An analysis of the European Communities: Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs Dispute

The dispute Communities - Protection of trademarks and geographical indications for agricultural products and foodstuffs that opposes the European - Union to the United States and Australia, has been raised by the European regulation concerning the protection of geographical indications. This dispute has two important issues. First, the Panel demonstrated that the European regulation did not comply with national treatment promulgated by the TRIPS and the GATT 1994 Agreements. Second, the Panel affirmed the possibility of coexistence between GIs and identical prior trademarks. This article considers these two issues and depicts the position of the parties at the end of the dispute regarding GIs' protection. The first part of this article presents the conclusion of the Panel concerning national treatment and the coexistence between GIs and prior trademark. An analysis of the relations between national treatment and the international harmonization of the rules on the protection of geographical indications is presented in the second part. This analysis permits to establish that if the Panel findings do not annihilate the European system of protection of the geographical indications, the United States will find advantageous to free ride in geographical indications, refusing to move toward the European system of protection.

The issue of Geographical Indications (GIs) has been debated in India and globally at various forums like the World Trade Organization (WTO). World Intellectual Property Organization (WIPO) provides for the protection of GIs at an international level. 'Geographical Indication' refers to an indication of goods that have originated from a definite geographical territory, used for identifying an agricultural, natural or manufactured good. Examples of GIs in India are Basmati Rice, Kanchipuram Silk Sari, Tellicherry Pepper, Nilgiris Tea, Darjeeling Tea etc. In India, Protection and Registration of GIs relating to goods comes under The Geographic Indications of Goods (Registration and Protection) Act, 1999 and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) deals with GIs' protection at international levels. GIs have rapidly gained importance, and the WTO has initiated actions to legalize the registration of goods as GIs in the context of an increasing integrated international regime. Major objectives of this study are: i) To understand GIs in India through overview of GIs protection, registration and the challenges faced by GIs protected-agricultural, natural and manufactured- goods in the Indian context. ii) Effort has been made to identify the difference between GIs and Trademarks through this research. iii) An overview of few GIs registration of goods in India has been conducted to know how GIs have been protected and further scope for GI registration for more goods has been explored. iv) In the present study, efforts have also been made to find out the benefits and challenges of GI certification for various goods in the Indian context. The major challenges faced by goods applying for GI status are: Origin of the goods for identifying geographic territory; Registration of GIs; Monitoring and controlling specified processes, procedure and quality of GI protected goods; Protection of GIs from infringement; and enforcement of intellectual property rights.

The issue of Geographical Indications (GIs) has been debated in India and globally at various forums like the World Trade Organization (WTO). World Intellectual Property Organization (WIPO) provides for the protection of GIs at an international level. 'Geographical Indication' refers to an indication of goods that have originated from a definite geographical territory, used for identifying an agricultural, natural or manufactured good. Examples of GIs in India are Basmati Rice, Kanchipuram Silk Sari, Tellicherry Pepper, Nilgiris Tea, Darjeeling Tea etc. In India, Protection and Registration of GIs relating to goods comes under The Geographic Indications of Goods (Registration and Protection) Act, 1999 and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) deals with GIs' protection at international levels. GIs have rapidly gained importance, and the WTO has initiated actions to legalize the registration of goods as GIs in the context of an increasing integrated international regime. Major objectives of this study are: i) To understand GIs in India through overview of GIs protection, registration and the challenges faced by GIs protected-agricultural, natural and manufactured- goods in the Indian context. ii) Effort has been made to identify the difference between GIs and Trademarks through this research. iii) An overview of few GIs registration of goods in India has been conducted to know how GIs have been protected and further scope for GI registration for more goods has been explored. iv) In the present study, efforts have also been made to find out the benefits and challenges of GI certification for various goods in the Indian context. The major challenges faced by goods applying for GI status are: Origin of the goods for identifying geographic territory; Registration of GIs; Monitoring and controlling specified processes, procedure and quality of GI protected goods; Protection of GIs from infringement; and enforcement of intellectual property rights.

The protection of geographical indications (GIs) has, over the years, emerged as one of the most contentious intellectual property right issues in the realm of the World Trade Organization (WTO). The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, with its near-universal applicability and enforceability, did have the potential to ensure effective protection for all GIs. However, even with TRIPS in place, the current status of international protection for all GIs, except those designating wines and spirits, is far from adequate because TRIPS mandates a two-level system of protection for GIs: (i) a basic protection applicable to all GIs (under Article 22) and (ii) an additional protection for the GIs designating wines and spirits (under Article 23). India, along with other like-minded countries, has long since been fighting at the WTO for an extension of the ambit of Article 23 protection to cover all products. The present article deals with this controversial issue that has now reached a state of virtual stalemate.

