Does Sri Lanka need a system for registering geographical indications?

3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw E.I.P.R. 2018, 40(3), 164-171 European Intellectual Property Review 2018 Does Sri Lanka need a system for registering geographical indications? Althaf Marsoof 1 © 2018 Sweet & Maxwell and its Contributors Subject: Intellectual property Other Related Subject: International law. Legal systems. Keywords: Comparative law; Geographical indications; India; International registration; Registers; Sri Lanka; Legislation: Intellectual Property Act 2003 (Sri Lanka)s.103, s.142, s.161 TRIPS Agreement Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications 2015 *164 Recent reports published in Sri Lankan newspapers suggest that local industries (particularly cinnamon producers) have raised concerns about the lack of a registration system for geographical indications (GIs) in Sri Lanka. They have even gone on to suggest that the failure on the part of Sri Lankan authorities and stakeholders to obtain protection of Sri Lankan GIs in other jurisdictions (and in particular the EU) is attributable to the lack of a domestic mechanism for the registration of GIs. Both local industries and academics have made reference to the https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw Indian approach on the registration and protection of GIs and have called for the implementation of a similar system in Sri Lanka. It was in order to address this specific concern and plea that the Cabinet of Ministers by a decision made in October 2016 pledged to amend the Intellectual Property Act 2003 (IP Act), which governs the protection and enforcement of Intellectual Property Rights in Sri Lanka. Yet, contrary to expectations and adopting an approach that is much less comprehensive than the existing legislative approach in India, the proposed amendment to the IP Act merely introduces a single subsection to s.161 that deals with the protection of GIs. Against this backdrop, this article deals with the following points. First, it considers whether the current regime for the protection of GIs in Sri Lanka is sufficient in order to obtain the necessary legal protection for Sri Lankan GIs both locally and globally. Secondly, the article critically assesses the new amendment to the IP Act, comparing it with the Indian approach, in considering its practicality and utility. It is argued that the new amendment adds nothing to existing law. Introduction The objective of this article is to consider a very specific question—that is, whether Sri Lanka needs a system for registering geographical indications (GIs or GI in the singular). The Intellectual Property Act 2003 (IP Act) defines a GI in s.103 as "an indication which identifies any goods as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin". In recent times, industries that rely on GIs to promote their goods globally have raised concerns about the lack of a registration system for GIs in Sri Lanka. For instance, the Spices and Allied Products Producers’ and Traders’ Association, which represents the interests of cinnamon producers, has taken the view that "GI registration will not only help [producers] to market and promote Sri Lankan spices and allied products but also to safeguard them against the violators of the law in the international market." 1 https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw In fact, local industries have attributed delays in obtaining protection of local GIs in other jurisdictions, such as the EU, to the lack of a domestic GI register. 2 The plea on the part of local industries for a GI registration system is also supported in academic discourse. 3 For instance, Wijesinghe has suggested that providing a proper system of domestic registration is a fundamental requirement for a successful GI regime and that protection must at least be extended, with registration procedures facilitating the sound legal protection of all products which have intrinsic qualities inherited by their place of origin. 4 In a similar vein, De Silva has suggested "at least to grab the available protection in the countries where there is a good market for Sri Lankan GIs, a registration system would provide a suitable mechanism to the country". *165 5 More recently, Kamardeen has argued that "Sri Lanka could, and perhaps should, consider improving its current GI regime by implementing a national GI registry". 6 Those who claim that Sri Lanka should embrace a system of GI registration make reference to the Indian legislative approach that provides for a registration system for GIs. 7 These assertions and pleas in support of a GI registration system for Sri Lanka made by local industries, as well as academics, have acted as the impetus for the Sri Lankan Government to take the initiative to propose an amendment to the IP Act, which governs the protection and enforcement of intellectual property in Sri Lanka, including GIs. Thus, in October 2016, a proposal put forward by the Minister for Industry and Commerce to amend the IP Act to provide for the registration, certification and protection of GIs, was approved by the Cabinet of Ministers. 