DESSRTATION ON GEOGRAPHICAL INDICATION

A STUDY

SUBMITTED TO PUNE UNIVERSITY TOWARDS

THE FULFILLMENT FOR THE AWARD OF

DIPLOMA IN INTELLECTUAL PROPERTY

RIGHT LAW

SUBMITTED BY MR. BADAKH MAHESH

UNDER THE GUIDENCE OF PROF. PRADEEP TAMBE

MARATHWADA MITRA MANDAL SHANKARRAO

CHAVAN LAW

COLLEGE,

PUNE

2015- 2016

pg. 1
 CERTIFICATE

This is to inform that, Mr. Badakh Mahesh , student of

Diploma In Intellectual Property
Right law , conducted by Marathwada Mitra Mandal’s
Shankarrao Chavan Law College , has
satisfactorily carried out dissertation tittle ,
GEOGRAPHICAL INDICATION :- A STUDY
Under the guidance and supervision and we recommend it
for submission.

Place : Pune
Date : _ / _ / 2016

pg. 2
 ACKNOWLEDGEMENT

This project has been made possible by the efforts of many

individuals, including Principal and other Faculty
members.

Special thanks are owed to the great authors of the various

books from which the reference has
been taken and my teachers who inspired me and made me
capable of performing this task and
lastly those all people who gave me suggestions regarding
my work .

Thanking the person have helped me in completing this

assignment , principal Kranti Deshmukh
, Pro. Pradeep Tambe , Pof. Vikah Bhatnager , Pro.
Bhagawan Gawali , Pro. Shubhangi
Deshmukh , Pro. Revati Naik , Pro. Rushikesh Joshi , Pro.
Afshan Noor , Pro. Avadhoot Babar, Pro. Aleesha Gurav
from teaching staff.

And my friends who allowed me to operate their electronic

devices while performing the task
and were helpful all the time when needed .

pg. 3
 ABBREVATIONS

GI- GEOGRAPHICAL INDICATION

WTO- WORLD TRADE ORGANISATION

TRIPS- TRADE RELATED ASPECTS OF

INTELLECTUAL PROPERTY RIGHTS

WIPO- WORLD INTELLECTUAL PROPERTY

ORGANISATION

PGI -PROTECTED GEOGRAPHICAL INDICATION

PDO-PROTECTED DESIGNATION OF ORIGIN

ASTEC-SSAM SCIENCE TECHNOLOGY AND

ENVIRONMENT COUNCIL

EUPEA-EASTERN UP EXPORTERS ASSOCIATION

MGNREGA-MAHATMA GANDHI NATIONAL

RURAL EMPLOYEE GUARANTEE ACT

CTM- CERTIFICATION TRADEMARKS

HWA-HUMAN WELFARE ASSOCIATION

SC- SUPREME COUR

Pvt- PRIVATE

Ltd-LIMITED

pg. 4
 INDEX

9
CHAPTER -1 – INTRODUCTION

CHAPTER-2- CONCEPT OF PROPERTY 10-

2.1 PROPERTY 12
2.2 TYPES OF PROPERT
2.3 CATOGRIES OF
INTELLECTUAL
PROPERTY RIGHTS

CHAPTER -3- SCOPE AND 13

NATURE OF INTELLECTUAL
PROPERTY

CHAPTER-4- 14-
DETAILED ANALYSIS OF
GEOGRAPHICAL INDICATION

I. INTRODUCTION TO THE 14
GEOGRAPHICAL INDICATION
II. HISTORY OF GEOGRAPHICAL 14
INDICATION
III. LEGAL EFFECT 16
IV. RURAL DEVELOPMENT EFFECTS 17
OF GEOGRAPHICAL INDICATION
V. INTERNATIONAL ISSUES 18-
22

pg. 5
 VI. GEOGRAPHICAL 23-
INDICATION OF INDIA 30

VII. INDIA’S EXPERIENCE WITH 31-

GI PROTECTION 32

VIII. IMPACTS OF GI
33
REGISTRATION IN INDIA:
SOME CASES
34

 MUGA SILK OF ASSAM

 BANARAS BROCADES
AND SARIS
 MALABAR PEPPER

 VAZHAKULAM
PINEAPPLE
IX. GI INDICATIONS:- INDIAN
SCENARIO

X. PROTECTION OF GI IN
INDIA

 AN OVERVIEW OF GI
PROTECTION IN INDIA

pg. 6
  GEOGRAPHICAL
INDICATIONS OF GOODS
(REGISTRATION AND
PROTECTION) ACT, 1999
– AN ANALYSIS
 HISTORICAL
BACKGROUND OF THE
GI ACT
 SOCIO-ECONOMIC
PERSPECTIVE
 JUDICIAL
PERSPECTIVES

 ANALYSIS OF THE GI
ACT
XI. CASE LAWS
 Tea Board vs Itc Limited AIR2010
CAL (3137)

 Telefonaktiebolaget Lm
Ericcson ... vs Union Of
India & Ors. AIR 2011
DEL (1104)
 Khoday Distilleries
Limited vs The Scotch
Whisky Association
AIR 2008 SC(4179)

pg. 7
  Lg Electronics India Pvt.
Ltd. vs Bharat Bhogilal
Patel & Others AIR 2011
DEL (2982)

CHAPTER -5- CONCLUSION

BIBLOGRAPHY

pg. 8
Chapter 1:-INTRODUCTION

Intellectual Property Rights allows people to assert

ownership rights on the outcomes of their creativity and
innovative activity in the same way that they can own
physical property.2 Intellectual Property arises out of
human labour hence it is bound by a number of changes.
The four main types of Intellectual Property are Patents,
Trademarks, Designs and Copyrights. This article will deal
with Trademarks, which is an important aspect of
Intellectual Property. The industrial revolution and rapid
developments made in the fields of science, technology and
culture new kinds of property apart from the traditional
property came into existence. The concept of property has
undergone a change after the Second World War. New
rights and properties like patents, copyrights and industrial
designs came to be known as “intellectual property rights”
received attention due to their unique characteristics and
possibility of their violation easily. The intellectual
property rights (IPRs) differ from other forms of property
because of uncertainties regarding their value and how they
can be used.

