Geographical

Indications
Subtitle
 BACKGROUND

• The TRIPS Section on geographical indications represents

a delicate balance that was found in the Uruguay Round
between different interests.
• While the negotiations on many TRIPS issues were to a
large extent characterized by a North-South debate, the
negotiations on GIs were characterized by what has been
described as an "Old World – New World" debate; that is
to say between the "Old World" countries of Europe and
some developing countries such as India, and the "New
World" countries of the United States, Australia, Canada,
New Zealand, Argentina and Chile and some others.
 WHAT IS THE RELATIONSHIP WITH THE PRE‐EXISTING PROVISIONS OF THE PARIS CONVENTION?
• TRIPS Article 2 incorporates by reference the substantive
provisions of the Paris Convention, i.e. Articles 1-12 and
19. Article 10 of the Paris Convention deals with seizure
or prohibition of importation of goods bearing "false"
indications of source and defines the "interested parties"
entitled, under certain conditions, to request seizure on
importation, namely producers, manufacturers, or
merchants.
• Article 10ter further extends, under certain conditions,
the possibility to take action to federations and
associations representing interested industrialists,
producers, or merchants.
 WHAT IS THE RELATIONSHIP WITH THE PRE‐EXISTING PROVISIONS OF THE PARIS CONVENTION?
• Article 22.2 of the TRIPS Agreement specifically refers to
Article 10bis of the Paris Convention, which deals with
unfair competition. This provision obliges Members to
assure effective protection against acts of competition
that are contrary to honest practices in industrial or
commercial matters. We will revert to this below.
EXERCISES:

• 1. Which are the provisions of the Paris Convention

dealing with geographical indications?
• 1. Articles 1-12 and 19 of the Paris Convention are
an integral part of the TRIPS Agreement, being
incorporated by reference. The provisions of
relevance to GIs are in particular: Article 10, 10bis
and 10ter.
 TRIPS PROVISIONS ON GEOGRAPHICAL INDICATIONS
• The section of the TRIPS Agreement dealing with geographical
indications consists of three provisions. Article 22 deals with the
definition of geographical indications and sets out the minimum
level of protection to be available for geographical indications
identifying any type of good. Article 22 further deals with the
question of trademarks bearing GIs.
• Article 23 provides for a higher level of protection for GIs
identifying wines and spirits. It further sets out additional rules
regarding the use of such GIs in or as trademarks and provides for
a built-in agenda for the negotiation of a multilateral system of
notification and registration of GIs for wines.
• Article 24 provides in particular for certain exceptions allowing
continued use of GIs for goods not coming from the place
indicated, e.g. when a term has become generic or when there is a
•
TRIPS DEFINITION OF GEOGRAPHICAL INDICATI
ONS
• Article 22.1 of the TRIPS Agreement gives the following
definition for the purposes of the TRIPS Agreement:
• "Geographical indications are, for the purposes of this
Agreement, 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."
• ELEMENTS OF ARTICLE 22.1 DEFINITION

• According to that definition in Article 22.1, a geographical indication:

➾ is a sign; ➾ used to

identify; ➾ a good;

coming from a specific location, which could be:

➾ the territory of that

country; ➾ a region in that

territory; OR ➾a locality in that

territory; having:

➾ a given quality; ➾

➾ reputation; OR ➾

➾ other characteristics; that

are essentially due to that

geographical origin.
 a. IT IS A SIGN

• Article 22.1 does not specify which kind of sign should be

considered as a geographical indication.
• Should it be a word or combination of words or could it be
another sign?
• In general, geographical names are words or combinations of
words. For example, "Roquefort" for ewe's milk cheese is the
name of a place located in a region of France.
• In certain countries, graphical representations of places,
symbols and emblems are accepted as GIs: for example, a
famous mountain in Switzerland, the Matterhorn, is, under
Swiss law, an "indirect geographical indication", which
identifies that the product comes from Switzerland.
b. FUNCTION OF IDENTIFICATION

• Like trademarks, geographical indications have an

identification function. Unlike trademarks, which
distinguish the goods or services of one enterprise from
those of another, GIs identify the location from where the
good originates.
• For example, while there are many countries producing
teas, Darjeeling identifies teas coming from that region in
India and Ceylon (old name for Sri Lanka) teas coming
from Sri Lanka.
c. SUBJECT MATTER OF IDENTIFICATION

• Article 22.1 is limited to goods. However, it is not limited

to any particular kind of goods. Thus all categories are
covered, whether agriculture, foodstuffs, handicrafts or
industrial products.
d. THE GEOGRAPHICAL ORIGIN IDENTIFIED BY THE GI

