Mechanisms to Strengthen Protection of Rights on Geographic Indications

I. What is Geographical Indications?

A Geographical Indications (GI) as defined by the World Intellectual Property

Organization is a sign used on products that have a specific geographical origin and
possess qualities or a reputation that are due to that origin. In order to function as a
GI, a sign must identify a product as originating in a given place. In addition, the
qualities, characteristics or reputation of the product should be essentially due to the
place of origin. Since the qualities depend on the geographical place of production,
there is a clear link between the product and its original place of production.1

According to TRIPS Agreement GI are “those “indications which identify a good as

originating in the territory of a Member, or a region or locality in that territory, where a
given quality, reputation or other characteristic of the good is essentially attributable to
its geographic origin.”2

A geographical indication right enables those who have the right to use the
indication to prevent its use by a third party whose product does not conform to the
applicable standards. It to a specific place or region of production that determines the
characteristic qualities of the product that originates therein. It is important that the
product derives its qualities and reputation from that place. Since those qualities
depend on the place of production, a specific "link" exists between the products and
their original place of production.3

In many countries the protection afforded to geographical indications by law is

similar to the protection afforded to trademarks, and in particular, certification marks.
Geographical indications law restricts the use of the GI for the purpose of identifying a
particular type of product, unless the product or its constitute materials originate from
a particular area and/or meet certain quality tests that are administered by an
association that owns the exclusive right to the use of the indication. Although a GI is
not strictly a type of trademark as it does not serve to exclusively identify a specific
commercial enterprise, there are usually prohibitions against registration of a
trademark which constitutes a geographical indication. In countries that do not
specifically recognize GIs, regional trade associations may implement them in terms
of certification marks.4

A trademark is a sign used by an enterprise to distinguish its goods and services

from those of other enterprises. It gives its owner the right to exclude others from using
the trademark. A geographical indication tells consumers that a product is produced
in a certain place and has certain characteristics that are due to that place of

1
http://www.wipo.int/geo_indications/en/
2
Article 22, TRIPS Agreement
3
http://www.wipo.int/sme/en/ip_business/collective_marks/geographical_indications.htm
4
https://arellanolaw.edu/alpr/v8n1a.pdf
 production. It may be used by all producers who make their products in the place
designated by a geographical indication and whose products share typical qualities.5

It is a name or sign used by certain product from a specific product from a specific
location or origin. The GI may act as a that such product possesses certain qualities,
reputation or other characteristics indigenous only to its geographical origin. A product
usually has usually distinct characteristics influenced by geographical location such as
climate, soil, humidity and traditional practices which may be considered as value-
added to the product.

II. Do we have established laws to protect our GI?

Similar to experiences in other states, there appears to be a positive correlation

between: (a) the value of the commodity, in terms of profitability or viability; and (b) the
protection accorded to geographical indications associated with said commodity, in
the Philippines.

Unfortunately, our laws on intellectual property has a limited application to

geographical indication. A misuse or misrepresentation in a certain can only be
protected under anti unfair competition laws and our trademark laws.

In compliance with the TRIPS Agreement, the Philippine Congress included

geographical indications in the enumeration of recognized forms of intellectual
property rights, as shown in Section 4 of the Intellectual Property Code (the “IP Code”).
Strangely, the remaining provisions of the IP Code do not make further, express
reference to geographical indications. In fact, the IP Code does not even define what
is a “geographical indication” for purposes of Philippine law.

While the IP Code does not provide a legal framework specific to the registration
and enforcement of rights relating to, or arising from geographical indications, it does
extend some protection to geographical indications:

a. Geographical indications per se cannot be registered as trademarks under

Section 123:

1. A mark cannot be registered if it: . . . (j) Consists exclusively of signs or of

indications that may serve in trade to designate the kind, quality, quantity,
intended purpose, value, geographical origin, time or production of the goods
or rendering of the services, or other characteristics of the goods or services;

2. A person who commits any act or omission constituting misrepresentation as

to the geographical origin of a particular good may be held criminally and civilly
liable therefore, to wit:
“Sec. 169. False Designations of Origin; False Description or
Representation. - 169.1. Any person who, on or in connection with any goods

5
http://www.wipo.int/sme/en/ip_business/collective_marks/geographical_indications.htm
 or services, or any container for goods, uses in commerce any word, term,
name, symbol, or device, or any combination thereof, or any false designation
of origin, false or misleading description of fact, or false or misleading
representation of fact xxx.”

3. The IP Code considers goods containing false or misleading designations of

origin to be contraband, and prohibits their importation into the Philippines,
thus:
“Sec. 166. Goods Bearing Infringing Marks or Trade Names. - No article
of imported merchandise which shall copy or simulate the name of any
domestic product, or manufacturer, or dealer, or which shall copy or simulate
a mark registered in accordance with the provisions of this Act, or shall bear a
mark or trade name calculated to induce the public to believe that the article is
manufactured in the Philippines, or that it is manufactured in any foreign
country or locality other than the country or locality where it is in fact
manufactured, shall be admitted to entry at any customhouse of the
Philippines.
In order to aid the officers of the customs service in enforcing this
prohibition, any person who is entitled to the benefits of this Act, may require
that his name and residence, and the name of the locality in which his goods
are manufactured, a copy of the certificate of registration of his mark or trade
name, to be recorded in books which shall be kept for this purpose in the
Bureau of Customs, under such regulations as the Collector of Customs with
the approval of the Secretary of Finance shall prescribe, and may furnish to
the said Bureau facsimiles of his name, the name of the locality in which his
goods are manufactured, or his registered mark or trade name, and thereupon
the Collector of Customs shall cause one (1) or more copies of the same to be
transmitted to each collector or to other proper officer of the Bureau of
Customs”.

