PROJECT ON
PROTECTION THROUGH ‘GEOGRAPHICAL INDICATION’ AND PROTECTION
THROUGH ‘CERTIFICATION TRADEMARK’-NATIONAL AND
INTERNATIONAL TRENDS
1|P a ge
TABLE OF CONTENTS
2|P a ge
INTRODUCTION
Geographical indication is an indication which specifies the geographical origin of a product
and links it with the essential qualities that are present in the product due to the place of
origin. It is mainly used to identify agricultural, handicraft, manufacturing goods from a
particular territory which has developed a good will in the market due to its special
characteristics. The said characteristics include temperature, humidity, soil etc. associated
with the territories that are unique, e.g. Darjeeling tea. Geographical indication can be a mark
defined by words or numbers or a combination of both. In international transaction, marks of
origin include marks of the country of origin and geographical indications.
The roots of GI can be traced back to the Egyptian Civilization wherein the brick-makers
marked bricks to identify origination. In ancient Greece, Thasian wine had demand since it
came from island of Thasos in Macedonia. Given India’s historically vibrant and famous craft
traditions, a number of craft genres and products from the crafts sector qualify as GI
goods.1 If harnessed properly, trade gains from enhanced sale of these GI goods could
provide tremendous socio-economic benefits to the producers.
Where as A certification mark certifies the nature or origin of the goods or services to which
it has been applied. This includes the region or location or origin, materials of construction,
method or mode of manufacture or provision, quality assurance, accuracy of the goods or
services or any definable characteristic of the goods or services. It can also certify
manufacture or provision of services by members of a union or other organization to certain
standards. The sole purpose of a certification mark is to indicate that certain standards have
been met.
AIM
OBJECTIVES
This paper aims to discuss relevant international and national legal regimes aims at GI’s,
further it throws some light on recent case laws decided by Indian courts and finally ends
with conclusion.
1
Sanjeev Agarwal & Michael J. Barone, “Emerging Issues for Geographical Indication Branding Strategies,” 9,
January 2005, MATRIC Research Paper, No.5
3|P a ge
RESEARCH QUESTION
1. How is the protection under Geographical Indication different from that of Certificate
Trademark protection?
2. How is Geographical Indicator different from that of Certificate Trademark
Protection.
RESEARCH METHODOLOGY
The research is based on analytical method. The source of information comprises of books,
articles and journals. The data in this project report is from secondary sources. The topic has
been extensively researched upon so as to accomplish the goal of completion of the current
project report.
REVIEW OF LITERATURE
4|P a ge
2 PROTCTION THROUGH GEOGRAPHICAL INDICATION
2.1 Definition of GI
Geographical Indication (GI) is defined as any indication that identifies a good as originating
from a particular place, where a given quality, reputation or other characteristics of the good
are essentially attributable to its geographical origin. TRIPS agreement runs2 ‘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.’3
The World Intellectual Property Organisation (WIPO) states that GIs are ‘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. Most commonly, a
geographical indication includes the name of the place of origin of the goods.’4
From the above two definitions it can be seen that ‘A Geographical Indication identifies a
good as originating in a delimited territory or region where a noted quality, reputation or
other characteristic of the good is essentially attributable to its geographical origin and/or the
human or natural factors there.’5
2.2 Significance of Geographical Indications
Geographical indication is a geographical name signifying that a product originates in a
country or a specific locality. Recently, geographical indication (GIs) emerged as one of the
most important instrument of protecting quality, reputation
2
Part II, Section 3, Article 22.1 of TRIPS
3
Accessed from the web site: [Link] visited on August
10th 2013
4
Accessed from the web site: [Link] visited on 10-8-2013
5
Guide to Geographical Indications: Linking products and their origins,” Accessed from the web
site: [Link]/WorkArea/[Link]?id=37595, visited on 10-8-2013
5|P a ge
or other character of goods essentially attributable to their geographical origin. 6 It is
valuable to providence, a ‘source identifier’ and indicator of quality. GI helps to promote its
goods “eligible for relief from acts of infringement and/or unfair competition”. The concern
shown by the World Intellectual Property Organization (WIPO) and World Trade
