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AN OVERVIEW OF GEOGRAPHICAL INDICATIONS FOR INDIAN GOODS
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Article Details
AN
OVERVIEW OF GEOGRAPHICAL INDICATIONS FOR INDIAN GOODS
AUTHORED
BY - RASHI MAKHIJA
ABSTRACT
This article will highlight the
concept of Geographical Indications relating to goods, where the products owe
their characteristics to that particular area with the aim to sustain the
reputation of such products commercially. It will also underline the history of
GI in India as well the benefits. This paper will emphasize on how Indian
producers can apply for the registration of Geographical Indications in India
and what reliefs are available to them when any other person uses the
registered or unregistered Geographical Indications. This article is also
accompanied by few Indian case laws.
INTRODUCTION
India being one of the world’s
ancient surviving civilisations, observes a varied perception of land and
history. During 15th century, the famous Indian Silk and Spices
attracted many tourists including Christopher Columbus, Vasco Da Gama, and
various other Englishmen who were searching to trade. After salt, the largest
business in the world among spices is still Back Pepper. This black gold was so
expensive in ancient times that it was used in exchange of other goods in
trade. When a trader named, Vasco Da Gama travelled from Portugal to India in
15th century, he quietly took Black Peppers in exchange of
Jewellery. That is why in 16th century, after knowing the value of
this black gold, the Englishmen captured Indian Pepper Trade.
The making of Indian handicrafts and
silk were also globally renowned which represented the fame of our country due
to which India enjoyed 25% share of global trade in textiles before India's
deindustrialisation by East India Company. This began during early 18th
century when the entire cotton textile industry was consumed by the Britain's
Industrial Revolution. The advent of the British decimated the Indian silk and
cotton manufacturing industries which started when British colonial traders
took power and stopped paying for textiles. Since time immemorial, India wished
for a law which prohibits any third person to use such products which has a
good reputation due to its place of origin.
Many products during medieval period
like muslin from Dhaka, clay pot from China or rubber from India have achieved
reputation and fame due to its place of origin as it is still play a vital role
of conserving cultural identities. But the western concept of Intellectual
Property Rights of creating restrictive monopoly is quite different from Indian
belief where vidya (knowledge) has
always in public domain. Over the centuries, old traditions were replaced to
new ones as we entered the globalized world where goods and services began to
circular around the world.
So if a product which is specific to
that locality or region; those names which are associated with a particular
geographical area, or products which came out of a geographical area due to its
distinctive characteristics is set to be described as a form of Intellectual Property
under the title “Geographical Indications” as it gives recognition to the
producers who produces specific authentic products as a brand that come out of
a particular area for example Malabar Pepper, Kanchipuram Silk, Kangra Tea,
Phulkari, Nagpur Orange, Banarasi Saree, etc.
Therefore, the legal concept of
Geographical Indications as form of Intellectual Property is quintessential in
the modern day world.
DEFINITION
OF GEOGRAPHICAL INDICATIONS (GI) OF GOODS
The term “Geographical Indications”
has two words where “Geographical” means “relating to the geography of a
particular area or place"[1]
and “Indications” means “a logo, name or a symbol geographical or figurative
representation or any combination of them conveying and suggesting the
geographical origin of goods to which it applies".[2]So,
it is a name or sign which also represents the place, locality or country where
the goods are produced. The distinct characteristics or qualities of producing
the goods through traditional methods or artisanal factors becomes famous that
any reference which is attributable to its place of origin becomes so famous
that our mind reminds of that good originated in that specific geographical
area. Therefore, a name, logo or a symbol will be considered as GI, if the goods
are linked with a specific region which further gives reputation to that
particular goods originating from that area, place or locality. For example
Kashmiri Pashmina is made from high quality wool produced by the Himalayan
Goats.
Geographical Indications as a form of
an Intellectual Property is defined under Article 22 (1) of TRIPS Agreement as
“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]
Geographical
Indications is protected through various approaches which are different due to
different cultural, historical and traditional conditions of various countries,
which are as follows:
1.
Sui generis
(a special kind) systems which is a special form of protection regime outside
the known framework;
2.
Using collective and certification
marks;
3.
Methods focusing on business
practices including administrative product approval scheme.
Therefore, a registered geographical
indication prohibits any third person from unauthorized use of such
Geographical Indications which conveys or suggests the geographical origin of
goods by initiating infringement actions which is available in both civil and
criminal ways. Passing off action is also available for unregistered GI against
the infringer, but the burden of onus is on heavier side as compared to the GI
which is registered. The rights relating to Geographical Indications are
community rights as geographical Indications are not built by individuals but
by a community of persons or organization.
