Kobe Beef, Cuban Cigars and Sabah Tea

Teh Hong Koon explains the meaning of “Geographical Indications” and their commercial value

 

Picture this … the gastronomic bliss of having Kobe beef seasoned with Sarawak pepper, washed down with a glass of Champagne, topped-off with a long drag of a Cuban cigar and a cup of freshly-brewed Jamaican Blue Mountain coffee.

 

The mere mention of these products brings to mind certain quality, reputation and character attributable to the locality from which they originate. In intellectual property terms, they are "geographical indications".

 

 

GEOGRAPHICAL INDICATIONS

A geographical indication is an indication which identifies a product as originating from a locality where a given quality, reputation or other characteristics of the product is essentially attributable to its geographical origin. Agricultural products, for example, typically have certain qualities which are attributable to the climate and soil properties of its place of origin.

 

Some well-known foreign geographical indications are “Kobe” for beef from the black Tajima-ushi breed of Wagyu cattle renowned for its flavour, tenderness and fatty well-marbled texture;  “Basmati” for rice from the Punjab provinces of India and Pakistan, recognised throughout the world for its extra long grains, and pleasant and distinct aroma; “Jamaican Blue Mountain” for coffee from the cool and misty slopes of the Grand Ridge of the Blue Mountains in Jamaica reputed for its rich flavour and aroma, full body and moderate acidity.

 

Closer at home, we have “Sarawak” for pepper that thrive in the warm and wet tropical climate of Sarawak, renown for its spiciness and pungency, “Sabah” for tea grown in plantations nestled in the lush tropical wilderness of Malaysia’s first ever World Heritage Site of Mount Kinabalu, known for its strong liquoring properties.

 

Geographical indications are lauded as source-identifiers, indicators of quality and business interests and valuable commercial assets. For instance, in 2007 Sarawak exported approximately 25,791 tonnes of pepper valued at RM351.8 million. Further, pepper cultivation supports the livelihood of about 67,000 rural dwellers in the upland areas of Sarawak.

 

In view of the commercial value of geographical indications, many disputes have arisen internationally over the use of geographical indications on products.

 

 

THE BATTLE OF BASMATI

The “Battle of Basmati” in 1997 involved the dispute between RiceTec, a US-based company, and the Government of India in respect of the patent granted to RiceTec over basmati rice lines and grains and the use of the name “Basmati”.

 

The face-off caused a brief diplomatic strain between the United States of America and India, with the latter threatening to take the matter to the World Trade Organization on the basis of a violation of the TRIPS agreement. Eventually, RiceTec voluntarily withdrew its patent claims and use of the name Basmati due to pressure and the decisions of the United States Patent Office.

 

 

PARMASEN NOT FROM PARMA?

In 2003, the European Court of Justice ruled that Parmesan was the official translation of Parmigiano-Reggiano - a geographical indication for cheese from Parma, Italy with a distinct flavour that is full and fruity with a salty tang, made from milk extracted from cows eating a strictly controlled natural diet and produced strictly in accordance with methods left behind by the Benedictine monks some 800 years ago.

 

The ruling resulted in the giant US food company, Kraft Foods, Inc having to change the name of its grated cheese “Parmesen” with the annual sales of about GBP60 million to "Pamesello Italiano" in Europe.

 

 

THE TRIPS AGREEMENT

The World Trade Organization imposes two basic obligations on its member governments in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) in relation to geographical indications.

 

 

Article 22 - Protection of Geographical Indications

A basic standard of protection is found in Article 22 whereby all governments are obliged to provide the legal means to prevent the use of any means in the designation or presentation of goods that mislead the public as to the geographical origin of the goods and any use which constitutes an act of unfair competition.

 

 

Article 23 - Additional Protection for Geographical Indications for Wines and Spirits

The European Union, being a formidable economic block and an influential voice at the TRIPS negotiation table, succeeded in pushing forward a proposal for added protection specifically for wines and spirits - an important export for several European countries.

 

Article 23 provides a higher standard specifically for wines and spirits such as “Port”, “Sherry” and “Champagne”. It requires all governments to provide the legal means to prevent the use of a geographical indication for wines or spirits which do not originate from the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as kind, type, style, imitation and the like.

 

 

THE GEOGRAPHICAL INDICATIONS ACT

In fulfilling its obligations under the TRIPS Agreement, Malaysia enacted the Geographical Indications Act 2000 allowing producers of products within a geographical area, competent authorities and trade organizations or associations to apply for registration of a geographical indication. However, after more than 7 years, the applications for registration of geographical indications in Malaysia are few and far between with only 5 registrations on the Register of Geographical Indications currently, namely Sarawak Pepper, Sabah Tea, Borneo Virgin Coconut Oil, Tenom Coffee and Sabah Seaweed, all of which interestingly, originate from East Malaysia.

 

 

Registration of Geographical Indications

The registration of a geographical indication raises a presumption as to the subsistence and ownership of that geographical indication. When the geographical indication is applied on the product in question, consumers can be assured that the product bears certain quality, reputation or characteristics which are attributable to its place of origin. This allows the registered proprietor exclusive rights to exploit the geographical indications and to gain recognition in domestic and international markets.

 

 

Infringement

Any interested person may institute civil proceedings under the Geographical Indications Act to prevent the use of geographical indications which mislead the public as to the geographical origin of the goods or which constitutes an act of unfair competition.

In a geographical indication infringement suit, the registered proprietor may apply for interlocutory and permanent injunctions, Anton Pillar orders, Mareva injunctions, seek damages for the loss suffered by him or alternatively, an account of the profits gained by the infringer and costs. The registered proprietor may also apply for an order to compel the infringer to deliver up to the registered proprietor or in the alternative, to destroy upon oath, all the infringing products.

 

The registered proprietor may request the authorities to initiate criminal actions against an infringer pursuant to the Trade Descriptions Act or the Penal Code. Unfortunately, border measures whereby infringing goods may be prevented from being imported into Malaysia are not available.

 

 

Exclusion

Geographical indications that do not fulfil the requirements set out in the Geographical Indications Act or which are contrary to public order or morality, or which are not or have ceased to be protected or fallen into disuse in their country or territory of origin are not protected in Malaysia.

 

 

CONCLUSION

Geographical indications are valuable commercial assets that remain largely untapped in Malaysia. Malaysian producers and trade organizations should endeavour to take advantage of the registration regime and step-up efforts to protect their rights.

 

Menglembu groundnuts, anyone?

 

 

TEH HONG KOON ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it )

 

 
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