Geographical Indications

Article 22.1 of TRIPS- Geographical indications are, 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
geographical origin. They signify specific goods that originate from a particular country,
region, or locality and possess unique characteristics, qualities, or a reputation attributable to
that origin. These distinctive traits may arise from factors such as local raw materials, soil
conditions, regional climate, temperature, moisture, or traditional production methods.
In India, the 2(1)(e) Geographical Indications Act defines “geographical indication”, in
relation to goods, as an indication which identifies such goods as agricultural goods,
natural goods or manufactured goods as originating, or manufactured in the territory of a
country, or a region or locality in that territory, where a given quality, reputation or other
characteristic of such goods is essentially attributable to its geographical origin and in case
where such goods are manufactured goods one of the activities of either the production or
of processing or preparation of the goods concerned takes place in such territory, region or
locality, as the case may be. Under the said section, protection is guaranteed to agricultural,
natural and manufactured goods, where a given quality or reputation or such other
characteristic can be attributed to originating in the particular region to which the goods
belongs.
Geographical Indications (GIs) in India are protected under the Geographical Indications of
Goods (Registration and Protection) Act, 1999. Here are the essentials of GIs in India:
 Essentials for Geographical Indications in India
Specific Geographical Origin: The product must originate from a specific geographical
area, which could be a country, region, or locality. The geographical area must be clearly
defined in terms of its boundaries.
Qualities, Reputation, or Characteristics: The product must possess certain qualities,
reputation, or characteristics that are attributable to its geographical origin. These attributes
can be due to natural factors (e.g., climate, soil) or human factors (e.g., traditional production
methods).
Types of Products: GIs can be used for agricultural goods, natural goods, handicrafts,
manufactured goods, and foodstuffs.’
Examples
 Darjeeling Tea: Known for its unique flavor and quality, Darjeeling tea is a registered
GI.
 Pashmina: Fine cashmere wool from Kashmir, known for its softness and warmth.
 Basmati Rice: Aromatic rice variety grown in specific regions of India.
 Kanchipuram Silk Sarees: Handwoven silk sarees from Kanchipuram, Tamil Nadu,
known for their intricate designs and quality.
Benefits of GI
Economic Value:
- Enhances market recognition and consumer trust.
- Protects the goodwill associated with the geographical origin of the product.
Legal Protection:
- Provides legal recourse against unauthorized use and imitation.
- Prevents misuse and preserves the authenticity of the product.
Rural Development:
- Encourages rural development and boosts the local economy.
- Promotes traditional knowledge and skills.
Consumer Assurance:
- Assures consumers of the quality and authenticity of the product.
- Provides a distinctive identity in the market.
Appellation of Origin and Indication of Source
The Appellation of Origin and Indication of Source can be termed as indications that comes
within the purview of Geographical Indications. The international recognition of GIs in effect
begins with the definition of ‘Industrial Property’ in Article 1(2) of the Paris Convention,
which refers to both the Indication of Source and the Appellation of Origin alongside more
familiar categories: The protection of industrial property has as its object patents, utility
models, industrial designs, trademarks, service marks, trade names, indications of source or
appellations of origin, and the repression of unfair competition. The Madrid Agreement
extended the scope of protection for the Indication of Source. It can be defined as an
‘expression or sign used to indicate that a product or service originates in a country, region or
specified place’. The protection of Appellation of Origin began from the adoption of Lisbon
Agreement. The Agreement defines it as the geographical name of a country, region or
locality that serves to designate the product originating therein, the quality and
characteristics, which are exclusively or essentially due to the geographical environment,
including natural and human factors. Appellation of Origin can be termed as a product that
originates in a specific geographical region and the characteristic qualities of the product are
due to the geographical environment, including natural and human factors. Most of the
agricultural produce falls under Appellation of Origin.
Difference Between trade Marks and GIs
1. A trademark is a symbol, name, or identity of a firm that is used to distinguish one
entity’s goods or services from those of another. A car is still an automobile, but the
manufacturer’s trademark allows it to be differentiated. BMW and Audi, for example,
are the trademarks of the respective automobile manufacturers. In the case of a GI, the
name denotes the product’s place of origin, and any producer in that geographic
region can use the GI for that product.
 2. A geographical indication (GI) is essentially a collective protection provided to a
group of producers from a specified place where the commodity was initially created.
A trademark, on the other hand, can be registered by a single person or a company,
both.
3. While Registered Trademark in a person’s name and address may only be used by
that person or manufacturer, every manufacturer or producer in the same territory is
permitted to use the same GI.
4. A trademark can be a letter, a word, digits, or a combination of characters and
numbers, as well as an abbreviation, name, gadget, hologram, sound, or odour. A GI,
on the other hand, can only be a name or a symbol associated with a location.
5. A Trademark is available for both goods and services whereas GI is meant only for
goods unique to a geographical region.
6. The individuality or uniqueness of a trademark is determined by human ingenuity or
intellect. It is possible for a trademark to be suggestive, descriptive, or arbitrary. A GI
is a code that identifies a product based on its origin. The nature of the GI is
determined by factors like geography, human labor, and the environment of a certain
geographical place.
7. GI is a right enjoyed by a community / association of producers (community right).
For instance, Assam Muga Silk has GI conferring rights to all such traders from that
community. Trademark is a right enjoyed by only one person/company (individual
right).
8. The Indian Trademarks Act 1999 governs trademarks, whereas the Geographical
Indications of Goods (Registration and Protection) Act 1999 governs GIs.