The act also defines the term
“goods" as “any agricultural, natural or manufactured goods or any
goods of handicrafts or of industry and includes foodstuff.”[4]Therefore,
Geographical Indications are primarily applicable to natural goods, agriculture
goods, manufactured goods, clothing, wines, spirits, handlooms and handicrafts
which are originated from a specific geographical area.
CHARACTERISTICS
OF GEOGRAPHICAL INDICATIONS
We
live in a globalized economy where goods are circulated all around the world.
Thus, GI makes branding possible in the global market where the producers can
promote such products commercially which preserves their local culture,
traditions and historical heritage. Here are some characteristics of GI which
are as follows:
1.
An indication/ sign/ symbol
Geographical
Indications links a product to a particular area which indicates quality, reputation
and characteristics associated with the place of origin of such goods, example
being the Darjeeling Tea and Lucknow Chicken.
2.
Arises from specific geographical
area
It
originates from a definite geographical territory which conveys the characteristics
of the region. For example, the tea from Assam or a peda of Mathura.
3.
Identify agricultural, natural and
manufactured goods with special characteristics
It
conveys special characteristics of human efforts, culture, history, traditions
or climate which are inherent due to its territory.
4.
Production and manufacturing skills
associated with the place of origin
It
implies skills associated with the place of origin like in the case of Odisha
Pattachitra wherein the traditional painting is made with charcoal and tamarind
seeds on a cotton cloth.
5.
Special quality and reputation
The
good should have special or a unique characteristic and should not resemble any
other geographical indication. Thus, it should have a special quality or
reputation.
BENEFITS
OF GEOGRAPHICAL INDICATIONS
It
plays a vital role in protecting the interest of producers, registered
proprietor or authorized user of such goods by excluding unauthorized persons
from misusing the GI and also promotes traditional and cultural products
commercially in the global market by strengthening the domestic market. It also
protects the interest of consumers from deception. Therefore, GI is considered to
be of extreme importance in India as-
1.
It provides legal protection to
geographical indications for a specific region, territory or country;
2.
It prevents unauthorized use of
Registered GI by any other persons;
3.
It symbolizes the quality of the
goods;
4.
It promotes social and economic
prosperity/ wealth (in rural areas) by generating jobs in the region as
well as promoting the region as a whole;
5.
It helps in boosting tourism especially
in developing countries;
6.
It helps in boosting GDP rate
through exports of popular products by strengthening domestic market;
7.
It saves the Traditional
Knowledge, craftsmanship and Traditional Cultural Expression/ Heritage which
are carried on from generations to generations by a community in a specific
region;
8.
It preserves the environment through
commercial value.
INTERNATIONAL
LEGAL FRAMEWORK OF GEOGRAPHICAL INDICATIONS
The legal framework of Geographical Indications as a
form of Intellectual Property has entered India as a western concept which can
be traced back to the 18th century when trademark and trade names
began to appear for the protection under the Paris Convention for the
Protection of Industrial Rights, 1883.
1. Paris Convention for the Protection
of Industrial Property, 1883 (False Indications)
The Paris Convention was the first multilateral
agreement which provided for the protection of industrial property like patent,
trademark, trade names, utility models, service marks, indications of source or
appellations of origin and repression of unfair competition.[5]But the Paris Convention has
not used the term “Geographical Indications”. However, it is used
interchangeably with the terms “Indications
of Source” and “Appellations of Origin" but both “indications of source" and
“appellations of origin” are also not defined under the convention. So, in
simpler sense, the “indications of source” is “an indication referring to a
country or place as being the country or place of origin of a product”[6] but “it does not imply the
presence of any special quality, reputation and characteristic of the product
essentially attributable to its place of origin.”[7]
The definition of “Indications of Source” is
thoroughly defined in Madrid Agreement, 1891[8] and the term “Appellations
of Origin” is a special kind of GI which is thoroughly defined in Lisbon
Agreement 1958 which is discussed further.[9]
The convention also prohibits “all acts of such
nature as to create confusion by any means, any false allegations in the course of trade which is liable to mislead the public as to the
nature, manufacturing process, characteristics, suitability for their purpose
or the quality of the goods.”[10]Therefore, it directly or
indirectly prohibits the use of a false indication of the source of the goods.
