Unit 5th

GEOGRAPHICAL INDICATION

Introduction
A geographical indication is a type of intellectual property right that is
basically used for product protection with regards to its geographical origin,
and the idea behind it is that the qualities of that product are derived from
the concerned place of production. As the geographical indication is usually
closely tied to the cultural heritage and traditional methods of production of
the particular region the product belongs to, geographical indication helps
not only to preserve and promote these traditions but is also essential for
maintaining cultural diversity and identity.

What is geographical indication

A geographical indication is a sign used on products that has a specific
geographical origin and includes the qualities or reputation of that origin. A
geographical indication is given mainly to agricultural, natural, and
manufactured handicrafts arising from a certain geographical area.
Geographical indications (G.I.) are one of the forms of IPR which identifies a
good as originating in the respective territory of the country, or a region or
locality in that particular territory, where a given quality, reputation or other
characteristic related to the good is essentially attributable to its
geographical origin. The relationship between objects and place becomes so
well known that any reference to that place is reminiscent of goods
originating there and vice versa. It performs three functions:

• First, it identifies the goods as to the origin of a particular region or

locality;
• Secondly, it suggests to consumers that goods come from a region
where a given quality, reputation, or other characteristics of the
goods are essentially attributed to their geographic origin;
• Third, they promote the goods of producers of a particular region.
They suggest to the consumer that the goods come from this area
where a given quality, reputation or other characteristics of goods
are essentially attributable to the geographical region.
G.I. is a kind of sign used for goods that have a specific geographical origin
and possess qualities or a reputation that are due to that particular place of
origin. Basmati rice and Darjeeling tea are examples of G.I. from
India. Article 22 of the TRIPS Agreements defines a geographical indication
as a sign that is used on goods that have a specific geographical origin and
which possess qualities, reputation or characteristics that are essentially
attributable to that particular geographical place of origin.
As a result, India was implemented in 1999 when the TRIPS Agreement was
incorporated as a member state of the Sui-Genis law for the protection of
geographical Indication. The object of the Geographical Indicators Goods
(Registration and Protection) Act, 1999, has three folds:

• By specific laws governing the geographical Indication of goods in

the country, which can adequately protect the interests of the
producers of such goods,
• To exclude unauthorized persons from misuse of geographical
signals protect consumers from fraud, and
• Promoting Indian geographical bearing goods in the export market.
A registered geographic sign prohibits in any way the use of a geographical
insignia which indicates in the designation or representation of goods that
such goods originate in a geographic area. For example, Basmati rice and
Darjeeling tea are examples of G.I. from India. The connection between the
goods and place becomes so much recognized that any reference to the
place reminds those specific goods being produced there and vice-
versa. Some of the Examples of Indian geographical indications which are
registered in India are:

• Basmati rice
• Darjeeling tea
• Banaras Brocades and Sarees
• Coorg orange
• Phulkari
• Kolhapuri chappals
• Kangivaram sarees
• Agra Petha

Geographical Indication in India

In India, Section 2 (1)(g) of the Geographical Indication of Goods
(Registration and Protection) Act 1999, designs geographical indication in
relation to goods to mean and identification which identifies such goods as
agriculture 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 characteristics of such
goods is essentially attributable to its geographical origin and in the case
where such goods are manufactured goods, one of the activities of either the
production aur of processing or preparation of the goods concerned takes
place in such territory, region or locality, as the case may be.
For the purpose of this provision, any name that is not the name of a
country, region or locality of that country shall also be considered a
geographical indication if it relates to a specific geographical area and is used
upon or in relation to a particular goods originating from the country, region
or locality, as the case may be.

Types of geographical indication

Theoretically or otherwise, the geographical indications have been classified
into four types, namely-

1. Quality-neutral geographical indications,

2. Qualified geographical indications,
3. Direct geographical indications, and
4. Indirect geographical indications.

Quality-neutral geographical indication

There is no apparent connection between the distinctive features of the
products and the place of their origin for the quality-neutral geographical
indications. It merely demonstrates that the product is made at the indicated
location by the source indication.

Qualified geographical indication

The qualified geographical indications establish a link between the attributes
or reputation of the products and the nation, area or place that they are
concerned with. A single name is used to designate or identify these
products. These are often referred to as applications of origin.

Direct geographical indication

The products of geographical indication tags for the direct geographical
indications are denoted by the names of the geographical places they belong
to.

For example, tea from Darjeeling is referred to as Darjeeling tea, and

champagne from the place Champagne is famously known as champagne.
Indirect geographical indication
If the public at large believes that the products are identifying a certain
geographical origin, the indirect geographical indications are termed “non-
geographical names or symbols”.

For instance, consider the term “feta,” which has no geographical place in
Greece but is yet claimed by Greece to be associated with a region and
protected by geographical indication law.

