How and When To Use Geographical Indications (GI) - 1587132596

GI & DESIGNS LAW
How and When to Use Geographical

Indications (GI)

GI & Designs Law
How and When to Use Geographical Indications (GI)
What is a Geographical Indication or GI?

Italian Parmigiano, Mexican Tequila, French Roquefort, Bikaneri Bhujia, Kolhapuri Chappals,
Mysore Silk are all some examples of Geographical Indications and appellations of everyday
life.

The Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act), in
Section 2(e), defines the term “geographical indication” as:

an indication which identifies such goods as agricultural goods, natural
goods or manufactured goods as originating, or manufactured in the
territory of a country, or a region or locality in that territory, where a
given quality, reputation or other characteristic of such goods is
essentially attributable to its geographical origin and in case where such
goods are manufactured goods one of the activities of either the
production or of processing or preparation of the goods concerned takes
place in such territory, region or locality, as the case may be.

Thus, the following types of goods are covered under the ambit of GI:

● Agricultural (example, Basmati rice)
● Natural (example, Makrana marble)
● Handicraft or of any industry (Example, Kashmiri pashmina)
● Food stuff (example, Dharwad pedha)

Note the limitation that a given characteristic must be attributable to the geographical
origin of the goods and if they are manufactured, a production activity must take place in
that geographical region.

Thus, a geographical indication is tied to the territory. You might be able to purchase a
German car which is 100% manufactured by the Indian subsidiary (with the German brand
name, because that is a trademark), or a McDonalds burger which is entirely sourced and
produced from India, but for a geographical indication it is necessary that one of the
activities of production have taken place in that location.

Also, it is important that some unique characteristic of the product is imparted by the
location, otherwise GI protection will not be available. For example, Kentucky Fried Chicken
can be a trademark, but it cannot obtain GI protection unless it is established that certain
quality is imparted to the chicken in Kentucky.

A trademark which can be exploited by an owner or the licensees, but GI can be exploited
by multiple categories of people. For example, in India, multiple exporters can use the mark
of ‘Darjeeling Tea’. The ‘Darjeeling Tea’ geographical indication is registered by the Tea
Board of India, which has rights to authorize its usage.

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shall attract suitable action under applicable law.

GI & Designs Law
How does this apply to the service industry?

Unless you are providing specific services to GI product manufacturers, exporters or
agriculturists, the chapter on GI protection may not be relevant for service industry.
Is GI relevant to businesses or merely communities?

Since many manufacturers or growers of products which have GI are from rural
backgrounds (for example, the tea growers of Darjeeling), GI has an element of public
interest as well.

International consensus on GI

The laws relating to GI were introduced in India after the ratification of the Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS), signed by all the WTO
member countries. The TRIPS agreement sets a minimum standard of protection for goods
registered under as a GI, which is supposed to be followed by all members of the World
Trade Organization (WTO).

Article 22 of the TRIPs agreement relates to GI with respect to ordinary goods and Article 23
with respect to wines and spirits.

[TRIPS gives special protection to wines and spirits because for infringement of GI of other
goods one has to prove two things: that the mark does not communicate the true origin of
the goods and that the customers have been misled or confused. But for wines and spirits,
it is sufficient to prove that the mark does not indicate the true origin of goods. Also for
wines and spirits words such as “kind”, “type”, “style”, “imitation” cannot be used with
indication of true origin. For other goods, this may be acceptable based on the evidence
that customers were not confused or misled.]

One concern under the TRIPs Agreement has been that it accords GI special protection to
wines and spirits. How does it achieve that? With respect to infringement of ordinary GIs,
Article 22 requires establishment of customers being misled or confused as well (apart
from establishing that the mark does not communicate the true origin of goods), but with
respect to wines and spirits, the very fact that the mark is not indicative of the true origin of
goods is sufficient ground for invalidation. Further, with respect to wines and spirits,
indication of true origin of the goods or its accompaniment with expressions such as “kind”,
“type”, “style”, “imitation” or the like is also not excusable. With respect to other goods, such
expressions may be acceptable based on the evidence that customers were not confused
or misled.

However, products other than wines and spirits, such as Basmati Rice and Darjeeling Tea
cannot do not automatically enjoy such protection as per TRIPs Agreement.


