ipr- unit 4
ipr- unit 4
A Geographical Indication (GI) refers to a sign used on products that have a specific geographical
origin and possess qualities, reputation, or characteristics that are essentially attributable to that
place of origin. The concept of GI is based on the principle that certain products are intrinsically
linked to the geographical region where they are produced due to unique environmental factors or
traditional know-how.
Under the Geographical Indications of Goods (Registration and Protection) Act, 1999 in India, a GI
tag ensures that only authorized users or producers from the specified region can use the indication
for the product. Examples of Indian GI-tagged products include Darjeeling Tea, Mysore Silk, and
Kolhapuri Chappals.
The scope of geographical indications extends to a wide range of goods, including agricultural
products, foodstuffs, handicrafts, industrial products, and natural goods. For agricultural goods, the
geographical location often directly influences the product's specific qualities due to factors such as
soil, climate, and traditional farming methods. In the case of handicrafts, traditional skills, materials,
and processes linked to the region contribute to the uniqueness of the product.
1. Protection of Regional Heritage: GIs help in preserving the cultural identity and traditional
knowledge associated with a specific region. For example, Pochampally Ikat and Banarasi
Sarees are known for their rich heritage and craftsmanship.
2. Economic Benefits: GI-tagged products often command premium prices in national and
international markets due to their authenticity, thereby boosting the local economy and
improving the livelihoods of producers.
3. Prevention of Misuse: A registered GI ensures that only legitimate producers from the
designated region can use the GI tag. This prevents counterfeit products from diluting the
brand value and reputation of the authentic goods.
5. Export Promotion: Products with GI tags have a better reputation in foreign markets, helping
increase export potential. For instance, Darjeeling Tea has a strong demand globally because
of its recognized quality and GI certification.
6. Consumer Awareness: A GI tag assures consumers of the product’s authenticity, origin, and
quality, enhancing trust and willingness to pay a premium.
In conclusion, geographical indications play a crucial role in safeguarding the unique identity of
regional products while contributing to economic development and cultural preservation. By
fostering innovation and sustainability, GIs not only protect traditional knowledge but also enhance
the global recognition of indigenous products.
6. Exclusivity of Origin
Only producers from the defined geographical region are entitled to use the GI tag. This
exclusivity prevents misuse by producers outside the region and ensures that the product
remains authentic. For example, only farmers from the designated regions in Karnataka,
Kerala, and Tamil Nadu can use the "Malabar Pepper" GI.
The TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement, which is administered
by the World Trade Organization (WTO), provides a comprehensive legal framework for the
protection of intellectual property rights (IPRs) globally. Within this framework, Geographical
Indications (GIs) occupy an important position as they relate to the protection of products whose
qualities or reputation are linked to their geographical origin. The protection of GIs under the TRIPS
Agreement is a critical issue for international trade, as it strikes a balance between encouraging the
protection of traditional knowledge and practices and addressing global trade concerns.
1. TRIPS and Geographical Indications
The TRIPS Agreement contains specific provisions regarding the protection of geographical
indications, primarily under Section 3 of Part II (Protection of Industrial Property) of the agreement.
Articles 22 to 24 of the TRIPS Agreement govern the protection of GIs:
Article 23 (Additional Protection for Wines and Spirits): This provision grants additional
protection for GIs used on wines and spirits. It recognizes that wines and spirits may have a
unique connection to a specific geographical area, and that unauthorized use of the GI on
non-origin products could cause economic harm to producers from the region. This special
treatment is largely due to the traditional value and uniqueness of wine and spirit GIs (e.g.,
"Champagne," "Port," or "Scotch Whisky"). The protection under Article 23 ensures that such
terms cannot be used even if there is no likelihood of confusion, thus providing a higher level
of protection.
Article 24 (Exceptions): This article addresses exceptions to the protection of GIs, allowing
for certain circumstances in which countries may not be required to provide full protection.
One key exception is that the agreement does not require countries to recognize GIs that are
not used or recognized within their domestic market. Article 24 also provides for exceptions
for terms that have become generic over time, which would prevent them from being
exclusively associated with a specific region (e.g., "Parmesan" in the European Union versus
the use of "Parmesan" by other countries).
While the TRIPS Agreement sets minimum standards for GI protection, it does not establish a
universal registration system for GIs, nor does it mandate that countries adopt the same registration
mechanisms. However, TRIPS encourages multilateral cooperation in this regard. The WTO member
states are allowed to create their own domestic systems for registering GIs. As a result, various
regional and bilateral agreements have emerged to establish GI registration systems, such as the
European Union’s GI system, which protects over 3,000 products.
