Geographical Indications and Registration in India

Introduction to Geographical Indications

- Geographical Indications, or GIs, are a distinct form of intellectual property rights that protect goods having a specific geographical origin.

- Such goods derive their quality, reputation, or other essential characteristics from their place of origin, natural factors, or human skill.

- The protection of GIs aims at preserving traditional knowledge, cultural heritage, and regional identity.

- Examples include Darjeeling Tea, Basmati Rice, Banarasi Sarees, Kanchipuram Silk, and Mysore Sandalwood.

Definition under the GI Act, 199

- Section 2(1)(e) of the Geographical Indications of Goods (Registration and Protection) Act, 19 defines GI.

- It means an indication which identifies goods as agricultural, natural or manufactured goods originating from a specific territory, region or locality.

- The goods must possess a given quality, reputation or other characteristic essentially attributable to their geographical origin.

- The definition also includes manufactured goods where at least one of the production, processing or preparation takes place in the region.

Importance and Objectives of GI Protection

- The protection of GI promotes rural development by ensuring better remuneration to local producers.

- It prevents misuse and unfair competition through false representation of geographical origin.

- It protects consumers by guaranteeing authenticity and quality of products.

- GI protection enhances exports and strengthens India's position in global trade.

- It also contributes to preservation of biodiversity, environment and cultural heritage.

Legal Framework in India

- The Geographical Indications of Goods (Registration and Protection) Act, 1999 provides a sui generis system for GI protection in India.

- The Act was enacted to comply with the trips Agreement under the W.T.O, especially Articles 22 to 24.

- The Geographical Indications of Goods (Registration and Protection) Rules, 2002 prescribe the procedure.

- The Act came into force in 2003 and established the GI Registry at Chennai.

Who Can Apply for Registration (Section 11)

- Under Section 11 of the GI Act, any association of persons, producers, organisation, or authority established by law may apply.

- The applicant must represent the interest of the producers of the concerned goods.

- Individual traders or dealers cannot apply for GI registration.

- The objective is to ensure collective ownership and community-based protection.

Prohibition of Registration (Section 9)

- Section 9 lays down absolute grounds for refusal of registration.

- Geographical indications which are likely to deceive or cause confusion are not registrable.

- Indications which are contrary to law, morality or public order are prohibited.

- Generic names or indications which have become common in trade cannot be registered.

- False or misleading geographical indications are barred.

Section 9 mandates the prohibition of registration of certain geographical indications.

- A geographical indication shall not be registered if its use is likely to deceive or cause confusion.

- Registration is prohibited if the use would be contrary to any law for the time being in force.

- It cannot be registered if it comprises or contains scandalous or obscene matter.

- It is prohibited if it comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.

- It cannot be registered if it would otherwise be disentitled to protection in a court.

- It cannot be registered if it is determined to be a generic name or indication that has ceased to be protected or fallen into disuse in its country of origin.

- Registration is barred if it falsely represents to persons that the goods originate in another territory, region or locality, even if it is literally true as to the actual territory where the goods originate.

- Under Explanation 1, generic names or indications mean names that have lost their original meaning and become the common name of such goods, serving merely as a designation for the kind, nature, type, or characteristics.

- Under Explanation 2, determining whether a name has become generic requires taking into account all factors including the existing situation in the region of origin and the area of consumption.

Procedure for Registration

- The process begins with filing an application before the Registrar under Section 11.

- The application is examined under Sections 12 and 13 to verify compliance with statutory requirements.

- Objections, if any, are communicated and the applicant may respond.

- Upon acceptance, the application is advertised in the GI Journal under Section 13.

- Opposition may be filed within the prescribed period under Section 14.

- If no opposition or successful defence, the GI is registered.

Application for Registration

- Section 11 states that an application for registration can be submitted in writing by any association of persons, producers, or any organization or authority representing the interest of the producers.

- The application must contain a statement detailing how the indication designates the goods, the class of goods, a geographical map of the territory, the particulars of its appearance, and the details of the producers.

- A single application can be filed for different classes of goods, provided fees are paid for each specific class.

- The application must be filed with the office of the Geographical Indications Registry within whose territorial limits the geographical origin is situated.

- The Registrar holds the power to examine every application and may refuse it or accept it absolutely or subject to amendments, modifications, conditions, or limitations.

- In case of refusal or conditional acceptance, the Registrar must record the grounds for the decision in writing.

Withdrawal of Acceptance: Section 12 empowers the Registrar to withdraw the acceptance of an application before its final registration if it was accepted in error or if circumstances dictate it should not be registered.

Before withdrawing the acceptance under Section 12, the Registrar must provide a reasonable opportunity of being heard to the applicant if they so desire.

Advertisement and Opposition: Section 13 requires the Registrar to cause the accepted application, along with any conditions or limitations, to be advertised in the prescribed manner as soon as possible after acceptance.

- If errors are corrected or the application is amended after the advertisement, the Registrar may cause the application to be advertised again.

- Section 14 allows any person to give a written notice of opposition to the registration within three months from the date of advertisement or readvertisement, which is extendable by up to one month.

- The Registrar must serve a copy of the opposition notice to the applicant, who must then submit a counter-statement within two months from its receipt.

- If the applicant fails to send the counter-statement within the two-month period, they will be deemed to have abandoned their application.

- Once the counter-statement is received, the Registrar will serve a copy to the opponent, permit both sides to submit evidence via affidavits, and give them an opportunity to be heard before deciding the matter.