Organization (WTO) gave new impetus to protection of GIs. According to the WIPO
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications “a geographical indication is best protected under trademark and unfair
competition law. Trademark having acquired in good faith had to be protected against
conflicting geographical indications.”7 Protection of GI prevent third parties from passi
ng off their products as those originating in the given region. Famous examples are
‘Champagne’ for sparkling wine and ‘Roquefort’ for cheese from areas of these names in
France or ‘Darjeeling’ for tea from this district in India. It is not
necessary for these indications to be geographical names as in the case of ‘Feta’ for
cheese from Greece or ‘Basmati’ for rice from India and Pakistan as there are no places,
localities or regions with these names. Plant varieties developed with traditional
knowledge and associated with a particular region can also be protected as geographic
al indications. The advantage in such protection is that it is not time-limited. However,
needless to say, commercial benefits can be
derived from the protection of geographical indications only when the name becomes
reasonably famous. 8
2.3 Protection through geographical indication : National trend
As a party to the TRIPS Agreement, India is required to protect GI and hence in order to
fulfil that obligation, the Geographical Indications of Goods (Registration and Protection)
Act, 1999 was enacted. It may also be noted that India felt that some of its products have high
potential to benefit from GI registration and it was necessary to put in place a comprehensive
legislation for registration and for providing adequate protection for GI. For unless a
geographical indication is protected in the country of its origin, there is no requirement under
6
United States Patent and Trademark Office, accessed from the web
site: [Link] on 10-8-2013
7
Draft Report of the International Bureau of WIPO, Geneva 13-17 July, 1998, p 2
8
JayashreeWatal, “Intellectual Property Rights in Agriculture, Indian Council for Research on International
Economic Relations,” ICRIER Working Paper No.44 available at [Link]/pdf/[Link], visited on
10-8-2013
6|P a ge
the TRIPS Agreement for other countries to extend reciprocal protection. The main benefits
which accrue from registration under the Act are as follows: 9
Confers legal protection to GI in India;
Prevents unauthorized use of a registered geographical indication by others;
Enables seeking legal protection in other WTO member countries.
From the perspective of a developing country, one of the best features of the Indian Act is the
comprehensive definition given of GI, whereby agricultural, natural and manufactured goods
all come under the ambit of GI. This is especially important in the Indian context considering
the wide variety of goods that is deserving of protection ranging from agricultural products
like Basmati, Darjeeling tea to manufactured goods such as Banrasi sari, Kolhapurechappals,
Chanderi silk etc. Section 11of the Act provides that any association of persons, producers,
organization or authority established by or under the law can apply for registration of a GI.
Another important aspect of the Act is the possibility of protecting a GI indefinitely by
renewing the registration when it expires after a period of ten years. In the domestic context,
the Indian Act has tried to extend the additional protection reserved for wines and spirits
mandated by TRIPS to include goods of national interest on a case to case basis. Section 22.2
of the Act endows the Central Government with the authority to give additional protection to
certain goods or classes of goods. This is especially important in the developing country
context considering that we may not have wines and spirits to protect like the West but other
exotic niche products like teas, rice etc.10
Section 25 of the Act, by prohibiting the registration of a GI as a trademark, tries to prevent
appropriation of a public property in the nature of a geographical indication by an individual
as a trademark, leading to confusion in the market. Also, according to section 24 of the Act, a
GI cannot be assigned or transmitted. The Act recognizes that a GI is a public property
belonging to the producers of the goods concerned; as such it cannot be the subject matter of
assignment, transmission, licensing, pledge, mortgage or any contract for transferring the
ownership or possession.
9
All India Artisans and Craftworkers Association (AIACA).2011. Geographical indications of India:
socioeconomicand development issues, Policy Brief, NewDelhi: AIACA.
10
Commission on Intellectual Property Rights. [Link] Intellectual Property Rights and
Development Policy, London: Commission on Intellectual Property Rights.
