Trans Border IPRs -A GI Based Approach

The Background

A Geographical Indication (GI) is a sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that place of origin. ¹ To put it a bit differently, GI is a category of Intellectual Property Rights (IPRs) with collective ownership. The special characteristics, quality or reputation may be due to natural factors (raw material, soil, regional climate, temperature, moisture, etc.) or the method of manufacture or preparation of the product (such as traditional production methods) or other human factors (such as concentration of similar business in the same region). Aranmula Kannadi, ² Kancheepuram Silk Saree, Pochampally Ikat, Darjeeling Tea and Balaramapuram Handloom are classic examples. Varanasi, it must be mentioned here, has emerged as a confluence of products protected by GIs with five GI registrations assigned to this region alone (Singh, 2015), the most important of which is Banarasi silk sarees. However, Surat made synthetic sarees and Chinese made sarees are regularly passed off as Banarasi products in different markets across India, much to the chagrin of the genuine Banarasi saree producers.

In the ‘natural chaos’ of asymmetrical information, GIs can help restore the symmetry thereof by offering consumers additional information on the product’s quality and reputation so that they are not adversely placed against the producers (Pai & Tania Singla, 2016). In his model on reputation, Shapiro suggested that reputation operates as a signalling device which transmits information about a certain quality to the consumers thereby reducing the consumer’s search costs (Shapiro, 1983). The operation of GIs is quite similar. In fact, surveys conducted by United Nations Conference on Trade and Development (UNCTAD) among EU consumers show that for GI-registered agricultural products, consumers are willing to pay a premium of up to 10–15% whereas for non-agricultural products, the premium could range up to 5–10% (Bagade & Metha, 2014).

Appellations of Origin and Indications of Source

Prior to the conclusion of The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), products having a link to their place of origin were known by different terminologies such as appellations of origin, indications of source and designations of geographical origin. Appellations of origin, for instance, have been defined in the Lisbon Agreement (Article 2(1)) to mean:

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 geographical environment, including natural and human factors.

Thus, an appellation of origin is a special category of GIs. ³ The basic difference between the two terminologies is that appellation of origin implies a stronger link with the place of origin. Examples of appellations of origin are Champagne and Tequila. The former indicates a special kind of sparkling wine originating in Champagne region of France. As regards the latter, which owes its origin to Mexico, there are federal regulations in place which governs specific details before it can be labelled as Tequila. ⁴

As regards indication of source, the World Intellectual Property Organization (WIPO) defines it as

An indication referring to a country (or to a place in that country) as being the country or place of origin of a product.

Unlike GI, an indication of source does not imply the presence of any special quality, reputation or characteristic of the product essentially attributable to its place of origin.

GI Protection under TRIPS

Article 22 of the TRIPs Agreement provides a definition of GIs. Article 22.2 provides that World Trade Organization (WTO) members ‘shall provide the legal means for interested parties to prevent:

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.

Thus, the use of a GI which does not mislead the public as to its true origin is not an infringement of the TRIPS Agreement. This is one of the key differences between the TRIPS protection given to all goods and the special protection given to wines and spirits. In fact, Articles 23 and 24 provide broader protection for GIs for wines and spirits than for other products. Special mention must be made here of the TRIPS requirement of home protection (Article 24.9) which categorically states that:

there shall be no obligation under this Agreement to protect GIs which are not or cease to be protected in their country of origin or which have fallen into disuse in that country.

It is worth mentioning here that the TRIPS-mandated GI regime suffers from some inherent limitations including the extended protection for only selected GIs and difficulties of obtaining protection in foreign jurisdictions (Islam & Ansari, 2017).

The Indian Scenario

In India, GI protection is available through a sui generis system operationalised through the Geographical Indications of Goods (Registration and Protection) Act, 1999 (which came into force on 15 September 2003) and the Geographical Indications of Goods (Registration and Protection) Rules of 2002. The Intellectual Property Office in Chennai is in charge of GI Registry in India.

