2.3.14.

Famous Case Law:

Coca-Cola Company vs. Bisleri International Pvt. Ltd.
‗MAAZA‘, a popular mango fruit drink in India, is a registered
Trademark of an Indian company, Bisleri International Pvt. Ltd.
The company transferred the rights (formulation, IPR and goodwill,
etc.) to a beverage company, Coca-Cola, for the Indian Territory.
However, in 2008, the Bisleri Company applied for registration of
Trademark ‗Maaza‘ in Turkey and started exporting the product
with the mark ‗MAAZA‘. This was unacceptable to the Coca-Cola
Company and thus filed a petition for permanent injunction and
damages for passing-off and infringement of the Trademark.
It was argued on behalf of Plaintiff (Coca-Cola Company) that
as the mark ‗Maaza‘ concerning the Indian market was assigned to
Coca-Cola, and manufacture of the product with such mark, whether
for sale in India or for export, would be considered as an
infringement. After hearing both the parties, the court finally
granted an interim injunction against the defendant (Bisleri) from
using the Trademark MAAZA in India as well as for the export
market, which was held to be an infringement of Trademark.
2.4. Industrial Designs
The word ‗Design‘ is defined as the features of shape,
configuration, pattern, ornament or composition of lines or colours
applied to any article. The Design may be of any dimension i.e. one
or two or three dimensional or a combination of these. In addition, it
may be created by any industrial process or means, whether manual,
mechanical or chemical, separate or combined, which in the finished
article appeal to and is judged solely by the eye. But the word
‗Design‘ does not include any mode or principle of construction or
anything which is in substance a merely mechanical device.
The main object of registration of industrial Designs is to
protect and incentivize the original creativity of the originator and
encourage others to work towards the art of creativity.
2.4.1. Eligibility Criteria
The Design for which the protection is being sought must be
novel or original i.e., should not be disclosed to the public by prior

80
publication or by prior use or in any other way. The Design should
be significantly distinguishable from the already registered
Designs existing in the public domain.
2.4.2. Acts and Laws to Govern Industrial Designs
In India, Industrial Designs are governed under ‗The Designs
Act‘, 2000 (http://www.ipindia.nic.in/acts-designs.htm) and ‗Design
Rules‘, 2001 (http://www.ipindia.nic.in/rules-designs.htm), which
have been amended from time to time in 2008, 2013, 2014 and
2019. The Design should include the following characteristics:
 It should be novel and original.
 It should be applicable to a functional article.
 It should be visible on a finished article.
 There should be no prior publication or disclosure of the
Design.
A list of Industrial Designs can be accessed from
https://www.creativebloq.com/product-design/examples-industrial-
design-12121488. Some of the famous Industrial Designs are
mentioned below:
Coca-Cola Bottle - The contoured-shaped glass bottle of the Coca-
Cola Company is marvelled as a master showpiece in the field of
industrial design. It was designed in 1915 and is still a cynosure for
all eyes.
Piaggio Vespa - Piaggio is an Italian company famous for
manufacturing Vespa scooters. These scooters are sold worldwide
since 1940s. The structural design of the scooter is pleasing to the
eyes. This two-wheeler has a painted steel body concealing the
engine, driver‘s feet rest comfortably on a flat floorboard, the front
vertical portion comprising of a handle, breaks and speedometer has
ample space for hands‘ grip and also provides protection from
incoming wind air.
iPhone - It is a highly popular mobile phone manufactured by
American company ‗Apple Inc‘. The sleek, handy and rectangular
body is pleasing to the eyes. The corners are round and smooth. The
features, such as on/off and speech volume, are easy to operate.
Mini Cooper - Mini Cooper is an automobile car manufactured by

