The TRIPS Agreement is flexible in terms of its definition, catering for the preferences of different countries that protect their GIs under the trademark registration system or sui generis system. Article 22.1 of the TRIPS Agreement defines GIs 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.’
The definition of GIs in the Trademarks Ordinance is covered under Section 2(xix). It states that ‘geographical indication’ in relation to goods originating in a particular
26 A type of sheep’s milk cheese originating from the caves of Roquefort, France; see Community of Roquefort v William Fehndrich Inc 303 F 2d 494, 133 USPQ 633 (2d Cir 1962).
27 Evans (n 21) 26.
69
country or in a region or locality of that country means a mark recognised in that country as a mark indicating that the goods: ‘(a) originated in that country, region or locality;
and (b) have a quality, reputation or other characteristic attributable in then geographical region’. It can be noted that in the last part of the definition of GIs under Pakistan’s law, where it refers to GIs which ‘have quality, reputation or other characteristics attributable in their Geographical Origin”, the word essentially is missing from the definition of GIs. This is in contrast to the TRIPS Agreement definition of GIs: ‘indications which identify a good as originating in a territory … where a given quality, reputation and other characteristics of the good is essentially attributable to its geographical region’.
This absence of the word essentially makes the connection of quality, reputation and other characteristics comparatively weaker. The words ‘essentially attributable’ are understood as establishing a causal connection between the quality of the product or other distinctive features and the origin of the goods.28 This causal connection is a link and, according to the EU Guide to PDOs and PGIs, this link ‘must provide an explanation of why a product is linked to one area, and not another, i.e. how far the final product is affected by the characteristics of the region in which it is produced’.29
Apart from this inadequacy, the registration of GIs under the trademark system does not primarily base itself on terroir logic30 ‘which is a crucial ingredient in the process of legitimation whereby IGOs are treated as a discrete category of protected signs’.31
28 See Gangjee (n 2) 233.
29 European Commission, ‘Protection of Geographical Indications of Origin, Designations of Origin and Certificates of Special Character for Agricultural Products and Foodstuffs: Guide to Community Regulations’ (Working Document of the Commission Services, 2nd edn, 2004)) 13.
30 Jean-Louis Rastoin, ‘The Concept of Terroir as the Basis of Corporate Strategy in Agribusiness: The European Social, Economic and Institutional Model’ in Louis Augustin-Jean, Hélène Ilbert and Neantro Saavedra-Rivano (eds), Geographical indications and international agricultural trade: the challenge for Asia (Palgrave Macmillan 2012) 126.
31 See Gangjee (n 2) 77.
70
According to Audier, ‘the link between agricultural products and foodstuffs, the goods and their originating place can be understood in different ways. The stronger the technical, historical, cultural and social link is, the more the producers will demand an efficient protection of the geographical name used to designate the product.’32 The underlying rationale of protection under a trademark system is different from a GI protection system. It is reasonable to say that ‘by and large, the trademark regime is indifferent to terroir factors’.33 The Italian Supreme Court aptly stated that the reputation of a product for GI protection rests upon the qualities derived from a geographical source. It also noted that:
[T]he reason for affording protection [for designation of origin] lies in the fact that the product draws a particular character from its place of origin. This character is objectively discernible through a complex of the natural and human elements making up its environment of production … [It] is aimed at reassuring the consumer of the place of origin, itself also an assurance of quality.34
The Indian GI Act35 has a more extensive definition of a GI. It states that:
[G]eographical indication, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.
32 Jacques Audier, ‘Protection of Geographical Indications in France’ (Lecture, Symposium on the Protection of Geographical Indications in the Worldwide Context, WIPO, Eger, Hungary, 24-25 October 1997) 2. See also D Gervais, ‘The Lisbon Agreement’s Misunderstood Potential’ (2009) 1 WIPO Journal 87.
33 See Gangjee (n 2) 208.
34 Pilsen Urquell v Industrie Poretti SpA [1998] ETMR 168, 172 (Corte Suprema di Cassazione 1996).
35 The Geographical Indications of Goods (Registration and Protection) Act, 1999, Section 2(1) (Indian GI Act).
71
This definition is closer to the TRIPS definition. It includes all the goods in the category of admissible GIs and the words ‘essentially attributable’, as discussed above, establishing a causal link as part of the definition. There is also flexibility and predictability in terms of a single definition compared to different definitions in the EU GI Regulation.
Under the repealed EU Regulation 510/2006, GIs could be registered in two ways, either as PGIs or as PDOs.36 Both PDO and PGI were different with regard to the scope of the linkage of production to the defined geographical region. The requirements for the registration of GIs as PDOs were stringent for registration compared to the requirements for registration of GIs as PGIs. In the case of PDOs, the product must originate in the place and its quality should also be exclusively due to the specific geographical environment along with its integral natural and human factors. On the other hand, there were relaxed criteria for registration of GIs as PGIs. In order to register as a PGI, the product has to be produced, processed or prepared in the geographical area. Further, the quality, reputation or other characteristics of the product ought to be generally ‘attributable’ rather than ‘essentially due’ to that area.37 In the EU QSR, the definition of PDO38 remains almost the same. However, the definition of PGI was amended to make it similar to the definition of GIs in the TRIPS Agreement. Article 5(2)39 of the current Regulation 1151/2012 makes the link between the product and the specific geographical origin stronger compared to the one in the former EU Regulation
36 See Article 2(1a) and 2(1b) of EU Regulation 510/2006 for definitions of PGI and PDO. GIs can also be protected in the EU as Community Trademarks under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community Trade Mark [2009] OJ L78/1.
37 Evans (n 21) 22.
38 See Article 5(1) of EU Regulation 1511/2012.
39 Article 5 (2) of EU Regulation states:
‘For the purpose of this Regulation, ‘geographical indication’ is a name which identifies a product: (a) originating in a specific place, region or country; (b) whose given quality, reputation or other
characteristic is essentially attributable to its geographical origin; and (c) at least one of the production steps of which take place in the defined geographical area’.
72
510/2006. This development is further discussed in detail in chapter 5 under the heading 5.5.
There is a single definition of GIs under the Indian GI Act. It states that:
[G]eographical indication, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.40
This definition is more comprehensive than the definition of PGI under the EU Regulations discussed above. Nevertheless, it is less stringent than the definition of PDO under the EU Regulations.41
Pakistan therefore has room to further improve its definition of GIs by adding the word
‘essentially’ and by inserting ‘quality, reputation or other characteristics of the good is essentially attributable to its geographical origin’ within its existing definition rather than saying ‘quality, reputation and other characteristics of the good is attributable to its geographical origin’. By introducing provisions similar to definitions of GIs under Indian law and the one given for PDO in the EU Regulations, Pakistan can strongly protect its GIs, such as Basmati rice, Hunza apricots and Sindhri mangoes. This will enhance the income of its farmers since GIs are much more than simply the identification of a product with a place and as a type of intellectual property which is attached to territory; GIs are a means for social and industrial groups to protect and
40 See Section 2 of the Indian GI Act 1999.
41 This is further discussed in Chapter 5 under heading 5.5.
73
distinguish their products. This is especially the case for small local producers and farmers who are able to use them to enhance their reputations and compete effectively with large corporations.42