The Basmati Case

Basmati – A variety of Rice from Punjab Province of India &

Pakistan
The Rice – a slender, Aromatic, long grain Variety – originated
in this region – major export crop for both countries – annual
exports worth $ 300m –represent the livelihood of thousands
of farmers
The “Battle of Basmati” –started in 1967 – RiceTec Inc, USA
awarded a patent – US 5663484 relating to plants & seeds –
seeking monopolies – various rice lines – including some –
characteristics similar to Basmati lines
Concerned with potential effects on exports – In 2000 – India
– requested re-examination
 The Basmati Case (Contd..)

The patentee – withdraw a number of claims – those covering

those covering basmati type lines
Further claims withdrawn – concerned raised by USPTO
The dispute - from patent – the misuse of the name Basmati”
In some Countries – the terms “Basmati” – only to long grain
aromatic rice grown in India and Pakistan
RiceTec – for registration of trademark “Taxmati” in UK –
claiming “Basmati” – generic term – successfully opposed – a
code of Remarketing of rice established in UK – similar
regulations in Saudi Arabia – the World’s largest importer of
Basmati rice
 The Basmati Case (Contd..)

The code – the belief in consumer, trade and Scientific

circles – the distinctiveness of authentic Basmati rice – only
from northern regions of India & Pakistan – unique and
Complex combination – environment, soil, climate,
agricultural practices, genetics of Basmati varieties
In 1998 – US Rice Federation – term “Basmati” – generic –
a type of aromatic rice
A Collective US & Indian Civil socitey organisations –
petition – preventing US-grown rice –being advertised with
the word “Basmati”
In May 2001, US Deptt of Agriculture/ US Federal Trade
Commission – rejected
 The Basmati Case (Contd..)

Held – neither labeling of rice as “American-grown Basmati”

– misleading –deemed “Basmati” – a generic term
The Problem – not limited to US – Australia, Eqypt, Thailand
and France – also growing – take a lead – officially deemed
“basmati” – a generic term
The name “Basmati” – can be protected – registering it as a
Geographical Indication
But India – explain - why no action – against gradual
adoption of generic status of Basmati – over last 20 years –
why no formal protest – US Federal Trade Commission –
declared “basmati” – generic
Advantage
 One function of these names-their
geographical connotation
 Geographical indications acquire high
reputation, thus valuable commercial asset
 Often exposed to misappropriation,
counterfeiting or forgery
 Their protection – national as well as
international – highly desirable
International Scenario
 Hardly any category of IP law containing such
a variety of concepts of protection
 The Paris Convention – notion of geographical
indication missing
 However Article 1 para (2) defines as subject
of IP
 Indication of Source and

 Appellations of origin
 Distinction
 Indication of Source:
 Any expression or sign used to indicate a product or
service originates in a country , a region or a specific
place
 Champagne – a special kind of sparkling wine –
originate – Champagne region of France; Cognac –
brandy – French region around the town of Cognac
 Appellation of origin:
 Geographical name of a country, region or specific
place serving to designate a product originating
therein the characteristic qualities due exclusively or
essentially to geographical environment including
natural or human factors or both natural and human
factors
 Differnce (Contd..)

 Use of an appellation of origin – quality link – product and

its area of production
 Use of an indication of Source – merely subject to condition
– product in question originates from the place designated
by the indication of source
 Appellations of origin – special kind of indication of source
 Traditionally “indication of source” comprises all
appellations of origin
 Generally rather a designation for all those indications of
source – not considered to be appellations of origin
Geographical Indications – also
Appellations of Origin (Examples)
• Bordeaux Wine
• Stilton Cheese
• Roquefort Cheese
• Champagne
• Sheffield Steel