4. The IP Code allows for the registration of collective marks. Rule 100 of the
Trademark Rules defines collective marks as: . . . any visible sign designated
as such in the application for registration and capable of distinguishing the
origin or any other common characteristics, including the quality of goods or
services of different enterprises which use the sign under the control of the
registered owner of the collective mark.6
While the IP Code does not treat geographical indications as sui generis forms of
intellectual property, the same may be protected and registered as collective marks. Interested
parties may thus register geographic indications as collective marks with the IPOPHL.
III. Matters for Consideration:
Philippine intellectual property law recognizes that geographical indications are forms of
intellectual property, and prohibits the misuse thereof through unfair competition clauses in the IP

6
Legal Framework For The Protection Of Geographical Indications In The Philippines
Code. However, the Code does not consider geographical indications to be sui generis, nor does
it provide for them an independent system of protection.
The lack of a sui generis framework in the IP Code or under other Philippine laws for that
matter, may be based on the following:
1. Philippine exporters rely very little, if at all, on geographical indications to promote their
products to consumers.
2. The Philippine government apparently takes action with regard to geographical
indications only when use of the same will harm the country’s highly-valued
commodities.
3. The Philippines’ imports usually exceed its exports which may have likewise inhibited
the development of geographical indications in the Philippines.
Notwithstanding the foregoing, it is still possible to protect existing geographical
indications by registering the same as collective marks under the IP Code. For clarity and
convenience, as well as to increase public awareness on geographical indications, it is
recommended that the IPOPHL promulgate implementing rules specific to geographic indications,
based on Secs. 121.1 and 167 of the IP Code.
In the near future, however, it is possible that Filipinos may become more aware of the
benefits of using geographical indications as a tool of economic policy. This development will
necessarily bring with it an increase in Philippine-based geographic indications, which will need
more protection than what administrative regulations can provide. As such, it would be prudent, if
not wise, for the Philippine Congress to revisit the IP Code, and determine the legislative
amendments that should be undertaken to extend the scope of protection accorded by the law to
geographical indications.
IV. How do we strengthen and protect our GI?
Through the application of the universally accepted principles in geographic indication we
can also strengthen and protect our industry. These are:

1. “Sui Generis” Systems – simply “one that is of its own kind7”. In this case it refers to the
creation of a new national law or the establishment of international norms that would afford
protection to intellectual property dealing with genetic resources -or biodiversity - and the
biotechnology that might result. It also refers to a law that might protect creations,
inventions, models, drawings, designs, innovations contained in images, figures, symbols,
petroglyphs, art, music, history and other traditional artistic expressions.8

2. Collective and Certification Mark – Collective marks are often used to promote products
which are characteristic of a given region. In such cases, the creation of a collective mark
has not only helped to market such products domestically and occasionally internationally,
but has also provided a framework for cooperation between local producers. The creation
of the collective mark, in fact, must go hand in hand with the development of certain
standards and criteria and a common strategy. In this sense, collective marks may
become powerful tools for local development.

7
Black Law’s Dictionary
8
https://iipi.org/wp-content/uploads/2010/07/NewYork011404.pdf
 Consider, in particular products which may have certain characteristics which are
specific to the producers in a given region, linked to the historical, cultural, social
conditions of the area. A collective mark may be used to embody such features and as
the basis for the marketing of the said products, thus benefiting all producers.
Associations of SMEs may, therefore, register collective marks in order to jointly
market the products of a group of SMEs and enhance product recognition. Collective
marks may be used together with the individual trademark of the producer of a given good.
This allows companies to differentiate their own products from those of competitors, while
at the same time benefiting from the confidence of the consumers in products or services
offered under the collective mark.9

3. Methods focusing on business practices, including administrative product approval

schemes. These are method, procedure, process, or rule employed or followed by a
company in the pursuit of its objectives. Business practice may also refer to these
collectively. A company may develop a scheme best suited for its product considering its
geographic location.

These approaches involve differences with respect to important questions, such as

the conditions for protection or the scope of protection.10 Broadly speaking geographical
indications are protected in different countries and regional systems through a wide variety of
approaches and often using a combination of two or more of the approaches outlined above.11
The practical steps to be taken vary depending largely on the purpose and the geographical
scope of the protection desired.

9
http://www.wipo.int/sme/en/ip_business/collective_marks/collective_marks.htmhttp://www.wipo.int/sme/en/i
p_business/collective_marks/collective_marks.htm
10
http://www.wipo.int/geo_indications/en/faq_geographicalindications.html#accordion__collapse__19
11
http://www.wipo.int/geo_indications/en/faq_geographicalindications.html#accordion__collapse