Law

Intellectual Property
Geographical Indications- Substantive
Conditions for Registration

Development Team
Role Name Affiliation

Principal Investigator Professor (Dr.) Ranbir Singh Vice Chancellor, National

Law University, Delhi
Paper Coordinator Mr. Yogesh Pai Assistant Professor of
Law, National Law
University, Delhi
Content Writer (CW) Mr. Pratyush Kumar Faculty, National Law
University, Delhi
Content Reviewer (CR) Mr. Yogesh Pai Assistant Professor of
Law, National Law
University, Delhi
 Module Detail
Subject name Law

Paper name Intellectual Property

Module name/ Title Geographical Indications- Substantive Conditions for

Registration
Module Id Law/IP/#22

Pre- requisites Basics of IP, different types of IPRs, economic justifications;

trademarks
Objectives  To understand the concept of GI protection;
 The requirement in TRIPs
 The substantive conditions for registration of GIs under
Indian law

Key words Geographical Indications; Darjeeling Tea, appellations of origin;

indications of source; TRIPS; registration of GIs

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Learning Outcome:
 The student will understand the basis and the context of protection for GIs
 What are GIs and what are not GIs
 Is GI protection distinct from trademarks
 Can GIs be protected through several different legislations
 The requirement in TRIPs
 The substantive conditions for registration of GIs under Indian law

Definition and Meaning

“A geographical indication is a sign used on goods that have a specific geographical

origin and possess qualities, reputation or characteristics that are essentially
attributable to that place of origin.”1
So, essentially, any sign which indicates that a certain product originated from a
particular place and when that product has any quality attributable such place, the,
such indication is called a Geographical Indication.
Before we see some examples, it is essential that we consider two other terms:
“Appellations of Origin” and “Indications of Source”.
“Indications of Source”, it is pertinent to state that the term has not been defined in
any of the International Treaties. Though the term as been used in the Paris
Convention and the Madrid Agreements, the definition can only be inferred to mean
any expression or sign that indicates that a product or service originates in a
country, a region, and a specific place where the product originated, like, Made in
India. Also, the Convention does not seem to include any quality attribution as
essential to an ‘Indication of Origin’.
“Appellations of Origin” has been defined in the Lisbon agreement to mean “the
geographical denomination of a country, region, or locality, which serves to
designate a product originating therein, the quality or characteristics of which are

1
Geographical Indications, accessible at http://www.wipo.int/geo_indications/en/

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due exclusively or essentially to the geographical environment, including natural and
human factors.”2
From this definition, three ingredients are identifiable3:
(a) Direct geographical name: Either the country, the region or the locality;
(b) Designating of a product’s origination
(c) ‘Quality and characteristics’ attributable to the designated area.

An example of an Appellation of Origin is Champagne, which is used to indicate

that a special kind of sparkling wine originating in the Champagne region of
France.
In India, Section 2(1)(g) of the Geographical Indications of Goods (Registration and
Protection) Act, 1999 defines “geographical indication”, in relation to goods, to mean:
“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.”
For the purposes of this clause, any name which is not the name of a country, region
or locality of that country shall also be considered as the geographical indication if it
relates to a specific geographical area and is used upon or in relation to particular
goods originating from that country, region or locality, as the case may be.
In other words, Geographical Indications are indications in any form used to identify
a source of origination of a product, be it a naturally grown one or a manufactured
one. They are primarily used for promotions by intimating the consumers of the
source of a particular product.

Geographical Indication and Trademarks

The difference between Trademarks and Geographical Indications is pretty simple.

But before we embark on that, let us discuss a few similarities between Trademarks
and Geographical Indications. A first point of contact, with which everyone is
familiar, is that both are distinctive symbols. Another point of contact stems from the
foregoing that is, both differentiate some products from others.

