LAWS
Under the recently repealed EU Regulation 510/2006, GIs could be registered in two ways: as PGIs and as PDOs.37 There was an equal scope of protection for PDOs and PGIs under Regulation 510/2006. However they were different in terms of ‘character and extent of the linkage of production to the defined geographical area’.38 The requirements for the registration of GIs as PDOs were stringent as the ‘product must not only originate in the place but its quality also must be exclusively due to a particular geographical environment with its inherent natural as well as human factors’.39 However, if we examine the definition of PGIs under Regulation 510/2006, the guarantees of authenticity and quality could at times seem hollow.40 Under Article 2 of
37 Subsections 2(1)(a) and Article 2(1)(b) of Article 2 of Regulation 510/2006 define PGI and PDO respectively.
Article 2 - Designation of origin and geographical indication
‘1. For the purpose of this Regulation:
(a) “designation of origin” means the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff:
- originating in that region, specific place or country,
- the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and
- the production, processing and preparation of which take place in the defined geographical area;
(b) “geographical indication” means the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff:
- originating in that region, specific place or country, and
- which possesses a specific quality, reputation or other characteristics attributable to that geographical origin, and
- the production and/or processing and/or preparation of which take place in the defined geographical area.
GIs can also be protected in EU under Regulation 207/2009 as the Community Trademark.’
38 Gail Evans, ‘Protection of Geographical Indications in the European Union and the United States under Sui Generis and Trade Mark Systems: Signs of Harmonisation?’ [2013] 1 IPQ 19.
39 ibid 21.
40 See Dev Gangjee, Relocating the Law of Geographical Indications (Cambridge University Press 2012) 211.
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this Regulation, the registration of PGIs required ‘the production and/or processing and/or preparation … to … take place in the defined geographical area’. Therefore, for PGIs raw material could be sourced from outside the designated geographical boundaries of the GI.41 Moreover, Article 2 required the quality, reputation or other characteristics to be generally ‘attributable’ rather than ‘essentially due’ to that area.
This made the link of the product with the origin very flexible and few producer groups had the capacity to collectively mobilise production and were unable to benefit from the marketing exclusivity offered by the GI system.42 These relaxed criteria might compromise quality and that was why the European Commission Green Paper on Agricultural Product Quality contemplated the question of making the criteria for PGIs more stringent in order to emphasise the link between the geographical area and the product.43
The current Regulation 1151/2012 therefore amended the definition of PGI to adapt it precisely according to the definition of GIs in the TRIPS Agreement. Article 5(2) defines ‘geographical indication’ as 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
41 See ibid 211.
42 See Evans (n 38) ‘At its most attenuated point the definition of a PGI simply requires a link between the product and reputation of the place’.
43 European Commission, ‘Green Paper on Agricultural Product Quality’ COM (2008) 641 Final Brussels, 15 October 2008, 13-14
<http://ec.europa.eu/agriculture/quality/policy/consultation/greenpaper_en.pdf> accessed 5 September 2014. See also Gangjee (n 40) 211; European Commission, ‘Agricultural Product Quality Policy Impact Assessment: Part B, Geographical Indications’ 122
<http://ec.europa.eu/agriculture/quality/policy/com2009_234/ia_annex_b_en.pdf> accessed 22 August 2014; Evans (n 38) 22.
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(c) at least one of the production steps should take place in the defined geographical area.
This amended definition of a PGI resolves the deficiencies of the previous definition of PGI under Regulation 510/2006. It enhances the requirement for a link between the product and the designated geographical origin. However, the link of the reputation of the product alone will be sufficient in this case. Although a link of characteristics is not a must in this definition of PGI, it is still closer to the terroir concept of GIs than the definition under the previous Regulation.