The law relating to intellectual property is based on certain

basic concepts. At present times intellect is an integral part
of one’s personality and one’s intellect plays an important
role in deciding what sort of labour his body engaged into.
It may be assued that ones intellect is one’s property i.e
one’s skills. IPRs are legal rights governing the use of
creations of the human mind. The recognition and
protection of these rights is of recent origin.

pg. 9
 Chapter 2:- CONCEPT OF PROPERTY

2.1 PROPERTY

Property is a unique type of right to a thing, good against

the world. Property right is a right in rem. Property is also a
economic institution as every property can be assessed in
terms of monetary value.

2.2 TYPES OF PROPERTY

1). TANGIBLE (touchable)

i). Movable

ii). Immovable

2). INTANGIBLE (non-touchable)

Intellectual Property

2.3 CATEGORIES OF INTELLECTUAl

PROPERTY RIGHTS

 Copyright and Related Rights

 Trade Mark

 Geographical Indications

pg. 10
 Industrial Designs

 Patents

 Lay-out Designs of Integrated Circuits

 Protection of Undisclosed Information

1) Copyright and Related Rights – Copyright means the

exclusive right to do or authorize others to do certain acts
related to literary, dramatic, musical and artistic works,
cinematograph film, sound recordings and computer
databases.

The related or neighboring rights means those rights which

have developed parallel and related copyright such as rights
granted to protect performers, producers of phonograms,
and broadcasting organizations in the performance of their
works.

2) Trade mark – A trade mark is a visual symbol or sign in

the form of a word, a device, or a label and a means of
identification which enables traders to make their goods or
services distinguishable from similar goods and services
supplied by others. The sign may consist of one or more
distinctive words, letters, numbers, drawings or pictures,
emblems, colors or combination of colors, or the form or
other special presentation of containers or packages for the
product. The sign may consist also of combination of any
of the said elements.

3) Geographical Indications – A geographical indication is a

sign used on goods that have a specific geographical origin.

pg. 11
 The goods possess the qualities or a reputation that are due
to that place of origin. These qualities depend on the
geographical place of production; a specific links exists
between the products and their place of origin.

4) Industrial Designs – the design refers to the features of

shape which appeal to the eye and should be judged solely
by the eye and not by any functional considerations. A
design must be new and original and not previously
published.

5) Patents – a patent is a right granted to a person who has

invented a new and useful article or an improvement of an
existing article or a new process of making an article.

6) Layout- Designs of Integrated Circuits- modern age is

electronic age. All the modern products are having
transistors and other circuitry elements which are
inseparably formed on semiconductor material and these
semiconductors are intended to perform an electronic
function. Layout-designs of integrated circuits are
considered as intellectual property.

pg. 12
 Chapter 3:- NATURE OF INTELLECTUAL
PROPERTY

Intellectual property is of intangible incorporeal property. It

consists of a bundle of rights in relation to certain material
object created by the owner.

SCOPE OF INTELLECTUAL PROPERTY

The convention establishing World Intellectual Property

Organization (WIPO) has given a wider definition to IPRs.
According to this definition the IPRs shall include the
rights relating to:

 Literary, artistic and scientific work ;

 Performances of performing artists, phonograms and

broadcasts ;

 Inventions in all fields of human endeavors ;

 Scientific discoveries ;

 Industrial designs ;

 Trademarks, service marks , and commercial names and

designations ;

 Protection against unfair competitions and ; all other rights

resulting from intellectual activity in the industrial,
scientific literary or artistic fields.

pg. 13
Chapter 4:- DETAILED ANALYSIS OF GEOGRAPHICAL
INDICATION

I. INTRODUCTION TO THE GEOGRAPHICAL

INDICATION

A geographical indication (GI) is a name or sign used on

certain products which corresponds to a specific
geographical location or origin (e.g. a town, region, or
country). The use of a geographical indication may act as a
certification that the product possesses certain qualities, is
made according to traditional methods, or enjoys a certain
reputation, due to its geographical origin.

II. HISTORY OF GEOGRAPHICAL INDICATION

Governments have been protecting trade

names and trademarks used in relation to food products
identified with a particular region since at least the end of
the nineteenth century, using laws against false trade
descriptions or passing off, which generally protect against
suggestions that a product has a certain origin, quality or
association when it does not. In such cases, the limitation
on competitive freedoms which results from the grant of a

pg. 14
monopoly of use over a geographical indication is justified
by governments either by consumer protection benefits or
by producer protection benefits.
One of the first GI systems is the one used in France from
the early part of the twentieth century known as appellation
d'origine controlee (AOC). Items that meet geographical
origin and quality standards may be endorsed with a
government-issued stamp which acts as official
certification of the origins and standards of the product to
the consumer. Examples of products that have such
'appellations of origin' include Gruyere cheese (from
Switzerland) and many French wines.
Geographical indications have long been associated with
the concept of terroir and with Europe as an entity, where
there is a tradition of associating certain food products with
particular regions. Under European Union Law,
the protected designation of origin framework which came
into effect in 1992 regulates the following systems of
geographical indications: Protected designation of
origin (PDO), protected geographical indication (PGI)
and Traditional Specialties Guaranteed (TSG).

pg. 15
III. LEGAL EFFEECT

In many countries the protection afforded to geographical

indications by law is similar to the protection afforded to
trademarks, and in particular, certification marks.
Geographical indications law restricts the use of the GIs for
the purpose of identifying a particular type of product,
unless the product and/or its constituent materials and/or its
fabrication method originate from a particular area and/or
meet certain standards. Sometimes these laws also stipulate
that the product must meet certain quality tests that are
administered by an association that owns the exclusive
right to licence or allow the use of the indication. Although
a GI is not strictly a type of trademark as it does not serve
to exclusively identify a specific commercial enterprise,
there are usually prohibitions against registration of a
trademark which constitutes a geographical indication. In
countries that do not specifically recognize GIs, regional
trade associations may implement them in terms of
certification marks.

