Legal Protection of Geographical Indication in Nepal: An assessment of legal consciousness
In a simplest term, Geographical Indication ( popularly known as “GI”) is a sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin. It includes signs (most usually proper names) which identify a good as originating in the territory of a particular country, or a region or locality in that country, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. It gives value to the product, to the area. “Champagne” is used to identify a specific sparkling wine that originates from the Champagne region of France. Similarly, Darjeeling Tea, Palpali Dhaka qualifies as Geographical Indication for representing a specific geographic origin. For any product to qualify to GI protection, it must fulfill the following three requirements:
- It must relate to a good/article,
- These goods must originate from a defined area,
- The goods must have qualities, reputations or other characteristics which are clearly linked to the geographical origin of such goods.
Why is Geographical Indication and its protection so important ?
Protection of GI is important not just at the individual/ producer level but also at the national and international level for export promotion, thereby aiding the individual and state economy. Since GI refers to the products resonating with the identity of a certain geographical location, the protection is crucial in order to:
- prohibit unauthorized persons from misusing GI,
- protect the consumers from deception,
- contribute to the economic prosperity of the producers of such goods, and
- promote goods bearing GI in the global markets.
In addition to functioning as an indicator of the origin of goods, Geographical Indication also develops a mental connection between what the consumer sees and understands about the origin and quality of the product. It creates an expectation in consumers about source, quality and reputation that are impliedly affixed in the product and that expectation is met only when such GI are protected because, at the end, it is about the relation between the product, the consumer and the market. From a business point of view, GI is about value creation and value addition to the product holding distinctive quality. Protection of GI is implied protection of traditional knowledge, heritage that interacted with human skill and economy granting it a market reach.
How are GI protected? What are the existing routes?
Intellectual Property having constitutional protection as property right is to be protected from the state organs as well i.e. through legislation, judicial interpretations and formulations of policies. However, in absence of explicit legislation ensuring GI protection, protection of GI has a way through following means:
- Sui Generis system
In the events where neither national nor international instruments are able to protect the traditional knowledge, Geographical Indication or other forms of IP, new unique methods of protection can be applied called the Sui generis method. This method of protection enables the concerned communities to apply a new method of protection as required in consistent with national and international standards to protect their indigenous knowledge which has also been validated by various national and international instruments.
- Collective/certification Marks
In some jurisdictions, GI is protected through a trademark system, specifically through collective or certification marks. A collective mark is a type of mark that can be used only by members of the association which owns the collective mark and is reserved to the members of the group or association. Whereas, certification mark is given for compliance with certain standards. It is a mark indicating that the goods or services in connection with which it is used are certified in respect of the origin, mode of manufacture of goods or performance of services, quality, etc. thus distinguishing those goods or services from not-certified ones.
In addition, GI can also be protected through other specific routes, for instance, competition law, advertising regulations, consumer protection law and laws focusing on business practices. Article 22 of the Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS) provides grounds for the prevention of misleading indication and any other act that gives rise to unfair competition. This is a defensive mechanism to protect GI under which national and international laws allow to file a suit if any misleading indication creates unfair competition in the market and creates adverse effects in consumer’s rights. Protection of GI through these routes is said to have been a traditional method of protection in South Asia.
In the Picture – Women working in the Tea Garden of Illam.
National Legal framework on Protection of GI
Nepal, though being blessed with the geography having potentials for economic development and identity of the state, has still stayed back in coming up with effective legislation to protect GI. No specific enactment dealing with GI has yet been introduced in Nepal. However, the legislature has introduced National Intellectual property Policy, 2073 (hereinafter referred to as the “Policy”) with certain goals to be achieved to bring about progressive change in the IP system in Nepal. Although the policy doesn’t have a binding effect, it has paved a way to further introduce unified laws on GI.
According to the Policy, GI shall be adopted as a means of national development with finest use of existing traditional knowledge and geographical variations. The Policy targets to prepare legal measures for protection of Geographical Indication. Acknowledging that neither the community nor the state has been able to explore and exploit resources having potential of legal protection despite abundant availability, the Policy aims to use them for national development. Accepting and acknowledging the fact that geographical area is the evidence of natural and human reproductive origins, it provides that there shall be arrangement to ensure non-transferability of the authority and rights created out of GI. The rationale behind the non-transferability is that since the rights in GI are acquired in group and not in person and it arises because of the peculiar quality of such a geographical location, therefore it shall not be transferred.