7|P a ge
India’s Experience with GI Protection
Since the first Indian GI was registered in 2004, 172 GIs have been registered with the GI
Registry of India. Of these, more than half (64 per cent) are handicrafts, more than one fourth
(26 per cent) are agricultural products, and the remaining are food and manufacturing
products The trend of GI registration has been mostly upward with the maximum number of
products registered in the year 2008 – 2009. While handicrafts have been the most registered
GIs consistently, agricultural and manufactured products are increasingly being protected
under the GI Act over the past few years Food products, a more recent addition in the
registered GI basket of India, was first granted protection in 2008 – 2009 when Dharwad
Pedha from Karnataka was granted the status of a registered GI product. The recent increase
in manufactured products being registered as GI can be partially attributed to more foreign
products being registered at the Indian GI Registry.11
In terms of geographical distribution of GIs in India, most GIs have been registered from the
southern states. The state of Karnataka has been the forerunner in registration of GIs followed
by the states of Andhra Pradesh, Kerala and Tamil Nadu. The spread of GI recognition is
concentrated in the southern states. Products from other states are getting registered now. At
the same time many states, which have several traditional varieties of agricultural products or
handicrafts, are not forthcoming in applying for GIs. There are only three GIs from all of
north east India and none from Uttarakhand. 12 The states of Punjab and Haryana have no GI
either except for a joint GI on Phulkari embroidery along with Rajasthan. Phulkari is the only
GI in India which covers more than one state. Since 2009, 8 foreign (7 manufactured and 1
food) products have been accorded the status of registered GI under the Indian Act. These are
Champagne and Cognac from France, Scotch Whisky from the United Kingdom, Napa
Valley wines from the United States of America, Douro wine from Portugal, Peruvian Pisco
from Peru and Prosciutto di Parma from Italy.
Impacts of GI registration in India: Some cases
11
Das, K. 2009. Socio-economic implications of protecting geographical indications in India. New Delhi:
Centre for WTO Studies. [Link]
accessed on January 5, 2012.
12
Das, A. 2008. Geographical indications: UNCTAD’sinitiative in India, Presentation at UNDP RCC, UNDP
Cambodia and Economic Institute of Cambodia,
Phnom Penh, September 4. [Link] accessed on
January 20, 2012
8|P a ge
A number of observers point out that of all the different types of intellectual property rights,
GI may be more amenable to the particular context of developing countries. GIs may
especially facilitate protection of the collective rights of the rural and indigenous
communities in their indigenous knowledge, ensuring that the entire community which has
preserved the knowledge and has passed it on with incremental refinement over generations,
stand to benefit from the knowledge and that this is not locked up as the private property of
one individual. Other advantages of GIs are that the knowledge remains in the public domain,
the scope of protection is limited to controlling the class and/ or location of people who may
use the protected indication and the rights can potentially be held in perpetuity as long as the
product-place link is maintained. Also, holders of a GI do not have the right to assign the
indication, thus, preventing its transfer to non-locale producers.
Evidence on the socio-economic impacts of GIs in the Indian context are, however, limited
although anecdotal evidence suggests that GIs have significant implications for producers in
developed and developing countries. Interestingly, the collective nature of GIs also brings to
the fore significant collective action related problems across various stages of organization
and governance. For example, a group of producers may take the initiative in the GI
registration process, while others not willing to join initially may join later thereby attempting
to free-ride on the efforts of the forerunners. In India, there are many GIs that are registered
in the names of some central or state government departments or bodies, yet there is no
homogeneity among those initiatives and involvements across states. A number of studies
have also found that GIs could lead to exclusion of many from enjoying the benefits.
