India: Homonymous Geographical Indications In India

INTRODUCTION

The term homonym is defined in Merriam Webster's Collegiate Dictionary (tenth edition) as "one of two or more words spelled and pronounced alike but different in meaning." This definition describes accurately the problems created by the use of homonymous geographical indications, namely two or more identical geographical indications used to designate the geographical origin of products stemming from different countries.

Homonymous geographical indications are those indications that sound, spell or read alike. They are those geographical indications that are spelled and pronounced alike but which are different in meaning and which are used to designate the geographical origin of products stemming from different countries. The most frequent cases of homonymous geographical indications concern the names of regions which are located in different countries.

The problem or conflict generally arises when homonymous geographical indications are sold in the same market and is accentuated when such the geographical indications are for similar or identical products. Honest use of such geographical indications should be possible, because the indications designate the true geographical origin of the products for which they are indicated.

In principle, these indications should coexist, but such coexistence may be subject to certain conditions. For example, it may be required that they be used together only with additional information regarding the origin of the product in order to prevent consumers from being misled. A GI may be refused protection if, due to the existence of another homonymous indication, its use would be considered potentially misleading to consumers with regard to the product's true origin.

LEGAL SCENARIO UNDER THETRIPS AGGREEMENT

Article 23 of the TRIPS Agreement requires Members to make available additional protection, when compared to Article 22, for geographical indications for wines and spirits. The main difference between these two levels of protection is that, under Article 23, an interested party must have the legal means to prevent the use of a geographical indication for a wine which does not come from the geographical area indicated irrespective of whether or not such use misleads the public or constitutes unfair competition. The same goes for spirits. Thus, Article 23 is often referred to as an "absolute" form of protection since no such tests have to be satisfied in order to exercise it.

Article 23.3 of the TRIPS Agreement sets out a specific rule for homonymous geographical indications for wines by establishing that:

"In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled."

Indeed, Article 23.3 of the TRIPS Agreement specifically covers the cases of homonymous geographical indications for wines, whose use does not falsely represent to the public that the goods originate in another territory as provided in Article 22.4 of the TRIPS Agreement. In such cases, both indications must be protected and concerned WTO Members must determine the conditions necessary to differentiate homonymous indications for wines. In doing so, they must ensure that consumers are not misled and that the producers concerned are treated equitably.

The practical effect of this provision is that it prompts WTO Members to keep their markets open in cases of homonymous geographical indications and mandates that adequate solutions are found for the coexistence of products bearing such homonymous geographical indications.

Yet, this trade fostering solution is currently limited to wines, where it is clear that the same solution could benefit other products including spirits and certainly to all other products benefiting from geographical indication protection.

LEGAL SCENARIO IN INDIA

The GI Act, which came into force, along with the GI Rules, with effect from September 15, 2003, has been instrumental in the extension of GI status to many goods so far.

In India, there are two conditions that should be taken into consideration before according protection to homonymousgeographical indications. The authority granting such protection to one geographical indication as against the other, where both of them are called as homonymous geographical indications as regard to each other, should grant protection only when it is satisfied of the following conditions:

  1. The probability of being practically able to differentiate between the products with respect to such geographical indications in terms of the nature, quality, appearance, utility and overall look and feel of the product so that every possibility of consumer confusion is avoided.
  2. Where such authority can ensure equitable treatment to producers/manufacturers of the two concerned products and protect the rights of such producers and manufacturers in the same manner through existing protection mechanism.1

CONCLUSION

Conflicts regarding homonymous geographical indications typically arise where products on which homonymous geographical indications are used, are sold in the same market. The problem is accentuated where the homonymous geographical indications in question are used on identical products. The geographical indications designate the true geographical origin of the products on which they are used. However, concurrent use of homonymous geographical indications in the same territory may be problematic where the products on which a geographical indication is used have specific qualities and characteristics which are absent from the products on which the homonym of that geographical indication is used. In this case, the use of the homonymous geographical indication would be misleading, since expectations concerning the quality of the products on which the homonymous geographical indication is used are not met.

Therefore certain measures must be taken to ensure that homonymous geographical indications can co-exist harmoniously.

Footnotes

1 http://commerce.nic.in/trade/international_trade_papers_nextDetail.asp?id=131

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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