UNIT 7

PROTECTION OF GEOGRAPHICAL INDICATIONS (GI)

TOPIC: 7.1 Introduction to concept & objective of GI

A COMPREHENSIVE INTRODUCTION TO GEOGRAPHICAL

INDICATIONS (GIS)

Have you ever savoured the distinct aroma of Colombian coffee or explored the vibrant flavours of
GI-protected Kesar mangoes from the state of Gujarat, India? These unique characteristics often
stem from the specific geographical origin of the product, shaped by a complex interplay of
factors like climate, soil composition, traditional production methods, and cultural heritage. This
intricate link between a product and its place of origin forms the cornerstone of a fascinating
concept known as Geographical Indications (GIs).

GIs are distinctive signs, such as a name, word, symbol, or even a combination of these, used on
products originating from a specific geographical location. Importantly, these products possess
qualities, characteristics, or a reputation that are essentially due to their geographical origin.
In simpler terms, a GI acts as a guarantee that the product you're holding embodies the unique
essence of the place it comes from.1

For instance, the iconic name "Darjeeling" associated with tea isn't just a brand name, but a
Geographical Indication. The specific qualities and flavour profile of Darjeeling tea are
attributed to a combination of factors like the unique Himalayan climate, specific soil conditions,
and generations-old tea-growing practices in the Darjeeling region. Similarly, "Champagne" can
only be used for sparkling wines produced in a specific region of France, as the specific grape
varieties, fermentation methods, and geological features in that region contribute significantly to
the distinctive characteristics of Champagne.

Understanding GIs is crucial for several reasons. For consumers, it provides a guarantee of
authenticity and the specific qualities associated with the place of origin. Consumers can be
confident that they are purchasing a product that embodies the unique characteristics and
traditional practices of a specific region.2

For producers, GIs offer protection from unfair competition. They prevent unauthorized use of the GI by
others, ensuring a fair market advantage for producers who adhere to the defined standards and
traditional practices associated with the GI. Additionally, GIs can serve as a valuable marketing
tool, allowing producers to distinguish their products from competitors and command premium
prices due to their unique qualities and reputation.

1
World Intellectual Property Organization
(WIPO): https://www.wipo.int/ip-outreach/en/ipday/2022/toptips/geo_indications.html

2
WIPO publication, "Geographical Indications: An Introduction, 2nd
edition": https://en.wikipedia.org/wiki/World_Intellectual_Property_Organization
The concept of GIs is recognized and protected by international agreements, including the
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) administered by the
World Trade Organization (WTO). Additionally, several national and regional intellectual
property offices provide frameworks for registering and protecting GIs.3

TRIPS AGREEMENT AND GEOGRAPHICAL INDICATIONS

Section 3 of Part II of the TRIPS Agreement entitled ‘Geographical Indications’. A

geographical indication (GI) is defined in the TRIPS Agreement as an indication which identifies
a good as originating in the territory of a member, or a regional locality in that territory, where a
given quality, reputation or other characteristic of the good is essentially attributable to its
geographical origin. Typical examples would be ‘Cognac’ for a brandy coming from that region of
France and ‘Darjeeling’ for tea coming from that region of India. Like other sections in Part II of
the TRIPS Agreement that cover standards of IPRs, Section 3 has to be read together with the
relevant provisions of the pre-existing treaties in the area of international intellectual property law
which are incorporated by reference into the TRIPS Agreement. In the case of GIs, the relevant
treaty is the Paris Convention. Explanations of the provisions of the Paris Convention relevant to
GIs are integrated along with explanations of the TRIPS provisions in this module. This module
has to be read alongside the explanation, in other modules, of other relevant TRIPS provisions,
notably concerning basic principles, trademarks, procedures for the acquisition and maintenance
of rights (Article 62) and enforcement. For example, in respect of GIs, members have to respect
the requirements of national and MFN treatment, as they do for other categories of IPRs. A WTO
dispute settlement panel has confirmed that those obligations apply with respect to the availability
of GI protection, including application and opposition procedures.

HISTORICAL BACKGROUND

The TRIPS Section on GIs represents a delicate balance between different interests that was
reached during the Uruguay Round. While the negotiations on certain aspects of TRIPS could, to a
large extent, be characterized as a North-South debate, the negotiations on GIs, particularly on
wines and spirits, were characterized by what was then described as an ‘Old World-New World’
debate; that is to say between the ‘Old World’ countries of Europe and the ‘New World’ countries
of the United States, Australia, Canada, New Zealand, Argentina and Chile and some others.
These differences in interests also had some parallels with divergent interests in the agricultural
sector, and links were made with the Uruguay Round negotiations on agriculture.

An additional consideration in the Uruguay Round negotiations, and one that remains applicable
today, is the diversity in the national systems for the protection of GIs, where there is a
considerably lower level of harmonization than, for example, in the areas of patents or trademarks.
The rules of the TRIPS Agreement on GIs reflect this diversity and complexity of systems, as seen
in the language used in certain provisions of the GI Section. This is illustrated in the WTO
Secretariat’s summary of members’ responses to a checklist of questions regarding the way they
apply the TRIPS provisions on GIs. 54 It shows how members’ national and regional systems for
the protection of GIs include a mixture of laws of general application relating to business
practices, in particular against consumer deception and unfair competition, certification or

3
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS): https://wto.org/trips
collective mark protection (see Module III) under trademark law, and a range of sui generis
systems (i.e. systems created specifically for a category of IP) dedicated to the protection of GIs.
What is the relationship of TRIPS with the Paris Convention? As mentioned in the other modules
dealing with industrial property, TRIPS Article 2 incorporates by reference the substantive
provisions of the pre-existing Paris Convention, i.e. Articles 1 to 12 and 19. Article 10 of the Paris
Convention deals with the seizure or prohibition of importation of goods bearing ‘false’
indications of source. It defines the ‘interested parties’ entitled, under certain conditions, to
request seizure on importation, namely producers, manufacturers, or merchants. Article 10ter
further extends, under certain conditions, the possibility to take action to federations and
associations representing interested producers or traders. Article 22.2 of the TRIPS Agreement
specifically refers to Article 10bis of the Paris Convention, which deals with unfair competition.
This provision obliges members to assure effective protection against acts of competition that are
contrary to honest practices in industrial or commercial matters.

TRIPS provisions on GIs :-

Section 3 of Part II of the TRIPS Agreement consists of three provisions. Article 22 deals with the
definition of GIs and sets out the minimum level of protection to be available for GIs identifying
any given type of good. Article 22 also addresses the question of trademarks bearing GIs. Article
23 provides for a higher level of protection for GIs identifying wines and spirits. It further sets out
additional rules regarding the use of such GIs in or as trademarks and provides for a built-in
agenda for the negotiation of a multilateral system of notification and registration of GIs for
wines. Article 24 provides for certain exceptions that allow the continued use of GIs for goods not
originating from the location associated with the GI, such as when a term has become generic.

LEGAL AND NON-LEGAL OBJECTIVES OF GEOGRAPHICAL

INDICATIONS

Legal objectives:

 Protect consumers from misrepresentation and unfair competition: GIs prevent

unauthorized use of a geographical name associated with specific product characteristics.
This ensures consumers get the genuine product and prevents producers from misleading
them with imitations.
 Protect the intellectual property rights of producers: GIs provide legal protection for
producers within a specific geographical area, allowing them exclusive rights to use the GI
for their products. This incentivizes them to maintain the quality and unique characteristics
associated with the geographical origin.4
 Facilitate fair trade: GIs can be used in international trade agreements to ensure fair
competition and prevent unfair advantages obtained by countries attempting to capitalize
on established reputations of protected products.5
4
World Trade Organization (WTO) - Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS): https://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm (Articles 22-24)
5
World Intellectual Property Organization (WIPO) - Lisbon Agreement for the Protection of Appellations of Origin and their
International Registration: https://www.wipo.int/treaties/en/registration/lisbon/
  Preventing the genericization of trademarks: When a trademark becomes synonymous
with the product itself (e.g., Aspirin, Band-Aid), it loses its legal protection as a trademark.
GIs help prevent this by ensuring that the geographical name remains linked to a specific
product's origin and unique characteristics, preventing it from becoming generic and losing
its legal protection and market value.

Non-legal objectives:

 Promote economic development and rural communities: GIs can stimulate economic
growth for producers in specific regions by enhancing the value and marketability of their
products. This can lead to increased income, job creation, and improved livelihoods for
local communities.
 Preserve cultural heritage and traditional knowledge: GIs can act as tools for
safeguarding traditional production methods and local knowledge associated with specific
products. This can contribute to cultural preservation and identity.6
 Promote sustainable agriculture and resource management: GIs can incentivize
sustainable practices by linking product quality to specific geographical areas and
traditional knowledge. This can lead to better resource management, environmental
protection, and biodiversity conservation.7
 Enhance consumer confidence and premium pricing: By informing consumers about
the origin and characteristics of a product, GIs can build trust and confidence, leading to
increased demand and potentially higher prices for GI-protected products.

