GEOGRAPHICAL INDICATIONS FOR NATURAL PRODUCTS

Fundamentals of Intellectual Property Law

Submitted by
Pallavi Joshi
SF0114023
rd th
3 Year (6 Semester)

National Law University, Assam

 Content

Table of Statutes………………………………………………………………………………..i
Table of Abbreviations…………………………………………………………………………i
Introduction……………………………………………………………………………………1
Aim…………………………………………………………………………………………….1
Objectives…………………………………………………………………………………...…1
Scope and Limitations…………………………………………………………........................1
Research Questions…………………………………………………………...………………..1
Review of Literature……...………………………………...………………………………….2
Research Methods…………………………………………..………………..………………...2
Geographical Indications……………………………..…………………...…………………3
Significance of Geographical Indication…………………………………………………….3
Legal Position of Geographically Indication………………………………………………..4
Legal Position globally………………………………………………...……………...5
Legal Position in India……………………………………………………………….5
Geographical Indication of Natural Products………………………………6

Procedure of Registration of Geographical Indication……………………..7

Products not eligible for Geographical Indications…………………………8

Term of Protection…………………………………………………………....9
Infringement of Geographical Indications………………………………….9
Case Study- Muga Silk of Assam…………………………………………………………….9
Conclusion…...………………………………………………………………………………10
Bibliography………...…………………………………………………………........................ii
Abstract:

Every geographical region has its name and fame. Mostly the qualities and characteristics of
certain goods attributable to some geographical locations and reputable to “as produce of
certain region” come under Geographical Indications (GI). It is an emerging trend in
Intellectual Property Rights. GI in India owes its genesis to WTO Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS). The geographical indication in
relation to goods, means an indication which identifies or classify such goods as agricultural
goods, natural goods or manufactured goods as originating etc. It also considers territory of
manufacture, a country, a region or specific locality. The quality, reputation or other
characteristic of such goods is essentially attributable to its geographical origin. The
established registry of Government of India protects producers against counterfeiting and
misleading commerce. The GI Act reveals right of claimants to produce goods designated by
the registered GI and can file an application for registration as an authorised user. Also, the
relevancy of production and procession of such goods is directly concerns the region or
locality, as the case may be.

Keywords: Geographical Indications, WTO, natural products

Introduction

A geographical indication (GI) acts as a mechanism that helps producers differentiate their
products from competing products in the market and enables producers to build a reputation
and goodwill around their products that will fetch a premium price.

Aim

To understand Geographical Indications of Natural Products.

Objectives

The objective of this research paper is to analyse the concept of Geographical Indication, its
significance and benefits. The researcher tries to understand the Geographical Indications of
Natural Products.

Scope and Limitations

The project is limited to understanding Geographical Indications for Natural Products in India.

Research Questions

1. What is the genesis of Geographical Indications?

2. What is the procedure to register for Geographical Indications?

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 3. What are the impacts of Geographical Indications in India?
4. For how long, the benefits of Geographical Indications of a product continues?
5. What are the lacunae in the implementation of the GI Act?

Literature Review

1. The Law of Intellectual Property Rights: In Prospect and Retrospect by A.K.

Kaul and V.K. Ahuja- This book is actually a collection of articles presented in the
seminar on Intellectual Property Rights Law held in Delhi in 2001. All the articles,
though talk about different variants of the field of IPR, they all deal with a common
approach: to deal with novel developments in the field of IPR. On the context of this
project, this book was used to study the field of GIs.

2. Protection of India’s Geographical Indications: An Overview of the Indian

Legislation and TRIPs Scenario by Kasturi Das- This article talks about the
paradigm problems which India is facing, primarily concerning with treasuring India’s
traditional knowledge in the face of rising registration of GIs of Indian products in
other countries, such as the Basmati Rice, and Neem in UK and USA respectively.
The article also deals with the GI Act, and the issues which accompany it. This article
was useful to study the GI Act, and its shortcomings.

3. Legal Protection of Geographical Indications: National and International

Perspective by Smita S Chavan- In this article, the author has tried to arrive at a
comparative analysis of the field of GIs, in and around India. The author while doing
this primarily compares the legal protection regime in India and the USA. The article
is very useful to understand the subject matter of GIs and its legal basis in India. This
article was useful to study the history behind protection of GIs, the legal policy in
registering GIs in India, and its relationship with the TRIPS agreement.

