The way forward for GIs in Sri Lanka
Chapter XXXIII of Sri Lanka’s Intellectual Property Law No. 36 of 2003 defines geographical indications (GIs) as indications that identify goods originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.
GIs may be regarded as offshoots of indications of source and appellations of origin, which were first recognised in the Paris Convention of 1883, but there has been no uniform approach by different countries in respect of the protection of GIs. Some countries have enacted specific sui generis registration to the protection of GIs. Others protect GIs under existing laws and still others afford protection by a combination of both.
For the protection of GIs, unfair competition regulations, consumer protection laws, laws protecting trade names and marks, laws preventing passing off and laws relating to false and misleading trade practices are also relevant.
International treaties and agreements relating to the protection of GIs began with the Paris Convention for the Protection of Industrial Property, under which protection was afforded to appellations of origin. More recently, the World Trade Organization (WTO) Trade-Related Aspects of IP Rights (TRIPS) Agreement has afforded protection to GIs by promoting a standard definition of GI and by prescribing certain minimum standards by which they should be legally protected by all WTO member states. Some of the more important international agreements relating to GI are:
1. The Paris Convention 1883;
2. The Madrid Agreement for the repression of false or deceptive indications of source on goods 1891;
3. The General Agreement on Tariffs and Trade (GATT) 1947;
4. The Lisbon Agreement for the protection of appellations of origin and their international registration 1958; and
5. The TRIPS Agreement 1995.
‘GI’ is therefore a sign used on a product to denote its origin, where a specific quality, characteristic or reputation of the product is essentially attributable to that origin. Bordeaux, for example, is a GI for wine originating from the Bordeaux region in the South of France, which traces its origin to the eighth century. Similarly, Ceylon Tea is a geographic place name.
An indication of source is generally used to denote the geographical place of origin of a product, eg, Made in Sri Lanka. These need not have any definite characteristic which derives from their place of origin. Article 10 of the Paris Convention provides for the prohibition, or seizure on importation, of all goods that bear a false indication of the source of the goods or the identity of the producer, manufacturer or merchant.
"The protection of GIs in the country of origin is necessary as otherwise there would be no obligation under the TRIPS Agreement for other countries to extend reciprocal protection."
Appellations of origin are the actual names of geographic places of origin but they go further than indications of source in that they denote a genuine qualitative link between the products and the place of origin. The Lisbon Agreement defines an appellation of origin as “a geographical denomination 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”.
Article 10 of the Paris Convention mentions appellations of origin, but the term ‘indications of source’ covers appellations of origin as well, as they are considered to be indicators of the source of the goods.
Article 11 bis of the Paris Convention gives the basis of protection against misleading indications of source, including appellations of origin. It obliges members to provide protection against unfair competition and contains a non-exhaustive list of acts that are prohibited, but it does not expressly provide for any special remedies against infringement.
The Madrid Agreement for the repression of false or deceptive indications of source of goods was adopted in 1891 and revised in Washington in 1911, The Hague 1925, London 1934 and Lisbon 1958. It was supplemented by the additional Act of Stockholm in 1967 and had been signed by 34 member states by September 1, 2006.
The Madrid Agreement was the first multilateral agreement to provide specific rules for the repression of false and deceptive indications of source. It did not add much to the protection given by the Paris Convention but it extended its protection to deceptive indications of source in addition to false indications. A deceptive indication of source could be a true name of a place the goods originate from but which nevertheless confuses the purchaser about the quality of the goods.
In this connection, provisions of Section 161 (iii) and 161 (ii) may be compared. The main focus of the Madrid Agreement is on enforcement. It complements the Lisbon Agreement, which focuses more on registration. The Madrid Agreement provides strong remedies, including seizure and prohibition of importation and specifically prohibits the use of wine appellations as generic names. The principal means of enforcement is through seizure and prohibition of importation. The relevant customs authority needs to be empowered to control cross-border movements.