TOPIC: 7.2 JUSTIFICATION TO GI PROTECTION

Why GIs should be protected?
1. Preservation of Cultural Heritage: From site to place (including sites that are associated
with certain regions, particular qualities, traditions, and culture), human beings link up
with the military which in return can promote regionalism, parochialism, and self-identity
locally. A UNESCO designation as a GI means that these areas are guarded and therefore
cultural traditions, craftsmanship, and diversity are preserved and celebrated.

6
United Nations Educational, Scientific and Cultural Organization (UNESCO) - Creative Cities
Network: https://en.unesco.org/creative-cities/home (Focuses on the link between GIs and cultural heritage)

7
International Institute for Environment and Development (IIED) - The Role of Geographical Indications (GIs) in Sustainable
Agriculture and Food Systems: https://www.fao.org/3/ca5693en/ca5693en.pdf
 2. Economic Benefits to Communities: GIs will be of much help in the economic growth of
regions through the generation of trading opportunities that the communities and
businesses can use to sustain their livelihoods. These producers will be able to highlight
the authenticity of their products and demand a higher price through the protection of GIs.
Moreover, a new market will be created as consumers become willing to pay a premium
for the quality and exclusive attributes of their goods. As a result, earnings and
employment prospects will go up.

3. Consumer Confidence and Quality Assurance: CI are used by consumers as the signs
that products are of better quality, authentic and from a certain place. Building trust with
GIs is a crucial component of consumer confidence that products carrying the trademark
receive treatment ensuring compliance with certain criteria and bear such features or
attributes that are typical to the specified geographical regions. The above measures would
go a long way in avoiding the possibilities such as fraud, misrepresentation, and inaccurate
product labeling leading to enhanced consumer confidence.

4. Promotion of Sustainable Development: GIs are oftenly seen as conditions that are
necessary for the development of natural farming, which in turn promotes environmentally
sustainable practices. Defending the GIs is the way to preservation of the biodiversity,
natural resources and traditional farming methods that are really essential for long run
agricultural and rural livelihoods sustainability.
5. Fostering Innovation and Creativity: What GIs can do is that they can encourage
innovativeness and creativity among producers who would otherwise not dare to try new
products or to make improvements on the ones that already exist but still, at the core, has
to maintain the tradition and features diplomatic and economic aspect associated with the
region. By striking a balance between tradition and innovation, the firm creates ever newer
or perceivably novel products, thus staying ahead of the game.
6. International Trade and Market Access: GIs are not only proteins for promoting goods
on the national level but also for giving the represented country a higher bargaining
position in international trade, allowing it to use this position in order to conclude trade
agreements favorable to it and its intellectual property as well. This will result in more
expansion in exports markets, better commodity access, and a higher rate of
competitiveness in the global marketplace.

Finally, Given that cultural legacy conservancy, economic development improvement,

consumer confidence building, ecologically balanced network forming, innovations
inspiring and trade liberating are all achieved through GI protections, we can therefore
conclude that producers and consumers are also benefited.

A Robust Justification for Geographical Indication (GI) Protection:-

The concept of Geographical Indications (GIs) transcends mere technicality within the realm of
intellectual property. It carries immense weight, influencing diverse areas like trade, consumer
protection, and cultural preservation. This essay delves into the key justifications for GI
protection, demonstrating its multifaceted importance for various stakeholders.

1. Consumer Protection: Guaranteeing Authenticity and Quality

 Combating Counterfeiting and Misleading Labeling: Consumers increasingly seek

transparency and authenticity in their purchasing decisions. GIs serve as a powerful
tool against counterfeiting and misleading labeling, as highlighted in the World
Intellectual Property Organization (WIPO) publication,8. By clearly identifying the
origin and specific characteristics of a product, GIs empower consumers to make
informed choices. This fosters trust and confidence in the marketplace.9

 Upholding Quality Standards: Many GIs are associated with established production
standards and quality control measures. as outlined in WIPO's publication.10 This
ensures consistency and predictability in quality for consumers, allowing them to rely on
the established reputation of the GI. Producers adhering to these standards maintain the
trust and positive association with the geographical location, further benefiting
consumers.11

2. Fostering Fair Competition and Economic Prosperity

 Protecting Producers from Imitation: GIs act as a shield against unfair competition by
preventing the unauthorized use of the protected indication by others. 12This safeguards
producers who have invested in maintaining traditional practices and upholding
quality standards. Unchecked imitation could undercut prices and devalue the genuine
product, harming producers and ultimately disadvantaging consumers who seek the
authentic experience. 13

 Promoting Economic Development, Particularly in Rural Areas: GIs can be powerful

drivers of economic development, especially in rural regions. 14By recognizing the
unique value of regionally produced goods, GIs incentivize local production, create
8
"The Importance of Geographical Indications": https://www.wipo.int/ip-outreach/en/ipday/2022/toptips/geo_indications.html
9
Consumer Preferences for Geographical Indications and Labeling: A Study in the Case of Spanish Olive Oil ," published in
the National Institutes of Health (NIH) National Library of Medicine:
https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4496897/.

10
“The Importance of Geographical Indications":
https://www.wipo.int/ip-outreach/en/ipday/2022/toptips/geo_indications.html
11
Geographical Indications: A Boon to Farmers and Consumers" :
http://docs.manupatra.in/newsline/articles/Upload/CB4FFCFA-3EED-4232-9174-CEED00B5B56F.pdf
12
"The Importance of Geographical Indications" :
https://www.wipo.int/ip-outreach/en/ipday/2022/toptips/geo_indications.html .
13
International Centre for Trade and Sustainable Development (ICTSD) issue paper :
https://www.greenpolicyplatform.org/organization/international-centre-trade-and-sustainable-development-ictsd-0 .
 employment opportunities, and boost regional income. This fosters socio-economic
development in these areas and contributes to a more balanced and equitable global
economy.

3. Safeguarding Cultural Heritage and Tradition

 Preserving Intangible Cultural Assets: GIs often represent generations of knowledge,

skills, and cultural practices unique to a specific geographical region.15 Recognizing and
protecting GIs safeguards this intangible cultural heritage, ensuring its preservation
and transmission to future generations. This enriches cultural diversity and fosters a
deeper appreciation for traditional knowledge and practices across the globe .16

4. Encouraging Sustainable Practices and Environmental Responsibility

 Incentivizing Responsible Production Methods: GIs can be linked to specific

production methods and practices that are inherently sustainable.17 By protecting such
GIs, there is an incentive for producers to maintain these practices, contributing
to environmental sustainability and responsible resource management. This fosters a
more eco-conscious approach to production, benefiting both the environment and future
generations.18

TOPIC: 7.3 APPELLATION OF ORIGIN

“Appellation of origin” refers to a sign that indicates that a product originates in a specific
region, but is limited to those cases where the characteristic qualities of the product are due to the
geographical environment, including natural and human factors, of that region, for example,
“Roquefort”, “Gorgonzola”, etc.

A definition of AO is contained in the Lisbon Agreement for the Protection of Appellations of

Origin and their International Registration, adopted in 1958 under the auspices of the World
Intellectual Property Organisation (WIPO). According to Article 2 of the Agreement, an AO is “
the geographical name of a country, region, or locality, which serves to designate a product
originating therein, the quality and characteristics of which are due exclusively or essentially to
the geographic environment, including natural and human factors”. Article 2.2 defines the
14
Manupatra's legal commentary: http://docs.manupatra.in/newsline/articles/Upload/CB4FFCFA-3EED-4232-9174-
CEED00B5B56F.pdf
15
. http://docs.manupatra.in/newsline/articles/Upload/CB4FFCFA-3EED-4232-9174-CEED00B5B56F.pdf
16
https://www.wipo.int/ip-outreach/en/ipday/2022/toptips/geo_indications.html.

17
https://www.wipo.int/ip-outreach/en/ipday/2022/toptips/geo_indications.html.
18
https://www.wipo.int/ip-outreach/en/ipday/2022/toptips/geo_indications.html.
“country of origin” as “the country whose name, or the country in which is situated the region or
locality whose name, constitutes the appellation of origin that has given the product its
reputation”.

Three elements should be noted in these definitions: First, the requirement that the appellation of
origin should be the geographical denomination of a country, region or locality means that the
appellation is to consist of a denomination that identifies a geographical entity in the country of
origin. Secondly, the requirement that the appellation of origin must serve to designate a product
originating in the country, region or locality concerned means that, in addition to identifying a
place, the geographical denomination in question must be known as the designation of a product
originating in that place (in other words the reputation). The third requirement concerns the
quality or characteristics of the product to which the appellation of origin relates, which must be
due exclusively or essentially to the geographical environment of the place where the product
originates. The reference to the geographical environment means that there is to be a qualitative
connection between the product and the place in which the product originates. The geographical
environment is determined on the one hand by a set of natural factors (such as soil and climate),
and on the other hand by a set of human factors – for instance, the traditional knowledge or know
how used in the place where the product originates.19

Here are some well-known examples of Appellations of Origin (AOs):

 Champagne: This sparkling wine can only be produced in the Champagne region of
France, using specific grape varieties and adhering to strict production methods. The
unique combination of chalky soil, cool climate, and traditional craftsmanship contributes
to Champagne's distinct characteristics, such as its fine bubbles, crisp acidity, and complex
flavors.