Another example is the rice variety known as “Basmati,” which has no

specific location in India. The Trade Agreement on Intellectual Property
Rights covers “other signs of geographical significance, whether… composed
of words, phrases, symbols or emblematic images,” in the event that indirect
geographic indicators are recognised.

Functions of geographical indications

Geographical indications, being a form of intellectual property protection that
is used to identify and promote products that originate from a specific
geographical region, perform a range of economic and other functions that
usually depend upon how the producer is using the geographical indications
in consonance with the consumer’s view of them. The primary functions of
geographical indication are as follows-

It provides for legal protection

Geographical indications are legally recognised and protected under various
national and international laws as well as agreements such as World Trade
Organisation agreements on trade-related aspects of intellectual property
rights. Protection shows that the use of geographical indications is controlled
and monitored, as they are essential for protecting the identity, quality and
reputation of products associated with specific geographic regions, which
benefit both the producers and the consumers.

What are the benefits of protection as a geographical

indication
The research and practice communities in India have given geographic
signals a great deal of attention. Having a product protected by geographical
indicators may have advantages. Although the advantages will differ from
nation to nation, using GIs might boost export revenue and positively impact
rural development. Each must assess in particular if the compromises, if any,
necessary in discussions to extend TRIPS recognition and protection are
justified by the short- and long-term benefits, as well as its current and
potential geographical indications and capacity to administer an extended
system.

Currently, semi-processed goods like coffee and tea, processed meals like
beverages, fruit marmalades, preserves, and sauces, and staples like rice
and salt are all commonly used labels to highlight the GI connection between
a food and a location. Whether used alone or in conjunction with trademarks,
geographical indications, albeit less common than trademarks in terms of
values and volumes processed and sold, have the potential to be very
beneficial for small businesses and rural areas. Numerous foods with
geographical indications are handmade, traditional, and from rural areas.
They are produced by tiny or microbusinesses. These characteristics
frequently increase their allure and cost, particularly when they are offered in
export or domestic niche markets like gourmet or specialised markets.
Furthermore, in many Indian regions, the effective application of
geographical indicators may have a limited but favourable impact on farming,
food processing, rural development, and export revenue. Rural towns could
gain social and economic advantages by promoting their local cuisine.

The study’s most significant conclusion is the unmistakable proof of the

producers’ increased disposable income during the post-geographic indicators
era. The product’s increasing demand pattern following the protection of
intellectual property rights and product diversity may be the cause of the
higher revenue trend. Thus, it can be concluded that providing this
geographical indication with the proper legal protection would greatly benefit
in preventing abuse and spurring economic development.

Geographical indication as an indicator of origin

Geographical indications serve as an identification of the product’s origin or
have some other connection to it. Terroir refers to the entirety of the local
environment, encompassing terrain, soil composition, weather patterns, and
expertise, which geographical indications refer to when they are tagged with
any product.

A widely accepted hypothesis states that the geographical indications serve

as a special combination of the origin and quality functions. They provide
details about the product’s geographical origin as well as non-geographic
characteristics related to that origin. The idea of terroir serves as the
foundation for combining these two roles.

“A relatively small area or surroundings whose geology, topography,

microclimate, flora and other related factors bestow distinctive qualities to a
product” is the narrowest definition of terroir. Every product ought to
represent its location in an eminent manner. As a result, distinct products
can be identified with one another and linked to their place of origin. There is
no justification for referring to things from different regions using the same
geographical term because they are distinct from one another.

Geographical indication acts as a producer’s

device
Geographical indications contribute to the preservation of product originality
and quality. Uniform product quality is ensured by producers operating within
the designated geographical area who frequently adhere to traditional or
particular production processes and norms.

A producer should make an effort to set his products apart from those of
other producers. It has always eluded manufacturers of highly commoditized
goods, like agricultural products, to harness the power of branding.
Geographical indications give producers a new or additional way to identify
their goods as excellent and entice consumers to make additional purchases.
For small-scale producers that cannot afford the substantial expenditures
required to support a single brand, this might be quite important.

As long as the promotion and investment functions are adequately

safeguarded, producers may use regional indications to support the prices of
their products. Producers may capitalise on customer demand for diverse,
high-quality products by using geographic indications to unlock value. This is
why producers find geographic indications valuable.

It provides information to consumers

Geographical indications guarantee that items live up to expectations by
suggesting attributes they possess or that consumers connect with them.
The relevance of a geographical indicator is in the way the customer
associates the name of the geographical place with attributes like flavour,
quality, or other relevant features.

