IP-Watch recently carried a post titled ‘Is the Development Dimension of WIPO incompatible with its role of IP protection?’ dealing with the ongoing debates within WIPO. Though I don’t regard this post highly from an academic perspective, it does ignite some thoughts which I would like to pen down here.
As the post notes, “The World Intellectual Property Organization is a successful United Nations agency if success is measured by its generated income and the number of international registrations of intellectual property titles. However, in its role as a norm-setting United Nations agency, the organisation has been struggling for the past year as member countries have quite a different view on its core objectives.” While the previous years witnessed major developments like the Marrakesh Treaty and Beijing Treaty, politics is said to have stifled negotiations on treaties on industrial designs, protection of broadcasting organisations and protection of genetic resources, traditional knowledge and folklore. [For more on treaty negotiations, see the IP-Watch post.]
The IP-Watch post notes that “At the heart of many discussions in WIPO committees is the organisation’s role as a UN specialised agency and the mainstreaming in its activities of its Development Agenda. The WIPO Development Agenda, adopted in 2007, includes 45 recommendations, and was considered by developing countries as a promising step forward, and by the organisation itself as “an important milestone” (IPW, WIPO, 29 September 2007)”. The post notes the ongoing strong debate within the organization of whether or not WIPO is a development organization. It may be noted that the 45 adopted recommendations inter alia encompass technical assistance and capacity building, norm-setting, flexibilities, public policy and public domain, technology transfer, Information and Communication Technologies (ICT) and access to knowledge.
Considering the history of treaty-making and policy formulation in international arena, the developing world should maintain a close watch over the trajectory of the ongoing policy discourse in WIPO. Any oversight may have long term deleterious implications. I would like to assert my argument with an example; an example which demonstrates the lack of finesse in treaty negotiations and the (resultant) unfair provision. Further, this example will help one to appreciate India’s recent stand on Trade Facilitation Agreement (“TFA“). [For the uninitiated, WTO mandates reducing amber box subsidies to de-minimus level i.e 10% of agriculture production in 1986. The aforesaid clause doesn’t provide for inflation indexation. India was set to breach the level in near future considering inter alia the recently enacted Food Security Act. A temporary relief was given at the Bali Summit, 2013 in the form of a ‘Peace Clause’ which is valid till 2017. Accordingly, no member can drag any developing country to Dispute Settlement Body for violation of de-minimus limits in Agreement on Agriculture provided that the said developing country is 1) paying subsidies for staple food crops for public stock holding program and food security 2) providing annual information of its food security program to WTO. In reciprocity, TFA was agreed to be signed for reducing bureaucratic hassles in customs clearance. 31 July 2014 was set as the deadline for signing the agreement. However, the new government headed by Prime Minister Mr. Narendra Modi (rightly) refused to sign the TFA till the 10% agriculture subsidy issue was settled permanently. I hope that this post will help one to appreciate India’s stand from a better vantage point.]
GI in TRIPS
As you are aware, TRIPS Agreement provides ‘minimum’ standards of protection for geographical indications (“GI”) along with all other IPRs. TRIPS Agreement contains a single, identical definition for all GIs irrespective of product categories. But it mandates a two level system of protection for GIs – (i) the basic protection applicable to GIs associated with all products in general and (ii) the additional (‘absolute’) protection applicable only for GIs denominating wines and spirits.
The second clause of Article 22 provides that in respect of GIs, members shall 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 which misleads the public as to the geographical origin of the good. In stark contrast with Article 22, Article 23 of TRIPS stipulates an additional protection only for GIs designating wines and spirits which require member countries to prevent any abusive application of such GIs irrespective of whether the consumers are misled or whether it constitutes an act of unfair competition. As per Article 23.1 using a GI identifying wines/spirits for wines/spirits not originating in the place indicated by the GI concerned is prohibited even if the true origin of the wine/spirit concerned is indicated and/or a translation is used and/or the indication is accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like. Competitors not producing in the geographical region purported in a GI associated with wines or spirits are not allowed to use such an indication in their trademarks. In contrast, the refusal or invalidation of registration of a trademark for any other goods (than wines and spirits), on similar ground, is conditional on the ‘misleading test’. In other words, while TRIPS absolutely prohibits the prospect of “Pakisthan/India/Bangladesh Champagne”, it doesn’t offer the same kind of protection for “Darjeeling Tea”, “Pashmina” etc (i.e for products other than wines and spirits).
