Protection Of Geographical Indications In ASEAN Countries

Many of the ASEAN countries had joined the TRIPS Agreement. But legal protection of Geographical Indication (hereinafter referred as GIs) as envisaged under the TRIPS Agreement seems never exists in some countries. Among the ten member countries of ASEAN, only Malaysia, Singapore, Indonesia and Thailand have establised and regulated the systematic of Geographical Indication protection and have their own Geographical Indication Act that protected some of their products which is categorized under Geographical Indication.

INTRODUCTION

It was realized by many ASEAN developing countries that the protection of GIs especially to the product from their countries could possibly promote their international trade. This encourages them to initiate a debating on the broadening of the scope of protection of GIs. It was also realized that the different standards followed in the TRIPS Agreement between wines and spirits and other products could result in disadvantage to their products in the international market. All these factors contributed to the introduction of national laws in many ASEAN countries to provide protection for GIs. This paper explores how ASEAN Countries provides protection of GIs for their home products. The scope of this paper will focus on and be limited to GIs protection in ASEAN Countries which have their own Geographical Indication Act.

INTERNATIONAL TREATIES OF GEOGRAPHICAL INDICATION

1. The Agreement on Trade-Related Aspects of Intellectual Property Rights [1]

The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) provides the basic international regulatory framework for GIs. It serves not only to define GIs but also to align the standards of protection as well as providing access to an international dispute settlement mechanism. Three articles relating to GIs occur in Part II, Section 3:

1) Article 22 outlines the basic definition and general standards of protection for GIs relating to all products including those of agricultural origin.

2) Article 23 denotes the specific and additional protection that is available for the wine and spirits categories, as these make up the majority of registered GIs. Their protection goes beyond Article 22’s general coverage for unfair competition and consumer deception, and offers more outright protection to these GIs without requiring that either unfair competition or deception be demonstrated.

3) Article 24 notes some important exceptions and details for future negotiation. As the TRIPS Agreement only provides very minimum standards of protection for non-alcohol GIs, it is likely that regional or bilateral agreements will remain important in this area since they can serve to more specifically protect GIs for broader categories of products.

2. The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods [2].

The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (“Madrid System”), Article 1 states that “all goods bearing a false or deceptive indication by which one of the countries to which this Agreement applies, or a place situated therein, is directly or indirectly indicated as being the country or place of origin shall be seized on importation into any of the said countries”.

It also provides for a central international registration of marks. It extends protection on a multination basis, so that rather than filing separate registrations in individual countries of interest, owners of marks can simply file one application directly with their national trademark or IP office and designate the countries of interest, provided that the country is a member of the Madrid System. Members of the Madrid System that are thus designated have the option to refuse protection within a specified period; otherwise the protection of the mark is the same as if it had been specifically registered by that country. Subsequent changes or renewals can also be accomplished in one procedure.

3. The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration [3].

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (“Lisbon Agreement”) was established in 1958. The Lisbon Agreement established under the Agreement, is the counterpart of Madrid and also administered by WIPO. It is used to help recognize and protect Appellations of Origin in countries other than their country of origin. It does so by using one single registration procedure for an Appellation, and by provisions of substantive law such as defining the content of the protection that Member States must undertake. Article 2 of the Lisbon Agreement provides “appellation of origin” means the geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors. The country of origin is the country whose name or the country in which is situated the region or locality whose name constitutes the appellation of origin which has given the product its reputation.

4. The Paris Convention for the Protection of Industrial Property [4].

The Paris Convention for the Protection of Industrial Property (“Paris Convention”) was the first major international treaty designed to facilitate the protection of industrial property rights across national borders. It is one of the earlier historic treaties to mention the international protection of GIs as “indications of source or appellations of origin”. However, it does not really define indications of source or appellations of origin and is not explicit about the form of protection.

It concerns itself with the repression of unfair competition in these areas. Article 9 outlines the rights for industrial property, such as trademarks, and provides the right of seizure or containment of fraudulent products for injured parties (i.e. producer, association or business associated with the source or appellation) when that seizure option is part of a country’s legal code. Article 10 includes the obligation to protect “indications of source” “against direct or indirect use of a false indication of the source of the goods or the identity of the producer, manufacturer or trader”. It does not explicitly note or include appellations of origin, though, since an appellation of origin is by definition an indication of source, typically it is acknowledged to apply to both. Article 10 states that any false indication of a product’s source of origin is to be handled in the same manner prescribed for fraud and violation of other commercial laws for products such as trademark violations (Article 9). This prohibits fraudulent misrepresentation or use of geographical appellations of origin and source indications.