If there is no reciprocity or association between the geographical region and

the quality attribute, then the geographic indication will be clearly worthless
for the consumer. Information helps consumers make logical decisions.
Obtaining information regarding the quality of a product that cannot be
examined or evaluated before purchase is frequently challenging and time-
consuming. You have to take risks. The product’s source helps the customer
recognise it and offers a range of subjective expectations regarding its
quality and features. These expectations might be derived from
advertisements, past usage, or even suggestions from others. Since certain
items cannot be replicated elsewhere, it is imperative to prevent misleading
indications in the interest of customers if a geographical indication conveys
non-geographical traits developed from the product’s geographical origin.

Consumers are shielded against the use of false or misleading labels by the
information offered by registering a geographical indicator, which also gives
them options for products and information to help them make decisions.

It helps in preventing misuse

Geographical indications guard against the unapproved use of a product’s
name, stopping third parties from falsely promoting goods as being from the
same place of origin. This keeps customers from becoming confused and
safeguards the original product’s reputation.

It protects local cultures and traditions

Geographical indications contribute to the preservation of culture by
preserving traditional production techniques, consumption patterns, and
cultural identity. The protection of geographical indications begins with this
function. Protection of geographical indications and related rules may only be
warranted if the indicators truly serve their intended purposes. It is
appropriate to use geographic indicators to preserve regional customs,
national culture, and cultural variety. This is due to the fact that geographical
markers, rather than encouraging innovation, reward producers who stick to
the customs of the production location.

Geographical indicators protect national treasures from imminent extinction

and also raise the marketing value of traditional artisan products. Products
with regional designations can be “cultural,” according to Broude, in three
ways:

1. the production culture of it,

2. the consuming culture of it, or
3. as a component of cultural identity.

It promotes rural development as well as

sustainability
Products with a geographic indication have a significant impact on producers
in developing nations. The fact that these traditional goods and activities are
tied to social structures is one of their salient features. For their food,
security, and health, many people in underdeveloped nations rely on these
traditional practices. For the impoverished in many nations, traditional
medicine offers the only affordable option.

A good indicator should be protected because of its touch of rural and

traditional attributes. Maintaining a high standard of quality is essential to
building a solid reputation and, frequently, a monopoly that allows you to
charge more. Geographical indications can thus support significant corporate
interests by helping to promote a region’s products.

It provides a competitive advantage

Products with geographical indications eventually enjoy a competitive

advantage in the market because they are associated with a particular

region’s quality, heritage and unique characteristics.

History of geographical indication

Governments are protecting trade names and trademarks used in the context
of food products identified from a particular region, which until the late
nineteenth century, laws were used or passed against inaccurate trade
descriptions, which Usually protect against suggestions that have a certain
origin, quality, of the product. , or association when it does not. In such
cases, the competitive freedom that arises from the grant of a monopoly of
use on a geographic indication is justified by governments for consumer
protection benefits or producer protection benefits.

One of the first G.I. systems used in France since the early part of the
twentieth century is known as the Appellate d’Orgine Controloli (AOC). Items
which meet geographic origin and quality standards can be approved with a
stamp of government that serves as the official certification of the product’s
origin and standards to the consumer. Examples of products that have such
‘appellation of origin’ include Gruyère cheese (from Switzerland) and several
French wines.

Among the major developing economies, India has a quick and efficient G I
tagging mechanism.

Geographical indications have been associated strongly with the concept of

Terrero and as a unit with Europe, where there is an existence of a tradition
of linking certain food products with particular regions and their origin. India
has put in place a Sui Generis system of legislation for G.I. security as well
as G.I. protection in particular. “Sui Generis” can be termed as of its own
kind and involves laws which are recognized nationally. The laws relating to
the preservation of G.I.s in India are the ‘Geographical Indications
(Registration and Protection) Act, 1999’ (G.I. Act), and the ‘Geographical
Indications (Registration and Protection of Goods) Rules, 2002 (G.I. Rules).
India enacted its G.I. law for the country to enforce national intellectual
property laws in compliance with India’s obligations under TRIPS. Under the
G.I. Act, under the G.I. Act, since 15 September 2003, the Central
Government has established a Geographical Indication Registry in Chennai,
with the jurisdiction of Pan-India, where rights holders can register their G.I.

International stance on geographical indication

Since ancient times, geographical indications have been the most common
and popular assignments for specific items. Before the coming of agreement
on the Trade-related Aspects of Intellectual Property Rights, there were three
International multilateral agreements which were working on the issue of
protection of geographical indication, namely –

1. The Paris Convention

2. The Madrid Agreement
3. The Lisbon agreement

The Paris Convention

The Paris Convention represented 1883 industrial property security, which
limited bogus and deceitful indications through more extensive and broad
measures. It defined geographical indicators as indications of sources or
appellations of origin.

The appellation of origin is a special kind of geographical indication that has

been mentioned under this convention but has not been defined.