81
the British Motor Corporation in the later part of the 20th century. It
is a small size car. Its shape has been designed in a unique manner
so as to provide plenty of space (nearly 80%) for passenger seating
and luggage storage.
Rocking Wheel Chair - It is a sleek, circular-shaped chair which
provides smooth rocking motion. There is a provision for a
headlight in the upper part of the chair.
Juicy Salif - It is a citrus juice squeezer and considered an iconic
structural design. The alumina-based body has been moulded in the
shape of a fish called as a squid.
2.4.3. Design Rights
The Design registration also confers a monopolistic right to the
Proprietor by which he can legally exclude others from reproducing,
manufacturing, selling, or dealing in the said registered Design
without his prior consent. The Design registration is particularly
useful for entities where the shape of the product has aesthetic value
and the entity wishes to have exclusivity over the said novel and
original Design applied to its product(s) or article(s).
2.4.4. Enforcement of Design Rights
Once the applicant has been conferred with the rights over a
specific Design, he has the right to sue the person (natural/entity) if
the pirated products of his registered design are being used. He can
file the infringement case in the court (not lower than District Court)
in order to stop such exploitation and for claiming any damage to
which the registered proprietor is legally entitled. The court will
ensure first that the Design of the said product is registered under
the Designs Act, 2000. If the Design is found not registered under
the Act, there will not be legal action against the infringer. If the
infringer is found guilty of piracy or infringement, the court can ask
him to pay the damage (₹ 50,000/-) in respect of infringement of
one registered Design.
2.4.5. Non-Protectable Industrial Designs in India
 Any Industrial Design which is against public moral values.
 Industrial Designs including flags, emblems or signs of any
country.

82
 Industrial Designs of integrated circuits.
 Any Design describing the ‗process of making of an article‘.
 Industrial Designs of – books, calendars, certificates, forms and
other documents, dressmaking patterns, greeting cards, leaflets,
maps and plan cards, postcards, stamps, medals.
 The artistic work defined under Section 2(c) of the Copyright
Act, 1957 is not a subject matter for registration for Industrial
Designs, such as:
o Paintings, sculptures, drawings including a diagram, map,
chart or plan.
o Photographs and work of architecture.
o Any other work related to artistic craftsmanship.
 Industrial Designs does not include any Trademark (The
Designs Act, 2000).
2.4.6. Protection Term
The outer ‗Shape or Design‘ of a product makes it more
appealing and acts as the value-adding factor to the product.
Therefore, there is a need to protect one‘s creation from being used
by third parties‘ without consent from the original creator. The
registered Designs are protected for 10 years in India and can be
extended by 5 years after making a renewal application.
2.4.7. Procedure for Registration of Industrial Designs
2.4.7.1. Prior Art Search - Before filing an application for
registration of Industrial Designs, it is prudent to ensure that the
same or similar Design has not been registered earlier. This search
can be carried out using various search engines, such as:
 Design Search Utility (CGPDTM)
(https://ipindiaservices.gov.in/designsearch/).
 Global Design Database (WIPO)
(https://www3.wipo.int/designdb/en/index.jsp).
 Hague Express Database (WIPO)
(https://www3.wipo.int/designdb/hague/en/#).
 Design View (EUIPO) (https://www.tmdn.org/tmdsview-
web/welcome#/dsview).

83
2.4.7.2. Application for Registration - Once the applicant is
satisfied that his Design is novel and significantly distinguishable
from other Designs, he can proceed with filing an application for
Design registration. The application for registration of Design can
be filed by an individual, small entity, institution, organization and
industry. The application may be filed through a professional patent
agent or legal practitioner. If the applicant is not a resident of India,
an agent residing in India has to be employed for this purpose. The
applicant submits the registration application at the Design Office
Deputy Controller of Patents & Designs, Patent Office, Intellectual
Property Office Building, CP-2 Sector V, Salt Lake City, Kolkata-
700091.
After the application has been filed, an officer (examiner)
analyses the application for qualifying the minimum standards laid
down for eligibility criteria for registration. In case of any query, the
same is sent to the applicant and he is supposed to respond within 6
months from the objection raised. Once the objections are removed,
the application is accepted for registration. The particulars of the
application, along with the representation of the article, are
published in the Official Journal of Patent Office
(http://www.ipindia.nic.in/journal-patents.htm). If no objection is
received from the public, the Design is registered. After the
registration of the Design, the applicant becomes the proprietor of
the Design and is conferred with the exclusive right to apply that
Design to the article belonging to the class in which it is registered.
The applicant puts up a request for issuance of a certificate of
registration (for an Industrial Design). A flow chart of the
registration process is mentioned below:

84
 Figure 2.10: Flowchart for the process of Design registration.

Source: https://allthingspatent.wordpress.com (slightly modified)

2.4.8. Duration of the Registration of a Design

Initially, the Design registration is valid for ten years from the
date of registration. In the case wherein the priority date has been
claimed, the duration of the registration is counted from the priority
date. The period of registration may be extended further for five
years. An application has to be made in Form-3 accompanied by
prescribed fees to the Controller General before the expiry of the
said initial period of ten years.
2.4.9. Importance of Design Registration
Registration of Design ensures the exclusive rights of the
applicant on the Design. The owner can prevent the registered
Design products from piracy and imitation. This helps the owner to
boost the sale of the products and establish goodwill in the market.

