Protecting GI….

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What is a Geographical Indication?
 It is an indication
 It originates from a definite
geographical territory.
 It is used to identify
agricultural, natural or
manufactured goods
 The manufactured goods
should be produced or
processed or prepared in
that territory.
 It should have a special
quality or reputation or
other characteristics

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 Geographical Indications : Meaning
A geographical indication generally
consists of the name of a country,
region or locality that serves to
designate a product originating
therein, the quality, reputation, or
other characteristic of which is
essentially attributable to the
geographical origin.
This means that products protected
under this special title originate
from a specific area and owe a
specific quality, reputation or
other characteristic to that
place of origin.

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In order to ensure that the products satisfy
the specified criteria, a control mechanism
may be set up by competent authorities, and
products are monitored regularly.
Only products which satisfy the definitional
criteria are protected by a geographical
indication.
In some countries, geographical indications are
limited to agricultural products and
foodstuffs, but the concept may be applied to
other products as well.
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Article 22.1 of the TRIPS Agreement
defines “geographical indications” as:
“ indications which identify a good as originating
in the territory of a [WTO] 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.”
This definition is mainly derived from the
definition of “appellation of origin” given by
Article 2 of the 1958 Lisbon Agreement for
the Protection of Appellations of Origin and
their International Registration (“the Lisbon
Agreement”)

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GI and Appellation of Origin
 All appellations of origin are geographical
indications but not all geographical
indications are appellations of origin.
 Appellation of origins are used on those
goods which, along with being an
indication of source, also signify the
quality and the characteristics of the
product which is due exclusively to the
geographical environment.

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Significance of Geographical
Indication
 In modern free trade economies, GIs have enormous
economic value as the consumers are wiling to pay high
prices for goods bearing a particular quality.
 It is important to protect the consumers from spurious
products and producers from unfair competition.
 Besides the commercial aspect, the GIs also protect the
usurpation of the national heritage of a country by
associating a product world wide with a particular
country.
 As the quality of product is not only attributable to the
climate, topography but also to the know-how of the
producers of the region, the GIs are also important
tools for protecting the traditional knowledge of the
producers.

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Distinction Between Geographical
Indications and Trademark
 Geographical indications have been protected
under the Trademark law in many national
jurisdictions. Even though both the GIs and
Trademark are source identifiers, there are many
differences between the two.
 Trademark identifies the products with the
manufacturer, the GI identify products with the
place of production or origin.
 Another important difference is that the GIs are
the community rights whereas the trademark is
individual right.
 As regards the use, the Trademark can assigned as
well as licensed, but a Geographical indication
cannot be assigned, transmitted or licensed.
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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.
 Sui generis is a Latin term meaning “a special kind”.
In intellectual property rights (IPRs), the term refers to
a special form of protection regime outside the known
framework. It can also be viewed as a regime
especially tailored to meet a certain need.
 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).

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Indian Legislative Framework
 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.
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Why is it Sui Gereneris
 Unlike TRIPS, in the GI Act does not restrict itself
to wines and spirits.
 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.
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Important Definitions
 “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.

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Important Definitions
 “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 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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Scope of sec. 2 (1) (e)
 The definition of GI included in Section 2(1)
(e) of the Indian GI Act 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,
as the case may be.
 This provision enables the providing
protection to symbols other than
geographical names, such as ‘Basmati’.

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 What is a Geographical Indication?
Summary
 It is an indication

 It originates from a definite geographical territory.

 It
is used to identify agricultural, natural or
manufactured goods

 The manufactured goods should be produced or

processed or prepared in that territory.

 Itshould have a special quality or reputation or

other characteristics
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Registration
 Registration is not compulsory
◦ Registration affords better legal protection to
facilitate an action for infringement
◦ The registered proprietor and authorised
users can initiate infringement actions
◦ The authorised users can exercise the
exclusive right to use the geographical
indication.

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Goods for which GI can be
Registered
 Agricultural
 Natural
 Goods of Handicrafts
 Industry
 Manufactured goods
 Food Stuffs
- Section (2) (1) (f) of G.I. Act 1999.