The protection of trademarks, when it raises a conflict with the protection of geographical indications is one of the most contested issues on the international trade and intellectual property arena. In European Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs a WTO panel was faced with this issue. The panel report gives some insight into what international trademark law mandates as well as some pointers on how conflicts between different IP rights should be solved. This article attempts a deeper analysis of the coexistence of rights in the framework of the TRIPS Agreement that will inevitably grow in importance, when trade-related aspects start permeating all intellectual property issues in WTO fora. The article adopts a new approach to analyzing international trademark law. The Western concept of trademarks as property is contrasted to another concept of property that is derived from the use of property. While the property discussion in itself is not new to trademark law, nor is a discussion on the significance of trademark use in trademark law, here, the discussions are combined and refined in an attempt to provide an analytical framework for deciding international trademark cases. It is argued that the property right in a trademark should be assessed through how it is used, and any finding of infringement hinges upon whether the use of the trademark by its proprietor is unlawfully affected by a third party's use of an identical or similar sign. Informed by property theory and international law, the analytical framework is applied to the issues raised in the panel report. This leads to the conclusion that the panel report is flawed in certain respects.

The current divide within the international community over the appropriate level of protection for geographical indications (GIs) is epitomized by the conflict between the European Union (EU) and the United States (US) in the context of the Transatlantic Trade and Investment Partnership Agreement (TTIP). While GIs receive extensive protections that go beyond international treaty standards within the EU, the US (along with other New World countries) has repeatedly opposed strengthening the existing international GI protections. The US's resistance to strong protection of GIs has become a popularized account. The history of the US's interest in GI protection, however, is more complex. Since 1929, the US has been bound by a little-known international convention that ensures strong protection of GIs: the General Inter-American Convention for Trade Mark and Commercial Protection (Inter-American Convention). The Inter-American Convention is a regional agreement that was instituted by the US with several countries in the Americas. At the time in which the Convention went into force, the provisions on GIs in the Inter-American Convention were the most developed and strongest protections available in any international agreement. And remarkably, these provisions were developed by the US. This history of the protection of GIs in the US remains enigmatic. Few scholars and lawyers are aware of the Inter-American Convention, let alone its chapter on GI protection. Why was such a chapter included, and why were similar provisions not included in the 1946 Trademark Act or subsequent international agreements? The treatment of GIs both in this convention and in the US Trademark Act is largely the result of the work of Edward Rogers and Stephen Ladas, two of the leading practitioners of US trademark law in the twentieth century. These two men had as sophisticated an understanding of US common law and international obligations as anyone at that time. The resulting texts of the Inter-American Convention and the Trademark Act - both of which they were instrumental in drafting – were no accident. As the Inter-American Convention is still in force, it indicates the minimum standards for the protection of GIs in the US, at least with respect to beneficiaries of the Convention. It is also arguably a self-executing treaty in the US. Understanding this agreement therefore offers more than historical insight; it may offer an alternate approach to the protection of GIs. The Inter-American Convention also offers lessons for developing GI protection standards in other regions, such as Asia. One reason for the Convention's inconspicuousness is that it was primarily intended to be used by US business in Latin America; it was not designed for the equal benefit of all member states. In addition, it was negotiated without the benefit of any experience protecting GIs on the part of the Latin American trading partners. Perhaps, it is not surprising then that the largely theoretical origins of the protections have resulted in the absence of a robust practice of applying them. While the focus of this book is to consider GIs in Asia, this chapter will examine a particular historical moment in the legal protection of GIs that will expose a different view of the American approach to the protection of GIs. The reason to introduce this history is to offer policy makers in this region alternative approaches to GI protection beyond the current models advanced by the EU and the US. The short story is that the EU favors strengthening the current protections of GIs - it is said to be one of their greatest assets – while the US disfavors the development of additional protection for Gls beyond those offered by trademark law. The Inter-American Convention certainly complicates this story and provides a possible alternate approach.

The article analyzes the regulation of intellectual property rights in current trade negotiations, particularly the protection of Geographical Indications (GIs) in Free Trade Agreements, within the context of the fragmentation of international economic law. The recognition of foreign GIs through Free Trade Agreements presents a set of conflicts between the protected GIs and other rights. Although Free Trade Agreements provide solutions to these conflicts within their texts, this situation may generate conflicts between GI protections and rights protected under other rules of international economic law. As a result, to the extent that there exist available remedies and dispute settlement mechanisms to claim breaches of those other rights, negotiating States are exposed to the risk of litigation in multiple jurisdictions brought by parties whose economic interests may be affected by the protection of foreign GIs. The existence of conflicts between rules from different areas of international economic law and the potential for contradictory decisions on the lawfulness of a State measure regarding foreign GIs are outcomes that deepen the fragmentation of international law and question the overall coherence of this regime.