Champagne wine bottle

 Parmigiano Reggiano: This hard cheese is produced in the Emilia-Romagna region of

Italy, using only milk from cows fed on local forage. The specific climate and bacterial

19
Key Aspects of GIs : https://www.origin-gi.com/web_articles/key-concepts-in-the-field-of-geographical-
indications-gis-en-gb-4/
 culture used in the production process contribute to Parmigiano Reggiano's unique nutty,
salty flavor and crumbly texture.

Parmigiano Reggiano cheese

 Tequila: This spirit can only be produced in specific regions of Mexico, using the blue
agave plant. The volcanic soil and arid climate of these regions contribute to the agave's
distinct flavor profile, which translates into the final product. Tequila production is also
subject to strict regulations, ensuring quality and authenticity.

Tequila bottle

 Roquefort cheese: This blue cheese is produced in the Combalou caves near Roquefort-
sur-Soulzon, France. The specific caves provide the perfect combination of humidity and
temperature for the growth of Penicillium roqueforti, the mold that gives Roquefort cheese
its unique blue veins and pungent flavour. 20

Roquefort cheese

20
https://en.wikipedia.org/wiki/List_of_European_cheeses_with_protected_geographical_status
 Darjeeling tea: This black tea is grown in the foothills of the Himalayas in the Darjeeling
district of India. The high altitude, cool climate, and specific soil composition contribute to
Darjeeling tea's delicate aroma, floral notes, and astringent taste.

Darjeeling tea

Alphonso Mango (Maharashtra): This variety of mango, prized for its sweetness, rich
flavor, and vibrant color, is grown primarily in the coastal regions of Maharashtra. The
specific climate and soil composition of the region contribute to its unique characteristics.

Alphonso Mango

Mysore Sandal Soap (Karnataka): This soap is made using pure sandalwood oil, sourced
exclusively from the forests of Karnataka. The sandalwood's distinct aroma and beneficial
properties are what make Mysore Sandal Soap special.

Mysore Sandal Soap

 Pochampally Ikat (Telangana): This handwoven fabric is produced using the intricate
tie-and-dye technique in the Pochampally village of Telangana. Its vibrant colors and
geometric patterns are a testament to the traditional weaving skills of the region.

Pochampally Ikat fabric

Chanderi Sarees (Madhya Pradesh): These lightweight, handwoven sarees are

characterized by their delicate silk and cotton blend, intricate patterns, and a shimmering
gold border. They are produced in the Chanderi town of Madhya Pradesh, a center of
traditional handloom weaving.

Chanderi Sarees

TOPIC: 7.3 INDICATION OF SOURCE

An indication of source is a basic statement on a product's label that simply identifies its origin.
Common examples include:

 "Made in China"
 "Product of the USA"
 "Assembled in Mexico"
These statements fulfill the primary function of informing consumers about the country or, at
times, the region where the product was manufactured or assembled. However, they don't
necessarily imply anything further about the product itself.

‘Made in Switzerland’ or ‘Produce of Switzerland’ are indications of source. Under Swiss law,
they are different from ‘Swiss Made’ for watches, which is defined in a special piece of legislation
as a GI as defined by Article 22.1. Indications of source give the consumer the basic information
that the good comes from a particular country. Indications of source are not GIs as defined under
Article 22.1of TRIPS Agreement, unless the good they identify possesses a certain quality,
reputation or other characteristics essentially due to the origin indicated. Thus, while ‘Swiss
Made’ is a GI under Swiss national law, ‘Made in Switzerland’ is an indication of source.21

Key characteristics of an indication of source:

 Simple statement: Offers basic information about the product's origin, typically referring
to a country or region.
 Limited scope: Doesn't guarantee or imply any specific qualities, reputation, or
characteristics associated with the origin.
 Consumer protection: Provides a basic level of transparency for consumers, allowing
them to identify the product's point of origin.
 Legal protection: Offers minimal legal protection against imitations or misuse.22

DIFFERENCE BETWEEN INDICATION OF SOURCE AND GEOGRAPHICAL

INDICATION

Understanding the distinction between an indication of source and a GI is crucial for several
reasons:

 Producers: Seeking stronger legal protection for their products' unique qualities and
reputation can benefit from registering their product as a GI.
 Consumers: GIs help consumers make informed choices by guaranteeing authenticity and
associating the product with specific qualities based on its geographical origin.
 Legal professionals: Accurately differentiating between the two concepts is crucial when
navigating legal issues related to product origin and intellectual property protection.

So, both "indication of source" and "geographical indication" serve different purposes in the
context of product origin. While an indication of source simply identifies the origin, a GI carries a
deeper meaning, linking the product to its specific geographical area and the unique characteristics
associated with it. Understanding these distinctions is essential for producers, consumers, and
legal professionals in the world of intellectual property and consumer protection.

21
https://www.wto.org/english/tratop_e/trips_e/ta_docs_e/modules4_e.pdf
22
https://www.wipo.int/ip-outreach/en/ipday/2022/toptips/geo_indications.html
 TOPIC: 7.4 GI REGISTRATION PROCEDURE

STEP 1 : Filing of application

Please check whether the indication comes within the ambit of the definition of a Gl under section
2(1)(e).

The association of persons or producers or any organization or authority should represent the
interest of producers of the concerned goods and should file an affidavit how the applicant claims
to represent their interest.

 Application must be made in triplicate.

 The application shall be signed by the applicant or his agent and must be accompanied by
a statement of case.
 Details of the special characteristics and how those standards are maintained.
 Three certified copies of the map of the region to which the GI relates.
 Details of the inspection structure if any to regulate the use of the GI in the territory to
which it relates.
 Give details of all the applicant together with address. If there is a large number of
producers a collective reference to all the producers of the goods may be made in the
application and the G.I., If registered will be indicated accordingly in the register.
Please sent your application to the following address in India
Geographical Indications Registry
IntellectualProperty Office Building
Industrial Estate, G.S.T Road
Guindy, Chennai – 600 032
Phone: 044 – 22502091-93 & 98
Fax: 044 – 22502090
E-mail:gir-ipo[at]nic[dot]in
Website: ipindia.gov.in
The applicant must have an address for service in India. Generally, application can be filed by (1) a legal
practitioner (2) a registered agent.

STEP 2 and 3: Preliminary scrutiny and examination

 The Examiner will scrutinize the application for any deficiencies.
 The applicant should within one month of the communication in this regard, remedy the
same.
 The content of statement of case is assessed by a consultative group of experts will versed
on the subject.
 The will ascertain the correctness of particulars furnished.
 Thereafter an Examination Report would be issued.

STEP 4: Show cause notice

 If the Registrar has any objection to the application, he will communicate such objection.
  The applicant must respond within two months or apply for a hearing.
 The decision will be duly communicated. If the applicant wishes to appeal, he may within
one month make a request.
 The Registrar is also empowered to withdraw an application, if it is accepted in error, after
giving on opportunity of being heard.

STEP 5: Publication in the geographical indications Journal

Every application, within three moths of acceptance shall be published in the Geographical
Indications Journal.

STEP 6: Opposition to Registration

 Any person can file a notice of opposition within three months (extendable by another
month on request which has to be filed before three months) opposing the GI application
published in the Journal.
 The registrar shall serve a copy of the notice on the applicant.
 Within two months the applicant shall sent a copy of the counter statement.
 If he does not do this be shall be deemed to have abandoned his application. Where the
counter-statement has been filed, the registrar shall serve a copy on the person giving the
notice of opposition.
 Thereafter, both sides will lead their respective evidences by way of affidavit and
supporting documents.
 A date for hearing of the case will be fixed thereafter.

STEP 7: Registration
 Where an application for a GI has been accepted, the registrar shall register the
geographical indication. If registered the date of filing of the application shall be deemed
to be the date of registration.
 The registrar shall issue to the applicant a certificate with the seal of the Geographical
indications registry.

STEP 8: Renewal
A registered GI shall be valid for 10 years and can be renewed on payment of renewal fee.

STEP 9: Additional protection to notified goods

Additional protection for notified goods is provided in the Act.23

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STEP 10: Appeal
Any person aggrieved by an order or decision may prefer an appeal to the intellectual property
appellate board (IPAB) within three months. The address of the IPAB is as follows:

Intellectual Property Appellate Board

Annexe 1, 2nd Floor, Guna Complex,
443, Anna Salai, Chennai – 600 018

What Indications are not registrable ?

For registrability, the indications must fall within the scope of section 2(1)e of GI Act, 1999.
Being so, it has to also satisfy the provisions of section 9, which prohibits registration of a
Geographical Indication

 the use of which would be likely to deceive or cause confusion; or

 the use of which would be contrary to any law for the time being in force; or
 which comprises or contains scandalous or obscene matter; or
 which comprises or contains any matter likely to hurt the time being in force; religious
susceptibilities of any class or section of the citizens of India; or
 which would otherwise be dismantled to protection in a court; or
 which are determined to be generic names or indications of goods and are, therefore, not or
ceased to be protected in their country of origin or which have fallen into disuse in that
country; or
 which although literally true as to the territory region or locality in which the goods
originate, but falsely represent to the persons that the goods originate in another territory,
region or locality as the case may be.