GI & Designs Law
You will notice that entities owning the Basmati or Darjeeling Tea GI have sought additional

kinds of intellectual property protection under Indian law and in other jurisdictions, so that
they can protect products adequately.

Consequences of Non-Registration of Geographical
Indications
Advantage of GI Registration
GI registration provides the registered producer and the authorized user the exclusive right
to apply the registered GI on the specified goods.

Further, as per Section 20, proceedings for prevention of infringement or recovery of
damages for infringement of an unregistered GI cannot be instituted. You will be restricted
to claims for the remedy of passing off only (as is the case if your trademark is
unregistered).

As per Section 21 of the Act, registration enables the proprietor or the authorized users the
right to obtain relief in respect of infringement of the geographical indication in the manner
provided by this Act, and to exclusively use the geographical indication in relation to the
goods in respect of which the GI is registered. The registry can impose limitations on the
exclusive right to use the GI, at the time of registration itself.

Remedies for Infringement of GI
Any use of the GI by someone who is not a registered or authorized user to mislead people
about the origin of goods or uses them in a way that leads to unfair competition constitutes
infringement. Unfair competition means activities which confuse buyers with a competitor’s
products, false allegations made to discredit, etc. Using statements which create similarity
such as ‘kind’, ‘like’ or ‘type’, etc. constitute infringement. For example, you cannot market
tea grown in Niligiri Hills as ‘Darjeeling-style’ tea.

As per Section 22, where two or more persons are authorised users of geographical
indications, each of them can individually initiate a proceeding against a violator, like an
owner.

The infringement suit must be filed at a civil court which has the monetary jurisdiction to
try a civil suit, claiming remedies such as injunction, nominal damages and damages on
account of profits. (See Sections 66 and 67 of GI Act)

How to register GI in India
The Geographical Indications of Goods (Registration and Protection) Act, 1999, along with
the Geographical Indications of Goods (Registration and Protection) Rules, 2002 govern GI


GI & Designs Law
registration. For reference, you can go through the list of registered geographical
indications here.
Submission of application form with the selected names

Registration of GI is governed by Sections 11-16 of the GI Act and Rules 32-55 of the GI
Rules. An individual, an association or persons, an organization or any authority can apply
for GI. This is important as many GIs are owned by statutory authorities. For example, Tea
Board established under the Tea Act, 1953 owns Darjeeling Tea GI and the Agricultural and
Processed Food Products Export Development Authority (APEDA) under the APEDA Act,
1985 owns the Basmati Rice GI. The application must be made to the GI Registry (located in
Chennai) with certain details. Some of the details required are unique and worth
mentioning, to illustrate the difference between GI and other forms of intellectual property
such as trademarks.

As per Section 76, application for registration can be filed by the person itself, a lawyer or a
registered geographical indications agent. If the applicant is not based in India, an address
for service of documents in India must be mentioned.

The application form must be accompanied with the following details:

● Description of the appearance of the geographical indication (words, images, etc.).
Note that the following categories of names cannot be registered as per Section 9 of
the Geographical Indication of Goods (Registration and Protection) Act, 1999:

1. Names which may cause confusion or deceive the public
2. Names which are scandalous in nature
3. Names which are contrary to the law in force at the time,
4. Names which may hurt religious sensibilities
5. Generic names, i.e. which are not unique

● The connection between the geographical indication itself and the region (plus the
unique characteristics of the product that are imparted by that region)

● the relevant class of goods (see the exhaustive list of GI classes here)

● the geographical map of the territory of the country or region or locality in the
country in which the goods are produced, originate or are being manufactured

● Details of producers of goods for which GI is proposed to be initially registered.

● Statement (through affidavit) establishing how the applicant represents the interest
of the relevant association of persons/ producers / authority established under law

● A benchmark or standards for use of the geographical indication (pertaining to
production, exploitation, making or manufacture of the goods having specific


GI & Designs Law
quality, reputation, or other characteristic of such goods that is essentially
attributable to its geographical origin

● detailed description of the human creativity involved, if any or other characteristic
from the definite territory of the country, region or locality in the country, as the
case may be

● Details of the mechanism or inspection structure to ensure that the standards,
quality, integrity and consistency or other special characteristic in respect of the
goods to which the geographical indication relates which are maintained by the
producers, maker or manufacturers of the goods, as the case may be

● where the geographical indication is similar to another indication (i.e. a
homonymous indication), material factors differentiating the application and
particulars of protective measures adopted by the applicant to ensure consumers
are not confused or mislead or confused.
Acknowledgement of Receipt and Examination

Upon receipt of the application, an acknowledgment is issued. The application is then
examined by the Registry along with a consultative group of experts and an Examination
Report is issued within 3 months.