2
Lisbon agreement, of October 31, 1958, as revised at Stockholm on July 14, 1967, and as amended
on September 28, 1979, Article 2 (1)
3
Dr. Dwijen Rangnekar, Geographical Indications: A Review of Proposals at the TRIPS Council:
Extending Article 23 to Products other than Wines and Spirits

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However, trademarks differentiate the products made by different producers, and
geographical indications differentiate one group of products from others that don’t
come from the region it protects. This property of a Geographical Indication makes it
a Collective Mark. Another difference is that trademarks arise from the creative
genius of man, while geographical indications are not created; they are there, in nature
due to the existence of human and natural factors. The third difference between them
is that unlike the case of trademark, social recognition must already be recognized
before the idea and need for their protection arise.4

Geographical Indications protection under TRIPS

Definition.
A “geographical indication” identifies goods that originate from a particular place
“where a given quality, reputation, or other characteristic of the good is essentially
attributable to its geographical origin.”5
Provisions against misleading the public
Member states are required to provide the mechanisms that enable interested parties
to prevent untruthful and misleading uses of geographical indications. In other words,
tea growers in Nepal may not call their tea “Darjeeling or Kangra,” even if they are
genetically identical to tea grown in Drajeeling or Kangra. In addition, literal truth is
not a defense if the use of the geographical indication misleads the public.6 Therefore,
tea growers in Drajeeling (which is a place somewhere else than the Darjeeling in
West Bengal, India) may not market their tea as “Darjeeling” tea. Member states
whose legislation would otherwise permit this use must refuse to register or cancel
registrations of misleading geographical indications. Indian Legislation, the GI Act,
1999 provides exactly for this.7
Additional Protection for Geographical Indications for Wines and Spirits
(Article 23)
Articles 23 and 24 provide broader protection for geographical indications for wines
and spirits than for other products. An interested party need not prove that the public
has been misled by the use of the indication in order to obtain relief. Even if the
public is not misled by an advertisement for “St. Emilion-style Bourdeaux,”
“imitation Calvados,” or “Nuits St. Georges quality wine,” such a use violates Article

4
WIPO/GEO/BEI/07/4, Geographical Indications And Trademarks: Combined Efforts For A Stronger
Product Identity,The Experience Of Cuban Cigar Trademarks And Geographical Indications
5
TRIPS, art. 22(1).
6
See TRIPS, art. 22(4).
7
The Geographical Indications of Goods (Registration and Protection) Act, 1999 [hereinafter, GI Act,
1999] (48 of 1999) published in The Gazette of India , Ext., Pt. II, S.1, dated 30-12-1999; s 9.

5
23.8A grandfather clause, however, permits continuing uses of indications initiated
more than ten years preceding the end of the Uruguay Round or any good faith use
initiated before that date.9 In addition, until a geographical indication is protected in
its country of origin, rights acquired in good faith through use or registration of a
trademark incorporating the indication are immune from attack.10
The additional protection for both wines and spirits includes three elements:
• the provision of the legal means for interested parties to prevent the use of a
geographical indication identifying wines and spirits, not originating in the
place indicated by the geographical indication;11

• the possibility to refuse or invalidate the registration of a trademark for wines

or spirits which contains or consists of a geographical indication identifying
wines or spirits at the request of an interested party;12

• the call for future negotiations aimed at increasing protection for individual
geographical indications for wines and spirits.

An “extra-additional” protection by the TRIPs Agreement for wines only emphasizes

the need to accord protection for each geographical indication for wines in the case of
homonymous indications and the establishment of a multilateral system of
notification and registration of geographical indications for wines eligible for
protection in the jurisdictions of those WTO Members participating in the system.13
To emphasize the lack of protection for generic geographic indications, Article 24
expressly preserves the right to use geographical indications that are “identical with
the term customary in common language as the common name for such goods.” 14
“Burgundy,” “rhine,” and “chablis” for wine would seem to fall into this category
within the borders of the United States, as certainly would “champagne.” Although
the French have worked hard to deter the generic use of “champagne” on naturally
carbonated, sparkling, white wine beverages that do not originate in the region
surrounding Rheims, France, they have failed in the United States to influence the
“common language” in which “champagne” is the “common name” for sparkling
wine rather than a source indicator. Arguments against protection would not apply,

8
See TRIPS, art 23(1) (prohibiting geographical indications on “wines not originating in the place
indicated by the geographical indication ... even where the true origin of the goods is indicated or the
geographical indication is used in translation or accompanied by expressions such as ‘kind,’ ‘type,’
‘style,’ ‘imitation,’ or the like”).
9 See id. art. 24(4).
10
Id. art. 24(5).
11
Id. art. 23(1).
12
Id. Art. 23(2)
13
Id. art. 23(4)
14
Id. art. 24(6).

