Of Champagne, Parmesan Cheese and Cuban Cigars
Joanne Kong provides a brief introduction on geographical indications.
Picture yourself sipping a glass of Champagne while nibbling slices of Parmesan cheese or Parma ham, and puffing on a Cuban cigar. In case Malaysians cannot quite relate, what about devouring baskets of Musang King durian and some kek lapis Sarawak while enjoying a cup of Tenom coffee in your Batik Terengganu outfit?
Perhaps the above items are not best enjoyed in the aforesaid combination, but they do share something in common – they are all geographical indications.
What is a geographical indication (‘GI’)?
Unlike a trade mark, which is ordinarily used to identify a product’s manufacturer or the provider of a service, a GI is used on goods to identify its place of origin. Such goods would possess certain qualities, reputation or other characteristics which are attributable to their geographical origin.
|Examples of GIs
· Champagne – a type of sparkling wine from the Champagne region in France
· Parmesan cheese (Parmigiano Reggiano) – a hard cheese from the provinces of Parma, Reggio Emilia, Modena and Mantua in Italy
· Parma ham (Prosciutto di Parma) – a dry-cured ham from Parma, Italy
· Cuban cigar – cigars rolled from tobacco leaves throughout Cuba
· Musang King durian – a sought after species of durian from various areas in Malaysia, known for its thick, creamy and yellow flesh
· Kek lapis Sarawak – a traditional layered cake from the state of Sarawak, Malaysia
· Tenom coffee – Robusta coffee processed using traditional firewood from the town of Tenom in Sabah, Malaysia
· Batik Terengganu – textile art from the state of Terengganu, Malaysia which commonly depict leaves, flowers or other geometrical designs
Under the Geographical Indications Act 2000, a GI is conferred protection regardless of whether or not it is registered. As such, any interested person may institute proceedings in the Court to prevent use of indications which are misleading as to the true place of origin of the goods. Despite this, there are benefits to registering a GI.
Why register a GI?
Registration of a GI would prevent a third party from registering such indication as a trade mark. In the case of Agriculture & Processed Food Products Export Development Authority of India (APEDA) v. Syarikat Faiza Sdn. Bhd.  2 MLJ 768, the defendant had registered the term “Ponni” as a trade mark. Ponni, in fact, refers to a particular variety of rice which is grown in the Kaveri Delta region in India. This case saw APEDA, a statutory authority vested with the authority engaged in the development and promotion of exports of certain agricultural and processed food products from India, relying on trade mark laws to successfully expunge the defendant’s mark.
Since a registration would enable an interested person to take protective measures against the misuse of a GI, this would help to strengthen the “brand” value of a product. GIs further add competitive advantage to a product since they help consumers with product differentiation. Just ask durian-crazed Malaysians who frown at the mention of an unnamed durian but start to salivate once they hear the term “Musang King”.
Who may apply to register?
Persons who are entitled to file a GI application include a person who is carrying on an activity as a producer in a specified geographical area with respect to specified goods, and includes a group or groups of such person; a competent authority; or a trade organisation or association. Once registered, a GI is protected for 10 years and renewable every 10 years.
Now, you may be wondering about french fries, which are obviously not only produced in France. While there may be some truth to the French origin of these potato strips, it is interesting to note that some terms may lose their function as GIs if they end up becoming generic terms.