GEOGRAPHICAL INDICATIONS

Protection of Geographical Indication (GI) has, over the years, emerged as one of the most contentious IPR
(Intellectual Property Rights) issues in the realm of the WTO’s Agreement on Trade Related Aspects of
Intellectual Property Rights (TRIPS). TRIPS defines GI as any indication that identifies a product as
originating from a particular place, where a given quality, reputation or other characteristics of the product
are essentially attributable to its geographical origin. Also a geographical indication (GI) gives exclusive
right to a region (town, province or country) to use a name for a product with certain characteristics that
corresponds to their specific location.
The Geographical Indications of Goods (Registration and Protection) Act, 1999 protect the GI’s in India.
Registration of GI is not compulsory in India. If registered, it will afford better legal protection to facilitate
an action for infringement.
Need for Legal Protection of GI
Some products are unique because they can be produced only in a certain geographical region and they
become reputed because they have certain quality traits, for instance products such as Champagne, Scotch or
Basmati rice. The important aspect about these products is the link between their quality characteristics and
the geographical attributes of the region where these products are being produced and manufactured. For
certain products over a period of time, the particular product made in a specific place can develop a unique
reputation. This reputation is attributed to various factors and special characteristics present in the place of
production, its people, its climate and its landscape. At times, the reputation is due to the people or the
climate or the landscape alone. Sometimes it is due to a combination of all the characteristics combined.
Given its commercial potential, legal protection of GI assumes enormous significance. Without suitable
legal protection, the competitors who do not have any legitimate rights on the GI might ride free on its
reputation. Such unfair business practices result in loss of revenue for the genuine right-holders of the GI
and also misleads consumers. Moreover, such practices may eventually hamper the goodwill and reputation
associated with the GI.
International Protection for GI under TRIPs
At the international level, TRIPS sets out minimum standards of protection that WTO members are bound to
comply with in their respective national legislations. However, as far as the scope of protection of GI under
TRIPS is concerned, there is a problem of hierarchy. This is because, although TRIPS contains a single,
identical definition for all GI, irrespective of product categories, it mandates a two-level system of
protection: (i) the basic protection applicable to all GI in general (under Article 22), and (ii) additional
protection applicable only to the GI denominating wines and spirits (under Article 23).
This kind of protection is challenging, if Article 22 fails to provide sufficient intellectual property protection
for the benefit of the genuine right-holders of a GI. A producer not belonging to the geographical region
indicated by a GI may use the indication as long as the product’s true origin is indicated on the label, thereby
free-riding on its reputation and goodwill.
History of the TRIPs Provisions on GI
The Uruguay Round of the GATT negotiations began in 1986, precisely when India’s development policy
making process was at a watershed. By the time India launched its massive economic reforms package in
1991, marking a paradigm shift in its policy, the Uruguay Round negotiations were well under way, paving
the path towards Marrakesh in 1994 and the establishment of the WTO. India remained a cautious and
somewhat passive player during the initial years of the Uruguay Round negotiations, given its long legacy of
inward looking development strategy and protectionist trade policy regime.
However, at Doha India wanted to extend protection under ‘geographical indication’ (GI) beyond wine and
spirit, to other products. A number of countries wanted to negotiate extending this higher level of protection
to other products as they see a higher level of protection as a way to improve marketing their products by
differentiating them more effectively from their competitors and they object to other countries “usurping”
their terms. Some others opposed the move, and the debate has included the question of whether the Doha
Declaration provides a mandate for negotiations.
The Geographical Indications of Goods (Registration & Protection) Act, 1999
India has put in place a sui generis system of protection for GI with enactment of a law exclusively dealing
with protection of GIs. The legislations which deals with protection of GI’s in India are ‘The Geographical
Indications of Goods (Registration & Protection) Act, 1999’ (GI Act), and the ‘Geographical Indications of
Goods (Registration and Protection) Rules, 2002 (GI Rules). India enacted its GI legislations for the country
to put in place national intellectual property laws in compliance with India’s obligations under TRIPS.
Under the purview of the GI Act, which came into force, along with the GI Rules, with effect from 15
September 2003, the central government has established the Geographical Indications Registry with all-India
jurisdiction, at Chennai, where right-holders can register their GI.
