Academic journal article Duke Journal of Comparative & International Law

On the Need to Expand Article 23 of the TRIPs Agreement

Academic journal article Duke Journal of Comparative & International Law

On the Need to Expand Article 23 of the TRIPs Agreement

Article excerpt


A Geographical Indication of Origin (GI) is a place name that identifies the geographic source of a good and signifies a distinctive quality, reputation, or other characteristic of the good that is essentially attributable to that geographic source. (1) Seeing the words "Parmigiano Reggiano" on a cylinder of cheese, for example, signals to a consumer that the cheese was produced in a particular region of Italy where the unique soil characteristics and climatic conditions make for a unique cheese. (2)

The Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement), (3) the first multilateral instrument that deals with GIs, (4) promulgates minimum standards of protection that WTO Members must provide for GIs. Article 22 of the TRIPS Agreement requires that all Members make available the legal means to prevent the use of a GI that (1) indicates or suggests that a good originates in a geographical area other than the true place of origin in a manner that misleads the public as to the geographical origin; or (2) constitutes an act of unfair competition. (5) However, for GIs on two and only two categories of goods--wines and spirits--Article 23 of TRIPS Agreement provides additional protections, the three most significant of which are discussed below.

A. Level of Protection

Under Article 22, the holder of an infringed GI only has access to legal recourse if consumers have been misled by the allegedly infringing label or if its sale constituted an act of unfair competition, (6) whereas Article 23 plainly prohibits any use of a GI on wines or spirits that do not originate in the designated geographical region--whether or not the true origin is identified. (7) In other words, "to prevent the illegitimate use of a GI under Article 23, the legitimate users of the GI only have to prove that the product on which the GI is used does not originate in the geographic area identified by its indication." (8)

B. Multilateral Register

The last section of Article 23, which has no analogue in Article 22, calls for negotiations to be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration for the GIs on eligible wines. (9) It has been argued that Paragraph 18 of the Doha Declaration mandates that spirits should be covered by this system as well. (10) Although the register does not give registered GIs any overt legal protections beyond those they would otherwise enjoy, it does facilitate the protection of such GIs. (11)

There are two main sets of proposals for the multilateral register. One group of proposals advocates a voluntary system under which notified GIs would be registered in a database. (12) Governments choosing to participate would have to consult the database when making decisions regarding protection in their countries, and nonparticipating Members would be "'encouraged' but 'not obliged' to consult the database." (13) The other line of proposals advocates that, subject to certain exceptions, registration of a GI would establish a presumption of eligibility for protection by all WTO Members. (14) The presumptions could be challenged on certain grounds, but the register would generally require protection from Members. (15)

It is important to note that the negotiations for the creation of a multilateral register are required under Article 23.4 of the TRIPS Agreement, but are now under the Doha agenda and are often treated as separate from the question of whether the higher level of protection given to wines and spirits should be extended to other products. (16) However, the multilateral register is undeniably a part of Article 23, and for the purposes of this Note, "extension" will include extension of Article 23.4.

C. Homonymous Indications

Article 23 also protects the co-existence of homonymous GIs for wines. (17) Homonymous indications are "geographical names which are spelled and pronounced alike, but which designate the geographical origin of products stemming from different countries. …

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