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however, in countries where consumers expect that all “burgundy” and “champagne”
come from France.
Exceptions (Article 24).
In some cases, geographical indications do not have to be protected or the protection
can be limited. Among the exceptions that the agreement allows are:
• when a name has become the common (or “generic”) term (for example,
“cheddar” now refers to a particular type of cheese not necessarily made in
Cheddar, in the UK),15 and

• when a term has already been registered as a trademark.

Countries employ a wide variety of legal means to protect geographical indications:

ranging from specific geographical indications laws to trademark law, consumer
protection law, and common law. The TRIPS Agreement and current TRIPS work in
the WTO keeps track of that diversity.

The Doha Mandate

Two issues are debated under the Doha mandate, both related in different ways to the
higher (Article 23) level of protection: creating a multilateral register for wines and
spirits; and extending the higher (Article 23) level of protection beyond wines and
spirits.

The multilateral register for wines and spirits back to top

This negotiation, which takes place in dedicated “special sessions” of the TRIPS
Council, is about creating a multilateral system for notifying and registering
geographical indications for wines and spirits. These are given a level of protection
that is higher than for other geographical indications, as explained above. Latest
development in this arena is to be found in the report to the Trade Negotiations
Committee by current chairperson Darlington Mwape of Zambia.16
Three sets of proposals have been submitted over the years, representing the two main
lines of argument in the negotiations and some proposed compromises.
 The EU’s detailed proposal calls for the TRIPS Agreement to be amended (by
adding an annex to Article 23.4). The paper proposes that when a
geographical indication is registered, this would establish a “rebuttable
presumption” that the term is to be protected in other WTO members —
except in a country that has lodged a reservation within a specified period (for
example, 18 months). A reservation would have to be on permitted grounds.

15
See GI Act, 1999, supra note 47, s 9(f), which clearly states that a determined generic name or
indication of goods, is not registrable.
16
“Multilateral system of notification and registration of geographical indications for wines and
spirits”, Report by the Chairman, Ambassador Darlington Mwape (Zambia) to the Trade Negotiations
Committee; 21 April 2011 (TN/IP/21).

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 These include when a term has become generic or when it does not fit the
definition of a geographical indication. If it does not make a reservation, a
country would not be able to refuse protection on these grounds after the term
has been registered.17

 A “joint proposal”, document was first submitted in 2005 and revised in

2008. It sponsors are: Argentina, Australia, Canada, Chile, Costa Rica,
Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Japan,
Korea, Mexico, New Zealand, Nicaragua, Paraguay, Chinese Taipei, South
Africa, the US.This group does not want to amend the TRIPS Agreement.
Instead, it proposes a decision by the TRIPS Council to set up a voluntary
system where notified geographical indications would be registered in a
database. Those governments choosing to participate in the system would have
to consult the database when taking decisions on protection in their own
countries. Non-participating members would be “encouraged” but “not
obliged” to consult the database.18

 Hong Kong, China has proposed a compromise. Here, a registered term

would enjoy a more limited “presumption” than under the EU proposal, and
only in those countries choosing to participate in the system.19

At the heart of the debate are a number of key questions. When a geographical
indication is registered in the system, what legal effect, if any, would that need to
have within member countries, if the register is to serve the purpose of “facilitating
protection” (the phrase used in Article 23.4)? And to what extent, if at all, should the
effect apply to countries choosing not to participate in the system. There is also the
question of the administrative and financial costs for individual governments and
whether they would outweigh the possible benefits.