Duration and Renewal

The registration of a GI is valid for ten years. It can be renewed indefinitely for further
periods of ten years each upon payment of the renewal fee. (Section 18)
Registration of Geographical Indications
Section 8 of the Act provides that a geographical indication may be registered in respect of
any or all of the goods, comprised in such class of goods as may be classified by the Registrar
and in respect of a definite territory of a country, or a region or locality in that territory, as the
case may be. The Registrar may also classify the goods under in accordance with the
International classification of goods for the purposes of registration of geographical
indications and publish in the prescribed manner in an alphabetical index of classification of
goods. Any question arising as to the class within which any goods fall or the definite area in
respect of which the geographical indication is to be registered or where any goods are not
specified in the alphabetical index of goods published shall be determined by the Registrar
whose decision in the matter shall be final.
Who are Entitled for Registration?
As per Section 11 any association of persons or producers or any organisation or authority
established by or under any law representing the interest of the producers of the concerned
goods can apply for the registration of a geographical indication. The Applicant has to be a
legal entity and should be representing the interest of producers of the goods applied for. Any
such organisation or association being not that of the producers may have to prove that they
represent the interest of producers. Any Applicant Authority also has to prove that they
represent the interest of producers.
Contents of Application
The application should include the requirements and criteria for processing a GI application
as specified below:
 A statement as to how the geographical indication serves to designate the goods as
originating from the concerned territory of the country or region;
 The class of goods;
 geographical map of the territory or locality in which goods are produced;
 The particulars of appearance of the geographical indication;
 Particulars of producers;
 An affidavit of how the applicant claims to represent the interest in the GI;
 The standards benchmark for the use or other characteristics of the GI;
 The particulars of special characteristics;
 Textual description of the proposed boundary;
 The growth attributes in relation to the GI pertinent to the application;
 Three certified copies of the map of the territory, region or locality;
 Particulars of special human skill involved, if any;
 Full name and address of the association of persons or organization;
 Number of producers; and
 Particulars of inspection structures, if any, to regulate the use of the GI. [Rule32].
On receipt of the application, a number is allotted. Thereafter, the examiner scrutinizes the
application to check whether it meets the requirements of the GI Act and the Rules.
Deficiencies if any found through a preliminary examination would be communicated by the
Examiner to the Applicant. The deficiencies need to be complied within the time limit
mentioned in the communication. [Rule31] Upon compliance of the deficiencies, the
Registrar shall ordinarily constitute a Consultative Group of experts (not more than seven
representatives) to as certain the correctness of the particulars furnished in the Statement of
Case. After issuance of the Examination Report, submissions of the applicant would be
considered. If no further objection is raised, the application would be accepted and published
(within three moths of acceptance) in the Geographical Indications Journal. [Rule, 34&38]
After advertisement of a Geographical Indication in the Geographical Indications Journal,
any person may within three months oppose the registration of an application for GI. This
period may be extended by a period, not exceeding one month, by making an application to
the Registrar along with the prescribed fee. Such an application for extension shall be filed
before the expiry of the period of three months. The Notice of Opposition shall be filed only
before the Registrar of Geographical Indications at Chennai.
The following geographical indications are prohibited from registration under section 9 of the
act:
A geographical indication
1. the use of which would be likely to deceive or cause confusion;
2. the use of which would be contrary to any law for the time being in force ;
 3. which comprises or contains scandalous or obscene matter;
4. which comprises or contains any matter likely to hurt the religious susceptibilities of
any class or citizens of India.
5. which would be disentitled to protection in the court of law.
6. which are determined to be generic names or indications of goods and are, therefore,
not or ceased to be protected in their country of origin, or which have fallen into
disuse in that country;
7. which, although literally true as to the territory, region or locality in which the goods
originate, but falsely represent to the persons that the goods originate, but falsely
represent to the persons that the goods originate in another territory, region or locality,
as the case may be, shall not be registered as a geographical indication.