Indian GI Act specifies the goods to be either agricultural goods or natural goods or manufactured goods that can qualify as a GI. Further in the Indian Act, if a producer applies for a GI for a manufactured good, s/he must make sure that at least one of the activities of production, processing or preparation of the good must take place in the territory. In that sense, the GI Act is more restrictive than the TRIPS definition. But under the Act, names that do not denote the name of a country or region or locality can still be considered for registration as long as they relate to a specific geographical area and are used in relation to goods originating from that region, providing a leeway for extending protection to Alphonso mangoes and Basmati rice.

Various stages of filing and granting of GIs have been prescribed by the Registry. In the first step, the producers’ organisation or a collective body of producers (like the Tea Board of India) has to file an application in the prescribed form. The details that need to be provided in the application include the class of goods, the territory (including certified copies of the map thereof), particulars of appearance, details of producers, affidavit of how the applicant claims to represent the interest, special human skill involved if any, number of producers and particulars of inspection structure to regulate the use of GI.

The application is examined by experts appointed by the GI Registry. If accepted, the application is advertised in the GI Journal for public scrutiny. But if the application is objected to by experts, a hearing will take place. After advertisement in the GI Journal, if no objections are received from any public organisation or individual, then it is deemed as accepted to be awarded GI certification. However, if any individual or producer organisation or NGO objects the validity and genuineness of the GI, a hearing takes place and if allowed, the application goes for acceptance and registration certificate is issued. It also needs to be mentioned here that the Indian GI Act (Section 32) specifically bars the jurisdiction of civil courts in this regard.

The Pakistani and Bangladeshi Scenarios

Pakistan has afforded protection of GIs through trademark law, namely, Trade Mark Ordinance, 2001 implemented through Trade Mark Rules 2004. In fact, the definition of GI of Pakistan is in conformity with TRIPS and could designate goods and services. The Trade Mark Ordinance of Pakistan defines goods broadly to include anything subject to trade, manufacture or commerce. However, the Pakistan legal regime is silent on protection of homonymous indications (those which may be similar in terms of spelling or pronunciation but differ in their meaning and designate goods originating from different countries). This is in contrast with the Indian Act which under Section 10 deals with registration of homonymous GIs and stipulates to consider the practical question to differentiate them to ensure equitable treatment of producers of the goods concerned and avoiding confusion in the market.

In Pakistan, the application for registration of GIs is to be filed with the Registrar of Trademarks along with the regulations governing the use of the mark, specifying the persons authorised to use the mark, conditions for membership of the association, conditions for use of the mark and any sanctions against misuse in the case of a collective mark. The regulations are to be approved by the Registrar taking into account compliance with the requirements to be furnished along with the application and that they are not contrary to public policy or morality. If all the requirements are met, the application would be accepted.

Bangladesh, by contrast, has enacted a sui generis GI legislation namely the Geographical Indications of Goods (Registration and Protection) Act, 2013 which provides a registration system for some of its reputed local and indigenous products. However, GI registration is not compulsory. The Bangladeshi GI Act also provides equal protection for foreign GIs which are designated as such in the official notifications by the Government. The Act recognises the concept of homonymous GIs. Section 28(d) also provides that

A registered GI shall be infringed by a person if he, not being an authorised user thereof…. uses any other GI to such goods not originating in the place indicated by such other GI or uses other GI to such goods even indicating the true origin of such goods or uses of other GI to such goods in translation of the true origin or accompanied by expressions such as kind, style, imitation or the like….

Section 21 of the Act specifies that registration of trademarks can be opposed if it can be shown that the trademark contains or consists of a GI.

Cross Border GIs

Cross Border GI (also called transborder GI) has been defined as ‘a GI which originates from an area that covers regions, territory or locality of two or more countries where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin extending over those countries’ (Islam & Ansari, 2017). Though the majority of GIs are essentially located within the territory of a state, there are also a number of GI products across the world that have originated from the territory of two or more countries. A classic instance is Basmati rice, a product originating from both India and Pakistan. There are other examples too, for instance, Irish Whisky and Ouzo. The latter, it needs to be mentioned here, comes from both Greece and Cyprus. Needless to say, the recognition and enforcement of shared GIs across borders should claim more attention due to its economic attractions in a multilateral trading system.

