A study on protection of geographical indication and its international prospectives

SRI MONISHA1
PRIYANKA.J2

Abstract

"Intellectual property" is the platform of creations of the mind. These creations can take
numerous different forms, such as artistic expressions, signs, symbols, names used in the
commerce, designs and in the inventions. Governments also grant creators their right to prevent
others from using their inventions, designs and other creations — and to use that right to
negotiate payment in return for others using them. These are “intellectual property rights”.
They take a number of forms. For example, books, paintings and films come under copyright;
eligible inventions can be patented; brand names and product logos can be registered as
trademarks; and so on. Governments grant creators these rights as an incentive to produce and
spread ideas that will benefit society as a whole. The extent of protection and enforcement of
these rights varied widely around the world; and as intellectual property became more
important in trade, these differences became a source of tension in international economic
relations. New internationally-agreed trade rules for intellectual property rights were seen as a
way to introduce more order and predictability, and to settle disputes more systematically.

Key words: geographical protection, enforcement, intellectual property, rights,GI act.

1
Srimonisha , IIIrd year, BBA.LLB, Saveetha School of law, Saveetha University (chocolava997@gmail.com)

2
J.Priyanka, Assistant Professor of Law, Saveetha School of Law, Saveetha Institute of Medical and Technical
Sciences (priyankak.ssl@saveetha.com)
Introduction

In the recent years, Geographical Indications (GI) have bloom into a significant form of
Intellectual Property Rights (IPR) issue in India. GI helps a lot community producers to make
their products unique from other competing products in market and build a goodwill that n the
eyes of public around their products, often winning a premium price. From the consumer’s
point of view, GIs act as a channeling device, which may help them identify the genuine
quality-products and also protect their products against counterfeits. In view of the commercial
potential, adequate legal protection of GIs has become significant to prevent the product
misappropriation. Even though India has had in its possession a good number of products that
can actually qualify for legal protection as geographical designators, the initiatives to exploit
the product potential begun very recently when the country adopted a sui generis system of GI
protection with the enactment of ‘the Geographical Indications of Goods (Registration and
Protection) Act, 1999, along with ‘Geographical Indications of Goods (Registration and
Protection) Rules, 2002. This Act, became operational with effect from 15 September 2003,
and was drafted as a part of the exercise in the country to put in place and prioritise national
IPR laws much in compliance with India’s obligations to the Agreement on Trade Related
Aspects of Intellectual Property Rights (TRIPs) of the World Trade Organisation (WTO) and
as to take advantage of the ‘minimal’ standard of the GI protection that the TRIPs had set out
for the WTO members in order to comply with their respective national legislations.

In the globalised and intercommunicable market, and in order to conquer that market, the sale
of products and demands became a mode of efficiency identification and differentiation that
allows the defence, better understanding of the demands of the world. In a globalised market
increased competition between the products, and the factors differentiating consequently
assume a vital importance as means of their affirmation and survival of the product.
On the other hand, it is very imperious to conciliate, this need of the hour for differentiation
with the increased consumers consciousness of the quality factor of the product and the
consequent increase of the degree of demand. Now a days it is not only enough to be unique ;
but also necessary to be among their best. It is precisely this context that had one of the place
of subject of geographical indications and appellations of its origin as key element in any of
the commercial strategy targeting consequent of a solid place in the highly competitive and
demanding market.3 In this study we will also understand the difference between Trademarks
and geographical indications, and are equal and independent categories of distinctive marks
and signs used to denote specific products, and classes of products. The two domains of
intellectual property rights, among others, are subject concern to domestic and other
multilateral laws, regulating, and administrative procedures that are fair enough and uniform,
within the member countries of the World Trade Organisation (WTO). In this study we will
also discuss about , the relationships between trademarks and the geographical indications and
how they overlap and create trouble within a given territory or country. This applies particularly
to the boundaries of their specifications and the interface of their coexistence .

AIM OF THE STUDY

 To analyse the GI act
 To understand the international prospectives
 To know the remedies available in violation of such cases

RESEARCH METHODOLOGY
The data used in this non-empirical study is the secondary data for analysis and the information
was collected through online articles, journals, government reports and various websites.