Rights Conferred by Registration

Section 21 provides for the rights conferred by registration of a geographical Indication. The
registration of a geographical indication shall provide:

(i) to the registered proprietor and the authorized user or users the right to obtain
relief in respect of infringement of such geographical indication;
(ii) to the authorized user the exclusive right to the use of the geographical indication
in relation to the goods in respect of which the geographical indication is
registered.

Infringement of Registered Geographical Indication

A person, who is not an authorized user of a registered geographical indication infringes it

when he
a) uses such geographical indication by any means in the designation presentation of
goods that indicates or suggests that such goods originate in a geographical area other
than the true place of origin of such goods in a manner which misleads the persons as
to the geographical origin of such goods, or
b) uses any geographical indication in such manner which constitutes an act of unfair
competition including passing off in respect of registered geographical indication or
c) uses another geographical indication to the goods which, although literally true as to
the territory, region or locality in which the goods originate, falsely represents to the
persons that the goods originate in the territory, region or locality in respect of which
such registered geographical indication relates

When There is no Infringement?

Where the goods in respect of which a geographical indication has been registered are
lawfully acquired by a person other than the authorized user of such geographical indication,
further dealing in those goods by such person including processing or, packaging does not
constitute an infringement of such geographical, indication, except where the condition of
goods is impaired after they have been put in the market."
Prohibition of Assignment or Transmission
A geographical indication is a public property. Any right to a registered geographical
indication is not a subject matter of assignment, transmission, licensing, pledge, mortgage or
any such other agreement. However, on the death of an authorized user his right in a
registered geographical indication shall devolve on his successor in title.

Institution of the Suit before District Court

A suit (i) for the infringement of a registered geographical indication; or (ii) relating to any
right in a registered geographical indication; or (iii) for passing off arising out of the use by
the defendant of any geographical indication which is identical with or deceptively similar to
the geographical indication relating to the plaintiff, whether registered or unregistered shall
be instituted before the district court having jurisdiction to try the suit.
The term 'district court having jurisdiction' includes a district court within the local limits of
whose jurisdiction, the person or one of the persons instituting the suit or proceeding actually
and voluntarily resides or carries on business or personally works for gain. The term 'person'
includes the registered proprietor and the authorized user.

Civil Remedies

The Act provides for the following civil remedies for the infringement of a registered
geographical indication:

(i) Injunction
(ii) Damages or account of profits
(iii) Delivery-up of the infringing labels and indications.

