IPR Unit 5th
IPR 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.
• Basmati rice
• Darjeeling tea
• Banaras Brocades and Sarees
• Coorg orange
• Phulkari
• Kolhapuri chappals
• Kangivaram sarees
• Agra Petha
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.
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.
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.
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.
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.
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 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:
• 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.
Furthermore, the local producers and the surrounding economy stand to gain
from a few fundamental geographical indication characteristics. Below are
their details-
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
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.
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.
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.
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.
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.
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 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.
Please check if the Indication falls within the definition of Section 2(1)(e) of
the Gl Act.
• 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.
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.
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.
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.