LL.

B- I[2017 Pattern] LO 0609 Intellectual Property Rights-II

Module 05: The Geographical Indications of Goods (Registration and

Protection) Act, 1999

[Link] background of law of Geographical Indications in India

[Link] and Definition, Functions and Characteristics of Geographical

Indication

[Link] between Geographical Indications and Trade Mark

[Link] Register and Conditions for Registration of Geographical Indication

[Link] for Registration, Duration of Protection, Rights conferred by

Registration, Infringement of Geographical Indications and Remedies

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1. Historical background of law of Geographical Indications in India

INTRODUCTION

Protection of Geographical Indication (GI) has, over the years, emerged as one of the
most contentious IPR (Intellectual Property Rights) issues in the realm of the WTO‘s
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS defines
GI as any indication that identifies a product as originating from a particular place, where a
given quality, reputation or other characteristics of the product are essentially attributable to
its geographical origin. Also a geographical indication (GI) gives exclusive right to a region
(town, province or country) to use a name for a product with certain characteristics that
corresponds to their specific location.

The Geographical Indications of Goods (Registration and Protection) Act, 1999 protect
the GI‘s in India. Registration of GI is not compulsory in India. If registered, it will afford
better legal protection to facilitate an action for infringement.

NEED FOR LEGAL PROTECTION OF GI

Given its commercial potential, legal protection of GI assumes enormous significance.

Without suitable legal protection, the competitors who do not have any legitimate rights on
the GI might ride free on its reputation. Such unfair business practices result in loss of
revenue for the genuine right-holders of the GI and also misleads consumers. Moreover, such
practices may eventually hamper the goodwill and reputation associated with the GI.

Historical Background

Darjeeling‘ tea is a premium quality tea produced in the hilly regions of the Darjeeling
district West Bengal-a state in the eastern province of India. Among the teas grown in India,
Darjeeling tea offers distinctive characteristics of quality and flavour, and also a global
reputation for more than a century. Broadly speaking there are two factors which have
contributed to such an exceptional and distinctive taste, namely geographical origin and
processing. The tea gardens are located at elevations of over 2000 meters above sea level.

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The history of Darjeeling tea dates back to the 1840‘s, when India was a British colony.
Before the arrival of the British, the forests of the region were known as Darjeeling today was
inhabited by the Lepcha tribes. In 1828, while visiting this region located in the backdrop of
the snow-clad Himalayan range, a young British called Captain Lloyd discovered the
possibility of converting the region into a hill station or a sanitarium. In 1839, Darjeeling was
handed over to Dr. A. Campbell, a civil surgeon, who got transferred from Kathmandu to
Darjeeling to become the first Superintendent of the Darjeeling district, a position which he
held for the next twenty two years. In 1841, Dr. Campbell brought the seeds of China variety
of tea from Kumaon hills of North India and planted them near his residence in his Beech
wood garden in Darjeeling, 2134 meters above the mean sea level. Seeing the success of Dr.
Campbell‘s experimental tea nursery, the British Government decided to put out tea nurseries
in the region in the year 1847. Even after the Indian independence from British rule in 1947,
the British ownership continued in many tea gardens of Darjeeling. By the end of the 1970‘s,
most of the tea gardens of Darjeeling were in the hands of Indian owners. The major portion
of the annual production of Darjeeling tea is exported, the key buyers being Japan, Russia, the
United States, and the United Kingdom and other European Union (EU) countries such as
France, Germany and the Netherlands. In order to ensure the supply of genuine Darjeeling tea
in February 2000, a compulsory system of certifying the authenticity of exported Darjeeling
tea was incorporated into the Indian Tea Act of 1953. The system makes it compulsory for all
the dealers in Darjeeling tea to enter into a license agreement with the Tea Board of India on
payment of an annual license fee.
Why Protect “Darjeeling Tea” as Geographical Indication

An adequate legal protection is necessary for the protection of legitimate right holders
of Darjeeling tea from the dishonest business practices of various commercial entities. For
instance, tea produced in countries like Kenya, Sri Lanka or even Nepal has often been passed
off around the world as ‗Darjeeling tea‘. Appropriate legal protection of this GI can go a long
way in preventing such misuse.