Explanation 1 to section 9 says that for the purposes of this section, “generic names of
indications” in relation to goods which although relates to the place of the region where the goods
was originally produced or manufactured, has lost its original meaning and has become the
common name of such goods and serves as a designation for an indication of the kind, nature, type
of other property or characteristic of the goods.

Explanation 2 further says a that “in determining whether the name has become generic, account
shall be taken of all factors including the existing situation in the region or place in which the
name originates and the area of consumption of the goods.”

Additional protection to certain goods

 An application may be made to the registrar in respect of goods notified by the central
Government for additional protection for a registered geographical indication in Form GI-
9 accompanied in triplicate along with a statement of case and shall be accompanied with
the copy of the notification issued.
  The application shall be made jointly by the registered proprietor of the Geographical
indications in India and by all the producers of the Geographical indication.

Affidavits
 The Affidavits required by the Act and the rules to be filed at the Geographical indications
Registry or furnished to the Registrar, unless otherwise provided in the matter or matters to
which they relate, paragraphs consecutively numbered, and each paragraph shall as far as
practicable be confined to one subject. Every affidavit shall state the description and the true place of
abode of the person filing it and shall state on whose behalf it is filed.
 Affidavits shall be taken
o In India-before any court or person having by law authority to receive evidence, or
before any officer empowered by such court as aforesaid to administer oaths or to
take affidavit,
o in any country or place outside India before a diplomatic or consular Officers
(Oaths and Fee) Act, 1948, or such country or place, or before a notary public or
before a judge or magistrate of the country or place.
 Where the deponent is illiterate blind or unacquainted with the language in which the
affidavit is written a certificate by the person taking the affidavit that the affidavit has read
translated or explained in his presence to the deponent made his signature or mark in his
presence shall appear in the jurat.
 Every affidavit filed before the Registrar in connection with any of the proceedings under
the Act or the rules shall be duly stamped under the law for the time being in force.

Inspection of Documents by the Public

 The documents mentioned in sub-section (1) of section 78 shall be available for inspection
at the Head Office of the Geographical indications registry.
 A copy of the register and such of the other documents mentioned in section 78, as the
Central Government may by inspection at each branch office of the Geographical
Indications Registry as and when established.
 The inspection shall be on payment of the prescribed fee and at such times on all the days
on which the offices of the Geographical Indications Registry are not closed to the public
as may be fixed by the registrar.
 Distribution of copies of journal and other documents. The Central Government may direct
the Registrar to distribute the necessary to such places as may be fixed by the Central
Government in consultation with the State Government and notified form time to time in
the Official Gazette.
Who can apply for geographical indication registration ?
Any person, manufacturer, organization or authority established by or under the law may apply for the
registration of Geographical Indication of their product.

1. The respective Applicant should represent the interests of producers.

2. The Application should be in the prescribed form in writing, which mentions each and
every detail about the product.
3. The Application should be addressed to the Registrar of Geographical Indicators along with
the prescribed fee for the registration of the product.

Whom to apply ?
The Application must be submitted to the Registrar under the Act, the Controller of Patents,
Designs and Trademarks who are appointed under sub-section (1) of Section 3 of the Trademarks
Act 1999 shall be the Registrar of Geographical Indications. He shall be assisted by the respective
number of the officers, who are appointed by the central government as they may think fit.

A full modern patent office and the country’s first geographical indication (G.I.) registry in
Chennai is a really good step in this field. The Registry will further supplement this by meeting the
requirements outlined in the Act. Every application should be filed in the Office Registry of
Geographical Indication within the territorial boundaries of the country or region or locality in the
country where the geographical indications are situated.

The Registration Process - FLOW CHART

 In December 1999, Parliament passed the Geographical Indications of Goods (Registration
and Protection) Act 1999. This Act seeks to provide for the registration and protection of
Geographical Indications relating to goods in India. This Act is administered by the
Controller General of Patents, Designs and Trade Marks, who is the Registrar of
Geographical Indications. The Geographical Indications Registry is located at Chennai.
 The Registrar of Geographical Indication is divided into two parts. Part ’A’ consists of
particulars relating to registered Geographical indications and Part ‘B’ consists of
particulars of the registered authorized users. The registration process is similar to both for
registration of geographical indication
and an authorized user which is illustrated below:
Validity of registration :

The Registrar’s certificate of registration serves as initial proof that the geographical indication
was properly registered. Without further evidence of original production, it is admissible as sole
evidence in all courts and before the Appellate Board.

Effect of registration :
The Geographical Indications Act does not require the registration of geographical indications.
Better legal protection against violations of registered geographical indicators is provided to
authorised users by registration.

However, no infringement proceedings may be initiated to stop infringement or to recover

damages in the case of unregistered geographical indications. No one will have the exclusive right
to use any of those geographical indicators; instead, two or more approved users will have co-
equal rights against other parties. The following rights come with registration-

 Subject to the restrictions and conditions associated with registration, registration

grants the exclusive right to use the registered geographical indicator with respect to the
goods to which it refers. There are co-equal rights for two or more co-users.
 Additionally, registration grants the right to infringement remedies.
 If a passing-off action has already been launched, its scope will be expanded as a result
of the registration of a geographic indication while the case is pending. 24

PAYMENT OF FEES

* The fees may be paid in form of Cash / Money Order / Bank Demand Drafts / Cheques at the Office of
Geographical Indications
Registry, Intellectual Property Office Building, G.S.T. Road, Guindy, Chennai - 600032, Tamil Nadu,
India.
* Bank Demand Drafts/Cheques shall be drawn in favour of "Registrar of Geographical Indications"
Payable at Chennai.

THE FIRST SCHEDULE

[See rule
10(1)]

No. of Entry On what payable Amount in Rupees Corresponding

Form Numbers
(1) (2) (3) (4)
1A On application for the registration of a 5,000 GI-1
geographical indication for goods
included
in one class [Section 11(1), rule 23(2)].
1B On application for the registration of a 5,000 GI-1

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 geographical indication for goods
included
in one class from a
convention country[Section 11(1),
84(1), rule 23(3) .
1C On a single application for the 5,000 GI-1
registration of a geographical indication for each class
for goods in
different classes [Section 11(3) rule
23(5)].
1D On a single application for the 5,000 GI-1
registration of a geographical indication for each class
for goods in different classes from a
convention country
[Section 11(3), 84(1), rule 23(4)].
2A On a notice of opposition to the 1,000 GI-2
registration of a geographical indication for each class
under section 14(1) or an opposition to
an authorised user
Section 17(3)(e).
2B On a counter-statement in answer to a 1,000 GI-2
notice of opposition under section 14(2)
or 17(3)(e) for each application opposed
and in answer to an application under
section 27 in respect of each
geographical indication or in answer to a
notice of opposition under
section 29.
2C On application for extension of time for 300 GI-2
filing notice of opposition. [Section
14(1), 17(3)(e), 29(2), rule 41(5)]

3A On application for the registration of an GI-3

authorised user of a registered
geographical
indication under section 17, Rule 56(1)
3B

4A For renewal under section 18(1) of the 3,000 GI-4

registration of a geographical indication
at
the expiration of the last registration.
Rule 60(1).
4B On application under section 18(5) for 1000 GI-4
restoration of geographical indication or plus applicable
an authorised user removed from the renewal fee
Register.
rule 63.
4C On application for renewal under 3,500 GI-4
proviso to section 18(4) Proviso to rule
 62 within six
months from the expiration of last
registration of geographical indication.
5A On request for alteration of the address 300 GI-5
of the principal place of business or of
residence in India or of the address in
the home country abroad in the
Register of
Geographical Indications are authorised
user, Section 28, rule 69.
5B On request to enter change in name or 300 GI-5
description of proprietor of