GI in India
GI is of considerable importance for a country like India which is richly endowed with natural and agricultural products and has already in its possession renowned geographical names such as ‘Darjeeling’ (tea), ‘Alphonso’ (mango), ‘Basmati’ (rice), etc. Though Article 23 of TRIPS affords a higher level of protection to GIs denominating wines and spirits only, the corresponding provisions in the Indian Act do not restrict themselves to wines and spirits alone. Rather it has been left to the discretion of the Central Government to decide upon goods or classes of goods which shall be granted a higher level of protection. As evident from above, the Geographical Indications of Goods (Registration and Protection) Act, 1999 (“GI Act“) intends to provide ‘absolute’ protection of Article 23 for GIs associated with products of India’s domestic/export interest.
As TRIPS Agreement merely stipulates the ‘minimum’ standards of protection, India is free to extend the ambit of the ‘absolute’ protection to cover products other than wines and spirits to the extent that it does not contravene TRIPS provisions. However, the absolute protection available for GIs of products other than wines and spirits which the Central government decides to extend under Section 22 (2) of GI Act may be available only within the Indian territory. There is no obligation upon any WTO member state to extend absolute protection to GIs of products other than wines and spirits. Of course, India has the option of entering into dialogues with various nations and persuading them to do so. But success in this regard depends on multiple factors.
A case study: Darjeeling Tea
Darjeeling tea has been cultivated, grown and produced in tea gardens in a well-known geographical area — the Darjeeling district in the Indian state of West Bengal — for over one and a half centuries. Its distinctive characteristics can be attributed to geographical origin and processing.
Tea Board of India v. Mitsui Norin KK, Japan
Tea Board of India opposed the application for ‘Divine Darjeeling’ filed by Mitsui Norin KK of Japan in Japanese Patent Office. The logo was advertised on 29 February, 2000. The opposition was mainly on three grounds, namely (i) ‘divine’ is a laudatory term and accordingly the mark for which protection is sought is merely ‘Darjeeling’, which is clearly non-distinctive; (ii) ‘Divine Darjeeling’ is misleading in so far as ‘coffee and cocoa produced in Darjeeling’ are concerned, as the district of Darjeeling does not produce coffee or cocoa; (iii) Darjeeling tea qualifies as a GI under international conventions including TRIPS and ought to be protected as such in Japan, a member of TRIPS.
The JPO Opposition Board dismissed the invalidation action filed by the Tea Board primarily on the ground that the mark ‘Divine Darjeeling’ as a whole was not misleading or descriptive of the quality of goods. However, the non-use cancellation action succeeded as the registered proprietor (respondent) was not able to place on record adequate evidence to prove the use of the mark in Japan.
As evident from this decision, the TRIPS Agreement did not come to the help of Tea Board. Instead the Board Succeeded as the respondent registered proprietor was not able to place on record adequate evidence to prove the use of the mark in Japan. This decision clearly demonstrates the weak protection extended by TRIPS to GIs of products other than wines and spirits.
As I have demonstrated, the TRIPS provision on GI is discriminatory and arbitrary. GI is an important tool for rural empowerment and inclusive development. It is not ‘merely’ a mark. It has greater social and economic dimensions. Unfortunately, I do not foresee any amendment to the TRIPS provision at least in my life time. I hope I am proved wrong. Candidly speaking, I ascribe this incongruous, bizarre provision to the inept handling of WTO negotiations by the developing world. We are to be blamed for placing ourselves in an unfavourable position.
History has taught us the need for being pro-active in any international policy discourse (including the present discourse concerning WIPO Development Agenda). One should tread this path very cautiously. As India is emerging as an important player in international arena, we should take the lead in these matters. The onus is upon us to prove our capacity and wherewithal to deal with complex and demanding situations. Let us not have any more regrets…I am signing off with an oft-quoted adage: “God helps those who help themselves.”