Without adequate GI protection both in the domestic and international arena it would
be difficult to prevent the misuse of Darjeeling Tea‘s reputation, wherein tea produced
elsewhere would also be sold under the Darjeeling brand, causing damage to consumers and

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denying the premium price to Darjeeling tea industry. The industry is now waking up to the
fact that unless Darjeeling Tea is properly marketed and branded, the survival of the industry
may be at stake and GI protection along with stringent enforcement can go a long way in
helping the industry to improve its financial situation.

Evolution of Legal Protection

The first attempt on the part of the Tea Board of India towards protection of the
‗Darjeeling‘ brand was undertaken way back in 1983, when the ‗Darjeeling‘ logo was created.
The Tea Board obtained home protection for the Darjeeling logo as a certification trade mark
under the Indian Trade and Merchandise Marks Act 1958 (now the Trade Marks Act, 1999).
The registration was granted in class 30 in the name of the Tea Board in 1986. In the same
year, the logo was registered as a trademark in several other countries like the UK, the USA,
Canada, Japan, Egypt, and under the Madrid Agreement covering Germany, Austria, Spain,
France, Portugal, Italy, Switzerland and former Yugoslavia
In the absence of a separate law dedicated exclusively to GI‘s in India during that time,
the word ‗Darjeeling‘ was also registered under the Trade and Merchandise Marks Act 1958
in class 30 in the name of Tea Board in 1998. When the Geographical Indication Act in India
was enacted in September 2003, the Tea Board applied for GI protection of ‗Darjeeling‘ in
October 2003. In October 2004, Darjeeling was granted the GI status in India to become the
first application to be registered in India as a GI.

Enforcement Steps Taken by The Tea Board of India

In order to prevent the misuse of ‗Darjeeling‘ and the logo, the Tea Board has since
1998 hired the services of Compumark, a World Wide Watch agency. Compumark is required
to monitor and report to the Tea Board all cases of unauthorized use and attempted
registration. Pursuant to Compumark‘s appointment, several cases of attempted registrations
and unauthorized use of ‗Darjeeling‘ and Darjeeling Logo have been reported.
The tea board tried to prevent unauthorized use or attempt or actual registration of Darjeeling
word/ logo that were brought to its notice. [Refer Annexure B] Some disputes relating to
Darjeeling tea have been settled through negotiations undertaken by the tea board of India
with the foreign companies . For example Bulgari, Switzerland agreed to withdraw the legend
‗Darjeeling Tea fragrance for men‘ pursuant to legal notice and negotiations by the Tea

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Board. The Tea Board has fought almost 15 cases in the last four years against infringement
and misuse of the word Darjeeling Tea worldwide which includes Russia, USA, Japan,
France, Germany, Israel, Norway and Sri Lanka etc.
THE INDIAN GI ACT

India has put in place a sui generis system of protection for GI with enactment of a law
exclusively dealing with protection of GIs. The legislations which deals with protection of
GI‘s in India are ‗The Geographical Indications of Goods (Registration & Protection) Act,
1999‘ (GI Act), and the ‗Geographical Indications of Goods (Registration and Protection)
Rules, 2002 (GI Rules). India enacted its GI legislations for the country to put in place
national intellectual property laws in compliance with India‘s obligations under TRIPS. Under
the purview of the GI Act, which came into force, along with the GI Rules, with effect from
15 September 2003, the central government has established the Geographical Indications
Registry with all-India jurisdiction, at Chennai, where right-holders can register their GI.

Unlike TRIPS (Art.23), in the GI Act does not restrict itself to wines and spirits (Sec.
2(e)). Rather, it has been left to the discretion of the central government 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. However, other WTO
members are not obligated to ensure Article 23-type protection to all Indian GI, thereby
leaving room for their misappropriation in the international arena.
The definition of GI included in Section 1(3) (e) of the Indian GI Act 1 clarifies that 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 a GI 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,

1
―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.

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as the case may be. This provision enables the providing protection to symbols other than
geographical names, such as ‗Basmati‘.
After the enactment of Geographical Indications of Goods (Registration & Protection
Act, 1999) in 2003, Darjeeling tea became the first Indian product to receive a GI tag in 2004-05.

2. Meaning and Definition, Functions and Characteristics of

Geographical Indications
3.

DEFINITION AND MEANING

―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.‖2

So, essentially, any sign which indicates that a certain product originated from a
particular place and when that product has any quality attributable to such place, then, such
indication is called a Geographical Indication.

