Intellectual Property and International Trade

Geographical Indications

What are geographical indications?

Geographical Indications (GIs) are defined in Article 22 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) as:

• indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.

Examples of names that are protected as geographical indications in some WTO Members include: "Barossa Valley", "Roquefort" and "Champagne". The definition of geographical indications is applied in different ways among WTO Members, reflecting the different way specific terms are viewed in different markets.

Further information on GIs can be found on the website of the World Intellectual Property Organization.

What does TRIPS say about the protection of geographical indications?

TRIPs prescribes two levels of protection for geographical indications:

• a general level of protection which requires Members to provide the legal means for interested parties to prevent the use of GIs which mislead the public as to the true geographic origin of the good, or which constitute an act of unfair competition (Article 22); and
• a higher level of protection for wines and spirits which requires Members to provide the legal means for interested parties to prevent the use of GIs to identify wines and spirits that do not originate in the place indicated, whether or not the indication is misleading or accompanied by expressions such as ‘kind’, ‘type’ or ‘imitation’ (Article 23).

TRIPs also provides for certain exceptions where Members are not required to provide this protection. These include where the product term is considered generic in the market of a particular Member (Article 24.6) or where prior trade mark rights exist in the same or a similar term (Article 24.5).

How are geographical indications protected in Australia?

The TRIPs Agreement does not specify the legal means by which Members must implement their TRIPs obligations to protect GIs. Instead, the manner in which these obligations are implemented is left for Members to decide in accordance with their social, economic and legal needs and traditions. Australia meets its TRIPs obligations to protect wine and spirit GIs through specific legislation, and other GIs through a range of unfair competition and consumer protection legislation, as well as the common law. Key legislation is:

• the Trade Practices Act 1974 which prevents misleading conduct, including representations concerning the place of origin of goods
• the Trade Marks Act 1995 which allows for the registration of a GI term, provided that certain criteria are met, and
• the Australian Wine and Brandy Corporation Act 1980 which sets up a specific register of protected names for wine.

For further details of the specific Australian laws protecting geographical indications, see Australia's response (PDF) to the TRIPS Council “Review under Article 24.2 of the Application of the Provisions of the Section of the TRIPS Agreement on Geographical Indications”.

The current international debate on geographical indications

In the current Doha round of negotiations in the WTO, a group of countries, led by the EC, is looking to strengthen exclusive rights over terms with geographical reference as a form of protecting their trade interests in some valuable products. The EC has three interrelated demands: i) to extend the enhanced level of protection afforded to wines and spirits in Article 23 of the TRIPs Agreement to all products; ii) to create a legally binding multilateral register for GIs; and iii) to ‘claw-back’ the use of 41 product terms for exclusive use by EC producers.

i) GI-Extension

A number of countries, led by the EC, are seeking to extend the enhanced level of protection afforded to wines and spirits in Article 23 of the TRIPs Agreement to all products, including agricultural products, processed foods, beverages and handicrafts.

ii) The multilateral register for wines and spirits

Article 23.4 of the TRIPs Agreement mandates negotiations for the establishment of a multilateral register for wines to “facilitate the protection of geographical indications”. Two main proposals have been put forward. The EC proposal (PDF) is for a legally binding international register which would apply to all products in line with its proposal for GI-extension, discussed above.

The second main proposal is the ‘Joint Proposal’ (PDF) which would create a voluntary register that WTO Members could consult when affording protection to wine and spirit GIs.

iii) Clawback

The EC has produced a list of 41 products, such as ‘feta’ and ‘parmesan’ which it wants to ‘claw back’ for the exclusive use of its own producers. There is no mandate for negotiations on ‘clawback’, but like GI-extension, consultations are continuing. Whereas under GI-extension the exceptions in TRIPs Article 24 would continue to apply, however, ‘clawback’ would remove them, and with them, the ability of WTO Members to use established trademarks and generic terms.

See a full list of the products the EC is seeking to ‘claw back’

Further information about the international debate on geographical indications can be found on the website of the World Trade Organization.

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