• The geographical origin identified by the GI could be the

name of the country ("territory"). It could be the
designation as a noun or in its adjective form. For
example, "Ceylon" in Ceylon tea, "Colombia" in Café de
Colombia, "Swiss" in Swiss Made for watches.
• The GI could be the name of a region: "Beaujolais" (for
red wine produced in a region in the Eastern part of
France), "'Napa Valley" for wine coming from a region in
the US State of California, "Pinggu peaches" (for peaches
coming from a region in China), "Idaho" for potatoes
produced in the US State of Idaho.
d. THE GEOGRAPHICAL ORIGIN IDENTIFIED BY THE GI

• It could be a more limited area like a locality, for example

a town or a village. Names that are not geographical
names are, in several Members, considered as
geographical indications if they evoke a geographical
location, e.g.: "Cava" for sparkling wines from a region of
Spain, "Vino Verdhe" for a Portuguese white wine,
"Fendant" for a white wine in the Canton of Valais in
Switzerland, or "Feta" for a Greek cheese in brine.
d. THE GEOGRAPHICAL ORIGIN IDENTIFIED BY THE GI

• Those examples show that geographical indications can

acquire a high reputation and thus may be valuable
commercial assets. For this very reason, they are often
exposed to misappropriation, counterfeiting or forgery,
and their protection—national as well as international—is
highly desirable.
• With the exception of design law, there is probably no
category of intellectual property law where there exists
such a variety of concepts of protection as in the field of
geographical indications. This is maybe best
demonstrated by the term “geographical indication”
itself, which is relatively new and appeared only recently
in international negotiations.
e. QUALITY, REPUTATION OR OTHER CHARACTERISTICS
ESSENTIALLY DUE TO THE GEOGRAPHICAL ORIGIN

• An important requirement under Article 22.1 definition is that

the good identified by the GI has certain quality,
characteristics or reputation that are essentially due to the
geographical origin. In other words, there must be a direct
linkage between the place identified by the geographical
indication and these features.
• For example, an olive oil in one part of a country may possess
a higher particularly high concentration of certain chemical
elements.
• It may also be reputed for being carefully pruned and
collected in a net, which helps avoid the fruits being mixed
with dust or dirt, and pressed after a careful sorting of the
olive fruits. Note that in principle meeting only one of the
SOME EXAMPLES OF GIS
SOME EXAMPLES OF GIS
• ILLUSTRATION:
GEOGRAPHICAL INDICATIONS, INDICATIONS OF SOURCE, RULES OF ORIGIN, APPELLATIONS OF ORIGIN AND TRADEMARKS

• Let's take an example. You are in a store and you would like
to buy some brandy. The seller proposes you two bottles: one
with a label bearing in big characters the word "Cognac" and,
under that word, "Maria®"; the other with a label bearing the
words "Cognac" and "Henry®". Both labels bear in small
characters the words "Produce of France".
• Cognac is a French appellation of origin and geographical
indication identifying the geographical region from which the
product originates, Henry® and Maria® are individual
trademarks identifying the enterprise producing the product,
and "Produce of France" is an indication of source identifying
the country or place of origin.
a. GEOGRAPHICAL INDICATIONS AND INDICATIONS OF
SOURCE

"Made in Switzerland" or "Produce of Switzerland" are

indications of source. Under Swiss law, they are different
from "Swiss Made" for watches, which is defined in a special
piece of legislation as a GI as defined by Article 22.1.
• Indications of source give the consumer the basic
information that the good comes from a country.
Indications of source are not geographical indications as
defined under Article 22.1, unless the good they identify
possesses certain quality, reputation or other
characteristics essentially due to the origin indicated.
• Thus, while "Swiss Made" is a GI, "Made in Switzerland" is
an indication of source.
b. GEOGRAPHICAL INDICATIONS AND RULES OF ORIGIN

• There is often some confusion between geographical

indications and rules of origin. Rules of origin are used for
various trade policy purposes, including the application of
marking requirements or to implement measures such as
tariff preferences or anti-dumping duties
• They are not designed to be used for the purpose of
assessing eligibility for GI protection.
c. GEOGRAPHICAL INDICATIONS AND APPELLATIONS
OF ORIGIN

• (1) ..."appellation of origin" means the geographical name

of a country, region, or locality, which serves to designate a
product originating therein, the quality and characteristics
of which are due exclusively or essentially to the
geographical environment, including natural and human
factors.
• (2) The country of origin is the country whose name, or the
country in which is situated the region or locality whose
name, constitutes the appellation of origin which has given
the product its reputation.
 d. GEOGRAPHICAL INDICATIONS, TRADEMARKS
AND CERTIFICATION MARKS

While trademarks and geographical indications have in

common that they convey information about the source and
reputation of goods, they are normally very different in that
trademarks convey information about the company or
undertaking that is responsible for the goods whereas GIs
identify their geographical origin (and carry information
about the quality, reputation or other characteristics linked
to that origin).
• However certain types of trademarks, known as
certification (or guarantee) and collective marks, can and
are used to protect geographical indications.
 d. GEOGRAPHICAL INDICATIONS, TRADEMARKS
AND CERTIFICATION MARKS