Unlike TRIPS, in the GI Act does not restrict itself to wines and spirits. Rather, it has been left to the
discretion of the central government 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.
The definition of GI included in Section 1(3) (e) of the Indian GI Act clarifies that 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 a GI 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. This provision enables the
providing protection to symbols other than geographical names, such as ‘Basmati’.
Registration
While registration of GI is not mandatory in India, Section 20 (1) of the GI Act states that no person “shall”
be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an
“unregistered” GI. The registration of a GI gives its registered owner and its authorized users the right to
obtain relief for infringement. The GI Registry with all India jurisdictions is located in Chennai with the
Controller-General of Patents, Designs and Trade Marks is the Registrar of GIs, as per Section 3(1) of the GI
Act. Section 6(1) further stipulates maintenance of a GI Register which is to be divided into two parts: Part
A and Part B. The particulars relating to the registration of the GIs are incorporated in Part A, while the
particulars relating to the registration of the authorized users are contained in Part B (Section 7 of the Act).
A GI may be registered in respect of any or all of the goods, comprised in such class of goods as may be
classified by the Registrar. The Registrar is required to classify the goods, as far as possible, in accordance
with the International classification of goods for the purposes of registration of GI (Section 8 of the Act). A
single application may be made for registration of a GI for different classes of goods and fee payable is to be
in respect of each such class of goods.
In India a GI may initially be registered for a period of ten years, and it can be renewed from time to time for
further periods of 10 years. Indian law place certain restrictions in that a registered GI is not a subject matter
of assignment, transmission, licensing, pledge, mortgage or any such other agreement.
Rights of Action against Passing-Off
The GI Act in India specifies that 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. In its simplest
form, the principle of passing-off states that no one is entitled to pass-off his/her 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 countries, does not have a statute specifically dealing with unfair competition, most of
such acts of unfair competition can be prevented by way of action against passing-off. Notably, Article 24.3
of TRIPS clearly states that in implementing the TRIPS provisions on GIs, a Member is not required to
diminish the protection of GIs that existed in that Member immediately prior to the date of entry. This
flexibility has been utilized by India in the GI Act (Section 20(2)) in maintaining the right of action against
passing-off, which has been a part of the common law tradition of India, even prior to the advent of the
TRIPS Agreement.
Any lawsuit relating to infringement of a registered GI or for passing of an unregistered GI has to be
instituted in a district court having jurisdiction to try the suit. No suit shall be instituted in any court inferior
to a district court [Section 66 of the Geographical Indications of Goods (Registration and Protection) Act,
1999].
Comparison/Differences between Geographical Indications and trademarks:
Trademarks Geographical Indications
Trademarks are expressions such as “Coca Cola” Geographical indications are expressions such as
“Peugeot”, “Marlboro”, and “Citibank”. All of “Cognac”, “Pilsen”, “Tequila”, and “Champagne”. All of
them distinguish products or services and or their them distinguish the geographical origin of a given
producer, manufactures or provider. product.
A trademark provides protection to the owner of The protection of Geographical indications is however
the mark by ensuring the exclusive right to use it enjoyed by all traders from a particular geographical
to identify goods or services or to authorize location.
another to use it in return for payment.
Trademarks personalize and identify products and Geographical indications do not identify a single producer
services from a specific manufacturer, producer or or manufacturer, but rather a place of origin.
service provider in order to differentiate such
goods or services.
The development of trademarks is linked to Geographical indications linked to topography, human
human creativity. Such creativity is capable of work, climate or other factors, independently from human
creating an original and novel sign or expression, creativity. Geographical indications underlie the
which permits a certain product or service to be geographic origin of the product and some derived
distinguished from similar products or services. characteristics.
As such, trademarks put an emphasis on the
producer of a product.
There is a single person legal or natural entitled to All producers belonging to the region or locality where
use the trade mark. the geographical indication comes from are entitled to use
it.