It also states that any goods which bear a false
indication of source must be subject to seizure of such goods at the request of
any interested party, public prosecutor or a competent authority.[11]
2. Madrid Agreement (Agreement for the
Repression of False or Deceptive Indications of Source of Goods) 1891 (False and
deceptive indication)
Both Paris and Madrid Agreement have not used the
term “Geographical Indications” but Madrid Agreement has asserted the
shortcomings of the Paris Convention by providing terms such as “false"
and "deceptive” indications of source.
The term “Indications of Source” is
defined in the agreement as “all goods bearing a false or deceptive
indication by which one of the countries to which this Agreement applies, or a
place situated therein, is directly or indirectly indicated as being the
country or place of origin shall be seized on importation into any of the said
countries.[12]
According to the agreement, if a good directly or
indirectly bears a false or deceptive indication of source, then those goods
shall be seized, prohibited and sanctioned for the misuse by unauthorized
persons.[13]
It also prohibits the use of false and deceptive
representations, advertising of the product or any other form of public
announcements.[14]
The Madrid Agreement is not part of TRIPS unlike
Paris Convention.
3. Lisbon Agreement for the Protection
of Appellations of Origin and their International Registration, 1958
(definition of Appellation of Origin)
The Lisbon Agreement provides an international
system of protection for the Appellations of Origin which are already protected
under the national law of contracting state of this agreement. It takes the
scope of protection of ‘indications of source’ and ‘appellations of origin’
beyond the protection provided under Paris and Madrid Agreement as it not only includes
the prohibition of misleading use of protected appellations of origin but “any
usurpation or imitation of protected appellations of origin, even if the true
origin of the product is indicated or if the appellation is used in translated
form or accompanied by terms such as “kind”, “type", “make",
“imitation" or the "like."[15] Therefore, it also
prohibits the member countries to use those appellations which have become
generic in other members countries.
This agreement has still not used the term “Geographical
Indications" but it was the first agreement to define the term
“Appellations of Origin”. If the GI is registered (in an international register
administered by WIPO) under this Lisbon Agreement, then the appellation of
origin (which is used interchangeably with Geographical Indications) is
protected in other member countries which are part of this agreement.[16]India is not part of this
agreement.
Article 2(1) of the Lisbon Agreement has defined the term ‘Appellations of Origin’ as “the
geographical name of a country, region or locality, which serves to designate a
product originating therein, the quality and characteristics of which are due
exclusively or essentially to the geographical environment, including natural
and human factors.” Therefore, Appellations of Origin is a special kind of
Geographical Indications in which the quality and characteristics of such
appellations of origin should be essentially linked to geographical
environment.[17]
4. The Draft Treaty on the Protection of
Geographical Indications, 1975 (draft treaty not in force but prohibits the use
of denominations, expression or sign which contains false or deceptive GI)
In 1974, the International Bureau of World
Intellectual Property Organization prepared a new draft of multilateral treaty
for the protection of indications of source and appellations of origin which
adopted a new definition of geographical indications for the purposes of-
1. Prohibition of use of denominations, expression or
signs which constitute or directly or indirectly contain false or deceptive
geographical indications as to the source of the products.
2. System of international registration of Geographical
Indications by fulfilling the following conditions-
a. The geographical indication consists of the official
or usual name of the filing State or the name of a major circumscription of a
State or of a denomination which serves to indicate the source of product;
b. The indication is declared by the filing State to be
a reference to itself as the State of origin;
c. The indication which is used in the course of trade
in relation to products originating in the State and the said State certifies
such use.
Later, the work on draft treaty is discontinued
because in late 1970s the preparation began to revise the Paris Agreement
relating to geographical indications.
5. TRIPS Agreement 1994 (first
international agreement to protect Geographical Indications and to enforce its
application)
Agreement on Trade- Related Aspects of Intellectual
Property Rights is the first international legal agreement between all the
members’ states of the WTO which sets down the minimum standards for the
regulation by national governments of many forms of Intellectual Property
(including geographical indications) as applied to nationals of other WTO
member states. It was negotiated in year 1994 at the end of the Uruguay Round
of General Agreement on Trade and Tariffs (GATT) and it till date it remains
the most essential international instrument on Geographical Indications. India
is a member country of WTO agreement on TRIPS since 1995.
Article 22(1) of the agreement defines the term
“Geographical Indications” as “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.”[18]
The three
basic functions on the member states
by WTO relating to Geographical Indications is in Section 3 of the TRIPS agreement, which are follows-
It prevents misleading the public as to the
geographical indication of the good.
It prevents the use of geographical indication by
identifying wines or spirits not originating in the true place of origin of
goods or where terms such as “kinds", "type", “style", or
“imitation" have been used as a
transaction or by expression.[21]Section 22(2) of the Geographical Indications Act, 1999 in compliance with the TRIPS Agreement also provide
for a higher level of protection for certain goods or classes of goods which
are notified in the Official Gazette by the Central Government.
