Geographical Indication

Issues Pertaining to Geographical Indications in the Tobacco Plain Packaging Case before the WTO (Part II)

In Part I of this post, I had discussed the Panel’s findings on Article 22(b) of TRIPS in the Tobacco Plain Packaging case. In Part II, I will examine the second GI issue, on detriment to pre-existing rights in geographical indications.

Article 24.3: Pre-Existing Rights in GIs

Prior to the coming into force of TRIPS, different jurisdictions protected geographical indications in different ways. While in some jurisdictions GIs were protected under trademark law, others relied on common law doctrines to protect GIs. Article 24.3 is an attempt to preserve these numerous rights even after the coming into force of TRIPS, which requires specific statutory protection under Article 22(2).

Article 24.3 requires that the TRIPS Agreement not prejudice existing rights that interested parties may have over GIs. It reads:


    1. In implementing this Section, a Member shall not diminish the protection of geographical indications that existed in that Member immediately prior to the date of entry into force of the WTO Agreement.


The Panel considered two important interpretational aspects of this provision.

‘In implementing this Section’: To the inclusion or exclusion of trademark-related provisions under TRIPS?

The first interpretational aspect was the extent to which the phrase ‘In implementing this Section’ limited the obligation under Article 24.3 of the TRIPS Agreement. If broadly interpreted, it would allow the GI provisions to limit the implementation of trademark provisions under TRIPS to a certain extent. That is, if it includes trademark provisions, then the trademark and GI related obligations may only be implemented to the extent that they do not diminish previously existing rights in GIs. If it excludes trademark provisions, then this caveat only applies to GI related obligations and not trademark-related obligations.

The Panel noted that since trademark-related obligations were in Part II / Section 2 of TRIPS, and GI related obligations (including Article 24.3) were in Part II / Section 3, Article 24.3 does not allow for any exception to trademark-related obligations (Tobacco Plain Packaging Case, ¶7.2925). In doing so, it reaffirmed the interpretation given to this provision by previous Panels (Panel Reports, EC – Trademarks and Geographical Indications (US), ¶7.632; and EC – Trademarks and Geographical Indications (Australia), ¶7.632).

Thus, the Panel held that Article 24.3 only encompasses obligations created specifically related to GIs, to the exclusion of all other intellectual property rights mentioned under Part II of the TRIPS Agreement. Therefore, the provisions related to GIs do not allow for any deficit in the implementation of obligations under other parts of TRIPS.

Does ‘protection’ of GIs under Article 24.3 refer to the legal framework of protection for all GIs or the protection that was accorded to individual GIs?

The second interpretational aspect pertained to the meaning of the term ‘protection’ itself: whether it refers to the diminishing of protection that had been accorded to individual GIs or to the legal framework for the protection of any GI.

The complainant referred to Articles 14.4 and 27.3(b) of TRIPS, relating to trademark and patent obligations respectively. Since these provisions expressly mention the term ‘system’, it was argued that the absence of a reference to ‘system’ in Article 24.3 means that it refers to individual GIs. The Panel agreed with this conclusion, but found that this argument to be inadequate, since those provisions refer to qualitatively different normative frameworks with different underlying principles (Tobacco Plain Packaging Case, ¶7.2932).

The Panel additionally noted that the object and purpose of Article 24.3 is to ensure that pre-existing property rights in specific GIs do not get vitiated. Interpreting it to protect individual GIs would also harmoniously resolve any potential conflict that may arise between the normative frameworks of trademark law and GI law (Tobacco Plain Packaging Case, ¶7.2934-35).

In light of this interpretation, the Panel found that the complainants were unable to discharge their burden under Article 24.3. That is, they failed to establish how the TPP Measures diminished the rights that they had in their GIs prior to the coming into force of the TRIPS Agreement.

Therefore, the Panel found that the TPP Measures did not diminish any pre-existing rights in GIs.

Image from here.

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