Geographical indications (GIs) are means of identifying the source and denoting the quality and reputation of regionally distinct goods. (Kevin. M. Murphy (2003), ‘Conflict, Confusion, and Bias Under TRIPs Articles 22-24’, American University International Law Review, Volume 19, Issue 5/2003.) They contribute to enhancing the goods’ value, thereby generating profits for entrepreneurs and countries. Vietnam, a country with many agricultural and regional products, has been actively integrating with the world, typically by becoming a member of the WTO (World Trade Organization (Member List at, https://www.wto.org/english/thewto_e/whatis_e/tif_ e/org6_e.htm (accessed 04 May 2023))) and participating in agreements such as the European Union-Vietnam The Free Trade Agreement (EVFTA) (European Union-Vietnam Free Trade Agreement), https://taxation-customs.ec.europa.eu/system/files/2022-11/ EVFTA-guidance_0.pdf (accessed 04 May 2023) and the TRIPs (Agreement on Trade-Related Aspects of Intellectual Property Rights, https://www.wto.org/english/docs_e/legal_e/27-trips.pdf (accessed 04 May 2023)). To align its legal framework with international standards, Vietnam has amended and supplemented to its Intellectual Property (IP) Law of 2005 in 2009, 2019, and 2022, introducing new regulations on GIs. These changes have had a significant impact on the protection of GIs in Vietnam. With this in mind, we analyse the current GI protection provisions in Vietnam’s IP laws and assess their compatibility with the requirements in international agreements. We will also explore the influence of the GI protection provisions on the actual registration and utilization of GIs in Vietnam. Based on our findings, we have prepared recommendations to improve Vietnam’s regulations on GI protection and enhance the practical effectiveness of those GI protection measures. Geographical Indications, TRIPs Agreement, EVFTA Agreement, Vietnam Intellectual Property Law, Geographical Indication Protection, Vietnam, Agricultural products, Homonymous Geographical Indications

Geographical indications (GIs) are remarkably different from other instruments of intellectual property rights (IPRs). Their acreage to the local provides an original scheme of governance. Contrary to other IPRs, GIs have only been homogenized in a very small way in the international legal framework. The issue is whether GIs are implemented as any other IPR, due to their collective and public dimensions. In particular, what is the role conferred to the state in the protection of GIs? The French legal framework, which largely influenced the European legal framework, is based on long traditions of protection of the appellations of origin and GIs where the role of the state has been declining, in order to give more responsibilities to the producer groups. The control task has been transferred from the state to the certification bodies to increase the guarantee of quality. The Indian experience, a post‐TRIPS Agreement (the Agreement on Trade‐Related Aspects of Intellectual Property Rights) example, shows a state and its agencies which are very active in the process of filing GI applications, including being themselves the applicant and eventually the proprietor. This might be justified by the lack of strong producer organization. These different roles of the state between France/Europe and India give a new understanding of the legal nature of GIs.

The adoption of the Agreement on Trade‐Related Aspects of Intellectual Property Rights (TRIPS Agreement) poses significant implications for a developing country such as Thailand, where agriculture is a large share of its domestic and export markets. A notable facet of TRIPS is its focus on the protection of geographical indications (GIs). This paper seeks to discuss the implementation of TRIPS in Thailand with respect to GI protection. It specifically considers the Protection of Geographical Indications Act B.E.2546 (AD2003) of Thailand, which is relevant to an examination of TRIPS implementation in developing countries. The overall objective of this paper is to analyse Thailand's position with reference to the protection of GIs, and the benefits, which may be accrued as a consequence of implementing the TRIPS Agreement.

It has been almost 16 years now when protection for geographical indications (GIs) established under the Trade Related Aspects of Intellectual Property Rights (TRIPs) Agreement of the World Trade Organization (WTO). Since 1995, 380 geographical indication applications have been filed in the GI Registry in India and out of which 169 have been registered as of March 19th, 2012. There is tremendous jump in the filings by foreign countries (134 applications) in the recent past. The goods registered under four classes are agricultural, handicraft, manufactured and food stuff which account for 24.26 per cent, 64.49 per cent, 8.28 per cent and 2.95 per cent respectively in the country. Indian contribution towards geographical indication will be analyzed to find out the overall glimpse of the success rate and workability of the regime adopted. The study reveals that Europe is leading in the area, followed by United States of America and India respectively. At the same time, India is the single country in leading the GI protection in the world today and one of the favourite destinations of foreign GI application filings.