It also allows for the registration of those wines
and spirits which do not have the stated origin.[22]Thus, Article 23 of the agreement is a mandatory protection irrespective of whether
the consumer is mislead or whether such use of indication has led to the act of
unfair competition.
It provides with the basic level of exceptions to
protect the geographical indications which member countries are free to
implement in their own way than is required by TRIPS, but such prohibitions
must not contradict with the provisions of TRIPS Agreement.
GEOGRAPHICAL
INDICATIONS IN INDIA: FACTS
In
India, the laws to protect and provide registration of Geographical Indications
relating to goods are “Geographical Indications of Goods (Registration and
Protection) Act, 1999” and “Geographical Indications of Goods (Registration and
Protection) Rules, 2002”. India as a member of World Trade Organization enacted
the Geographical Indications Act, 1999 to comply with TRIPS, which received
assent of the President of India through publication in the Gazette of India on
30th December 1999 and came into force on 15th September
2003. Therefore, a GI Tag is given to the registered Geographical Indications
which provides protection against the infringer from unauthorized use of famous
goods.
The
central government has established the Geographical Indications Registry[24]which
is situated in Chennai and the act is administered under the Controller General
of Patents, Designs and Trade Marks who is also the Registrar of Geographical
Indications[25]
relating to goods. The Registrar may classify the goods in accordance with the
International classification of goods for the purposes of registration of
Geographical Indications.[26]
·
Darjeeling Tea was the first product
which was registered in India as Geographical Indication in 2004 and the first
Foreign GI Tag was granted in India is Peruvian Pisco- Peru in year 2009.
·
Karnataka has the highest number of
GI Tags and India has the highest number of registered handicraft products
which is highest in the state of Tamil Nadu.
·
There are exclusively owned GI stores
in India where anyone can buy the assorted mix of GI Tagged products, but the
first store was GI store was established in Goa at Goa Airport.
·
The official symbol for Geographical
Indications in India was announced on August 1, 2018 with the title “Invaluable
Treasures of Incredible India”.
·
Any association of persons, producers,
organizations or authority established by or under law can apply for the
registration of geographical indication.[27]Any
person who claims to be the producer of registered geographical indication can
apply for registration as an authorized user which should be in writing and
with a prescribed fee.[28]Therefore,
a registered proprietor or authorized users have exclusive right to use
registered geographical indication relating to goods.
PROCESS
FOR REGISTRATION OF GEOGRAPHICAL INDICATIONS IN INDIA
Registration
of Geographical Indications gives exclusive rights to use in respect of
geographical indication, prohibits any third persons from misusing or deceiving
consumers and also to promote the popular famous products bearing the GI tag in
the Indian as well as in the global markets. The eight-step guide to register
the geographical indications before the Registrar of Geographical Indications
under the act as follows:
1.
Filing Application
Section
11 of the Act provides for the filing of single application
where any association of persons, producers, organizations or authority
established by law can represent the interest of the producers of the goods
with the affidavit before the appropriate office of Geographical Indications
Registry as to how the claim of the applicant represent their respective
interests.
The
applicant must file the application stating the details of Geographical
Indication with the prescribed fee and also must assert in writing to the
Controller about the class of goods to which the geographical indication may
apply. The producer in the applicant should describe the special features,
reputation or characteristics of such GI and how those standards are
maintained.
The
applicant must also have three certified copies of GI (GI-9) related to field
map which shall be examined by the Registrar of the Geographical Indications.
The applicant must include the description of the inspection structure if there
is an area regulating the use of Geographical Indications.
2.
Preliminary scrutiny and examination
The
application will be checked by the examiner for any deficiencies. Therefore,
the applicant is required to remove the deficiency or to take measures within
one month from the date of receipt of the communication.
3.
Show cause notice
If
the Registrar is not satisfied with the application due to a defect in the
application, he shall raise objections and applicant must reply within two
months or may be given opportunity to be heard where the decision will be duly
communicated.
If
the applicant wishes to appeal before the Intellectual Property Rights
Appellate Board (IPAB), he can file the same within one month from the date of
receipt of such order.
4.
Publication in Journal of
Geographical Indication (Section 13 of the Act)
If
the application is accepted by the GI Registrar then the application within
three months of acceptance, shall be published in the Journal of Geographical
Indications.
5.