The objective of the 1891 Madrid Agreement was the “repression of false or deceptive indications of source on goods”. According to Article II of this agreement: “All goods bearing a false or deceptive indication by which one of the countries to which the agreement applies, or a place situate therein, is directly or indirectly indicated as being the country or place of origin shall be seized on importation into any of the said countries.”
In the event that seizure is not possible under national law, the agreement provides that import prohibition should be applied. Therefore, this agreement seeks to make it obligatory for all goods, including wine, which bear a false or deceptive indication of source by which one of the contracting states, or a place situated therein, directly or indirectly is indicated as being the source or place of origin, to be seized on importation or for such importation to be prohibited or sanctions or other actions applied in connection with such importation.
The primary objective of the Madrid Agreement is to protect consumers from being misled. Therefore the agreement was designed to cover all false indications of source, irrespective of the intention of the user. When the Madrid Agreement was drafted, this was particularly important as it was only at the revision of 1958 that Article 10 of the Paris Convention made provision for the protection of indications of source without the need to show fraud. In view of this amendment there has been widespread doubt as to whether there is a continuing need for the Madrid Agreement.
Today, Articles 22 and 23 of the TRIPS Agreement expand the scope for the protection of GIs. A GI is defined in the TRIPS Agreement as an indication that identifies goods 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 goods is essentially attributable to its geographic origin. It provides for a minimum level of protection for all products and has a special provision for wines and spirits.
There is an obligation to refuse a mark which consists of a GI but it allows for homonyms (co-existence) of marks under certain circumstances and for negotiations and a multilateral system of notification in respect of GIs for wines.
New developments in Sri Lanka
A round table conference was held in Colombo in August 2013 and there was a subsequent meeting of policyholders with the secretary of the Ministry of Industry and Commerce. Also present were some members of the Commission, the deputy solicitor general, the deputy legal draftsman and members of state agencies such as the Sri Lanka Export Development Board and private sector institutions such as the Spice Council. At the meeting it was decided in principle that, with the approval of the advisory commission, consideration should be given to the inadequacies if any of Chapter XXXIII of the Intellectual Property Act No. 36 of 2003. It was also decided to draft the necessary legislation to give better protection to GIs in Sri Lanka and to help Sri Lankan exporters to register and protect the products of Sri Lanka in countries abroad.
GIs in Sri Lanka can be protected as certification marks or collective marks. Injunctive relief and other reliefs including the provisions of Chapter XXXV are available to protect them. Protection of GIs is necessary so that unauthorised people can be excluded from misusing GIs and thereby serves to protect consumers from deception, adds to the economic prosperity of the producer of such goods and also helps promote goods bearing Sri Lankan GIs in the export market.
The protection of GIs in the country of origin is necessary as otherwise there would be no obligation under the TRIPS Agreement for other countries to extend reciprocal protection. Although in Sri Lanka GIs are protected under Chapter XXXIII, exporters find it difficult to adequately protect products of Sri Lankan origin in foreign countries in the absence of a system of registration. This is because when marks are protected as certification marks or collective marks it becomes necessary for foreign countries to establish that the marks so registered as certification marks or collective marks in fact relate to GIs.
It is true that certain countries, such as the US, do not have a separate system to protect GIs, and GIs are simply protected inter alia by certification and collective marks. However, in jurisdictions such as India and Singapore, there are separate statutes apart from those relating to the registration and protection of trademarks to protect GIs. From the discussions that took place it appears that several difficulties faced by Sri Lankan exporters in respect of Sri Lankan products would be greatly lessened if there were a system of registration of GIs in Sri Lanka.
Accordingly, active consideration is being given to the formulation of interim relief to protect the GIs of Sri Lankan exporters more effectively and also to decide whether a new Geographical Indication Act should be enacted in the country.
J.M. Swaminathan is the precedent partner of Messrs. Julius & Creasy. He can be contacted at: jacey@sltnet.llc