Before we see some examples, it is essential that we consider two other terms:
―Appellations of Origin‖ and ―Indications of Source‖.

With respect to ―Indications of Source‖, it is pertinent to state that the term has not been
defined in any of the International Treaties. Though the term has been used in the Paris
Convention and the Madrid Agreements, the definition can only be inferred to mean any
expression or sign that indicates that a product or service originates in a country, a region,
and a specific place where the product originated, like, Made in India. Also, the Convention
does not seem to include any quality attribution as essential to an ‗Indication of Origin‘. WIPO
defines an Indication of Source as ―an indication referring to a country (or to a place in that
country) as being the country or place of origin of a product” and that unlike a geographical
indication ―an indication of source does not imply the presence of any special quality,
reputation, or characteristic of the product essentially attributable to its place of origin.

2
Geographical Indications, accessible at [Link]

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Indications of source only require that the product on which the indication of source is used
originate in a certain geographical area”3.

―Appellations of Origin‖ has been defined in the Lisbon agreement to mean ―the geographical
denomination of a country, region, or locality, which serves to designate a product originating
therein, the quality or characteristics of which are due exclusively or essentially to the
geographical environment, including natural and human factors.‖4

From this definition, three ingredients are identifiable5:

(a) Direct geographical name: Either the country, the region or the locality;
(b) Designating of a product‘s origination
(c) ‗Quality and characteristics‘ attributable exclusively or essentially to the geographical
environment of the designated area.

While both geographical indications and appellations of origin signify a connection between the
place of origin of a product and the place where it originated, an Appellation of Origin is a
special category of Geographical Indications6. ―The basic difference between the two concepts
is that the link with the place of origin must be stronger in the case of an appellation of origin.
The quality or characteristics of a product protected as an appellation of origin must
result exclusively or essentially from its geographical origin7”.

An example of an Appellation of Origin is Champagne, which is used to indicate that a special

kind of sparkling wine originating in the Champagne region of France. Another example is
Tequila from the country of Mexico. There are federal regulations in place which govern specific

3
[Link]

4
Lisbon agreement, of October 31, 1958, as revised at Stockholm on July 14, 1967, and as amended on September
28, 1979, Article 2 (1)
5
Dr. Dwijen Rangnekar, Geographical Indications: A Review of Proposals at the TRIPS Council: Extending Article
23 to Products other than Wines and Spirits
6
[Link]
[Link]
7
2

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details such as the place where it can be made, where the agave plants to make it can be grown,
what has to be stated on the label, where it can be bottled and how much of the content must be
made from what percentage of agave sugars before it can be labelled as Tequila8.

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.‖

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.

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.

4. Distinction between Geographical Indications and Trade Mark

Geographical Indication and Trademarks- differences and similarities

The difference between Trademarks and Geographical Indications is pretty simple. But
before we embark on that, let us discuss a few similarities between Trademarks and

8
[Link]

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Geographical Indications. A first point of contact, with which everyone is familiar, is that both
are distinctive symbols. Another point of contact stems from the foregoing, that is, both
differentiate some products from others.

However, trademarks differentiate the products made by different producers, and geographical
indications differentiate one group of products from others that don‘t come from the region it
protects. This means that while geographical indications differentiate goods originating from a
particular place, trademarks differentiate products (goods & services) originating from a
particular person or business unit, such as a company9. This property of a Geographical
Indication makes it a Collective Mark.

Another difference is that trademarks arise from the creative genius of man, while
geographical indications are not created; they are there, in nature due to the existence of human
and natural factors.

The third difference between them is that unlike the case of trademark, social recognition
must already be recognized before the idea and need for their protection arise.10

Further, since a trademark represents a specific person or business unit, and not a specific
place; it is possible to assign or license the trademark to another person, irrespective of their
geographical location. On the other hand, a geographical indication, being a collective mark, can
only be assigned or licensed to a person based in the specific geographical area signified by the
geographical indication, and who can produce goods in conformity to the standards represented
by the particular geographical indication11.