We have seen above two examples of GIs protected under

trademark laws: the collective mark for "Roquefort" in France,
and the certification mark for "Roquefort" in the United States.
In China, "Pinggu" for peaches is a GI registered as a
certification mark.
To put it simply, both types of marks are different from
individual trademarks that identify individual companies in
that they can be used by a multiplicity of producers who fulfil
the requirements for the use of the mark in question agreed to
by those producers.
While the right holder of the collective mark can also use it,
the right holder of a certification mark, under many laws,
 RIGHT HOLDERS AND ELIGIBLE USERS

The definition in Article 22.1 does not address the question of

who may own the geographical indication or the question of
who may use it. This is, in principle, dealt with in domestic
laws.
In general, producers that are in the region identified by the GI
would be the eligible users of that GI. Depending on the
system adopted in a Member, the GI may be collectively owned
by the producers organized as a single legal entity
(cooperative or association) or by an entity (e.g. association)
representing them and ensuring that the product fulfils certain
requirements they have agreed upon or adhered to.
Under some systems, the GI belongs to the state or the public
authority administering the area identified by a GI, and
producers in the area are entitled to use the geographical
 RIGHT HOLDERS AND ELIGIBLE USERS

The definition in Article 22.1 does not address the question of

who may own the geographical indication or the question of
who may use it. This is, in principle, dealt with in domestic
laws.
In general, producers that are in the region identified by the GI
would be the eligible users of that GI. Depending on the
system adopted in a Member, the GI may be collectively owned
by the producers organized as a single legal entity
(cooperative or association) or by an entity (e.g. association)
representing them and ensuring that the product fulfils certain
requirements they have agreed upon or adhered to.
Under some systems, the GI belongs to the state or the public
authority administering the area identified by a GI, and
producers in the area are entitled to use the geographical
• 2.EXERCISES:
What are the elements of the definition of a "geographical
indication" under Article 22.1?
• 2. Pursuant to Article 22.1, a geographical indication is
an indication whose function is to indicate (i) that a
good comes from a specific place, which could be the
territory of a country, a region or a place in that
territory; (ii) that it has a given quality, reputation or
other characteristics; (iii) and that there is a
relationship between the quality, reputation or other
characteristics and the geographical indication.
• 3. Are only words or combination of words eligible for
protection?
• 3. Yes and no. It depends on Members' laws. Article
22.1 only refers to an "indication". This is interpreted
 EXERCISES:
• 4. Can a Member provide for protection of geographical
indications for services?
• 4. No. The word "or" in Article 22.1 is self
explanatory.
• 5. Are the three elements - quality, reputation, other
characteristics - cumulative requirements under Article
22.1?
• 5. No. Appellations of origin are a special category of
geographical indications. The rules are stricter. (You
may wish to compare the Article 22.1 definition with
the Lisbon Agreement definition of appellation of
origin.)
 EXERCISES:
• 6. Please give an example of a product bearing a
geographical name, protected as a sui generis geographical
indication and/or a certification (or collective) mark.
• 6. Example of a geographical name protected both as
a geographical indication and a collective mark:
ROQUEFORT as an appellation of origin (a special
type of geographical indication) and a collective
mark in France.
• You may wish to add that:
ROQUEFORT is protected as a certification mark
in the US.
 WHAT ARE THE CONDITIONS FOR GETTING PROTECTION?
Under Article 62.1 of the TRIPS Agreement Members can require
compliance with reasonable procedures and formalities as a
condition of the acquisition and maintenance of rights in
geographical indications. In practice, as mentioned earlier,
Members use a variety of different legal means to protect
geographical indications.
Some, such as most laws of general application focusing on
deceptive or unfair business practices, are typically available
without the need to comply with prior procedures and formalities.
Whereas others, such as protection under trademark law and
under most forms of sui generis (i.e. specific) GI protection,
generally require compliance with formalities and procedures
necessary to secure prior recognition of the GI as eligible for
protection. In the case of collective or certification marks under
 WHAT ARE THE CONDITIONS FOR GETTING PROTECTION?

In this connection it might be noted that, for nationals of countries

participating in WIPO's Madrid Agreement and Madrid Protocol on
the registration of marks, it is possible to obtain an international
registration for collective and certification marks providing for
protection in a number of countries through a single application.
In regard to sui generis forms of protection, procedures vary, from
the "automatic" to a more or less sophisticated system of
registration with regulations or specifications regarding the
production of the products.
For example, in Mexico "Tequila" is a registered "denominación de
origen" with strict rules regarding the production of the spirit and
the use of the geographical indication.
 WHAT ARE THE CONDITIONS FOR GETTING PROTECTION?