Geographical indication is one of the intellectual property rights protected by several multilateral agreements. Among these agreements, Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement) has the most members and is most influential as well, but a multilateral system of notification and registration of geographical indications has not been established up to now. In order to give better protection to China’s geographical indications in overseas market, additional measures must be taken. Firstly, China’s geographical indications can be registered in target countries. Secondly, the Chinese government should sign bilateral agreements on geographical indications protection with other countries. Thirdly, China has been taking part in several negotiations on free trade area, and the protection of geographical indications should also be taken into consideration. Lastly, the Madrid system of international registration for trademarks is also a practical way.

The protection of geographical indications (GIs) has, over the years, emerged as one of the most contentious intellectual property right issues in the realm of the World Trade Organization (WTO) Agreement on Trade–Related Aspects of Intellectual Property Rights (TRIPs). The hierarchical nature of protection for GIs under TRIPs fails to provide full protection for GIs other than those designating wines and spirits. Aware of this inadequacy, India, along with other like–minded countries, has been pressing for the “extension” of the higher level of protection, currently granted only to GIs of wines and spirits, to all GIs. However, the issue has reached a stalemate at the WTO for quite some time now. Against this backdrop, this article provides a cogent account of a range of issues in the context of GI protection, with a particular focus on India.

The term ‘distinctiveness’ is used in trademark law to refer to the capacity of a trademark to distinguish the goods of one undertaking from those of other undertakings. The importance of this concept can be seen in Article 15 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), which provides that any sign having distinctiveness shall be capable of constituting a trademark. Gradually, ‘distinctiveness’ has come to be used to describe the distinguishing capacity of other distinctive signs, including geographical indications (GIs). This article explores the distinctiveness of GIs. It begins with a discussion of the meaning of GI distinctiveness in the different GI protection contexts to reveal its particularity compared to the traditional concept of trademark distinctiveness. The second part of the discussion shows, however, that the concept of GI distinctiveness is not given sufficient importance in the protection of GIs, and is confused with the distinctiveness of collective or certification marks. This article therefore calls for an approach that recognizes the importance and the particularity of the distinctiveness of GIs in the design of GI protection mechanisms.

THE COMMON COMMERCIAL POLICY Since a few years, the European Union (EU) has taken several initiatives to promote and protect innovation. According to the European Commission, innovation is the prerequisite for the competitiveness of the European industries and businesses and, furthermore, for growth and employment. Thus, innovation has been given a central place in the Lisbon strategy which influences national and European policies and actions. In this context, intellectual property rights (IPRs) enforcement has become a priority in fighting counterfeiting and piracy which have increased in a worrisome way. The achievement of the single market is the first legal basis to organize a uniform system of IPRs by creating titles that coexist with national ones. But, in the context of globalization, the EU does also deal with external trade policy as part of the external aspects of the Lisbon strategy. The interface between external trade and IPRs appeared in 1986 in the framework of the Uruguay Round. But, at that time, the European Community had no competence on this subject. The Amsterdam and Nice treaties tried to give it the competence in the commercial aspects of intellectual property. Such initiative resulted in a lack of visibility, as its competence was shared with the Member States. As the Lisbon treaty has clarified its competences, the European Union has now an exclusive competence in the commercial aspects of intellectual property and the Council can act by a qualified majority to conclude agreements on this subject. Without waiting the entry into force of the Lisbon treaty, the European Commission has decided that IPRs were one of the new growth sectors that the EU would include in the foundations of its common commercial policy. The EU maintains its commitment to multilateralism and is involved in the Doha Round which tries to improve the Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement in line with development priorities. In that context, the UE has a unique status of full member next to its member states and tries to get a better protection of geographical indications. But, as the negotiations face strong oppositions between the parties on the agricultural subject, the European Commission has decided, through free trade agreements (FTAs) to get stronger and stricter provisions on IPRs. By concluding FTAs, the EU seeks to obtain extended engagements than in the multilateral context. This is also a way for the UE to export its own standards of IPRs protection. Bilateralism is considered a complement to multilateralism and the European Commission wants to use the same tools as its “competitors”, such as the United States. On the basis of several criterias, it has identified countries which could become its trading partners through FTAs. The study of the recent agreements between the EU and the Cariforum group and with South Korea reveal deeper engagements from the EU’s trading partners to provide an IP protection similar to the one in the EU. Furthermore, since 2007, negotiations are engaged with ASEAN and India which have qualified as priorities for the conclusion of new generations of FTAs. The European Commission seems to be all the more determined to improve through bilateral cooperation the enforcement of IPRs as the “Europe 2020” strategy maintains the priority on innovation and the end of the Doha Round is not predictable in a middle term. But this position may not be conformed to the EU’s international objectives.