Extending the “higher level of protection” beyond wines and spirits

Geographical indications for all products are currently covered by Article 22 of the
TRIPS Agreement. 20 The issue here is whether to expand the higher level of

17
Geographical indications, Communication from the European Communities, 14 June 2005
(TN/IP/W/11)
18
“Proposed draft trips council decision on the establishment of a Multilateral system of notification
and registration of geographical indications for wines and spirits”; Submission by Argentina, Australia,
Canada, Chile, Costa Rica, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Japan,
Korea, Mexico, New Zealand, Nicaragua, Paraguay, The Separate Customs Territory Of Taiwan,
Penghu, Kinmen And Matsu, South Africa And The United States Revision, 24 July 2008
(TN/IP/W/10/Rev.2)
19
“Multilateral system of notification and registration of geographical indications under article 23.4 of
the trips agreement”; Communication from Hong Kong, China. 23 April 2003, (TN/IP/W/8)23.
20
See TRIPS, supra note 1, art 22(1)

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protection21— currently given to wines and spirits — to other products. A number of
countries want to negotiate extending this higher level of protection to other products.
Some others oppose the move, and the debate has included the question of whether
the Doha Declaration provides a mandate for negotiations.
Some countries have said that progress in this aspect of geographical indications
would make it easier for them to agree to a significant deal in agriculture. Others
reject the view that the Doha Declaration makes this part of the balance of the
negotiations.
This difference of opinion over the mandates means that the discussions have had to
be organized carefully. At first they continued in the TRIPS Council. More recently,
they have been the subject of informal consultations chaired by the WTO director-
general or by one of his deputies. Members remain deeply divided, with no agreement
in sight, although they are ready to continue discussing the issue.

Requirement of Registration

Under the Indian Act, no protection is conferred on an unregistered GI. 22

Consequently, the proprietor of an unregistered GI has no remedy against any
infringement of his mark. So we can conclude registration of a Geographical
Indication is mandatory under the Indian Act.
But, passing off action by an original proprietor of a mark has not been barred under
the Act. The relevant provision reads: “Nothing in this Act shall be deemed to affect
rights of action against any person for passing off goods as the goods of another
person or the remedies in respect thereof.”23

Some case studies

Tirupati Laddu Controversies

A PIL was filed before the Madras High Court against the G.I. tag for the ‘Tirupati
Laddu’. That petition was dismissed on the grounds that an alternative and efficacious
forum was available for adjudication of such a dispute and hence the PIL was
dismissed with directions to the petitioner to approach the appropriate forum.24 Under
the G.I. Act, such a petition could have been filed either before the G.I. Registry or
the IPAB.
R. S. Praveen Raj, a resident of Thiruvananthapuram and a scientist at NIIST
(National Institute for Interdisciplinary Science and Technology), made a plea against

21
See id, art. 23.
22
Supra Note 7, s 20.
23
Ibid
24
http://spicyip.com/2010/06/breaking-news-madras-hc-dismisses.html

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G.I tag of “Tirupati Laddu” The petition raises certain issues fundamental to the
nature of G.I protection as:-
 Violation of Section 11(1) read with Rules 32(5) and 32(6)(a)&(f) as GIs are
supposed to be collective community rights of protecting a group of
producers. In the present case, TTD is the sole producer and beneficiary of the
Laddu.
 Violation of Sections 9(a) and (d) as the registration it is likely to deceive
consumers [Section 9(a)] and is likely to hurt religious susceptibilities of
communities in India [Section 9(d)].
 Tirupati Laddu does not fit the description of ‘goods’ defined under Section
2(f) for it being a sacred offering not akin to ‘industrial goods’.

An executive officer of TTD argued that rectification applicant had no locus standi.
The officer also made it clear that the rectification applicant was not offended in any
way by the registration and he had never objected when the matter was published in
the Geographical Indications Journal. He further said that all procedural formalities
contemplated under the prescribed act and rules were strictly adhered to and
genuineness of the product was verified by the experts.
The Geographical Indications (GI) Registry, Chennai, rejected the plea by the
applicant for removal of G.I tag against “Tirupati Laddu”. Rectification applicant R.
S. Praveen Raj, failed to prove locus standi and interest with the registered good. The
court stated that because the rectification application was not contested by the
applicant, the tribunal is empowered with the authority to impose costs.