The applicant has a period of 2 months to remedy any defects.
Advertisement and Objection Phase

The application is then advertised in the Geographical Indications Journal within three
months of its acceptance. An notice of opposition to the application can be submitted
within 30 days. The opponent will have a timeframe to submit additional evidence to
support the opposition. The Registrar has the power to conduct hearings and take a
decision.
Registration
When no notice of opposition is filed or when the opposition is dismissed and its appeal
period is over, the Registrar can register the GI. The date of filing of the application will be
the date of registration. A certificate with the seal of the GI registry shall be issued to the
applicant. Appeal against the registration can be made to the Intellectual Property
Appellate Board within three months of the registration of the item. A GI is valid for 10
years and can be renewed.


GI & Designs Law
Case studies on GI and Use of Certification Trademarks to

protect GI
Unlike trademarks, you will notice that GI ownership and enforcement is largely undertaken
by industry associations, self-regulating bodies or statutory organizations.

You will also notice that once such bodies obtain GI, they issue further internal certification
standards to maintain quality. Individuals and companies who want to use the GI for the
products then need to comply with the full range of requirements, in addition to applicable
GI laws.

For example, in the case of India, for products such as Basmati, there are additional Export
Inspection Council of India (EIC) or Agricultural Produce Export Development Authority.

Take a look at the EIC’s certification scheme for Basmati rice export here (will not be
applicable for domestic sale of Basmati).

The examples of Darjeeling tea and Scotch Whisky Association below will explain this in
more detail.

At the same time, it is possible to develop new products and obtain GI over them for
individuals and companies. You can see the list of registered GI here, although the list does
not mention who the owner of the GI is.

Darjeeling tea

Image - Darjeeling Tea GI

India is one of the largest producers of tea in the world and a huge exporter of tea. The first
GI ever granted in India was in favour of Darjeeling Tea.

Do you know who owns the GI of Darjeeling Tea?

The Tea Board of India is a statutory body established under the Tea Act, 1953. It owns the
following forms of intellectual property in connection with Darjeeling Tea:

- DARJEELING word and logo are registered certification marks of Tea Board under
Trademarks Act, 1999;
- DARJEELING word and logo were the first Geographical Indications to be registered
in India in the name of the Tea Board under the Geographical Indications of Goods
(Registration and Protection) Act, 1999;


GI & Designs Law
- DARJEELING logo is copyright protected and registered as an artistic work under
Copyright Act, 1957

Darjeeling word and the logo above has been registered as certification, collective or other
forms of protected marks (depending on the law in the region) in US, UK European Union,
Belgium, Netherlands, Luxembourg, Germany, Austria, Spain, France, Portugal, Italy,
Switzerland, former Yugoslavia, Egypt, Lebanon, Canada, Japan and Russia. Applications for
registration are pending in other countries as well.

This enables the Tea Board to protect the use of the Darjeeling Tea mark in other countries
as well.

Further, as a prerequisite for domestic and international protection of Darjeeling as a
certification trademark and a geographical indication, the Tea Board has formulated and
put in place a comprehensive certification and licensing scheme (see here), which
comprises of several components, as follows:

● Labeling guidelines and inspection procedures put in place to ensure the integrity
and purity of the supply chain for grant of the Certificate of Origin by the Tea Board.
● Tests for determination of whether the tea is authentic - these include growing of
tea in specific gardens, processing in factories in a predefined area and confirmation
of its unique taste by expert tea tasters
● Advisories informing the public to look for Tea Board’s certification and request
number from the Tea Board to be assured of its authenticity

Notice how the Tea Board has not restricted itself to legal enforcement only but has
reached out to direct customers to enforce its GI. This is an important strategic tool.