An indication of source is any expression or sign that indicates that a product

or service originates in a country, origin or specific place where it has
originated. For example, made in India or champagne.

The Madrid Agreement

The Madrid Agreement for the Repression of False and Deceptive Indications
of Sources on Goods of 1989 expressly targeted its smothering and
obstructing weakening of geographical indications into non-exclusive terms.
It provided better protection for geographical indications as it prohibited
misleading indications along with false indications.

The Lisbon Agreement

The Lisbon Agreement of 1958 provides a strong insurance policy
intercontinental in-role mint arrangement in geographical science. It ensured
appellation of origin guarantee. It offered stronger protection for
appellations.

The characteristics of the above-mentioned three conventions, coupled with a

few additional ones, safeguard the trade-related aspects of intellectual
property rights agreements against geographical indications in the world.

TRIPS and Geographic Indication

Member states of the Trade-related Aspects of Intellectual Property Rights
treaty are required to provide the mechanism that enables interested parties
to prevent untruthful and misleading uses of geographical indication.

For instance, tea growers in Nepal may not call their tea Darjeeling tea or
Kangra tea, even if the tea grown is genetically identical.

The literal truth is not a defence if geographical indication misleads the

public. Article 23 of the trade-related aspects of intellectual property provides
for additional protection for a geographical indication of vines and spirits. It
includes three important elements, which are-

• The provision in the legality means for interested parties to prevent

the use of a geographical indication identifying wines and spirits not
originating in the place indicated by the geographical indication.
• The possibility to refuse or invalidate the registration of a trademark
for vines or spirits that contains or consists of a geographical
indication identifying wines and spirits is at the request of an
interested party.
• There would be a possibility to call for future negotiations aimed at
increasing protection for individual geographical indications for wine
and spirits.
Article 24 of the trade-related aspects of intellectual property rights provides
for an exception and expressly reserves the right to use geographical
indications that are identical with the term customary in common language.
The name has become a common or generic term. For instance, cheddar now
refers to a particular type of cheese not necessarily made in Cheddar of the
United Kingdoms.

Benefits of geographical indications

The organizations or companies who register their geographical indications
enjoy various advantages from the registration, including:

1. Registered geographical indications have the exclusive right to

access or use G.I.’s products during the business.
2. Authorized users enjoy the right to sue for infringement.
3. It provides legal protection to geographical signs in India.
4. Prevents unauthorized use of registered geographical indications by
others.
5. It provides legal protection to Indian geographical signals which in
turn promotes exports.
6. It promotes the economic prosperity of producers of goods produced
in a geographical area.
7. A registered owner can also approach for legal protection in other
WTO member countries.
8. It provides legal protection to the respective goods in domestic as
well as international markets.

Infringement of geographical indication

A registered geographical indication is violated by a person who is not a

registered proprietor or authorized user who uses such a sign on the
goods or suggests that such goods originate in another geographic
area, which confuses someone other than the actual place of goods
public. A geographical indication of the trademark also infringes upon
any use that constitutes an act of “unfair competition”, a detailed
explanation of 1 and 2 of Section 2(b). This provision seeks to give
effect to Article 22(2)(b) of the TRIPS Agreement, which requires
members to “provide legal means for interested parties to prevent any
use that the Article 10bis of the Paris Convention (1967). A
geographical indication is also violated by a person who is not a
registered proprietor or authorized user, who uses another geographical
indication for the goods, which is actually true as to the region, or
locality from where the goods originated and publicly misrepresentation
that goods originate in a region, or a locality to which such registered
geographical indicators belong.
Article 22 (4) of the TRIPS Agreement states that the preservation of
the geographical Indication of a trademark must be enforced even if
the G.I. “is truly true as to the area, region, or locality in which the
goods are in another territory” is generated “.

When someone uses a registered geographical indicator for which they

are not legally permitted to do so, that use is considered an
infringement. The use of a registered geographical indication in any
way to indicate or suggest that goods originate in a location other than
their true origin or to present goods in a way that misleadingly directs
consumers towards that location constitutes infringement by an
unauthorised user.

Therefore, it is illegal to use a registered geographical indication if

someone-

Uses the product’s geographic indicator to suggest in a way that

deceives the public that the items are made somewhere other than
where they really originate,

Makes use of the geographic indication in a way that would be

considered unfair competition,

Uses a different geographical indication for the commodities in a way

that deceives the public into believing that the items are made in the
area, region, or place that is associated with the registered
geographical indication.

The rights holder must provide proof in the complaint that-

The geographical indication of the rights holder is being used in

connection with goods in an alleged infringement, which may cause
confusion among the public as to where the infringing goods originated.
The alleged infringement involves a mark that is identical to or similar
to the geographical indication of the rights holder.