geographical
indication upon the Register.
5C On request for correction of any error in 300 GI-5
the name , address or description
of the
registered proprietor or the authorised
user of a geographical indication.
(Section 28(a)).
5D On application for the rectification of the 1,000 GI-5
register in Part B for the removal of an
authorised user. Section 27, Rule 65.
5E On division of goods in a class or on 1,000 GI-5
division of an application made for
registration of a geographical indication
in different classes under proviso to
Section 15, rule 23(7).
5F For a search under rule 22 in respect of 500 GI-5
one
class.
6A On application under section 27 for 1,000 GI-6
rectification of the register or removal of
a geographical indication or expunge or
vary the Statement of the Case under
rule 32(1)
recorded in the Register or an
authorised user from the register, Rule
65.
6B On application for leave to intervene in 500 GI-6
proceedings relating to the rectification
of the Register or for the removal of a
geographical indication or an authorised
user from the Register. Rule 67 and
80(4).
7A On request for certificate of 300 GI-7
Registrar [other than a certificate under
Section 69 or 78(1)]. Rule 96
7B Affidavit in support of statement of GI-7
 case or other documents required under Nil
the Act or
rules.
7C On request for entry in the Register and 200 GI-7
advertisement of a note of certificate of
validity of the Appellate Board. Rule 99.
7D On application for review of 500 GI-7
Registrar’s
decision.
7E On request to registrar for particulars 100 GI-7
of
advertisement of a geographical
indication
7F On request to Registrar for a duplicate 200 GI-7
or
further copy of certificate.
8A Application for registration of a 1,000 GI-8
 geographical indications agent. Rule 107.
8B. On request for issuance of certificate 1,000 GI-8
as
geographical indications agent. Rule 109.
8C For continuance of the name of a person 1,000 GI-8
in the Register of Geographical
Indication Agent under rule 110;
- For every year (excluding the
first year) to be paid on 1st April
in each year.
- For the first year to be paid
along with the fee for
registration, in the case of a
person registered at any time
between the 1st April, and 30th
September.
N.B: A year for this purpose will
commence on the 1st day of April and
end on the 31st day of March following.
8D On application for restoration of the 1,000 GI-8
name of a person to the Register of plus continuance
Geographical fee under entry
Indications under rule 113 No.8C
9C. On application for extension of time not 300 GI-9
being a time expressly provided in the
Act or prescribed in the rules. Rule 83.
9B. On application for leave to add or alter a 300 GI-9
registered geographical indication
[except where the application is made by
an or of a public authority or in
consequence of a
statutory requirement. Section 29.
9A. On application to Registrar for 25,000 GI-9
additional
protection to certain goods. Section
22(2), rule 77(1).
10A On application for cancellation of an 300 GI-10
entry in the Register or to strike out
goods. (Section
28(c) or (d)).
10B. Form of authorisation of agent in a Nil GI-10
matter or
proceedings under the Act. Section 76,
Rule 20
11 On petition (not otherwise charged) for 500
obtaining the Registrar’s order on any
interlocutory matter in a
contested proceeding.
12. For inspecting the document mentioned
in Section 78(1)-
a) relating to any particular 100
geographical indication or
authorised user thereof for
every hour or part thereof;
b) computer search (when made 100
available) for every 15
minutes;
 c) Search of index mentioned in 100
section 78 for every hour or
part
thereof.
13 For copying of documents (photocopy 10
or
typed) for every page or part thereof in
excess of one page
 registration of geographical indication.

Offences and penalties under Geographical Indication Act

The Geographical Indication of Goods (Registration and Protection) Act came into force in
2003 and it was formed in 1999. Under this Act, a person will be characterized to commit an
offence when he is falsely applying geographical indications or a duplicate of a geographical
indication. When a person violates the geographical indication act there are some penalties,
which can be jail for a time period between 6 months to 3 years and maybe he would have to
give a fine between five thousand to two lakhs. The Court has the power to reduce the
penalties or punishment under special circumstances.

Falsifying and Falsely Applying Geographical Indications

When a person does these following things then he will be held liable for falsifying a
Geographical Indication-

 If a person uses a Geographical Indication or a descriptively similar geographical

indication without the concern of the authorized owner then he will be held liable.
 If a person falsifies an authenticated geographical indication by altering, by adding
something to it or making some minor changes to it then he will be held liable.
When a person does these following things then he will be held liable for falsely applying a
geographical indication-

 If he uses the geographical indication or makes minor changes and uses it without
taking the permission of the authorized user, then he will be held liable.
 If a person uses any package which has a geographical indication or somewhat
similar to the geographical indication of such authenticated user for any packing,
filling or wrapping any goods other than the original product of the certified user,
then he will be held liable for false applying.

Penalty for Applying False Geographical Indications

When a person does the following things then he will get punishment or penalty which are six
months to three years of jail or fine of fifty thousand rupees to two lakh rupees.

 If he makes a duplicate copy of some geographical indication

 If he falsely applies geographical indication to some other product
 If he is making, disposing of or have anything like dice, block, machine or
instrument which tells us that he is falsifying a geographical indication
  If he uses any product to make a fake geographical indication of a country,
territory or some manufactures’ name
 If he interferes with a geographical indication of origin he uses any goods.
However, he will not be punished or fined if he proves that he did not have any intention to
falsify the geographical indication. The fine can be lessened if there is some special case.

Penalty for Selling Goods to which False Geographical Indication is applied

If a person has some goods, he is selling the goods or lets for hire, goods or products which
have the fake or false geographical indication then he will be liable for six to three years of
jail. He may have to pay the fine which is fifty thousand rupees to two lakh rupees. The
punishment or penalty may get lessened in some cases but the reason should be written in the
judgment. However, the accused has the right to give the proof that at the time of the claimed
offence is committed there were all reasonable precautions were taken and there was no to
accuse him of that geographical indication was not real or any complaint about the goods.

Enhanced Penalty on second or subsequent conviction

When a person has already committed an offence under Section 39 or Section 40 of

Geographical Indication Act and he was convicted at that time then if he does the same
offence then he will be punishable. The punishment for this will be not less than one year and
it may extend to three years as per the seriousness of the offence and he may have to pay a
fine of not more than one lakh or it may extend to two lakhs as per the seriousness of the
offence.

The punishment can be lessened in some cases for a reasonable and special reason but the
reason has to be in the judgment. The punishment can be less than a year and the fine can be
less than one lakh.

Penalty for falsely representing a Geographical Indication as registered

If a person is falsely representing a Geographical Indication as registered then a person shall

be punished with imprisonment which may extend till three years or he has to pay a fine
which may extend to two lakhs rupees or he may have to do both, which depends on the
seriousness of the offence.

Penalty for Improperly Describing a place of business as connected with the

Geographical Indications registry

If a person is doing work in his place of business or a document released by him and his
words which may logically tell us the brief description that his working place is connected
with the Geographical indication registry, then he may get punished for a maximum term of
two years or he may have to give fine or both.

Penalty for falsification of entries in the register

If any person does or tries to cause, a false or fake entry in the register which seems to be a
duplicate of another entry in the register and has done it knowingly while writing or entering
it in the register then he should be punished with legal detention or by making him pay a fine
which may extend up to two lakhs rupees.

No Offence in Certain Cases

In Section 39, 40 and 41 are stated the connection to a registered geographical indication or a
certified user of that geographical indication. It will not be considered an offence under the
sections written above if-

 The so-called felony is related to registered geographical indication and the actions
are permitted under this Act.
 The so-called felony is related to registered geographical indication and the actions
are permitted under any other law which is in force for a time being.

Forfeiture of goods

When a person is convicted under Section 39 or Section 40 or Section 41 or he is acquitted

under these Sections with proof that he has committed fraud or under Section 40 on proof
which is given in clause(a) or clause (b) or clause(c) of that section, then the court can order
the convicted or acquitted to give all his goods to the government which means giving away
all the things which are related to the goods along with the goods as a penalty.

Exemption of certain persons employed in ordinary course of business

When a person is charged with Section 39 of the Geographical Indication Act then he has to
prove-

 That on ordinary time he is working on behalf of someone else to apply

Geographical Indication or he would be making blocks, machines, or other
instruments related to goods which are being used in making Geographical
Indication.
 The case where he is subjected to a charge, he was employed and has no interest in
the goods or anything by the gain or loss depending upon the selling rate of that
goods.
  When he was committing the charged offence, he took every precaution that would
have no reason to suspect him for the authentication of the geographical indication.
 When he was using the geographical indication, he gave all the information
required in his power to the person who has the geographical indication. By this,
he can demand the acquittal.

Offences by companies

If a company does an offence under this Act then the company and each and every employee
of the company which was in charge at the time of the commission of offence will be held
liable and will be prosecuted and punished. However, if someone proves that the offence is
committed without the knowledge of that person then that person shall not be held liable to
any kind of punishment but if it is proved that the offence was done in the knowledge of the
people then the people who had knowledge will be held liable and will be punished.

Punishment for abetment in India of Acts done out of India

If a person committed the crime in India, out of India or may be found in any different part of
India then that person will be held liable for the commission of an offence which is given in
the act of geographical indication and he will be held liable at that place only where he is
found.25

TOPIC 7.5 Committee Procedure for Geographical Indications (GIs)

Note: The specific procedures may vary depending on the organization or country, but here's a
general outline:

1. Application:

 An association representing producers or an authorized body files the application.

 The application includes details about the product, its specific characteristics linked to
the geographical origin, and how those characteristics are maintained.
 A map of the relevant geographical area is often required.

2. Examination:

 A committee or designated body examines the application for compliance with

relevant regulations and to ensure the GI meets the established criteria.
 This may involve verifying the link between the product and its geographical origin,
and the existence of measures to ensure quality and consistency.
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3. Publication & Opposition:

 The application is usually published to allow interested parties to raise objections or

oppose the registration.
 The committee considers any opposition and may request revisions or clarifications
from the applicant.

4. Decision & Registration:

 The committee makes a final decision on the application, granting or rejecting the
registration of the GI.
 If successful, the GI gets registered and published in an official registry.26

Committee Functions for Geographical Indications (GIs)

Committees play a crucial role in the process of registering and protecting geographical
indications. Here are some key functions they perform:

1. Application review and examination:

 Assess the application for completeness and compliance with relevant regulations.
 Evaluate the link between the product and its geographical origin, ensuring the
claimed characteristics are genuinely linked to the specific location.
 Analyze measures in place to maintain the quality and consistency of the product
associated with the GI.