85
2.4.10. Cancellation of the Registered Design
The registration of a Design may be cancelled at any time. The
petition has to be filed in Form-8 with prescribed fee to the
Controller of Designs. The application can be made on the
following grounds:
 Design has already been registered.
 Design has been published in India or elsewhere before the date
of registration.
 Design is not novel and original.
 It is not a Design under Clause (d) of Section 2.
2.4.11. Application Forms
There are a total of 24 forms pertaining to Industrial Designs.
A list of important forms is mentioned below.

Table 2.10: List of important form related to Industrial

Designs.
Fee (₹ )
Form
S. No Name of the Form Natural Small Large
No.
Person Entity Entity
Application for
1. Form-1 1,000 2,000 4,000
registration of Design.
Application for the
2. Form-4 1,000 2,000 4,000
Restoration of Design.
Application for
3. Form-3 2,000 4,000 8,000
renewal of Design.
Petition for
cancellation for
4. Form-8 1,500 3,000 6,000
registration of a
Design.
Notice of intended
exhibition or
5. Form-9 500 1,000 2,000
publication of
unregistered Design.

86
 Application for entry
of name of proprietor
6. Form-11 500 1,000 2,000
or part proprietor in
the Register.
Request for
7. correction of clerical Form-14 500 1,000 2,000
error.
Request for certified
8. Form-15 500 1,000 2,000
copy.
Application for
9. rectification of Form-17 500 1,000 2,000
Register.
10. Notice of opposition. Form-19 100 200 400
Source: http://www.ipindia.nic.in/designs.htm

2.4.12. Classification of Industrial Designs

Designs are registered in different classes as per the Locarno
Agreement, 1968; https://www.wipo.int/classifications/locarno/loc
pub/en/fr/). It is used to classify goods for the registration of
Industrial Designs as well as for Design searches. The signatory
parties have to indicate these classes in the official documents too.
The classification comprises a list of classes and subclasses with a
list of goods that constitute Industrial Designs. There are 32 classes
and 237 subclasses that can be searched in two languages i.e.
English and French.
For example, Class 1 includes foodstuff for human beings,
foodstuffs for animals and dietetic foods excluding packages
because they are classified under Class 9 (Bottles, Flasks, Pots,
Carboys, Demijohns, and Pressurized Containers). Class 32
classifies the Design of graphic symbols and logos, surface patterns,
ornamentation.
2.4.13. Designs Registration Trend in India
Figure 2.11 represents the statistics for Industrial Designs (filed,
examined and registered) for the period 2010-20. During this period,
an increase of 88%, 117% and 33% was observed in the parameters
of Designs filed, examined and registered, respectively. In all three

87
parameters, the graph depicts a similar pattern (more or less) with
the highest numbers observed in 2019-20 for Designs filed (12,268),
examined (13,644) and registered (14,272).
Figure 2.11: Industrial Designs profile (India)
for the period 2010-20).

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.4.14. International Treaties

The WIPO has put in place two important treaties (international)
dealing with the smooth functioning of various aspects of Industrial
Designs:
 Hague Agreement for international registration (1925)
(https://www.wipo.int/treaties/en/registration/hague/)
 Locarno Agreement (1968) for international classification
(https://www.wipo.int/treaties/en/classification/locarno/)
2.4.15. Famous Case Law:
Apple Inc. vs. Samsung Electronics Co.
In 2011, Apple Inc. filed a case against Samsung Electronics
Co. in the United States District Court for the Northern District of
California for infringing their Designs and Utility Patents of the user
interface like screen app grid and tap to zoom. As evidence, Apple
Inc. submitted the side-by-side image comparison of the iPhone
3GS and the i9000 Galaxy S to demonstrate the alleged similarities
in both models. However, later it was found that the images were

88
tempered by the Apple Company to match the dimensions and
features of the controversial Designs. So the counsel for Samsung
Electronics blamed Apple of submitting false and misleading
evidence to the court and the company countersued the Apple
Company in Seoul, South Korea; Tokyo, Japan; and Mannheim,
Germany, United States District Court for the District of Delaware,
and with the United States International Trade Commission (ITC) in
Washington D.C. The proceedings continued for the 7 years in
various courts. In June 2018 both companies reached for a
settlement and Samsung was ordered to pay $539 million to Apple
Inc. for infringing on its patents.