• Stilton – way –Cheese is made – not where –

originates
• Sheffield Steel – a geographical indication – not claim –
qualities – situation of Sheffield - in the north of
 Progress
 “Geographical Indication” as chosen by WIPO – subject
matter of a new treaty for international protection of
names and symbols – indicating a certain geographical
origin of a given product
 Used in its widest possible meaning
 Embraces all such existing means of protection
regardless whether they indicate qualities due to its
geographical origin or merely indicates the place of origin
 Also covers symbols – capable of indicating the origin
without literally naming its place of origin
 Examples: Eiffel Tower for Paris, the Matterhorn for
Switzerland or the Tower Bridge for London
 GI v/s Trademark
 Trdemark identifies the enterprise – offers certain
products or services on the market
 A Geographical indication identifies a geographical
area – one or several enterprises located –produce
the kind of product – GI is used; no “owner” –sense
– one person/enterprise exclude other from use of a
GI but each and every enterprise – in the area –
right to use – said indication – products originating –
said area but subject to compliance with certain
quality requirements as prescribed; Champagne – all
wine growers – but Moet – its Champgne – “Moet”
 Meaning of ”protection”
of Geographical Indications
 Right to prevent unauthorized persons from using
GI – for products – not originating from
geographical place indicated
or
not complying with the prescribed quality
standards.