8 This decision was highly commended by the local industrial community—e.g. stakeholders representing the cinnamon industry have observed that: "This measure will pave the way for certification of cinnamon products originating in Sri Lanka with regard to GI which is a necessary step for international registration of ‘Ceylon Cinnamon’ to benefit from GI which is the highest level of protection." 9 https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw Yet, contrary to expectations and adopting an approach that is much less comprehensive than the existing legislative approach in India, the proposed amendment to the IP Act merely introduces a single subsection to s.161 that deals with the protection of GIs. Against this backdrop, this article considers the following points: (1) whether the present regime for the protection of GIs in Sri Lanka is adequate in protecting the rights and interests of local producers of GI-related goods, and (2) whether the proposed amendment to the IP Act adds anything in substance to the existing legal framework for the protection of GIs in Sri Lanka. A discussion of both these points is required to comprehensively respond to the question that this article poses—that is, whether Sri Lanka really needs a GIs register that registers and protects GIs as such. In terms of methodology, the article adopts a strictly doctrinal and comparative approach: doctrinal because it engages in an analysis of the law as it is in relation to the protection of GIs; comparative because it refers to the Indian approach to GI protection in supporting the conclusion that Sri Lanka does not gain any additional benefit in introducing a separate and distinct register for GIs. The adequacy of the legal framework in Sri Lanka for the protection of GIs? Before dealing with the proposed amendment to the IP Act, it is apt to consider the current provisions in the Act that protect GIs and their adequacy. Reference must first be made to subs.(1) of s.161 of the IP Act, which provides that "any interested party" shall be entitled to prevent (1) the use of any means in the presentation of goods that indicates that the goods originate in a geographical area other than the true place of origin in a manner which misleads the public, or (2) any use of a GI which constitutes an act of unfair competition, or (3) use of a GI identifying goods not originating in the place indicated by the GI (even where the true origin of goods is indicated) or use of a GI accompanied by words such as "like", "style" or "imitation". This provision permits any interested party (which no doubt would include producers of GI-related products) to prevent the unauthorised use of GIs by third parties in the circumstances identified https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw therein. The first two limbs of s.161(1) comply with art.22(2) of the Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS), to which Sri Lanka is a party. The third limb of s.161(1) confers greater protection than what is required by art.23(1) of TRIPS—as protection under that limb extends not only to wines and spirits but also to other goods including agricultural products and foodstuffs. There is no requirement for a GI to be registered for an action under this provision to be instituted. 10 In addition, GIs may be protected as certification marks (or as collective marks). The Sri Lanka Tea Board (SLTB) has protected the interests of tea producers by registering PURE CEYLON TEA as a certification mark. Section 142(1) of the IP Act provides that " [s]ubject to the provisions of this Chapter, provisions relating to marks shall apply to certification marks". In essence, once a GI is registered as a certification mark, the owner of that mark may prevent unauthorised third parties from using the GI in ways that would cause confusion or mislead the public, a remedy that is normally available to trade mark owners. The general prohibition against the registration of signs or indications denoting the geographic origin of goods as trade marks has been made specifically inapplicable to the context of registration of certification *166 marks, enabling the registration of GIs. 11 However, this exception to the general prohibition on the registration of geographic signs is subject to one limitation. That is, "the owner of such mark is not entitled to prohibit the use of such sign or indication in accordance with honest practices in industrial or commercial matters and in particular by a person who is entitled to use a geographical name". 12 Yatawara and Rajapakse, citing the example of NUWARA ELIYA TEA (which is registered as a certification mark by the SLTB), identify this as a significant drawback: "Nuwara Eliya is a geographic name of a district in Sri Lanka. Therefore, if ‘Nuwara Eliya’ is registered as a collective or certification mark for tea, it nonetheless cannot prevent other tea originating in Nuwara Eliya from being described as ‘Nuwara Eliya Tea’, even if such tea does not meet the requisite quality or characteristics set by the mark owner as a condition for the use of the registered mark." 13 https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw This has led some academics to suggest that geographical indications comprising the term "Ceylon", 14 which was used to describe the geographic area constituting the island nation of Sri Lanka when it was a British colony, attract greater protection vis-àvis geographic indications that utilise existing geographical names (such as Nuwara Eliya): "However, differently than certification marks that are comprised of indications which are actual geographical names, certification marks that are comprised of indications which are no longer proper geographical names enjoy a broader scope of protection." 