LIMITATIONS OF THE STUDY

 The paper is restricted to a secondary means of research, conducted only by means of
internet sources and the books.
 A primary way of research could not be adopted for the same due to the nature of the
topic

Historical background of GI in India

The protection of was felt necessary due to the socio economic perspective and judicial
perspective. GI gives producers of the region exclusive rights of identification of that particular
region. It also prohibits the other unauthorised users. They protect the natural treasures and
helps to protect/maintain cultural heritage of a place. GIs based on information asymmetry

3
Alberto Francisco Ribeiro de Almeida, “key differences between trademarks and geographical indications”
Porto, 2008.
between buyers and the sellers. The GI acts as a signalling tool that enables the producers to
recognise and differentiate their product from different competitors.

International history

First laws that protect GI was in the 14th century, in France, Portugal and Tuscany. However
France was the first one to adopt GI laws. France protected recognition of false place of origin
because there wasn’t enough protection. Development of GI took place in Europe after the
phylloxera outbreaks. The root infesting pest ruined the French vineyards. As a result there was
high demand for wine. Then the low quality wines were sold in the name of superior quality.
In response to the producer frauds government enacted new laws to prevent fraud and misuse
products like Champagne and Bordeaux. Protection among state level was introduced in
France. From this the Paris convention was recognised as a world wide initiative to adopt
common IPR laws in 1883. Terms like indications of source and Appellation of origin was
introduced.

GI protection in India

In India, the legal system for GI protection has been developed very recently. The Geographical
Indications of Goods (Registration and Protection) Act was enacted in the year 1999 and it
came come into force in September 2003. Before this act, there was not a separate legislation
for GIs. But, there were few alternative ways which was utilised for protecting the misuse of
GIs. They monitored under the folllowing laws
(i) By the consumer protection laws
(ii) By passing off action in courts
(iii) By certification of trademarks.4

Among the above laws, certification trademarks (CTM) were more recognised and protecting
indication of the sources. In the Indian law, more common geographical name protected in the
CTM system, prior to the GI Act, was the “Darjeeling Tea”.5 The certification trademark is
understood as a mark governed by a proprietor who certifies the goods as to their origin,

4
Kasturi Das, Socio-Economic Implications of Protecting Geographical Indications in India, August 2009, Centre
for WTO Studies, p.6.
5
The Tea Board of India has registered the name Darjeeling as a Certification Mark in India, USA and UK.
material, mode of manufacture, or performance of the services, quality accuracy or other
characteristics, and from there on allows use of the mark. In India, GIs have been administered
by common law principles, which enables an aggrieved person to file any action of ‘passing
off’ for protection of ones right. It is usually based on the usage and the knowledge about the
common characteristic features and the quality or reputation of the product that is already
earned in the market either by publicity or by the presence of it in the market. A survey of
conducted reveals that cases in Indian courts have maintained the action of passing off to
protect GIs. 6 The issue of Basmathi rice, Darjeeling tea, Turmeric patent obtained by US
brought in judicial perspective attention towards India to protect its own GI globally.

International protection for GI under TRIPS

TRIPS set minimum standards of protection of GI.

Article 22 : Any states that use or constitutes unfair competition falls within the meaning of
article 10( bis) of Paris Convention (1967)
Article 23 : States that have additional protection for GI for wines and spirits. Each member
provides legal means for interested parties.
Article 24:States that have international exceptions. The members enter into a negotiation at
increasing protection of GI. The members that refuse, to conduct bilateral and multilateral
agreements. The council for TRIPS will review the application
Article 26: States that have Protection of any design,GI forfeiting the rights of others from its
usage. The members may provide limited exceptions provided it does not lead to exploitation.

Trademark and geographical indication

Geographical indications by the very nature will not be a subject matter of licensing.
Technology and know-how for producing champagne may be, in principle, it is transferred to
a person producing some wine or brandy outside the region of champagne or cognac, but the
right to label and the licensed product of champagne or cognac of course shall not be
transferred. This is the reason real why any licence is rarely to be given. However, the point is
that even when such a transaction takes place, it shall not comprise the license for use of the

6
Tushar Kanti Saha and Nalin Bharti, “Beyond Wines and Spirits: Developing Countries ‘GI Products and their
Potential in WTO Regime with Special Reference to India”, Journal of Intellectual Properly Rights, Vol.11,
March 2006, p.892.
licensor’s geographical indication. On the other hand, any person entitled to have a
geographical indication will not need a license for it even if such a person obtains the
knowledge from another person in the region also entitled to use of the same geographical
indications.7