OVERVIEW OF GEOGRAPHICAL INDICATION PROTECTION IN ASEAN COUNTRIES

There are ten ASEAN countries which is Malaysia, Indonesia, Singapore, Thailand, Vietnam, Myanmar, Laos, Cambodia, Phillipines, and Brunei. In Malaysia, there are three legislations that governed the protection of Geographical Indication, namely Geographical Indication Act 2000, Geographical Indication Regulations 2001 and Geographical Indications (Amendment) Act 2001. In Singapore, the Geographical Indication Act 1999 was introduced whereas in Indonesia, Law of the Republic of Indonesia No.15 Year 2001 about Mark and Government Regulation No 51 on Geographical Indications 2007 were the two acts governed the protection of Geographical Indication. In 2003, Thailand introduced the Protection of Geographical Indication Act B.E. 2546 (2003) and became the fourth countries in ASEAN which had her own Geographical Indication Act. The rest of the ASEAN members still on their way to develop the legislation on Geographical Indication in their countries.

LEGAL PROTECTION OF GEOGRAPHICAL INDICATION IN ASEAN COUNTRIES

The conceptualization of Geographical Indications

The coverage of geographical indications has been incorporate as wide range of products as possible to be designated by the GIs. Malaysia [5], Thailand [6] and Singapore [7] permit natural, agricultural, handicraft and industrial products to be included in the definition of goods designated by the GIs while Indonesia remain silent on this. All law in the four countries are silent on the possibility of entending GIs protection in the field of services. Regarding the TRIPS exclusion of homonymous indications, Malaysia [8] and Singapore [9] expressly extend the protection to homonymous indications to wines only. In Thailand [10], this extended protection is available to the homonymous not only of wine but also of the additional categories to which they are offering protection similar to wines and spirits. However, the Indonesian law [11] is silent regarding this matter.

The nature of GIs protection

Malaysia [12], Thailand [13] and Indonesia [14] implemented registration system for GIs protection in these countries. However, in Singapore, there is no system of registration for protection of GIs since Singapore implemented automatic registration where the law protects only GIs of a country which is a member of the World Trade Organization, a party to the Paris Convention for the Protection of Industrial Property, or a country designated by the Singapore Government as a qualifying country. All the three countries except Indonesia provided protection against unfair competition and acts misleading the public as to the place of origin of the goods. Indonesia and Thailand also grant protection against unlawful uses. In Thailand [15], unlawful uses is included unfair competition and consumer deception as to the place of origin of the goods. But unlike Thailand, Indonesian Act [16] didn’t define the meaning of unlawful uses.

In Singapore [17], unfair competition and consumer deception are defined as prohibited acts or uses while Malaysia [18] described them as acts against which injunction and damages could be claimed. Among the four countries, only Thailand didn’t offer remedies in form of injunctions and damages in giving rights to initiate legal proceedings. However, in Thailand, plaintiff can claim compensation for infringement of GIs under the general tort provisions of the Civil and Commercial Code.

Under TRIPS Agreement , there are specific obligations governed GIs protection which is the additional protection for wines and spirits. Malaysia [19] and Singapore [20] provided the TRIPS level protection only to these two categories. Thailand [21] adds silk and rice to these category but Indonesia is silent about the level of protection of GIs and does not even make classification to ordinary GIs and also to wines and spirits since the law is still at the early stage of implementation. All the three countries except Indonesia respect the prior uses of GIs and prior use of trademarks. In Indonesia, after registration of GIs, the prior users of GIs get a right to use it only for a further two years[22].

GIs institution of administration in ASEAN

In Malaysia, the Registrar of GIs is conferred with the power of administration[23]. A central GIs Office ie. Intellectual Property Corporation of Malaysia with branch offices is established under the Act and documents filed at the Branch Offices are deemed to have been filed at the Central Office[24]. The Registrar is bound to keep a GIs Register in which all the prescribed particulars are recorded[25]. Procedures of registration such as application[26], advertisement[27], opposition to the application[28] ,appeal[29] and registration[30] are specified under the GIs Act. In Singapore where there is no registration mechanism, the institution for the administration of GIs lies in the court of law where the affected parties can opt to undertake law suits. Indonesian GIs law are vague regarding this aspect. In Thailand[31], the Act briefly mentioned some procedures for registering GIs to the Registrar of GIs, the GIs Board and the IP Court in a hierarchical manner.

