GEOGRAPHICAL INDICATION

“A geographical indication is a sign used on goods that have a specific

geographical origin and possess qualities, reputation or characteristics that are
essentially attributable to that place of origin.”

In India, Section 2(1)(g) of the Geographical Indications of Goods (Registration

and Protection) Act, 1999 defines “geographical indication”, in relation to goods,
to mean:
“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.”

In other words, Geographical Indications are indications in any form used to

identify a source of origination of a product, be it a naturally grown one or a
manufactured
one. They are primarily used for promotions by intimating the consumers of the
source of a particular product.

GI tags are used on the following types of products.

Handicrafts – Examples would be Madhubani Paintings, Mysore Silk

Food items – Example would be Tirupati Laddu, Rasgulla.
Wine & Drinks – Example would be Champagne, Cognac of France; Scotch
Whisky of UK, Tequila of Mexico.
Industrial Products
Agricultural Products – Basmati Rice

INTERNATIONAL PROTECTION OF GI

WIPO
3 main Treaties enacted for protection of Geographical Indications under WIPO
are listed below.

Paris Convention
Madrid Agreement
Lisbon Agreement
WTO

The main Agreement under WTO for protection of Geographical Indications is

listed below.

Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement

Geographical Indications – Law passed in India

Government of India enacted Geographical Indications of Goods (Registration and

Protection) Act, 1999. This act came into force in September, 2003.

1. TRIPS (imp)

Definition.
A “geographical indication” identifies goods that originate from a particular place
“where a given quality, reputation, or other characteristic of the good is essentially
attributable to its geographical origin.”

Provisions against misleading the public.

Member states are required to provide the mechanisms that enable interested
parties to prevent untruthful and misleading uses of geographical indications.

Additional Protection for Geographical Indications for Wines and Spirits

(Article 23)
Articles 23 and 24 provide broader protection for geographical indications for
wines and spirits than for other products. An interested party need not prove that
the public
has been misled by the use of the indication in order to obtain relief.

Exceptions (Article 24).

In some cases, geographical indications do not have to be protected or the
protection can be limited. Among the exceptions that the agreement allows are:
1. when a name has become the common (or “generic”) term (for example,
“cheddar” now refers to a particular type of cheese not necessarily made in
Cheddar, in the UK and
2. when a term has already been registered as a trademark

Extending the “higher level of protection” beyond wines and spirits Geographical
indications for all products are currently covered by Article 22 of the
TRIPS Agreement.

IMPORTANT DEFINITIONS UNDER THE GI ACT,1999 SECTION2(1)

(c) "deceptively similar" 2(1)(C) A geographical indication shall be deemed to be

deceptively similar to another geographical indication if it so nearly resembles that
other geographical indication as to be likely to deceive or cause confusion;

(b) "Authorized user" means the authorised user of a geographical indication

registered under Section 17;

(e) "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.

Explanation: For the purposes of this clause, any name which is not the name of a
country, region or locality of that country shall also be considered as the
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,
as the case may be;

(f) "goods" means any agricultural, natural or manufactured goods or any goods of
handicraft or of industry and includes food stuff;

(g) "indication" includes any name, geographical or figurative representation or

any combination of them conveying or suggesting the geographical origin of goods
to which it applies;

(k) "producer", in relation to goods, means any person who:-

i. if such goods are agricultural goods, produces the goods and includes the
person who processes or packages such goods;
ii. if such goods are natural goods, exploits the goods;
iii. if such goods are handicraft or industrial goods, makes or manufactures the
goods, and includes any person who trades or deals in such production,
exploitation, making or manufacturing, as the case may be, of the goods ;

IMPORTANT PROVISIONS:

9. Prohibition of Registration of Certain Geographical Indications

A geographical indication:

(a) the use of which would be likely to deceive or cause confusion; or

(b) the use of which would be contrary to any law for the time being in force; or

(c) which comprises or contains scandalous or obscene matter; or

(d) which comprise or contains any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India; or

(e) which would otherwise be disentitled to protection in a court; or

(f) 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; or

(g) 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 in
another territory, region or locality, as the case may be, shall not be registered as a
geographical indication.

Explanation 1 : For the purposes of this section, "generic names or indications", in

relation to goods, means the name of a goods which, although relates to the place
or the region where the goods was originally produced or manufactured, has lost its
original meaning and has become the common name of such goods and serves as a
designation for or indication of the kind, nature, type or other property or
characteristic of the goods.