Opposition (Section 14 of the Act)
After
the advertisement, any person can raise an objection or oppose the GI
application, published in the journal, within three months from the date of
publication in the Journal or from the date of advertisement/ re-advertisement
of application, which can be extended upto one month if the objector has
sufficient cause to it.
The
Registrar of GI will provide a copy of notice to the applicant and within two
months, the applicant has to file or send the reply/ counter statement to the
GI Registrar. If the applicant does not file the reply within the specified
period of time, then the GI Registrar believes that the applicant has abandoned
the application.
Where
the reply/ counter statement have been filed, the GI Registrar will consider
the reply and will serve of copy fixing the date of hearing. Therefore, both
the parties i.e. the applicants and the objectors, will lead their evidence
through affidavits and supporting documents. After this, a hearing will be
fixed and the matter will be decided by the GI Registrar to approve or refuse
the GI.
6.
Registration of Application (Section
16 of the Act)
Where
an application of Geographical Indication has been accepted, the Registrar will
register the GI and issue the certificate to the applicant which will be valid
for ten years from the date of application.
7.
Refusal decision by GI Registrar
If
the GI Registrar refuses to grant registration of application, the Registrar
justifies the reason or grounds as to why it was refused. However, the
applicant can appeal to IPAB (Intellectual Property Appellate Board) within
three months against the refusal decision by GI Registrar.
8.
Renewal
A
registered Geographical Indication needs to be renewed every ten years.
DURATION
OF GEOGRAPHICAL INDICATIONS
IN
INDIA
A
registered GI is protected for duration of ten years from the date of filing
which is renewable for every ten years as long as it is still in use.[29]
PROHIBITIONS
ON GEOGRAPHICAL INDICATIONS
The
following Geographical Indications relating to goods are prohibited or which
cannot be registered-
1.
The use of GI is likely to deceive or cause
confusion in public domain or when the person uses a similar/
identical GI;[30]
2.
The use of GI is contrary to any
law;[31]
3.
Which contains any scandalous or
obscene matter;[32]
4.
When it may hurt religious feeling
of any person;[33]
5.
The use of Geographical Indication
would otherwise be disentitled to protection in a court;[34]
6.
Which are determined to be generic
names (a name which has become so common);[35]
7.
Which falsely represent to the
persons that the goods originated in a other territory, region or locality.[36]
INFRINGEMENT
AND PASSING OFF
The
act states that any geographical indication whether registered or not can be
initiated before the district court[37]where
both civil and criminal reliefs are provided to the registered proprietor/
user.
Section
22 of the Act provides for infringement of registered
geographical indications. It is infringed by any third person who not a
registered proprietor or unauthorized user which is as follows:
1.
To mislead/ confuse the public at
large as to the geographical origin of such goods by using a similar/
identical GI.
2.
To use any GI in order to gain unfair
advantage in the course of trade.
3.
When the infringer uses the GI by falsely
representing as a registered GI as if his product originates in such
territory, region or locality in respect of which such geographical indication
relates.
According
to the Act, there will be no infringement when “the goods in respect
of which the geographical indication has been registered are unlawfully
acquired by a person other than the authorized user of such GI, further dealing
in those goods by such person including processing or packaging does not
constitute an infringement of such GI, except where the condition of goods is
impaired after they have been put in the market.”[38]
Section
20(1) of the Act asserts that “no person shall be
entitled to institute any proceeding to prevent, or to recover damages for, the
infringement of unregistered geographical indication.”[39]
The
registration of Geographical Indication is not compulsory, but a registered
geographical Indication provides for better protection against the unauthorized
use by any third person. A registered proprietor or an authorized user can
initiate infringement action against the unauthorized use of registered GI by
any third person. But if the product is not registered under the act, the
plaintiff can convey the establishment of the goodwill which is attached with
the product by initiating passing off action before the court.[40]
In
the case of Scotch Whiskey Association & Others v. Golden Bottling Ltd.,[41]the
defendant was held liable and restrained from manufacturing and selling “Red
Scotch” whiskey where the plaintiff argued that the word “Scot” or
“Scotch" is a GI whiskey which is produced in Scotland.
CIVIL
AND CRIMINAL REMEDIES
Section
67 of the act provides civil remedies in suit for
infringement and passing off, which are as follows:
1.
Injunction or stay against the
unauthorized use of impugned geographical indication;
2.
Permanent/ Perpetual Injunction to
prevent unauthorized use of GI for indefinite period;
3.
Interim/ temporary Injunction under
Order 39, Rule 1 and 2 of CPC, 1908;
4.
Ex-parte Injunction in the absence of
the defendant;
5.