TRIPS and Cross-Border GIs

TRIPS does not explicitly prohibit the protection of cross-border GIs. But it remains silent as to the way out for the determination of the precise geographical origin of a GI where two or more countries have competing claims. In such a situation, member countries may depend on historical and geographical evidence, objective legal requirements and shared cultural understandings to substantiate their claims over GIs across borders (Islam & Ansari, 2017). Further, except for a few legislative provisions in the EU to protect cross border GIs which provide for transborder GI registration for agricultural products, foodstuffs and wines (but not for spirits), international practices in this regard are quite heterogeneous. Classic examples of first EU legislations are Regulation 1151/12 of the European Parliament and of the Council of 21 November 2012 on Quality Schemes for Agricultural Products and Foodstuffs as well as Regulation 479/2008 of the European Parliament and of the Council of 29 April 2008 on the Common Organization of the Market in Wine. In the EU case, several groups within different territories may lodge a joint application within the EU centralised system.

Mention must also be made here of Article 24.1 of the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore within the Framework of the ARIPO (African Regional Intellectual Property Organisation) adopted by the Diplomatic Conference at Swakopmund (Namibia) which read as follows: ‘Eligible foreign holders of traditional knowledge and expressions of folklore shall enjoy benefits of protection to the same level as holders of traditional knowledge and expressions of folklore who are the nationals of the country of protection’. This Article can no doubt be extended to transborder GI protection.

The manner in which WOOLMARK is protected can also be a leading light in this regard. The said mark is a certification mark collectively shared by the Wool Boards of Australia, New Zealand, South Africa and Uruguay. These respective Boards have set up a common Secretariat called the International Wool Secretariat which in turn has established a company called IWS Nominee Company Ltd. which is responsible for the protection of the WOOLMARK name and logo against all acts of infringement. Nevertheless, while drawing lessons from this example, one must not forget the basic and fundamental differences between a private right (certification mark) and the public element (rights of a GI).

The Geneva Act of the Lisbon Agreement on Appellations of Origin and GIs which was adopted in 2015 extends the Lisbon system of appellations of origin to GIs and such protection extends further over transborder geographical areas of origin. Article 5.4 of the Act lays down the procedure for joint application in the case of a transborder geographical area. This paves the way for a single registration of cross-border GI. But it is only a humble beginning.

Cross-Border Protection of GIs and the GI Trademark Imbroglio

Ensuring cross-border protection of GIs in countries where the same GI is protected as a trademark poses insurmountable difficulties. This is amply borne out from the Canadian case of Scotch Whisky Association vs. Glenora Distillers International Ltd. (2008, 65CPR, 4th 441) where the Scotch Whisky Association filed a statement of opposition against the application by Glenora Distillers to register the trademark GLEN BRETON for single malt whisky in Canada, contending that the word GLEN is of Scottish origin and when used with whisky would connote the Scotch Whisky, a registered GI in Canada. On appeal to the Federal Court, the opposition to the registration succeeded. In the light of the above jurisprudence, resolution of conflicts between trademark protection and GI protection in the cross border marketplace is crucial (Islam & Ansari, 2017).

The India-Bangladesh Transborder GI Issues: From Jamdani Sarees to Nakshkantha Quilt

Bangladesh feels that some of its GI products which they assert are culturally and geographically associated with that country are exclusively claimed by India through registering them under the Indian sui generis system. Jamdani sarees, Fazil mangoes and Nakshkantha (embroidered quilt) are classic examples. Jamdani, it must be mentioned here, is the first ever GI product registered in Bangladesh. ⁵ The ire of Bangladesh is that due to its sui generis registration system being in a nascent stage as well as due to the absence of a universal policy regime to ensure transborder GI protection, the trading interests of that Least Developed Country are being seriously undermined. In fact, the procedure prescribed at present, i.e., separate registration in both countries under respective domestic law resulting in separate GIs—Indian Jamdani and Bangladeshi Jamdani for instance—is cumbersome and may make the GI product semi generic in other countries leading to losing protection in those countries (Rangnekar & Kumar, 2010). The situation is all the more complicated as the laws of both India and Bangladesh recognize the concept of homonymous GIs.