Explanation 2 : In determining whether the name has become generic, account

shall be taken of all factors including the existing situation in the region or place in
which the name originates and the area of consumption of the goods.

20. No Action for Infringement of Unregistered Geographical Indication

(I) No person shall be entitled to institute any proceeding to prevent, or to recover

damages for, the infringement of an unregistered geographical indication.

(2) Nothing in this Act shall be deemed to affect rights of action against any
person for passing off goods as the goods of another person or the remedies in
respect thereof.

21. Rights Conferred by Registration

(1) Subject to the other provisions of this Act, the registration of a geographical
indication shall, if valid, give,-

(a) to the registered proprietor of the geographical indication and the authorised
user or users thereof the right to obtain relief in respect of infringement of the
geographical indication in the manner provided by this Act;

(b) to the authorised user thereof the exclusive right to the use of the geographical
indication in relation to the goods in respect of which the geographical indication is
registered.

(2) The exclusive right to the use of a geographical indication given under clause
(b) of sub-section (1) shall be subject to any condition and limitation to which the
registration is subject.

(3) Where the two or more persons are authorised users of geographical
indications, which are identical with or nearly resemble each other, the exclusive
right to the use of any of those geographical indications shall not (except so far as
their respective rights are subject to any conditions or limitations entered on the
register) be deemed to have been acquired by anyone of those persons as against
any other of those persons merely by registration of the geographical indications,
but each of those persons has otherwise the same rights as against other persons as
he would have if he were the sole authorised user.

Requirement of Registration
Under the Indian Act, no protection is conferred on an unregistered GI.
Consequently, the proprietor of an unregistered GI has no remedy against any
infringement of his mark. So we can conclude registration of a Geographical
Indication is mandatory under the Indian Act.

But, passing off action by an original proprietor of a mark has not been barred
under the Act. The relevant provision reads: “Nothing in this Act shall be deemed
to affect rights of action against any person for passing off goods as the goods of
another person or the remedies in respect thereof.”
SEC 22. Infringement of Registered Geographical Indications

(1) A registered geographical indication is infringed by a person who, not being an

authorised 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
which misleads the persons as to the geographical origin of such goods; or

(b) uses any geographical indication in such manner which constitutes an act of
unfair competition including passing off in respect of registered geographical
indication.

Explanation 1 :- For the purposes of this clause, "act of unfair competition" means
any act of competition contrary to honest practices in industrial or commercial
matters.

Explanation 2:- For the removal of doubts, it is hereby clarified that the following
acts shall be deemed to be acts of unfair competition, namely:-

(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.

(2) The Central Government may, if it thinks necessary so to do for providing

additional protection to certain goods or classes of goods under sub-section (3), by
notification in the Official Gazette, specify such goods or class or classes of goods,
for the purposes of such protection.

(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 expression such as
"kind", "style", "imitation", or the like expression, shall infringe such registered
geographical indication.

(4) Notwithstanding anything contained in this section, where the goods in respect
of which a geographical indication has been registered are lawfully acquired by a
person other than the authorised user of such geographical indication, further
dealings in those goods by such person including processing or packaging, shall
not constitute an infringement of such geographical indication, except where the
condition of goods is impaired after they have been put in the market.

25. Prohibition of Registration of Geographical Indication as Trade Mark

Notwithstanding anything contained in the Trade Marks Act, 1999, the Registrar of
Trade Marks referred to in section 3 of that Act, shall, suo motu or at the request of
an interested party, refuse or invalidate the registration of a trade mark which-

(a) contains or consists of a geographical indication with respect to the goods or

class or classes of goods not originating in the territory of a country, or a region or
locality in that territory which such geographical indication indicates, if use of such
geographical indications in the trade mark for such goods, is of such a nature as to
confuse or mislead the persons as to the true place of origin of such goods or class
or classes of goods;

(b) contains or consists of a geographical indication identifying goods or class or

classes of goods notified under sub-section (2) of section 22.

(these sections in gist)

Some case studies

Tirupati Laddu Controversies
A PIL was filed before the Madras High Court against the G.I. tag for the ‘Tirupati
Laddu’. That petition was dismissed on the grounds that an alternative and
efficacious
forum was available for adjudication of such a dispute and hence the PIL was
dismissed with directions to the petitioner to approach the appropriate forum.24
Under
the G.I. Act, such a petition could have been filed either before the G.I. Registry or
the IPAB.
R. S. Praveen Raj, a resident of Thiruvananthapuram and a scientist at NIIST
(National Institute for Interdisciplinary Science and Technology), made a plea
against
G.I tag of “Tirupati Laddu” The petition raises certain issues fundamental to the
nature of G.I protection as:-

 Violation of Section 11(1) read with Rules 32(5) and 32(6)(a)&(f) as GIs are
supposed to be collective community rights of protecting a group of
producers. In the present case, TTD is the sole producer and beneficiary of the
Laddu.

