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Geographical indications law

A geographical indication is a mark -- usually the name of a place such as a town or a country -- that indicates the origin of a good. 'Champagne' is a geographical indication for a sparkling wine manufactured in the French province of Champagne.

In many countries, geographical indications (GI's) may be protected by law in much the same way in which a trade-mark is protected by law. This legal protection restricts the use of the name to identify a particular type of product unless the product meets certain criteria; basically that the product was indeed made in the place named, or sometimes from materials sourced in the place named.

Sometimes these laws also stipulate that the product must meet certain quality tests that are administered by an association that owns the exclusive right to the use of the name or mark. For example, to qualify to use the name 'Rocquefort', cheese must be made from milk of a certain breed of sheep, and matured in caves near the town of Rocquefort in the Aveyron region of France where it is 'infected' with the spores (Penicillium Roqueforti) of a mushroom that grows in those caves.

Some governments have been protecting the 'brand' names of local produce since at least the end of the nineteenth century using laws against unfair competition or 'passing-off'; that is, misleading the consumer by falsely suggesting that a product has a certain origin or quality when it does not. The consumer protection benefit was considered a reason to accept the limitation on competitive freedoms; specifically, the grant of a monopoly use of a mark or a name.

The system used in France from the early part of the twentieth century is known as the 'appellation d'origine contrôlée' (AOC). Items that meet both geographical origin and quality standards may receive this government-issued stamp that provides official confirmation to the consumer. Examples of goods that have 'appellations of origin' include 'Tequila', 'Jaffa' (oranges) and 'Bordeaux' for wines.

The consumer-benefit purpose of the monopoly rights granted to the owners of a GI is much the same the purpose of the trademark monopoly right. Geographical indications have other similarities to trademarks, too. They must be registered, for example, in order to qualify for protection and they must meet certain conditions in order to qualify for registration. One of the most important conditions that most governments have required before registering a name as a GI is that the name must not already be in widespread use as the generic name for a similar product. Of course, what is considered a very specific term for a well-known local specialty in one country (for example, 'parmagiano' cheese in Italy) may be a 'generic term' for that type of product (known as 'parmesan' in the United States or Australia) in other countries.

Like other forms of intellectual property, geographical indications are regulated locally by each country because conditions of registration such as differences in the generic use of terms vary from country to country. This is especially true of food and beverage names which frequently use geographical terms. But it is also true of carpets ('Shiraz') and other handicrafts and of flowers and perfumes.

International trade made it important to try to harmonize the different approaches and standards that governments used to register GIs. The first attempts to do so were found in the Paris Convention on trademarks (1883), followed by a much more elaborate provision in the 1958 Lisbon Agreement on the Protection of Appellations of Origin and their Registration. Few countries joined the Lisbon agreement, however: by 1997 there were only 17 members (Algeria, Bulgaria, Burkina Faso, Congo, Cuba, Czech Republic, France, Gabon, Haiti, Hungary, Israel, Italy, Mexico, Portugal, Slovakia, Togo, Tunisia). About 170 geographical indications were registered by Lisbon Agreement members as of 1997.

TRIPS Provisions

In 1994, when negotiations on the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") were concluded, governments of all WTO member countries (148 countries as of September, 2003) had agreed to set certain basic standards for the protection of GIs in all member countries. There are, in effect, two basic obligations on WTO member governments relating to GIs in the TRIPS agreement:

  1. Article 22 of the TRIPS Agreement says that all governments must provide legal opportunities in their own laws for the owner of a GI registered in that country to prevent the use of marks that mislead the public as to the geographical origin of the good. This includes prevention of use of a geographical name which although literally true "falsely represents" that the product comes from somewhere else.
  2. Article 23 of the TRIPS Agreement says that all governments must provide the owners of GI the right, under their laws, to prevent the use of a geographical indication identifying wines not originating in the place indicated by the geographical indication. This applies even where the public is not being misled, where there is no unfair competition and where the true origin of the good is indicated or the geographical indication is accompanied by expressions such as "kind", "type", "style", "imitation" or the like. Similar protection must be given to geographical indications identifying spirits.

Article 22 of TRIPS also says that governments may refuse to register a trademark or may invalidate an existing trademark (if their legislation permits or at the request of another government) if it misleads the public as to the true origin of a good. Article 23 says governments may refuse to register or may invalidate a trademark that conflicts with a wine or sprits GI whether the trademark misleads or not.

Article 24 of TRIPS provides a number of exceptions to the protection of geographical indications that are particularly relevant for geographical indications for wines and spirits (Article 23). For example, Members are not obliged to bring a geographical indication under protection where it has become a generic term for describing the product in question. Measures to implement these provisions should not prejudice prior trademark rights that have been acquired in good faith; and, under certain circumstances - including long-established use - continued use of a geographical indication for wines or spirits may be allowed on a scale and nature as before.

In the Doha Development Round of WTO negotiations, launched in December 2002, WTO member governments are negotiating on the creation of a 'multilateral register' of geographical indications.

Some governments participating in the negotiations (especially the European Communities) wish to go further and negotiate the inclusion of GIs on products other than wines and spirits under Article 23 of TRIPS. These governments argue that extending Article 23 will increase the protection of these marks in international trade. This is a controversial proposal, however, that is opposed by other governments including the United States who question the need to extend the stronger protection of Article 23 to other products. They are concerned that Article 23 protection is greater than required, in most cases, to deliver the consumer benefit that is the fundamental objective of GIs laws.