The illegal act infringed upon the right holder’s exclusive use of rights,
resulting in financial loss for the right holder or damaging the right
holder’s goodwill and reputation.

Upon becoming aware of any infringement, the rights holder may send
a cease and desist notification to safeguard its geographical mark
against unapproved usage. After that, the rights owners may choose to
file a criminal or civil lawsuit against the infringer, depending on the
infringer’s response.
Remedies for infringement of geographical indication
Remedies relating to infringement of geographical indications are similar to
remedies related to trademark infringement. Similarly, under the (Indian)
Geographical Indicators Goods (Registration and Protection) Act, 1999,
falsification of a geographical indication. Remedies which are available for
conservation of geographical indications may be broadly classified into two
categories:

(i) Civil remedies

• Injunction
Injunctions include temporary injunction and permanent injunction. An
injunction is granted for the protection of violations of related items,
documents or other evidence in respect of the subject of the suit. An
injunction is granted for restricting the defendant from disposing of or
dealing with his products which may adversely affect plaintiffs’ ability to
recover damages, costs or other pecuniary remedies which may be finally
awarded to the plaintiff as compensation of damage. The aforesaid remedy of
injunction is more effective and can prevent greater harm to the plaintiff. Or
other peculiar remedies that may eventually be given to the plaintiff.

• Damages
The remedy of damages or account of profits in the form of compensatory
damages is available to prevent infringers from infringement. Damages
(other than nominal losses) or accounts of profits may be ruled out Where
the defendant satisfied the court that he was unaware and there was no
reasonable basis for that Assuming that the plaintiff’s geographical Indication
was registered when he was engaged in using it; And when he became aware
of the existence and nature of the geographical Indication, he stopped using
it.

• Delivery of the infringing labels and indications containing products

It is in the court’s discretion to order the infringer to deliver up infringing
labels and indications for destruction by taking relevant circumstances into
consideration the court may or may not order for such remedy. All the
mentioned remedies are also available for the action of passing off. The
actions of Passing off are initiated against the infringement of unregistered
geographical indications.

ii) Criminal Treatment.

Criminal remedies are more effective as compared to civil remedies because

the former can be disposed of quickly. Pendency of civil suits does not justify
a stay of the criminal proceedings which involve the same question. Criminal
proceedings directly attack the violator’s honour and social status In some
cases he comes forward for the Settlement of the matter out of court to save
their reputation. Chapter VIII of the Act deals with offences and punishment
for such crimes. The Act has penal provisions for violation of various
provisions related to Geographical indications which are discussed below:

• Falsifying and incorrectly applying geographical indications to the

goods.
• Selling goods to which false geographical indications apply.
• Misrepresentation of a geographical indication in registered form.
• Improperly describes a place of geographically connected business
indication Registry.
• Falsification of entries in the register.
The punishment granted for the infringement offences varies from six
months to three years imprisonment and a fine of not less than rupees fifty
thousand but may extend to rupees two lakh. However, the court for
adequate and special reasons in writing may grant lesser punishment.

Geographical idications as a tool for economic development

The ramifications of geographical indications for goods for producers in
developing countries are substantial. The connection between these
traditional goods and activities and community involvement is one of their
key features. These kinds of traditional activities are essential to the health
and food security of millions of people living in poor nations. For those in
need, traditional medicines may offer the only accessible, cost-effective
treatment. Any trade benefit derived from the geographical indications
classification is essentially pro-poor, given that geographical indications
typically rely on products like agriculture, fishery, handicrafts, and artisanal
goods. This is in contrast to other intellectual property rights, such as
trademarks and patents, where the majority of the beneficiaries are wealthy
individuals.

By bringing in more money and job possibilities locally, improved

geographical indications, protection and marketing could have a direct impact
on lowering absolute poverty. As a result, geographical indications can
greatly advance human development and have a role to play in lowering
poverty vulnerability.

Furthermore, the local producers and the surrounding economy stand to gain
from a few fundamental geographical indication characteristics. Below are
their details-

1. First, as long as local knowledge is maintained and the indication is

kept from becoming generic, geographical indications are retained
indefinitely and without time restriction. This indicates that the
 primary purpose for which marketing expenses are required is to
inform customers about upcoming product advancements.
2. Secondly, the entitlement is bestowed upon a group of producers
rather than a single producer. As a result, everyone in the
community will gain, which could boost the local economy.
3. Third, geographical indications, in contrast to patents and
copyrights, are recognised rather than created, meaning that
investments are limited to enhancing the reputation of an already-
existing product, whereas patents and copyrights are associated
with the creation of new items.
Through its reputation as a reliable source of income, geographical
indications certification lessens the vulnerability of rural impoverished people
to poverty, which in turn discourages migration from rural to urban areas by
keeping rural farmers on their farms.