There are also international efforts aimed at enhancing GI protection through other treaties, such as
the Lisbon Agreement for the Protection of Appellations of Origin and their International
Registration, administered by the World Intellectual Property Organization (WIPO). This agreement
enables the international registration of GIs, though participation in the Lisbon system is not
mandatory under TRIPS.
TRIPS provides flexibility for developing countries in implementing the provisions on GIs. In
particular, developing countries are allowed to tailor GI protection mechanisms to suit their legal,
economic, and cultural contexts. This flexibility allows for the protection of GIs of products that may
have social and cultural significance to local communities. Additionally, the TRIPS Agreement has
been the subject of much debate in relation to the rights of indigenous and local communities,
especially concerning the protection of traditional knowledge and expressions of culture through GIs.
Developing countries have been increasingly active in seeking better protection for their GIs,
particularly agricultural products like Darjeeling tea or Basmati rice, which have long-standing
connections to their regions. Many developing countries argue that GIs are important tools for
promoting their cultural heritage and boosting rural economies, as GIs offer a mechanism for
preserving traditional knowledge and increasing the market value of local products.
One of the central challenges of the TRIPS framework regarding GIs is balancing trade interests with
the protection of traditional knowledge. The agreement recognizes the need for international trade
facilitation while ensuring that indigenous knowledge, especially in relation to agricultural products,
is not exploited without due recognition or compensation. This tension between the interests of
developed countries, which often hold the trademarks for global brands, and developing countries,
which may rely on GIs to protect traditional practices, is an ongoing point of negotiation in the WTO.
The debate continues on whether GIs should receive a higher level of protection across all sectors or
whether they should be treated differently depending on the product type. For example, while wines
and spirits receive additional protection under Article 23, other products may not receive the same
level of recognition. Countries with agricultural or cultural traditions connected to specific GIs argue
for stronger protection for all GIs, as this could help prevent misuse or appropriation of their local
products.
The Basmati Rice case refers to a legal dispute concerning the protection of Basmati rice as a
Geographical Indication (GI). The issue revolves around the use of the name "Basmati" for rice
produced outside the regions of India and Pakistan, particularly the attempts by American and
European companies to label rice as "Basmati," which was not grown in the traditional regions of
origin. The case had significant implications for the protection of GIs in India and the role of
international law in preserving traditional products.
Background of the Basmati Rice Case
Basmati rice is a traditional aromatic rice variety that is primarily grown in specific regions of India
and Pakistan, particularly in the foothills of the Himalayas. The name "Basmati," which means
"fragrant" in Hindi, has been associated with high-quality, aromatic rice for centuries. Over time, the
unique qualities of Basmati rice — including its distinct aroma, long grain, and texture — have
become globally recognized, and its production has become a symbol of agricultural heritage in the
region.
In the late 1990s and early 2000s, companies in the United States and Europe began marketing rice
under the name "Basmati," even though it was grown in countries like California or Texas, far from
its traditional growing regions. This raised concerns in India and Pakistan about the misappropriation
of the name and the potential dilution of the rice's distinctive identity.
The Legal Dispute: India vs. U.S. Producers
India, along with Pakistan, took steps to protect Basmati rice by seeking a Geographical Indication
(GI) status for the term "Basmati." This was to ensure that only rice grown in the traditional
geographical areas of India and Pakistan could be sold under the name "Basmati," preventing
companies outside of these regions from capitalizing on the term.
Indian Efforts to Protect Basmati
Application for GI Registration: In 2000, India filed an application with the Geographical
Indications of Goods (Registration and Protection) Act, 1999, to register Basmati rice as a
GI. This was part of a broader effort to preserve the traditional agricultural products of India
and ensure that their unique qualities were not exploited by foreign producers.
International Registration: India also sought international protection for the name Basmati
through various international forums, such as the World Trade Organization (WTO) and the
World Intellectual Property Organization (WIPO). The aim was to establish that Basmati rice
was a product of a specific geographical origin, much like other globally recognized GIs such
as Champagne or Parmigiano Reggiano.
Opposition from U.S. Producers
In response to India's efforts, U.S. producers of aromatic rice, particularly from California, opposed
India's claim. They argued that the term "Basmati" was generic and not geographically restricted.