Appointment of Local Commissioner by
the court for sealing, search or seizure of that registered geographical
indication which has been represented in respect of any goods in respect of
which it is not in fact registered;[42]
6.
Damages;
7.
Accounts and handling of the profits.
Section
39 to Section 44 of act provides criminal penalty
which are as follows-
Section
39 of the act provides criminal relief to registered user
against the infringer for applying false geographical indications with the
imprisonment for a term which shall not be less than six months; which may
extend to three years and with a fine which shall not be less than fifty
thousand rupees further extendable upto two lakh rupees.
Section
40 of the act provides criminal relief to registered user
against the infringer for selling goods to which false geographical indication
is applied with the imprisonment for a term not less than six months extendable
upto three years with a fine which shall not be less than fifty thousand
extendable upto fifty thousand.
Section
41 of the act provides enhanced penalty on second or subsequent
conviction with the imprisonment for a term not less than one year extendable
upto three years with a fine not less than one lakh rupees extendable upto two
lakh rupees.
Section
42 of the act provides penalty against the person for falsely
representing a geographical indication as registered by using the words like
“registered” or using other expressions, symbol or sign like “RGI"
referring to registration whether expressly or impliedly with imprisonment for
a term which may extend to three years or with fine or both.
Section
43 of the act provides penalty for improperly describing a
place of business as connected with Geographical Indications Registry with
imprisonment for a term which may extend to two years or with fine or both.
Section
44 of the act provides penalty for falsification entries in the
register by falsely writing or producing the entry with imprisonment for a term
which may extend to two years or with fine or both.
ASSIGNMENT
OF GEOGRAPHICAL INDICATIONS
It
is not a personal property as it represents the region, place or country. So,
it cannot be transferred from one person to another as it is a public cum
personal property. Further it is not a subject of mortgage, assignment,
licensing, or pledge.[43]
However,
in the case of death of the registered owner/ user/ proprietor, it will be
transferred to his legal heirs.[44]
SOME
INDIAN AND INTERNATIONAL EXAMPLES
OF
GI TAGS
Indian
examples of Registered Geographical Indications:
Darjeeling
Tea, Agra Petha, Tirupati Laddus, Basmati Rice, Malabar Pepper, Merrut
Scissors, Mysore Pak, Khurja Pottery, Madhubani Paintings, Chanderi Fabric,
Kashmir Pashmina, Muga Silk, Nagpur Orange, Phulkari, Venkatagiri Saree, Kaipad
Rice.
International
examples of Registered Geographical Indications:
French
Champagne, Scotch Whisky, Swiss Watches, Parmesan from Parma in Italy,
Camembert Cheese, Florida Oranges, Prosciutto Di Parma, Argan Oil, Rooibos Tea,
Penja Pepper.
LANDMARK
CASES RELATED TO GEOGRAPHICAL INDICATIONS
1.
Tea Board of India v. ITC limited[45](Case
study of Darjeeling Tea)
Tea
Board of India is the registered proprietor of the GI Darjeeling Tea.[46]The
defendant i.e. ITC used the GI in the name "Darjeeling Lounge” at the
Hotel in Kolkata.
So,
Tea Board of India went before the court to restrain the defendant from using
the word “Darjeeling” for its lounge. The plaintiff executed his passing off
right and filed the interim application for temporary injunction to prevent the
defendant from using the GI Tag of Darjeeling Tea.
The
plaintiff asserted that the defendant with an ill intentioned used the name
"Darjeeling” for the maximization of profits and for the purpose of
publicity and sale of goods which it sells in such lounge. And this publicity
and sale of goods has lead to unfair competition and dishonest trade practice
which mislead the public.
The
defendant i.e. ITC Ltd. asserted that there is more to Darjeeling than the tea
that is grown there, and such application is not maintainable under Section 26
of the Geographical Indications Act, 1999.
The
court held that-
a.
That the suit by the plaintiff is
barred by the limitation under Section 26(4) as the Darjeeling Lounge started
its business in year 2003 and the plaintiff filed the suit in year 2010.
b.
That the name “Darjeeling Lounge”
used by the defendant is not relating to goods. The act does not provide
protection against the services.
c.
That the allegations made by the
plaintiff are baseless as there no unfair competition between plaintiff's GI
Tag and defendant's hotel of service “Darjeeling Lounge”.
Therefore,
the court stated that the plaintiff has no exclusive right over the term
“Darjeeling” and the case was decided in favour of the defendant as service
does not come under the ambit of the Act.
2.
