UNIT –IV

Geographical Indications
 Geographical Indications
• Introduction and overview of Geographical Indications
• Meaning and scope of Geographical Indications
• Important Geographical Indications of India and their features
• Salient features of the Protection of Geographical Indications Act, 1999
• Protection of Geographical Indications
• Misleading use of Geographical Indications
• Registration of Geographical Indications
• Right to use Geographical Indications
• Infringement; Remedies against infringement;
• Role and functions of Registrar of Geographical Indications;
• Conflict between Trade Mark and Geographical Indications
 Geographical Indications (GI)

• Geographical Indication (GI) is a sign / indication used on products with a specific

geographical origin and possess qualities or a reputation due to that origin.
• It must identify goods having special characteristics originating from a definite geographical
territory.
• It is used to identify agricultural, natural, or manufactured goods.
• The manufactured goods should be produced, processed, or prepared in that territory.
• It must indicate the product's special quality, reputation, or other circumstances.
• Darjeeling tea was the first Indian product to get a GI tag in 2004-05.
 Geographical Indications Provides

• Registered GI prohibits third parties from using the GI by any means on the goods that
indicate that such goods originate in a specific geographical area.
• legal protection (Registered)
• Preservation of cultural heritage
• Prevention of misappropriation of original product
• It promotes the economic prosperity of producers of goods from a geographical territory.
• Marketability and competitiveness
• It helps the producers develop consumer loyalty.
 Features the Geographical Indications

• It is collective community rights that protect groups of producers

• Exclusive right to holders but not individual right.
• Not possible to assign, transmit, license, pledge, or mortgage.
• Heritable – transfers to the successor.
• Remains with the Community – Right in perpetuity
• It works like a trademark
• Knowledge of GI remains in the public domain
• Protects goods that are already famous – reputation must pre-exist
As of 2024, there are 643 registered GI in India. Some Important GI are-
• Darjeeling tea
• Kashmir Saffron
• Mysore Silk
• Mango Malihabadi Dusseheri
• Kolhapuri Chappal
• Coorg Orange
• Madhubani Paintings
• Goan Feni
• Surat Zari Craft
• Palakkadan Matta Rice
• Mysore Sandal Soap
• Assam Muga Silk
 International Conventions on GI

•The Paris Convention for the Protection of Industrial Property,1883- Art. 1(2) & 10 provides a
multilateral framework for the protection of industrial property rights, including GI.
• It establishes the principles of national treatment and the right of priority.
•The Lisbon Agreement for the Protection of Appellations of Origin and their International
Registration,1958- establishes an international registration system for appellations of origin, a
specific type of GI.
• It provides a centralised filing procedure and protects all contracting parties.
• The Madrid System for the International Registration of Marks- primarily focused on
trademarks, also be used to protect GI through the registration of collective or
certification marks.

• The Trade-Related Aspects of Intellectual Property (TRIPS) - Art. 22 (1) defines

Geographical Indications as – “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.
 The Geographical Indications of Goods (Registration and Protection) Act, 1999