In an increasingly globalised economy, geographical indications have become much more than
a mere category of intellectual property rights. They play an very important economic role.
They serve to protect intangible assets such as market differentiation, reputation and quality
standards. They enable linkage of a specific product (or its production) to the territory from
where it originates. Geographical indications are not meant to be sold as commodity goods in
the market; they usually represent fine quality goods in the Indian market. In addition, they
forecast the cultural identity of the nation, region as well as locality and add a human dimension
to the goods which are increasingly subject matter to standardised production for mass
consumption.8 The economic function of geographical indications is almost same as that of
trademarks. Initially there is a existence of goodwill. Secondly they est protect market identity,
by differentiating the goods bearing a geographical indication from same or similar goods or
of a different geographical origin, though this distinctiveness is a collective one rather than that
of individual level. This fact, however, does not say that geographical indications are of not
private rights, like all other categories of the intellectual property. They are used collectively
by many private persons who are engaged into the production of goods having geographical
indication. In a legal point of view, geographical indications share many properties similar with
trademark, such as distinctiveness and non-deceptiveness, along with unlimited duration of
protection.9

Basmati rice case

Basmati 10is a unique, lengthy aromatic rice cultivated traditionally only in the Indo-Gangetic
plains of the India and the Pakistan. India is exporting “Basmati” rice to several countries of

7
Felix Addor and Alexandra Grazioli, Geographical Indications beyond Wines and Spirits A Roadmap for a
Better protection for geographical indications in the WTO TRIPs Agreement. The Journal of World Intellectual
Property, Vol.5, No.6, November 2002, p.7.
8
Ibid
9
See David R. Downes and Sarah A. Laird, Innovative Mechanisms for sharing Benefits of Biodiversity and
Related Knowledge; Case Studies on Geographical Indications and Trademark, paper prepared for the UNCTAD
bio-trade initiative, 1999, p.6.
10
Etymologically, the origin of the word “Basumati” can be traced to the Sanskrit word Vasumati which means
earth. Just as smell and fragrance are closely associated with earth, basmati rice is recognised by its unique
aroma.
the world such as US, Europe and Middle East countries for many decades and a over a time
period, it has got a unique position in the market. The patenting of the Basmati rice the crown
jewel of India and Pakistan by US Company Rice Tec Inc. Shook India and most of the other
developing countries and have created awareness of the unfair world market trend.
The Basmati which has extra length, soft textured, aromatic the rice and has been cultivated
from the time immemorial in the foothills of the Himalayas. Ther agro- climatic conditions in
this region endow Basmati rice with certain unique characteristics, physical, not found
elsewhere and not amenable to the replication. This makes Basmati rice a good product in the
international market and the uniqueness needs to be preserved and protected.11
Basmati commands a handsome price for both domestic and international markets.
Approximately a million hectares in India and 0.75 million hectares in Pakistan has been
planted in Basmati varieties, where they are cultivated by many hundreds of small
farmers. 12 The initial legal issue, which gave rise in the protection of Basmati and as a
geographical indication a question is to whether it is generic name? Rice Tec in their claimed
that it is a generic name and therefore it cannot be protected under the term geographical
indication.13 Various reports claim that the US Company’s use of such names as “Basmati”,
“Kasmati”, “Jexamati and “Jasmati”.14 In fact, the company had used brand names such as
Kasmati, Texmati, and Jasmati in the US and UK since the patent was issued before. They have
used the term “Basmati” as a generic term for longer a period, “Rice Jec has produced and had
marketed Texas, American Basmati rice under this label for 20 years and have been exporting
this product for around 15 years with no objection ever raised”, says the company stamen.15
As the word “Basmati” is not a place name, its validity is a geographical indication that will
depend on if “Basmati” can be shown closely and exclusively associated with the geographical
area, even though the world trade agreement terms it as geographic appellation.16
The name as well as the patent are completely a different issue ; and there is a distinct difference
between the usage of Basmati as a generic term, and the use of its brand names such as Texmati
and Jasmati. There are two kinds of intellectual property and are involved with names such as

11
Chandar M. Lal and Gayathri Jambunathan, India and Pakistan Geographical Indications the Basmati issue.
Submitted to the International Trademarks Association (INTA) Annual Meeting, Seattle May 1999,
http://www.iprlawindia.org.doc.
12
Suman Sahai Looking beyond Basmati, Economic and Political Weekly, February 21, 1998, p.371.
13
This controversy was a result of the research prepared by an Indian scientist from the Indian Agricultural
Research Institute being used by Rice Tec to state that Basmati is a generic term and therefore cannot be
protected as a geographical indications. see Radhika Singa – The Economic Times, New Delhi, August 11, 1998.
14
http://www.rediff.com/business/1998/mar/12rice.htm.
15
http://www.economictimes.com/today/12
16
http://www.itd.or/issues/india6.htmm.
Trademarks and Geographical Indications.17