Research Methodology

1. Approach to research

In this project, the researcher has adopted Doctrinal type of research. Doctrinal research is
essentially a library-based study, which means that the materials needed by a researcher may
be available in libraries, archives and other data-bases. This research is totally based on
library. Various types of books were used to get the adequate data essential for this project.
The researcher also used computer laboratory to get important data related to this topic. Help
from various websites were also taken.

2. Type of research

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It is clearly an explanatory type of research. In an explanatory study the researcher works on
analysing and explaining various intricacies pertinent to the topic.

3. Sources of data collection

Data has been collected from secondary sources like: books, web sources, reports etc. No
primary sources like survey data or field data were collected by the researcher.

Geographical Indications

Geographical indication is a type of Intellectual Property Right. A geographical indication is

a sign used on products that have a specific geographical origin and possess qualities or a
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reputation that are due to that origin. It is intended to identify a natural product or a product
of traditional origin which owes its uniqueness to a specific location or to a specific method
of traditional production.

A geographical indication points to a specific place, or region of production, that determines

the characteristic qualities of the product which originates from that place. It is important that
the product derives its qualities and reputation from that place. Since those qualities depend
on the place of production, a specific connection exists between the products and their
original place of production.

Once Geographical Indication tag is awarded to a product, then the same nomenclature cannot be
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used for the same product by anyone else if it is originating at a different location. Most
commonly, a geographical indication includes the name of the place of origin of the goods.

Agricultural products typically have qualities that derive from their place of production and
are influenced by specific local factors, such as climate and soil.

Geographical indications may be used for a wide variety of products, whether natural,
agricultural or manufactured.

Significance of Geographical Indications

Registration of geographical indications has a lot of benefits, some of them are-

 It confers legal protection to Geographical Indications

 Prevents unauthorized use of a Registered Geographical Indication by others
 It provides legal protection to particular country’s Geographical Indications which in
turn boost exports.

1
“Geographical Indications- an Introduction”, World Intellectual Property Organisation, available at
http://www.wipo.int/edocs/pubdocs/en/geographical/952/wipo_pub_952.pdf, pg. 8
2 The Law of Intellectual Property Rights: In Prospect and Retrospect by A.K. Kaul and V.K. Ahuja, p.
321

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  It promotes economic prosperity of producers of goods produced in a geographical
territory.
 GI Authorised user registration provides the authorized user the exclusive right to use
the registered GI on the specified goods.
 The Authorised users can initiate infringement actions.
 With the protection assured by GI registration, the market is developed, pirates and
counterfeiters cannot encroach that market.
 Consumers are guaranteed of the genuineness of the product and of quality assurance.
 Promotes Brand building.
There exists a big information asymmetry in the markets today that lead to typical market
information problems in the form of adverse selection and moral hazard. Information
asymmetry has direct negative impact on the market: the quality of total supply drops, higher-
quality products are driven out of the market and some consumers are no longer able to satisfy
their preferences. Producers maintaining the quality of their products are exposed to unfair
competition from producers who sell lower quality products at the same price. This unethical
practice of selling fake products in the name of reputed products to fetch better prices is
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rampant in the Indian market and even abroad. In India, for example, cheap Power loom saris
are sold as reputed Banarsee handloom saris within and outside Banaras, harming both the
producers and consumers of Banarsee handloom saris. While original producers suffer a loss
of market for their goods, consumers end up paying inflated prices for fake goods. Consumers
usually do not have perfect access to information regarding the prices of goods, and even less
so to the quality of the goods. In a situation like this, GI protection has the potential to
eliminate information asymmetry and benefit both the producers and the consumers. Once the
goods are registered as GI, they will be protected under the GI Law and any violation on this
account would be tantamount to a legal offence. If the Act is implemented effectively, it will
act as a deterrent to unethical producers selling their low quality and cheap products free
riding on the reputation enjoyed by GI goods. The GI tag attached to products acts as a
signalling device that helps producers to differentiate their products from competing products
in the market and enable
Legal Position of Geographical Indications

Geographical Indications (GI) are one of the eight intellectual property items coming under
WTO’s TRIPs (Trade Related Intellectual Property Rights). The GI provision allows member
countries to protect products belongs to a specific territory against commercial exploitation by

3
Shashikant B Bagade and Deven B Metha , “Geographical Indications in India: Hitherto and Challenges”
available at http://www.rjpbcs.com/pdf/2014_5(2)/[146].pdf, p. 3

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other parties. This can be done by including such products in a Geographical Indications
Registry.