 Protecting GI against becoming generic

expressions – lose all their distinctiveness – lose
protection
 Meaning (Contd..)
 Whether a geographical indication – generic term –
void of any protection ?
 To be determine by national law
 A GI - regarded in one country – a GI and is protected
 Whereas consider in other country a generic or semi-
generic term
 Examples for such diverging treatment of G names –
“Champagne” and “Chablis” – in France – for products
originating from a certain geographical area, certain
quality Whereas in USA regarded as being semi
generic names, also used for wines not originating
from French area of production
Various Forms at National
Level
 Three main categories:
 Protection – not based on a decision taken by
the competent authority but from the direct
application of legislative provisions or principles
of Jurisprudence
 Through registration of collective marks
(including agricultural labels) or certification
marks (or Guarantee marks)
 All special titles of protection – decision made by
the competent government authority –
comprises the protection of appellations of origin
e.g. Russian Law or the French Law of 1919
 Special Titles of Protection
 Protection of indication of Source – false or
deceptive use – insufficient
 Besides the need for protection –
encouragement of local, traditional methods
of production emerged
 In France, First statute – protection of GI
through a special title of industrial property –
appellations of origin
 Because of success of the French appellations
of origin, same or similar system introduced –
other country – the sector of wines and spirits
Registration of Collective Marks
or Certification Marks
 Provides a means for the protection of GI independent of
Statutory or Judicial measures
 Collective mark – use by the members of collective body
– an association or cooperative, owned by the
association – grants exclusively grants its members –
right to use
 Certification marks owned by a certification authority –
ensures goods bearing the mark possess the certified
qualities
 Used to certify inter alia the origin of products or
services
The Law of Unfair Competition
 Use of certain GI for goods or services – not
originating – misleading – deceive consumers
 A misappropriation of the goodwill of a person –
entitled – use the GI
 An action for unfair competition
 Conditions for a successful action vary from country
to country, following basic principles recognized
 Acquired certain reputation or goodwill
 Use misleading
 Proof of damages or likelihood of damages required
Protection of Geographical
Indications through
Multilateral Treaties
 The Paris Convention for the Protection of
Industrial Property : Article 1(2); Article 9(3);
Article 10(1); Article 10(2)
 The Madrid Agreement for the Repression of
False and Deceptive Indications of Source on
Goods : Article 1(1); Article 3; Article 4
 The Lisbon Agreement for the Protection of
Appellations of Origin and their international
Registration : Article 1(2); Article 2(1); Article 2(2);
Article 5(1); Article 5(3) to (5); Article 5(6); Article 3
 Geographical Indications and
TRIPS
The negotiations – most difficult – clear division – main
proponents – US and EU
In subsequent discussions in TRIPS council – emerges
divisions – developed and developing countries
The outcome – current text of TRIPS – a basic standard of
protection – a higher standard – for wines and spirits
Higher Standard – not reflect – unique characteristics of
wines and spirits – rather compromise reached
This imbalance – demands – additional protection – number
of countries – including India, Pakistan, Kenya, Mauritius
and Sri Lanka
 Geographical Indications and
TRIPS (Contd..)
Other Countries – Argentina, Chile and Gautamala argument
– extending the additional protection – impose extra
financial and administrative burden – other WTO members –
outweigh any trade benefit
Such burden – fall heavily – developing countries
Difficult to evaluate the merits – both sets of arguments – of
course – reflect differences – perceived economic interest –
both developed and developing countries
Requires further negotiations – TRIPS Council – a
multilateral register of geographical Indications for Wines
 Geographical Indications and
TRIPS (Contd..)
The Doha Ministerial Conference – extended – this mandate
- a system – includes spirits – the purpose – not clearly
defined
Group of Countries differ – some – full international register
– all member countries – obliged – protection to
geographical indications – meeting the requirements for
registration
Others – as a voluntary system of registration – source of
information
To date – three different proposals – EU Proposal, The
Hungarian Proposal and Joint Proposal by US, Canada, Chile
and Japan
 Geographical Indications and
TRIPS (Contd..)
The EU – a register – effective for all WTO members –
irrespective – any geographical indications – included on
the register
Any WTO member – wish to challenge any inclusion – notify
the country concerned – enter into negotiations – for
resolving the disagreement
The Hungarian Proposal – any inclusion successfully
challenged – certain specified grounds – that geographical
indication – need not to be protected – other WTO
members
In both these two proposals – presumption of eligibility –
any legal means – in any WTO members
 Geographical Indications and
TRIPS (Contd..)
By Contrast – the Joint Proposal – US, Canada, Chile and
Japan – a system of registration – binding only – those –
seeking to participate
Participating members – make use of register – e.g.
examining trademark applications – containing /consisting of
- a geographical indications
Non- participating members – encouraged to make similar
use – register
Negotiations on the register – to be completed
 Indian Scenario
 In respect of any agricultural goods, natural goods,
manufactured goods including food stuff, goods of any
handicraft – no specific Law governing geographical
indications of such goods
 Under TRIP, no country under obligation to extend
protection – unless – GI protected in the country of its
origin
 India required to offer protection imported from other
countries
 Necessary to have a comprehensive legislation for
registration – providing adequate protection for
geographical indications; hence the bill
Salient Features
 Definitions of Several Important Terms
 Establishment of a GI Registry
 Maintenance of a Register of GIs in two Parts – Part A
and Part B
 Registration in specified classes
 Prohibition of registration of certain GI
 Compulsory advertisement
 Registration of Authorized Users
 Renewal, rectifications and restoration
 Prohibition of registration of GI as a trade mark;
 Offences and penalties
 Effects of registration and rights conferred by it.
 and many more …..
 ACT 48 of 1999
 The Geographical Indications of Goods (registration
and Protection) Bill, 1999 was introduced
 After having passed by both the houses of Parliament
in December 1999 received the assent of the President.
 Came on the statute Book as
THE GEOGRAPHICAL INDICATIONS OF GOODS
(REGISTRATION AND PROTECTION) ACT, 1999
 To be administered by the Controller General of
Patents, Designs and Trademarks – Registrar of
Geographical Indications
 The Geographical Indications Registry at Chennai
Geographical Indication
(Definition)
 As per sec 2(e):
 An indication which identifies such goods as agricultural
goods, natural goods or manufactured goods as
 Originating or manufactured in the territory of country, or
a region or locality in that country
 Where a given quality, reputation or other characteristics
of such goods
 Essentially attributable to its geographical origin
 And in case where such goods are manufactured goods
 One of the activities of either production or of processing
or preparation of goods concerned
 Takes place in such territory, region or locality as the case
may be
What is a Geographical
Indication (GI)?
 “Geographical Indication” is in relation
to goods
 Agricultural goods
 Natural goods
 Manufactured goods
 Goods of Handicraft
 Industrial goods
 Foodstuff
Agricultural Goods
Alphanso / Dasheri / Langda
Mango
India has peculiar human skills (tools and techniques).
These skills have been tried, tested and verified. The
traditional processes are still looks better than what we
call it modern method. Examples:

 Tribals produce very high

quality of Tin from Cassiterite
mineral in Bastar Dist with
traditional processes but better
purity.