9
2

10
WIPO/GEO/BEI/07/4, Geographical Indications And Trademarks: Combined Efforts For A Stronger Product
Identity,The Experience Of Cuban Cigar Trademarks And Geographical Indications
11
2

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5. The Register and Conditions for Registration of Geographical

Indication

THE REGISTER AND CONDITIONS FOR REGISTRATION

3. Registrar of Geographical Indications.—

(1) The Controller-General of Patents, Designs and Trade Marks appointed under sub-section (1)
of section 3 of the Trade Marks Act, 1999, shall be the Registrar of Geographical Indications. (2)
The Central Government may appoint such officers with such designations as it thinks fit for the
purpose of discharging, under the superintendence and direction of the Registrar, such functions
of the Registrar under this Act, as he may from time to time authorise them to discharge.

4. Power of Registrar to withdraw or transfer cases, etc.—Without prejudice to the generality

of the provisions of sub-section (2) of section 3, the Registrar may, by order in writing and for
reasons to be recorded therein, withdraw any matter pending before an officer appointed under
the said sub-section (2) and deal with such matter himself either de novo or from the stage it was
so withdrawn or transfer the same to another officer so appointed who may, subject to special
directions in the order of transfer, proceed with the matter either de novo or from the stage it was
so transferred.

5. Geographical Indications Registry and offices thereof.—(1) For the purpose of this Act,
there shall be established a Registry which shall be known as the Geographical Indications
Registry.

(2) The head office of the Geographical Indications Registry shall be at such place as the Central
Government may, by notification in the Official Gazette, specify, and for the purpose of
facilitating the registrations of geographical indications, there may be established at such places
as the Central Government may think fit branch offices of the Geographical Indications Registry.
(3) The Central Government may, by notification in the Official Gazette, define the territorial
limits within which an office of the Geographical Indications Registry may exercise its functions.
(4) There shall be a seal of the Geographical Indications Registry.

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6. Register of Geographical Indications.—For the purposes of this Act, a record called the
Register of geographical indications shall be kept at the head office of the Geographical
Indications Registry, wherein shall be entered all registered geographical indications with the
names, addresses and descriptions of the proprietors, the names , addresses and descriptions of
authorised users and such other matters relating to registered geographical indications as may be
prescribed and such registers may be maintained wholly or partly on computer.

(2) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Registrar to
keep the records wholly or partly in computer floppies or diskettes or in any other electronic
form, subject to such safeguards as may be prescribed.

(3) Where such register is maintained wholly or partly in computer floppies or diskettes or in any
other electronic form under sub-section (2), any reference in this Act to any entry in the register
shall be construed as the reference to the entry as maintained on computer floppies or diskettes or
in any other electronic form, as the case may be.

(4) No notice of any trust, express or implied or constructive, shall be entered in the register and
no such notice shall be receivable by the Registrar.

(5) Subject to the superintendence and direction of the Central Government, the register shall be
kept under the control and management of the Registrar.

(6) There shall be kept at each branch office of the Geographical Indications Registry a copy of
the register and such other documents mentioned in section 78 as the Central Government may,
by notification in the Official Gazette, direct.

7. Part A and Part B of the register.—(1) The register referred to in section 6 shal be divided
into two Parts called respectively Part A and Part B.

(2) The particulars relating to the registration of the geographical indications shall be
incorporated and form Part A of the register in the prescribed manner.

(3) The particulars relating to the registration of the authorized users shall be incorporated and
form part of Part B of the register in the prescribed manner.

8. Registration to be in respect of particular goods and area.—

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(1) A geographical indication may be registered in respect of any or all of the goods, comprised
in such class of goods as may be classified by the Registrar and in respect of a definite territory
of a country, or a region or locality in that territory, as the case may be.

(2) The Registrar shall classify the goods under sub-section (1), as far as may be, in accordance
with the International classification of goods for the purposes of registration of geographical
indications.

(3) The Registrar may publish in the prescribed manner an alphabetical index of classification of
goods referred to in sub-section (2).

(4) Any question arising as to the class within which any goods fall or the definite area as
referred to in sub-section (1) in respect of which the geographical indication is to be registered or
where any goods 7 are not specified in the alphabetical index of goods published under sub-
section (3) shall be determined by the Registrar whose decision in the matter shall be final.

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 comprises 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.

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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.

10. Registration of homonymous geographical indications.—Subject to the provisions of

section 7, a homonymous geographical indication may be registered under this Act, if the
Registrar is satisfied, after considering the practical conditions under which the homonymous
indication in question shall be differentiated from other homonymous indications and the need to
ensure equitable treatment of the producers of the goods concerned, that the consumers of such
goods shall not be confused or misled in consequence of such registration.