15 The accuracy of these propositions must be considered further, in respect of the NUWARA ELIYA TEA certification mark for tea. In terms of the specifications provided by the SLTB for NUWARA ELIYA TEA, in order to qualify to use the mark, tea growers must meet certain quality standards and grow their tea within the Nuwara Eliya agroclimatic zone. Figure 1 reproduces the NUWARA ELIYA TEA certification mark. Figures 2 and 3 set out the tea-growing agro-climatic zones and the administrative districts in Sri Lanka respectively. Figure 1 The Nuwara Eliya certification mark *167 https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw Figure 2 Sri Lanka—agro-climatic tea zones https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw Figure 3 Sri Lanka—administrative districts *168 https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw As is seen from Figures 2 and 3, the Nuwara Eliya agro-climatic zone (the area marked 1 in Figure 2) within which tea must be grown in order to become eligible for the use of the NUWARA ELIYA TEA certification mark (Figure 1) is a much smaller region within the Nuwara Eliya administrative district. Yet, anyone producing tea within the Nuwara Eliya administrative district (but outside the Nuwara Eliya agro-climatic zone) may legitimately be entitled to use the phrase "Nuwara Eliya" on the packaging of the products to designate the origin of their products. Accordingly, it has been suggested (by Yatawara and Rajapakse, as well as Kamardeen) that such use cannot be prevented by the producers of Nuwara Eliya tea grown according to the specifications of the SLTB and in the Nuwara Eliya agro-climatic zone. This is so even if the third party’s tea products do not meet the same quality or characteristics of tea authorised to bear the GI. In such an event, it might be the case that the only remedy that is available in the interest of users of a GI is the remedy enshrined in s.161 of the IP Act, rendering the registration of GIs as certification or collective marks completely useless. However, the above propositions are overstatements, if not exaggerations. The limitation on the right of exclusion conferred on certification mark owners in terms of s.142(3) of the IP Act concerns the use of a mark by a third party "in accordance with honest practices in industrial or commercial matters". This is the exact language that is adopted in s.160(1)(a) of the IP Act dealing with unfair competition. Notably, unfair competition includes the use of protected marks in ways that causes "confusion with respect to another’s enterprise or its activities, in particular, the products or services offered by such enterprise". 16 Thus, arguably, a person who is "entitled to use a geographic name" as referred to in s.142(3) must do so in accordance with honest practices. Accordingly, although a tea grower in the Nuwara Eliya district (outside the Nuwara Eliya agro-climatic zone) would in principle be entitled to utilise the phrase "Nuwara Eliya" to describe the products concerned, the use of the phrase cannot in any way confuse or mislead consumers to believe that the goods in fact originate from the agro-climatic zone to which the NUWARA ELIYA TEA certification mark relates. Even assuming that Yatawara and Rajapakse, and Kamardeen, are right in their assertions, this does not necessarily mean that GIs are not adequately protected in Sri Lanka. After all, as stated earlier, TRIPS-plus protection is afforded to GIs by virtue of https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw s.161 of the IP Act (although not through a process of registration). Yet, if GIs are adequately protected in Sri Lanka, why have local industries lobbied for a system of registration? The answer to this question rests on the fact that local industries, and even academics, 17 perceive the domestic registration of GIs as a necessary prerequisite for "international registration" of local GIs. This perception, however, is gravely misconceived. First, no local GI can obtain "international registration" (at least for now), as Sri Lanka is not a party to the Lisbon Agreement on Appellations of Origin 1958. Article 1(2) of the Agreement provides that contracting parties "undertake to protect on their territories, in accordance with the terms of this Agreement, the appellations of origin of products of the other countries of the Special Union, recognized and protected as such in the country of origin and registered at the International Bureau of Intellectual Property…". Had Sri Lanka been a party to the Lisbon Agreement 1958, it would no doubt have made sense to incorporate a domestic registration system for GIs, as registration would have been necessary for the recognition and