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Who Can apply for Registration
 Any association of persons or producers
or any organization or authority
established by or under law representing
the interest of Producers.

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Who can apply
 An application for the registration as an authorised
user of the registered geographical indication shall be
made by a producer and jointly by the registered
proprietor of the
 ‘Producer’, means, --
 any person who produces the goods in case
agricultural goods, and includes the person who
processes or packages such goods;
 any person who exploits the goods in case of natural
goods,
 any person who makes or manufactures the
handicraft or industrial goods ,
 any person who trades or deals in such production,
exploitation, making or manufacturing of the goods.
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Benefits of GI Authorised User
Registration
 GI registration provides the authorized user the
exclusive right to use the registered GI on the
specified goods.
 The Authorised users can initiate infringement
actions.
 With the protection assured by GI registration,
the market is developed, pirates and
counterfeiters cannot encroach that market.
 Consumers are guaranteed of the genuineness of
the product and of quality assurance.
 Promotes Brand building.

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Rights conferred by registration
 GI registration provides the registered
proprietor and the authorized user the
exclusive right to protect the registered
GI on the specified goods.

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Infringement of Registered
Geographical Indications
 A registered geographical indication is
infringed by a person who, not being an
authorised user thereof 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.

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WHEN IS A REGISTERED GEOGRAPHICAL
INDICATION SAID TO BE INFRINGED?

 When an unauthorized user uses a geographical indication

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 mislead the public as to the
geographical origin of such goods.

 When the use of geographical indication result in an unfair

competition including passing off in respect of registered
geographical indication.

 When the use of another geographical indication results in

false representation to the public that goods originate in a
territory in respect of which a registered geographical
indication relates.

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 Who can initiate an infringement
action?

 The registered proprietor or authorized

users of a registered geographical
indication can initiate an infringement
action.

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Rights of Action Against Passing-Off
 The GI Act in India specifies that 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.
 In its simplest form, the principle of passing-off states
that no one is entitled to pass-off his/her goods as
those of another.
 The principal purpose of an action against passing off
is therefore, to protect the name, reputation and
goodwill of traders or producers against any unfair
attempt to free ride on them.
 Though, India, like many other common law countries,
does not have a statute specifically dealing with unfair
competition, most of such acts of unfair competition
can be prevented by way of action against passing-off.

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Article 24.3 of TRIPS
 In implementing the TRIPS provisions on GIs, a
Member is not required to diminish the
protection of GIs that existed in that Member
immediately prior to the date of entry.
 This flexibility has been utilized by India in the GI
Act (Section 20(2) in maintaining the right of
action against passing-off, which has been a part
of the common law tradition of India, even prior
to the advent of the TRIPS Agreement.
 Any lawsuit relating to infringement of a
registered GI or for passing of an unregistered GI
has to be instituted in a district court having
jurisdiction to try the suit.
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 Darjeeling Tea
 Piochampalli Ikkat

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Tirupati Laddu : Is GI tag
Appropriate?
 (Tirumala-Tirupati Devasthanams or
TTD)
 Violation of Section 11(1) read with Rules
32(5) and 32(6)(a)&(f)
 Violation of Sections 9(a) and (d) as the
registration it is likely to deceive
consumers

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Tea Board v. ITC Ltd, , 2011(48)
PTC 169(Cal)
 Grant of Interlocutory Injunction - Trade Marks Act, 1999 -
Geographical Indications of Goods (Registration and Protection)
Act, 1999 ([Link]) –
 Single Judge rejected Application for interlocutory injunction in Suit
by which Plaintiff/Appellant prayed for restraining Defendant from
using or conducting or marketing in any manner or in any way
carrying on its business at hotel by using in any manner whatsoever
name "DARJEELING LOUNGE" or any other name or mark or
word which was phonetically or structurally similar or identical or
deceptively similar to registered geographical indications –
 Whether, Single Judge was justified in refusing prayer of interim
relief in favour of Plaintiff/Appellant during pendency of Suit - Held,
protection given in respect of certification trademarks related to
any goods or services in respect of which it was registered and
Plaintiff had not registered its name as holder of mark
DARJEELING in respect of hotel business but for purpose of
certification of tea as one grown in Darjeeling district where
benefit of Sections 28 and 29 of Act was not available –