2. Decision-making:

 Determine whether to grant or reject the application for GI registration based on the
established criteria.
 May request revisions or clarifications from the applicant to address any concerns
before reaching a decision.

3. Facilitating the process:

 Provide guidance and clarification to applicants on the application process and

requirements.
 May offer support to resolve any technical or procedural issues during the application
review.

4. Maintaining transparency and fairness:

 Ensure the application process is transparent, allowing for public access to relevant
information and the opportunity for interested parties to raise objections.
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  Consider all presented arguments and evidence objectively before reaching a decision.

5. Upholding the integrity of the GI system:

 Safeguard the reputation and value of GIs by ensuring only qualified products receive
protection.
 Contribute to preventing misuse or misrepresentation of GIs.

6. Collaboration and knowledge sharing:

 Collaborate with other relevant authorities and stakeholders involved in GI protection.

 Share knowledge and best practices to improve the efficiency and effectiveness of the
GI system.

7. Contributing to policy development:

 Provide insights and recommendations to policymakers on issues related to GI

protection and related legislation.

Overall, committees play a vital role in ensuring the smooth functioning and integrity of the
GI system, contributing to fair competition, consumer protection, and the preservation of
unique cultural products.

TOPIC 7.6 OVERLAP BETWEEN GEOGRAPHICAL INDICATIONS &

TRADEMARKS

INTRODUCTION

In the complex world of intellectual property rights, geographical indications (GIs) and
trademarks serve as powerful tools to protect and distinguish products in a globalized
marketplace. GIs safeguard the unique characteristics of a product stemming from its
geographic origin, while trademarks identify the source of a product coming from a particular
company or enterprise. However, just as rivers can clash when they intersect, the overlap
between these two intellectual property categories can give rise to a range of conflicts and
complex legal disputes.

Historically, protection for geographical indications was often weaker compared to the well-
established legal framework surrounding trademarks. As consumers increasingly seek out
authentic products with a strong connection to their place of origin, GIs have gained greater
prominence globally. This has led to a surge in the use of GIs, particularly in the agricultural
and food sector, creating more potential for intersection and conflict with existing
trademarks.
Several factors contribute to the escalating likelihood of conflicts between GIs and
trademarks. Firstly, both forms of intellectual property can center around similar or even
identical terms. A prominent example is "Parmesan," which is a protected GI for cheese from
specific regions of Italy and also a widely used term for similar hard cheeses produced
elsewhere. Secondly, both GIs and trademarks serve to reduce consumer confusion. This
overlap in purpose can lead to competition over which IP right takes precedence when a
potential for misunderstanding arises.

The principle of "first in time, first in right" traditionally dictates that the earlier registered or
used mark takes priority. Yet, this principle is not always strictly applied within the realm of
GIs, where considerations of traditional knowledge, local heritage, and protection against
unfair competition often take center stage. Additionally, the expanding global trade of food or
regional products introduces new challenges. This may see conflicts arise in jurisdictions
where a particular GI was not previously well-known or protected, but where trademarks
using the same term might exist.

The consequences of such disputes are far-reaching. Producers with a legitimate claim to a GI
could find themselves unable to market their products effectively if faced with competing
"generic" brands utilizing a similar name. Conversely, trademark holders might be forced to
change well-established branding or face expensive legal battles if a newly registered GI calls
their trademark into question. These complications create uncertainty for businesses and can
ultimately mislead consumers regarding the true origin or nature of the products they
purchase.

Finding solutions to effectively manage the coexistence and potential conflicts between GIs
and trademarks is essential for a just and competitive marketplace. Striking a delicate balance
requires consideration of legal precedents, international agreements, cultural significance,
economic interests, and ever-evolving consumer expectations.27

GEOGRAPHICAL INDICATION
A geographical indication (GI) is a label that is placed on products that may be identified by
their specific geographic origin and the characteristics and reputation that are unique to that
location. To function as a GI, a sign must specify that a product is made in a particular place.
Additionally, the origin of the product should be the main factor contributing to its qualities
or reputation. Because the qualities rely on the location of production, there is a clear
connection between the product and its original place of manufacture. As a result, GIs not
only enable companies to profit from the value of their geographically distinct products, but
they also inform and draw in customers thanks to the designation of a particular place of
manufacturing.

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A wide range of products, including agricultural goods, meals, wine and spirits, handicrafts,
and industrial goods, can be given GI tags.
A geographical indication tag can be protected in three major ways:
 the use of the sui generis systems (i.e., unique regimes for protection);
 the use of collective or certification marks;
 business practices-focused methods, such as administrative product approval
procedures.
When it comes to important topics like the requirements for protection and their breadth,
there are differences between these methods. Contrarily, collective or certification mark
systems and sui generis systems have some characteristics, such as the establishment of rights
for collective usage by those who meet predetermined standards. In general, a variety of
methods, including many of those mentioned above, are employed to safeguard geographical
indicators in various countries and regional systems. These methods were developed in
accordance with different legal customs and in the setting of certain historical and economic
situations. Those who have the legal right to use a geographical indicator tag can prevent
another party from using it on a product that doesn’t adhere to the necessary production
requirements. Famous GI items include Mysore Silk from India, Parma Ham and Parmesan
Cheese from Italy’s Parma, Colombian Coffee from South America, and Colombian Coffee.

TRADEMARK

A trademark is a recognisable emblem, phrase, word, or symbol that identifies a certain good
and legally sets it apart from all other products of its kind on the market. It is a sign that
recognises a company’s ownership of the brand and specifically distinguishes a product as
being its property. Trademarks aid in product differentiation among consumers as well as
within the judicial and commercial systems. They are employed to recognise and safeguard
words and design elements that specify the origin, proprietor, or creator of a good or service.
These may be brand names for products, band names, band logos, or corporation slogans. The
use of a trademark deters unauthorised duplication of a company’s or person’s goods or
services. Additionally, they forbid the use of any marks that pose a significant likelihood of
confusion with an already-existing mark. This suggests that a business cannot use a sign or
brand name that is identical to, or sounds close to, one that is already registered, especially if
the goods or services are connected. For instance, it would be illegal for a company that
manufactures soft drinks to have a name or symbol that is too similar to Coca-Cola.
By submitting a registration application to the national/regional trademark office and paying
the necessary fees, trademark protection can be secured at the national/regional level. On a
global scale, there are two options: either use the Madrid System of the World Intellectual
Property Organisation (WIPO) or file a trademark application with the trademark office of
each nation where protection is desired. The Trade Marks Act, 1999 governs the filing of
manual or electronic applications for trademark registration along with the enforcement and
infringement of trademarks in India. The certificate of registration will be delivered if there
are no objections submitted against the name registered within ninety days. In the event of
litigation, for instance, registration provides legal clarity and improves the rights holder’s
position. In India, trademark infringement is a punishable offence that carries both civil and
criminal penalties. Apple, Nike, McDonald’s, and Bajaj are a few examples of well-known
trademarks.

MAIN DIFFERENCES BETWEEN TRADEMARK AND GEOGRAPHICAL

INDICATION
1. A trademark is a symbol used by a company (whether a legal or moral entity) to
differentiate its products from those of rivals, whilst geographic indications (GIs) serve
as a reliable identifier of a product’s location of origin. A geographical identifier lets
customers know that a product was made in a certain location and that those specific
qualities are attributable to that location. All manufacturers who produce their goods in
the location identified by a geographical indication and whose goods exhibit typical
characteristics may use it. Protected geographical indicators that could mislead
consumers about the product’s genuine origin cannot be used by unauthorised parties.
2. The term “geographical indication” also refers to “appellations of origin” that are
applied to goods that have a particular quality that is solely or primarily a result of the
location in which they were produced. However, trademarks are frequently
distinguished as being utilised by a business to set itself apart from competing
businesses’ products and services. A GI is a sort of “collective mark” used by local
farmers and artisans. A trademark can be sold and de-localized, unlike a GI.
3. While a GI is available to any producer in the locality or region in question, a trademark
is a personal right. The geographical designation may be used by all producers in that
area. For instance, “Mountain” may be used by any of the honey producers in the
Cameroon Mountain region, but only that producer may refer to its produce as “XTRA”
Mountain Honey if that producer has filed the trademark “XTRA” for its honey.
4. The same geographical indicator may be used by all businesses in a region, but only one
business can utilise a trademark registered in its name and address.
5. While a geographical indication can only be political-geographical names and symbols
related to places, a trademark can be any combination of letters, words, numerals, or just
a single number, as well as an abbreviation, a name, a device or figurative element, a
hologram, a sound, or a smell.
6. The creation of a trademark is the result of human inventiveness. Human imagination is
capable of coming up with a unique and fresh sign or expression that allows one product
 or service to stand out from similarly positioned ones. A geographical indication, on the
other hand, is a phrase that pinpoints the location of a product’s origin. Unrelated to
human inventiveness, a geographic indication is connected to terrain, human activity,
climate, or other variables. As a result, while trademarks emphasise a product’s
manufacturer, geographical indications emphasise a product’s geographic origin and
some derived qualities.