protection of GIs as such in the country of origin—a prerequisite to obtaining "international registration". Thus, unless Sri Lanka joins the special union comprising the signatories to the Lisbon Agreement 1958, the perception that domestic registration of GIs leads to "international registration" is completely mistaken. In any case, at present, gaining membership to the special union of the Lisbon Agreement 1958 would not provide Sri Lankan producers of GI-related goods with a significant advantage, as only 28 countries have acquired membership to the special union thus far. It has been suggested that the Lisbon Agreement 1958 has not become a popular choice because "it protects appellations of origin only when they are officially acknowledged by the country of origin", 18 requiring GIs to be registered in the countries of origin—whereas many countries do not provide for a system for registering GIs as such. In addition, why the Lisbon Agreement 1958 has been unpopular may be attributed to the narrow scope of the treaty in terms of what can be protected—i.e. https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw appellations of origin. In contrast, GIs are broadly defined: appellations of origins capable of being regarded as a type of GI. Notably, in May 2015 the Geneva Act to the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act) was adopted, which extends protection to GIs (in addition to appellations of origin). It is thus speculated that a greater number of states will become party to the Geneva Act. In these circumstances, it is advisable for the Sri Lankan Government to take steps to become party to the Geneva Act. Under the new regime, GIs may be registered directly in an international register through an international bureau established under the Geneva Act. 19 In the event that Sri *169 Lanka does someday become a party to the Geneva Act, international registration of local GIs may be obtained without the need for a local register. Secondly, and as things presently stand, Sri Lankan GIs have to be individually protected in every country in which there is an interest to do so. 20 In some countries protection may only be obtained by registering the GI in that country (e.g. India), whereas, in others, no registration is required for protection to be conferred (e.g. Malaysia and Singapore before 2014). In either case, however, it is permitted under TRIPS for Member States to require that a particular GI in relation to which protection is sought be "protected" in the country of origin. 21 Notably, "protected" does not mean "registered" as such. 22 Thus, it would suffice that a GI is registered in the country of origin as a certification (or collective) mark to be protected both in the country of origin and in the other country where protection is sought. There is also a perception on the part of local industries that the domestic registration of local GIs is capable of expediting the process of acquiring protection in other jurisdictions. The trigger for this perception was the difficulties and delays Sri Lankan authorities faced in obtaining protection for local GIs abroad, particularly in the EU. 23 These difficulties and delays arose in view of the equivalence and reciprocity conditions that were imposed under art.12(1) of Regulation 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (GI Regulation 2081/92). Accordingly, in order for GIs from non-EU states (third countries) to be registered and protected in the EU, third countries were required to adopt a GI protection system equivalent to that in the European Communities, and https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw to provide reciprocal protection to products from the European Communities. Since the EU adopted a registration system for GIs, this meant that unless a country outside the EU had in place a domestic system for the registration of GIs, no GIs from that country could be registered in the EU. Hence, the implementation of a local GI register would have been necessary in order to comply with the equivalence and reciprocity approach adopted by the EU. 24 Yet, in 1999 this aspect of the GI Regulation was challenged by the US in the World Trade Organization (WTO) on the basis that the requirement flouted national treatment obligations under art.3:1 of TRIPS. 25 The dispute was decided in favour of the US, and the WTO Panel’s report was adopted on 20 April 2005. In order to give effect to the WTO Panel decision, a new GI Regulation 26 was enacted replacing GI Regulation 2081/92. Notably, GI Regulation 510/2006 provides that GIs of non-EU states may be registered provided there is "proof that the name in question is protected in its country of origin". 27 Thus, under the present regime, the registration of a third country’s GI in the EU’s register does not depend on whether the GI is registered in the country of origin—it would suffice that it is protected, such protection being achievable through the regime for certification marks. In fact, it is likely that any attempt to impose a requirement that a GI must be registered in the country of origin in order for it to become eligible for protection (or registration) in another country would flout the national treatment provision in TRIPS. Fourthly, academics supporting the introduction of a GI registration system in Sri Lanka have often referred to Indian legislation. Yet, it must be noted that the protection afforded to GIs under s.161 of the IP Act is precisely the same in terms of scope and substance to what is afforded to registered GIs in India. 