The Geographical Indications of Goods (Registration and Protection) Rules, 2002- are a set of rules
that provide details on the process for registering a geographical indication (GI) in India.
Sec. 2 (e) of GI Act “Geographical Indication”, in relation to goods, means an indication which
identifies such goods as agricultural goods, natural goods or manufactured goods as
originating, or manufactured in the territory of a country, or a region or locality in that territory,
where a given quality, reputation or other characteristic of such goods is essentially
attributable to its geographical origin and in case where such goods are manufactured goods one of
the activities of either the production or of processing or preparation of the goods concerned takes
place in such territory, region or locality, as the case may be.
Sec 3. Registrar of Geographical Indications - The Controller-General of Patents, Designs and
Trademarks shall be the Registrar of Geographical Indication.
Sec. 9 Prohibition of Registration of Certain GI
a) The use of which would be likely to deceive or cause confusion
b) The use of which would be contrary to any law for the time being in force
c) Which comprises or contains scandalous or obscene matter;
d) Which comprises or contains any matter likely to hurt religious susceptibilities
e) Which would otherwise be disentitled to protection in a court (can't be protected)
f) Which are determined to be generic names or indications of goods and are, not or ceased to
be protected in their country of origin, or which have fallen into disuse in that country
g) Which, although true as to the territory, region or locality in which the goods originate,
but falsely represent to the persons that the goods originate in another territory, region or
locality.
Sec. 11 The Registration Of The Geographical Indication can be applied by -
1. Any association of persons or producers or any organisation or authority established
by or under any law for the time being in force.(Authorised user)
2. Representing the interest of the producers of the concerned goods (producer)
3. who are desirous of registering a geographical indication in relation to such
goods. (Registered proprietor)
 Registration of GI (Sec. 11 – 24)
Sec 3. Registrar of Geographical Indications. —(1) The Controller-General of Patents, Designs
and Trade Marks appointed under Sec.3 (1) of the Trade Marks Act, 1999, shall be the Registrar
of Geographical Indications.
Sec. 11- Application for Registration- Before filing the Application for GI, must ensure that the
product falls under the ambit of Sec. 2(e){definition of GI}. the Application must have :
• Statement of the case for GI Tag
• Class of good to which GI is applicable
• Certified copies of the geographical map of the region to which the GI belongs
• Description of the GI
• Details of the applicants with their addresses
Appeal -HIGH
COURT
Sec 12: withdrawal of acceptance (by the Registrar if it is accepted by error)
Sec 13: Advertisement of application (after acceptance)
Sec 14: Opposition to registration (any person within 3 months from the date of advertisement
or re-advertisement of application for registration, further period not exceeding 1 month)
Sec 15: Correction and amendment (permitted by registrar)
Sec 16: Registration
Sec. 17: Application for registration as Authorized User- Any person claiming to be the
producer of the goods in respect of which a geographical indication has been registered -
apply in writing to the Registrar - for registering him as an Authorized User (AU) of such GI.
Sec 18: Duration, Renewal, and Restoration of Registration
1. The registration of a GI shall be for a period of 10 years but may be renewed from time
to time in accordance with the provisions of this section.
2. The registration of an Authorised User shall be for a period of 10 years or for a period
till the date on which the registration of Authorised user GI expires
3. It has to be renewed by the payment of the prescribed fee in the prescribed manner
4. Registrar has to send notice in the prescribed manner to the registered proprietor or the
authorised user, as the case may be of the date of expiration.
5. Renewal after 06 months and within 1 year from the last registration, Registrar can
allow that application if he thinks fit.
Sec. 20, Effect of registration: No action for infringement of unregistered GI.
Sec. 21: Rights conferred by registration-
• To the registered proprietor of the GI and the authorized user or users thereof to obtain relief
in respect of infringement of the GI in the manner prescribed by the Act.
• To the authorized user thereof the exclusive right to use the GI about the goods in respect of
which the GI is registered.
• The exclusive right to use the GI given subjected to conditions and limitations to which the
registration is subject.
• Where 2 or more persons have authorized users of GI which are identical with or nearly
resemble each other, the exclusive right to use of those GI shall not be deemed to have been
acquired by any one of those persons as against any other of those persons, but each of those
persons has otherwise same rights as against another person as he would if he were the sole
authorized user.
Sec. 22 -Infringement of Registered Geographical Indication –
1. A registered geographical indication is infringed by a person who, not being an authorized user
thereof,--
a) uses such geographical indication by any means in the designations or presentation of
goods that indicates or suggests that such goods originate in a geographical area other
than the true place of origin of such goods in a manner that misleads the persons as to
the geographical origin of such goods; or
b) Uses any geographical indication in such a manner that constitutes an act of unfair
competition including passing off in respect of registered geographical indication-
i) all acts of such a nature as to create confusion by any means whatsoever with the
establishment, the goods or the industrial or commercial activities, of a competitor
ii) false allegations in the course of trade of such a nature as to discredit the
establishment, the goods or the industrial or commercial activities, of a competitor.
iii) geographical indications, the use of which in the course of trade is liable to mislead
the persons as to the nature, the manufacturing process, the characteristics, the
suitability for their purpose, or the quantity, of the goods
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(AU).
3) Any person who is not an authorised user of a geographical indication registered under
this Act in respect of the goods or any class or classes of goods notified under
sub-section (2), uses any other geographical indication to such goods or class or classes of
goods not originating in the place indicated by such other geographical indication or uses
such other geographical indication to such goods or class or classes of goods even
indicating the true origin of such goods or uses such other geographical indication to such
goods or class or classes of goods in translation of the true place of origin or accompanied
by expressions such as ‘kind’, ‘style’, imitation or the like expression, shall infringe such
registered geographical indication.
Tea Board, India v ITC Limited, Calcutta HC, 2011- the first case on infringement of a
registered GI in India. The HC denied an interim injunction to the Tea Board of India, the
registered proprietor of the GI, Darjeeling. The Tea Board sued ITC, inter alia, under the GI
Act, for infringement of its registered GI against the use of the name “Darjeeling Lounge”,
alleging such use amounted to an act of unfair competition including passing off.
•The Court held that the registered proprietor can complain against the use of the GI under a
passing-off action if the GI has any ‘Connection’ with the product with which it is exclusively
associated under its registration. The Court concluded that there was no deception or
confusion. The use of Darjeeling is not the sole prerogative of the Tea Board, the word has
been used in trading and commercial business for decades before the GI Act that the
subsequent registration of the GI would not, prima facie, entitle the Tea Board to any interim
relief in this case.
Remedies for infringement of GI- Remedies to infringement of GI are similar to trademark
infringement remedies. Remedies for the conservation of GI is of 2 kinds:
1. Civil remedies
• Injunction
• Damages
• Delivery of the infringing labels and indications containing products