The concern of what Indian authorities had fear of Rice Tec getting its trademark on Texmati,
Texmati is deceptively similar to the sound and name Basmati and therefore it shall not be
registered as a trademark. An action of passing was also determined to succeed.
However there was an immediate solution readily available to the problems in hand since by
the virtue of Article 24.9 of the TRIPs Agreement, during that time India did not have any for
the protection of GI. This prevented the Indian country from approaching to the WTO dispute
settlement body and asking other members countries to protect our GI. Therefore the only hope
we Indians had was relying upon tort protection of passing off and unfair competition laws as
usual.

Recommendations
In India we feel the importance of our heritage and assets only when it goes out of our hands.
So we need to understand the value of the rich and varied heritage and create awareness. A lot
of research has to be done in order to identify and analyse new laws that we need to establish
in the country. One of the growing concerns is the intellectual property rights, where still many
things are left unprotected. So we have understand the need of the hour of our nation and work
accordingly.

17
The use of place names or worlds associated with a place to identify the origin, type and quality of a product
for e.g.; “champagne”.
Conclusion

The GI Act, which had come into force, along with the other GI Rules, came into effect from
15 September 2003, and has been instrumental in the expansion of the GI status to many other
goods so far. The central government has also made establishment along with the Geographical
Indications Registry with all-India jurisdiction, at Chennai, where right-holders can register the
GI. Unlike TRIPS, the GI Act does not restrict the special protection to the wines and spirits
alone. The central government has its own discretion to decide what product should be
protected with higher levels of protection. This approach has deliberately been taken by the
drafters of the Indian Act along with the aim of providing stringent protection as guaranteed
under the TRIPS Agreement of GI Indian origin. However, other WTO members are not with
any obligation to ensure Article 23-type protection to all India GI, thereby leaving rooms for
the misappropriation in their international arena. Registration of GI is notorious any
compulsion in India. If registered, it will obtain legal protection to facilitate an action for
infringement. Once GI is registered in India, it becomes relatively easier to seek protection in
other countries, particularly the WTO member countries.
REFERENCES

Felix Addor and Alexandra Grazioli, Geographical Indications beyond Wines and Spirits A Roadmap for a Better
protection for geographical indications in the WTO TRIPs Agreement. The Journal of World Intellectual
Property, Vol.5, No.6, November 2002, p.7.

http://www.economictimes.com/today/12

http://www.itd.or/issues/india6.htmm.

http://www.rediff.com/business/1998/mar/12rice.htm.

Chandar M. Lal and Gayathri Jambunathan, India and Pakistan Geographical Indications the Basmati issue.
Submitted to the International Trademarks Association (INTA) Annual Meeting, Seattle May 1999,
http://www.iprlawindia.org.doc.

Property, Vol.5, No.6, November 2002, p.7.

Kasturi Das, Socio-Economic Implications of Protecting Geographical Indications in India, August 2009, Centre
for WTO Studies, p.6.

Alberto Francisco Ribeiro de Almeida, “key differences between trademarks and geographical indications”
Porto, 2008.

See David R. Downes and Sarah A. Laird, Innovative Mechanisms for sharing Benefits of Biodiversity and
Related Knowledge; Case Studies on Geographical Indications and Trademark, paper prepared for the UNCTAD
bio-trade initiative, 1999, p.6.

Tushar Kanti Saha and Nalin Bharti, “Beyond Wines and Spirits: Developing Countries ‘GI Products and their
Potential in WTO Regime with Special Reference to India”, Journal of Intellectual Properly Rights, Vol.11,
March 2006, p.892.

The Asian Experience’, UNCTAD/ICTSD, Regional Dialogue on Intellectual Property Rights, Innovation and
Sustainable Development, Hong Kong, SAR, Republic of China, November 8-10, 2004.

Geographical Indications of India, Policy brief October 2010, aiaca. (All India Artisans and Craftworks Welfare
Association), p.8.

Bibek Debry, Intellectual Property Rights, Delhi: BR. Publishing Corporation, 1998, p.77.

W. Cornish, D. Llewellyn & T. Aplin, Intellectual Property: Patens, Copyright, Trademarks and Allied Rights, 7th
South Asian Edition, 2010, p.640.

WIPO National Seminar on the Protection of Trademarks and Geographical Indications, Beirut, March 17 to 19,
2003, International Bureau of WIPO, p.4.