Jamnagar Petrol
Reliance Industries Ltd. (RIL) had filed a geographical indications (GI) application
for its Krishna-Godavari gas and Jamnagar petrol, diesel and LPG. The application
sought authorized usage of the name "Jamnagar LPG, Oil, Petrol and Diesel". 25
Though later the application was abandoned by RIL, but the specification and the
rationale behind its acceptance are worth wondering at.
Section 11(2) of the GI Act, mandates an application to contain a statement that
proves or establishes the GI to designate the goods as originating from the concerned
region in respect of specific quality, reputation or other characteristics of which
are due exclusively or essentially to the geographical environment with its inherent
natural and human factors.
Under “Specification”, RIL stated that the ISO standards met by its petrol, fuel, LPG
and diesel. There was no mention of any unique properties possessed by the goods in
the application by RIL except the compliance with ISO standards.
Under the column “Proof of origin [Historical records]” RIL stated as follows:

25
http://indiatogether.org/relgi-economy

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“In 1991, the Government of India allowed the investments from the private sector, in
this field. Heavy investment has been made in the less favoured remote area which
has resulted in the improvement of local rural area and paved way for the retention of
the rural population in this area and it helps in the rural development. The applicant
in a record time of 15 days after the historic heavy cyclonic hit on 8th June 1998
repaired the extensive damage and brought back the normalcy”26
The whole matter was dubious and the surprising fact was how the Registry had
allowed such a publication. The controversy more or less ended after RIL abandoned
the application.

Basmati Rice
On 2 September, 1997, the U.S. had granted patent No. 5663484 to Ricetec Inc., a
U.S. multinational company for new ‘lines and grains’ in the name of Basmati rice.
This was objected to by two Indian nongovernmental organizations (NGOs) — Centre
for Food Safety, an international NGO that campaigns against biopiracy, and the
Research Foundation for Science, Technology and Ecology, an Indian environmental
NGO who filed legal petitions in the United States. The Centre for Scientific and
Industrial Research also objected to it. They sought trade protection for basmati rice
of the Indian subcontinent and jasmine rice of Thailand. They demanded amendment
of U.S. rice standards to specify that the term “basmati” can be used only for rice
grown in India and Pakistan, and jasmine for the Thai rice. The Indian government,
after putting together the evidence, officially challenged the patent in June 2000.
The contention of Ricetec was that Basmati is not a name of a geographical area and
hence, it is not qualified for protection under the TRIPS agreement. However, when it
was proved that though the name Basmati is not the name of a geographical area but
still, it is inextricably linked to its region of origin, i.e. India, Ricetec contended that
Basmati is a generic name and has fallen into the public domain.
In 2000, after years of litigation and hearing, the USPTO granted patent only to a few
varieties instead of the sweeping claim of new “lines and grains”. But the event was
an eye opener for India and it was in this backdrop that the GI Act of India was
passed in 1999.

Darjeeling Tea
TEA BOARD, a statutory authority of the Govt. of India established in1953 under the
Tea Act, 1953 for the purpose of controlling Indian Tea Industry owns the GI for
Darjeeling Tea which is the tea grown in 87 gardens in the district of Darjeeling.
The Tea Board has fought more than 15 cases against infringement and misuse of
Darjeeling in the last four years including Sri Lanka where the Importer agreed to