The consumer-benefit purpose of the monopoly rights

granted to the owner of a GI also applies to the trademark
monopoly right. Geographical indications have other
similarities with trademarks. For example, they must be
registered in order to qualify for protection, and they must
meet certain conditions in order to qualify for registration.
One of the most important conditions that most
governments have required before registering a name as a

pg. 16
 GI is that the name must not already be in widespread use
as the generic name for a similar product. Of course, what
is considered a very specific term for a well-known local
specialty in one country may constitute a generic term
or genericized trademark for that type of product. For
example, parmigiano cheese in Italy is generically known
as Parmesan cheese in Australia and the United States.

IV. RURAL DEVELOPMENT EFFECTS OF GEOGRAPHICAL

INDICATION
Geographical indications are generally traditional products,
produced by rural communities over generations, that have
gained a reputation on the markets for their specific
qualities.

The recognition and protection on the markets of the names

of these products allows the community of producers to
invest in maintaining the specific qualities of the product
on which the reputation is built. It may also allow them to
invest together in promoting the reputation of the product.

Observed rural development impacts of geographical

indications are: - a structuring of the supply chain around a
common product reputation, - increased and stabilised
prices for the GI product, - added value distributed through
all the levels of the supply chain, - preservation of the
natural resources on which the product is based, -
preservation of traditions and traditional know-how, -
linkages to tourism.

None of these impacts are guaranteed and they depend on

numerous factors, including the process of developing the

pg. 17
 geographical indications, the rules for using the GI (or
Code of Practice), the inclusiveness and quality of decision
making of the GI producers association and quality of the
marketing efforts undertaken.

V. INTERNATIONAL ISSUEES

Like trademarks, geographical indications are regulated

locally by each country because conditions of registration
such as differences in the generic use of terms vary from
country to country. This is especially true of food and
beverage names which frequently use geographical terms,
but it may also be true of other products such as carpets
(e.g. 'Shiraz'), handicrafts, flowers and perfumes.

When products with GIs acquire a reputation of

international magnitude, some other products may try to
pass themselves off as the authentic GI products. This kind
of competition is often seen as unfair, as it may discourage
traditional producers as well as mislead consumers. Thus
the European Union has pursued efforts to improve the
protection of GI internationally. Inter alia, the European
Union has established distinct legislation to protect
geographical names in the fields of wines, spirits,
agricultural products including beer. A register for
protected geographical indications and denominations of
origin relating to products in the field of agriculture
including beer, but excluding mineral water, was
established (DOOR). Another register was set up for wine
region names, namely the E-Bacchus register. A register of

pg. 18
the geographical indications for spirits and for any other
products is still missing in the European Union and most
other countries in the world. A private database project
(GEOPRODUCT directory) intends to close this gap.
Accusations of 'unfair' competition should although be
levelled with caution since the use of GIs sometimes comes
from European immigrants who brought their traditional
methods and skills with them.[2]

 PARIS CONVENTION AND LISBON

AGREEMENT

International trade made it important to try to harmonize

the different approaches and standards that governments
used to register GIs. The first attempts to do so were found
in the Paris Convention on trademarks (1883, still in force,
176 members), followed by a much more elaborate
provision in the 1958 Lisbon Agreement on the Protection
of Appellations of Origin and their Registration. 28
countries are parties to the Lisbon agreement: Algeria,
Bosnia and Herzegovina, Bulgaria, Burkina Faso, Congo,
Costa Rica, Cuba, Czech Republic, North Korea, France,
Gabon, Georgia, Haiti, Hungary, Iran, Israel, Italy,
Macedonia, Mexico, Moldova, Montenegro, Nicaragua,
Peru, Portugal, Serbia, Slovakia, Togo and Tunisia. About

pg. 19
9000 geographical indications were registered by Lisbon
Agreement members.

 AGREEMENT ON TRADE-RELATED ASPECTS

OF INTELLECTUAL PROPERTY RIGHTS

The WTO Agreement on Trade-Related Aspects of

Intellectual Property Rights ("TRIPS") defines
"geographical indications" as indications that 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 geographic origin."[3]

In 1994, when negotiations on the WTO TRIPS were

concluded, governments of all WTO member countries
(155 countries, as of 10 May 2012) had agreed to set
certain basic standards for the protection of GIs in all
member countries. There are, in effect, two basic
obligations on WTO member governments relating to GIs
in the TRIPS agreement:

1.Article 22 of the TRIPS Agreement says that all

governments must provide legal opportunities in their own
laws for the owner of a GI registered in that country to
prevent the use of marks that mislead the public as to the
geographical origin of the good. This includes prevention
of use of a geographical name which although literally true

pg. 20
"falsely represents" that the product comes from
somewhere else.[4]

2.Article 23 of the TRIPS Agreement says that all

governments must provide the owners of GI the right,
under their laws, to prevent the use of a geographical
indication identifying wines not originating in the place
indicated by the geographical indication. This applies even
where the public is not being misled, where there is no
unfair competition and where the true origin of the good is
indicated or the geographical indication is accompanied by
expressions such as "kind", "type", "style", "imitation" or
the like. Similar protection must be given to geographical
indications identifying spirits.[5]

3. ARTICAL 22 OF TRIPS also says that governments may

refuse to register a trademark or may invalidate an existing
trademark (if their legislation permits or at the request of
another government) if it misleads the public as to the true
origin of a good. Article 23 says governments may refuse
to register or may invalidate a trademark that conflicts with
a wine or spirits GI whether the trademark misleads or not.