As per customs procedures (see the notification available here), Indian government has
made exports of Darjeeling Tea subject to mandatory proof of such certificate of origin,
thus adding further requirements.

Examples of Enforcement of Darjeeling Tea GI

The Tea Board has been very active in enforcing GI rights both in India and internationally.
This is connected with India’s international obligations under TRIPS which mandates that no
country is obliged to protect Geographical Indications unless it is demonstrated that such
Geographical Indications enjoy home protection in their countries of origin.

In the case of Darjeeling Tea, the Tea Board had sued ITC hotels for creating a Darjeeling
Lounge in its Kolkata hotel, but the petition was dismissed by the Calcutta High Court
(Single Judge) as there was no connection or confusion that occurred in connection with
tea, which was the subject matter of GI (see the court order here). This decision was upheld
in appeal by the Calcutta High Court (Division Bench) (see SpicyIP post here for reference).


GI & Designs Law
Basmati Rice

Basmati rice is a special type of rice, with long grains and a unique aroma which
differentiates it from other varieties of rice. It is found in the Indo-Gangetic Plains. Basmati
rice has been a part of intense GI conflict between various states, and even nations like
Pakistan and the United States.

RiceTec, a Texas-based company, developed ‘Texmati’ or ‘American Basmati’, which they
patented under the United States Patent and Trademark Office (USPTO). This was
challenged by a few Indian NGOs claiming that the term “basmati” could only be used for
rice grown in India and Pakistan. After presenting all the evidence, the NGOs won, and
RiceTec withdrew its key claims.

In India, the Agricultural Export Development Authority (APEDA) had filed for registration of
Basmati GI for rice produced from seven states, namely, Punjab, Haryana, Himachal
Pradesh, Uttarakhand, parts of Uttar Pradesh and Jammu & Kashmir. This was objected by
certain entities in Madhya Pradesh and the GI Registry upheld the objection stating that
there was no basis to restrict the application for the GI to those states and exclude Basmati
producing regions of Madhya Pradesh, Bihar and Rajasthan. The Registry directed the
APEDA to amend its application. The decision of the Registry is attached for reference
purposes as a download.

Intellectual property protection is not always sufficient to protect export trade if it
competes with the domestic interest of another country. Different countries may impose
additional legal regulations to protect their domestic industry. For example, a country can
enact a regulation to ban the import of rice of a certain type, and that regulation can impact
Basmati imports. How should Indian exporters deal with such situations? The WTO
Agreement on SPS (Sanitary and Phytosanitary Measures) imposes certain limitations on
the power of different nations to impose such restrictions. Rules and procedures on the
certificate of origin of different products have also been agreed upon. In India, the Export
Inspection Council (EIC) is one organization which works on standardization of these
processes. For example, the EIC’s certification on Basmati Rice is recognized in the
European Union (see here and here). Exporters will need to know that.

Scotch Whisky and GI Protection
Scotch Whisky’s GI status in India

Like other forms of intellectual property such as trademarks and patents, GI protection is at
a national level by default, unless you have filed in different countries for protection. This
was the problem for Scotch Whisky as well, which was not initially registered in India.

In 2006, the Scotch Whisky Association (SWA) filed a suit against Golden Bottling Limited for
geographical indications infringement. The defendant was manufacturing “Red Scot” which
was allegedly misleading for the consumers. The case of Scotch Whisky Association v. Golden


GI & Designs Law
Bottling Limited was heard by the Delhi High Court in 2006. The definition of “Scotch Whisky”

under UK Scotch Whisky Act, 1988 and the Scotch Whisky Order, 1990 accorded the status
of a geographical indication to the product. Since the same was not accorded the status of
GI in India, the court did not grant a relief for GI infringement, but instead granted INR 5
lakhs as damages for passing off (see the order here).

So, action was available only in form of the tort of passing off. The case was settled outside
court. In 2011, the government recognized Scotch whisky as per the definition under
Section 2(e) of the GI Act (see the Economic Times story here). You will now find scotch
whisky in the official registered GIs list here.

Monetization of GI and transfer
As you will see in the examples above, additional protection and mechanisms are followed
(such as trademark protection, protection from domestic export / import laws or the
procedures of an industry association which controls the implementation of the GI) in
addition to GI registration, to comprehensively protect and monetize GI. We will now look at
other contractual mechanisms available to monetize GI.

