GEOGRAPHICAL

INDICATIONS
APURVA SHARMA
 GI UNDER TRIPS
⦿ The definition of “geographical indications” under TRIPs states that GIs are
“indications that identify a good as originating in the territory of a
Member, or a region or locality in that territory, where a given quality,
reputation or other characteristic of the good is essentially attributable to
its geographic origin.”
⦿ Article 22 of the TRIPS Agreement compels governments of all member
States to provide for a legal mechanism under its municipal law regime
that allows the proprietor of a registered GI to prevent infringement of GI,
that is, the use of marks to mislead and deceive the public as to the
geographical origin of the good.
- This includes preventing the use of a name of a geographical territory,
which although literally true, “falsely represents” that the product comes
from somewhere else.
- The same article also provides the governments with an option to refuse
to register a trademark or to invalidate an existing trademark if it misleads
the public as to the true origin of a good.
⦿ Article 23 provides additional protection for GIs tagged to
wines and spirits.
- The article compels all governments of member States to
enact a municipal law under which the owners of GI will have
the right to prevent the use of a GI identifying wines not
originating in the place indicated by the GI.
- This applies even when the public is not being misled, when
there is no unfair competition and where the true origin of the
good is indicated or the GI is accompanied by expressions
such as “kind”, “type”, “style”, “imitation” or the like.
- Article 23 also says that governments may refuse to register or
may invalidate a trademark that conflicts with a wine or spirits
GI whether the trademark misleads or not.
⦿ Article 24 of TRIPS provides numerous exceptions to the
protection of GI. The exceptions are particularly relevant for
GIs for wines and spirits. For example, members are not
obliged to protect a GI where it has become a generic term
for describing the product in question.
- Measures to implement these provisions should not prejudice
prior trademark rights that have been acquired in good faith,
and, under certain circumstances, including long-established
use, continued use of a GI for wines or spirits may be allowed
on a scale and nature as before.
 GI BEFORE TRIPS
Before signing of the TRIPs, GIs were protected under the following agreements:
Article 1 of the Paris Convention,1883, which allowed the protection of indications of
source of products and prevention of unfair competition. Article 10 of the Paris
Convention provided for prohibition of direct or indirect use of a false indication
of the source of goods or the identity of the producer, manufacturer or
merchant.
The Madrid Agreement,1891 endorsed the same provisions as enumerated by the
1883 Paris Convention. It also stated that when the special qualities of a product
are due to its source of origin, such a source could be indicated to describe and
ensure the quality of that product. The term “indication of source” was used in
the Paris Convention and the Madrid Agreement. There is no definition of
“indication of source” in the two treaties. However, an indication of source may
be defined as an indication referring to a country, or to a place in that country,
as being the country or place of origin of a product. The indication of source
relates only to the geographical origin of the product and not to another kind of
origin. This definition does not capture any unique quality or characteristics of the
product on which indication of source is used.
“Appellation of origin” is well-defined in the Lisbon Agreement of 1958. The Lisbon
Agreement establishes an international system of protection for appellations of
origin which are already protected under the national law of one of the States
party to that Agreement. Protection is subject to the international registration of
that appellation of origin.
⦿ Article 2(1) of the Lisbon Agreement defines the term “appellation of
origin” as follows: “Appellation of origin means the geographical
name of a country, region, or locality, which serves to designate a
product originating therein, the quality and characteristics of which
are due exclusively or essentially to the geographical environment,
including natural and human factors.”
⦿ Under this definition, an appellation of origin can be defined as a
specialized indication of source because the product for which an
appellation of origin is used must have quality and characteristics
which are due exclusively or essentially to its origin.
⦿ Examples for protected appellations of origin are “Bordeaux” for
wine, “Noix de Grenoble” for nuts, “Tequila” for spirit drinks, or “Jaffa”
for oranges.
⦿ The Lisbon Agreement, 1958, provided for the first time for the
protection of Appellations of Origin and their international registration
⦿ It is the true precursor to the provisions under TRIPS.
⦿ The Lisbon Agreement for the first time recognized that both natural
and human factors could be involved in ensuring qualities of a good
even when it originated from a particular region. It therefore
proposed the inclusion of any product which would qualify for such
protection including handicrafts, art, pottery, textiles etc.
 INDIA BEFORE THE GI ACT
⦿The development of a legal regime for GI protection is a recent event in India.
⦿The Geographical Indications of Goods (Registration and Protection) Act was enacted in