 Jharkhand Iron ore processing

upto 99.99% purity by local
people with local skill.

 Medicinal and Herbal plants in

bio-diversity area.

 Produced good oil / pest etc.

Natural Goods
Mining of Goa Iron Ore
Surface Diamond Mining
Tools in Panna

It is traditional diamond picking way by locals

Handicrafts Special Wood
Works from NE Region

Special Tools and Material

Handicrafts Special Wood
Works from Nagaland

Special Tools and Material

 Handicrafts Kauna (Water
Reed) Crafts Manipur

Kauna is a type of reed usually grown in the wetlands and

marshes.  Imphal valley of Manipur is the centre for kauna crafts.
This is often used for making mats, Chairs, cushion, coasters,
bags, moorah etc. This product is in great  demand.
Materials and Skills
Madhubani painting, Dharbhanga
Handicrafts
Jaipur blankets

Human Skills
HANDICRAFTS
BHADOHI CARPET

Tools and Skills

Food Item
Bengal Rasgulla

Materials and Skills

What is a GI (contd.)
 Indication
 Any Name (includes abbreviation)
 Geographical or Figurative representation
e.g. Logo
 Any Combination of name and figure
What is a GI (contd.)
 As originating or
 Manufactured
 in the territory of a country, or
 region or
 locality in the territory
What is a GI (contd.)
 where a given
 quality
 reputation or
 other characteristic of such goods
 Is essentially attributable to its
geographical origin
What is a GI (contd.)
 And in case of manufactured goods
 One of the activities of
 Either production or
 Of processing
 Or preparation
 Takes place in
 Such territory
 Region
 locality
What is a GI (contd.)
Any name which is not the name of a
country, region or locality of that
country shall also be considered as a
geographical indication if it relates to a
specific geographical area and is used
upon or in relation to particular goods
originating from that country, region or
locality.
Who Can Register?
Any association of persons or producers
or any organization or authority
established by or under law
representing the interest of
producers of the concerned goods
Producer
 Agricultural goods
 Producer
 Processor
 Packager
 Natural Goods
 Exploiter
 Manufactured Goods
 Manufacturer
Who Can Apply?
 Any association of persons, producers,
organizations or authority established by or
under law
 The applicant – represent the interest of
producers
 The application – in writing – prescribed form
 The application – addressed to the registrar
along with prescribed fee.
 What does it Imply
 An indication or appellation of origin
 Used to identify agricultural, natural or
manufactured goods originating in the said
area
 Originates from a definite territory in India
 Should have a special quality or
characteristics or reputation based on the
climatic or production characteristics unique
to the geographical location
Why GI Protection
 Cultural Argument
 Community Property
 Matter of National Pride
 Protection of Reputation, Goodwill
 Protection of Quality
 Protection of the ‘Original’ Product
 Advances in Plant Breeding and Biotechnology
 Protection of Traditional Knowledge
Why GI Protection (contd.)
 Economic Argument
 Protection Against Unfair Competition
 Demand vs.Supply
 Advantages of Premium: Niche Market
 Consumer Perception of Genuineness of goods
 Higher Prices
 Attracting Foreign Investors, eg partnerships
 Important Role in Rural Development
 Employment Generation
Why GI Protection (contd.)
 International Commerce
 TRIPS obligation
 No protection if not protected in the
country of origin
Examples of Possible GIs
in India
 Basmati Rice
 Darjeeling Tea
 Kanchipuram Silk Saree
 Alphonso Mango
 Nagpur Orange
 Kolhapuri Chappal
 Bikaneri Bhujia
 Rampur Knife
 Aligarh Lock etc.
Benefits of Registration
 Confers legal protection to geographical
Indications in India
 Prevents unauthorized use of a registered
geographical indications by others
 Boosts exports of Indian geographical
indications by providing legal protection
 Promotes economic prosperity of producers
 Enables seeking legal protection in other
WTO member countries
Conditions for Registration (Sec
8)

