art.22 and 23 of trips

8/13/2019 Art.22 and 23 of TRIPS

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Presented by Goutam Suresh Tampi, 483, LLM-IPR


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TRIPS provide protection of Geographical Indications in Article 22 andadditional protection for Geographical Indications of Wines andSpirits in Article 23.

TRIPS defines Geographical Indications as indicationswhich identifya good as originating in the territory of a Member, or a region orlocality in that territory, where a given quality, reputation or other

characteristic of the good is essentially attributable to its geographicalorigin.under Article 22.1.

Types of Geographical Indications (as per Carlos M Correa):a) Simple, quality-neutral Geographical Indications of Source,

which only explains that the product originates in the placedesignated by designation of source

b) Qualified Geographical Indications having particulardescriptive meaning because character, quality or reputationare essentially attributable to a country, region or locality, andhence used to designate a product. They are calledappellationsoforigin.


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Prior to TRIPS, Geographical Indications were protected under:

1. Paris Convention:

Article 1.2 indicationsof source or appellations of originbut does not definethese concepts.

Article 10(1)specifically protects indications of sources, but not appellations oforigin and states that sanctions mentioned in Article 9 for goods unlawfullybearing a TM or false TM apply to any false indication of source of aproduct. But it does not apply to indications which mislead public, but arenot false

Article 10bisprotection against Unfair Competition for use of confusing, false ormisleading Geographical Indications

Article 10terprovides that legal remedies must be assured to repress all actsunder Articles 9, 10 and 10bis.

WTO members being obliged to comply with provisions of Paris Convention, theyare subject to these provisions too, other than Article 22 and 23 or TRIPS.


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Article 22Protection of Geographical Indications

1. Geographical indications are, for the purposes of this Agreement, indications which identify a good asoriginating 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.

2. In respect of geographical indications, Members shall provide the legal means for interested parties toprevent:

a) the use of any means in the designation or presentation of a good that indicates or suggeststhat the good in question originates in a geographical area other than the true place of originin a manner which misleads the public as to the geographical origin of the good;

b) any use which constitutes an act of unfair competition within the meaning of Article 10bisofthe Paris Convention (registration of a trademark which contains or consists of ageographical indication with respect to goods not originating in the territory indicated, if useof the indication in the trademark for such goods in that Member is of such a nature as tomislead the public as to the true place of origin.

4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication which,although literally true as to the territory, region or locality in which the goods originate, falsely represents tothe public that the goods originate in another territory.


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Article 23Additional Protection for Geographical Indications for Wines and Spirits

1. Each Member shall provide the legal means for interested parties to prevent use of a geographicalindication identifying wines for wines not originating in the place indicated by the geographicalindication in question or identifying spirits for spirits not originating in the place indicated by thegeographical indication in question, even where the true origin of the goods is indicated or thegeographical indication is used in translation or accompanied by expressions such as kind,type,style,imitationor the like. (4)

2. 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 spiritsshall be refused or invalidated, ex officio if a Members legislation so permits or at the request of aninterested party, with respect to such wines or spirits not having this origin.

3. In the case of homonymous geographical indications for wines, protection shall be accorded to eachindication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine thepractical conditions under which the homonymous indications in question will be differentiated fromeach other, taking into account the need to ensure equitable treatment of the producers concerned andthat consumers are not misled.

4. 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 andregistration of geographical indications for wines eligible for protection in those Members participating inthe system.

Footnote 4 : Notwithstanding the first sentence of Article 42, Members may, with respect to these obligations,instead provide for enforcement by administrative action.
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Article 22:Article 22.1 defines Geographical Indications. Few important characteristics of Geographical Indications under Art. 22.1

are:

It applies only to goods, but it does not explain what nature of goods are protected.

To be a GI, the sign must identifya good to be originating from specific territory.

Goods to be protected under Geographical Indications must be originating (mined or grown or manufactured) fromthe identified territory

Members need not protect Geographical Indications of a good only because of the reason that another member

country provides such protection Essentially is the only term which helps the interpretation that Geographical Indications Protection can be

extended to those goods whose production partially is taking place in other territories. Protection of GeographicalIndications of good is only provided if a relationship is established between the goods:

Quality

Reputation

Other characteristics

With the originating territory.

Quality refers to objective properties of goods.Reputation refers to what perceptions influence the public in making purchasing decisions w.r.t goods.

identifya good as originating in a certain locationexplains that one must establish a link between certain goods and alocation.

Article 22.1 adds reputation as one of the conditions for protection under Geographical Indication, unlike LisbonAgreement.


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Article 22.2 provides means of protection to be offered to Geographical Indications by members.

A member must provide legal meansto protect interested parties. Under Article 22.2(a), Protection extends touse of any means in designation or presentation which is actually very broad, extend even to graphical orpictorial representation of a good. But, however this is limited to the designation misleading the public. It doesnot explain who constitute public . Article 22.2(b) further extends scope of protection if such use causes unfaircompetition. Article 23 limits the flexibilities offered in Art. 22.2. it is further limited under Art. 24 exceptions torules.

Article 22.3 further elaborates the protection offered in Art. 22.2(a) that protection will not be offered to thoseGeographical Indications which are misleading public. Also, the measures adopted in this scenario would be to:

REFUSE future application of registrations INVALIDATing existing Registrations

Trademark Registration authorities of member countries can however, act so, only if:

Permitted under national law

There should be a determination before they act ex officio to ensure if public is misled by use of GeographicTerm.