89
2.5 Geographical Indications

In every country, there are certain regions famous for their

traditional knowledge/heritage in various sectors, such as
agriculture, food products, textiles, etc. People from far-off places
used to travel to buy these products. For example, Christopher
Columbus sailed from Spain to import world-famous spices from
India. British people travelled to Arabian countries to import
Arabian horses for siring fast running horses for commercial gains.
Similarly, China silk and Dhaka Muslin have been in great demand
from times immemorial. The reputation of these products was built
upon and painstakingly maintained by the experts/masters of
respective geographical locations. The know-how of these reputed
products was passed onto future generations. With the passage of
time, a specific link between the goods produced and geographical
location evolved, resulting in the growth of Geographical
Indications (GI).
A GI is defined as a sign which can be used on products
belonging to a particular geographical location/region and possesses
qualities or a reputation associated with that region. In GI, there is a
strong link between the product and its original place of production.
2.5.1. Acts, Laws and Rules Pertaining to GI
In India, GI was introduced in 2003 and is governed under the
‗Geographical Indications of Goods (Registration & Protection)
Act, 1999‘ and the Geographical Indications of Goods (Registration
& Protection) Rules, 2002.
2.5.2. Ownership of GI
The ownership/holders of GI (registered) can be of the
producers, as a group/association/ cooperative society or association
or in certain cases, government.
2.5.3. Rights Granted to the Holders
 Right to grant the license to others - The holder has the right
to gift, sell, transfer/grant a license, mortgage or enter into any
other arrangement for consideration regarding their product. A

90
 license or assignment must be given in written and registered
with the Registrar of GI, for it to be valid and legitimate.
 Right to sue - The holder of GI has the right to use and take
legal action against a person who uses the product without his
consent.
 Right to exploit - The holder of GI can authorize users with
exclusive right to use goods for which the GI is registered.
 Right to get reliefs - Registered proprietors and authorized
users have the right to obtain relief concerning the violation of
such GI products.
2.5.4. Registered GI in India
GI products registered in India belong to the domains of
handicrafts, agricultural, food stuffs, alcoholic beverages, etc. The
first GI tag was granted in 2004 to Darjeeling Tea and the latest
being Kashmir Saffron and Manipur Black rice (Chakhao) in May
2020. A total of 370 GI have been registered in India till May 2020.
(http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/GI_Appl
ication_Register_10-09-2019.pdf). Nearly 58% of these belong to
handicrafts, followed by agriculture (30%). Other categories belong
to food stuff, manufacturing, and natural goods. In the Handicraft
category, Tamilnadu holds the maximum number (21) of GI
followed by Uttar Pradesh (20) and Karnataka (19). A few standout
GI are mentioned in table 2.11:
Table 2.11: List of popular GIs registered in India.
GI Type State
Darjeeling Tea Agriculture West Bengal
Mysore Silk Handicraft Karnataka
Kashmir Pashmina Handicraft Jammu & Kashmir
Banaras Brocades and
Handicraft Uttar Pradesh
Sarees
Naga Mircha Agriculture Nagaland
Tirupathi Laddu Foodstuff Andhra Pradesh
Punjab, Haryana,
Phulkari Handicraft
Rajasthan
Basmati Agriculture India
Source: http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/GI_Application
_Register_10-09-2019.pdf