 May be registered in respect of any or all of

the goods, comprised in such class of goods
and in respect of a definite territory of
country, or a region or locality
 Classification shall as far as possible, conform
to the international classification of goods
 Any question arising classification of goods or
determination of the definite area – to be
determine by the Registrar – final decision
 Part A and Part B of the
Register(sec 7)
 The Register – two parts – Part A and
Part B
 The Particulars relating to the registration
of the geographical indications – Part A of
the register
 The particulars relating to the registration
of the authorized users – Part B of the
register
 Prohibition of Registration (sec 9)
 Seven Categories:-
 Use likely to deceive or cause confusion
 Use contrary to law in force
 Comprises or contains scandalous or obscene matter
 Contains any matter likely to hurt the religious
susceptibilities of any class or section of citizens
 Otherwise be disentitled to protection in a court
 Determined to be generic names or indications of goods
or cease to be protected in their country of origin
 Literally true as to the territory, region or locality but
falsely represent to the persons that goods originate in
another territory, region or locality
 Application for Registration
 Any association of person producers or any
organization desirous of registering a GI
 Apply in writing in the prescribed form
 Accompanied by the prescribed fee.
• The application shall contain
 A statement as to how GI serves to designate the
goods as originating from the concerned Territory
 Class of goods to which GI shall apply
 The geographical map of the territory, region ..in which
goods originate or being manufactured
 The particulars regarding GI – comprised of the words
or figurative element or both
 A statement containing particulars of producers
 Application for Registration
(Contd..)
 A single application for different classes of goods and
fee shall be in respect of each such class of goods
 Filed in the office of GI Registry within whose
territorial limits, that particular territory is situated
 Every application – examined
 May refuse or accept absolutely or subject to
amendments, modifications, conditions as think fit
 In case of refusal or conditional acceptance, shall
records in writing the grounds and material relied
upon in arriving such decision
 The Registration Procedure
Appeal
Filing an application To IPAB