28 Thus, the level of legal protection of GIs in Sri Lanka is on a par with India despite the lack of a system for registering GIs as such. Accordingly, for the above reasons, there is no necessity for the introduction of a registration system for GIs in Sri Lanka, from the perspective of obtaining legal protection for domestic GIs both locally and globally. Instead, the recommended course of action for Sri Lanka would be to become party to the Geneva Act to the Lisbon Agreement on Appellations of Origin and Geographical Indications, which would https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw enable local GIs to be directly registered in an international register—which in turn results in protection being acquired in all countries party to the Geneva Act. The amendment proposed to the IP Act What this article seeks to stress is that a domestic GI register is neither a prerequisite, nor a necessity, to secure a requisite level of legal protection for Sri Lankan GIs both locally and globally. This does not mean, however, that the introduction of such a register does not have its advantages. It has been suggested that *170 "creating a registration-based scheme for GI protection in Sri Lanka could offer additional certainty to GI producers, and in turn competitors and other interested parties who could be made aware of existing GI registrations". 29 However, the process of registration and maintenance of GIs in a register must be transparent, unbiased and adhere to principles of due process. The proposed amendment to s.161 of the IP Act merely adds a new subsection. Accordingly, the new subs.(4A) to s.161, if enacted, will read as follows: "The Minister may prescribe any geographical indication in respect of any goods or products for the purpose of this Act" (emphasis added). Interestingly, the Sri Lankan amendment is far less comprehensive in comparison with the Indian approach, which many academics have referred to in supporting their claims for a Sri Lankan register for GIs. There are two points that must be made in connection with this proposal. 30 First, s.161(1) begins by permitting "any interested party" to prevent the unauthorised use of GIs on the part of third parties in the circumstances set out therein. However, the IP (Amendment) Bill does not in any manner set out the consequence of the Minister’s act of prescribing a GI. In the event that the amendment becomes law, it is unclear whether in future only interested parties in connection with GIs that are prescribed by the Minister can make use of the entitlement to prevent unauthorised third parties from using GIs in the circumstances set out in s.161(1) of the IP Act. If such an interpretation is afforded, the opening words of s.161(1) will be rendered meaningless. In contrast, the position in India is far more straightforward—"[n]o person shall be https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered geographical indication". 31 Secondly, GIs are collective interests where all producers in the region in which a particular product originates have an interest over a GI. 32 The collective nature of the interests in GIs is reflected in the Indian GIs Act 1999 when it permits "[a]ny association of persons or producers or any organization or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods" 33 to apply for registration of GIs. In contrast, the Sri Lankan IP (Amendment) Bill provides that the Minister may prescribe a GI. Yet, to what extent does a Minister represent the interests of producers? It is crucial to ensure that the interests of producers of GI-related products are represented during the process of registration and the subsequent maintenance of those registrations. Government involvement in relation to the maintenance of the GI register may not be in the best interest of those who produce GI-related goods, as the Indian experience suggests. 34 This concerns the controversy surrounding the Basmati GI. The Agricultural & Processed Food Products Export Development Authority applied for, and registered, "Basmati" in India as a GI for rice originating in the Indian states of Punjab, Uttar Pradesh, Uttarakhand, Himachal Pradesh, Jammu & Kashmir, Delhi and Haryana. 35 However, the Government of the state of Madhya Pradesh has demanded that its state be included in the list of states whose producers are entitled to use the Basmati GI. This move has been criticised in view of the possibility that the quality of products bearing the Basmati GI may become questionable in international markets— e.g. the Deputy Director of the Indian Agricultural Research Institute has cautioned: "Claiming rice grown in Madhya Pradesh as basmati is not correct as we have developed seed varieties keeping in mind agro-climatic zones of the Indo-Gangetic plain." 