The Indo-Pak Issues: Basmati and Beyond

The transborder GI issues between India and Pakistan largely revolve around Basmati whose regulatory landscape is incidentally complicated by patents, trademarks and brands. Both India and Pakistan have been aware of the need for joint registration of Basmati rice to protect it from foreign conglomerates, but to date they have failed to arrive at any consensus in this regard. Basmati, it needs to be mentioned here, is distinguished by the grain’s tall and slender shape, tapering at both ends but not bulging at the belly and its distinct aroma, which is said to be a complex effect of over 40 compounds and not only 2-acetyl-pyrolline. The chalkiness of the grain is also a distinguishing characteristic, as its elongation on cooking to almost double its length, with the width remaining the same. The traditional Basmati growing areas in India are in the sub-Himalayas and particular tracts of the Indo-Gangetic plain in the states of Haryana, Punjab, Uttar Pradesh and Uttarakhand and the Union Territory of Jammu and Kashmir. In terms of area, Haryana is leading, accounting for 44% of the area under Basmati followed by Uttar Pradesh (28%), Punjab (22%), Jammu and Kashmir (5%) and Uttarakhand (under 1%). Two-thirds of the annual production is exported.

The Indo-Pak joint efforts vis-à-vis Basmati date back to 2005 when the Indian Minister for Commerce and Industry wrote to his counterpart in Pakistan proposing mechanisms to hold consultations. In 2006, a joint study group was constituted and meetings between representative trade bodies from both the countries took place. In the November 2008 meeting in Islamabad, both groups agreed to deem 2009 as the Year of Basmati as a means to emphasize efforts towards joint registration. However, there have been contrasting movements too, namely efforts to acquire independent rights. Thus, in India in 2004, an NGO filed an application at the GI Registry whereas in Pakistan an application was filed in December 2005 by the Basmati Growers Association. The Agricultural and Processed Food Products Export Development Authority (APEDA), which has now been empowered to register Basmati as a GI, filed opposition proceedings in Pakistan’s Sindh High Court.

Suggestions have been galore, from forming a company with participation from Indian and Pakistani entities to a Joint Commission of India and Pakistan on Basmati (Rangnekar & Kumar, 2010). Mention must also be made here of the basic differences between the Indian legal regime and the Pakistani framework. In India, any association of persons or producers or any organisation or authority established by any law which represents the interest of the producers of the concerned goods can apply for GI registration. By contrast, Pakistan follows the trademark route and hence private entities can acquire rights in Basmati in that country leading to a tussle between different representative bodies. What is needed is going beyond these two frameworks and empowering the farmers who toil and moil in the field. Add to these the complications of generating the technical content of the GI or as Vidal terms creating a ‘Basmatisthan’ (Vidal, 2005) and the complexities of an exercise that involves negotiating multitude of interests, nay drawing out shared understandings on attributes, specifications and geography of cultivation amidst the politics of a transborder reality will unfold.

Conclusion

Cross-border GI protection requires maintaining an appropriate balance between national sovereignty-based policy considerations and a non-discriminatory approach with regard to foreign right holders. It also needs amendment of the domestic legislation and a more uniform, consistent and flexible enforcement system. We have miles to go towards such a framework which can only be achieved through shared understanding between neighbouring countries, mutual consultation and consensus to enable maximum protection for GIs across borders. To put it a bit differently, we have to tide over the legal vacuum in transborder GI protection through bilateral, plurilateral or regional arrangements, nay intergovernmental bodies or joint commissions which can only be arrived at through political initiatives accompanied by the administrative will to execute. Till then, cross-border GI protection will at best remain to be a premise on paper.