4. Article 24 of TRIPS provides a number of exceptions

to the protection of geographical indications that are
particularly relevant for geographical indications for wines
and spirits (Article 23). For example, Members are not
obliged to bring a geographical indication under protection
where it has become a generic term for describing the
product in question. Measures to implement these
provisions should not prejudice prior trademark rights that
have been acquired in good faith; and, under certain
circumstances — including long-established use —

pg. 21
 continued use of a geographical indication for wines or
spirits may be allowed on a scale and nature as before.[6]

In the Doha Development Round of WTO negotiations,

launched in December 2001, WTO member governments
are negotiating on the creation of a 'multilateral register' of
geographical indications. Some countries, including the
EU, are pushing for a register with legal effect, while other
countries, including the United States, are pushing for a
non-binding system under which the WTO would simply
be notified of the members' respective geographical
indications.

Some governments participating in the negotiations

(especially the European Communities) wish to go further
and negotiate the inclusion of GIs on products other than
wines and spirits under Article 23 of TRIPS. These
governments argue that extending Article 23 will increase
the protection of these marks in international trade. This is
a controversial proposal, however, that is opposed by other
governments including the United States who question the
need to extend the stronger protection of Article 23 to other
products. They are concerned that Article 23 protection is
greater than required most consumer benefit that is the
fundamental objective of GIs.

VI. GEOGRAPHICAL INDICATION OF INDIA

pg. 22
pg. 23
pg. 24
pg. 25
pg. 26
pg. 27
pg. 28
pg. 29
pg. 30
VII. INDIA’S EXPERIENCE WITH GI PROTECTION
Since the first Indian GI was registered in 2004, 172
GIs have been registered with the GI Registry of
India. Of these, more than half (64 per cent) are
handicrafts, more than one fourth (26 per cent) are
agricultural products, and the remaining are food and
manufacturing products (Figure 1). The trend of GI
registration has been mostly upward with the
maximum number of products registered in the year
2008 – 2009. While handicrafts have been the most
registered GIs consistently, agricultural and
manufactured products are increasingly being
protected under the GI Act over the past few years
(see figure 2) Food products, a more recent addition
in the registered GI basket of India, was first granted
protection in 2008 – 2009 when Dharwad Pedha
from Karnataka was granted the status of a registered
GI product. The recent increase in manufactured
products being registered as GI can be partially
attributed to more foreign products being registered
at the Indian GI Registry. In terms of geographical
distribution of GIs in India, most GIs have been
registered from the southern states. The state of
Karnataka has been the forerunner in registration of
GIs followed by the states of Andhra Pradesh, Kerala
and Tamil Nadu. The spread of GI recognition is
concentrated in the southern states. Products from
other states are getting registered now. At the same
time many states, which have several traditional
varieties of agricultural products or handicrafts, are

pg. 31
not forthcoming in applying for GIs. There are only
three GIs from all of north east India and none from
Uttarakhand. The states of Punjab and Haryana have
no GI either except for a joint GI on Phulkari
embroidery along with Rajasthan. Phulkari is the
only GI in India which covers more than one state.
Since 2009, 8 foreign (7 manufactured and 1 food)
products have been accorded the status of registered
GI under the Indian Act. These are Champagne and
Cognac from France, Scotch Whisky from the
United Kingdom, Napa Valley wines from the
United States of America, Douro wine from
Portugal, Peruvian Pisco from Peru and Prosciutto di
Parma from Italy.

pg. 32
VIII. IMPACTS OF GI REGISTRATION IN INDIA:
SOME CASES

A number of observers point out that of all the different

types of intellectual property rights, GI may be more
amenable to the particular context of developing
countries. GIs may especially facilitate protection of the
collective rights of the rural and indigenous communities
in their indigenous knowledge, ensuring that the entire
community which has preserved the knowledge and has
passed it on with incremental refinement over
generations, stand to benefit from the knowledge and
that this is not locked up as the private property of one
individual (Sahai and Barpujari, 2007). Other
advantages of GIs are that the knowledge remains in the
public domain, the scope of protection is limited to
controlling the class and/ or location of people who may
use the protected indication and the rights can
potentially be held in perpetuity as long as the product-
place link is maintained (Commission on Intellectual
Property Rights, 2004). Also, holders of a GI do not
have the right to assign the indication, thus, preventing
its transfer to non-locale producers. Evidence on the
socio-economic impacts of GIs in the Indian context are,
however, limited although anecdotal evidence suggests
that GIs have significant implications for producers in
developed and developing countries (Jena and Grote,
2007) . Interestingly, the collective nature of GIs also
brings to the fore significant collective action related
problems across various stages of organization and
governance (Das, 2009). For example, a group of
producers may take the initiative in the GI registration

pg. 33
process, while others not willing to join initially may
join later thereby attempting to free-ride on the efforts of
the forerunners. In India, there are many GIs that are
registered in the names of some central or state
government departments or bodies, yet there is no
homogeneity among those initiatives and involvements
across states. A number of studies have also found that
GIs could lead to exclusion of many from enjoying the
benefits (Gopalakrishnan et.al (2007), Rangnekar
(2009)). Firms with better bargaining positions may also
end up making disproportionate share of the economic
value generated from securing protection (Rangnekar,
2004). It is against this backdrop that our study has tried
to assess the situation on the ground with respect to a
number of registered GIs, through indepth, field level
case studies as well as primary survey based on a
standard questionnaire prepared for the purpose. Some
of these case studies include Muga silk of Assam,
Banaras brocades and saris, Malabar pepper and
Vazhakulam Pineapple, all of which are registered GIs.

 MUGA SILK OF ASSAM

Muga silk is a registered GI from the state of Assam.