1999. The same came into force in September 2003. Before the enactment of this Act, there
was no separate law specifically for GIs. However, the concept of GI protection existed in
three alternative ways. These were part of the existing legal system and allowed holders to
prevent misuse of GIs.
1. Under the consumer protection laws
2. Through passing off action in courts The principle of passing-off states that ‘No-one is
entitled to pass off his goods as those of another’. The purpose of having legal remedies for
passing off, is to protect the name, reputation and goodwill of traders or producers against
any unfair attempt of others to free ride on them. India, like other common law countries,
does not have a statute specifically dealing with unfair competition. Acts of unfair
competition are prevented and stopped by action against passing off. Action against
“passing off” is based on usage and common knowledge about the characteristic features
and quality or reputation that the concerned product has already earned in the market
either by publicity or in the market. Indian courts have maintained an action of passing off to
protect various GIs.
Scotch Whisky Association v. Pravara Sahakar Karkhana Ltd.* is a leading case on this
subject. The Bombay High Court held that the Plaintiff had “sufficient interest to prevent
passing off of Indian Whisky manufactured by the defendant and to prevent damage to
reputation and goodwill of Scotch whisky. The defendants were passing off their goods as
blended Scotch whisky which in fact they were not.” An interim injunction was issued against
the defendants. The Court further ruled that the defendants had resorted to unfair means by
using the words ‘Blended with Scotch’ and indulged in colorable imitation and unfair trading
in an attempt to harvest unjust benefits by appropriation of plaintiff’s goodwill. The defendant
was prohibited from advertising or offering for sale or distributing in any country.
3. Through certification trademarks The certification trademarks were widely used to
recognize and protect the indication of sources.
In India, the most common geographical name protected under certification trademarks
was “Darjeeling Tea”.
A certification mark* certifies the goods as to their origin, material, mode of manufacture, or
performance of services, quality accuracy or other characteristics. It is these factors that the
use of the mark is allowed. Under the certification mark system, the proprietor of the mark
proposes to merely govern the use of the mark. He himself does not use. He furnishes the
application of registration of the mark, subject to a set of elaborate regulations detailing the
process of certification for the use of the mark in relation to the goods in question. It is
imperative that the person claiming proprietorship over a certification mark does not use the
same for goods or services in which he has an interest. Certification marks are usually held by
a central agency or association to administer the mark in question. It acts as the certifying
authority that authorizes the use of the mark by producers and manufacturers in relation to
their own goods. ‘Certification trademarks’ are registerable under the Trade Marks Act of
India. India has an established “silk mark” to certify genuineness of silk textiles in India and
Darjeeling, a certification mark for a specific type of tea produced in Darjeeling. The products
have to satisfy the set quality standards. Similarly, “WOOL MARK” certifies that the goods
bearing it are made of 100% wool. The “LABEL ROUGE” is used for high quality agricultural
products in France.
 LAW OF GEOGRAPHICAL INDICATIONS IN
INDIA
⦿ India, as a founding member of the WTO, signed the TRIPS
Agreement in 1994. The same came into effect on 1 January, 1995.
⦿ Pursuant to this a became a party to the sui generis law was enacted
to introduce a mechanism for creation and protection of
Geographical Indications as a separate variety of Intellectual
Property.
⦿ Geographical Indications of Goods (Registration and Protection) Act,
1999 (the GI Act), read with the Geographical Indications
(Registration and Protection) Rules, 2002 (the GI Rules), govern GIs in
India. The law came into force in 2003.
⦿ It was enacted for three reasons:
- To govern the GIs of goods across the country in the interest of
producers of these goods.
- To guard the misuse of GIs in the interest of consumers, that is, to
protect them from deception
- To promote India specific goods bearing GI tag of India, in the export
market.
⦿ The GI Act chiefly provides for registration and better protection of
geographical indications relating to goods. It prohibits unauthorized persons
from using geographical indications thereby preventing its misuse. This
protects the interest of producers, manufacturers and thereby the consumer.
Moreover, unless a GI is protected by its country of origin, there is no
obligation on other countries to extend protection. Article 22 of the TRIPs
agreement works on the principle of reciprocal protection.
⦿ The GI Act is divided into nine chapters:
● Chapter-I is a preliminary chapter, which inter alia, defines the terms used in the
Act.
● Chapter II deals with the appointment, powers and establishment of Registry. It
also provides for registration for particular goods and areas and prohibits
certain registrations.
● Chapter III provides the procedure and duration of registration.
● Chapter IV gives the effect of registration
