Thailand Law Journal 2012 Fall Issue 1 Volume 15

Imagine one agricultural product from a province in a developing country, say country A, enters into the global market and trade. The product has a certain character and such character is recognised worldwide. At the same time, the same kind of products produced in one of the developed countries, says country B, is distributed into the same market. With more advanced technology, the producers in country B discovered how to unnaturally produce such product to have the same certain character as the product produced in country B. The label on country B product says country A style. The label of the true origin of the product might confuse the consumer. However, with the widely reputation of country A in this product, the consumer might be misled that the product from country B is produced in country A or has some connection with country A. Then, the consumer may choose to buy the product from country B with wrong understanding. The product from country A will lose the market share and opportunities in the international context.

Furthermore, the situation might be that country B develops the product, which has source in country A to become better in quality. With high technology, the product from country B seems to be better than the product originate in country A. However, the product from country B is still labelled the reputation of the product from country A. The consumers, again, are likely to be confused or even misled that the product of country B is connected to country A. With the reputation from country A and the quality of the product from country B, the consumers would be willing to buy the products from country B rather than the product originated in country A. In such circumstance, the product from developing country, with lower technology, can in no way compete with the product from developed country like an example of country B.

The above discussions are some example of situations in the international market where the GI protection should take part in to ensure that the GI products will generate benefit to members of its origins. Several developing countries, such as Sri Lanka where the exportation of tea, including the legendary famous Ceylon tea, ranged the third biggest tea exporter, or Thailand where the main agricultural export product come from rice, absolutely requires the legal protection over the reputation and value of their products to ensure that they will reap sum benefits from such products originated from their regions and communities. Another classic example would be the coffee beans products from Colombia. The famous Colombia Coffee from the coffee growers in Colombia is one of the many cases where developing countries patiently seek the protection over their products. In the late 1950s, the price of Colombia Coffee was dramatically dropped due to the fact that the coffee roasters who blended the coffee from various origins under their Thus, there is a reason to believe that developing countries, much like countries exporting tea or rice, desire to receive legal protection over their goods in the international market. Given that the development of GI protection system is significantly important to these countries.

III. Protection of Geographical Indications under the WTO/TRIPS Regime

The TRIPS Agreement is arguably at the centre of global regime concerning the protection of geographical origin of goods, since it imposes a minimum standard for the protection of IP rights for most countries in the rest of the world.¹⁶ Section 3 of the TRIPS Agreement, entitled “Geographical Indications” provides a set of rules concerning the protection of GIs. This section discusses the requirement for the protection of GIs under the WTO/TRIPS regime.

A. The Article 22 Requirement
Article 22 of the TRIPS Agreement sets out the standard of the GIs protection against any use of designation or presentation of goods which mislead the public that such goods is originated in a geographic area indicated on the product, but in the fact, it is not.¹⁷ GIs qualified to the protection include the name of specific areas as well as the designation showing that the products come from a certain place, for example “Basmati” indicating rice from India.¹⁸ Also, indirect indication, such as the Eiffel Tower indicating the origin of goods from France also falls within the scope of this GI definition and is qualified for protection under TRIPS Article 22.¹⁹

Furthermore, TRIPS Article 22 confirms that the protection of GIs against the protection of trademark. The provision of this article obliges WTO Members to refuse the application of trademark registration or invalidate the trademark already existed which using the GI but originated in the area rather than GI indicated on the products. Nevertheless, the protection is limited to the case that such trademark misleads the public. While the article protects the use of GIs in trademark regime, article 24 of the TRIPS Agreement allows the use of GIs to the prior application for trademark registration or the use of GIs in the prior right of trademark, which the applicant or the right holder exercised their right in good faith.²⁰

B. GI Protection of Wine and Spirit
Article 23 provides the higher level of protection wine and spirit. Contrast to TRIPS Article 22, the protection is not limited to the requirement of public misled or unfair competition. Further, the protection of article 23 goes beyond to protect the use of GI on wine and spirit even where the true origin of the product is indicated including the use of GI in translation or accompanied by the term such as ‘kind’, ‘type’, ‘style’, ‘imitation’ or the like. However, the protection of article 23 is limited by article 24(4). It allows the use of GI for wine and spirit from producer in other member states to continue using such the GI that have already been used for at least 10 years proceeding 15 April 1994 or in good faith proceeding that date.

In addition, article 23, like article 22, provides the relationship between GI and trademark protection. The registration of trademark contained or consisted of a GI, but it does not have that GI origin would be refused or invalidated. However, the protection against trademark is limited by the scheme of good faith under article 24. In terms of homonymous GI, article 23 provides that the protection will be available under the condition that each GI will be discriminated and the interest of producers and consumers are balance. Finally, article 23 recognizes the further negotiations concerning the founding of multilateral system of notification and registration for wine and spirit.²¹ The negotiations under article 23 will be discussed in more details in later sections of this article.

C. Exception to the Protection of GIs
Article 24(6) sets out the exception of GI protection in the case where GI becomes a common language or common name for a product.²² In cases where the certain GI is used as a generic term in a member state, the protection of that GI will not be available in the country where the term becomes generic. In addition, for vine, the exception applied when the GI is the customary name of grape variety in the member state as of the date of entry into force of WTO Agreement.

Furthermore, Article 24 provides the exception for the use of person’s name in the course of trade where that person’s name is the same as GI and the use of his name is in good faith. The protection of GI in the international level has just established for a few decades. It still needs to developed to ensure that the GI will be effectively protect in the global market and such the protection will be flexible enough to well corporate with the quick-changing globalization.

IV. INTERNATIONAL CHALLENGES AND CURRENT ISSUES ON THE PROTECTION OF GI

The challenges in the international level is to develop the GI protection to be more effective, creates non-discrimination between GI products, and after all, leads to the improvement of international norms and law. Although the TRIPs agreement provides the international protection on GI products, there are some weakness in applying the provision to the global market scheme, including the diversity of the protection and concept in member states and the overlap to the other area of IP protection such as trademark. Further, the discrimination of the protection on wine and spirit and the other GI product is still the issue. Hence, the GI protection needs to be addressed.