Such a registry will protect that product from commercial utilization by others using a trade
mark. For example, a US firm can’t use a trademark in the name of basmati rice as the rice is
protected as a GI under the GI Registry of India.

Legal Position Globally

Many existing intellectual property agreements give recognition to GIs. Under Articles 1 (2)
and 10 of the Paris Convention for the Protection of Industrial Property, geographical
indications are covered as an element of IPRs. In TRIPs, GIs are covered under Articles 22 to
24. TRIPs give more protection to wine and spirit GIs under Art 23. Many countries are now
demanding that such level of high protection should be extended to other goods under GIs as
well.

The World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property

Rights (TRIPS) defines “geographical indications” as “Geographical indications are, for the
purposes of this Agreement, indications which 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 geographical origin.”4

In 1994, when negotiations on the WTO TRIPS were concluded, governments of all WTO
member countries had agreed to set certain basic standards for the protection of GIs in all
member countries. The basic obligations on WTO member Governments relating to GIs
according to the TRIPS agreement is provided in the Article 22 of the Agreement. Article 22
of the TRIPS Agreement says that all the governments must provide legal opportunities in
their laws for owners of GI registered in the country to prevent the use of marks that mislead
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the public as to the geographical origin of the product.

Legal Position in India

India enacted the Geographical Indication of Goods (Registration and Protection) Act, 1999
which came into force with effect from September 15, 2003. The Geographical Indications Act
was mainly an attempt to comply with India's obligations under the TRIPS agreement. This Act is
administered by the Controller General of Patents, Designs and Trade Marks, who is

4 Article 22(1) of Agreement on Trade-Related Aspects of Intellectual Property Rights

5 Legal Protection of Geographical Indications: National and International Perspective by Smita S Chavan

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also the Registrar of Geographical Indications. Any established organisation or authority can
apply for GI tag under the law.

As per the Geographical Indication of Goods (Registration and Protection) Act, 1999,
association of persons or producers can apply for GIs for specific products supported by
required documents. The following persons shall be entitled to file an application for
registration of a geographical indication:

1. A person who is carrying on an activity as a producer in the geographical area

specified in the application with respect to the goods specified in the application, and
includes with respect to such person.
2. A competent authority; or
3. A trade organization or association.
The Controller General of Patents, Designs & Trade Marks (CGPDT) directs and supervises
the functioning of the Geographical Indications Registry (GIR). India's GI Registry is
situated in Chennai and comes under the purview of Department of Industrial policy and
promotions, Ministry of Commerce and Industry.. Complaints against GI registration can be
made at Intellectual Property Appellate Board at Chennai.

By registering an indication in India a right holder can prevent its unauthorized use by others and
also promote economic prosperity of the producers of the said good in a particular region. Some
of the examples of the Indian GI are Kashmir Pashmina from Jammu & Kashmir, Kullu Shawl &
Kangra Tea from Himachal Pradesh, Phulkari from Punjab, Kota Doria and Bikaneri bhujia from
Rajasthan, Surat Zari Craft, Patan Patola and Gir Kesar Mango from Gujarat, Banaras Sarees &
Brocades from Uttar Pradesh, Bhagalpur Silk & Madhubani painting from Bihar, Chanderi sari
from Madhya Pradesh, Darjeeling tea from West Bengal, Muga Silk from Assam, Naga Mircha
from Nagaland, Shaphee Lanphee from Manipur, Bastar Dhokra & Bastar Iron Craft from
Chhattisgarh, Orisaa Ikat from Orissa, Nagpur Orange & Paithani Saree & Fabrics from
Maharashtra, Feni from Goa, Pochampalli sarees from Andhra Pradesh, Mysore silk and
Channapatna toys from Karnataka, Kanjeepuram sarees and Nilgiri tea from Tamil Nadu,
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Aranmula metal mirror and Malabar Pepper from Kerala.

Geographical Indication of Natural Products

Section 2(e) of the Act deal with the GI of three kinds of product- natural products, agricultural
products and manufactured goods. This paper will be focusing on the GI of natural products.
Natural products are those products which are a gift of nature and needs no interference of

6 http://www.ipindia.nic.in/writereaddata/images/pdf/geographical-indications-registration.pdf , last
accesed on
6th May, 2017

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mankind to extract its value. Some natural products are specific to certain geographical area
and they need protection so as to get the benefits that GI provides.