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Cont.
 Therefore, Plaintiff had prima facie failed to prove
that there was any violation of registered certification
trademark at instance of Defendant in terms of
Section 75 of Act or under G.I. Act - Consequently,
once it was held that Plaintiff had failed to establish
prima facie case, other two essential requirements for
grant of temporary injunction became insignificant -
Additionally, it was never intention of Defendant to
pass off right of certification conferred in favour of
Plaintiff as its own right by naming one of its lounges
as DARJEELING LOUNGE so, even in respect of
allegation of passing off, no prima facie case was
established - Hence, Single Judge rightly refused
prayer for interim order and there was reason to
arrive at different conclusion than one arrived at by
Single Judge - Appeal dismissed.

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 The Calcutta High Court framed issues in November 2016,
before full judgment on February 4, 2019.
 First, it finds that the claim is barred by a limitation
prohibition contained in Section 26(4) of The Geographical
Indications of Goods (Registration and Protection) Act, 1999
(‘the GI Act’).
 Second, the Claimant’s registration, as a certification trade
mark registration under The Trade and Merchandise Marks
Act, 1958, is limited to ‘goods’, and is ineffective against the
Defendant here, whose business is in services.
 Third, even failing the first two findings, the certification and
GI registrations only protect the Claimant against a narrow
class of infringements, and the Defendant’s actions do not
infringe these rights.

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 Section 26(4) of the GI Act, to the extent it
applies here, states that a Claimant loses to
limitation:
 the right to file a claim against the use or
registration of a trade mark (the Defendant’s
‘Darjeeling Lounge’)
 which infringes a registered GI (the
Claimant’s ‘Darjeeling Tea’),
 if more than five years elapse between:
◦ the date from which the alleged infringement has
become known to the GI Claimant and
◦ the institution of the claim for infringement.
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The Scotch Whisky Association, vs
Golden Bottling Limited
 Settlement

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Few points of Consideration…
 1. GIs have no exclusive character with regard to production.
Anyone outside the designated area can still produce and sell
the goods just under another name.
 2. In addition to the marketing costs associated with
promoting the GI product there may be production costs
associated with ensuring the existence of the quality
attributes that consumers associate with the GI. These extra
costs will have to be subtracted from the premium to
determine the net contribution of GIs to profits. Existing
empirical literature is almost silent on this issue.
 3. Another issue about GIs is the ‘trickle down effect’ of
benefits. The price benefits need to be filtered through the
product value chain and reach the producers who sit at the
bottom end of the value chain. Institutions have to play a big
role in order to ensure realization of potential benefits of
GIs. Empirical evidence on this aspect is also scarce.

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Few points of Consideration…
 4. Actual realization of the potential benefits ingrained in the registered
would require effective management in future. This would entail sustained
efforts backed by appropriate planning and adequate investments over the
medium to long term. Accordingly, strategic interventions by public or
quasi-public institutions are an essential prerequisite for the GIs initiatives
in India to succeed but this is not well defined.
 5. Most of the Indian GIs are linked to traditional knowledge, culture and
lives of the communities. So, India has a considerable scope for building the
brand image of such exotic products by highlighting the cultural aspects
historical stories, legends and myths associated with them And also has a
considerable potential to develop ‘cultural tourism’ around its traditional
products by drawing focused attention on the cultural aspects associated
with them, particularly among foreign tourists there is not any specific
policy about it.
 6. There is an urgent need to improve the inter-departmental linkages and
coordination to avoid duplication of efforts and optimize returns. Such a
coordinated approach could immensely facilitate the process of exploiting
the commercial and socio-economic potential of GIs in the India and
simultaneously help in securing various spill-over benefits from this
collective IPR. And at the multilateral level, it is extremely important for
India to weigh the costs and benefits of GI protection in general and the
extension of Article 23, in particular on the basis of rigorous empirical
research.

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