Historical evidence suggests that Assam’s silk industry
had reached the pinnacle of perfection by the 7th century
A.D. Banabhatta, the author of Harshacharita informs us
that king Bhaskara Varma of Kamarupa (ancient Assam)
presented to Harshavardhana silken towels as “silken
and pure as the autumn moon’s night...”(cited in Sahai
and Barpujari, op.cit.). In the present day, muga silk

pg. 34
constitutes the state’s most popular export product after
Assam tea. The Patent Information Centre of the Assam
Science Technology and Environment Council (ASTEC)
secured registration for muga in 2006, which is
incidentally the first registered GI from the north-eastern
region. While ASTEC is the registered proprietor of the
muga GI, till date, there are no registered users. One to
one interviews with weavers and silk traders in the town
of Sualkuchi revealed very low awareness about the GI
protection of muga. While the price of muga has been
rising over the last few years, that has little to do with GI
registration. The reason for the high prices of the muga
yarn, according to the various stakeholders interviewed,
are diminishing area under muga cultivation owing to
rubber cultivation, diseases at the cocoon stage, loss
incurred due to the outdoor nature of muga rearing, and
so on. Nevertheless, higher prices have not been able to
encourage the farmers to hold on to muga cultivation. As
a result, muga has become almost three times more
expensive, compared with other similar varieties of silk.
Apparel with 100 per cent muga yarn is rarely produced
these days, except to cater to the state emporiums, or for
special orders. Muga is often blended with imported
tussar silk from China or with other indigenous silk yarn
such as pat. Meanwhile, as observed in the field, power-
loom is getting increasingly popular for muga weaving,
dealing a further blow to handloom weavers. In an
interview, an applicant for registered use of muga
observed that fabric woven on the power-loom has
certain advantages and could be the only way out for
entrepreneurs like him as many weavers are leaving the

pg. 35
profession owing to un-remunerative wages. Regarding
the setting up of a quality control and inspection
mechanism, as required by the law, ASTEC has
proposed employing the services of the Seri Bio Lab of
the Institute of Advanced Study in Science and
Technology, Guwahati, for quality control. An
inspection body is yet to be constituted. Hence, at this
stage, even after six years of registration, GI in muga
cannot give any guarantee of quality or authenticity.

 BANARAS BROCADES AND SARIS

‘Banaras brocades and saris’ secured registration under

the GI Act in September 2009, with the application filed
by nine organisations viz. Banaras Bunkar Samiti,
Human Welfare Association (HWA), joint director
industries (eastern zone), director of handlooms and
textiles Uttar Pradesh Handloom Fabrics Marketing
Cooperative Federation, Eastern UP Exporters
Association (EUPEA), Banarasi Vastra Udyog Sangh,
Banaras Hath Kargha Vikas Samiti and Adarsh Silk
Bunkar Sahkari Samiti. The weaver community
predominantly constitutes poor Muslims and Dalits and
the structure of production is based on a hierarchy of
kothdars (wholesale dealers), master weavers and other
weavers. With the objective of understanding the actual
impact of registration on the ground level, TERI
researchers conducted a multi-stakeholder consultation
at Varanasi interacting with registered users, Banarasi
Sari traders, bunkars (weavers), government officials,
local buyers, NGO representatives, cottage

pg. 36
manufacturing units etc. The consultations indicated that
the Banarasi sari industry is impacted by a host of
variables in terms of raw material and labour issues, the
socio-economic aspects of the region, and, to some
extent, the pitfalls of excessive liberalisation and
legislation (Dwivedi and Bhattacharjya, 2012). The
changing economic and market situation has resulted in
reduced income for weavers who cannot even meet their
basic needs, causing malnutrition and widespread
poverty throughout the traditional weaver community.
Such destitution and despondency among the weavers
has forced them to commit suicide or has precipitated
employment shifts, as evidenced by MGNREGA
(Mahatma Gandhi National Rural Employee Guarantee
Act) benefits. It could be gathered from the fieldwork
that the promise of geographical indication protection
has not curbed the menace of fakes. Machinebased
cheap product imitations continue to be sold. Cheap raw
material imports have led to the sale of what are known
as Kela saris, in the name of Banarasi saris. These use
banana tree resin to create threads which are then
polished to give the look of silver or gold thread.
Chinese imitation saris, pegged at much lower prices,
are flooding the market. Moreover, there is a tenfold rise
in the number of operating power-looms in the district of
Varanasi itself, although certain other studies put higher
estimates. Most power-loom owners have been
producing cheap imitation products in large numbers to
meet the growing demand, with computerised designs.
Enforcement under the legal regime is frustrated further
through absence of will on the part of GI holders to take

pg. 37
action against the imitators. Despite the stakeholders
being aware of the deleterious impact of sales of fake
saris, complex market dynamics enforces silence among
all concerned.

 MALABAR PEPPER

Malabar pepper is famous for its quality. It is classified

under two grades – garbled and un-garbled. History is
replete with instances of foreigners coming to the
Malabar Coast to trade in Indian spices in general and
pepper in particular. It is stated that the exorbitant price
of pepper during the middle ages, a trade which was
monopolized by the Italians, forced the Portuguese to
seek a sea route to reach India. Pepper is used as a spice
and it has also got medicinal properties. Malabar pepper
is cultivated in the geographic regions comprised in the
Malabar region of the erstwhile Madras Presidency.
Now these areas comprise in the states of Kerala,
Karnataka and Tamil Nadu. Malabar pepper accounts for
around 25 per cent of the entire world’s supply of
pepper. This pepper is unique for its sharp, hot and
biting taste. Highly aromatic, with a distinctive fruity
bouquet, it has the perfect combination of flavour and
aroma. In order to protect the brand value of Malabar
pepper, the Spices Board applied for a GI registration
and after completing the formalities the registration was
granted. As pepper is exported in huge quantities, there
was a feeling that the GI tag would give better legal
protection against counterfeit products, more visibility to
the brand etc. None of the respondents interviewed by
TERI researchers were aware of any infringement action

pg. 38
initiated against any of the counterfeit producers. There
was also a general feeling that it is the traders who reap
benefit out of the GI tag and not the farmers. The
general refrain was that farmers do not get any extra
benefit from the GI tag, which is also corroborated by
findings from the TERI survey discussed later. The
general mood in the sector at the time of field visit was a
worry over the declining price in pepper. There were
demands that there should be a complete ban on future
trades in pepper.