Opportunity
Examination Objections Refused
For hearing

Acceptance

Advertised in Opposition, Allowed or

The GI Journal If any refused

Acceptance
Of GI Particulars of regd.
Entered in the
GI entered in Part A
GI Register
Particulars of regd. Of the register
Authorized user entered In
Registration Part B of the register
Certificate issued
Who can Apply ?
 ANY ASSOCIATION OF PERSONS,
PRODUCERS, ORGANISTION OR
AUTHORITY ESTABLISHED BY OR
UNDER LAW.
 THE APPLICANT MUST REPRESENT THE
INTEREST OF THE PRODUCERS.
How to Apply ?
 APPLICATION SHOULD BE MADE IN THE
PRISCRIBED FORM.
 SHOULD BE SIGNED BY APPLICANT OR BY
HIS AGENT.
 APPLICATION SHOULD BE IN TRIPLICATE
ALONG WITH STATEMENT OF CASE IN
TRIPLICATE AND FIVE ADDITIONAL
REPRESENTATION.
Forms and Fees
 GI-1(A):- GOODS IN SINGLE CLASS.
Rs.5,000/-
 GI-1(B):- GOODS IN SINGLE CLASS FROM A
CONVENTION COUNTRY. Rs.5,000/-
 GI-1(C):- GOODS IN DIFFERENT CLASSES.
Rs.5,000/- FOR EACH CLASS.
 GI-1(D):- GOODS IN DIFFERENT CLASSES
FROM A CONVENTION COUNTRY. Rs.5,000/-
FOR EACH CLASS.
Statement of Case
 A STATEMENT AS TO HOW THE
GEOGRAPHICAL INDICATION SERVES TO
DESIGNATE THE GOODS AS ORIGINATING
FROM THE CONCERNED GEOGRAPHICAL AREA
IN RESPECT OF SPECIFIC QUALITY,
REPUTATION OR OTHER CHARACTERISTICS
WHICH ARE DUE EXCLUSIVELY OR
ESSENTIALLY TO THE GEOGRAPHICAL
ENVIRONMENT WITH ITS INHERENT NATURAL
AND HUMAN FACTORS AND THE PRODUCTION,
PROCESSING OR PREPRATION OF WHICH
TAKES PLACE IN SUCH GEOGRAPHICAL AREA.
Statement of Case
 DESCRIPTION OF GEOGRAPHICAL
AREA OF PRODUCTION.
 MAP OF THE AREA WITH LATTITUDE
AND LONGITUDE AND ATTESTED BY
COMPETENT AUTHORITY.
 BRIEF DESCRIPTION OF GOODS.
Statement of Case
 PROOF OF ORIGIN – A BRIEF HISTORY OF
THE ORIGIN AND EVOLUTION OF THE G.I
WITH SUPPORTING DOCUMENTS.
 METHOD OF PRODUCTION OF THE GOODS.
 UNIQUENESS –
 UNIQUE GEOGRAPHICAL ENVIRONMENT
 ISPECIAL HUMAN SKILLS
 OTHER INHERENT CHARACTERISTICS
ASSOCIATED WITH G.I.
Statement of Case
 INSPECTION STRUCTURE – PARTICULARS OF
THE MECHANISM TO ASSURE THAT THE
STANDARD, QUALITY, INTEGRITY AND
CONSISTENCY OR OTHER SPECIAL
CHARACTERISTIC IN RESPECT OF THE
GOODS ARE MAINTAINED BY THE
PRODUCERS.
Details of the Applicant
 DETAILS OF ALL THE APPLICANT TOGETHER
WITH ADDRESS SHOULD BE GIVEN.
 IF THERE IS A LARGE NUMBER OF
PRODUCERS A COLLECTIVE REFERANCE TO
ALL THE PRODUCERS CAN BE MADE IN THE
APPLICATION AND THE G.I, IF REGISTRED,
WILL BE INDICATED ACCORDINGLY IN THE
REGISTER.
Additional Representation
 REPRESENTATION OF THE G.I.
 SPECIFICATION OF GOODS.
 CLASS OF GOODS.
 NAME AND ADDRESS OF THE APPLICANT
AND AGENT IF ANY.
 PERIOD OF USE.
 SHOULD BE SIGNED BY APPLICANT OR
AGENT.
Translation and Transliteration
 IF A G.I CONTAINS A WORD OR WORDS IN
CHARACTER OTHER THAN ROMAN OR
DEVNAGARI.
- AN ENDORSMENT SHOULD BE
MADE IN THE APPLICATION FORM AND
ADDITIONAL REPRESENTATION TO THAT
EFFECT.
- SUFFICIENT TRANSLATION
AND TRANSLITERATION SHOULD BE GIVEN.
Affidavit
 AN AFFIDAVIT AS TO HOW THE APPLICANT
CLAIM TO REPRESENT THE INTEREST OF
THE ASSOCIATION OF PERSONS OR
PRODUCERS OR ANY ORGANISATION OR
AUTHORITY ESTABLISHED BY OR UNDER
ANY LAW SHOULD ACCOMPANY THE
APPLICATION.
 AFFIDAVIT SHOULD BE PROPERLY STAMPED.
Payment of Fee
 FEE MAY BE PAID –

 1) CASH

 2) MONEY ORDER ADDRESSED TO

REGISTRAR OF GI CHENNAI.