Procedure of Registration of Geographical Indication

An application can be made for registering a geographical indication by an association of

persons or producers or any organization or authority representing the interests of the
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producers of the goods concerned under section 11 of the Act.

Requirements of GIs application are


The class of goods to which the geographical indication shall apply.

A statement of how the geographical indication serves to designate the goods as
originating from the concerned territory in respect of the 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 or
processing or preparation of which takes place in such territory or region or locality.

The geographical map of the territory of the country or region or locality in the
country in which the goods originate or are being manufactured;

The particulars regarding the appearance of the geographical indication as to whether
it is comprised of the words or figurative elements or both;

A statement containing such particulars of the producers of the concerned goods, if
any, proposed to be initially registered with the registration of the geographical
indication as may be prescribed; and such other particulars as may be prescribed.
After an application for registration is accepted by the registrar and if there has been
an opposition which is dismissed the geographical indication shall be registered. The
registration of a geographical indications shall if valid, give to the registered
proprietor and the authorized user or users the right to obtain relief in respect of its
infringements and to the authorized user the exclusive rights to the use of the
geographical indication in relation to the goods in respect of which it is registered. For
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an unregistered geographical indication only an action of passing off can be taken.

Upon receipt of an application, it is scrutinized by the examiners and in case any deficiencies
are found, a notice is sent to the applicant to rectify them. After rectification, the applicant is

7 Shashikant B Bagade and Deven B Metha , “Geographical Indications in India: Hitherto and
Challenges” available at http://www.rjpbcs.com/pdf/2014_5(2)/[146].pdf, p. 9
8 EU Draft- European Community- Draft agreement on TRIPs, MTN.CG6/N611/w/68 (Mar.29,1990)
Art.19,
WIPO’s model law in the 1990s on geographical indications also expressly referred to “the geographical
environment, including natural factors, human factors, or both natural and human factors”.

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required to send her reply within one month from the date of receipt of the notice. The next stage
is the constitution of a Consultative Group of technical expert, chaired by the Registrar, to
ascertain the correctness or otherwise of the particulars furnished in the application. Subsequent
to examination, the Registrar may refuse the application altogether or may accept it either
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absolute or subject to certain conditions, modifications, etc. Accordingly, on the basis of the
comments provided by the Consultative Group, an Examination Report is issued by the Registrar.
Compliance, if any, is to be done within two months from the date of communication of the
Examination Report to the applicant. Once the objections raised in the Examination Report are
satisfactorily responded to by the applicant, and the application is accordingly accepted by the GI
Registry, it is advertised in the GI Journal, which is a bi‐monthly, bi‐lingual (English and Hindi)
statutory publication. Upon advertisement, any person may, within a specified time period
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(generally 3months, but if needed 4 months), oppose the application in writing. If the
application passes through the specified time period unopposed, or in the event of an opposition,
if it is decided in favour of the applicant, the Registrar is required to register the concerned GI as
well as the authorized users and include the particulars i-n the GI Register.

Upon registration of a GI, the Registrar is required to issue each to the applicant and the
authorised users a certificate sealed with the seal of the GI Registry. Notably, the date of
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filing of the application is deemed to be the date of registration.

Products not eligible for Geographical Indications

The following geographical indications are prohibited from registration under section 9 of
the Act. Any geographical indication-

 the use of which would be likely to deceive or cause confusion;

 the use of which would be contrary to any law for the time being in force ;
 which comprises or contains scandalous or obscene matter;
 This comprises or contains any matter likely to hurt the religious susceptibilities of
any class or citizens of India.
 This would be disentitled to protection to protection in the court of law.

9 Protection of India’s Geographical Indications: An Overview of the Indian Legislation and TRIPs
Scenario by Kasturi Das, p. 8
10 NairLR and Rajendra Kumar, Geographical Indications - A Search for Identity, New Delhi: Butter
worth’s, 2005, p.95.
11 Kasturi D, Socio-Economic Implications of Protecting Geographical Indications in India,
August 2009, Centre for WTO Studies, p.6.
12 Ganguli P, WTC Research study Report Geographical Indications its evolving controls, Jan. 2009, p.4.

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  which are determined to be generic names or indications of goods and are, therefore,
not or ceased to be protected in their country of origin, or which have fallen into
disuse in that country
 which, although literally true as to the territory, region or locality in which the goods
originate, but falsely represent to the persons that the goods originate, but falsely
represent to the persons that the goods originate in another territory, region or locality,
as the case may be, shall not be registered as a geographical indication.