 VAZHAKULAM PINEAPPLE

There was considerable interest shown among the

academia and practicing lawyers about the GI tag for
Vazhakulam Pineapple. Some interviews were
conducted by TERI researchers as a result of this.
Pineapple is produced as a commercial fruit crop in
India. The main pineapple producing states are Kerala,
West Bengal, Assam and Tripura. Vazahkulam, known
as the Pineapple City, is located in Muvattupuzha taluka
of Ernakulam district. The pineapple cultivation in that
region started in the forties. It is a variety called
Mauritus which is cultivated in this region. The
pineapple produced in this region has a distinct taste. It
is very sweet and not very juicy. Because of these
features, there is a huge demand for Vazhakulam
Pineapple. From 1985 onwards, many farmers started
taking up large scale commercial cultivation of this
pineapple. Because of less juice content in the fruit, this
variety of pineapple is mainly consumed as a fruit.
These distinctive features were noticed in pineapples

pg. 39
grown in an area roughly falling within 60 kms in and
around Vazhakulam. These areas fall under the revenue
districts of Ernakulam, Idukki, Kottayam and
Pathanamthitta. However 90 per cent of the pineapple is
produced in Vazhakulam area only. The farmers
attribute the distinctive taste of the pineapple to the soil
in the region. The main demand for Vazakkulam
pineapple comes from the state of Kerala only. The
export market is mainly the Gulf countries. As the fruit
has to be consumed within 4 -5 days of harvesting,
exporting does not make much of commercial sense. In
order to protect the brand name, GI application was
jointly filed by the Pineapple Farmers Association,
Nadukkara Agro Processing Company Ltd. (NAPCL),
and the Kerala Agricultural University. The Pineapple
Farmers Association is a registered society under the
Charitable Societies Act. It was formed in 1990 mainly
to address the marketing issues. More than 500
pineapple farmers are members of this Association. The
main objectives of the association are: to unite and
strengthen the pineapple farmers; to create awareness on
farming and marketing issues; to provide assistance in
seeking financial and technical help from various
government and non-government agencies; and to
engage in promotion activities. The Nadukkara Agro
Processing Company Ltd. is a public limited company
with a shareholding pattern of 70 per cent held by
farmers and 30 per cent by the state of Kerala. NAPCL
is involved in the production of many pineapple based
products like pineapple juice, pineapple fruit candies
among others. The Kerala Agricultural University was

pg. 40
instrumental in providing the scientific details needed
for the GI registration and is involved as the inspection
body to regulate the quality standard parameters. The
purpose of going for a GI registration was for brand
value. No case of infringement has come to the notice so
far. The office bearers of the farmers association were
very candid in explaining that the major benefit of the
GI registration was the greater visibility of the brand.
Most of the farmers are big farmers who have taken land
for lease. The lease land mainly comes from the rubber
plantations, during their replantation time. In the first 3–
4 years of replantation, pineapple is cultivaan inter crop.
These plantations would stretch from 50 – 100 acres. It
is cultivated as an intercrop in coconut farms too. There
are farmers who have resorted to pineapple cultivation
as the main crop. There was a feeling among the
representatives of the farmers’ association that as GI is
intended to help the marketing of the product as it brings
in more brand visibility, the farmers are not directly
benefitted. The general feeling to be gathered after
interaction was that direct benefit for farmers was not
seen as the purpose of GI tag.

pg. 41
IX. GI INDICATIONS:- INDIAN SCENARIO

The case studies were sought to be substantiated through

a survey conducted by TERI for three registered GI-
Banarsisari, Malabar pepper and Bikaneri Bhujia, on the
basis of a standard questionnaire prepared especially for
the purpose. The survey covered in all 60 respondents
drawn from producers, traders, representatives of
government agencies and other stakeholders.13 The
findings from the survey indicate that among the present
users of the registered GI, only 31.11 % are registered
users under the GI Act, with the highest number of
registered users being there for Banarasi sari (65 %)
followed by Bikaneribhujia (59 %) and Malabar pepper
(7 % ). The survey indicates that for the GIs surveyed,
the major export destinations are Europe followed by the
USA, UAE and Australia. However, the volume of
international sales is quite low, averaging about 14 % of
the total volume of sales for the GIs surveyed. The
survey also indicated as far as sale is considered, much
of the sale of bikaneri bhujia happens through retail (80
%), while in the case of Malabar pepper, direct sales
constitute 57 % and wholesale 36% . In the case of
Banarasi sari, 50 % is through direct sales; retail sale
constitutes 20 % and exhibitions and wholesale account
for 15 per cent. The survey shows that 47.46 % of the
registered users approached the registered owners of the
GIs, which in most cases have been government and
nongovernmental associations and agencies (referred to
as the association for the sake of convenience) for
obtaining registered user status. For them, the main
motivation for seeking user status have been

pg. 42
enhancement of brand value (43 % ) and prevention of
duplication (36 % ), Among the registered users who
were approached or encouraged by the association to go
for registration, the main motivating factors have been
expectations to enhance brand value (for 36 % of the
respondents), prevent duplicate products (36 % ), to
retain product originality (18 per cent), while others
have been inspired and motivated by the association (9
% ). However, the survey indicates that none of the
registered users were consulted by the registered owners
of the GIs prior to the application process of the GI
itself. Among the respondents surveyed, only 21.43 %
claim enhanced profit post registration. However, among
the other changes observed post-registration, 33 % claim
increase in product demand, while another 33 % say that
it has led to revenue increment while 17 % of the
respondents claim that registration has led to decrease of
duplicates and enhanced brand value respectively.

pg. 43
X. PROTECTION OF GI IN INDIA
 AN OVERVIEW OF GI PROTECTION IN
INDIA

In India, the legal system for GI protection has very

recently been developed. The Geographical
Indications of Goods (Registration and Protection)
Act was enacted in 1999 and has come into force in
September 2003 (hereafter called GI Act). Before
this act, there was no separate legislation for GIs
specifically. However, there were three alternative
ways in which the then existing legal systems of the
country could be utilised for preventing the misuse
of GIs.

