GENERIC GEOGRAPHICAL INDICATIONS - AN ANTITHESIS!
Geographical Indications sometimes may prove to be a self destructive mechanism if not fiercely guarded by the community involved in the manufacture or cultivation of the product. Starting with this controversial statement, I would be touching upon a delicate issue of Generic Geographical Indications and try to analyze the legal provisions and some of the cases.
Geographical Indications that are no longer understood by the common people to indicate a specific origin of goods, but that cannot denote a specific kind or category or product, may cease to function as distinctive signs capable of benefiting from protection.
There have been and still are lot of controversies and debates over couple of questions surrounding the topic captioned above as -
When does an indication or a designation become a generic or common name for the goods? What are the factors that need to be considered in determining the same?
I have come across few sources and authorities to cite while looking for the answers which are outlined below:
According to R.W. Benson,
"When a product’s geographic name becomes accepted as signifying the type of product, rather than its geographic source, the name is considered generic and it becomes part of the public domain"
Taking into account a legal perspective, the question of generic status to GIs becomes even more complicated. Lets see what International Treaties tell us -
Article 4 of the Madrid Agreement says -
"The Courts of each country shall decide what appellations, on account of their generic character, do not fall within the provisions of this Agreement, regional appellations concerning the source of products of the vine being, however, excluded from the reservation specified by this Article."
Article 3 of the Lisbon Agreement says -
"Protection shall be ensured against any usurpation or imitation, even if the true origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as "kind", "type", "make", "imitation" or the like."
This Article particularly ensures prohibition on the unauthorized use of internationally registered Geographical Indication or appellation of origin in the signatory countries.
Article 6 of the Lisbon Agreement ensures if the appellation of origin has been granted in one country according to Article 5 of the Agreement then it cannot be deemed to have become generic in that country owing to the prior use by third party.
Article 24.6 of TRIPS Agreement says-
"Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to goods or services for which the relevant indication is identical with the term customary in common language as the common name for such goods or services in the territory of that Member. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in the territory of that Member as of the date of entry into force of the WTO Agreement."
It can be seen that Article 24.6 is providing for an exception to the obligation of extending GI protection if such GIs have been considered to be generic.
Thus, there is no International Agreement that deals with the factors that can be considered while determining whether a GI has become generic.
“to prevent the improper use of a name by third parties seeking to profit
from the reputation which it has acquired and, moreover, to prevent the
disappearance of that reputation as a result of popularization through general
use … a name becomes generic only if the direct link between, on the one hand,
the geographical origin of the product and, on the other hand, a specific
quality of that product, its reputation or another characteristic of the
product, attributable to that origin, has disappeared, and that
the name does no more than describe a style or type of product."
Some of the available literature suggests few factors that can be considered while determining genericness of a GI. In my personal opinion, I consider following two factors hold utmost significance:
1. Direct as well as Circumstantial Evidence of Consumer Understanding
2. Expert Opinion
Consumer understanding usually covers direct and indirect (or circumstantial) evidence of common use and understanding. Direct evidence usually takes the form of consumer polls or surveys, either of the general public or consumers of that product.
WIPO’s Model Law for Developing Countries states in s 5(c) that generic names would be excluded from protection, ‘a name being understood as generic from the time when it is generally considered as such by experts on the subject and by the general public.
Recently, In Luxco, Inc. v. Consejo Regulador del Tequila, A.C., Opposition No. 91190827 (January 27, 2017), the TTAB dismissed an opposition to registration of Tequila as a geographic certification mark for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.” The opposer, St. Louis-based Spirits Company Luxco, failed to prove its claims of genericness, lack of legitimate control, and fraud.
Geographical Indications that are no longer understood by the common people to indicate a specific origin of goods, but that cannot denote a specific kind or category or product, may cease to function as distinctive signs capable of benefiting from protection.
There have been and still are lot of controversies and debates over couple of questions surrounding the topic captioned above as -
When does an indication or a designation become a generic or common name for the goods? What are the factors that need to be considered in determining the same?