Case study of Kashmir Pashmina;
Applicant name: Tahafuz, a Registered Society under the Jammu and Kashmir Societies Act (Application number 46)[47]
Kashmir
Pashmina has the highest quality of soft, light and warm cashmere wool which
comes from Himalayan Goats. This type of special breed of goat is available
only at the high altitudes of the Himalayas in Nepal and North India.[48]
Two
applications were filed in 2005 for the Registration of Kashmir Pashmina. First
application was filed by the Craft Development Institute (CDI) which is
established by the Ministry of Textiles, Government of India and Directorate of
Handicrafts, Government of Jammu and Kashmir to register the GI in Class 24.
Second application was filed by the KASHMIR HANDMADE PASHMINA PROMOTION TRUST
(KHPPT) which came into existence in year 2005 with the initiative by Wildlife
Trust of India (WTI) in Classes 23, 24 and 25.
But
the second application which was filed by KHPPT was not accepted as the
application relating to Kashmir Pashmina was prior filed by CDI. Therefore, a
settlement was arrived where CDI brought into existence a registered society in
J&K under the name Tahafuz. Afterwards KHPPT became a member of Tahafuz and
CDI transferred the GI Application to Tahafuz. In order to provide wider
protection, it was agreed that Tahafuz will take steps to include Classes 23,
24 and 25 in that GI application for the registration of GI.
At
last, on September 12, 2008 the GI Tag of Kashmir Pashmina was granted in
favour of Tahafuz relating to goods specified in Classes 23, 24 and 25.
3.
Case study of Basmati Rice
(Application number 145)
Basmati
Rice is an aromatic, premium, long grained and the costliest rice in the world
which is traditionally grown in the Himalayan areas of India and Pakistan. In
1997, when India already became the member of TRIPS but did not have its own
specific law for the registration and protection of the geographical
indications, the United States Patent and Trademark Office granted patent to
Ricetec Inc., a U.S. company which is situated at Texas for “lines and
grains" in the name of “Basmati Chawal". The company claimed the new
variety of hybrid rice namely Texmati, Kasmati and Jasmati have better
characteristics than the original Basmati Rice which is geographical cultivated
in North America.
India
challenged the patents of Ricetec. Inc in the year 2000 by stating that the
Basmati Rice is qualified to be protected under Article 23(1) of the TRIPS
Agreement, but Basmati was not registered as GI in India at that time. Dr.
Vandana Shiva had assisted this case for India as the American Company was
branding Basmati Rice as any ordinary kind of hybrid rice.
4.
Odisha Rasagola (Application number
612) versus Banglar Rasogolla (Application number 533)
Milk
and sweets have always been a vital part of Puja in India which is considered
to be auspicious. Rasogulla being the integral part of Indian deserts has a
long traditional history. Rasogulla of West Bengal travelled from Odisha to
Bengal when brahmin cooks who belonged to Odisha were employed by Bengali
families. Odisha Rasagola is made from softcottage cheese also known as chhena
which is further cooked by caramelizing sugar syrup. This rasagola was used as
an offering to Bhagwan Jagannath.
The
reference of Rasagola is found in the 15th century Odia Ramayana
where the author of Odia Ramayana (who was Balaram Das) used to compose and
sung songs at the Puri Jagannath Temple. Thus, it is claimed that Odisha
Rasagola originated prior to 15th century when these were being
offered at Puri Jagannath Temple.
In
case of Banglar Rasogolla, it was first conceived in year 1860s by Nobin
Chandra Das at his Bagbazar Residence at Kolkata. This rasogolla is sweet,
spongy and white whereas the Odisha Rasagola is very soft, light brown colour
and slightly less sweet desert.
In
2017, GI for Banglar Rasogolla was granted to West Bengal (Application
number 533)[49]
and in 2019, GI for Odisha Rasagola was granted to Odisha.[50]
In
2018, an application for the registration of GI Odisha Rasagola was filed by
the Odisha Small Industries Corporation Ltd., which received GI Tag for the
same by asserting the facts that Odisha Rasagola is a very soft, juicy and
non-chewy in consistency which can swallowed without teeth pressure unlike the
Banglar Rasogolla which is spongy and chewy in consistency.
But
the tussle between the two did not stop as in October 2019; a cancellation of
application was filed against the Odisha Rasagola which is a pending
adjudication. A similar rectification or cancellation of application was filed
against the Banglar Rasogolla which was treated as abandoned on the technical
grounds of delay. Therefore, now both have their respective GI Tags.