In this connection it might be noted that, for nationals of countries

participating in WIPO's Madrid Agreement and Madrid Protocol on
the registration of marks, it is possible to obtain an international
registration for collective and certification marks providing for
protection in a number of countries through a single application.
In regard to sui generis forms of protection, procedures vary, from
the "automatic" to a more or less sophisticated system of
registration with regulations or specifications regarding the
production of the products.
For example, in Mexico "Tequila" is a registered "denominación de
origen" with strict rules regarding the production of the spirit and
the use of the geographical indication.
 EXERCISES:
• 7. Please briefly explain how Members protect
geographical indications.
• 7. Under Section 3 of Part II of the TRIPS Agreement, Members
are free to determine the method of implementing their
obligations. There are three main categories of system:
➾ laws focusing on business practices, for example laws relating
to the repression of unfair competition or for the protection of
consumers either in general terms or more specifically in regard
to such matters as labelling of products, health protection and
food safety.
➾ trademarks laws, more specifically rules relating to certification
or collective marks.
➾ sui generis protection laws, that is laws specifically designed
for geographical indications, such as the EU system of
 PROTECTION AND RIGHTS CONFERRED

FOR GEOGRAPHICAL INDICATIONS FOR ALL GOODS (ARTI

CLE 22)
a.
PROTECTION AGAINST USE BY OTHERS (ARTICLE 22.2)
Under Article 22.2, Members must provide the "legal means for
interested parties" to prevent two types of use of GIs:
➾ the use of any means in the designation or presentation of a
good that indicates or suggests that the good in question
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; and
➾ any use which constitutes an act of unfair competition within
 PROTECTION AND RIGHTS CONFERRED

(i) Use which misleads the public

The provision refers to "any means in the designation or
presentation of a good that indicates or suggests" the origin
in a way which may mislead the public. This could include, in
addition to the use of the word name of the GI for a product
that does not come from the area indicated, the presentation
of the product using features that may remind the consumer
of an origin protected by a GI.
Such features could include the colours of the flag or emblem
of the country of origin of the GI, or a photograph or drawing
of a landscape or statue well known to the public as
representative of that country of origin.
 PROTECTION AND RIGHTS CONFERRED

(i) Use which misleads the public

In general, the test in respect of whether such use would
mislead the public would be the overall perception that the
consumer would have of the product. The assessment of
whether a given use would be misleading or not may well
vary from one country to another, and from one product to
another.
For example, the average consumer in India could be
expected to be more discerning when looking at labels that
relate to rice than the average consumer in Switzerland, and
vice-versa for cheese.
 PROTECTION AND RIGHTS CONFERRED
(ii) Unfair competition
Article 22.2(b) does not define acts of unfair competition but
refers to Article 10bis of the Paris Convention. Article 10bis
of the Paris Convention gives a non-exhaustive list of acts of
competition contrary to honest practices in industrial or
commercial matters that constitute an act of unfair
competition. These are:
➾ all acts of such a nature as to create confusion by any
means whatever with the establishment, the goods, or the
industrial or commercial activities, of a competitor;
 PROTECTION AND RIGHTS CONFERRED

(ii) Unfair competition

➾ false allegations in the course of trade of such a nature as
to discredit the establishment, the goods, or the industrial or
commercial activities, of a competitor;
➾ indications or allegations the use of which in the course of
trade is liable to mislead the public as to the nature, the
manufacturing process, the characteristics, the suitability for
their purposes, or the quality, of the goods.
Depending on national law, the use of a GI for goods coming
from another geographical area with a view to benefiting from
the reputation of that GI, sometimes referred to as "free-
riding" on that reputation, may be considered an act of unfair
competition.
 PROTECTION AND RIGHTS CONFERRED

(iii) "Legal means"

It might be noted that Article 22.2 does not specify any
particular legal means by which the protection is to be
provided, but rather leaves this to each Member. As mentioned
earlier there is a considerable diversity in the legal means
found in Members.
(iv) "Interested parties"
It should also be noted that the TRIPS Agreement states that it
is "interested parties" that are to have the right to invoke
these legal means. The TRIPS Agreement itself does not
specify who should be these "interested parties". However, as
indicated earlier, Articles 10 and 10ter of the Paris Convention
give a list of persons entitled to take action in respect of false
 PROTECTION AND RIGHTS CONFERRED

b.
PROTECTION AGAINST USES AS A TRADEMARK (ARTICLE 2
2.3)
This provision relates to a situation different from the one
where the GI itself is protected as a certification or collective
mark and is used on goods from the area indicated by the GI.
Here, we deal with the question of the extent to which
someone can obtain and maintain a trademark registration
incorporating a GI for goods not originating in the area
indicated by the GI.
For example, to what extent could the French GI "Roquefort"
be employed in a trademark for goods not coming from that
area of France.
 PROTECTION AND RIGHTS CONFERRED

b.
PROTECTION AGAINST USES AS A TRADEMARK (ARTICLE 2
2.3)
What the TRIPS Agreement requires is that, if the use of a GI in
a trademark with respect to goods not originating in the
territory indicated by the GI would be of such a nature as to
mislead the public as to the true place of origin of the good,
there must be legal means to refuse or invalidate the
registration of such a trademark.
This means that, if the trademark is still at the application
stage, the consequence will be the refusal of the application
(this is, in general, done by the trademark office which has
received the application).
 PROTECTION AND RIGHTS CONFERRED