6. Procedure for Registration, Duration of Protection, Rights conferred by

Registration, Infringement of Geographical Indications and Remedies

Who can file for Geographical Indications?

Section 11(1)

An application for registration of the Geographical Indication can be made by an

association of persons or producers or any organisations or authority established by or under any
law for time being in force; who must be representing the interest of the producers of the
concerned goods; and desirous of registering a geographical indication in relation to such
goods.‖

Authorised User

An authorised user is a person who has been registered as such under Section 17 of the
Geographical Indications of Goods (Registration and Protection) Act,1999 act. A producer of the
goods in respect of which geographical indication has been registered is eligible to register
himself as an authorized user.

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In order to register oneself as an authorized user, the producer needs to provide a statement and
other documents of facts which would allow the registrar to ascertain the veracity of their claims.
The registration of an authorised user is valid for 10 years, or till the date on which the
registration of the related geographical indication expires.

Steps applicable for registration as authorised user are-

1. Filing of an application

2. Preliminary Scrutiny and exam

3. Issue of Show cause notice

4. Advertisement

5. Opposition for registration

6. Registration

Prohibition on registration of certain Geographical Indications (Section 9)

There are certain Geographical Indications, the registration of which is prohibited by law. These
include such indications:

 The use of which is likely to deceive or cause confusion

 The use of which is contrary to the law for time being in force

 Which comprises of or contains any scandalous or obscene matter

 Which comprises or contains any matter that is likely to hurt the religious sentiments
of any class or section of people

 Which would be disentitled to protection of law

 Which are determined to be the generic names or indications of goods and therefore
ceased or not protected in the country of origin

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 Which, although literary true as to the territory, region or the locality in which the
goods have originated, but falsely represent that the goods originate in a different
territory or locality or region of a country
Explanation 1 of the captioned section elucidates the meaning of ―generic names of indications‖
to be in relation to goods which although relates to the place of 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 an indication of the kind, nature, type of
other property or characteristic of the goods.

Explanation 2 of the same section further clarifies that ―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.‖

Step by step procedure for registration of Geographical Indication

Step 1-Filing of the Application

 The application for the registration of Geographical Indication shall be made in

triplicate.

 The application then must be signed by the applicant or his agent along with the
statement of case and has to be submitted along with the prescribed form GI-1

 A single application can be filed for different classes of goods and fees payable shall
be in respect of each of such class of goods.

 An affidavit is required to accompanying the forms has to be submitted by the

association of persons, producers, organisations or authority representing the interest
of the producers over certain goods and how the applicant claims to represent their
interest
What should be the contents of the application?

Section 11 (2)

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 Firstly, it should state how the geographical indication serves to designate the goods
as originating from the concerned territory of the country or region or localities as the
case may be, in respect to quality specifications, reputation, characteristics which are
exclusively due to certain environmental conditions with inherit natural or human
factors relating to the territory.

 It should also state the class of goods to which the geographical Indication shall apply

 The geographical map of the territory of the country or region or the locality of the
country in which the goods are produced or manufactured should be included.

 Particulars regarding the appearance of the geographical indications as to whether it is

comprised of words or figurative elements or both.

 Statement containing the details of the applicant including the names, addresses and
other such details as may be specified from time to time
Forms for registration of GI are available on the website of Geographical Indications Registry
([Link]

Step 2 and 3 – Preliminary Scrutiny and Examination

Section 11 (5) to (7)

 The application will be scrutinized by the examiner for any deficiencies and
discrepancies.

 In case of any deficiencies and discrepancies, the applicant is required to rectify the
same with a period one month of its communication.

 The correctness and authenticity of the content of statement furnished by the applicant
shall then be assessed by the Registrar in consultation with a group of experts
consisting of not more than 7 representatives who are well versed on the subject.

 Only after proper scrutiny and examination that the examination report will be issued
Step 4 – Issue of Show Cause Notice

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(Section 12)

 If the Registrar has any objection with regards to the application then the same shall
be communicated to the applicant.