I have come across few sources and authorities to cite while looking for the answers which are outlined below:
According to R.W. Benson,
"When a product’s geographic name becomes accepted as signifying the type of product, rather than its geographic source, the name is considered generic and it becomes part of the public domain"
Taking into account a legal perspective, the question of generic status to GIs becomes even more complicated. Lets see what International Treaties tell us -
Article 4 of the Madrid Agreement says -
"The Courts of each country shall decide what appellations, on account of their generic character, do not fall within the provisions of this Agreement, regional appellations concerning the source of products of the vine being, however, excluded from the reservation specified by this Article."
Article 3 of the Lisbon Agreement says -
"Protection shall be ensured against any usurpation or imitation, even if the true origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as "kind", "type", "make", "imitation" or the like."
This Article particularly ensures prohibition on the unauthorized use of internationally registered Geographical Indication or appellation of origin in the signatory countries.
Article 6 of the Lisbon Agreement ensures if the appellation of origin has been granted in one country according to Article 5 of the Agreement then it cannot be deemed to have become generic in that country owing to the prior use by third party.
Article 24.6 of TRIPS Agreement says-
"Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to goods or services for which the relevant indication is identical with the term customary in common language as the common name for such goods or services in the territory of that Member. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in the territory of that Member as of the date of entry into force of the WTO Agreement."
It can be seen that Article 24.6 is providing for an exception to the obligation of extending GI protection if such GIs have been considered to be generic.
Thus, there is no International Agreement that deals with the factors that can be considered while determining whether a GI has become generic.
So what is the tipping point for generic status?
The CJEU [Court of Justice of the European Union] in Bavaria v Bayerischer Brauerbund (n 31)
(CJEU) at [106]–[107] reasoned
that since the purpose of GI protection is -
Some of the available literature suggests few factors that can be considered while determining genericness of a GI. In my personal opinion, I consider following two factors hold utmost significance:
1. Direct as well as Circumstantial Evidence of Consumer Understanding
2. Expert Opinion
Consumer understanding usually covers direct and indirect (or circumstantial) evidence of common use and understanding. Direct evidence usually takes the form of consumer polls or surveys, either of the general public or consumers of that product.
WIPO’s Model Law for Developing Countries states in s 5(c) that generic names would be excluded from protection, ‘a name being understood as generic from the time when it is generally considered as such by experts on the subject and by the general public.
Recently, In Luxco, Inc. v. Consejo Regulador del Tequila, A.C., Opposition No. 91190827 (January 27, 2017), the TTAB dismissed an opposition to registration of Tequila as a geographic certification mark for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.” The opposer, St. Louis-based Spirits Company Luxco, failed to prove its claims of genericness, lack of legitimate control, and fraud.
While determining genericness, Public perception was the Board’s primary
consideration. The Board opined that-
A certification mark that certifies regional
origin as well as the qualities and characteristics associated with that origin
should not be held to have become a generic term as applied to particular goods
unless it has lost significance as an indicator of origin for those goods. The
question, then, became whether these consumers perceived the term Tequila as an
indicator of geographic origin or as merely the name of a certain type of
alcoholic beverage, regardless of its geographic origin and the methods and
conditions for producing it.
The Board found that the evidence tended to show that Tequila
has significance as a designation
of geographic origin. Because
Luxco failed to meet its burden to prove genericness by a preponderance
of the evidence, the Board dismissed this count of the opposition.
India does not have any precedence pertaining to generic GIs. However, the issue was considered in the recent hearing before the Registrar that whether the term Alphonso Mango has become generic? The question was whether granting separate GIs for the geography specific Alphonso Mango with a defined territory will make the name Alphonso generic?
So essentially, whether Ratnagiri and Devgad Alphonso Mango to be given separate GI status in the context of claim of entire Konkan belt having same variety of Alphonso by Konkan Krishi Vidyapeeth?
The question has been answered and Ratnagiri Alphonso Mango and Devgad Alphonso Mango have been confirmed and set to get GI status soon. Coming back to the topic whether the term Alphonso becomes generic here?
The answer is no because Alphonso variety has been cultivated in many places and as such a common name already but the cultivars of Ratnagiri and Devgad are peculiar and granting them GI status will not make the term Alphonso generic.
LONG LIVE THE KING OF ALPHONSO AND MAY THE ORIGINAL CULTIVATORS PROSPER!!
--stay tuned--
~until next time~
Comments
Post a Comment