b.
PROTECTION AGAINST USES AS A TRADEMARK (ARTICLE 2
2.3)
What the TRIPS Agreement requires is that, if the use of a GI in
a trademark with respect to goods not originating in the
territory indicated by the GI would be of such a nature as to
mislead the public as to the true place of origin of the good,
there must be legal means to refuse or invalidate the
registration of such a trademark.
This means that, if the trademark is still at the application
stage, the consequence will be the refusal of the application
(this is, in general, done by the trademark office which has
received the application).
 PROTECTION AND RIGHTS CONFERRED

b.
PROTECTION AGAINST USES AS A TRADEMARK (ARTICLE 2
2.3)
If the trademark has already been registered, the consequence
will be invalidation of the registered mark (depending on the
system of the Member concerned, invalidation can be
pronounced by the trademark office or by a court).
This action is to be taken ex officio, i.e. by the competent public
authority on its own initiative, if so provided in the law of the
country concerned, or upon request by any interested party, for
example the importer of the product protected by the GI or an
association of consumers.
 PROTECTION AND RIGHTS CONFERRED

c. HOMONYMOUS GIS (ARTICLE 22.4)

This addresses the situation where there are geographical
names that are identical in respect of spelling or pronunciation
but designate different geographical areas, within a country or
in different countries.
 PROTECTION AND RIGHTS CONFERRED

c. HOMONYMOUS GIS (ARTICLE 22.4)

ILLUSTRATION
Let's take a hypothetical example: there is a commune called
"Moillesulaz" in Geneva, Switzerland; there are also many places
bearing the same name in France. Suppose that one of the French
places has developed a famous form of dried beef protected by a GI
"Moillesulaz". The question is to what extent could producers of
processed meat located in the Geneva commune of "Moillesulaz"
use that name as a GI for marketing their products.
What the rule in Article 22.4 says is that, even if the use of such a
GI is literally true as to the origin of the goods, the rights under
Articles 22.2 and 22.3 to prevent such use must be applicable if that
use would falsely represent to the public that the dried beef
originates in the reputed French place "Moillesulaz".
 ADDITIONAL PROTECTION FOR GIS FOR WINES AND SPIRITS (ARTICLE 23)

Article 23 requires Members to make available additional

protection, compared to Article 22, for GIs for wines and spirits.
The main difference is that when an interested party sees a GI for a
wine being used on a wine which does not come from the
geographical area indicated, he must have the legal means to
prevent that use irrespective of whether or not there is misleading
of the public or unfair competition.
The same goes for spirits. Thus, sometimes people refer to Article
23 as an "absolute" form of protection since no such tests have to
be satisfied in order to exercise it. However, it should be noted that
the absoluteness of the protection is significantly tempered by the
important exceptions contained in Article 24.
 ADDITIONAL PROTECTION FOR GIS FOR WINES AND SPIRITS (ARTICLE 23)

a. PROTECTION AGAINST USE BY OTHERS (ARTICLE 23.1)

Under Article 23.1, Members have to provide interested parties the
legal means to prevent use of a geographical indication identifying
wines for wines not originating from the place indicated by the
geographical indication or identifying spirits for spirits not
originating from the place indicated by the geographical indication.
It is made clear that this has to be possible even where:
➾ the true origin of the goods is indicated (i.e. there is not
necessarily any confusion on this point);
➾ the GI is used in translation or accompanied by expressions such
as: "type", "kind", "style", "imitation", or the like.
 ADDITIONAL PROTECTION FOR GIS FOR WINES AND SPIRITS (ARTICLE 23)

b.
PROTECTION AGAINST USE AS A TRADEMARK (ARTICLE 23.2)
Article 23.2 deals with the rights that have to be available to an
interested party in a GI for a wine or a spirit to prevent the
registration of a trademark containing or consisting of that GI with
respect to goods not originating in the territory indicated.
These rights are similar to those that have to be available under
Article 22.3 in respect of all GIs, except that they apply irrespective
of whether or not the use of the indication in the trademark would
be of such a nature as to mislead the public as to the true place of
origin.
 ADDITIONAL PROTECTION FOR GIS FOR WINES AND SPIRITS (ARTICLE 23)

b.
PROTECTION AGAINST USE AS A TRADEMARK (ARTICLE 23.2)
ILLUSTRATION
If you go to the trademark office in your country and apply for
protection for a trademark for distributing a spirit called "TEQUILA
Paradise Delight", and the spirit does not come from Mexico, the
trademark office has, as a general rule, to reject the application,
either ex officio if your law so permits or upon request of an
interested party.
There is no need to demonstrate that the use would be misleading.
 ADDITIONAL PROTECTION FOR GIS FOR WINES AND SPIRITS (ARTICLE 23)

c. HOMONYMOUS GIS FOR WINES (ARTICLE 23.3)

