Article 22:2 of the Agreement describes the main objective of the TRIPS Agreement by requiring the member countries to “provide the legal means for interested parties to prevent” the use of any means “in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner that misleads the public as to the geographical origin of the good,” as well as any use “which constitutes an act of unfair competition. ”
The same article provides the Member countries to refuse or invalidate a trademark which is applied on the basis of a geographical indication with respect to goods that do not have the same origin. This right to refuse is also available if the use of the indication in the trade mark for such goods in the Member country can be regarded of having such a nature that may misrepresent to the public the true place of origin. TRIPS and Protection for Wines and Spirits: The TRIPS Agreement provides specific regulations regarding the Geographical Indications (GI) for wines and spirits.
The rules prescribed under the agreement prohibit the use of words ‘like’ and ‘type’ so that the protected products are not copied by the competitive producers. Similarly under the rule there is a prescription for a registry for wines. The ‘grandfathering’ of an existing identical product of wine is also provided for in the regulations. William Hennessey (2005) observes that the “wines and spirits” are being placed in a special clause and hence should be provided a special treatment. They are different from other forms of intellectual property protected under the TRIPS Agreement.
Hence geographical indications for wines and spirits are to be provided for much higher “super-protection” from competition than the protection is being offered for other products. Article 23, entitled “Additional Protection for Geographical Indications for Wines and Spirits,” provides for the registration of a trademark for wines that covers a geographical indication identifying wines or for spirits that is relevant to a geographical indication identifying spirits shall have to be refused or invalidated automatically by the legislation if the domestic legislation contains provisions to the effect.
The invalidation or refusal may also be done at the request of an interested party, who complains of such wines or spirits not having the origin applied for. Unlike the wines and spirits the agricultural products, food and foodstuffs and handicrafts do not enjoy any high level protection and also there is no provision for a multilateral register. As such these products are prone to infringement as there are no stricter provisions for protection of these goods. However provisions have been made to prevent any unauthorized use of GIs against misrepresentations and deceptive descriptions.
Article 22. 2 while codifying the existing international protection against unfair trade practices provides for the prohibition of any use which represents an act of unfair competition as defined under Article 10bis of the Paris Convention. However the TRIPS Agreement extends the coverage of Article 10bis to a GI ‘which, although literally true as to a territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory’. Apart from the above provisions, as per Article 22.
4 the protection offered under Article 22. 1 to 22. 3 to different goods must be extended to all the GIs by the products that are deceptively similar to the original products though they falsely represent to the people that they originate from the territory indicated, but in reality they do not. It must be noted that such protection is not comparable to the high level protection being offered to wines and spirits. The registration and administration of a trademark resembling a GI thus depends on the misleading use thereof.
Under Article 22. 2 the registration for trademarks for goods not emanating from the location indicated must be reused or cancelled where such marks represent a deception or misinformation to the public. Under Article 23 of the agreement the wine and spirit industry is provided with a discreet sub-system of transnational protection. Under this regulation the following steps are prescribed: The establishment of a voluntary multilateral system of registration and notification of the GIs for wines and spirits eligible for protection.
Secondly a protection of the highest order against the use of the GIs for providing misleading information to the consumers is being offered to the producers. Under Article 23. 1 the member countries are provided with the power to extend legal assistance to the producers of wines and spirits to protect their products against unauthorized use of the GI for promoting the goods which are not originating in the location indicated in the GI.
The Agreement also provides for the refusal or cancellation of the trademarks covering the GIs on its own by the member nations or on the claim of an interested party. This prohibition which is based on Article 3 of the Lisbon Agreement includes indications which have reference to the original origin of such good and cases where the GI is used in translation, or where the GI is represented by expressions such as ‘kind’, ‘type’, ‘style’, ‘imitation’ and so on.
The high level exclusive protection offered to wines and spirits implies a dilution-style protection for trademarks. Therefore it becomes an infringement if a GI is put to use for promoting a similar product if such use would result in the lowering of the reputation of the original product or would amount to the misuse of the indication to represent an inferior product.