These remedies are inclusive, not exhaustive and the court may provide some other remedies
in addition to the aforesaid, such as Anton Piller order.
Injunction
Injunction includes temporary injunction and permanent injunction. Further the court may
also order an ex parte injunction for -
(a) discovery of documents;
(b) preserving of infringing goods, documents or other evidence which are related to the
subject-matter of the suit; and
(c) restraining the defendant from disposing of or dealing with his assets a manner which
may adversely affect plaintiff's ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.
The aforesaid remedy of injunction is more effective and can prevent a greater harm to the
plaintiff.
Damages or account of profits
The remedy of damages or account of profits is not cumulative but alternative The plaintiff
has to elect one of the two remedies at an earlier stage of the sat The remedy of damages
(other than nominal damages) or account of profits may be denied where defendant satisfies
the court that he was unaware and had no reasonable ground for believing that the
geographical indication of the plaintiff was registered when he commenced to use it; and that
when he became aware of the existence and nature of the plaintiff's right in the geographical
indication, he forthwith ceased to use it.
Delivery-up of the infringing labels and indications
It is in the discretion of the court to order the defendant to deliver-up the infringing labels and
indications for destruction and erasure. The court by taking relevant circumstances into
account may or may not order for such remedy.
In Scotch Whisky Association & Others v. Golden Bottling Ltd., the plaintiff brought an
action for passing off against the defendant, who was manufacturing and selling "Red
Scotch" whisky. The plaintiff argued that the word "Scot" or "Scotch" is a geographical
indication within the meaning of Article 22.1 in as much as it identifies whisky produced in
Scotland. Agreeing with the plaintiff. the court held that "defendant is liable to be restrained
from passing off its "Red Scot" whisky as a produce of Scotland. This can only be done by
injuncting the defendant from using the word "Scot" or any other word similar thereto in the
whisky manufactured by it." In addition to the relief of permanent injunction. the court also
granted damages to the extent of Rs. 5 lakhs as prayed by the plaintiff.
Rights of Action Against Passing-Off
The GI Act in India specifies that nothing in this Act “shall” be deemed to affect rights of
action against any person for passing off goods as the goods of another person or the
remedies in respect thereof (Section 20). In its simplest form, the principle of passing-off
states that no one is entitled to pass-off his/her goods as those of another. The principal
purpose of an action against passing off is therefore, to protect the name, reputation and
goodwill of traders or producers against any unfair attempt to free ride on them.
Incorporation of TRIPS in GI Act
 The definition of "geographical indication" as an indication that identifies goods as
originating in a specific territory, region, or locality where a given quality, reputation,
or characteristic of the goods is essentially attributable to their geographical origin
aligns with Article 22.1 of the TRIPS Agreement.
 Section 11 outlines the process for applying for the registration of a GI, including the
requirement for details about the geographical origin and characteristics of the goods.
This section ensures that the application provides necessary information to prevent
misleading use, aligning with Article 22.2 and 22.3 of TRIPS.
 Section 13 prohibits the registration of GIs that are likely to deceive or cause
confusion, are contrary to law or morality, or have become generic. This is in line
with Article 22.2 and Article 24.6 of the TRIPS Agreement, which prevent the misuse
and deceptive use of GIs.
 Section 21 provides remedies for the infringement of registered GIs, including
injunctions and damages. This section is consistent with Article 23.1 of TRIPS, which
requires additional protection for GIs of wines and spirits against unauthorized use.
  Section 22 deals with the relationship between GIs and trademarks, including