The definition of PDO under 1511/2012 is almost the same.44 The definition in Regulation 510/2006 referred to ‘the production, processing and preparation of which take place in the defined geographical area’. In contrast, Regulation 1151/2012 only refers to ‘the production steps’, and this change is yet to be tested in case law. According to Evans:
It is an open question whether this attempt to simplify the wording may have unintended consequences with respect to the drafting of the product specification, and the scope of protection accorded to the PDO. Will producer groups, particularly those lacking recourse to the legal expertise necessary to drafting the product specification, understand that production may go so far as to encompass slicing and packaging? It is possible that the lack of specificity in the primary text could defeat the aim of the GI in assisting small holders to maximize returns for specialty products.45
The Indian GI Act46 has a more extensive definition of GIs. Section 2 gives it as follows:
44 Article 5(1) of Regulation 1511/2012 defines ‘designation of origin’ as a name which identifies a product: (a) originating in a specific place, region or, in exceptional cases, a country; (b) whose quality or characteristics are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors; and (c) the production steps of which all take place in the defined geographical area.
45 See Evans (n 6, 7).
46 Section 2(1) of Indian GI Act where the full name is given - The Geographical Indications of Goods (Registration and Protection) Act, 1999.
153 [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.47
This definition is comprehensive and similar to the definition in the TRIPS Agreement.
It includes all the goods in the category of admissible GIs. Further, as already discussed in the last chapter, the words ‘essentially attributable’ are understood to establish a causal connection between the quality of the product or other distinctive features and the origin of the goods.48 There is also flexibility and predictability in terms of a single definition as compared to different definitions in Regulation 510/2006. Moreover, there is also an explanation with the definition of GIs in the Indian Act. It states that:
[F]or the purposes of this clause, any name which is not the name of a country, region or locality of that country shall also be considered as the GI if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be.49
This explanation is given to cover GIs such as Basmati which is not the name of a region but rather relates to a specific area both in India and Pakistan.
Looking at the definitions of GIs in Regulation 510/2006 and the Indian GI Law, it may be beneficial for Pakistan to adopt two definitions. The definition of ‘geographical indications’ as given in the Indian sui generis law may be emulated by Pakistan. India’s definition is very comprehensive; however, it is flexible like the definition of PGI under
47 See Section 2 of Indian GI Act 1999.
48 See Gangjee (n 40).
49 Gangjee (n 40).
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the current EU Regulation 1151/2012. Further, for those products which have characteristics or quality essentially due to the designated geographical origin and have more than one production process carried out in the concerned territory, Pakistan may emulate the definition of PDO under the EU’s repealed Regulation 510/2006. As discussed in chapter 2, Pakistan’s present definition50 of GIs under the Trademarks Ordinance 2001 does not require there to be a ‘causal link’ between the product and its geographical origin since the words used as a link are not ‘essentially attributable’
rather only ‘attributable’. The Indian GI Law definition and the PDO definition under Regulation 510/2006 caters for the need for a ‘causal link’.
The EU protects its GIs through different regulations. For example, agriculture and foodstuffs are protected through the EU GI Regulation and wines are protected through EU Council Regulation 1493/1999.51 On the other hand, Indian sui generis law regulates all goods. Since Pakistan has yet to enact its GI law, it would be advisable to adopt the definitions of GIs and PDOs which apply to all goods eligible to become GIs.
It will be administratively and financially more viable to have one law for the protection of GIs for all goods in Pakistan.52
50 The definition of GIs in the Trademarks Ordinance is covered in Section 2(xix) which states that ‘“geographical indication” in relation to goods originating in a particular 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 the geographical region’. Here the last part of the definition of GIs under Pakistan’s law states that GIs ‘have quality, reputation or other characteristics attributable in their Geographical Origin’ whereas the word ‘essentially’ is missing which is in the TRIPS definition. It states that:
‘quality, reputation and other characteristics of the good is essentially attributable to its geographical origin’.
51 EU Council Regulation 1493/1999 of 17 May 1999 on the common organization of the market in wine [1999] OJ L179/1 and later amendments.
52 Interview with Registrar of Trademarks (September 2013, Pakistan).
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