26
http://spicyip.com/2009/09/guest-post-jamnagar-petrol-gi-case.html

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abide by the Regulations. This is an effort that stems beyond areas where Darjeeling
tea is exported.
Republic of Tea, USA (2000 – 2006)
Tea Board was successful in seeking rejection of trademark application for
DARJEELING NOUVEAU in the name of Republic of Tea (“ROT”) on the basis of
its geographical certification marks for DARJEELING word and logo
The opposition had been filed by the Tea Board before the Trademark Trial and
Appeal Board (TTAB) which has not only upheld Tea Board’s opposition but also
denied ROT’s counterclaim for cancellation of the DARJEELING certification mark
on grounds of genericness.
The TTAB held that ROT had not proved that consumers view DARJEELING tea as
a generic type, as opposed to tea from the Darjeeling region of India. It also
recognized Tea Board’s continuing efforts to maintain control of the mark and protect
its value as a geographic indication
The TTAB held that Regulations and licensing program put in place by the Tea Board
constitute “adequate provisions for control.” It also placed great stock in the Tea
Board’s ongoing efforts to educate the public (e.g., by attending trade shows and
distributing literature in supermarkets) as further evidence of the Tea Board’s overall
system of controlling consumer understanding.

Dusong (Darjeeling with kettle device for stationery) France

The Court of Appeal of Paris on November 22, 2006 quashed the decision of the
Court of First Instance rendered in August 2005 wherein the action filed by the Tea
Board for dilution of Darjeeling against adoption of the mark “Darjeeling with a kettle
device” in respect of classes 16, 35 and 41 by Mr. Dusong.
In its decision, the Court of Appeal, Paris held that Mr. Dusong’s mark impairs the
geographical indication DARJEELING and is prejudicial to the Tea Board’s interests
in the same. Accordingly the impugned mark was nullified. Mr. Dusong has been
restrained from using the same in any connection whatsoever.
Further, the Court has imposed a fine of Euros 500 for every breach that would occur
after one month of notification of the decision. Mr. Dusong was to publish, at his
expense, (but within a total of Euros 5000), the decision in three newspapers, either
French or foreign, of Tea Board’s choice. Mr. Dusong was also sentenced by the
Court to pay an amount of Euros 2000 to the Tea Board.

Other cases
Other marks opposed include DIVINE DARJEELING, DARJEELING,
DARJEELING NOVEAU relating to diverse goods and services such as clothing,
lingerie, telecommunication and internet services, coffee, cocoa etc. Further, use by
BVLGARI, Switzerland of the legend “Darjeeling Tea fragrance for men” was agreed
to be withdrawn pursuant to legal notice and negotiations.

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EU-India FTA

The Free Trade Agreement (FTA) was to be entered into by the European
Commission to regulate issues such as competition policy, the rights of foreign
investors, open government purchasing practices as well as environmental, social and
human rights clauses.
However, sharp differences arose with respect to Intellectual Property Rights (IPR),
competition, agriculture, public procurement, market access and transparency. One
relevant example was the concern raised by Amul in 2013. It was feared that further
reduction in import duties would enable the EU to dump subsidized products in the
Indian market as EU did not allow import of Indian dairy products, citing its strict
sanitary standards, which is suspected to be nothing but a non-tariff barrier.27

Point to Remember

 Essentially, any sign which indicates that a certain product originated from a
particular place and when that product has any quality attributable such place, the,
such indication is called a Geographical Indication.
 Trademarks differentiate the products made by different producers, and geographical
indications differentiate one group of products from others that don’t come from the
region it protects. This property of a Geographical Indication makes it a Collective
Mark. Another difference is that trademarks arise from the creative genius of man,
while geographical indications are not created; they are there, in nature due to the
existence of human and natural factors.
 The Geographical Indications (GI) Registry, Chennai, rejected the plea by the
applicant for removal of G.I tag against “Tirupati Laddu”.
 In the context of EU-India FTA it was feared that further reduction in import duties
would enable the EU to dump subsidized products in the Indian market as EU did
not allow import of Indian dairy products, citing its strict sanitary standards, which
is suspected to be nothing but a non-tariff barrier

27
http://spicyip.com/2013/04/eu-gaining-double-benefit-free-trade.html

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Self-check Exercises

 What are GIs and how do they differ from trademarks?

 What is the TRIPS requirement for GIs protection

 What are the conditions for registration of a GI

 How many GIs are granted in India?

 What are the demands of EU for GI protection in the context of EU India FTA?

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