● Chapter V contains special provisions relating to trademark and describes the
concept of prior user
● Chapter VI provides the procedure for rectification and correction of the
Register
● Chapter VII relates to appeals and the Appellate Board
● Chapter VII details the penalties and procedure
● The last Chapter IX deals with miscellaneous matters
 Salient Feature of GI Act
1. The Act provides definitions and interpretation of several important terms like
geographical indications goods, producers, package, registered proprietor, authorized
user etc.
2. ● Section 2(1)(e) defines Geographical Indications as “an indication which identifies
such goods...as originating, or manufactured in the territory of country, or a region or
locality in that territory, where a given quality, reputation or other characteristic of such
goods is essentially attributable to its geographical origins.”
3. In case of such goods being manufactured goods, “one of the activities of either the
production or of processing or preparation of the goods concerned” has to take place
in such territory, region or locality, as the case may be.
4. ● Section 2(1)(f) defines goods as “agricultural, natural or manufactured goods or any
goods of handicraft or of industry and includes foodstuff.”
5. ● Section 2(1)(g) defines indications to include “any name, geographical or figurative
representation or any combination of them conveying or suggesting the geographical
origin of goods to which it applies.”
6. ● Section 2(1)(n) defines a registered proprietor as “any association of persons or of
producer or any organization for the time being entered in the register as proprietor of
the geographical indication.”
7. ● Section 2(1)(b) defines an authorized user to mean “the authorized user of a GI
Registered under Section 17.” “Any person claiming to be a producer of the goods in
respect of which a geographical indication has been registered may apply for
registration as an authorized user.” 2. The Act provides for the establishment of a GI
Registry under section 5 and 6.
⦿ The registry has a pan-India Jurisdiction.
⦿ Application or any other document is to filed directly in the GI Registry. It may
be done physically or by post.
⦿ Under section 11 (3), GI Act provides for registration of GI of goods that are
divided into different classes with different fee prescribed for application. 5.
⦿ The Act provides for filing of four types of applications for registration of GI:
⦿ ● Ordinary Application: An Application which is filed to register a GI of Indian
origin
⦿ ● Convention Application: An Application filed for registration of a GI from a
convention country (member country of the TRIPS), along with proof of
registration / filing of that GI in the Home Country.
⦿ ● Single Class Application: An application which has been filed to register for
a specification of goods included in one class.
⦿ ● Multi Class Application: A single application filed for registration of GI for
different or more than one classes of goods.
⦿ 6. Under section 9, the GI Act prohibits registration of certain GIs. Among other
things, registration of GIs containing scandalous or obscene matter, generic
names, etc., are not registered.
⦿ 7. The Act provides for conditional registration of proposed GI and imposes a
compulsory advertising requirement. The objective is publication to invite
objections post which the registration is accepted or cancelled. The same
requirement is imposed for proposing changes to an already registered GI.
8. The Act makes a distinction between producers of goods, registered proprietors
of the GI and authorized users of GI. Producers may either register themselves
as proprietors or
9. authorized users. Both proprietors and users can initiate infringement action. The
registration of GI and registrations as proprietor and authorized users is
maintainable for a duration of ten years post which they can be renewed.
10. The Act contains multiple provisions for the renewal, rectification and
restoration of GI and its authorized use
11. Under section 22 (2), the Central Government may notify certain goods for
which it may prescribe a higher level of protection.
12. The GI differs from other IPs on a very key factor. While other IP’s like
trademarks, patents, copyright, etc., become the personal property or the
company, inventor or author respectively, GI’s remain the property of the
public belonging to the territory to which the GI is associated. Hence the GI
Act, under Section 24, prohibits assignment, transmission, licensing, mortgage,
etc., of the GI.
13. Under section 25, the GI Act prohibits of registration of geographical indications
as a trade mark
14. Appeal against registrar decisions can be filed before the Appellate Board. The
Appellate Board is same as the one set up under section 83 of the Trade Marks
Act, 1999.
15. The Act provides for various Provisions offences and penalties, effects of
registration and the rights conferred by registration
16. Section 85 provides for the principle of reciprocity. It also provides for power of
registrar, maintenance of index, etc.
17. Section 10 provides for registration of homonymous GI. There are GIs with the
same spelling and pronunciation but different meanings.
IMPORTANT PROVISIONS Section 2 (e) (f) (k ) (n) , 3, 7, 9, 10.
 Who can apply
⦿ Any association of person or
⦿ Producers
⦿ Any Organization
⦿ Authority established by or under any
law for the time being in force.
 REGISTRATION PROCESS