The legal mechanism for quality control

The objective of protecting GIs is to preserve the consumer interest in maintaining the reputation of the GIs. In doing so, ensuring the quality is the most vital factor. Under the TRIPS, it is not clearly provide the method of controlling the quality but it can be impliedly understand that from Article 22(2), it is the national law obligation to ensure the quality control. There could be different ways of ensuring the quality while protecting the GIs which depending on the legislation in each of the countries. The direct approach is to make oblige the quality control as precondition for registration.

In Indonesia, quality or the peculiar features is made the basis for protection. A GIs can be protected in Indonesia so long as it maintains the quality or unique features that form the basis for protection [32]. But is Singapore, use of GIs is a pre-condition for the protection [33] and there is no reference regarding maintenance of quality. If there is allegation on the infringement of GIs in Singapore, the claimant has to prove the prior usage of the GIs to establish its claims. It is to ensure that only the actual manufacturers of the product are entitled to use the GIs and others could use only with permission.

Both Thailand and Malaysia require the details about the quality, reputation or other characteristics of the GIs at the time of registration. In Thailand specifically, the application must indicate the product using the GIs, details about the quality, reputation and other characteristics of the goods, and the relationship between the product and the geographical origin [34]. After registration, the producers in the geographical area and the traders get the right to use the GIs. It is important to note that eventhough the law in Thailand provide details on the quality, reputation and other characteristics, the law only prohibits the use of GIs in manner causing confusion as to the geographical origin, quality, reputation or other characteristics of the goods. It is doubtful whether this provision could ensure quality of the products by users, particularly the traders. Permitting the use of GIs by traders without proper quality control could result in dilution of the value of the GIs causing permanent injury to actual producers.

In Malaysia also, it require the application for GIs to provide the details of the quality, reputation or other characteristics of the goods in the application for registration of GIs [35]. The certificate of registration will contain the GIs registered, the demarcated geographical area, the name and address of the person in whose name the GIs is registered, the concerned goods, the quality, reputation and other characteristics of the goods and any conditions for use etc[36]. Thus it can be concluded that the intention of the Act is to ensure the quality control. The right to use is limited to producers carrying out activities in the geographical area specified in the registration. Eventhough dealers and traders are included in the definition of producer [37] they must carry out their activities in the specified geographical area [38].

Thus it is clear that the majority of the countries imposed the quality control and Malaysia particularly demands that the actual producers guarantee that standards of quality are preserve.

The ownership of the geographical indication

It is important to determine the ownership of the GIs. All in all it is depend on the legislation itself. If the intention of the legislation is to protect the actual producers, the ownership of GIs must be exclusively with them. It is interesting to note that in all legislations namely Malaysia, Thailand, Indonesia and Singapore, dealers and traders are included in the definition of producers or the persons eligible for making registration or claims on the GIs.

It appears that in addition to actual producers, traders and dealers could also be treated as owners of the GIs. Thailand [39] and Indonesia [40] even allow consumers to register GIs. Some countries like Thailand, Indonesia and Malaysia also permit governmental agencies to file application for registration of GIs.

In Singapore, interested persons have the right to sue against the prohibited acts and these interested persons include traders, producers and their associations [41]. But the right to sue seems to be established based on the prior use of the GIs since no registration system is followed in Singapore.

In Malaysia, eventhough the definition of producer includes trader and dealer [42], the right to use the GIs in confined to producers including traders carrying out the activities in the specified geographical area [43]. However, the Act is silent about the persons entitled to sue in cases if infringement. It appears that the persons entitled to use the GIs are the ones who could file cases of infringement and to protect GIs.

In Thailand also the law is not very clear as to who could sue for infringement though the right to use the registered GIs is confined to manufacturers in the particular geographical area and the traders [44]. But in Indonesia, it is made clear that the right-holder has the right to sue in case of infringement [45].

CONCLUSION

Despite the progressive approach taken by some of the ASEAN countries to implement legal protection of GIs in their countries, there is a need for these four countries ie, Malaysia, Singapore, Indonesia and Thailand to standardize the implementation of GIs protection. With the standard GIs protection among ASEAN countries, the countries that are about to govern their own GIs Act can adopt the implementation from the prior countries. Indirectly, the protection of GIs in ASEAN will be strengtened with the cooperation of all ASEAN countries.