 Violation of Sections 9(a) and (d) as the registration it is likely to deceive

consumers [Section 9(a)] and is likely to hurt religious susceptibilities of
communities in India [Section 9(d)].
 Tirupati Laddu does not fit the description of ‘goods’ defined under Section 2(f)
for it being a sacred offering not akin to ‘industrial goods’.
An executive officer of TTD argued that rectification applicant had no locus standi.

The officer also made it clear that the rectification applicant was not offended in
any way by the registration and he had never objected when the matter was
published in
the Geographical Indications Journal. He further said that all procedural formalities
contemplated under the prescribed act and rules were strictly adhered to and
genuineness of the product was verified by the experts.

The Geographical Indications (GI) Registry, Chennai, rejected the plea by the
applicant for removal of G.I tag against “Tirupati Laddu”. Rectification applicant
R.
S. Praveen Raj, failed to prove locus standi and interest with the registered good.
The court stated that because the rectification application was not contested by the
applicant, the tribunal is empowered with the authority to impose costs.

Basmati Rice
On 2 September, 1997, the U.S. had granted patent No. 5663484 to Ricetec Inc., a
U.S. multinational company for new ‘lines and grains’ in the name of Basmati rice.
This was objected to by two Indian nongovernmental organizations (NGOs) —
Centre for Food Safety, an international NGO that campaigns against biopiracy,
and the
Research Foundation for Science, Technology and Ecology, an Indian
environmental NGO who filed legal petitions in the United States. The Centre for
Scientific and
Industrial Research also objected to it. They sought trade protection for basmati
rice of the Indian subcontinent and jasmine rice of Thailand. They demanded
amendment
of U.S. rice standards to specify that the term “basmati” can be used only for rice
grown in India and Pakistan, and jasmine for the Thai rice. The Indian government,
after putting together the evidence, officially challenged the patent in June 2000.
The contention of Ricetec was that Basmati is not a name of a geographical area
and hence, it is not qualified for protection under the TRIPS agreement. However,
when it
was proved that though the name Basmati is not the name of a geographical area
but still, it is inextricably linked to its region of origin, i.e. India, Ricetec contended
that
Basmati is a generic name and has fallen into the public domain.

In 2000, after years of litigation and hearing, the USPTO granted patent only to a
few varieties instead of the sweeping claim of new “lines and grains”. But the
event was
an eye opener for India and it was in this backdrop that the GI Act of India was
passed in 1999.

Darjeeling Tea
TEA BOARD, a statutory authority of the Govt. of India established in1953 under
the Tea Act, 1953 for the purpose of controlling Indian Tea Industry owns the GI
for Darjeeling Tea which is the tea grown in 87 gardens in the district of
Darjeeling.
The Tea Board has fought more than 15 cases against infringement and misuse of
Darjeeling in the last four years including Sri Lanka where the Importer agreed to
abide by the Regulations. This is an effort that stems beyond areas where
Darjeeling tea is exported.
Republic of Tea, USA (2000 – 2006)
Tea Board was successful in seeking rejection of trademark application for
DARJEELING NOUVEAU in the name of Republic of Tea (“ROT”) on the basis
of
its geographical certification marks for DARJEELING word and logo. The
opposition had been filed by the Tea Board before the Trademark Trial and
Appeal Board (TTAB) which has not only upheld Tea Board’s opposition but also
denied ROT’s counterclaim for cancellation of the DARJEELING certification
mark
on grounds of genericness.
The TTAB held that ROT had not proved that consumers view DARJEELING tea
as a generic type, as opposed to tea from the Darjeeling region of India. It also
recognized Tea Board’s continuing efforts to maintain control of the mark and
protect its value as a geographic indication
The TTAB held that Regulations and licensing program put in place by the Tea
Board constitute “adequate provisions for control.” It also placed great stock in the
Tea Board’s ongoing efforts to educate the public (e.g., by attending trade shows
and distributing literature in supermarkets) as further evidence of the Tea Board’s
overall system of controlling consumer understanding.

(these controversies not important for exam)