Since a trademark is used to distinguish the Geographical indications are by definition generic
products of a specific trader from those of its descriptions because a geographic name denotes the
competitors, it is not likely to be descriptive and it geographical origin of the product it identifies in many
cannot be generic. counties a geographical will normally not be registered as
a trademark for a product, because a geographical
indication is considered to be insufficiently distinctive.
Individual production of goods is linked more to Collective production of products originating from the
the notion of trademarks same geographical zone, and having the same quality,
reputation or characteristic attributable to its geographical
origin, are linked to the notion of geographical indication.
Trademarks are easier to protect internationally Geographical indications are generally monitored and
than geographical indications but requires active protected by producer associations from the relevant
participation by the owner or holder of the regions. International protection of geographical
trademark. Usually trademarks are protected by indications is more difficult as no single mechanism exists
registering with the competent domestic authority. to protect geographical indications and it could be done
by means of law, jurisprudence or administrative acts.
State involvement is far greater in the case of
geographical indications than trademarks.
Trademarks are freely transferable from one Geographical indications are not freely transferable from
owner to another one owner to another, as a user must have the appropriate
association with the geographical region and must comply
with the production practices of that region.

Conflicts between Trademarks and Geographical indications

Geographical indications and trademarks are different legal categories of distinctive signs. Conflicts as to the
right to the exclusive use of a distinctive sign usually arise where there are different parties claiming entitlement
to such use. In the case of competing claims to the right in the same trademark, there are number of mechanisms
assigned to avoid conflicts. The principle of territoriality means that identical trademarks used for identical
goods or services can co-exist in different territories. However, the globalization of trade and the ever
increasing importance of new, borderless means of communication, most notably the internet, lead to a
significant erosion of the principle of territoriality and call for new solutions. The principle of specialty means
that similar or identical trademarks can co-exist as long as they are used on different goods or services. Under
the principle of priority, the exclusive right to a trademark is attributed to the first who registered or used it.
These principles are supplemented by rules that allow honest and concurrent use of trademarks, or the use of
family names, usually to the extent that such use is not misleading or deceptive.
Different from trademarks, geographical indications are not arbitrarily chosen, but refer to a distinct
geographical area in relation to the products that originate there from. It is possible that different geographical
regions have the same name and are the place of origin for the same kind of products. A conflict that arises out
of such a situation would be a problem of homonymous geographical indications. The situation is of course
different where one and the same sign is used by different parties as a trademark and as a geographical
indication for the same product who should be entitled to use that sign? What should be the conditions of such
use? Should one right prevail over the others or should both rights co-exist. Such questions will naturally arise
in such situations. A further problem may occur where the same sign is used by different parties as a trademark
and a geographical indication for different goods, and either the trademark or the geographical indication is well
known. The protection of well known marks, meaning the protection of such marks against registration or use
of similar signs in relations to dissimilar goods or services is well established in international law. However, the
international protection of well-known geographical indications, in the sense of protection of such geographical
indications against unauthorized use on dissimilar goods, has not developed in the same manner, although the
problem has been known for some time.
The other area of conflict is where a geographical indication is sought to be protected in a country where there
is prior registered trademark right for the same name. This occurs because in certain situations, a geographical
name is permitted to be registered as a trademark. This happens when:
(1) These names do not have a primary geographical significance to the relevant public. One of the early cases
which reconfigured judicial thinking was magnolia’s Trade mark application for metal ‘magnolia’ was an
obscure geographical name, so the court determined that if the primary significance of the marks to the relevant
public was not geographic, it could be registered.
(2) Names which were initially geographical have acquired secondary meaning. Marlboro is the name of a
leading cigarette brand by Phillip Morris and also a US country. By heavy advertising over time, when
consumers hear or read Marlboro, they think of the product (Cigarette) and not the place. Thus descriptive
names acquire secondary meaning and become distinctive.
(3) When the geographical significance may be arbitrary. This implies that no reasonable consumer would think
that the products were produced in such a place. Thus [Link] may be registered for books as no
reasonable consumer would assume that the business is located in the Amazon rainforests. (4) In all these
situations, geographical words can be registered as trademarks, by anyone who files an application. So,
geographical indications may be registered as trademarks by registrants from outside the geographical region
concerned. This is the reason why the registered protection of geographical becomes a priority.