Homonymous GIs, where two wine producing regions have the
same name or the same sounding name, are not unknown. One
prominent example, which was much referred to in the
negotiation of this provision, is "Rioja", important wine
producing region in both Spain and Argentina.
In this kind of situation, Article 23.3 provides for coexistence
of the homonymous geographical indications, subject to Article
22.4 (i.e., provided there is no false representation to the
public that a wine from a place identified by one of the GIs
comes from the place identified by the other GI).
c. HOMONYMOUS GIS FOR WINES (ARTICLE 23.3)
ADDITIONAL PROTECTION FOR GIS FOR WINES AND SPIRITS (ARTICLE 23)

In providing for such coexistence each Member is required

to determine the practical conditions to differentiate the GIs
from each other, e.g. by way of labelling, the representation
of a map showing the country where the name is, etc.
Differentiation should be done in a manner which ensures
equitable treatment of the producers concerned and that
consumers are not misled.
d. ADDITIONAL PROTECTION FOR GIS FOR WINES AND SPIRITS (ARTICLE 23)

NEGOTIATION OF A MULTILATERAL REGISTER OF GIS FO

R
WINES (ARTICLE 23.4)
Article 23.4 calls upon the Council for TRIPS to negotiate a
multilateral system of notification and registration of GIs for
wines, eligible for protection in those Members participating
in the system, with a view to facilitating the protection of
GIs for wines.
This built-in mandate is limited to wines, but it was also
extended by the Doha Ministerial Declaration in 2001 to
cover spirits.
Currently, the negotiation of the system is taking place in a
 EXERCISES:
• 8. Please explain the levels of protection provided in Article
22 and 23.
• 8. The TRIPS Agreement provides for two levels of
protection:
• a. For geographical indications for all goods: Article 22.2
requires Members to provide legal means for interested
parties, e.g. association of producers or of consumers, to
prevent: any use of a geographical indication in a manner
that misleads the public as to the true geographical origin;
any use which constitutes an act of unfair competition.
 EXERCISES:

• b. For geographical indications for wines and spirits:

Article 23 provides for additional (in other words, higher)
protection in the sense that the geographical indication will
enjoy protection, irrespective of the way a producer other
than those in the area identified by the geographical
indication, uses the GI to identify his product: for example
even with the express mention that it comes from the
actual area of production; with expressions like "type",
"kind", "imitation", or "method"; or in translated versions.
 EXERCISES:
• 9. What are Members' obligations under Articles 22.3 and
23.2 in respect of a trademark consisting of, or containing,
a geographical indication?
• 9. An important rule under Articles 22.3 and 23.2 is that
trademarks consisting of, or containing, a geographical
indication cannot be protected. If it is an application, it
should be rejected; if it is already registered, it should be
invalidated. Such actions can be taken by any interested
party, or ex officio (that is, at the own initiative of the
competent authority), if the law so provides. Under Article
22.3, the test required for such actions is that such use
would mislead the public as to the true origin of the good
bearing the trademark. Under Article 23.2, the misleading
test is not necessary.
 EXERCISES:
• 10. What is a homonymous geographical indication?
Please briefly explain the rules in respect of
homonymous geographical indications.
• 10. Homonymous geographical indications are
indications that have the same name or the same
sounding name. Under Article 22.4, use of a
homonymous geographical indication is not permitted
if it falsely represents to the public that the good
comes from the territory where the other homonymous
geographical indication is. Under Article 23.3, which is
limited to wines, the two homonymous names can
coexist under certain conditions, in particular that each
geographical indication is well differentiated from the
other.
 EXCEPTIONS AND INTERNATIONAL NEGOTIATIONS

The obligations to protect GIs in the TRIPS Agreement,

especially the additional protection for GIs for wines and
spirits, were only acceptable to many Members provided
some important exceptions were provided for, notably to
cover pre-existing uses in their countries of the GIs of other
countries that would be brought under protection.

However the main demandeurs in the negotiations on GIs

were not prepared to provide such exceptions, to
"grandfather" pre-existing uses, without any possibility of
obtaining full rights over their GIs at some stage in the
future.

Thus Article 24 deals both with exceptions and with the

a. GENERIC TERMS (ARTICLE 24.6)
EXCEPTIONS

This provision indicates that the TRIPS rules on geographical

indications do not require a Member to protect a geographical
indication of another Member if that indication is "identical
with the term customary in common language as the common
name" for the goods or services in question in that Member,
i.e. has become the generic term for describing the goods or
services in the local language.

An example would be cheddar for cheese. This type of cheese

is named after a small place in south-west England, but has
lost its association with that place and become in England and
many other countries the name for a type of cheese.
a. GENERIC TERMS (ARTICLE 24.6)
EXCEPTIONS

The provision contains a special exception concerning geographical

indications of other Members with respect to products of the vine
where the indication in question is identical with the customary
name of a grape variety. In such cases Members are not required to
apply the TRIPS rules on GIs if the indication was already used in
this way prior to the beginning of 1995 when the TRIPS and WTO
Agreements came into force.