This has two important ramifications, which are as under-

1. First, the indigenous knowledge of the place does not disappear;

rather, it develops into a more refined form, and
2. Second, the migratory rate decline lessens the strain on
metropolitan centers, which are frequently overcrowded in
developing nations.
Additionally, the geographical indications might promote tourism in the area.
The geographic location and geographical indications of goods may interact
in both directions. In a sense, the environment in which geographical
indications of goods were produced may be responsible for some of their
quality attributes. In addition, the geographical indications’ widespread
appeal fosters a positive perception of the area, which supports the growth of
the tourism industry, which in turn supports neighborhood businesses and
community development.

Registration
While registration of GI is not mandatory in India, Section 20 (1) of the GI Act
states that no person “shall” be entitled to institute any proceeding to prevent,
or to recover damages for, the infringement of an “unregistered” GI. The
registration of a GI gives its registered owner and its authorized users the
right to obtain relief for infringement [11]. The GI Registry with all India
jurisdictions is located in Chennai with the Controller-General of Patents,
Designs and Trade Marks is the Registrar of GIs, as per Section 3(1) of the
GI Act. Section 6(1) further stipulates maintenance of a GI Register [12] which
is to be divided into two parts: Part A and Part B. The particulars relating to
the registration of the GIs are incorporated in Part A, while the particulars
relating to the registration of the authorized users are contained in Part B
(Section 7 of the Act).
A GI 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. The Registrar is
required to classify the goods, as far as possible, in accordance with the
International classification of goods for the purposes of registration of GI
(Section 8 of the Act). A single application may be made for registration of a
GI for different classes of goods and fee payable is to be in respect of each
such class of goods[13].

In India a GI may initially be registered for a period of ten years, and it can be
renewed from time to time for further periods of 10 years [14]. Indian law place
certain restrictions in that a registered GI is not a subject matter of
assignment, transmission, licensing, pledge, mortgage or any such other
agreement

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. 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. Though, India, like many other
common law countries, does not have a statute specifically dealing with unfair
competition, most of such acts of unfair competition can be prevented by way
of action against passing-off. 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.

Any lawsuit relating to infringement of a registered GI or for passing of an

unregistered GI has to be instituted in a district court having jurisdiction to try
the suit. No suit shall be instituted in any court inferior to a district court
[Section 66 of the Geographical Indications of Goods (Registration and
Protection) Act, 1999].

Who can apply for geographical indication registration

Any person, manufacturer, organization or authority established by or under
the law may apply for the registration of Geographical Indication of their
product.
 1. The respective Applicant should represent the interests of
producers.
2. The Application should be in the prescribed form in writing, which
mentions each and every detail about the product.
3. The Application should be addressed to the Registrar of
Geographical Indicators along with the prescribed fee for the
registration of the product.

Whom to apply
The Application must be submitted to the Registrar under the Act, the
Controller of Patents, Designs and Trademarks who are appointed under sub-
section (1) of Section 3 of the Trademarks Act 1999 shall be the Registrar of
Geographical Indications. He shall be assisted by the respective number of
the officers, who are appointed by the central government as they may think
fit.

A full modern patent office and the country’s first geographical indication
(G.I.) registry in Chennai is a really good step in this field. The Registry will
further supplement this by meeting the requirements outlined in the Act.
Every application should be filed in the Office Registry of Geographical
Indication within the territorial boundaries of the country or region or locality
in the country where the geographical indications are situated.

Whom to consider as the registered proprietor of a

geographical indication
The registered proprietors of Geographical Indications are:

• A person, manufacturer, organization or association established

under law or legislation may be a registered owner.
• Their name must be entered in the Register of Geographical
Indicators as there are registered owners for the Geographical
Indication.

Requirement of registration
Under the Indian Act, no protection is conferred on an unregistered
geographical indication. Consequently, the proprietor of an unregislative
geographical indication has no remedy against the infringement of his mark.
So, one can conclude that the registration of geographical indications is
mandatory under the laws of India.
However, passing off action by the original proprietor of a mark has not been
barred.

Tirupati Laddu Controversy

In the Tirupati Laddu controversy, public interest litigation was filed before
the Madras High Court against the geographical indication tag for the Tirupati
Laddu.

That petition was dismissed on the ground that an alternative and efficacious
forum was available for the adjudication of such disputes, and hence, the
public interest litigation was dismissed with directions to the petitioner to
approach the appropriate authority for the same.

Under the Geographical Indication Act, such a petition could have been filed
either before the geographical indication registry or the Intellectual Property
Appellate Board.

Mr. R.S. Praveen Raj, a resident of Thiruvananthapuram and a scientist

at the National Institute of Interdisciplinary Science and Technology, made a
play against the geographical indication tag of laddus.