 The applicant must respond within a period of two months from the receiving of the
notice or he can apply for hearing

 The Registrar has been entrusted with the power to withdraw the application after
giving the applicant a reasonable opportunity of being heard, if he is of opinion that
there has been an error on the part of the applicant and the same has been conveyed to
him

 If aggrieved, an appeal can be made within period of one month of the Registrar‘s
decision.
Step 5: Advertisement

(Section 13)

 Every application for registration of geographical indication that has been accepted
absolutely or with subject to conditions or limitations shall within three months of
acceptance shall be published in the Geographical Indications Journal.
Step 6: Opposition to Registration

Section 14

 Any person can file a notice of opposition within three months (extendable by another
month on request which has to be filed before three months) opposing the
Geographical Indication application published in the Journal in triplicate along with
the form GI-2

 The registrar shall serve a copy of the notice on the applicant for registration and the
applicant shall within period of two months from the date of the receipt of such notice
send to the Registrar the copy of the counter statement stating the grounds on which

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he relies on his application, failure to do so will result in abandonment of his

application.

 On receiving the counter statement from the applicant, the Registrar shall serve a copy
of the of the same to the person giving the notice of opposition.

 The applicant and the opponent have to submit to the registrar any evidence on which
they rely, in manner and time as may be prescribed from time to time by the registrar.

 Registrar shall give adequate time to both the parties to be heard

 The registrar after hearing both the parties and considering all the evidence shall
decide whether to accept the application with or without limitations or conditions

 If it comes to the notice of the registrar that either the applicant or person giving the
notice of opposition neither resides nor carries on the business in India, the registrar
may require him to give the security for the cost of proceedings before him and in
case of any default of such security duly given, may treat the application or opposition
as the case may be, as abandoned.

 On request the Registrar may permit to make any correction or amendment of an error
in the notice of opposition or counterstatement.
Step 7– Corrections and amendments-

Section 15

The Registrar may from time to time with subject to certain terms and conditions permit either
before or after the acceptance of the application, the correction of any error or an amendment of
the application.

Step 8: Registration

Section 16

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 On acceptance of the application, the registrar shall register the geographical

indication for the same.

 If registered the date of filing of the application shall be deemed to be the date of
registration.

 The registrar shall then issue to the applicant a certificate with the seal of the
Geographical indication‘s registry in Form-02 as per Rule 55 0f The Geographical
Indications of Goods (Registration and Protection) Rules, 2002
Step 9: Duration, Renewal And Restoration

Section 18

 A registered Geographical Indication shall be valid for 10 years and can be renewed
on payment of renewal fee.

 At the time before the expiration of last registration of geographical indication, the
Registrar shall send the notice to the registered proprietor or the authorized user as the
case may be, about the date of expiration and the conditions as to payment of fees and
upon renewal of which registration shall be obtained.

 Failure to do so may result in removal of geographical indication

 Where a geographical indication has been removed by the Registrar on grounds of

non-payment of the renewal fees may after six months and within period of one year
from the expiration of last registration of geographical indication may, on an
application in a prescribed manner and after payment of prescribed fees may restore
the geographical indication for period of 10 years from the expiration of last
registration
Step 10: Appeal to the Appellate Boards

Section 31

 Any person aggrieved by an order or decision of the Registrar under the act or under
the rules made thereunder, may prefer an appeal to the Intellectual Property Appellate
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Board (IPAB) within three months from the date on which the order or decision
sought to be appealed is communicated.

Rights conferred by Registration

Under section 21 of the act, the authorised user and proprietor of the geographical indication is
allowed certain rights in terms of the indication. These include:

1. An exclusive right to make use of the indication in relation to goods to which the
indication has been obtained.

2. In case of infringement, to seek relief in a manner provided in the act.

However, it needs to be remembered that these rights conferred by registration are not absolute
and are subject to conditions which restrict the powers allowed to the user, including:

 Variation Condition: This includes cases where the proprietor agrees to have
variations in the mark assigned to goods, other than those mentioned in the label.

 Restraining Conditions: The geographical indication shall not be used for the purpose
of certain specific goods

 Blank Space condition: This condition requires all blank spaces in the label to only be
occupied by matter that is non-distinctive in nature.

 Limitation Condition: This condition restricts the area within which the registration is
allowed to operate.
An interesting point to note regarding the powers over geographical indications comes to light
when there are more than one authorised users of geographical indications which may be
identical or bear near resemblance with each other. In such cases, the exclusive right to the use of
these conditions are not deemed to have been acquired by any one of those persons against any
other, but each of these persons have the same rights as a sole authorized user against other
persons.