Examples of grape varieties that might be covered include

"Chardonnay", "Merlot", "Syrah", "Cabernet", "Cabernet
Sauvignon", and "Gamay". You will note that this provision refers to
"products of the vine" and not "wines". The scope is therefore
wider; it can cover, for example, spirits obtained from products of
the vine.
b. PRIOR TRADEMARK RIGHTS (ARTICLE 24.5)
EXCEPTIONS

This exception concerns trademarks that have been applied for or

registered in good faith or where rights to a trademark have been
acquired through use in good faith. For the exception to apply, this
has to have been done either before the date of application of the
TRIPS Agreement in the Member concerned (i.e. at the end of any
relevant transition period) or before the date that the GI became
protected in its country of origin.

In these circumstances Members are under an obligation to ensure

that, in implementing the TRIPS rules on GIs, they do not prejudice
the prior trademark rights in question on the basis that the
trademark is identical with or similar to a geographical indication;
that is to say, the eligibility for, or the validity of, the registration of
the trademark or the right to use the trademark must not be
b. PRIOR TRADEMARK RIGHTS (ARTICLE 24.5)
EXCEPTIONS

In these circumstances Members are under an obligation to ensure

that, in implementing the TRIPS rules on GIs, they do not prejudice
the prior trademark rights in question on the basis that the
trademark is identical with or similar to a geographical indication;
that is to say, the eligibility for, or the validity of, the registration of
the trademark or the right to use the trademark must not be
impaired.

We should note that, unlike most of the other exceptions' provisions

in Article 24, this one puts an obligation on Members to provide the
exception and is not merely permissive.
c. PRIOR USE OF THE GI (ARTICLE 24.4)
EXCEPTIONS

This provision relates to the prior use of a GI, and is mainly

relevant to situations where there has been prior use of a GI
which is not covered by the exceptions in relation to generic
terms and prior trademark rights.

It will be noted that its scope is limited to GIs for wines and
spirits. It is optional in the sense that it allows, but does not
oblige, Members to permit the continuation of the forms of
prior use covered by the provision.
EXCEPTIONS

c. PRIOR USE OF THE GI (ARTICLE 24.4)

d. TIME LIMIT TO CHALLENGE TRADEMARKS UNDER
EXCEPTIONS

ARTICLE 22.3 AND ARTICLE 23.2 (ARTICLE 24.7)

You will recall that Articles 22.3 and 23.2 provide that a
trademark consisting of, or containing, a GI may be
challenged. Article 24.7 allows a Member to provide a time
limit of 5 years for such actions, counting from:
- the time the adverse use of the protected GI became
generally known in that Member; OR
- the date of registration of the trademark in that Member if
the trademark has been published by that date, if that date is
earlier than the date on which the adverse use became
generally known in that Member;
- provided that the GI is not used or registered in bad faith.
e. USE BY A PERSON OF HIS NAME (ARTICLE 24.8)
EXCEPTIONS

This paragraph covers the situation where a person has

been using "in the course of trade" his or her personal name
(or predecessor's name) which is the same as a GI.

This provision, which is mandatory for Members, requires

such persons to be able to continue this use provided it
would not mislead the public.
 f. GIS NOT PROTECTED IN THEIR COUNTRY OF ORIGIN
EXCEPTIONS

OR WHICH HAVE FALLEN

INTO DISUSE IN THEIR COUNTRY (ARTICLE 24.9)

No Member is required to protect on its territory another

Member's geographical indication:
- if that geographical name is not protected as a GI in that other
Member (called in the provision the "country of origin");
- if the geographical name, which was protected as a GI, ceases
to be protected as a GI in the country of origin;
- if the geographical indication has fallen into disuse in the
country of origin.
It will be noted that the possibility for a Member not to protect
such GIs is optional. It does not prevent a country from
protecting such GIs if it so wishes.
a. INTERNATIONAL NEGOTIATIONS (ARTICLE 24.1)
INTERNATIONAL NEGOTIATIONS, REVIEW AND STANDSTILL

In Article 24.1 Members have agreed in advance on their

readiness to enter into negotiations aimed at increasing the
protection of individual geographical indications under Article
23, which concerns wines and spirits.

They have further agreed that they will not use the exceptions
provisions in paragraphs 4-8 of Article 24 to refuse to conduct
such negotiations or to conclude bilateral or multilateral
agreements; and in such negotiations they will be willing to
consider the continued applicability of these exceptions to
individual geographical indications whose use is the subject of
such negotiations.
a. INTERNATIONAL NEGOTIATIONS (ARTICLE 24.1)
INTERNATIONAL NEGOTIATIONS, REVIEW AND STANDSTILL
Article 24.2 provides for the Council for TRIPS to keep under
review the application of the TRIPS rules on GIs. Quite extensive
work has been done in the Council for TRIPS pursuant to this
requirement, including responses by many Members to a
questionnaire about their national systems for the protection of GIs
and a summary of these responses prepared by the Secretariat
(IP/C/W/253/Rev.1).

