. /.RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/277/Add.3
19 September 2001
(01-4447)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  Spanish
REVIEW OF LEGISLATION
Reply by Honduras to the Follow-Up Question Posed by the
European Communities and their Member States
Addendum
By means of a communication from the Permanent Mission of Honduras, dated
10 September 2001, the Secretariat has received the following reply to the follow-up question posed
by the European Communities and their member States, circulated in document IP/C/W/274/Add.1.
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Follow-up to question 17
Please explain whether Article 23.2 of the TRIPS Agreement has been explicitly
transposed into Honduras legislation.  If so, please explain how it fully respects the requirements
of this provision.  If not, please explain how Article 23.2 of the TRIPS Agreement is directly
applicable in Honduras and how citizens of th e WTO Members can directly enjoy its protection.
Honduras's Industrial Property Law defines a geographical indication as a name, appellation,
expression, image or sign that indicates, directly or indirectly, that a product or service comes from a
particular country, group of countries, region, locality or place (Article 79, subparagraph 8).  Whenthe geographical indication refers to specific characteristics of the product which are due to the
geographical origin of its production, including human and natural factors, it is called an appellation
of origin (Article 79, subparagraphs 8 and 9 of the Industrial Property Law).
The TRIPS Agreement (Article 22) protects geographical indications which identify a good as
originating in the territory of a Member, where a given quality, reputation or other characteristic of
the good is essentially attributable to its geographical origin, i.e. when it has the characteristics that
define an appellation of origin under Honduran law.  Members have the obligation to establish
mechanisms in their legislation to prevent:
(a) The use of any means that indicates or suggests that the good in question originates in
a geographical area other than the true place of origin of the good;
(b) the use of a geographical indication which constitutes an act of unfair competition;
(c) the registration of a trademark which consists of a geographical indication if the
trademark is requested with respect to the same goods identified in the geographical
indication as originating in that territory;IP/C/W/277/Add.3
Page 2
(d) the cancellation of the registration of a trademark which consists of a geographical
indication and that was obtained for the same products identified by the geographical
indication.
In all of the above cases, the obligation exists provided that the utilization of the geographical
indication could mislead the consumer as to the true place of origin of the good.
In the case of wines and spirits, broader protection is provided for.  Members have the
obligation to prevent the use of geographical indications identifying wines and spirits not originating
in the place indicated by the geographical indication, even where:
(a) The true origin of the wine or spirit is indicated;(b) the geographical indication is used in translation;(c) the geographical indication is accompanied by expressions such as "kind", "type",
"style", "imitation" or the like.
In other words, the prohibition of the use of geographical indications identifying wines or
spirits applies even if the consumer is advised of the true origin of the good or instead of the exact
geographical indication, a translation thereof is used.
Consequently, Members are required to refuse the registration of a trademark which consists
of a geographical indication identifying wines or spirits when such registration is requested for wines
or spirits that do not originate in that territory and, where the trademark has already been registered, to
invalidate that registration, either ex officio or at the request of an interested party (Article 23.1 and
23.2 of the TRIPS Agreement).
Honduran law includes the provision laid down in Article 22.2 of the TRIPS Agreement, and
prohibits the registration of trademarks which:
(a) May mislead trade circles or the public as to the source, nature, method of
manufacture, qualities, suitability for use or consumption, quantity or any other
characteristic of the product or services concerned (Article 83, subparagraph 9);
(b) consist of a geographical indication that is not sufficiently arbitrary or distinctive with
respect to the goods or services to which it is applied (Articles 82 and 83,
subparagraph 11).  According to this provision, when it comes to registering
geographical indications identifying wines and spirits as trademarks for these samegoods, they are not considered to be arbitrary and distinctive geographical
indications.
The registration of a trademark granted in contravention of the above paragraph may be
cancelled at the request of the interested party (Article 105 of the Industrial Property Law).  Althoughthere is no specific provision for requesting that the registration of a trademark containing a
geographical indication identifying wines or spirits be invalidated, when the trademark has been
obtained for the same products, the interested person may request the invalidation of the registration,
because in such cases, the geographical indication registered as a trademark is not considered arbitrary
or distinctive with respect to the products to which it applies.  There is no set time-limit for requesting
the invalidation of a registration (Article 105 of the Industrial Property Law).
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