 3) CHEQUE OR DEMAND DRAFT DRAWN

ON A SHEDULED BANK IN FAVOUR OF
REGISTRAR OF G.I CHENNAI AND
PAYABLE AT CHENNAI.
Signing of the Documents
 APPLICATION SHOULD BE SIGNED BY
AUTHORISED SIGNATORY.
 BODY CORPORATE – CHIEF EXECUTIVE OR
MANAGING DIRECTOR.
 ORGANISATION OR AUTHORITY – SECRETORY
OR OTHER PRINCIPAL OFFICER.
 PARTNERSHIP – ANY ONE OF THE PARTNERS.
Signing of the Documents
 CAPACITY OF THE SIGNATORY SHOULD BE
STATED BELOW THE SIGNATURE.
 NAME OF THE SIGNATORY SHOULD BE
GIVEN IN HINDI OR ENGLISH IN BOLD
LETTERS ALONG WITH THE SIGNATURE.
Where to Sent ?
 THE APPLICATIONS SHOULD BE ADDRESSED
TO :-
 THE REGISTRAR OF GEOGRAPHICAL
INDICATION
GEOGRAPHICAL INDICATIONS REGISTRY
IPR OFFICE BUILDING,
GST ROAD, GUINDY,
CHENNAI – 600 032.
E-MAIL : [email protected]
Web site : girindia.in
Preliminary Scrutiny
 A SCRUITINY OF THE APPLICATION WILL BE
DONE AFTER THE RECEIPT OF THE
APPLICATION AND A REPORT WILL BE SENT
TO THE APPLICANT. ONE MONTH TIME WILL
BE GIVEN TO REMEDY THE DEFICIENCIES IF
ANY.
Consultative Group
 A CONSULTATIVE GROUP OF A MAXIMUM OF
SEVEN MEMBERS UNDER THE
CAHIRMANSHIP OF THE REGISTRAR OF
GEOGRAPHICAL INDICATIONS SHALL BE
FORMED TO ASCERTAIN THE CORRECTNESS
OF THE PARTICULARS FURNISHED IN THE
STATEMENT OF CASE BY THE APPLICANT.
Examination Report
 AN EXAMINATION REPORT SHALL BE ISSUED
TO THE APPLICANT UPON THE
RECOMMENDATIONS OF THE CONSULATIVE
GROUP.
 Advertisement
 IF THE APPLICATION IS ACCEPTED THE
SAME WILL BE ADVERTISED IN THE
GEOGRAPHICAL INDICATIONS JOURNAL,
THE OFFICIAL JOURNAL OF THE
GEOGRAPHICAL INDICATIONS REGISTRY.
 Notice of Opposition
 IF ANY BODY WANTS TO OPPOSE THE
REGISTRATION OF A GEOGRAPHICAL
INDICATION; HE HAS TO FILE THE NOTICE
OF OPPOSITION WITHIN THREE MONTHS
OR WITHIN SUCH FURTHER PERIOD NOT
EXCEEDING ONE MONTH IN THE
AGGREGATE FROM THE DATE ON WHICH
THE JOURNAL WAS MADE AVAILABLE TO
THE PUBLIC.
Registration
 IF NO NOTICE OF OPPOSITION OR
APPLICATION FOR EXTENSION OF TIME FOR
FILING NOTICE OF OPPOSITION IS
RECEIVED WITH IN THE THREE MONTHS
PERIOD, THE REGISTRAION CERTIFICATE
WILL BE ISSUED. REGISTRATION IS VALID
FOR 10 YEARS WHICH IS LIABLE TO BE
RENEWED AFTER EVERY 10 YEARS.
Registration
 When an application for registration of a GI has
been accepted and either
 The application -not opposed and the time for
opposition - expired
 The application - opposed and the opposition -
decided - favour of applicant
 The registrar –register the said GI and
authorized users if any mentioned in application;
date of making application – date of registration
 On registration – issue a certificate sealed with
the seal of GI Registry
 Where registration – not completed within 12
months, notice to the applicant – treat the
application as abandoned
 Who is a registered
Proprietor ?
 Any association of persons, producers,
organization or authority established by
or under the law – a registered
proprietor
 Their name should be entered – the
Register – as registered proprietor – the
Geographical Indication applied for.
Who is an authorized User? (sec 17)

 A producer of goods – apply for registration –

as an authorized user
 Apply in writing in the prescribed form – with
prescribed fee
 The provision relating to filing; examination;
refusal and acceptance, advertisement;
opposition; correction and registration shall
apply – application and registration of
authorized user
Who is a Producer ?
 A producer – a person dealing with
three categories of goods
 Agricultural goods including the production,
processing, trading or dealing
 Natural Goods including exploiting, trading
or dealing
 Handicrafts or Industrial goods including
making, manufacturing, trading or dealing
Duration of Registration (sec 18)