Firmswith better bargaining positions may also end up making disproportionate share of the
economic value generated from securing protection. It is against this backdrop that our study
has tried to assess the situation on the ground with respect to number of registered GIs,
through indepth, field level case studies as well as primary survey based on a standard
questionnaire prepared for the purpose. Some of these case studies include Muga silk of
Assam, Banaras brocades and saris, Malabar pepper and Vazhakulam Pineapple, all of which
are registered GIs.13
Muga Silk of Assam
13
Dwivedi, K., S. Bhattacharjya. 2012. Restore glory oftheBanarasi sari, The Hindu Business Line,
December21, 2012. [Link]
sari/[Link]
9|P a ge
Muga silk is a registered GI from the state of [Link] 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) presented to Harshavardhana silken towels as “silken and pure as the autumn
moon’s night.”(cited in Sahai and Barpujari, [Link].). 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. 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. Meanwhile, as observed in the field,
power-loom is getting increasingly popular for muga weaving, dealing a further blow to
handloom weavers. In an interview, an applicant for registered use of muga observed that
fabric woven on the power-loom has certain advantages and could be the only way out for
entrepreneurs like him as many weaversare leaving the profession owing to un-remunerative
wages. 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.
Banaras brocades and saris
‘Banaras brocades and saris’ secured registration under the GI Act in September 2009, with
the application filed by nine organisations viz. Banaras BunkarSamiti, Human Welfare
10 | P a g e
Association (HWA), joint director industries (eastern zone), director of handlooms and
textiles Uttar Pradesh Handloom Fabrics Marketing Cooperative Federation, Eastern UP
Exporters Association (EUPEA), BanarasiVastraUdyogSangh, Banaras Hath
KarghaVikasSamiti and Adarsh Silk BunkarSahkariSamiti. The weaver community
predominantly constitutes poor Muslims and Dalits and the structure of production is based
on a hierarchy of kothdars (wholesale dealers), master weavers and other weavers. With the
objective of understanding the actual impact of registration on the ground level, TERI
researchers conducted a multi-stakeholder consultation at
Varanasi interacting with registered users, Banarasi Sari traders, bunkars(weavers),
government officials, local buyers, NGO representatives, cottage manufacturing units etc.
The consultations indicated that the Banarasi sari industry is impacted by a host of variables
in terms of raw material and labour issues, the socio-economic aspects of the region, and, to
some extent, the pitfalls of excessive liberalisation and legislation. The changing economic
and market situation has resulted in reduced income for weavers who cannot even meet their
basic needs, causing malnutrition and widespread poverty throughout the traditional weaver
community. Such destitution and despondency among the weavers has forced them to
commit suicide or has precipitated employment shifts, as evidenced by MGNREGA
(Mahatma Gandhi National Rural Employee Guarantee Act) benefits. It could be gathered
from the fieldwork that the promise of geographical indication protection has not curbed the
menace of fakes. Machine based cheap product imitations continue to be sold. Cheap raw
material imports have led to the sale of what are known as Kelasaris, in the name of Banarasi
saris. These use banana tree resin to create threads which are then polished to give the look of
silver or gold thread. Chinese imitation saris, pegged at much lower prices, are flooding the
market. Moreover, there is a tenfold rise in the number of operating power-looms in the
district of Varanasi itself, although certain other studies put higher estimates. Most power-
loom owners have been producing cheap imitation products in large numbers to meet the
growing demand, withcomputerised designs. Enforcement under the legal regime is frustrated
further through absence of will onthe part of GI holders to take action against the imitators.
Despite the stakeholders being aware of the deleterious impact of sales of fake saris, complex
market dynamics enforces silence among all concerned.
Malabar pepper
Malabar pepper is famous for its quality. It is classified under two grades – garbled and un-
garbled. History is replete with instances of foreigners coming to the Malabar Coast to trade
11 | P a g e
in Indian spices in general and pepper in particular. It is stated that the exorbitant price of
pepper during the middle ages, a trade which was monopolized by the Italians, forced the
Portuguese to seek a sea route to reach India. Pepper is used as a spice and it has also got
medicinal properties. Malabar pepper
is cultivated in the geographic regions comprised in the Malabar region of the erstwhile
Madras Presidency. Now these areas comprise in the states of Kerala, Karnataka and Tamil
Nadu. Malabar pepper accounts for around 25 per cent of the entire world’s supply of pepper.
