Geographical indications

Place names are sometimes used to identify a product. Well-known examples include “Champagne”, “Scotch” whisky, “Tequila” alcoholic liquor, and “Roquefort” cheese. Wine and spirits makers are particularly concerned about the use of place-names to identify products, and the TRIPS agreement contains special provisions for these products. But the issue is also important for other types of goods.

Definition.

Geographical indications are defined in TRIPs as indications which identify a good as originating in the territory of a Member, or a region or particular place in that territory to which a given quality, reputation or other characteristic of the good are essentially attributable.

Conditions for geographical indication.

The quality, reputation or other characteristics of a good can each be a sufficient basis for eligibility as a geographical indication, where they are essentially attributable to the geographical origin of the good.

Use of geographical indication.

The use of a place name to describe a product in this way — a “geographical indication” — usually identifies both its geographical origin and its characteristics. Therefore, using the place name when the product was made elsewhere or when it does not have the usual characteristics can mislead consumers, and it can lead to unfair competition. The TRIPS agreement says countries have to prevent the misuse of place names.

In respect of all geographical indications, interested parties must have legal means to prevent use of indications which mislead the public as to the geographical origin of the good, and to prevent any use which constitutes an act of unfair competition.

The registration of a trademark which uses a geographical indication in a way that misleads the public as to the true place of origin must be refused or invalidated if the legislation so permits or at the request of an interested party.

Geographical indications of wines and spirits.

For wines and spirits, the agreement provides higher levels of protection, i.e. even where there is no danger of the public being misled. An Article in the TRIPs provides that interested parties must have the legal means to prevent the use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication. This applies even where the public is not being misled, there is no unfair competition and the true origin of the good is indicated or the true origin is indicated in translations or the geographical indication is accompanied be expressions such as “kind”, “type”, “style”, “imitation” or the like (e.g., champagne-type wine, imitation scotch whisky). Similar protection must be given to geographical indications identifying spirits when used on spirits. Protection against registration of a trademark must be provided accordingly.

Exceptions.

Trips contain a number of exceptions to the protection of geographical indications. These exceptions are of particular relevance in respect of the additional protection for geographical indications for wines and spirits. For example, Members are not obliged to bring a geographical indication under protection, where the name is already protected as a trademark or it has become a generic term for describing the product in question. For example, “cheddar” now refers to a particular type of cheese not necessarily made in Cheddar (a place in Britain).

But any country wanting to make an exception for these reasons must be willing to negotiate with the country which wants to protect the individual geographical indication in question. Measures to implement these provisions shall not prejudice prior trademark rights that have been acquired in good faith. Under certain circumstances, continued use of a geographical indication for wines or spirits may be allowed on a scale and nature as before. The agreement provides for further negotiations in the WTO to establish a multilateral system of notification and registration of geographical indications for wines. The exceptions cannot be used to diminish the protection of geographical indications that existed prior to the entry into force of the TRIPS Agreement. The TRIPS Council shall keep under review the application of the provisions on the protection of geographical indications.

Industrial designs.

Definition: Industrial design refers to the features concerning the look of an article, such as the shape, ornamentation, pattern, configuration, etc.

TRIPs cover only industrial designs, and not utility models, i.e., minor functional modifications.

Coverage.

TRIPS Agreement obliges Members to provide for the protection of independently created industrial designs that are new or original. Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations.

TRIPs contain a special provision aimed at taking into account the short life cycle and sheer number of new designs in the textile sector: requirements for securing protection of such designs, in particular in regard to any cost, examination or publication, must not unreasonably impair the opportunity to seek and obtain such protection. Members are free to meet this obligation through industrial design law or through copyright law.

Right of industrial design holder.

Members are required to grant the owner of a protected industrial design the right to prevent third parties not having the owner's consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

Exception.

Members are allowed to provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.

Term.

Under the TRIPS agreement, the duration of protection available of industrial designs shall amount to at least 10 years. The wording “amount to” allows the term to be divided into, for example, two periods of five years.

Patents.

Patents relate to scientific and technological innovations in various industrial and service sectors and confer certain exclusive rights on the patent-holder regarding the subject of the patent.

The TRIPS Agreement requires Member countries to make patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and industrial applicability.