Term of Protection

The Act provides that the registration of a geographical indication shall be for a period of 10
years and shall be renewed for a period of another 10 years on an application made in the
prescribed manner and within the prescribed period and subject to the payment of the
prescribed fee.

Infringement of Geographical Indications

The remedies relating to the infringement of Geographical Indications are similar to the
remedies relating to the infringement of Trademark. Similarly, under the (Indian)
Geographical Indications of Goods (Registration and Protection) Act, 1999, falsification of a
Geographical Indication will carry a penalty with imprisonment for a term which may not be
less than six months but may extend to three years and with fine which may not be less than
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INR 50,000 (approx. US$ 1075) but may extend to INR 2, 00, 000.

Case Study- Muga Silk of Assam

Muga silk is a registered GI from the state of Assam. Historical evidence suggests that Assam’s
silk industry had reached the pinnacle of perfection by the 7th century A.D. Banabhatta, the
author of Harshacharita informs us that king Bhaskara Varma of Kamarupa (ancient Assam)
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presented to Harshavardhana silken towels as “silken and pure as the autumn moon’s night...”
In the present day, muga silk constitutes the state’s most popular export product after Assam tea.
The Patent Information Centre of the Assam Science Technology and Environment Council
(ASTEC) secured registration for muga in 2006, which is incidentally the first registered GI from
the north-eastern region. While ASTEC is the registered proprietor of the muga GI, till date, there
are no registered users. One to one interviews with weavers and silk traders in the town of
Sualkuchi revealed very low awareness about the GI protection of muga.

13 Shashikant B Bagade and Deven B Metha , “Geographical Indications in India: Hitherto and
Challenges” available at http://www.rjpbcs.com/pdf/2014_5(2)/[146].pdf
14 “The Protection of Geographical Indications in India: Issues and Challenges”, March 2013,
available at http://www.teriin.org/div/briefing_paper_GI.pdf, last accessed on May 4, 2017

9
While the price of muga has been rising over the last few years, that has little to do with GI
registration. The reason for the high prices of the muga yarn, according to the various
stakeholders interviewed, are diminishing area under muga cultivation owing to rubber
cultivation, diseases at the cocoon stage, loss incurred due to the outdoor nature of muga
rearing, and so on. Nevertheless, higher prices have not been able to encourage the farmers to
hold on to muga cultivation. As a result, muga has become almost three times more
expensive, compared with other similar varieties of silk. Apparel with 100 per cent muga
yarn is rarely produced these days, except to cater to the state emporiums, or for special
orders. Muga is often blended with imported tussar silk from China or with other indigenous
silk yarn such as pat. Regarding the setting up of a quality control and inspection mechanism,
as required by the law, ASTEC has proposed employing the services of the Seri Bio Lab of
the Institute of Advanced Study in Science and Technology, Guwahati, for quality control. An
inspection body is yet to be constituted. Hence, at this stage, even after six years of
registration, GI in muga cannot give any guarantee of quality or authenticity.

Conclusion
th
The GI Act, which came into force, along with the GI Rules, with effect from 15 September
2003, has been instrumental in the extension of GI status to many goods so far. The central
government has established the Geographical Indications Registry with all India jurisdiction,
at Chennai, where right-holders can register their GI. Unlike TRIPS, the GI Act does not
restrict its special protection to wines and spirits alone. The central government has discretion
to decide which products should be accorded higher levels of protection. This approach has
deliberately been taken by the drafters of the Indian Act with the aim of providing stringent
protection as guaranteed under the TRIPS Agreement to GI of Indian origin. Registration of
GI is not compulsory in India. If registered, it will afford better legal protection to facilitate
an action for infringement. Once a GI is registered in India, it becomes relatively easier to
seek protection in other countries, particularly the member countries of WTO.

The implications of GIs in the context of rural development in India need to be studied
especially for sectors like agriculture, fisheries, crafts and artisanal works that provide
livelihood for a large section of the poor in India. Extensive gaps exist on operationalizing
GIs and this is where the focus of the Government needs to be. Well-crafted policies and
strategies on post-GI mechanisms are required for marketing, distribution, branding and
promotion of the Indian GI products to realise the commercial potential of Indian GIs. There
is the need for setting up a national level fund for fighting against infringement, brand
building and promotional efforts of GI products.

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