⦿ Application in 3 copies
to the registrar

⦿ Examination

⦿ If deficient- to be
removed within 1
month
⦿ Acceptance

⦿ To be published within 3
months in GI Journal

⦿ If not opposed-
Registration entered in GI
Register and Grant of
Certificate
 IF OPPOSED

⦿ Notice of Opposition within 3 months*

⦿ Notice to applicant to submit counter

statement within 2 months

⦿ If not submitted in 2 ⦿ Refused

⦿ Approved
months ⦿ Upon grounds of
⦿ CERTIFICATE OF refusal
⦿ APPLICATION REGISTERATION
ABANDONED ⦿ APPEAL TO IPAB
GRANTED
 REGISTRATION NOT
MANDATORY
⦿ Still protected under the Passing off
action, no unauthorized usage can be
done.
⦿ However advised to register as certificate
of registration is the prima facie evidence
of its validity.
 DURATION OF PROTECTION and GROUNDS
OF PROHIBITION OF REGISTRATION

⦿ Duration- 10 years and Renewable every 10 years.

⦿ Prohibition:
- The use of which is likely to deceive or cause
confusion, or
- The use of which is contrary to any law for the time
being in force, or
- Scandalous or Obscene, or
- Any matter likely to hurt the religious susceptibilities of
any class or section of the citizens of India, or
- False representation
- Generic name or Indication*
 Assignment and Transmission
⦿ Assignment
⦿ Transmission
⦿ Licensing
⦿ Pledge
⦿ Mortgage
⦿ Other Agreement

⦿ When an authorized user dies, his rights

transfer to his successor in title.
 Rights conferred by the GI Act
⦿ Registration of a GI allows the proprietor and
the authorized user to exercise the following
rights:
● Right to file a suit and obtain relief in cases of
infringement of the GI
● Exclusive right to use the GI in relation to the
goods pertaining to which the GI is registered.
● The Act allows two or more authorized users of
a registered GI to have co-equal rights.
It is given to the association of persons,
producers, organizations (Community Rights)
 Reliefs and Remedies for GI
Infringement
⦿ A suit alleging infringement of a GI may be filed in a District
Court or a High Court having jurisdiction.
⦿ The Courts may provide the following reliefs:
● Injunction.
● Discovery of documents.
● Damages or accounts of profits.
● Delivery-up of the infringing labels and indications. They may
be erased or destroyed.
The following remedies are available for GI infringement:
● Both civil and criminal remedies are available
● Criminal action lies in case of falsification and false
application of GI
● Civil action lies in case of infringement of a registered GI.
 BENEFITS
⦿ GI makes branding possible in the global market.
⦿ It cuts out intermediaries.
⦿ Particular region has rights over the produce or
product and cannot be produced by others.
⦿ Helps maximize profits of producers and
manufacturers.
⦿ Creates trust amongst people in relation to economic
subsistence.
⦿ Boost tourism.
⦿ Helps GDP grow.
⦿ Preserve local culture and traditions.

⦿ READ along with the challenges.

 CASES
⦿ Geographical-Indications.pdf
(schooloflegaleducation.com)
⦿ https://spicyip.com/2019/09/banglar-
rasogolla-v-odisha-rasagola-deciphering-
the-real-win.html
⦿ Disputes Over Geographical Indications
| Intepat IP
⦿ Some Selected Case and Analysis on
Indian Geographical Indication Act by
Dr. Ashutosh Kumar Srivastava, Puja
Srivastava :: SSRN