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INFRINGEMENT AND PASSING-OFF OF GEOGRAPHICAL INDICATIONS

Under the Indian Act, no protection is conferred on an unregistered GI. 12 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.‖13

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.14 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:-

12
Supra Note 7, s 20.

13
Ibid

14
[Link]

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● 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.

Jamnagar Petrol

Reliance Industries Ltd. (RIL) had filed a geographical indications (GI) application for its
Krishna-Godavari gas and Jamnagar petrol, diesel and LPG. The application sought authorized
usage of the name "Jamnagar LPG, Oil, Petrol and Diesel".15 Though later the application was
abandoned by RIL, but the specification and the rationale behind its acceptance are worth
wondering at.

15
[Link]

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Section 11(2) of the GI Act, mandates an application to contain a statement that proves or
establishes the GI to designate the goods as originating from the concerned region in respect of
specific quality, reputation or other characteristics of which are due exclusively or essentially to
the geographical environment with its inherent natural and human factors.

Under ―Specification‖, RIL stated that the ISO standards met by its petrol, fuel, LPG and diesel.
There was no mention of any unique properties possessed by the goods in the application by RIL
except the compliance with ISO standards.

Under the column ―Proof of origin [Historical records]‖ RIL stated as follows:

―In 1991, the Government of India allowed the investments from the private sector, in this field.
Heavy investment has been made in the less favoured remote area which has resulted in the
improvement of local rural area and paved way for the retention of the rural population in this
area and it helps in the rural development. The applicant in a record time of 15 days after the
historic heavy cyclonic hit on 8th June 1998 repaired the extensive damage and brought back the
normalcy‖16

The whole matter was dubious and the surprising fact was how the Registry had allowed such a
publication. The controversy more or less ended after RIL abandoned the application.

Basmati Rice

The roots of the controversy can be traced back to the year 2009 when APEDA (Agricultural &
Processed Food Products Export Development Authority) filed an application for GI Registration
of the tag Basmati Rice. However, the application only covered Seven Indian states including

16
[Link]

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Punjab, Haryana, Himachal Pradesh, Delhi, Uttarakhand, Uttar Pradesh (West) and two districts
of Jammu & Kashmir. This application was contested by Madhya Pradesh in 2010, opposing its
exclusion from the list of regions growing Basmati Rice.

The Registry allowed the opposition, directing APEDA to include certain regions of Madhya
Pradesh in its application by amending it. The Registry‘s order was again appealed against by
APEDA and two other parties in front of the Intellectual Property Appellate Board (IPAB).
Setting aside the Registry‘s order to include Madhya Pradesh in the GI Registration application
by APEDA, the IPAB asked the Registry to take a fresh look at Madhya Pradesh‘s claim to be
included in the list of Basmati-cultivating regions17.

The Registry was also directed to issue APEDA a GI Tag for the areas which were already
covered in its application. This order of the IPAB was again contested by Madhya Pradesh
before the Madras High Court by way of a writ petition. An interim order18 passed by the Madras
High Court prohibited APEDA to take any prescriptive action in respect of the produce from the
State of Madhya Pradesh qua the existing areas where such [Basmati] rice is alleged to have
been grown19.

While the matter is yet to reach its conclusion in the Court, the Registry, when considering
Madhya Pradesh‘s claim afresh, reached the conclusion that there was no merit in Madhya
Pradesh‘s opposition to APEDA‘s application and rejected its claim to the GI Tag, stating that:

The documents and evidence filed by opponents' shows the importance, special characters of rice
cultivated in Madhya Pradesh but not the Basmati cultivation in the traditional growing area.

17
[Link]

18
In WMP No. 5151 of 2016

19
[Link]
IN-WP-No.-[Link]

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Opponent has therefore failed to satisfy the fundamental requirement of Popular Public
perception of Basmati-cultivation in Madhya Pradesh as mentioned by the honourable IPAB
Chennai20.

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 the term
Darjeeling Tea 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.

20
[Link]
[Link]

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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.

Dusong (Darjeeling with kettle device for stationery) France

The Court of Appeal of Paris on November 22, 2006 quashed the decision of the Court of First
Instance rendered in August 2005 wherein the action filed by the Tea Board for dilution of
Darjeeling against adoption of the mark ―Darjeeling with a kettle device‖ in respect of classes
16, 35 and 41 by Mr. Dusong.

