which provides for additional protection to wines and spirits.
Another research gap that can be identified here is that the author has based
his research on biases towards the US markets rather than taking a global view
of the same.
LISBON AGREEMENT FOR THE PROTECTION
OF APPELLATIONS OF ORIGIN AND THEIR INTERNATIONAL REGISTRATION
·
Introduction
The Lisbon Agreement for the
Protection of Appellations of Origin and their International Registration was
signed on 31st October 1958. This agreement ensures that in the
member states, appellations of origin receive protection in case they are
protected in their country of origin. The Lisbon Agreement also specifies the
provisions for what qualifies as an appellation of origin as well as the
protection provided to the appellation of origin.
The Lisbon Agreement came into force
in 1966 and was revised in Stockholm in 1967 and then amended in 1979 as well
as in 2015. As of 2015, 30 states are party to the convention and over 1000
appellations of origin have been registered.[11]
Some aspects of the agreement have
been superseded by the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS).
·
The Geneva Act of the Lisbon Agreement
The Lisbon Agreement was amended in
May 2015 and due to this amendment, the Geneva Act was adopted. Due to this
amendment, the name of the Lisbon Agreement was changed to the Geneva Act of
the Lisbon Agreement on Appellations of Origin and Geographical Indications.[12]
The Geneva Act extended protection to GI in addition to the already existing
protection to the appellations of origin. The Geneva Act came into force in the
year 2020.
The Geneva Act was signed by 13
countries at the initial stage: Bosnia and Herzegovina, Burkina Faso, Congo,
France, Gabon, Hungary, Mali, Nicaragua, Peru, Romania, and Togo. Further
along, it was ratified by 5 more parties namely Albania, Cambodia, European
Union, North Korea, and Samoa.[13]
·
Areas of GI associated with the Lisbon Agreement, 1958
The Lisbon Agreement of 1958 was only
responsible for the protection of appellations of origins on an international
scale. Though appellations of origin were termed to be intertwined with GI very
closely GIs were not provided with any protection under the Lisbon Agreement in
the year 1958.
The Agreement defines appellations of
origin as “the geographical denomination of a country, region, or locality,
which serves to designate a product originating therein, the quality or
characteristics of which are due exclusively or essentially to the geographic
environment, including natural and human factors.[14]
This definition has been incorporated in Article 2 of the Agreement.
The Lisbon Agreement extended the
protection of appellations of origin to “any usurpation or imitation, even if
the true origin of the product is indicated or if the appellation is used in
translated form or accompanied by terms such as kind, type, make, imitation or
like.”[15]
While TRIPS makes it mandatory for a
GI to be registered in its country of origin, the situation is the same in
Lisbon Agreement as well. The Agreement makes it mandatory for the appellation
of origin to be protected in its country of origin for it to be eligible to be
protected under the Lisbon Agreement of 1958. Also, in addition to the above-stated
condition, the appellation of origin must be registered in the International
Register of the World Intellectual Property Organization (WIPO).[16]
The Lisbon Agreement for the
Protection of Appellations of Origin and their International Registration was
revised in Stockholm in the year 1967 and then was further amended in the year
1979 with amendments pertaining to Articles 9 to 12 introduced into the
Agreement on revision and amendment.
·
Areas of GI associated with the Geneva Act of the Lisbon Agreement
The Geneva Act of 2015 amended the
Lisbon Agreement and widened the scope of the Agreement vastly. In addition to
the protection provided to appellations of origin, the Geneva Act modernized
the Lisbon Agreement and expanded its scope of protection to all geographical
indications. Similar to the TRIPS, the protection to GI provided under the
Geneva Act can only be availed by a member state if the GI is protected within
the member state’s territory under the jurisdiction of the local laws.
Also, each contracting member state
is obliged to protect on its territory, within its own legal system and
practice, the AO and GI of products coming from other signatory countries for
which it accepts protection.
The Lisbon Agreement of 1958 and the
Geneva Act of 2015 are collectively known as the Lisbon System. The Lisbon
System is a practical and cost-effective solution for the International
Registration of Appellations of Origin and Geographical Indications, offering
protection in 37 contracting parties, covering up to 56 countries, through a
single registration procedure and one set of fees.[17]
The Lisbon Agreement of 1958 had 30
contracting parties and each party was a separate member state. The Geneva Act
of the Lisbon Agreement introduced a new provision that allowed for special
unions to also become contracting parties to the Agreement. This resulted in
the European Union ratifying the Geneva Act which in turn resulted in the
Geneva Act providing GI and AO protection to each member of the European Union.
The Geneva Act of the Lisbon Agreement has 8 contracting parties with a total
number of countries being provided protection 33. Altogether, the Lisbon System
offers protection to over 54 countries worldwide.
·
Should INDIA become a member of the Geneva Act of the Lisbon Agreement,
2015?
The Indian GI Registry has a vast
number of registered and pending GIs and therefore, it would prove to be
beneficial to India if it were to become a member of the Geneva Act of the
Lisbon Agreement.
India neither signed the Lisbon
Agreement nor it became a member of the Geneva Act of the Lisbon Agreement. In
the past, India did not require international protection for their intellectual
property since the country itself was still undergoing a high level of changes
and evolution. But now, the scenario has changed drastically. India has now
become one of the fastest developing nations and as stated above has a vast
number of registered and pending Gi in the Indian GI Registry.