This pepper is unique for its sharp, hot and biting taste. Highly aromatic, with a distinctive
fruity bouquet, it has the perfect combination of flavour and aroma. In order to protect the
brand value of Malabar pepper, the Spices Board applied for a GI registration and after
completing the formalities the registration was granted. As pepper is exported in huge
quantities, there was a feeling that the GI tag would give better legal protection against
counterfeit products, more visibility to the brand etc. None of the respondents interviewed by
TERI researchers were aware of any infringement action
initiated against any of the counterfeit producers. Therewas also a general feeling that it is the
traders who reap benefit out of the GI tag and not the farmers. The general mood in the sector
at the time of field visit was a worry over the declining price in pepper. There were demands
that there should be a complete ban on future trades in pepper.
2.4 International Protection of geographical indications
(1) Multilateral treaties:
Paris Convention for the Protection of Industrial Property.
The Paris Convention for the Protection of Industrial Property provides for the protection of
indications of source against any misleading use. In this respect, Article 10 of the Paris
Convention sets forth that in cases of “direct or indirect use of a false indication of the source
of the goods or the identity of the producer, manufacture or merchant” Article 9 of Paris
Convention should be applicable 14. Article 9 of the Paris Convention provides for that goods
bearing a false indication of source are subject to the following measures: seizure upon
importation into countries party to the Paris Convention, or within the country where the
unlawful affixation of the indication of source occurred or within the country of importation.
This seizure shall take place at the request of the public prosecutor, or any other competent
14
[Link]
12 | P a g e
authority, or any interested party. However, Article 9(5) and (6) of the Paris Convention
allow that countries party to the Paris Convention whose national laws do not permit seizure
on importation of inside the country to replace those remedies by either a prohibition of
importation or by any other nationally available remedy. It has therefore been said that
Article 9 and 10 of the Paris Convention do not introduce a higher international standard for
protection of, inter alia, indication of source, but merely binds States party to that Convention
to apply the national treatment principle 15 . Article 10bis of the Paris Convention sets out the
basic international standard for protection against acts of unfair competition. Although the
use of false indications of source is not mentioned on the non-exhaustive list of acts which
are prohibited under Article 10bis (3), such use arguably constitutes an act of competition
contrary to honest practices in industrial or commercial matters and, thus, is covered by
Article 10bis (2). The provisions of the Paris Convention which have dealt with so far
concern the use of false indications of source. However, there are cases in which the use of an
indication of source which is literally true may still be misleading or deceptive. This may be
the case where a given geographical name exists in two different countries, but was used as
an indication of source only products originating from that place in one country. Use of that
indication of source by producers from the other country cannot be regarded as use of a
“false” geographical indication, although consumers may be deceived by such use.
Madrid Agreement for the Repression of false or deceptive indications of source of
goods.
Lisbon Agreement for the Protection of appellation of origin and their international
registration.
(ii) Bilateral Treaties Bilateral treaties have a long tradition in the field of the protection of
geographical indications. Among the treaties, two models have been predominant: the first, to
reserve certain region indications for the products of a certain region without determining
which exact geographical area is to be protected; the second, to include a definition of the
15
Marcus Hopperger, International Protection of Geographical Indications – The present situation and prospect
for future development.