CONFLICT BETWEEN GI TAGS AND TRADEMARK

In an effort to protect products in the market by employing geographical indication tags and
trademarks, which are two separate types of distinguishing marks used on products, disputes
frequently emerge. When many parties request permission to use a distinctive sign, disputes
over who has the sole right to do so can arise. Systems are in place to prevent disputes
between conflicting claims to the ownership of a trademark. According to the territoriality
principle, similar trademarks that are used for the same goods or services can survive in
various countries.
However, the concept of territoriality has significantly weakened as a result of trade
globalisation and the growing prominence of new, borderless communication means, most
notably the Internet, needing new solutions. The coexistence of similar trademarks is
acceptable under the concept of speciality if they are applied to various products or services.
According to the principle of priority, the first person or entity to use or register a particular
trademark also receives the exclusive right to use it.
Compared to other regimes, the international trademark regime has a strong intellectual and
institutional foundation. As a result, conflicts between a previous trademark registration and a
future GI application are common, whether under a sui generis registration procedure or a
trademark regime. One method for resolving these issues is the “first in time, first in right”
idea. The expression serves as a succinct way to refer to the concepts of priority and
exclusivity when they are combined.

SOLUTION
The European Union, a leading proponent of GI protection, is constantly seeking to increase
the level of protection that is now in place. In order to provide GIs with greater protection, it
has suggested additional changes. The suggestions from the EU include a proposal for the
establishment of an international register for Geographic Indications (GIs) relating to wines
and spirits as well as specifications for the expansion of Art. 23 of TRIPS’ functionality to
cover all GI-designated commodities. In addition, the EU created a list of 41 GIs that are
regarded as generic in nations outside of the EU and pushed for them to receive the protection
they merit. These GIs cannot be regarded as generic, says the EU.
All Geographical Indications (GIs) will benefit from the more comprehensive protection
provided by these modifications, which is presently only afforded to wine and spirits. No
potential of customer confusion would exist as a result, and producers would not experience
unfair competition from those who employ correction labelling. Additionally, removing the
option to use corrective labels will stop unfair free-riding of GI-labeled products. This is seen
as a significant goal in and of itself because it lessens the possibility that a GI will get generic
as a result of usage. Enhanced protection would also benefit developing nations because it
would make it easier and more efficient for their products to reach wealthy nations’
marketplaces.
Thus, a worldwide registration for GIs and a wider application of TRIPS Art. 23 are essential
for goods coming from developing countries. By assuring protection for the 41 GIs specified
in the list and broadening the scope of TRIPS Art. 23, GI protection will be more effective.
To come to a realistic agreement on GI protection that is acceptable to all stakeholders,
international negotiations are necessary. Without a widely accepted, effective, and acceptable
protective system, the benefits of GIs won’t be completely realised.28

Case Studies on Overlap Between GIs and Trademarks

1. Tequila vs. "Tequila Sunrise" Cocktail:

 Geographical Indication (GI): Tequila

 Product: Distilled alcoholic beverage produced from the blue agave plant
 Geographical Area: Specific regions of Mexico
 Trademark: "Tequila Sunrise" (cocktail name)
 Issue: While trademarks can be used in conjunction with GIs, it's crucial to ensure the
overall representation doesn't mislead consumers about the origin of the product. In
this case, the "Tequila Sunrise" cocktail might lead some consumers to believe the
entire drink originates from the Tequila region.

Outcome: This doesn't necessarily constitute an infringement of the Tequila GI as the

cocktail itself isn't claiming to be Tequila. However, it highlights the importance of clear
labeling and consumer education so individuals understand the true origin of the various
ingredients used in such products.

2. Roquefort Cheese vs. "Roquefort" Cheese (Canada):

28
Interface & Conflict GI & Trademark: https://thelawtree.akmllp.com/insights/interface-and-conflict-
geographical-indication-and-trade-mark/
  Geographical Indication (GI): Roquefort Cheese
 Product: Sheep's milk cheese with blue mold
 Geographical Area: Specific regions of France
 Trademark: "Roquefort" (Canada, prior to 1999)
 Issue: Before 1999, Canadian producers used the name "Roquefort" for similar
cheese varieties, leading to a dispute with the Roquefort Cheese GI association in
France.

Outcome: Following legal action, Canada agreed to protect the Roquefort GI in 1999. This
prevented Canadian producers from using the name "Roquefort" for their cheese unless it was
imported from France and met the Roquefort cheese specifications. This case demonstrates
international cooperation in protecting GIs and preventing consumer confusion.

3. Napa Valley vs. "Napa Ridge" Wine:

 Geographical Indication (GI): Napa Valley

 Product: Wine produced from grapes grown in the Napa Valley region of California
 Trademark: "Napa Ridge" (owned by Constellation Brands)
 Issue: Constellation Brands, owner of the trademark "Napa Ridge" for wines, faced
legal challenges from the Napa Valley Vintners association, arguing that the
trademark diluted the distinctiveness of the Napa Valley GI.

Outcome: In 2006, the court ruled in favour of Constellation Brands, recognizing the
established nature of the "Napa Ridge" trademark and its use for wines not exclusively
produced within the Napa Valley region. This case highlights the complex considerations of
balancing the protection of GIs with existing trademark rights.29

4. Geographical Indication (GI): Feta Cheese

 Product: Brined cheese made from sheep's milk or a mixture of sheep and goat's milk
 Geographical Area: Specific regions of Greece
 Issue: Several countries, including Denmark, produced and sold cheese labeled as
"feta" throughout the 20th century, raising concerns about potential consumer
confusion and infringement upon the Greek Feta cheese GI.

Outcome: Following a lengthy legal battle, the European Court of Justice (ECJ) ruled in
favor of Greece in 2002. The court recognized Feta as a protected designation of origin
(PDO) under European Union (EU) law, restricting the use of the term "feta" only to cheese
produced in specific regions of Greece according to traditional methods. This case
significantly impacted cheese production within the EU and set a precedent for the strong
protection of established GIs in the region.

This case demonstrates the potential impact of GIs on international trade and the legal
processes involved in upholding their protection against unauthorized use. It also highlights

29
Trinchero Winery, Ltd. v. Napa Valley Vintners Association (729 F.Supp. 779 (N.D. Cal. 1990) )
the considerations of cultural heritage and traditional knowledge associated with specific
food products that are often protected through GIs.30

5. Case: CJEU - Judgment C-614/17 Queso Manchego (2019)

Court: Court of Justice of the European Union (CJEU)

Date: May 2, 2019

Parties:

 Applicant: Fundación Consejo Regulador de la Denominación de Origen Protegida

Queso Manchego (Regulatory Board for the Protected Designation of Origin "Queso
Manchego")
 Respondents: Industrial Quesera Cuquerella SL and Juan Ramón Cuquerella
Montagud

Subject: Protection of Geographical Indications (GI) and use of signs evoking the region

Facts:

 The Fundación Consejo Regulador de la Denominación de Origen Protegida Queso

Manchego is the regulatory board responsible for protecting the GI "Queso
Manchego," a type of cheese produced in specific regions of Spain.
 Industrial Quesera Cuquerella SL produces cheeses not covered by the "Queso
Manchego" GI. These cheeses are labeled with terms like "Rocinante" (a character
from Don Quixote) and images associated with the La Mancha region (where "Queso
Manchego" originates).
 The Regulatory Board argued that these labels infringe upon the "Queso Manchego"
GI by misleading consumers into believing the cheese originates from that region.

Issue:

The case centered on whether the use of signs evoking the region associated with a protected
GI (in this case, La Mancha) infringes upon the GI, even if the product itself doesn't claim to
be part of the GI.

Holding:

The CJEU ruled in favor of the Regulatory Board, stating that the use of signs capable of
evoking the region associated with a protected GI can be considered an infringement, even if
the product itself doesn't explicitly claim to be part of the GI. The court emphasized the
importance of considering the "average consumer who is reasonably well informed and
reasonably observant and circumspect" to determine if there is a likelihood of confusion.

Reasoning:

30
Federal Republic of Germany and Kingdom of Denmark v Commission of the European Communities
The court reasoned that consumers rely on GIs to identify the origin and characteristics of a
product. Allowing the use of evocative signs could mislead consumers and undermine the
value of the GI system.

Impact:

This case clarifies the scope of protection for GIs in the EU, indicating that even indirect
references to the region associated with a GI can be considered an infringement if they create
a risk of consumer confusion. This decision provides valuable guidance for both producers
and regulators in protecting and enforcing GIs within the European Union.31

6. Case Study: CJEU - Judgment C-44/17 Scotch Whisky Association (2018)

Case: CJEU - Judgment C-44/17 Scotch Whisky Association (2018)

Court: Court of Justice of the European Union (CJEU)

Date: June 7, 2018

Parties:

 Applicant: Scotch Whisky Association

 Respondent: Michael Klotz

Subject: Protection of Geographical Indications (GI) and the concept of "evocation"

Facts:

 The Scotch Whisky Association (SWA) is an organization representing producers of

Scotch Whisky, a protected Geographical Indication (GI) in the European Union.
 Michael Klotz, a German distiller, produced and marketed whisky under the name
"Glen Buchenbach," with the additional label "German product."
 The SWA argued that the use of the term "Glen" (often associated with Scottish
valleys) infringed upon the "Scotch Whisky" GI, even though the product clearly
stated its German origin.

