Geographical indications (GIs) are a distinct category of intellectual property rights (IPRs) centred on the interconnections of culture, quality and provenance. GIs, recognisable through unique signs, identify products as originating in a particular place, where the characteristics, reputation or value of the products are linked to their place of origin. Examples of GIs include Argan Oil (Morocco), Champagne (France), Darjeeling Tea (India), Oku White Honey (Cameroon), Parmigiano-Reggiano (Italy), Rooibos (South Africa) and Scotch Whisky (Scotland).
GIs are indications, which identify a good as originating in the territory of a WTO 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: Article 22 of TRIPS.
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) obliges all members of the World Trade Organisation (WTO) to protect GIs. TRIPS does not prescribe any legal system of protection for GIs; WTO members have the latitude to introduce any system best suited to their social and economic development priorities. For example, members may introduce sui generis (special) GIs systems, collective or certification mark systems or unfair competition systems. However, TRIPS provides additional protection for wines and spirits. Article 23(1) of TRIPS prohibits the use of GIs that identify wines or spirits not originating in the place indicated by the GIs in question, even where the true origin of the products is indicated, or the GIs is used in translation or accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like. Article 23 (4) of TRIPS further provides for negotiations to be undertaken in the Council for TRIPS on the establishment of a multilateral system of notification and registration of GIs for wines.
The additional protection for wines and spirits has triggered two central debates in the Council for TRIPS viz: (i) whether to extend the higher level of protection introduced for wines and spirits to all GIs? (ii) whether to create a multilateral register for wines and spirits? In contrast to other international IPRs debates usually couched as Developed versus Developing/Least Developed countries (or Global North versus Global South), the GIs debates are couched as Old World versus New World. Old World represents jurisdictions with rich histories, traditions and a smorgasbord of unique origin-based products like countries in Europe, Asia and Africa. These jurisdictions push for stronger protection and the multilateral GIs register. New World represents jurisdictions with more recent histories and fewer origin-based products like the United States, Australia and New Zealand. These jurisdictions are opposed to stronger protection.
Although TRIPS establishes GIs as a category of IPRs alongside Copyright/Related Rights, Trademarks, Industrial Designs and Patents, beyond TRIPS, other international treaties provide for the protection of origin-based products, albeit under different designations. These treaties GIs include the: (i) Paris Convention for the Protection of Industrial Property (Paris Convention), (ii) Madrid Agreement for the Repression of False and Deceptive Indications of Source on Goods (Madrid Agreement), (iii) Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (Lisbon Agreement) and the new (iv) Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act).
The Paris Convention 1883 provides for the protection of ‘indications of source’ and ‘appellations of origin’, but it neither defines these terms nor establishes requirements for protection. Indications of source provide information about the geographical origin of a product which could include the mention of names of countries on products, such as ‘made in …’ or ‘product of ….’. Indications of source also comprise iconic emblems or symbols related to geographical origins. The Madrid Agreement 1891 provides for repression of false or deceptive indications of source, and, like the Paris Convention, it fails to define ‘indication of source.’ While indications of source can be interpreted in the same way as the Paris Convention, deceptive indications are those which, although true, may be misleading. For example, homonymous place names in two different countries, where only one place has developed a reputation for the product. The use of the well-known name as an indication of source for a product from the similarly named place would be considered deceptive due to the likelihood of confusion.
The Lisbon Agreement 1958 expands the scope of protection for origin-based products in three ways. First, it provides for the protection of ‘appellations of origin’, which it defines as ‘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 geographical environment including natural and human factors’ (Article 2). Second, it provides that ‘protection shall be ensured against any usurpation or imitation, even if the true origin of a product is indicated or if the appellation is used in translated form or accompanied by terms such as ‘kind’, ‘type’, ‘make’, ‘imitation’ or the like’ (Article 3). Third, it establishes an international register for appellations of origin (Article 1). The Geneva Act 2015 builds on the Lisbon Agreement. It creates the international registration of GIs and appellations of origin (Articles 1 and 4). It also extends eligibility for membership of the Lisbon Agreement to intergovernmental organisation (Article 1).
Drawing from the latitude offered in TRIPS, divergent opinions on the appropriate legal frameworks for GIs and the variety of international treaties on the subject as outlined above, the GIs systems at regional and national levels differ. For example, the European Union protects GIs through these sui generis systems: (i) Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs, (ii) Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products, (iii) Regulation (EU) No 251/2014 of the European Parliament and of the Council of 26 February 2014 on the definition, description, presentation, labelling and the protection of geographical indications of aromatised wine products and (iv) Regulation (EU) 2019/787 of the European Parliament and of the Council of 17 April 2019 on the definition, description, presentation and labelling of spirit drinks, the use of the names of spirit drinks in the presentation and labelling of other foodstuffs, the protection of geographical indications for spirit drinks, the use of ethyl alcohol and distillates of agricultural origin in alcoholic beverages. The EU also has two databases for registered food, wines and spirit drinks, namely eAmbrosia and E-Bacchus. Conversely, the United States protects GIs as trademarks through certification and collective marks in line with its Lanham Trademark Act 1946. It also protects GIs through common law. See, for example, Institut National Des Appellations v. Brown-Forman Corp, 47 USPQ2d 1875, 1884 (TTAB 1998).
On the other side of the Atlantic, there are fragmented GIs systems in Africa. The African Intellectual Property Organisation protects GIs through a sui generis system set out in Annex VI of the Bangui Agreement 1977 while the African Regional Intellectual Property Organisation protects GIs through its Banjul Protocol on Marks 1993. Notably, the African Union is committed to promoting GIs in Africa, as is demonstrated by its design and adoption of the Continental Strategy for GIs in Africa (2018-2023).
For more on GIs, see:
World Intellectual Property Organisation ‘Geographical Indications.’
oriGIn: Organisation for an International Geographical Indications Network.