13 | P a g e
geographical area that is to be protected by a geographical indication. Neither of the two
models has yielded effective protection because the parties failed to determine the scope of
protection. An example of the first model is the treaty between Portugal and the United States
of 1910, in which the name “Porto” and “Madeira” were to be protected by the United States;
in that case the United States decided to implement the protective provision by means of the
law of advertising. As a result, the discussion regarding whether or not the duty to “protect”
these terms included a prohibition of “Porto” or “Madeira” accompanied by “kind” or “type”,
debated since the Madrid Agreement, was simply carried over into this agreement. The same
geographical indication was protected by a treaty between Portugal and Germany of 1908, in
which Germany agreed to reserve the same representations not only for Portugal in general,
but for goods that originated in Douro (Porto) and the island of Madeira. As a model for
international protection, however, this specification made little progress. After the failure of
the Lisbon Agreement, a new type of treaty was developed. Lists of protected geographical
names accompany the agreements, and the producers from each of these regions retain
exclusive right to use the name. The scope of protection is then determined under the law of
the country of origin. As a result, the country of origin controls the requirements for the
legitimate use of certain geographical indications at home and abroad. No country has to alter
its own laws in order to accomplish greater protection under the regime of a international
treaty. Rules of one country are “exported” together with its goods into another country. In
this manner, a number of critical stumbling-blocks are avoided, but sum problems have
emerged as well. In each case of alleged violation, the court must apply the law of the
country of origin instead of its own laws (which would be applicable under the Conflict of
Laws Rules of most countries). Thus, the objection of the United States to the Lisbon
Agreement, i.e, that American courts would be bound by the decisions of a foreign
jurisdiction, would apply to these agreements as well.
3 PROTECTION THROUGH CERTIFICATION OF TRADEMARK
3.1 Certification mark - A certification mark certifies the nature or origin of the goods or
services to which it has been applied. This includes the region or location or origin, materials
14 | P a g e
of construction, method or mode of manufacture or provision, quality assurance, accuracy of
the goods or services or any definable characteristic of the goods or services. It can also
certify manufacture or provision of services by members of a union or other organization to
certain standards. The sole purpose of a certification mark is to indicate that certain standards
have been met.
Section 2(1) (e) of Indian Trade Marks Act defines a certification mark as "a mark capable of
distinguishing the goods or services in connection with which it is used in the course of trade
which are certified by the proprietor of the mark in respect of origin, material, mode of
manufacture of goods or performance of services, quality, accuracy or other characteristics
from goods or services not so certified".
A certification mark on a product may indicate the following:
The existence of a product certification agreement between the manufacturer and an
organization with national accreditation for both testing and certification;
Legal evidence that the product was successfully tested in accordance with a
nationally accredited standard; Legal assurance that the accredited certification
organization has ensured that the product that was successfully tested is identical to
that which is being offered for sale;
Legal assurance that the successful test has resulted in a certification listing, which is
considered public information and sets out the tolerances and conditions of use for the
certified product, to enable compliance with the law through listing and approval use
and compliance;
Legal assurance that the manufacturer is being regularly audited by the certification
organization to ensure the maintenance of the original process standard that was
employed in the manufacture of the test specimen that passed the test.
The function of a certification mark, unlike a trademark, is not to indicate source of origin but
to certify that the goods or services in relation to which it is applied are certified by the
proprietor of the mark as to certain characteristics of the goods or services. The presence of a
certification mark on a product or service will give the consumer guidance and the resulting
confidence in deciding whether to make a particular purchase or not. A certification mark is
used by various merchants to indicate that their products and services have certain
characteristics, such as a specific level of product quality or a certain geographic origin.
15 | P a g e
3.2 Certification Marks in India
An application for a Certification mark can be filed as a single or a multi-class application in
the prescribed form with the Indian Trade Marks Registry. The form must be submitted
along with draft regulations governing the certification mark. The regulations must specify:
Description of the Applicant;
The nature of the Applicant's business;
Particulars of infrastructure like R&D, technical manpower support;
Applicants' competence to administer the certification scheme;
Applicants' financial arrangement;
An undertaking from the Applicant that there will be no discrimination against any
party if it meets the requirements set down in the regulations;
The characteristics of the mark which will be indicated by the certified goods or in
relation to rendering of certified services;
The manner of monitoring the use of the mark in India;
The people authorized to use the certification mark
The characteristics to be certified by the certification mark
How the certifying or standards tests these characteristics and supervises the use of
the mark
Dispute resolution procedures
Such other relevant particulars as may be called for by the Registrar.
In addition to the above, the applicant is required to submit a statement of case, along with
the application, setting out grounds on which it relies, in support of the application.