In its decision, the Court of Appeal, Paris held that Mr. Dusong‘s mark impairs the geographical
indication DARJEELING and is prejudicial to the Tea Board‘s interests in the same.
Accordingly the impugned mark was nullified. Mr. Dusong has been restrained from using the
same in any connection whatsoever.

Further, the Court has imposed a fine of Euros 500 for every breach that would occur after one
month of notification of the decision. Mr. Dusong was to publish, at his expense, (but within a
total of Euros 5000), the decision in three newspapers, either French or foreign, of Tea Board‘s
choice. Mr. Dusong was also sentenced by the Court to pay an amount of Euros 2000 to the Tea
Board.

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Other Cases

Other marks which were opposed include DIVINE DARJEELING, DARJEELING,

DARJEELING NOVEAU relating to diverse goods and services such as clothing, lingerie,
telecommunication and internet services, coffee, cocoa etc. Further, use by BVLGARI,
Switzerland of the legend ―Darjeeling Tea fragrance for men‖ was agreed to be withdrawn
pursuant to legal notice and negotiations.

Indian GIs and the Issue of Quality Control

In order to be valuable to the registered producers, a GI must be capable of creating value for the
product which it signifies. The GI regime in India is heavily based on the trademark regime, and
as a result, favours the trader by directing its focus on preventing misuse of GIs by unauthorized
users. However, this trader-centric focus undermines the producer-centric need to maintain the
reputation and quality of the products affixed with the GI tag. The lack of awareness and
incentives has precluded producers from seeking and capturing a premium market. For any GI
regime to be successful, it is imperative that quality and consumer welfare be accorded the prime
spot and consumer interest be kept in mind; which is made evident by successful GI regimes all
over the world, especially the European GI regime.

The issue of quality control in India after registration of the GI is highlighted with the help of
four case studies in Banarasi Sarees, Pashmina, Darjeeling Tea, and Alphonso Mango.

The Banarasi Saree example highlights how, despite the GI registration and the immense
reputation enjoyed by Banarasi Sarees in India as well as all over the world, the makers are faced
with intense competition from the cheap silk fabric brought from China and Surat; ultimately
resorting to passing off inferior fabric as silk and power loom fabric as handloom, diluting the
quality of GI tag and rendering consumer unsure of the quality of the product they were buying.
It also illustrates how this practice intensifies transaction costs for the customers and also reduces
the sale of artisan-manufactured products; ultimately operating against the producers.

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The Pashmina case study elucidates how quality control and quality assurance can be achieved
with the help of a voluntary registration system and how the production of goods denominated
by a GI Tag can be monitored and certified for quality with the help of technology.

The Darjeeling GI case study interestingly highlights how, despite foolproof supply claims,
statutory control by the Ministry of Commerce to maintain the quality of Darjeeling tea since
1933, and strict quality control by the Tea Board; it is only since 2016 that the producers of
Darjeeling tea have been entitled to initiate legal action against the sellers of blended tea in the
European Union; after the transitory norm allowing importers in the EU to sell a blend of 51
percent Darjeeling tea and 49 percent of any other tea as Darjeeling tea was scrapped.

Lastly, the Alphonso case study highlights the weak link in the GI regime, which fails to link
inspection mechanisms with compliance by authorized users of GI and iterates how the
temporary ban by the EU on Alphonso mangoes from India reflects the need of incorporating
Sanitary and phytosanitary (SPS) imposed at importing destinations into inspection mechanisms
in India.

Thus, these four different Indian case studies exhibit the divided framework of quality-control
mechanisms across the country, which may as well be viewed as an advantage, given that
different GIs face different issues in respect of quality control. Conclusively, it may be
imperative to implement a decentralized system for quality control with different approaches
governing the implementation of quality control mechanisms; it is for the legislature to define
and delineate the duties of inspection bodies; either by incorporating a chapter to this effect in
the GI Act itself or by enacting a separate statute altogether for this purpose. The issue of

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quality-control can no longer be ignored if the premium value associated with a GI-denominated
product is to be preserved21.

21
[Link]
culture/vanity-gis-indias-legislation-on-geographical-indications-and-the-missing-regulatory-
framework/AAFD35BFBCF03773C44A518362DDB22F/core-reader

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