Rights Conferred (Sections 21 and 2)

- Section 21 provides that the registered proprietor and authorised users have the right to use the GI.

- Section 2 defines infringement and prohibits unauthorized use.

- They can prevent misleading use, unfair competition and false representation.

- The right also includes civil remedies such as injunction, damages and accounts of profits.

Authorised Users (Sections 17 and 18)

- Section 17 allows producers to apply as authorised users.

- Section 18 provides that authorised users have exclusive rights to use the GI.

- They can independently institute infringement proceedings.

- This decentralised enforcement strengthens protection.

Infringement and Passing Off

- Section 22 elaborates on infringement, including deceptive similarity and misrepresentation.

- Even if the true origin is indicated, misleading use may amount to infringement.

- Passing off under common law is preserved under Section 20.

- Courts analyse the likelihood of confusion, consumer perception, and unfair advantage.

Civil and Criminal Remedies

- Civil remedies include injunction, damages, accounts and delivery of infringing goods.

- Sections 37 to 39 provide criminal penalties for falsification.

- Punishment includes imprisonment and fine.

- The Act ensures both preventive and punitive measures.

Tea Board of India v. I.T.C Limited, 201 (Calcutta High Court)

- The Tea Board of India, the registered proprietor of Darjeeling Tea GI, challenged I.T.C Limited's use of 'Darjeeling Lounge' for hotel services.

- The issue was whether the use of the term Darjeeling for services diluted or infringed the registered GI.

- The Court held that GI protection is product-specific and there was no consumer confusion regarding the origin of goods.

- The judgment clarified that contextual and class-based analysis is essential in GI infringement.

The Scotch Whisky Association v. Golden Bottling Limited, 206

- The defendants were accused of falsely representing whisky as Scotch Whisky, misleading consumers.

- The issue concerned locus standi and whether authorised users must be joined.

- The Court held that the registered proprietor alone can maintain the suit.

- The decision strengthened enforcement and recognised independent statutory rights.

The Scotch Whisky Association v. Pravara Sahakar Karkhana Ltd., 2009

- The defendants marketed whisky under deceptive names suggesting Scotch origin.

- The issue was whether such indirect geographical misrepresentation amounts to infringement.

- The Court granted an injunction recognising the reputation and global goodwill of Scotch Whisky.

- The case emphasised protection against unfair advantage and dilution.

Consorzio del Prosciutto di Parma v. asda Stores Ltd., 201

- The dispute involved slicing and packaging Parma Ham outside the designated region.

- The issue was whether GI covers processing and packaging requirements.

- The European Court recognised strict territorial control and authenticity.

- The case demonstrates the importance of quality control and inspection mechanisms.

Champagne Interprofession Committee v. Wine Traders (India)

- The plaintiffs sought protection against misuse of the word Champagne for sparkling wines.

- The Court recognised the international reputation and granted protection.

- The decision shows recognition of foreign GIs under Indian law.

- It emphasises trips compliance and consumer protection.

Cognac Producers v. Brandy Manufacturers (India)

- Foreign producers challenged the use of the term Cognac by Indian manufacturers.

- The courts granted injunctions preventing the misuse of the geographical name.

- The case recognised enhanced protection for wines and spirits.

- It strengthened India's commitment to trips obligations.

Nuziveedu Seeds Limited v. Monsanto Technology L.L.C, 2018 (Analogy)

- Although primarily a patent dispute, the case reflects issues of regional agricultural innovation.

- The Supreme Court recognised farmers' rights and agricultural diversity.

- The case is used academically to compare GI and plant variety protection.

- It shows overlap between I.P regimes affecting agricultural products.

Darjeeling Tea – International Enforcement Actions

- The Tea Board initiated several proceedings in the European Union, U.S.A, and Japan.

- The objective was to prevent misuse of the Darjeeling name.

- Mixed success highlighted limitations of territorial intellectual property rights.

- The case illustrates the importance of international registration and diplomacy.

Basmati Rice Dispute – RiceTec Inc. v. Government of India

- RiceTec obtained patents relating to Basmati characteristics in the U.S.

- India challenged the claims before the U.S.P.T.O.

- Several patent claims were withdrawn or modified.

- The dispute emphasised GI as a trade and foreign policy tool.

Feta Cheese Case  Greece v. Denmark, Germany and France (E.U)

- The issue was whether Feta is a generic name or a protected geographical indication.

- The European Court recognised Feta as a protected geographical indication.

- The judgment established strict criteria for genericness.

- It is important for comparative analysis with Indian law.

Pisco Dispute – Peru v. Chile

- Both countries claimed geographical rights over Pisco.

- The dispute involved bilateral treaties and national geographical indication systems.

- Different jurisdictions recognised different claimants.

- The case highlights geopolitical dimensions of geographical indication protection.

Legal Principles Emerging from GI Case Laws

- Likelihood of confusion and consumer perception remain central in infringement.

- Reputation and goodwill are crucial factors.

- Territoriality and international enforcement challenges persist.

- Courts increasingly recognise unfair advantage and dilution.

- Comparative jurisprudence influences Indian courts.

Conclusion

- The GI Act, 199 provides a comprehensive statutory framework for protection.

- However, effective enforcement and global cooperation are essential.

- GI has the potential to transform India's rural and traditional economy.

- Legal education and awareness are crucial for the future.