36 Accordingly, it is crucial that governments play an independent and neutral role in determining what indications become included in the register of GIs and the scope of those GIs. Ideally, any legislation (or regulation) dealing with the registration of GIs https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw must provide for the possibility of interested parties (including associations of producers) to make representations concerning registrations of GIs. Thus, in Sri Lanka’s case, conferring discretion on a Minister to prescribe GIs could become the subject of abuse, particularly when the enabling legislation does not provide for a formal mechanism by which interested parties could apply for registration of a GI, or state their objections against a third party’s application for registration. In the circumstances, it is unclear as to what the proposed amendment really seeks to achieve. Particularly, in view of the fact that "registration" of GIs as such in a domestic register is not a prerequisite for seeking protection of local GIs in other jurisdiction, one may wonder whether the change that is sought to be made by the IP (Amendment) Bill is of the kind that was imagined and envisioned by local industries and academics. *171 Conclusion The purpose of this article was to consider the utility of introducing a system for GI registration in Sri Lanka. It was posited that the present regime for the protection of GIs under the IP Act is adequate in achieving a level of legal protection necessary to secure the rights and interests of local producers of GI-related goods. It was suggested that the Sri Lankan Government ought to focus on gaining membership to the special union of the Geneva Act to the Lisbon Agreement on Appellations of Origin and Geographical Indications so that local GIs may be registered directly in the international register that is envisaged under that regime. The adequacy of the current level of legal protection and the probable shift to an international register under the Geneva Act render a local GI register unnecessary and redundant. In any case, if what the proposed amendment to the IP Act seeks to do is to introduce a system for registering GIs, it does so in a problematic fashion—far removed from the expectations of both the industry and academic proponents that support a system for GI registration. Althaf Marsoof Footnotes https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw 1 Assistant Professor, Division of Business Law, Nanyang Business School, Nanyang Technological University, Singapore; BSc (Curtin); LLM (Hons) (Cantab); MPhil (Qld); PhD (KCL); Fellow, Higher Education Academy (UK); Attorney-at-Law (Sri Lanka). 1 "Geographical Indication for Ceylon cinnamon soon" (8 August 2014), Daily Mirror, http://www.dailymirror.lk/business/economy/50568geographical-indication-for-ceylon-cinnamon-soon.html [Accessed 2 January 2018]. 2 "Decision to amend IP law to give ‘cinnamon’ GI protection hailed" (28 October 2016), Daily Mirror, http://www.dailymirror.lk/article/Decisionto-amend-IP-law-to-give-cinnamon-GI-protection-hailed-118237.html [Accessed 2 January 2018]. 3 See e.g. L.M. De Silva, "Geographical Indications – Need of a Registration System for Srilanka" in Proceedings of 8th International Research Conference (Sri Lanka: General Sir John Kotelawala Defence Academy, November 2015), p.43, http://www.kdu.ac.lk/proceedings/irc2015/2015/law-009.pdf [Accessed 2 January 2018]; S.S. Wijeshinghe, "The Protection on Geographical Indications in Developing Countries: The Case of Ceylon Tea" (2015) 1(1) BALANCE 7; P.M.A.S. Pathiraja, "The Protection of Geographical Indications in Sri Lanka: Need of a Registration System", 17th International Postgraduate Research Conference, University of Kelaniya, Sri Lanka (December 2016), p.184, http://repository.kln.ac.lk/handle/123456789/16086 [Accessed 2 January 2018]. 4 Wijesinghe, "The Protection on Geographical Indications in Developing Countries" (2015) 1(1) BALANCE 7, 23. https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw 5 De Silva, "Geographical Indications" in Proceedings of 8th International Research Conference (November 2015), p.46, http://www.kdu.ac.lk/proceedings/irc2015/2015/law-009.pdf [Accessed 2 January 2018]. 6 N. Kamardeen, "The Potentials, and Current Challenges, of Protecting Geographical Indications in Sri Lanka" in I. Calboli and W.L. Ng-Loy (eds), Geographical Indications at the Crossroads of Trade, Development, and Culture Focus on Asia-Pacific (Cambridge: Cambridge University Press, 2017), p.410. 7 See De Silva, "Geographical Indications" in Proceedings of 8th International Research Conference (November 2015), p.47, http://www.kdu.ac.lk/proceedings/irc2015/2015/law-009.pdf [Accessed 2 January 2018]; Wijesinghe, "The Protection on Geographical Indications in Developing Countries" (2015) 1(1) BALANCE 7, 7, Pathiraja, "The Protection of Geographical Indications in Sri Lanka" (December 2016), p.184, http://repository.kln.ac.lk/handle/123456789/16086 [Accessed 2 January 2018]; Kamardeen, "The Potentials, and Current Challenges, of Protecting Geographical Indications in Sri Lanka" in Geographical Indications at the Crossroads of Trade, Development, and Culture Focus on Asia-Pacific (2017), p.432. 