Interface between Trademarks and

Geographical Indications

Dr. Ruchir Singh

Assistant Professor
Bennett School of Law
Introduction

• Trademark is a brand name specifying the unique characteristics of a

product of any organization. Geographical Indicator is a term used to

indicate the geographical uniqueness of a product. Names such as

Ford and Puma are trademarks, whereas Assam Tea and Coorg coffee

are geographical indicators. The procedure of trademark registration

and GI registration is different.

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India did not have such a specific law governing geographical indications of
goods which could adequately protect the interest of producers of such goods. This
resulted into controversial cases like turmeric, neem and basmati. In the case of
turmeric, in March 1995, a US Patent was granted to two NRIs at the University of
Mississippi Medical Centre Jackson, for turmeric to be used as wound healing agent.
This patent was challenged by CSIR at the USPTO on the ground of “Prior Art”
claiming that turmeric has been used for thousand years for healing wounds and
rashes and hence this was not a new invention. Even CSIR presented an ancient
Sanskrit text and a paper published in 1953 in the Journal of the Indian Medical
Association as documentary evidence. Upholding the objections, the US patent office
cancelled the Patent.
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In the case of neem, patents were granted to the US Company WR Grace
& Co. for extraction and storage processes. The Indian Government
filed a complaint with the US Patent Office accusing WR Grace of
copying an Indian Invention but later on they realized that the US based
company had in fact created a new invention for the neem extraction
process and the patent was not based on traditional knowledge and
hence government withdrew its complaint.
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The third case which triggered a lot of controversy was granting of a US-patent
to Texas based Rice Tec Inc who claimed that this invention pertains to a novel
breed of rice plants and grains. The USPTO granted the patent on ‘Basmati
Rice Lines and Grains’ in September 1997 after three years examination and
accepted all the 20 claims put forward by them. India challenged the patent. A
team of agricultural scientists screened several research papers, reports and
proceedings of seminars, conferences, symposia, journals, news papers and
archives for relevant supporting information to establish the existence of prior
art in this area in India. The documentary evidences against the company for
novelty were so strong that Rice Tec had to withdraw these claims.
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Some commodities that have been recently granted the status of a

Geographical Indication by the Government of India include Gir Kesar

Mango, Bhalia wheat, Kinhal Toys, Nashik Valley wine, Monsoon

Malabar Arabica Coffee, Malabar Pepper, Alleppy Green Cardamom

and Nilgiris Orthodox Tea. Other examples include Darjeeling Tea,

Mysore Silk, Paithani Sarees, Kota Masuria, Kolhapuri Chappals,

Bikaneri Bhujia and Agra Petha.

What is a GI
Differences between a TM and GI
Trademark
Trademark is a sign, symbol, or characteristic of a
product or a service of a business organization.
Trademark is a title given to a single producer or a
manufacturer
An organization can obtain a trademark for goods
and services.
The governing bodies for trademarks in India are
The Trademark Act 1999. It is administered by the
Trademark Registry 1999.
Geographical Indicator
It includes a geographical name identifying a natural
good, agricultural well, or any product
manufactured using the natural good available in a
geographical location. It also refers to other
activities than manufacturing such as processing,
preparation, improving quality, etc
Geographical Indication is provided to a group of
manufacturers or producers of a particular
geographical region.
GI refers only to goods.
In India, the GI laws are governed by the
Geographical Indications of Goods 1999 and
administered by the Controller General of Patents.
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To register a trademark in India, the manufacturer
or producer should portray their creative skills to
produce something new and distinguishable. You
will need
Logo Designing for Trademark Registration
But to obtain a GI, the producers should consider
the unique characteristic of the good itself of their
geographical location. They should mention factors
such as climate, soil, topography, etc that are
responsible for such production.

The actions for trademark infringement according

to the court proceedings include temporary or The action undertaken for GI infringement is
permanent injunction, destroying goods, legal temporary and permanent injunction.
proceedings cost, and the profits are also seized.

A trademark can include a geographical location But a geographical Indication cannot include a
and sometimes the false features of a geographical trademark. A GI cannot contain any false
location. information about a geographical location.

The producers or the manufacturers do not

The organization becomes the owner of the goods
become owners as the goods indicate the
or services after trademark registration.
geographical location GI is public property.
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