2. Criminal remedies -In case of –

• Falsifying and incorrectly applying geographical indications to the goods.
• Selling goods to which false geographical indications apply.
• Misrepresentation of a geographical indication in registered form.
• Improperly describes a place of geographically connected business indication Registry.
• Falsification of entries in the register.
-Imprisonment is for 06 months to 03 years and a fine of not less than rupees 50 thousand
but may extend to rupees 02 lakh (the court for adequate and special reasons in writing
may grant lesser punishment)
 Role and Functions of Registrar
Sec. 3 (1) -The Controller-General of Patents, Designs, and Trade Marks appointed under
the Trade Marks Act shall be the Registrar of Geographical Indications.
Sec 4- Power of Registrar to withdraw or transfer cases, etc.- withdraw any matter
pending before an officer appointed under the said sub-section (2) and deal with such matter
himself either de novo (a fresh) or from the stage it was so withdrawn or transfer the same to
another officer so appointed who may, subject to special directions in the order of transfer,
proceed with the matter either de novo or from the stage it was so transferred.
Sec. 60, Powers of Registrar-
In all proceedings under this Act before the Registrar,-
• The Registrar shall have all the powers of a civil court for the purposes of receiving
evidence, administering oaths, enforcing the attendance of witnesses, compelling the
discovery and production of documents and issuing commissions for the examination of
witnesses.
• The Registrar may, subject to any rules made in this behalf under section 87, make such
orders as to costs as he considers reasonable, and any such order shall be executable as
a decree of a civil court.
• The Registrar may, on an application made in the prescribed manner, review his own
decision.
 Comparison between Geographical Indication and Trade Mark

Geographical Indication Trade Mark

Indicates that the product is produced in a Trade Mark is used by an enterprise to

certain place. distinguish its goods and services from
The product has certain characteristics those of others.
because of its origion.
Trade Mark gives its owner the right to
Community Rights- it is used by all exclude others from using the trademark.
producers who make their products in the
place designated by a GI and whose
products have same quality