8 "Cabinet Decisions – Amendment of the intellectual properties act No 36 of 2003" (20 October 2016), Daily News, http://dailynews.lk/2016/10/20/political/96483 [Accessed 2 January 2018]. 9 "Decision to amend IP law to give ‘cinnamon’ GI protection hailed" (28 October 2016), Daily Mirror, http://www.dailymirror.lk/article/Decisionto-amend-IP-law-to-give-cinnamon-GI-protection-hailed-118237.html [Accessed 2 January 2018]. https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw 10 D.M. Karunaratna, Elements of the Law of Intellectual Property in Sri Lanka (Colombo: Sarasawi Publishers, 2010), p.299. 11 IP Act s.142(2). 12 IP Act s.142(3) (emphasis added). 13 R.A. Yatawara and A. Rajapakse, Gaining Competitive Advantage through the Protection of Geographical Indications: An Analysis of the Tea, Sapphires and Cinnamon Industries of Sri Lanka (Colombo: Institute of Policy Studies, 2009), p.13 (emphasis in original). See also Kamardeen, "The Potentials, and Current Challenges, of Protecting Geographical Indications in Sri Lanka" in Geographical Indications at the Crossroads of Trade, Development, and Culture Focus on Asia-Pacific (2017), p.419. 14 Such as "Ceylon Tea" or "Ceylon Cinnamon". 15 Kamardeen, "The Potentials, and Current Challenges, of Protecting Geographical Indications in Sri Lanka" in Geographical Indications at the Crossroads of Trade, Development, and Culture Focus on Asia-Pacific (2017), p.419. 16 IP Act s.160(2)(a). 17 See e.g. W.A.S.S. Wijesinghe and B.A.R.R. Ariyaratna, "The protection of geographical indications in developing countries: The case of Ceylon Tea" in Proceedings of the Open University of Sri Lanka Annual Academic Session (Sri Lanka: Open University of Sri Lanka, January 2015), http://www.ou.ac.lk/ours/wp-content/uploads/2017/04/HS01-01F.pdf [Accessed: 2 January 2018]. "Registration of Geographical Indications for a particular product in the home country is a pre-requisite for international registration." https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw 18 P.-T. Stoll, J. Busche and K. Arend, WTO–Trade-Related Aspects of Intellectual Property Rights (Leiden: Martinus Nijhoff Publishers, 2009), p.22. 19 Geneva Act art.4. 20 This might change if Sri Lanka becomes party to the Geneva Act, where an international registration would automatically allow for GIs to be protected in all states that are part of the special union. 21 TRIPS art.24(9). 22 See Wijesinghe, "The Protection on Geographical Indications in Developing Countries" (2015) 1(1) BALANCE 7. 23 "Decision to amend IP law to give ‘cinnamon’ GI protection hailed" (28 October 2016), Daily Mirror, http://www.dailymirror.lk/article/Decisionto-amend-IP-law-to-give-cinnamon-GI-protection-hailed-118237.html [Accessed 2 January 2018]. 24 GI Regulation 2081/92 art.12(1). 25 European Communities—Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs, WT/DS174/R (15 March 2005), paras 7.204 to 7.204. 26 Regulation 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (GI Regulation 510/2006). 27 GI Regulation 510/2006 art.5 (emphasis added). 28 See Geographical Indications of Goods (Registration and Protection) Act 1999 (GI Act 1999) s.22(1)(a), (b) and (c) and s.22(3). https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw 29 Kamardeen, "The Potentials, and Current Challenges, of Protecting Geographical Indications in Sri Lanka" in Geographical Indications at the Crossroads of Trade, Development, and Culture Focus on Asia-Pacific (2017), p.410. 30 Intellectual Property (Amendment) Bill 2017 (IP (Amendment) Bill) s.2. 31 GI Act 1999 s.20(1) (emphasis added). 32 D. Ganjee, "Protecting Geographical Indications as Collective Trademarks: The Prospects and Pitfalls" (2006) 14 IIP Bulletin 112. 33 GI Act 1999 s.11(1) (emphasis added). 34 M. Sally and K. Suneja, "Madhya Pradesh May Spoil India’s Basmati GI Party" (16 August 2016), Economic Times, http://economictimes.indiatimes.com/news/economy/agriculture/madhyapradesh-may-spoil-indias-basmati-gi-party/articleshow/53715635.cms [Accessed 2 January 2018]. 35 See S. Bharti and V. Bharti, "Geographical indications: The Basmati rice controversy" (2015) 1(2) International Journal of Legal Developments and Allied Issues 202, 203; and J.C. Fromer, "The Unregulated Certification Mark(et)" (2017) 69 Stanford Law Review 121, 151. The Indian GI register is available at http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/RegisteredGIs-of-India.pdf [Accessed 2 January 2018]. 36 S. Das, "GI battle: Madhya Pradesh govt puts basmati in a rice soup" (28 January 2014), Indian Express, http://indianexpress.com/article/business/business-others/gi-battlemadhya-pradesh-govt-puts-basmati-in-a-rice-soup/ [Accessed 2 January 2018]. https://1-next-westlaw-com.ezlibproxy1.ntu.edu.sg/Document/I40D47FC0100111E89821955F2F869EAA/View/FullText.html?navigationPath=Search%2Fv1%2Fresults%2Fnavigation%2Fi0ad62aee000001623cbb73901b492892%3F 3/19/2018 Does Sri Lanka need a system for registering geographical indications? | International - Secondary Sources | Westlaw © 2018 Sweet & Maxwell and its Contributors E.I.P.R. 2018, 40(3), 164-171 End of Document Westlaw. © 2018 Thomson Reuters Privacy Statement Accessibility © 2018 Thomson Reuters. 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