Additionally, the Policy has restricted protection of sign protected under Trademark to be protected under Geographical Indication and vice versa. Also, signs protected under Certification Marks cannot be protected under Geographical Indication.
Although the Policy has set a blueprint regarding the protection of GI in Nepal, a policy alone cannot be expected to address all the matters for effective protection. And thus, enactment of a legislation addressing all the concerned matters is a must in order to maintain the GI protection with proper assessment of opportunities and risks associated with GI.
International Protection of GI
The 1883 Paris Convention on Intellectual Property provides that “The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellation of origin, and the repression of unfair competition”. It also provides that no indication of source may be used if it refers to a geographical area from which the products in question do not originate. It makes arrangements for the protection of GI against misleading indications of source, including appellations of origin, wherein it obliges member states to provide protection against unfair competition and contains a non-exhaustive list of acts, which are to be prohibited.
TRIPS, that gave universal recognition to GI, obliges member states to provide legal protection to GI in order to prevent unfair competition and designation or presentation of goods that misleads the public as to the geographical origin of that product. By the virtue of being a party to the TRIPS, Nepal has the responsibility to enact a separate and unified legislation for GI protection in Nepal.
In the Picture – Logo of Scotch Whiskey Association which produces some world known and classic Scotch and also takes proudly as its GI.
How have states been protecting GI around the world?
The World Intellectual Property Organization (WIPO) database reveals that approximately, 42, 527 GIs are registered around the world of which Germany leads the ratio having 9,499 GI in force. Subject matter of protection of GI is completely territorial, i.e every country is sovereign to develop a legal framework, protection system and routes for the protection of GI of their nation.
Nepal: Department of Industry is the authorized body to register GI in Nepal. A desirous person or authority has to file an application to the department to get it registered. Ironically, there has been no update on registration of any GI in the department despite having numerous potential GI in Nepal.
Germany: Germany is listed as the country getting the highest number of GI protected. The country has a practice of dual examination. The application for registration of a geographical indication/designation of origin must be filed at the DPMA. The examination is conducted in two stages, first by the German Patent and Trademark Office (DPMA) and then by the European Commission, which also carries out registration. The enactment governing GI in Germany explicitly provides that the products registered under GI can’t be registered as trademark.
India: The Office of the Controller General of Patents, Designs, Trademarks, and Geographical Indications is the authority that registers and protects GI in India. The association of persons or producers or any organization or authority can file an application to get it registered. The authority publishes registered GI state-wise making it accessible to Public. Registered GI in India can be accessed Here. India has registered more than 370 GIs till the date.
Canada: Canada had registered a significant number of GI till the date. The Trademark Act of Canada governs registration and further procedures relating to GI. An application and supporting document shall be submitted to Canadian Intellectual Property Office (CIPO) for registration and the office registers and publishes the GI if the product qualifies for such. the database can be
Singapore: The desirous authority has to file an application to the Intellectual Property Office of Singapore. Upon receiving an application, the Office examines, publishes and registers the GI if the requested product qualifies as GI. It usually takes 9 months in for registration. The registered GI in Singapore can be accessed Here.
Inadequacy in Law: What next?
Since Nepal is a state having a peculiar product in almost every geographical location (for instance Gundruk, Janakpuriya Lassi etc.), this peculiarity must be protected through legislative and judicial means. Though international instruments, to which Nepal is a party, have a number of provisions to protect GI, it is evident that unless there is domestic consciousness, protection cannot be effective. The government must now be serious on protection of GI as our sovereign right over the product seems to have been in risk. Now that Nepal has restructured itself with a federal system, the local and province also have equal rights and obligations of protecting the originality and the identity derived from being original. More importantly, before coming up with the legislation, a legal and scientific research must be conducted to gather the opinions and ideas from the local community about the ways, means and methods of protection.
In addition to an effective legislation, the government can come up with a policy where there would be an agreement between the community and the exploiter that the exploiter would, in no way, violate the peculiarity and originality of that geographic area. At the institutional level, Nepal can establish a mechanism to look after the GI issues and secure GI rights on the products which originate from Nepal or which are manufactured here. A department, with an authority to monitor and supervise the GI related issues, can be set up in the location in question. Amid every other possible loss, there is a greater threat of loss of sovereign right over the product which has their origin in Nepal if the legislative framework is not strong. In addition to the formulation of stringent and thorough codes, they must be effectively implemented to materialize what the legislation envisions.