91
 International countries, such as Thailand, France, Portugal,
Italy, Mexico, Peru and the United Kingdom, have also filed GI in
India e.g. Champagne (wine) of France and Scotch Whisky of the
United Kingdom.
2.5.5. Identification of Registered GI
Registered GI products are granted a tag, which is printed on the
registered products. The tag confirms the genuineness of the product
in terms of its production (by set standards) and location of
production. Non-registered GI products cannot use/exploit this tag.
By and large, GI tags represent the place of origin (of the product)
along with cultural and/or historical identity e.g. Darjeeling Tea,
Mysore Silk, Tirupathi Laddu, etc.
In India,GI tags are issued by the Geographical Indication
Registry under the Department for Promotion of Industry and
Internal Trade, Ministry of Commerce and Industry. The head of GI
registry is at Geographical Indications Registry Intellectual Property
Office Building, Industrial Estate, G.S.T Road, Guindy, Chennai -
600032.
GI registered products can be grown/produced in any part of the
world using standards laid down by the GI Registry. However, these
products cannot be labelled as GI as they are not produced/
manufactured in a specific geographical location, as mentioned in
the official records maintained by the GI Office of GI. For example,
plants of Darjeeling Tea can be grown in any part of India. But the
tea leaves of these plants cannot be sold under the brand name of
Darjeeling Tea, as the concerned plants were not grown in the soil
and climate of the Darjeeling area.
2.5.6. Classes of GI
GI certified goods are classified under 34 different classes, such
as Class 1 is for chemicals used in industry, science, photography,
agriculture, horticulture and forestry; unprocessed artificial resins,
unprocessed plastics; manures; fire extinguishing compositions;
tempering and soldering preparations; chemical substances for
preserving foodstuffs; tanning substances; adhesives used in
industry. Class 33 is for alcoholic beverages (except beers) and
Class 34 is related to tobacco, smokers‘ articles, matches. More

92
details can be extracted from the official website of CGPDTM
Office
(http://www.ipindia.nic.in/writereaddata/images/pdf/classification-
of-goods.pdf).
2.5.7. Non-Registerable GI
For GI registration, the indications must fall within the scope of
section 2(1) (e) of GI Act, 1999. Being so, it has to also satisfy the
provisions of Section 9, which prohibits registration of a GI
mentioned below:
 The use of which would be likely to deceive or cause
confusion.
 The use of which would be contrary to any law.
 Which comprises or contains scandalous or obscene matter.
 Which comprises or contains any matter likely to hurt the
sentiments of society.
 Religious susceptibilities of any class or section of the citizens
of India.
 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.
2.5.8. Protection of GI
The IP rights to GI are enforced by the court of law of the
concerned country. The GI registration of a product has certain
advantages. It enables to identify pirated/non-genuine stuff,
provides more commercial value to the product, and also
strengthens the case if it reaches the judicial courts. The two
common methods of protecting a GI are:
Sui generis systems (i.e. special regimes of protection) and
under certification or collective mark systems. Many countries,
including India to protect GI by using the sui generis system. This
decision was taken after the TRIPS agreement (1995) and an option
was given to the countries to choose either TRIPS standards or the
sui generis system. This was decided by considering the fact that
every country has different legislation and geographical structures &