(i) under the consumer protection laws;

(ii) (ii) through passing off action in courts; and
(iii) (iii) through certification trademarks.1

Among these laws, certification trademarks (CTM)

were more focused on recognised and protecting
indication of sources. In the Indian context, the most
common geographical name protected under the
CTM system, prior to the GI Act, was “Darjeeling
Tea”. A certification trademark is understood as a
mark administered by a proprietor who certifies the
goods as to their origin, material, mode of
manufacture, or performance of services, quality
accuracy or other characteristics, and thereupon
allows use of the mark.

Under the CTM system, a proprietor of the mark

who proposes to merely administer the mark but not

pg. 44
use it him or herself, applies for the registration of
the same together with a set of elaborate regulations
detailing the process of certification for the use of
the mark in relation to the goods in question. It is
absolutely imperative in the CTM system that the
person claiming proprietorship over the mark does
not him or herself use the same in conjunction with
his or her goods or services. It is therefore usual to
find that a central agency or association usually
administer the mark in question and acts as the
certifying authority, which in turn authorises the use
of the mark by producers/manufacturers in relation
to their own goods. ‘Certification trade marks’ can
be registered under the Trade Marks Act of India.

It may be noted that India has recently established a

“silk mark” to certify genuineness of silk textiles in
India and Darjeeling, a certification marks for a
specific type of Tea produced in Darjeeling and can
be marketed, provided the product satisfies the set
quality standards. Similarly, WOOL MARK certifies
that the goods on which it is used are made of 100%
wool and LABEL ROUGE use for high quality
agricultural products in France.

In its simplest form, the principle of passing-off

states that ‘No-one is entitled to pass off his 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

pg. 45
countries, does not have a statute specifically dealing
with unfair competition, most of such acts of unfair
competition can be prevented by ways of action
against passing off.

In India, GIs have been governed by common law

principles, which enable an aggrieved person to file
an action of ‘passing off’ for protection of his right.
In other words, it is based on usage and common
knowledge about the characteristic features and
quality or reputation that the product has already
earned in the market either by publicity or by its
presence in the market. A survey of decided cases
reveals that Indian courts have maintained the action
of passing off to protect GIs.

 SCOTCH WHISKY ASSOCIATION

V.

PRAVARA SAHAKAR KARKHANA LTD.,

AIR 1992 BOM 294.

is a leading case on this subject. In this case, the

plaintiff Scotch Whisky Association, a company
incorporated under the Companies Act of United
Kingdom instituted the passing off action against the
defendants- a manufacturer of various brands of
Indian Whisky like ‘blended scotch whisky’ or
Blended with Scotch’ under various brand names,
‘Drum Beater’ and ‘God Tycoon’. On these facts,
the Bombay High Court held: The Plaintiff had

pg. 46
sufficient interest to prevent passing off of Indian
Whisky manufactured by the defendant and to
prevent damage to reputation and goodwill of Scotch
whisky. The defendants were passing off their goods
as blended Scotch whisky which in fact they were
not. The case therefore merited interim injunction.
The defendants resorted to unfair means by using the
words ‘Blended with Scotch’ and indulged in
colourable imitation and unfair trading in an attempt
to harvest unjust benefits by appropriation of
plaintiff’s goodwill. The defendant was restrained
from advertising or offering for sale or distributing
in any country Whisky, which is not Scotch whisky.

It is evident from the aforesaid decision that the

judiciary in India has consistently extended the
umbrella of legal protection to GIs even in the
absence of any legislation in force at that point of
time.

 GEOGRAPHICAL INDICATIONS OF
GOODS (REGISTRATION AND
PROTECTION) ACT, 1999 – AN ANALYSIS
 HISTORICAL BACKGROUND OF THE GI
ACT

The need for separate legislation for GIs in form of

the GI Act was felt in India due to some important
reasons.

 SOCIO-ECONOMIC PERSPECTIVE

Geographical Indications are intellectual property

rights. Their function is to identify products on the

pg. 47
market, similar to trademarks and trade names. Well
protected and pro-actively used, GIs are a very
interesting marketing tool because they can convey a
lot of information from the producer to the
consumer. GI give the producers of a region the
exclusive right to use the indication for their
products originating from that region. It also means
that they have the right to prohibit any unauthorised
use usurpation or imitation of the sign on a product
that is not from the designated area or which does
not have the qualities guaranteed by the GI. Rooted
in the soil of the region for which they stand,
geographical indications contribute to the socio-
economic improvement of regions around the world.
They create employment, contribute to the regulation
of the market and encourage the diversification of
production. In addition, they protect natural treasures
and maintain the cultural heritage.6 Much like
trademarks, the economic rationale of GIs is based
on the ‘information asymmetry’ between buyers and
sellers in the market and role of reputation, conveyed
through distinctive signs, in talking such asymmetry.
Thus GI acts as a signalling device that helps the
producers to differentiate their products from
competing products in the market and enable them to
build a reputation and goodwill around their products
which often fetch a premium price. Finally,
geographical indications contribute to sustainable
development. This makes them valuable to producers
in both they wish to offer their diverse products,
identified by the GIs, on the globalised market. 7

pg. 48
Given its commercial potential the legal protection
of GI assumes enormous significance. Without such
protection, competitors not having legitimate right
on a GI might ride free on its reputation. Such unfair
business practice result in loss of revenue for the
genuine right holders of the GI and also misleads the
consumers. Moreover, such practices may eventually
hamper the goodwill and reputation associated with
the GI. In order to rule out its misuse and to tap the
potential economic and socio-economic benefits
emanating from this IP, it is essential to ensure an
appropriate legal protection for GIs at the national
level.

 JUDICIAL PERSPECTIVES

The issue of protection of GI gained particular

interest and attention in India only when a patent was
obtained for Basmati Rice in the United States by the
Rice Tec Inc. and the widespread report of tea from
other countries being passed off as Darjeeling Tea.
India realised that if it needed to protect its own
geographical indications globally, it needed to
protect them at the national level to begin with.