Unlike other forms of intellectual property which are monetized heavily through licensing,
franchising and assignment (Kingfisher had pledged its trademarks to State Bank of India
for more than hundred crore rupees to raise finance), a right to a registered geographical
indication cannot be subject to assignment, licensing, pledge, mortgage or any such
agreement (see Section 24 of the GI Act). Thus, the only opportunity to exploit a GI is by
being a proprietor or an authorised user.
How to become an authorized user of a registered GI

As per Section 17, an authorised user needs to apply to the Registrar in Form GI-3 with
certain supporting documents, such as:

● a statement of case explaining how he is the producer of the GI-protected product,

● A letter of consent from the registered proprietor

The application will be examined by the Registrar, who will examine the request and issue a
report. The same provisions as are applicable with respect to with respect to filing,
examination and opposition of a GI registration application also apply to applications for
registration as authorised user of a GI. Registration as an authorised user is evidence by
entry in the Register and issuance of a registration certificate.

(See also Rules 56 and 57 of the GI Rules).


GI & Designs Law
Renewal of GI
A GI registration or registration as an authorised user is valid for 10 years. A request for the
renewal of a GI can be filed by the registered user at any time within the last six months
before the expiry of the registration. The Registrar may request information about the use
of the GI at the time of renewal if he is of the opinion that the GI is not being used.

Interrelationship of Trademark with GI
Geographical indications and trademarks have a close connection, both in terms of their
definition and their enforcement. For example, a GI is defined as an indication, and a
trademark is defined as a mark, which are both similar terms. GI-related rights are typically
enforced against others who want to obtain a trademark or who are using GI indications in
respect of their own products without due authorization by the GI owners. For example,
consider that a UK based tea manufacturer X plc intends to register a trademark by the
name of “British Darjeeling Tea” in UK, for tea grown in Sussex. In that case, the Tea Board
of India, as the owner of the GI (if the mark is protected in UK) will have the right to oppose
registration. If the brand is used by the UK company without registration, even then it can
sue for infringement of the GI. As per Section 25 of the GI Act, the Registrar of Trademarks
will on his own or on request of an interested party, refuse or invalidate a trademark if it
uses any geographical indications to confuse or mislead people about the origin of the
goods.

As per Section 26 of the GI Act, if a trademark is registered or where rights to use a mark
have been established prior to the filing of a GI application, the trademark will continue to
be registered or otherwise valid (for the purpose of passing off), and will not be considered
to be infringement of GI. At the same time, that does not preclude the filing of a separate GI
application. At the same time, a person can use his own or predecessor’s name in business
(in a way that does not confuse or mislead people), irrespective of any GI registrations. No
action in connection with the use or registration of a trade mark shall be taken after of five
years of infringement of a geographical indication becoming known to the registered
proprietor or authorised user.

In some cases, trademark law rights are used to protect GI by GI-owners, such as the case
of Darjeeling Tea above.

Conceptually, as per Section 2(zb) of the Trade Marks Act, a “trade mark" means a mark
capable of being represented graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include shape of goods, their packaging
and combination of colours. Thus, trademark typically distinguishes the products or services
of an individual or an entity, while GI distinguishes products from a region. For example,
Nike’s trademark is in the form of a tick, which identifies the company as the manufacturer.
A GI, however, needs to be associated with an owner / user plus a particular geographical
location. The products must have a geographical connection with the location which
imparts a specific quality to them. This is not required for trademarks.


GI & Designs Law
GI is applicable only to goods, not services, while trademark is applicable to both.


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GI & DESIGNS LAW

How and When to Use Geographical

What is a Geographical Indication or GI?

How does this apply to the service industry?

Is GI relevant to businesses or merely communities?

You will notice that entities owning the Basmati or Darjeeling Tea GI have sought additional

Submission of application form with the selected names

Acknowledgement of Receipt and Examination

Advertisement and Objection Phase

Case studies on GI and Use of Certification Trademarks to

Scotch Whisky’s GI status in India

Bottling Limited was heard by the Delhi High Court in 2006. The deﬁnition of “Scotch Whisky”

How to become an authorized user of a registered GI

GI is applicable only to goods, not services, while trademark is applicable to both.

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