93
resources. Therefore, this system is not uniform in all countries and
varies according to the jurisdiction and legislation of the particular
country.
2.5.9. Collective or Certification Marks
Certification marks aim to certify the products comply with
specific quality standards irrespective of their origin. These
standards include permitted materials and manufacturing methods.
Therefore, the purpose of certification marks is to distinguish
certified goods from non-certified ones. Collective marks are owned
by associations ensuring compliance with the agreed standards.
Collective marks signify that a good or service originates from a
member of a particular association. The Collective mark is used by
cooperating enterprises that have agreed to comply with defined
quality standards for goods or services that share common
characteristics.
2.5.10. Enforcement of GI Rights
The rights to GI protection are typically enforced by the court of
law. The sanctions provided could be civil (injunctions restraining
or prohibiting unlawful acts, actions for damages, etc.), criminal, or
administrative.
2.5.11. Procedure for GI Registration
Prior to filing an application for registering GI, it is prudent to
search whether the concerned GI is already protected or not. This
can be done by using search engines created by WIPO
(https://www.wipo.int/ipdl/en/search/lisbon/search-struct.jsp where
‗Search of Appellations of Origin and Geographical Indications‘
both can be conducted.
Additionally, WIPO has created a directory of all IP offices of
its member countries. The registered GI of any country can be
searched by accessing the website of the respective country
(https://www.wipo.int/directory/en/urls.jsp). The list of registered
GI in India can be accessed from the official website of CGPDTM
http://www.ipindia.nic.in/writereaddata/Portal/News/367_1_Registe
red_GI.pdf.
Once the prior search for registered GI is done, the applicant has
to file an application. The application for GI can be forwarded by an
94
individual or an organization or authority of people established
under Indian law. The application in a prescribed format is
submitted to the Registrar, Geographical Indications along with the
prescribed fee
(http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_27_1_gi-
rules.pdf). In the application, the applicant needs to mention the
interest of the producers of the concerned product. The application
should be duly signed by the applicant or his agent with all the
details about the GI that how its standard will be maintained. The
submission of three certified copies of the map of the region where
the GI belongs is mandatory.
Once the application is filed at GI Registry, the Examiner will
scrutinize the application for any deficiencies or similarities. If the
examiner finds any discrepancy, he will communicate the same to
the applicant, which is to be replied within one month of the
communication of the discrepancy. Once the examiner is satisfied
with the response/s, he files an examination report and hands over
the same to the Registrar. Once again, the application is scrutinized.
If need be, the applicant is asked to clear any doubts/objections
within two months of the communication otherwise, the application
will be rejected. After getting a green signal from the Registrar, the
application is published in the official Geographical Indication
Journal (http://www.ipindia.nic.in/journal-gi.htm) for seeking any
objections to the claims mentioned in the application. The
objections have to be filed within four months of the publication. If
no opposition is received, the GI gets registered by allotting the
filing date as the registration date. Initially, GI is registered for ten
years but is renewable on the payment of the fee.
2.5.12. Documents Required for GI Registration
 Details about the applicant‘s name, address and particulars.
 Application form GI-1A.
 Statement about the designated goods being protected under GI.
 Class of goods.
 Affidavit to establish the claim of genuinely representing the
interest of the producers.
 Characteristics of GI.
 The special human skill required (if any).
95
 Figure 2.12: Flow chart for the process of GI registration.

Source: https://www.researchgate.net (slightly modified)

The important forms to file GI in India under various classes are

mentioned below:

Table 2.12: Important application forms related to GI.

Form Requisite Fee
Title
No. ( )
Application for the registration of a
Geographical Indication for goods included 5000
in one class.
Application for the registration of a
GI-1 Geographical Indication for goods included 5000
in one class from a Convention country.
A single application for the registration of a
5,000 for each
Geographical Indication for goods in
class
different classes.

96
 A single application for the registration of a
5,000 for each
Geographical Indication for goods in
class
different classes from a Convention country.
Notice of opposition to the registration of a
1,000 for each
Geographical Indication or an opposition or
class
an authorised user.
GI-2
Form of counter-statement. 1,000
Application for extension of time for filing
300
notice of opposition.
Application for the registration of an
authorised user of a registered Geographical 500
Indication.
GI-3
Request for issuance of a registration
100
certificate as an authorised user.
For renewal of an authorised user. 1000
Renewal of the registration of a Geographical
Indication at the expiration of the last 3,000
registration.
Application for restoration of a Geographical 1000 plus
GI-4 Indication or an authorised user removed applicable
from the Register. renewal fee
Application for renewal within six months
from the expiration of last registration of 3,500
Geographical Indication.
Application for registration of a Geographical
GI-8 1000
Indications agent.
Application for cancellation of an entry in the
GI-10 300
Register or to strike out goods.
Source: http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_27_1_gi-rules.pdf

2.5.13. GI Ecosystem in India

India is among the geographically and traditionally rich countries.
The scope of generating GI products in India is enormous. These
products can contribute to the economic development of a particular
region or society. However, till June 2021, a total of 370 GI have
been registered in India, which is much below its potential
(https://ipindia.gov.in/writereaddata/Portal/Images/pdf/GI_Applicati
on_Register_10-09-2019.pdf). Figure 2.13 represents the statistics
for GI (filed, and registered) for the period 2010-20. Maximum
number (148) of GI were filed in 2011-12 whereas, minimum
number (17) was observed in 2015-16. Not much change in the

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number of GI registrations was observed during the period 2010-20.
Each year the number hovered around in the twenties, with
maximum registrations (34) seen in 2016-17.
Figure 2.13: GI profile (India) for the period 2010-20.