They had already been marketing aromatic rice as "Basmati," and feared that the GI registration
would hinder their ability to use the name. Some U.S. producers even claimed that they were
growing "Basmati" rice in areas outside of the traditional Basmati-growing regions, asserting that the
term had become a generic label for a type of rice rather than one tied to a specific geographic
origin.
Legal Actions and Settlement
WTO Dispute Settlement: India raised the issue in WTO forums, arguing that the U.S.
practices violated international trade rules and the principles of intellectual property
protection under the TRIPS Agreement. The WTO was called upon to decide whether the
term "Basmati" should be protected as a geographical indication under international law.
Compromise and Settlement: While the issue was complex and involved multiple legal and
trade-related negotiations, India and the U.S. eventually reached a settlement. The U.S.
agreed to stop using the term "Basmati" on rice produced outside the defined regions of
India and Pakistan, effectively recognizing that the name should be reserved for rice from the
traditional geographic areas. However, the agreement was not without limitations, and there
were still concerns about how the GI would be enforced globally.
European Union: In parallel with the dispute with the U.S., India also sought protection for
Basmati rice in the European Union (EU). The EU granted GI protection for Basmati rice,
ensuring that only rice produced in India and Pakistan could be marketed as "Basmati" within
the EU. This was a significant victory for India in preserving the authenticity and economic
value of Basmati rice.
Prohibitions on registration
Section 9 of the Geographical Indications of Goods (Registration and Protection) Act, 1999
establishes clear restrictions on the registration of geographical indications (GIs) to prevent misuse,
deception, and conflicts with public interest. A geographical indication is a name or sign used on
products that have a specific geographical origin and possess qualities, reputation, or characteristics
inherent to that location. The purpose of restricting certain GIs from registration is to maintain the
authenticity, integrity, and credibility of the system.
1. Prohibition of Deceptive or Confusing GIs (Clause a)
A GI cannot be registered if its use is likely to deceive or cause confusion among consumers. This
ensures that misleading names that falsely suggest a product originates from a well-known location
are not granted protection. For example, if a manufacturer outside Darjeeling attempts to register
"Darjeeling Tea" for their own tea, it would deceive consumers into believing they are purchasing
authentic Darjeeling Tea when they are not. This clause protects both consumers and genuine
producers from misrepresentation.
2. GIs Contrary to Existing Laws (Clause b)
If the use of a GI would be contrary to any law currently in force, it is ineligible for registration. This
includes laws related to intellectual property rights, food safety regulations, trademarks, and
misleading advertisements. For instance, if a GI infringes upon an existing trademark or violates
health and safety standards, it cannot be registered.
3. Scandalous or Obscene GIs (Clause c)
A GI containing scandalous or obscene words, phrases, or symbols cannot be registered. This
provision ensures that GIs maintain ethical and moral standards, preventing offensive language or
imagery from receiving legal protection. For example, a GI that includes derogatory or sexually
explicit language would be rejected.
4. GIs That Hurt Religious Sentiments (Clause d)
A GI cannot be registered if it contains elements that hurt the religious susceptibilities of any class
or section of Indian citizens. Given India's religious diversity, this provision prevents the use of
sacred names or religious symbols in a way that could offend specific communities.
5. GIs Disentitled to Protection by Courts (Clause e)
If a GI is considered ineligible for protection under Indian law due to reasons such as public policy
violations, fraud, or immorality, it cannot be registered. This broad provision acts as a safeguard
against GIs that may be inherently misleading, exploitative, or against the greater public interest.
6. Generic Names or Indications (Clause f)
A GI cannot be registered if it has become a generic term in its country of origin or has fallen into
disuse. A generic name refers to a term that was once associated with a specific location but has now
become widely used to refer to a general type of product rather than a place of origin.
For example:
"Basmati" rice has been debated as a GI because some argue it has become generic outside
of India.
This clause prevents generic terms from gaining GI protection, ensuring that only truly distinctive
and region-specific names are protected.
7. GIs That Falsely Represent Their Origin (Clause g)
This clause prohibits the registration of GIs that, while literally true about the region they refer to,
create a false impression about the actual place of origin. This prevents deceptive marketing
strategies that could lead consumers to believe they are buying a product from a more reputed
region.
For example:
If a product is labeled "Swiss Coffee", but the coffee beans are grown in India and only
processed in Switzerland, it could mislead consumers into thinking the coffee is of Swiss
origin.
Explanations Provided in Section 9
The law provides two explanations to clarify the concept of generic names and how their status is
determined.