India’s rich cultural diversity and
production of area-specific products have led to the formation of several GIs.
As of March 2020, India had 361 registered GIs and 222 pending applications
under the Geographical Indications of Goods (Registration & Protection)
Act, of 1999.[18]
If India becomes a member of the
Geneva Act of the Lisbon Agreement, then India’s around 400 registered GIs
would be able to be granted protection on an international level for their GIs
in addition to the protection provided by TRIPS.
Since India had already signed TRIPS,
technically, India’s GI is protected by the TRIPS internationally and the GI
Act, of 1999 nationally. But with the ever-evolving society come ever-evolving
origin products. India, especially now, needs a mechanism that can protect its
appellation of origin products because, with the increase in the registration
of different kinds of intellectual property products in India, it is no doubt
that in the coming years, India will need an AO protection mechanism. If India
becomes a member of the Geneva Act, then in addition to GI protection, India
will also be provided with AO protection as long as India incorporates AO
protection clauses in its own legal system first. This will prevent India’s
original products from being misused by other nations.
CONCLUSION
The Lisbon System has proven to be an
immensely efficient protective system. Since the Geneva Act allowed for the
protection of GI in addition to the protection of AO, the Act also introduced a
single registration procedure that is simple and widely accessible to facilitate
the international protection of GI and AO. This provides a golden opportunity
to a nation that has not signed or ratified the Geneva Act. The nation can
simply become a member of the Geneva Act of the Lisbon Agreement and gain
geographical indication and appellation of origin protection in over fifty
countries. TRIPS only provides protection to GI and does not explicitly state
the protection provisions for appellations of origin and the Lisbon Agreement
of 1958 only provided for the protection of appellations of origin. Now that
the Lisbon Agreement has been amended into the Geneva Act, 2015 this provides
the non-member states with an opportunity to become a member of only one
agreement and gain protection for two areas. Also, the registration process for
the GI and AO is the same, making registration of either GI or AO very simple
and efficient.
The Lisbon System helps in
strengthening the economic value of origin products protected as GI or AO in
third-party markets. Since the Geneva Act has clauses for protecting origin
goods from being copied and sold, it helps sustain the brand value of origin
goods which in turn increases people’s reliability in that particular origin
goods thereby increasing their economic value.
A non-member state can face many
challenges in case its GI and AO are not protected on an international level.
Some of these challenges are:
1. Any foreign party may misrepresent
their product as a particular origin product in order to take advantage of the
reputation and brand value of the product. This process of free riding cannot
be fully stooped by becoming a party to the Geneva Act since only around fifty
nations are a member of the Agreement but it would at least provide the origin
product with protection in these fifty nations.
2. A third party may register any
unregistered and unprotected GI or AO as their own and this would prevent the
original product from being granted protection as a GI or AO.
3. With unprotected overuse, the name of
the original product might get transformed into a generic name over time. A
generic name is a name that is commonly used by the general public and these
names cannot be granted protection as a GI or AO.
Hence, in times like now, it has
become very important for a product to be given the protection of any form that
is available whether it is a trademark, GI, or AO protection. To be granted
these protections, a nation has to sign multilateral agreements regarding the
different kinds of Intellectual Property Protection and to be granted
protection for GI and AO, the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) and the Geneva Act of the Lisbon
Agreement, 2015 are a must.
[2] www.wipo.int/geo_indications/en/, For what type of products can
geographical indications be used?
[4] Art. 22, The Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1994
[5] https://kazpatent.kz/en/content/what-appellation-origin, Article by National Institute
of Intellectual Property
[6] www.wto.org/english/tratop_e/trips_e/gi_background_e/htm, Geographical Indications in
general published by the Information and Media Relations Division of the WTO
Secretariat
[7] Meghna Biswas, Trips Agreement
and Extended Protection of Geographical Indications, 4 INT'l J.L. MGMT. &
HUMAN. 2872 (2021).
[8] Michael Handler, The WTO
Geographical Indications Dispute, 69 MOD. L. REV. 70 (2006).
[9] Irina Kireeva & Bernard
O'Connor, Geographical Indications and the TRIPS Agreement: What Protection is
Provided to Geographical Indications in WTO Members, 13 J. WORLD INTELL. PROP.
275 (2010).
[10] Tunisia L. Staten, Geographical
Indications Protection under the TRIPS Agreement: Uniformity Not Extension, 87
J. PAT. & TRADEMARK OFF. Soc'y 221 (2005).
[11] About Lisbon Agreement by WIPO,
retrieved on 13th November 2022
[12] Lisbon Agreement for the
Protection of Appellations of Origin and their International Registration
[13] Geneva Act, Lisbon Agreement for
the Protection of Appellations of Origin and their International Registration
[14] Article 2 of the Lisbon
Agreement, 1958
[15] Article 6 of the Lisbon
Agreement, 1958
[17] www.wipo.int, Lisbon – The International
System of Appellations of Origin and Geographical Indications
[18] www.spicyip.com, Should India join the Geneva
Act of the Lisbon Agreement, 2015?, by Latha Nair, published on 12th
March, 2020.