 ANALYSIS OF THE GI ACT

Prior to enactment of GI Act,25 there was no law for

the protection of geographical indication in India.
The need and justification for this law has been aptly
stated in the statement of object and reasons as
under: “At present there is no specific law governing
geographical indications of goods in the country

pg. 49
which could adequately protect the interests of
producers of such goods. Exclusion of unauthorised
persons from misusing geographical indications
would serve to protect consumers from deception,
add to the economic prosperity of the producers of
such goods and also promote goods bearing Indian
geographical indications in the exports market.
Unless a geographical indication is protected in the
country of its origin there is no obligation under the
agreement on Trade Related Aspects of Intellectual
Property Rights (TRIPs) for other countries to extend
reciprocal protection. India would, on the other hand,
be required to protection to goods imported from
other countries which provide for such protection. In
view of the above circumstances, it is considered
necessary to have a comprehensive legislation for
registration and for providing adequate protection for
geographical indications”. Until recently and in past,
protection from such misuse of geographical
indications was granted through passing off action in
courts26 or through certification marks. However, in
order to provide better protection to geographical
indications, the Parliament enacted Geographical
Indications of Goods (Registration and Protection)
Act, 199928 which is quite similar and in lines with
the New Zealand GI Act. This received the assent of
the President of India on the 30th December 1999.
This Act seeks to provide for registration and better
protection of geographical indications relating to
goods. It excludes unauthorised persons from
misusing geographical indications. This would

pg. 50
protect the interest of producers, manufacturers and
thereby consumer from being deceived by the falsity
of geographical origin to economic prosperity of the
producer of such goods and promote goods bearing
geographical indications in export market. Unless a
geographical indication is protected in the country of
its origin, there is no obligation under the agreement
under Article 22 of the TRIPs agreement for other
countries to extend reciprocal protection. It is in this
context that the Act was enacted.

pg. 51
XI. CASE LAWS
 Tea Board vs Itc Limited AIR2010 CAL (3137)

The GI Act announces in its preamble that it

provides for the registration and better protection
ofgeographical indications relating to goods. In
its statement of objects and reasons, the bill that
preceded the Act proclaimed that unless
a geographical indication was protected in the
country of its origin, there would be no
obligation under the agreement on Trade Related
Aspects of Intellectual Property Rights (TRIPS)
for other countries to extend reciprocal
protection and that would be to the detriment of
goods bearing Indian geographical indications
in the international market. Section 2(1)(f) of the
GI Act defines "goods" to mean any agricultural,
natural or manufactured goods or any goods of
handicraft or of industry including foodstuff. The
following sub-section gives an inclusive
definition of "indication" to imply any
name,geographical or figurative representation
or any combination of them conveying or
suggesting the geographical origin of the goods
to which it applies. Section 2(1)(e) of the GI Act
is of the very essence of this statute:

pg. 52
Where two or more persons are authorised users
of geographical indications, which are identical with or
nearly resemble each other, the exclusive right to the use
of any of thosegeographical indications shall not
(except so far as their respective rights are subject to any
conditions or limitations entered on the register) be
deemed to have been acquired by anyone of those
persons as against any other of those persons merely by
registration of the geographicalindications, but each of
those persons has otherwise the same rights as against
other persons as he would have if he were the sole
authorised user."

 Telefonaktiebolaget Lm Ericcson ... vs

Union Of India & Ors. AIR 2011 DEL
(1104)

as per definition of "intellectual property" given in Rule

2(b) of the IPR Rules, patent as defined in the Patents
Act, 1970 is also included as the intellectual property.
Likewise, "right holder" is the person who is the owner
of protected intellectual property right. The IPR Rules,
2007, therefore, applies to all kinds of intellectual
properties namely Copyright, Trade Marks , Patents as
well as geographical indications. These Rules do not
put Trade Marks and Copyright in one category and
Patents and geographical indications in other category

pg. 53
  Khoday Distilleries Limited vs The Scotch
Whisky Association AIR 2008 SC(4179)

In any event, neither the TRIPS agreement nor the

provisions of the GeographicalIndication Act, prevent
the operation of Section 56 of the Act. The rights created
under the TRIPS agreement or under
the Geographical Indication Act are in addition to the
provisions of the Trade Marks Act. Article 22 of TRIPS
requires member states to make provisions for
protecting geographical indications and make
provisions for preventing the acts resulting in unfair
competition.

 Lg Electronics India Pvt. Ltd. vs Bharat

Bhogilal Patel & Others AIR 2011 DEL
(2982)

Clause 4 of Notification No.305/96/2004-FTT vide

Circular No.41/2007-Customs dated 29.10.2007 is
reproduced as under :

"4. It is pertinent to mention that while the mandatory

obligations under Articles 51 to 60 of the TRIPS dealing
with border measures are restricted to Copyright and
Trade Marks infringement only, the said Rules deal with
Patents, Designs and Geographical Indications violations
as well, in conformity with the practice prevailing in

pg. 54
some other countries, notably EU countries. While it is
not difficult for Customs officers to determine Copyright
and Trade Marks infringements at the border based on
available data/inputs, it may not be so in the case of the
other three violations, unless the offences have already
been established by a judicial pronouncement in India
and the Customs is called upon or required to merely
implement such order. In other words, extreme caution
needs to be exercised at the time of determination of
infringement of these three intellectual property rights."

pg. 55
CHAPTER-5- CONCLUSION

The GI Act, which came into force, along with the GI

Rules, with effect from 15 September 2003, has been
instrumental in the extension of GI status to many goods
so far. The central government has established the
Geographical Indications Registry with all-India
jurisdiction, at Chennai, where right-holders can register
their GI. Unlike TRIPS, the GI Act does not restrict its
special protection to wines and spirits alone.

The central government has discretion 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.

Registration of GI is not compulsory in India. If

registered, it will afford better legal protection to

facilitate an action for infringement.

Once a GI is registered in India, it becomes relatively

easier to seek protection in other countries, particularly
the member countries of WTO.

pg. 56
BIBLOGRAPHY

Dr.M.K. Bhandari – Intellectual Property Rights

B.L Wadehra- Law Relating to Intellectual Property Rights

Dr. S.R.Myneni – Law of Intellectual Property Rights

Menu Paul – Intellectual Property Laws

pg. 57