The petition raised certain issues fundamental to the nature of geographical

indication protection on the grounds of violation of Section 11(1), Section
9(a) as the registration is likely to deceive consumers, and Section 9(d) as
the registration is likely to hurt the religious susceptibilities of the community
in India.

It was rejected by the geographical indication registry of Chennai, stating

that the applicant failed to prove locus santdi and interest in the registered
goods.

Jamnagar Petrol
Reliance Industries Limited had filed the geographical indication application
for Krishna Godavari gas and Jamnagar petrol, diesel and LPG.

The application sought authorised usage of the name Jamnagar LPG for oil,
petroleum and diesel. Though the application was published in the journal, it
was abandoned midway by Reliance Industries Limited in the wake of two
separate oppositions to it.
Section 11(2) of the Geographical Indication Act mandates an application to
contain a statement that proves or establishes that the geographical
indication to designate the goods originating from the concerned region in
respect of specific quality, reputation and other characteristics that are due
exclusively or essentially to the geographical environment with its inherent
nature and the human factor.

Under specification, Reliance Industries Limited stated that the required

standards are met by its petrol, fuel, diesel and LPG. There was no mention
of any unique properties possessed by the goods in the application by
Reliance Industries Limited except compliance with the standards of
the International Organization of Standardization.

Basmati Rice
In September 1997, the United States granted a patent to Ricetec
Incorporation, which is a United States multinational company, for new lines
and grains in the name of basmati rice.

This was objected to by two Indian non-government organizations.

The Centre for Scientific and Industrial Research also objected to it. All of
them called for a revision of United States rights standards to specify that
the term basmati can be used only for rice grown in India and Pakistan and
Jasmine for Thai rice.

The Indian government, after putting together the evidence, officially

challenged the patent in June 2000.

The contention of Ricetec was that the name basmati is not a name of
geographical rice, and hence, it is not qualified for protection under the
trade-related aspect of the intellectual property rights agreement.

However, it was proved that though the name basmati is not a name for any
geographical area, it’s still inextricably linked to its region of origin, that is,
India.

Ricetec also contended that basmati is a generic name and has fallen into the
public domain.

In 2000, after litigation and hearings, the United States Patent Trademark
Office granted patents only to a few varieties instead of the sweeping claim
of new lines and grains.

It was against this backdrop that the Geographical Indication Act of India
was passed in 1999.
Darjeeling Tea
Tea Board, a statutory authority of the Government of India established in
1953 under the Tea Act of 1953 for the purpose of controlling the Indian tea
industry, owns the geographical indication for Darjeeling tea, which is the tea
grown in 87 gardens in the district of Darjeeling.

The keyboard has fought more than 15 cases against the infringement and
misuse of Darjeeling tea.

The board was successful in seeking rejection of the trademark application

for Darjeeling Nouveau in the name of the Republic of Tea, United States of
America, on the basis of its geographical certification mark for Darjeeling
word and logo.

The opposition had been filed by the tea board before the Trademark Trial
and Appeal Board.

The Trademark Trial and Appeal Board held that the Republic of Tea had not
proved that consumers view Darjeeling tea as a generic type as opposed to
tea grown in the Darjeeling region of India.

It also recognised the tea board’s continuing effort to maintain control of the
mark and protect its value as a geographical indication.

The trade mark trial and appeal board held that the regulations and licensing
program put in place by the tea board constitute adequate provision for
control.

In its decision, the Court of Appeal, Paris, held that Mr. Dusong’s mark of
Darjeeling with a cattle device impairs the geographical indication of
Darjeeling and is prejudicial to the tea board’s interest in the same.
Accordingly, the impugned mark was nullified.

Registration process of geographical indications

Step 1: Application filing

Please check if the Indication falls within the definition of Section 2(1)(e) of
the Gl Act.

The association of individuals or producers or any association or authority

should represent the interest of the producers of the goods concerned and
file an affidavit as to how the Applicant claims to represent their respective
interests.

• Applications must be made in triplicate.

• The Application must be signed by the Applicant or his agent and
must be accompanied by a description of the case.
• Describe the special features and how those standards are
maintained.
• Three certified copies of GI-related field maps.
• Description of the inspection structure if there is an area for
regulating the use of G.I.
• Provide details of all applicants with the address. If there are a large
number of manufacturers, then collective reference applications for
all producers of goods and G.I. should be made. If registered, it
should be indicated accordingly in the register. The Application must
be sent to a respective address in India.
Steps 2 and 3: Preliminary Examination and Examination

• The examiner will check the Application for any deficiencies.

• The Applicant should take measures in this regard within one month
of communication.
• The content of the case description is evaluated by an advisory
group of experts who will master the subject.
• Furnished will ascertain the correctness of the description.
• After that, an examination report will be issued.