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.5.14. Additional Information

2.5.14.1. Generic GI - When a GI-certified product becomes more
popular by the name of the origin of the place, it is termed as
Generic GI. For example, Camembert Cheese. Camembert is the
name of the place in France where this special cheese is produced.
In food places, merely saying the word Camembert denotes
Camembert cheese.
2.5.14.2. Homonymous GI - When two or more products, which
have been granted GI status, are spelled or pronounced alike, but
their source of origin is different (usually in different countries),
such GI are termed as Homonymous GI. One of the examples of the
homonymous GI is a wine named ‗Rioja‘, which is a GI for wine
produced in two countries (Argentina and Spain). In such a case, the
applicants (of GI) need to prove different characteristics of their
products. People may get confused if two Homonymous GI are
being sold at the same place. It is better that additional information
(source of origin of product) be mentioned on these products so as
to prevent consumers from being misled.
2.5.14.3. Difference Between GI and Appellation of Origin - In the
case of an appellation of origin, the link with the place of origin is
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very strong. The quality or characteristics of a product protected as
an appellation of origin must result exclusively or essentially from
its geographical origin. This generally means that the raw materials
should be sourced from the place of origin and that the processing
of the product should also take place there. In the case of GI, a
single criterion attributable to the geographical origin is sufficient,
be it quality or another characteristic of the product or even just its
reputation. For example, Tirupathi Ladoo is GI, whereas Roquefort
Cheese tastes the way it does because it is matured in a certain way
in the caves of Roquefort is an Appellation of Origin.
2.5.14.4. Difference Between GI, Trademark and Traditional
Knowledge - Generally, people get confused with GI, Trademark
and Traditional Knowledge. GI identifies a product/good as
originating from a specific place. Trademark products/goods/service
originate from a particular industry/institute/organization/society,
etc. A Trademark is identified by an arbitrary sign, whereas GI has
the name of the geographical area. Finally, a Trademark can be
assigned or licensed to anyone, anywhere in the world, whereas GI
is linked with a specific geographical territory.
Products identified as GI are often the result of traditional
processes and knowledge carried forward by a community in a
particular region from generation to generation. Similarly, some
products identified by a GI may embody characteristic elements of
the traditional artistic heritage developed in a given region, known
as traditional knowledge (also termed as traditional cultural
expressions). This is particularly true for tangible products, such as
handicrafts, made using natural resources and having qualities
derived from their geographical origin.
2.5.14.5. International Agreements for GI Administered by WIPO
- The international organization WIPO has a dedicated search engine,
namely WIPO Lex (https://wipolex.wipo.int/en/ legislation/
results?countryOrgs=IN&subjectMatters=5), which has incorporated
IP Laws, including that of GI of all member countries. Below
mentioned are the international agreements administered by WIPO:
 Madrid Agreement (1891) for the International Registration of
Marks (https://www.wipo.int/madrid/en/).

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 Nice Agreement (1957) for the International Classification of
Goods and Services for the Registration of Marks
(https://www.wipo.int/classifications/nice/en/).
 Lisbon Agreement (1958) for the Protection of Appellations of
Origin (International Registration https://www.wipo.int/treaties
/en/registration/lisbon/).
Every signatory member has to follow the guidelines of these
agreements. Also, it is mandatory for the members to show the
classification of goods in their official documents.
2.5.14.6. Famous Case Law: Banglar Rasogolla Vs. Odisha
Rasagola - Rasagolas is a very popular dessert in India. It is thought
to have originated in the eastern part of India. In November 2017,
the West Bengal State Food Processing and Horticulture
Development Corporation Limited registered ‗Banglar Rasogolla‘
as a GI. However, the legal battle for GI registration started when
objections to this GI registration were lodged by the State of
Odisha, claiming that Rasagolas originated at Jagannath temple in
Puri, Odisha. An application was filed in High Court in February
2018 to remove the registration of GI status of ‗Banglar Rasogolla‘.
Meanwhile, in July 2018 ‗Odisha Rasagola‘ was also granted GI tag
by the GI Registry, GoI. As per the court verdict,
a) ‗Rasogolla / Rasagola‘ is a general term, which any person can
use in his trade and business.
b) The words ‗Odisha Rasagola‘ and ‗Benglar Rasogolla‘ can
only be used by authorized users ‗under the law.
Hence, neither Bengal nor Odisha has a monopoly on the word
Rasagola. However, no person or society or company can use the
label ‗Banglar Rasogolla‘ or ‗Odisha Rasagola‘, without written
consent from the authorized users.

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