Explanation 1: Definition of Generic Names
A generic name or indication refers to a term that originally described goods from a particular place
but has become a common name used to describe a type of product rather than its origin. This
happens when the name loses its geographical significance and instead refers to a category or style
of product.
Explanation 2: Determining Whether a Name Has Become Generic
When deciding whether a name has become generic, authorities must consider several factors,
including:
The situation in the place of origin: If the name is no longer protected or used in its original
region, it may be considered generic.
The area of consumption of the goods: If consumers widely use the name to describe a
general product rather than a specific geographical origin, it may be deemed generic.
Infringement of Geographical Indications (GI) Under Section 22
The Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act) provides a
legal framework for protecting registered GIs from unauthorized use.
Section 22 of the GI Act specifically deals with infringement, outlining circumstances under which a
GI is considered to have been wrongfully used and defining unfair competition practices that harm
legitimate producers.
What Constitutes an Infringement Under Section 22?
Infringement of a registered GI occurs when an unauthorized user engages in any activities that
mislead consumers, unfair competition, falsely suggest a connection with the designated
geographical region.
1. Use of a GI in a Manner That Misleads Consumers (Section 22(1)(a))
A GI is considered to be infringed if a person who is not an authorized user applies the GI to goods
that do not originate from the designated geographical region. If the usage of the GI creates
confusion or misleads consumers about the true geographical origin of the goods, it constitutes an
infringement.
Examples:
Selling tea from another region under the name "Darjeeling Tea," despite the tea not being
grown in Darjeeling, misleads consumers into believing they are purchasing authentic
Darjeeling tea.
This provision protects consumers from deceptive trade practices and ensures that GI-tagged
products maintain their authenticity and market value.
2. Unfair Competition and Passing Off (Section 22(1)(b))
The Act also prohibits any act of unfair competition that involves wrongful use of a GI, particularly in
ways that mislead consumers, damage the reputation of the authentic GI, or allow a competitor to
wrongfully benefit from an established GI’s reputation.
Understanding Unfair Competition:
The Act defines "unfair competition" as any act contrary to honest business practices. This includes:
1. Creating Confusion: Engaging in practices that create confusion in the minds of consumers
regarding the origin, nature, or quality of goods.
2. False Allegations to Discredit Competitors: Making false statements about a GI product to
harm a competitor’s reputation.
3. Misleading Representation of Characteristics: If the use of a GI misleads people regarding
the manufacturing process, composition, or suitability of the goods.
This provision protects authentic GI holders from market dilution and economic loss caused by
counterfeit or misleading practices.
4. Use of a Different GI That Falsely Suggests a Connection (Section 22(1)(c))
uses another geographical indication to the goods which, although literally true as to the territory,
region or locality in which the goods originate, falsely represents to the persons that the goods
originate in the territory, region or locality in respect of which such registered geographical indication
relates.
Additional Protection for Certain Goods (Section 22(2) and (3))
The Central Government can notify specific goods or classes of goods for extra protection under the
law. This protection applies even when:
A non-authorized user uses another GI for goods that do not originate from the designated
place.
The true origin of goods is disclosed, but a misleading GI name is still used.
The term "kind," "style," "imitation," or similar expressions are added to a GI.
These provisions are intended to strictly regulate GIs with global recognition and high commercial
value, ensuring that only authentic producers benefit from the prestige of their GI.
Permissible Use That Does Not Constitute Infringement (Section 22(4))
While the law provides strong protection for registered GIs, it also recognizes certain legitimate uses
of GI-tagged goods. Section 22(4) clarifies that a lawfully acquired product bearing a GI can be
further processed, repackaged, and sold without infringement, as long as the product’s quality
remains intact.
However, if a reseller modifies the condition or quality of the goods in a way that affects their
original characteristics, it may constitute infringement.
Legal Remedies Against GI Infringement
The GI Act provides both civil and criminal remedies to combat infringement and ensure the
protection of legitimate GI holders.
I. Civil Remedies (Enforced Through Civil Courts)
A registered proprietor or an authorized user of a GI can initiate a civil lawsuit against an infringer.
The following remedies are available:
1. Injunction (Restraining Order)
The court can issue an injunction to immediately stop the infringer from using the GI. This prevents
further unauthorized use of the GI and protects the reputation of genuine producers.
2. Damages or Account of Profits
The court may order the infringer to pay damages for the losses suffered by the rightful GI holders.