 The registration – for a period of 10

years
 Renewal possible – further periods of
10 years each
 Not renewed – liable to be removed
from the register
Effect of Registration (sec 20)
 No person – entitled to institute any
proceeding to prevent, or to recover damages
for, the infringement of an unregistered GI
 Though not compulsory, registration affords
- legal protection – facilitate an action for
infringement
 Nothing – deemed to affect the right of action
– any person – passing off goods – goods of
another person
Rights conferred
by Registration (sec 21)
 The registered proprietor – authorized users
– initiate infringement action
 Authorized users – exclusive right – use the
Geographical Indication
 Rights – subject to the conditions and
limitations – which registration is subject
 Two or more authorized users – have co-
equal rights
Who can use Registered GI ?
 Only an authorized user –
exclusive right – use the GI
– relation to goods – in
respect of which - registered
Infringement – When ? (sec 22)

 When unauthorized use indicates – such

goods originate – a geographical area other
than – true place of origin – such goods – in
a manner – misleads public as to their GO
 When use – results in unfair competition
including passing off
 When the use of another GI – results in false
representation – public – goods originates in
a territory – GI relates
Who can Initiate action ?
 The registered proprietor
 Authorized users
 Prohibition of Assignment or
Transmission etc (sec 24)
 Any right to a registered geographical
indication – not the subject matter –
assignment, transmission, licensing,
pledge, mortgage or any such
agreement
 On the death of an authorized user –
his right – devolve on his successor in
title
Offences :Falsely applying GI
(sec 38)

 A person – deemed to falsely apply to goods a

GI who – without the assent of authorized user
 Apply such GI or a deceptively similar GI to
goods or any package containing goods
 Uses any package bearing a GI-
identical/deceptively similar – GI of authorized
user – packaging, filling or wrapping therein
any goods other than genuine goods of
authorized user of GI
Penalty (sec 40)

 Imprisonment of not less than 6 months

– extend to 3 years and with fine – not
less than Rs. 50,000/- - extend to Rs.
2,00,000/-
 Court may award - punishment lesser
than minimum punishment – adequate
and special reasons – to be mentioned
in the judgment.
Enhanced Penalty (sec 41)

 For second or subsequent conviction :

 Imprisonment not less than 1 year –
extend upto 3 years and fine – not less
than Rs. 1,00,000/- - extend upto Rs.
2,00,000/-
 Discretion vested with court – awarding
lesser punishment.
Penalty for representing a GI
as Registered (sec 42)
 No person – representation
 W.r.t. a GI - not being a registered GI – as
a registered GI
 a registered GI – registered – respect of
any good – not in fact registered
 Imprisonment of a term –may extend to
3 years or with fine or with both
Penalty for improperly describing
a place of business connected
with GI Registry
(sec 43)

 Uses his place of business/ any

documents issued by him/ words – lead
to belief – his place of business –
officially connected with GI Registry –
punishable with imprisonment – term –
may extend to 2 years or with fine or
with both
Penalty for Falsification of
Entries in the Register (sec 44)
 Any person makes or causes to make – false
entry
 Or a writing falsely purporting to be copy of
an entry
 Or produces or tenders or cause – in evidence
any writing – knowing the entry or writing –
false
 Punishable with imprisonment for a term –
may extend to 2 years or with fine or with
both
Offences by Companies (sec 49)

 Where a person – offence – company, the

company and every person responsible –
conduct of its business is liable
 Where accused proves – offence without his
knowledge – will not liable
 Where proved – offence – consent or
connivance – attributable to the neglect-
director, manager, secretary or any other
officer – deemed to be guilty
Relief (sec 67)

 In any suit for infringement or for

passing off
 Injunction and
 At the option of the plaintiff
 Either damages or accounts of profits
Suit for Infringement (sec 66)

 No suit for infringement shall be

instituted – any court inferior to a
district court having jurisdiction to try
the suit
II Case Studies of Registered GIs
POCHAMPALLY
IKAT
CHANDERI SAREE
KOTA DORIA
ROSE WOOD INLAY OF
MYSORE
KANGRA TEA
CHENNA PATTNA TOYS
KULLU SHAWL