Article 22.4 can be interpreted that such Homonymous Geographical Indications will have no protection, if it isproved to public that goods originate in another country,


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Article 23: It provides an additional protection for Wines and Spirits,which is a higher level of protection than other goods. It helpscountries of European Commission basically.

Article 23.1 makes it clear that wines and spirits deserve a higherlevel of protection than other goods. Protection should begranted in order to prevent the use of indications identifyingwines or spirits not originating in the place indicated bygeographical indication in question, subject to exceptionsdiscussed below, even in cases where:

1. The true origin of good is indicated2. The geographical indication is used in translation3. The indication is accompanied by delocalizing, expressions

such as kind,type,style, imitationor the like. Footnote 4 to Art. 23.1, limits member countries to provide

enforcement exclusively on administrative procedures may bebecause some countries provide protection for GeographicalIndications in administrative form. This stands as an exception tothe requirement that members must enforce civil judicialproceduresunder Article 42


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Article 23.2 does not give an absolute prohibition, but providesspecific grounds for refusing or invalidating trademark of wine.Members have no obligation to give chances to interestedparty fordoing the same, unless domestic law states so.

Article 23.3 is similar to Article 22.4 , but puts Members on anadditional obligation in case the products are wines. Spirits are not

mentioned here. Members must determine practicalconditionsunder which homonymous indications in question can bedistinguished from each other. There are 2 conditions prescribed forsuch determination:

1. Equitable treatment for procedure concerned2. Consumers should not be misled

Article 23.4 requires Member states to undertake negotiations forestablishment of a multilateral system of notification andregistration for protection of Geographical Indications of Wine, andmembers are free to opt out and decide to not participate,


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ISSUES w.r.t Article 23

1. Art. 23.1 requires members to provide legal means of protection for Geographical Indicationsidentifying wines and spirits, but does not explain how to achieve this objective.

2. Wines and Spirits are not defined in Article 23.1 Wines may include beverages derived fromgrapes and other alcoholic beverages such as rice and fruit wines. Status of protection underGeographical Indications for lesser alcoholic or lower as alcoholic beverages are notknown as Spirit is not defined.

3. Art. 23.1 only protects identical indications, NOT similar indications.

4. Article 23 provides higher level of protection for Wines and Spirits, while Article 22provides lower level (in comparison) to other goods. Since services are not protected underGeographical Indications in TRIPS, this is a disadvantage to countries where goods neverinclude wines or spirits, but has other goods or services which require GeographicalIndications protection.

5. Art. 23.2 unlike Art. 22.3, applies to trademarks, that include, as one of their elements, indicationsof wines or spirits, but not to the case of registration of similar or modified indications.

6. In Article 23.3, some members wanted to create a system covering spirits as well. Some membersagreed at Doha Ministerial Conference to negotiate the establishment of a multilateral system ofnotification and registration of geographical indications for wines and spirits by Fifth Session ofMinisterial Conference.


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Some members resist creation of another system that would grant further protection andtrade advantages precisely to those members that keep high barrier in the field ofagriculture. Thus, following main observations were made under this scenario:

1. Only some European Countries, US, Chile, South Africa, Australia and Argentina areconcerned with quality wine production. Rest of the countries have little or no interestin a system which would only improve possibility of enforcing geographicalindications

2. Art. 23.4 only asks for a system to facilitate protection of Geographical Indications ofWine, and not to strengthen or expand his situation.

3. System would be concerned with Geographical Indications registration andnotification, which is viewed differently in different countries

4. System so formed would be based on voluntary rather than binding participation

5. Many countries would feel that establishment of system as proposed by EC wouldrequire to conduct a trade-related negotiations for just one single tariff- line product, a

process viewed as too burdensome and unjustified.6. Opposition system supposed that it would be too expensive for many developing

countries, and put them in a weak position, where geographical indications exist.


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India enacted Geographical Indication of Goods (Registrationand Protection) Act 1999 because of Basmati Rice Controversy.This incident was an eye opener for India because till then,though India was a party to TRIPS, she had provided nostatutory protection to Geographical Indications by recognizing

them as Intellectual Property Right. Judiciary in India, however has been active in preventing persons

to take unlawful advantage of Geographical Indications evenbefore India enacted a Statute to protect GI.

In Scotch Whisky Association v Pravara Sahakar Karkhana, AIR

1992 Bom 294, Scotch Whisky Association succeeded inpreventing defendants from selling their whisky under thedescription Blendedwith Scotch along with device of Scottishdrummer a kilt or tartan and the word Drum Bearer.


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1. Correa, M, Correa, Intellectual Property Rights, the WTO andDeveloping Countries: The TRIPS Agreement and Policy Options

2. STANDING COMMITTEE ON THE LAW OF TRADEMARKS,INDUSTRIAL DESIGNS AND GEOGRAPHICAL INDICATIONS ONGEOGRAPHICAL INDICATIONS AND THE TERRITORIALITYPRINCIPLE, Document prepared by the Secretariat (Last viewed on

October 01, 2013 at 10.00AM)

3. IP/C/W/253, available at , (last viewed onOctober 01, 2013 at 10.00AM)4. Dr. Ahuja, V.K., Law Relating to Intellectual Property Rights

5. Resource Book on TRIPS and Development, UNCTAD-ICSTD

art.22 and 23 of trips

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