Alternatively, the infringer may be ordered to surrender the profits earned from unauthorized GI
use.
3. Delivery-Up of Infringing Goods
The court can order the seizure and destruction of infringing goods, packaging, and promotional
materials.
II. Criminal Remedies (Punishable Under Law)
The GI Act imposes strict penalties on individuals and businesses that engage in GI infringement.
The objective is to deter counterfeiting and misleading commercial practices.
1. Imprisonment
A person found guilty of GI infringement may be sentenced to imprisonment for a period ranging
from six months to three years.
2. Monetary Fines
The offender may also be fined between ₹50,000 to ₹2,00,000, depending on the severity of the
infringement.
3. Seizure of Goods and Materials
Authorities can confiscate counterfeit goods and materials that bear unauthorized use of a GI.
4. Recurring Offenses
For repeat offenses, harsher penalties may be imposed, including extended imprisonment and
higher fines.
Offences and Penalties
1. Falsifying and Falsely Applying Geographical Indications (Section 38)
Falsification of a Geographical Indication
A person is guilty of falsifying a GI if they:
Create a GI or a deceptively similar GI without the consent of the authorized user.
Alter, modify, add to, remove, or tamper with a genuine GI, thereby misleading consumers.
Falsely Applying a Geographical Indication
A person falsely applies a GI if they:
Affix a GI or a deceptively similar GI to goods or their packaging without authorization.
Use packaging bearing a GI similar to the registered GI to package goods that are not from
the specified region.
Legal Consequence
Any GI falsified or falsely applied as per the definitions in Section 38 is termed a "false geographical
indication."
In legal proceedings for falsification, the burden of proving authorization rests on the accused. This
means the person using the GI must demonstrate that they had the required consent or
authorization to do so.
2. Penalty for Applying False Geographical Indications (Section 39)
A person commits an offence if they:
Falsify a GI or falsely apply a GI to goods.
Manufacture, sell, or possess tools or machinery intended for GI falsification.
Apply misleading indications about the country of origin, manufacturer, or producer.
Tamper with, alter, or erase genuine origin indicators on goods.
Encourage or assist others in committing these acts.
Punishment
Imprisonment: 6 months to 3 years
Fine: ₹50,000 to ₹2,00,000
The court has discretion to impose a lesser penalty (less than six months imprisonment or
₹50,000 fine) for special reasons, which must be recorded in the judgment.
3. Penalty for Selling Goods with False Geographical Indications (Section 40)
A person is liable for prosecution if they:
Sell, hire, or expose for sale goods with a false GI.
Possess goods with false GIs for commercial purposes.
Sell products without the legally required country of origin or manufacturer details.
However, an individual can avoid liability if they prove:
1. They took all reasonable precautions to verify the authenticity of the GI.
2. They had no reason to suspect the GI was false.
3. Upon request from legal authorities, they provided all available information about the
product's supplier.
4. They acted innocently, without fraudulent intent.
Punishment
Imprisonment: 6 months to 3 years
Fine: ₹50,000 to ₹2,00,000
The court may reduce the punishment if there are special circumstances, but it must
provide reasons in writing.
4. Enhanced Penalty for Repeat Offenders (Section 41)
If a person repeats an offence under Section 39 or Section 40, they face stricter penalties to deter
habitual violations.
Punishment for Repeat Offenders
Imprisonment: 1 year to 3 years
Fine: ₹1,00,000 to ₹2,00,000
The court can reduce imprisonment below 1 year or fine below ₹1,00,000 for special
reasons.
5. Penalty for Falsely Representing a Geographical Indication as Registered (Section 42)
A person is guilty of this offence if they:
Claim that an unregistered GI is registered.
Claim that a GI is registered for certain goods when it is not.
Misrepresent that GI registration gives broader rights than legally granted.
Punishment
Fine: The lower of:
o 0.5% of total sales/turnover
o ₹5,00,000
6. No Offence in Certain Cases (Section 45)
A person is not guilty under Sections 39, 40, or 41 if:
The act is permitted under the GI Act.
The act is allowed under another law in force.
This provision prevents unnecessary prosecution of legitimate users who have a lawful right to use
the GI.
7. Forfeiture of Goods (Section 46)
If a person is convicted or acquitted under Sections 39, 40, or 41, the court may order:
Forfeiture of goods with false GIs to the government.
Destruction or disposal of such goods as deemed fit.
Right to appeal against the forfeiture in certain cases.