Thailand Law Journal 2012 Fall Issue 1 Volume 15

Protection of Geographical Indications under the World Trade Organization:

Addressing Higher Level of Protection in the Light of International Norms and Legal Regime

By Busababan Dilokwatana*

1. Introduction

To date, developing countries, such as Thailand, find great opportunities to boost their economy through the global market by exporting their local products worldwide. The positive character of these products in developing countries is that their exported products are mainly the agricultural or industrial-agricultural products, which have certain quality differentiated from other areas. The specific quality derived by the geography of origin is one of the significant market tools to help these developing countries promote their values of products and leads to larger market share.¹ Yet, these developing countries experience substantial difficulties when the ability to export these unique-quality products is limited by the lack of sufficient protection over their reputation and unique quality related to the geography of its origin.² Within the international market scheme, these developing countries have to compete with developed countries. With more advanced technology and more power to penetrate the global market, the products from developing world are facing obstacles. The challenges are how the products from developing countries which mostly are based on local agricultural merchandises, could be sufficiently protected.

Recent developments in the context of the World Trade Organization (WTO)³ has stepped into handle the issue. The protection of such products has been introduced into the WTO’s policy framework in the forms of intellectual property (IP) rights protection. Specifically, in 1994, a minimum standard for the protection of geographical indications (GIs) was established under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)⁴ as a means to promote agricultural trade.⁵ However, the current debate and issue in this area is that the protection of GIs under the TRIPS regime is not sufficient, and needs to be developed both in terms of substance and system.

This paper provides a careful examination of one particular area of IP right protection, namely the protection of geographical indications in the WTO regime. In views of concerns of developing countries regarding the sufficiency of legal protection for GI products, this paper argues that greater certainty must be provided to ensure the effective operation of the WTO trade laws, the validity of national legislation, and long-term promotion of developing countries’ participation in the global trading regime. Specifically, the significant challenge to effective international protection on GI, including the extension of higher level of protection to all products and the challenge to harmonise the protection of GIs in the international context is critically discussed. Further, the paper addresses the possibility to develop such form of legal protection in the light of international legal norms of the WTO/TRIPS framework both in terms of substance by making amendment provisions of the TRIPS Agreement, as well as to establish the multilateral registration system of GIs protection in the WTO regime. In adding the current issues in the WTO negotiations, including the issue on expanding the protection of GI products under the Article 23 of the TRIPS Agreement to other GI products rather than wine and spirit as well as the issue on the effort to improve the system of protection by introducing the form of multilateral registration scheme is taken into account. Emphasis is placed on the developing countries, such as Thailand, perspective.

This paper starts by describing an overview of the protection of GIs in order to provide a general background for a discussion to follow. The following section discusses the current provisions concerning the GIs protection in the WTO, and examines their effectiveness in protecting GIs products from developing countries. Based on this examination, this paper addresses the need for a new regulatory regime for the protection of GIs. The final section draws a conclusion of this paper.

II. Geographical Indications: What Is It and Why Must We Need to Protect It?

Geographical indications or GIs is referred to as ‘indications, which identify a good 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 good is essentially attributable to its geographical origin’.⁶ Historically, the term GI was first mentioned in the context of the Paris Convention for the Protection of Industrial Property (Paris Convention).⁷ Under the Paris Convention, geographical origins of goods was envisaged as an area of enterprise in which property rights could be secured, thus Article 1(2) declared that: ‘the protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition’.⁸ Furthermore, Article 10bis of the Paris Convention prohibits members to use the indication that mislead the public based on the unfair competition regime. In this area, the protection of GIs under the Paris Convention is in the form of patent rights.

There are other international documents that relate to the issue of GI protection. These documents include the Madrid Agreement for the Repression of False of Deceptive Indications of Source on Goods (Madrid Agreement),⁹ and the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, commonly known as the ‘Lisbon Agreement’.¹⁰ According the Madrid Agreement, the Agreement focuses on the indication of source on goods. Article 1(1) and (2) of the Madrid Agreement protects a false or deceptive indication by providing the seized on importation of the goods included the false or deception.¹¹ In addition, where the law of the imported country prohibits the seizure, the protection will be replaced by the prohibition of importation.¹² Meanwhile, the Lisbon Agreement recognises the protection of the ‘appellation of origin’.¹³ It specifically shows the relationship between the geography of the origin and the quality and characteristics exclusively derived by the geographic of the origin including natural and human factors. The protection under Article 3 prohibits any usurpation or imitation of the appellation of the origin, even though the true origin is stated or used the words such as “kind,” “type,” “make,” or “imitation”.¹⁴ Moreover, the Lisbon Agreement recognises the important of the protection already existed under other international instruments, national law or court decision under the unfair competition regime.¹⁵ More importantly, the Agreement provides the international registration system of GIs through one single regime, which is administered under the auspices of the World Intellectual Property Organization.

A question may be raised as to why the protection of GIs is important for developing countries. As mentioned earlier, the products of developing countries are substantially based on agricultural goods. The effective mechanism for the protection of these products in the international market is essential to ensure that their goods will have ability to compete with the products from other states and also have the capability to get the market share in the international scheme. We can see this by giving some simple examples.

Bachelor of Laws (LLB) (Hon) (Chulalongkorn University, Thailand), Master of Laws (LLM) and Master of Taxation (MTax) (Sydney Law School, Australia), and Barrister-at-Law, the Thai Bar Association.