A certification mark application is similar in many respects to an ordinary trade mark
application. Once the application is filed, the proceedings will be similar to that of
examination and registration of a trademark application. Typically, the Registrar shall cause
the application for registration of a certification trade mark to be identified in the first
instance, as to whether it satisfies the requirements purported by the Indian Trade Marks
Act. The criteria for determining the registrability of a certification trade mark in India during
examination cover similar grounds to those as other trademarks. A certification mark must be
capable of distinguishing the certified goods or services but the question of distinctiveness
may be decided in a different way as the most important part for consideration is whether the
16 | P a g e
certification mark is capable of distinguishing the certified goods or services from those not
so certified, rather than distinguishing the goods or services of one business from the similar
goods or services of another business.
Certification marks are generally given for compliance with certain standards, but are not
limited to any specific group of enterprises as in the case of Collective mark. For a
certification mark to be valid and enforceable, the owner of the mark should not use it with
their own goods and services. Instead, the owner can only authorize others to use it. In
addition, the owner has to oversee others' use of the certification mark to ensure that the mark
is being properly used. Certification marks perform a different role than a normal trademark.
Though a certification mark is also capable of distinguishing the certified goods or services in
respect to its origin, material, and mode of manufacture or performance of services, quality,
or correctness, it can be used only in accordance with defined standards. Certification marks
may be used together with the individual trademark of the producer of a given good.
The Registrar is not allowed to refuse, amend, modify, etc. an application, without giving the
Applicant an opportunity to be heard. If the Applicant complies with the requirements of the
Indian Trade Marks Act, the mark will be accepted in due course. The Trade Marks Registry
thereafter advertises the certification mark in the Trade Marks Journal. The mark remains
open to opposition by a person interested to oppose the application for registration. If there is
no opposition against the proposed registration or the opposition proceedings have been
decided in favour of the Applicant, the Trade Marks Registry will proceed to grant the
Registration. Assignment or transmission of certification marks is possible but only with the
prior consent of the Registrar of Trade Marks, for which an application has to be made in the
prescribed manner. This ensures that the new owner is competent to be the approved certifier.
17 | P a g e
Some Indian the state enforced certification marks are listed below:
ISI mark used for industrial products which certifies that the products conform to a set
of standards laid by the Bureau of Indian Standards
FPO mark used for processed fruit products in India which certify that the products
were manufactured in a hygienic 'food-safe' environment.
Agmark used on agricultural products to certify that they conform to a set of standards
approved by the Directorate of Marketing and Inspection, an agency of
the Government of India.
The Non Polluting Vehicle mark used on motor vehicles to certify conformity to
the Bharat Stage Emission standards.
BIS Hallmark used to certify the purity of gold jewellery.
The Indian Organic certification mark used on organically farmed food products to
certify that the products conform to the specifications of National Standards for
Organic Products, 2000.
Ecomark used on for various products issued by the Bureau of Indian Standards.
18 | P a g e
4. CONCLUSIVE DIFFERENCE
The TRIPs agreement deals with Geographical Indications under Articles 22-24 and requires
that each member country put in place a system to protect Geographical Indications. As per
the TRIPs agreement, Geographical indications are, …, 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.
The TRIPs Agreement requires that each member country provide legal means of protecting
Geographical Indications. The WTO recognizes that a variety of means may be employed to
protect GIs – for example, India enacted the Geographical Indications Act in 1999, other
countries protect GIs under their certification trademark regimes.
A certification trademark (CTM), as the name indicates, is a mark that certifies the nature or
origin of the goods or services to which it has been applied.
One obvious difference between a CTM and a GI is that the former has a broader scope.
WIPO explains: A CTM application can include, for example, region or location or origin,
materials of construction, method or mode of manufacture or provision, quality assurance,
accuracy of the goods or services or any definable characteristic of the goods or services. It
can also certify manufacture or provision of services by members of a union or other
organization to certain standards. A GI, on the other hand, is only an indication (or
certification) of the geographic origin of goods (not services, CTMs cover services) and
quality or characteristics of the goods that are directly attributable to the geographic origin.
19 | P a g e
20 | P a g e