The second and third sentences relate to interventions of the

Council for TRIPS regarding any issues about compliance with the
TRIPS provisions on geographical indications: at the request of a
Member, the Council shall consult the Member or Members
concerned if it has not been possible to find a satisfactory solution
through bilateral or plurilateral consultations. So far, there has not
b. STANDSTILL (ARTICLE 24.3)
INTERNATIONAL NEGOTIATIONS, REVIEW AND STANDSTILL

This provision requires each Member, in implementing the TRIPS

provisions, not to diminish the level of protection of GIs that existed
in that Member immediately prior to the date of entry into force of
the WTO Agreement, i.e. 1.1.1995.
 EXERCISES:
• 11. Article 24 provides for certain exceptions (to Members'
rights or obligations or to the protection of geographical
indications). Which are they?
• 11. They are:
• - If in a Member, a geographical indication for a wine or a spirit
from another member has been used for goods or services for
ten years before 15 April 1994 or, without time limit before that
date, if it was in good faith, that Member can allow such use to
continue under certain circumstances. (Article 24.4)
• - Good-faith trademark applications and registrations, or
trademarks rights acquired in good faith through use, for goods
and services before the date of application of the TRIPS
Agreement to a Member or before the date of protection of the
geographical indication in its country of origin, cannot be
challenged on the ground that the trademark is identical with, or
 EXERCISES:
• - A Member is not required to stop the use, for goods and
services, of a geographical indication of another Member if that
indication has become the generic term for such goods and
services. Similarly, it is not required to stop the use of a
geographical indication of another Member if this indication is
used as a generic name of a grape variety for products of the
vine as of 1.1.1995 the date of entry into force of the WTO
Agreement. (Article 24.6)
• - When a person is using, in the course of trade, his own name or
his predecessor's name, and this name is the same as a
geographical indication, he or she may continue to use this
name unless the name is used in a such a manner as to mislead
the public. (Article 24.8)
• - Members are not required to give protection to a geographical
indication which is not protected in the country of origin, or has
ceased to be protected or has fallen into disuse in that country
 SUMMARY
• WHAT IS THE SUBJECT MATTER FOR PROTECTION?
• The TRIPS Agreement requires Members to provide
protection for geographical indications, which are
defined under Article 22.1 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.
• This definition has been interpreted or implemented by
Members in various ways. The main requirement is
that there is a linkage between the quality, reputation
or other characteristics of the good and its
geographical origin as identified by the GI. Appellations
of origin are a special category of geographical
 SUMMARY
• WHAT ARE THE CONDITIONS FOR GRANTING
PROTECTION?
• The TRIPS Agreement does not specify the legal form
that the protection to be provided should take. It leaves
it to Members to determine if and where the
acquisition and maintenance of protection should
depend on meeting prior procedural requirements and
formalities.
• In practice various means of protecting geographical
indications are used by Members, including: laws on
business practices (e.g., on unfair competition, or on
consumer protection), trademark law (i.e. certification
or collective marks), and sui generis GI laws.
 SUMMARY
• WHAT ARE THE RIGHTS CONFERRED?
• The TRIPS Agreement requires two basic forms of
protection to be available in respect of all GIs: against
use in a manner that would mislead the public as to the
true origin of the product; and against use that would
constitute an act of unfair competition within the
meaning of Article 10bis of the Paris Convention.
• Under Article 23, the level of protection for
geographical indications for wines and spirits is higher.
It is not dependant on meeting tests of misleading the
consumer or unfair competition and applies even if the
true place of origin is indicated or the use is
accompanied by certain qualifying terms such as 'type'
or 'kind', or the use is in translation.
 SUMMARY
• WHAT ARE THE RIGHTS CONFERRED?
• Under both Article 22 and Article 23, the right to take
action must be available to any interested party, i.e. not
only the right holder but also distributors, or
associations of consumers, for example.
• Under Article 22.3, where a geographical indication is
used as, or in, a trademark for goods not originating
from the place identified by that indication, Members
are required to provide legal means to reject the
application for, or to invalidate the registration of, that
trademark if that use would mislead the public as to
the true origin of the goods.
 SUMMARY
• WHAT ARE THE RIGHTS CONFERRED?
• Under Article 23.2, the use of a geographical indication
as, or in, a trademark, on a wine or spirit not
originating from the place identified by that
geographical indication must as a general rule be
prevented, whether or not the public would be mislead.
• Protection against the use of a homonymous
geographical indication must be provided where it
would mislead the public as to the true origin of the
goods. For wines, certain practical guidelines are set
out for the co-existence of homonymous GIs in cases
where the public would not be mislead.
Add a Slide Title - 2
Add a Slide
Title - 4
 Click icon to add picture

Add a Slide
Title - 5