With a splurge in the demand for 'organic' or 'authentic' products, Geographical Indications (GI) tag comes as an assurance to the consumers. GI protection belongs to a community rather than a person and protects the brand value of traditional regional products.1 Article 22 of the TRIPS Agreement, 1995 deals with the protection of GIs and prevents its misuse.2 The Article protects those goods that have a quality, reputation, etc. essentially attributable to their geographical origin and therefore, the protection is limited to deception regarding the geographical origin of the good. India, pursuant to ratifying the TRIPS Agreement, enacted a sui generis GI Protection Act in 1999.3
Both the Agreement and the Indian law limit the protection to the authenticity of the protected product and do not extend it to a foodstuff where such protected product is used as an ingredient. To exemplify, if ice cream is titled XYZ (Made with Alphonso Mangoes), the protection would be limited to the Alphonso Mangoes and whether they adhered to the product specifications and not to the ice cream. Therefore, even if the ice cream has 1% of the Alphonso mangoes and the rest is artificial flavors, it would be allowed to use the name of GI as long as the Alphonso mangoes used in the ice cream are true to their origin and specifications.
The multifarious purpose of GI protection includes protection of the reputation of indigenous products and prevents the consumers from being misled as to the distinctive quality of the protected product.4 For the consumers, when the term Alphonso Mangoes is seen on the label, they are redirected to the distinctive taste or quality of those mangoes. This reputation, although subjective5, is protected by GI protection through the various regimes of curbing unlawful and dishonest business practices of competitors. But when a producer is allowed to use the name of Alphonso, even with merely 1% of it in the ice cream, the core purpose of GI protection is diluted as the provision leaves leeway for such unfair practices. The solution to this cannot be to extend the protection to every foodstuff where the protected product is used as an ingredient, as it would unnecessarily widen the scope of protection, therefore, a reasonable solution has to be derived.
This problem was confronted by the EU Court in the Champagner Sorbet case, were Aldi, a company sold a product titled 'Champagner Sorbet' with 12% of Champagne, which is a Protected Designation of Origin. While the company specified the correct quantity in the label and adhered to the product specifications of the Champagne, the CJEU came up with an 'essential characteristics test'.6 It held that to prevent the taking of unfair advantage of the reputation of a protected product when it is used as an ingredient in a foodstuff, it must confer an 'essential characteristic' on the foodstuff. Only if the foodstuff has an essential characteristic attributed to the protected product, it would be allowed to use its name and in its absence, it would be termed as taking unfair advantage of the reputation.
The essential characteristic of the foodstuff, XYZ ice-cream in our example, would be construed by the judge taking into account the qualitative and quantitative attributes of the protected product i.e. Alphonso mangoes, on the ice cream. As 1% of mangoes are not likely to confer 'essential characteristics' to the ice cream, the manufacturer's use would be termed as unfair without unnecessarily broadening the scope of protection.
The test is not devoid of downfalls as it gives judges an unbridled discretion in construing whether the protected product confers an essential characteristic or not. As judges are not usually culinary experts, they might be unable to gauge whether such characteristic is conferred or not because sometimes, the effect of adding a product is not visible but it adds a textural or an aromatic experience which is vital to the foodstuff, yet not comprehensible to a layman.7 Therefore, the construction of such a judgment must be made with the recommendation of a culinary expert which is an expensive and time-consuming process.
Yet some uses can be determined prima facie as unfair even if not covered in the scope of literal provision for the protection of GI. It is for this reason, such a test was devolved and while weighing the pros and cons of the test and the scope of misuse without any such test, it would be safe to assume that unless a better alternative is devolved, the 'essential characteristics' test is a safe route to peddle with. As India lacks any such protection, it should not wait till such a case of misuse arises and take a pro-active approach to extend the protection to the foodstuff where the protected GI is used as an ingredient and it confers an essential characteristic on the foodstuff.
Footnotes
1. Dev Gangjee, Sui Generis or Independent GI Protection, The Cambridge Handbook of International and Comparative Trademark Law (Cambridge University Press, 2020) 256.
2. Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994), Art. 22.1
3. The Geographical Indications of Goods (Registration and Protection) Act, 1999.
4. DwijenRagnekar, The Socio-Economics of Geographical Indications, UNCTAD-ICTSD Project on IPRs and Sustainable Development, Issue Paper No.8, 2004.
5. DS Gangjee, From Geography to History: Geographical Indications and the Reputational Link, Geographical Indications at the Crossroads of Trade, Development, and Culture in the Asia-Pacific (CUP, 2017).
6. Case C-393/16, ComitéInterprofessionnel du Vin de Champagne v Aldi SüdDienstleistungs-GmbH &Co.OHG, [Second Chamber, 20 Dec 2017], Opinion of AG Campos Sanchez, ¶51.
7. Take the case of asafoetida in a curry or brandy in a cake.
Essential Characteristics Test: A Necessity In The GI Protection Regime
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