CONCLUSION
India
is a developing nation where most of the people are engaged in the
manufacturing and producing such goods which are made in small households
(small scale industries) in a same region which is often times difficult to
organize them into organizations or association of persons. The only solution
for this difficulty is to aware the people (especially in rural areas) about
the GI Tags. So, those goods which are identified on the account of quality,
fame and reputation attributable to their geographical origin can be registered
in respect to that good which protects the name, reputation and goodwill of the
producer against the unauthorized attempt to use them.
Therefore,
the Government of India should create awareness amongst the rural producers of
any goods which preserves the cultural, traditional and historical heritage so
that their product can be exported globally which will further add to the
social economic wealth.
[1]Geographical, Cambridge Dictionary, Retrieved
from https://dictionary.cambridge.org/dictionary/english/geographical
[4]The
Geographical Indications of Goods (Registration and Protection) Act, 1999, s.
2(1) (f).
[5]Paris
Convention for the Protection of Industrial Rights, 1883, art. 1(3).
[6]WIPO, “Frequently Asked
Questions: Geographical Indications”, available at https://www.wipo.int/geo_indications/en/faq_geographicalindications.html.
[8]The
Madrid Agreement for the Repression of False or Deceptive Indications of Source
of Goods Act, 1891, art. 1(1).
[9]The
Lisbon Agreement for the Protection of Appellations of Origin and their
International Registration, 1958, art. 2(1).
[10]Paris
Convention for the Protection of Industrial Rights, 1883, art. 10.
[11]Paris
Convention for the Protection of Industrial Rights, 1883, art. 9.
[12] The Madrid Agreement for the
Repression of False or Deceptive Indications of Source of Goods, 1891, art.
1(1); WIPO, The Madrid Agreement for the Repression of False or
Deceptive Indications of Source, 1891, available at (https://www.wipo.int/edocs/pubdocs/en/wipo_pub_261.pdf).
[13]The
Madrid Agreement for the Repression of False or Deceptive Indications of Source
of Goods, 1891, art. 1(2); Supra.
[14] The Madrid Agreement for the
Repression of False or Deceptive Indications of Source of Goods, 1891, art.
3(b).
[15]Lisbon
Agreement for the Protection of Appellations of Origin and their International
Registration, 1958, art. 3.
[16]Lisbon
Agreement for the Protection of Appellations of Origin and their International
Registration, 1958, art. 1.
[17]Dr. Varun Shukla, “Historical
development of geographical indications law under International arena” 2
International Journal of India 01-04 (2016).
[19]Agreement
on Trade-Related Aspects of Intellectual Property Rights, 1994, art. 22.
[20]Agreement
on Trade-Related Aspects of Intellectual Property Rights, 1994, art. 23.
[21]Agreement
on Trade-Related Aspects of Intellectual Property Rights, 1994, art. 23(1).
[22]Agreement
on Trade-Related Aspects of Intellectual Property Rights, 1994, art. 23(2).
[23]Agreement
on Trade-Related Aspects of Intellectual Property Rights, 1994, art. 24.
[24]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 5.
[25]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 3.
[26]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 8(2).
[27]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 2(1)(n).
[28]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 2(1) (b).
[29]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 18.
[30]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 9(a).
[31]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 9(b).
[32]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 9(c).
[33]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 9(d).
[34]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 9(e).
[35]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 9(f).
[36]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 9(g).
[37]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 66.
[38]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 22(4).
[39]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 20(1).
[40]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 20(2).
[42]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 50.
[43]Geographical
Indications of Goods (Registration and Protection) Act, 1999, s. 24.
[46]GI Application Number 1 & 2,
Application Details, Report on Darjeeling Tea, (http://ipindiaservices.gov.in/GIRPublic/Application/Details/2).
[47]GI
Application Number 46, Application Details, Report on Kashmir Pashmina, (http://ipindiaservices.gov.in/GIRPublic/Application/Details/46).
[48]Sanjiv
Singh “Geographical Indications; A Case Study of Kashmir Pashmina (Shawls)” 1
New Man International Journal of Multidisciplinary Studies 97 (2014).
[49]GI
Application Number 533, Application Details, Report on Banglar Rasogolla, (http://ipindiaservices.gov.in/GIRPublic/Application/Details/533).
[50]GI
Application Number 612, Application Details, Report on Odisha Rasagola, (http://ipindiaservices.gov.in/GIRPublic/Application/Details/612).
Article Information
AN OVERVIEW OF GEOGRAPHICAL INDICATIONS FOR INDIAN GOODS
Authors: RASHI MAKHIJA
- Journal IJLRA
- ISSN 2582-6433
- Published 2023/06/27
- Issue 7
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International Journal for Legal Research and Analysis
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