Step 4: Show cause notice

• If the Registrar has any objection to the Application, he shall file

such objection.
• Applicant must reply within two months or apply for a hearing.
• The decision will be duly communicated. If the Applicant wants to
appeal, he can request it within a month.
• The Registrar also has the right to withdraw an application, if it is
mistakenly accepted, after giving it on the occasion of a hearing.
Step 5: Publication in Geographical Indication Journal
Every Application, within three months of acceptance, will be published in the
Geographical Indications Journal.

Step 6: Resist Registration

• Any person opposing the G.I. application, published in the journal,

can file a notice of protest within three months (another month
upon request which is to be filed before three months).
• The Registrar will provide a copy of the notice to the Applicant.
• Within two months, the Applicant will send a copy of the counter
statement.
• If he does not do so, he is believed to have dropped his Application.
Where a counter-claim has been filed, the Registrar will serve a copy
on the person giving notice of the protest.
• Thereafter, both parties will lead their respective evidence through
affidavits and supporting documents.
• After this, the date of hearing of the case will be fixed.
Step 7: Registration of Application

• Where an application for G.I. has been accepted, the Registrar will
register the Geographical Indication. If the date of filing the
Application after being registered will be considered as the date of
registration.
• The Registrar will issue a certificate to the Applicant with the seal of
the Geographical Indicators Registry.
Step 8: Renewal of Application

A registered G.I. will be valid for 10 years and can be renewed on payment
of a renewal fee.

Step 9: Additional Security for Notified Goods

An application can be made to the Registrar for respective goods which are
notified by the Central Government for additional protection for the
registration of geographical Indication in Form GI-9, there will be three
copies of the case details and three copies of the issued notification.

The Application will be made jointly by the registered owner of Geographical

Indication in India and jointly by all the producers of Geographical Indication.
Step 10: Appeal

Any person who is aggrieved by an order or decision may prefer an appeal to

the Intellectual Property Appellate Board (IPAB) within three months.

Validity of registration
The Registrar’s certificate of registration serves as initial proof that the
geographical indication was properly registered. Without further evidence of
original production, it is admissible as sole evidence in all courts and before
the Appellate Board.

Effect of registration
The Geographical Indications Act does not require the registration of
geographical indications. Better legal protection against violations of
registered geographical indicators is provided to authorised users by
registration.

However, no infringement proceedings may be initiated to stop infringement

or to recover damages in the case of unregistered geographical indications.
No one will have the exclusive right to use any of those geographical
indicators; instead, two or more approved users will have co-equal rights
against other parties. The following rights come with registration-

• Subject to the restrictions and conditions associated with

registration, registration grants the exclusive right to use the
registered geographical indicator with respect to the goods to which
it refers. There are co-equal rights for two or more co-users.
• Additionally, registration grants the right to infringement remedies.
• If a passing-off action has already been launched, its scope will be
expanded as a result of the registration of a geographic indication
while the case is pending.

What are the subject matters which are not registrable under
geographical indication
For registration, the indications should fall within the purview of Section 2(1)
of the Geographical Indication Act, 1999. When this happens, it must also
meet the provisions of Section 9, which prohibits the registration of a
geographical indication.
 • The use of which would cause confusion or confusion; or
• The use of which shall be contrary to the time of enactment of any
law; or
• Which includes or is libellous or indecent matter; or
• Which is likely to involve or cause force injury at any time; Religious
sensitivity of any class or class of citizens of India; or
• Which would otherwise be destroyed for protection in a court; or
• Those determined to indicate common names or objects and,
therefore, to be preserved in their country of origin or which are not
in use in that country; or
• However, this is actually true as the area or locality in which the
goods originate but misrepresents the individuals that the goods
originate in another area, region or locality as the case may be.

Rights granted to the holders

• Right to sue: The exclusive rights have been granted to the person
who is protected under the Geographical Indication Act and,
therefore, can be inherited, gifted, sold, licensed, entrusted or
mortgaged. The holder of geographical Indication has a type of
property that he can use subject to certain conditions and take legal
action against a person who uses his invention without his consent.
Does and can receive compensation against real property.
• The right to grant license to others: The holder has the right to
transfer a license or grant a license or enter into any other
arrangement for consideration regarding their product. A license or
assignment must be given in writing and registered with the
Registrar of geographic indications, for it to be valid and legitimate.
• Right to exploit: Authorize user exclusive right to use geographic
Indication with respect to geographic goods for which the
geographic Indication is registered.
• Right to get reliefs: Registered Proprietors and authorized Users or
Users have the right to obtain relief in relation to the violation of
such geographical Indication.

Prepared by Sanabel Uzma