provisions for the coexistence of GIs with prior trademarks. This aligns with Article
24.5 of the TRIPS Agreement, which allows for the coexistence of GIs and prior
trademarks under certain conditions.
 Notably, Article 24.3 of TRIPS clearly states that in implementing the TRIPS
provisions on GIs, a Member is not required to diminish the protection of GIs that
existed in that Member immediately prior to the date of entry. This flexibility has been
utilised by India in the GI Act (Section 20(2)) in maintaining the right of action
against passing-off, which has been a part of the common law tradition of India, even
prior to the advent of the TRIPS Agreement.
 According to Article 23(1) of the Agreement on Trade-related Aspects of Intellectual
Property Rights (TRIPs Agreement), India is obligated to prevent use of a
geographical indication that identifies wines or spirits not originated in the place
indicated by the geographical indication, even where the true place of origin of the
goods is indicated or where the geographical indication is used in translation or
accompanied by expression such as "kind", "type"," "imitation" or the like. Section
22(3) of the Act extends this concept not only to wines but also to goods of national
interest on a case-to-case basis. According section to 22(3), therefore, it is an
infringement to use a geographical indication in respect of goods not originating in the
place indicated by such geographical indication or even if true origin of goods is also
indicated, but the GI is accompanied by expression such as "kind", "style", "imitation"
or the like expression.
Case Laws
 Madhya Kshetra Basmati Growers Association Samiti v. Intellectual Property
Appellate Board, Chennai
In the case of *Madhya Kshetra Basmati Growers Association Samiti v. Intellectual Property
Appellate Board, Chennai*, the Agricultural and Processed Food Products Export
Development Authority (APEDA) sought to register 'Basmati' as a Geographical Indication
(GI) in India, claiming specific areas in several states as traditional Basmati cultivating
regions. The GI application excluded 13 districts in Madhya Pradesh, leading the Madhya
Kshetra Basmati Growers Association Samiti to file objections. They argued that the
exclusion was unjustified and that APEDA's demarcation of Basmati-growing areas was
vague and unscientific. The Assistant Registrar initially directed APEDA to re-file with
clearer boundaries, but the Intellectual Property Appellate Board (IPAB) later upheld
APEDA's application. The Assistant Registrar ultimately rejected the inclusion of the 13
Madhya Pradesh districts, prompting the Association to challenge this decision in the High
Court of Madras. The High Court dismissed the initial petitions but allowed the issues to be
raised in pending petitions, leading to the current special leave petition by the Association.
 Tea Board of India vs. Mitsui Norin KK, Japan
In this case, India’s Tea Board objected to application for ‘Divine Darjeeling’ in Class 30
(Darjeeling tea, coffee and cocoa produced in Darjeeling, India). The opposition was
primarily for three reasons-
1. ‘divine’ is a laudatory word and therefore the symbol for which protection is sought is
merely ‘Darjeeling’ which is simply not distinguishable;
 2. ‘Divine Darjeeling’ is deceptive in so far as ‘Darjeeling coffee and cocoa’ is
concerned, because Darjeeling district does not grow coffee and cocoa;
3. Darjeeling tea qualify as a geographical indication in compliance with international
convention, including TRIPS, and should be protected as Japan is a member of
TRIPS.
Particularly on the ground that the ‘Divine Darjeeling’ mark as a whole was not misleading or
deceptive of the nature of the products, the Japan Patent Office Opposition Board rejected the
invalidation action brought by the Tea Board of India. However, the non-use cancellation
action succeeded because the licensed proprietor was unable to report sufficient evidence to
prove the use of the mark in Japan.
The concept of Geographical Indications (GIs) inherently emphasizes community rights over
private rights. Here's an explanation of community rights versus private rights in the context
of GIs:

Chat GPT Content

### Community Rights

**Definition**: Community rights refer to the collective rights of a group of producers or

communities within a specific geographical area. These rights are linked to the production,
processing, and marketing of goods that have unique qualities attributed to their geographical
origin.

**Key Features**:
1. **Collective Ownership**: GIs are typically owned collectively by all producers in a
designated geographical region. No single individual or company can claim exclusive
ownership of a GI.
2. **Shared Benefits**: The benefits of GI protection, such as enhanced market recognition
and premium pricing, are shared among all producers within the region.
3. **Cultural Heritage**: GIs protect traditional knowledge, cultural practices, and methods
of production that are unique to the region.
4. **Quality Standards**: Products must adhere to specific quality standards and production
methods to maintain the GI status. This ensures consistency and maintains the reputation of
the GI.
5. **Economic Development**: GIs contribute to the economic development of the region
by promoting local products and creating opportunities for local producers.

**Examples**:
- **Darjeeling Tea**: The GI for Darjeeling tea is held by all tea producers in the Darjeeling
region, ensuring that only tea grown and processed in this region can be labeled as Darjeeling
tea.
- **Champagne**: The GI for Champagne protects the use of the term for sparkling wine
produced in the Champagne region of France, preserving traditional production methods and
benefiting local producers.

### Private Rights

**Definition**: Private rights refer to the individual rights of a person or business entity over
intellectual property such as trademarks, patents, or copyrights. These rights allow the owner
to exclude others from using their intellectual property.

**Key Features**:
1. **Individual Ownership**: Private rights are typically owned by individuals, businesses,
or organizations. The owner has exclusive rights to use, license, or sell the intellectual
property.
2. **Exclusive Benefits**: The benefits of private rights, such as profits from the sale or
licensing of the intellectual property, accrue solely to the owner.
3. **Innovation and Branding**: Private rights protect innovations, inventions, and brand
identity, encouraging investment in research, development, and marketing.
4. **Market Control**: Owners of private rights can control how their intellectual property is
used, ensuring that it aligns with their business strategies and goals.
5. **Enforcement**: Private rights are enforced by the owner, who can take legal action
against infringement or unauthorized use.

**Examples**:
- **Nike Swoosh**: The Nike "Swoosh" logo is a trademark owned by Nike, Inc., granting
the company exclusive rights to use and license the logo.
- **Apple Patents**: Apple Inc. holds patents for various technologies used in its products,
preventing others from using these technologies without permission.

### Community Rights vs. Private Rights in the Case of GIs

**Purpose and Focus**:

- **Community Rights**: Focus on protecting the collective heritage and interests of a
community or region. GIs ensure that the traditional knowledge and cultural practices
associated with a geographical area are preserved and that the economic benefits are
distributed among local producers.
- **Private Rights**: Focus on protecting the interests and investments of individual owners.
Trademarks, patents, and copyrights provide exclusive rights that allow the owner to
capitalize on their innovations and brand identity.

**Ownership and Benefits**:

- **Community Rights**: GIs are collectively owned, and the benefits are shared among all
producers in the designated region. This promotes inclusivity and equitable distribution of
economic gains.
- **Private Rights**: Owned by individuals or entities, with benefits accruing solely to the
owner. This can lead to significant economic gains for the owner but does not necessarily
benefit a wider community.

**Legal Framework**:
- **Community Rights**: GIs are protected under laws specific to geographical indications,
such as the Geographical Indications of Goods (Registration and Protection) Act, 1999 in
India. These laws emphasize collective ownership and community benefits.
- **Private Rights**: Protected under various intellectual property laws, including trademark
laws, patent laws, and copyright laws. These laws provide mechanisms for individual
protection and enforcement.

**Examples and Case Studies**:

- **Basmati Rice**: The GI for Basmati rice protects the collective interests of farmers in
specific regions of India and Pakistan, ensuring that only rice grown in these regions can be
labeled as Basmati.
- **Roquefort Cheese**: The GI for Roquefort cheese benefits all producers in the
Roquefort-sur-Soulzon region of France, preserving traditional cheese-making methods and
supporting the local economy.

### Conclusion

In summary, GIs embody the principle of community rights, emphasizing collective

ownership, shared benefits, and the protection of cultural heritage. In contrast, private rights
focus on individual ownership and exclusive benefits, supporting innovation and brand
identity. Both forms of protection are essential in the broader framework of intellectual
property, serving different but complementary purposes.