Issue:

The case centered on the interpretation of "evocation" in the context of GI protection. Can the
use of a term, even if not identical to the protected GI, infringe upon the GI if it evokes the
region associated with the protected product?

Holding:

The CJEU ruled in favor of the SWA, establishing that the conceptual proximity between a
GI and a contested name can constitute an infringement, even if the names are not
phonetically or visually similar. The court emphasized the need to consider the perception of
31
Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego v Industrial Quesera
Cuquerella SL, Juan Ramón Cuquerella Montagud : https://curia.europa.eu/jcms/jcms/j_6/en/
https://ipkitten.blogspot.com/2019/05/court-of-justice-use-of-figurative.html
the "average European consumer, who is reasonably well informed and observant and
circumspect" to determine if the term used is likely to evoke the protected region and
potentially mislead consumers.

Reasoning:

The court acknowledged that the "evocation" concept aims to protect GIs from practices that
exploit their reputation and mislead consumers. Even if the product clearly states its true
origin, the use of evocative terms can still create a mental connection in the consumer's mind,
potentially impacting their perception of the product's quality or characteristics.

Impact:

This case represents a significant development in the protection of GIs within the EU. It
clarifies that the scope of protection extends beyond identical or similar names and
encompasses terms that, even indirectly, evoke the region associated with the GI. This
decision provides producers and regulators with a broader framework for safeguarding the
integrity and value of protected geographical indications.

Additional Notes:

 The court also considered the specific context and overall presentation of the product,
including the use of the term "German product" alongside "Glen Buchenbach."
 This case is relevant internationally as it contributes to the ongoing discussion on
balancing the protection of intellectual property rights like GIs with the fair use of
generic terms and consumer protection.32

UNIT-8

INTERNATIONAL PROTECTION ON GI

POSITION OF GI PROTECTION IN US & EU

Protection of GIs in the EU

In the EU, a series of regulations governing GIs was initiated in the early 1990s covering
agricultural and food products, wine, and spirits. Legislation adopted in 1992 covered
agricultural products (not including wines and spirits), 21 but it was replaced by changes
enacted in 2006 following a WTO panel ruling that found some aspects of the EU's scheme
inconsistent with WTO rules.22 The new rules came into force in January 2013.23
The EU laws and regulations cover three EU-wide quality labeling schemes:24

 1. Protected Designation of Origin (PDO) covers agricultural products and

foodstuffs whose quality or characteristic is essentially or exclusively due to a

32
Scotch Whisky Association V Michael Klotz: https://curia.europa.eu/jcms/jcms/j_6/en/
https://ipkitten.blogspot.com/2024/01/cjeu-damage-claim-for-unlawful.html
 particular geographic environment and is produced, processed, and prepared in a
given geographical area using recognized know-how.
 2. Protected Geographical Indication (PGI) covers agricultural products and
foodstuffs whose quality, reputation, or other characteristic is closely linked to the
geographical area and where at least one of the stages of production, processing, or
preparation takes place in the area.
 3. Traditional Specialties Guaranteed (TSG) covers foodstuffs highlighting a
traditional character, either in the composition or means of production (e.g., resulting
from a traditional production or processing method or composed of raw materials or
ingredients used in traditional recipes). Unlike PDO and PGI marks, the geographical
origin of a TSG registered product is irrelevant.

Product registration markers for these three quality schemes, along with the relevant
regulations, are shown in the text box below.
The EU regulations establish provisions regarding products from a defined geographical area
given linkages between the characteristics of products and their geographical origin. The EU
defines a GI as "a distinctive sign used to identify a product as originating in the territory of a
particular country, region or locality where its quality, reputation or other characteristic is
linked to its geographical origin." 25 According to the EU, GIs matter "economically and
culturally" and "can create value for local communities through products that are deeply
rooted in tradition, culture and geography" and "support rural development and promote new
job opportunities in production, processing and other related services."26
Because of their commercial value, the protection of GIs is a major priority for the EU. A
2012 study estimates that GI product sales were valued at €54.3 billion (roughly $72.0 billion
given 2010 exchange rates).27 More than one-half of this estimated value is for wines.
Leading EU member states, by value of GI sales, include France, Italy, Germany, the United
Kingdom, Spain, Greece, and Portugal.

"Quality Schemes" Protecting GIs in the EU

 Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on
quality schemes for agricultural products and foodstuffs.
 Regulation (EU) No 251/2014 of the European Parliament and of the Council of 26 February 2014 on the
definition, description, presentation, labelling and the protection of geographical indications of aromatised
wine products and repealing Council Regulation (EEC) No 1601/91.
 Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013
establishing a common organisation of the markets in agricultural products and repealing Council
Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007.
 Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the
definition, description, presentation, labelling and the protection of geographical indications of spirit
drinks and repealing Council Regulation (EEC) No 1576/89.

Below are product registration markers for three quality schemes—PGIs (Protected Geographical Indication),
PDOs (Protected Designation of Origin), and TSG (Traditional Specialties Guaranteed).
Source: EUR-Lex: Access to European Union Law, http://eur-lex.europa.eu/homepage.html?locale=en; Database
of Origin and Registration, http://ec.europa.eu/agriculture/quality/door/list.html; and EC, "Quality Policy in the
EU."

EU trade policy actively supports stronger protection of GIs internationally, including as part
of its multilateral and bilateral negotiations, given concerns about GI "violations throughout
the world" from misuse and imitation.28 Regarding protection of GIs, the EU is seeking
certain "TRIPS-Plus" provisions that would establish a list of EU names to be protected
"directly and indefinitely" in countries outside the EU, allow coexistence with prior
trademarks (if they are "registered in good faith"), phase out other uses of EU names, ensure
a right to use (as opposed to trademark license system), guarantee administrative protections,
and create a cooperation mechanism and dialogue.29
As of May 2016, more than 4,500 product names are registered and protected in the EU for
foods, wine, and spirits originating in both EU member states and other countries (Table 1).
Nearly two-thirds are wine registrations. Overall, about one-fourth of all registrations are for
non-EU ("third country") registrations, and these are also overwhelmingly wine registrations.
Table 1. Product Name Registrations Under EU's GI Programs

Product Category Total Registrations EU Registrations Non-EU Registrations

Food and Agriculture

1,341 1,320 21

Wine
2,885 1,750 1,135a

Spirits
336 334 2

Total
4,562 3,404 1,158

Source: CRS data compilation from Database of Origin and Registration (agricultural
products and foodstuffs), "E-Bacchus" database (wine), and "E-Spirit-Drinks" database
(spirits), available at http://ec.europa.eu/agriculture/. Data are as of May 2016.
Of these, 697 wine ("Name of Origin") registrations are held by the United States.

Protection of GIs in the United States

In the United States, GIs are treated as brands and trademarks and administered by the U.S.
Patent and Trademark Office (PTO). In addition, labeling requirements for wine, malt
beverages, beer, and distilled spirits are under the jurisdiction of the Alcohol and Tobacco
Tax and Trade Bureau (TTB). As discussed later, U.S. trade policy is actively engaged in
addressing concerns in the United States regarding the EU's GI protections to ensure that they
"do not undercut U.S. industries' market access" and to defend the use of certain "common
food names."38 In general, the United States is seeking protection for current U.S. owners of
trademarks that overlap with EU-protected GIs, the ability to use U.S. trademarked names in
third countries, and the ability to use U.S. trademarked names in the EU.39

U.S. Patent and Trademark Office

In the United States, GIs generally fall under the common law right of possession or "first in
time, first in right" as trademarks, collective, or certification marks under the purview of the
existing trademark regime administered by PTO and protected under the U.S. Trademark
Act.40
Accordingly:

 Trademarks "protect words, names, symbols, sounds, or colors that distinguish goods
and services from those manufactured or sold by others and to indicate the source of
the goods. Trademarks, unlike patents, can be renewed forever as long as they are
being used in commerce."41 Trademarks registrations are renewable for 10-year terms.
Trademarks are distinctive signs that are used by a company to identify itself and its
products or services to consumers and can take the form of a name, word, phrase,
logo, symbol, design or image, or a combination of these elements. Trademarks do not
refer to generic terms, nor do they refer exclusively to geographical
terms.42 Trademarks may refer to a geographical name to indicate the specific
qualities of goods as either certification marks or collective marks.
 Certification marks refer to "any word, name, symbol, device, or any combination,
used, or intended to be used, in commerce by someone other than its owner, to certify
regional or other origin, material, mode of manufacture, quality, accuracy, or other
characteristics of such person's goods or services, or that the work or labor on the
goods or services was performed by members of a union or other organization."43
 Collective marks refer to "a trademark or service mark used, or intended to be used,
in commerce, by the members of a cooperative, an association, or other collective
group or organization, including a mark that indicates membership in a union, an
association, or other organization"44 and "may include a mark which indicates
membership in a union, and association, or other organization."45

PTO defines GIs, consistent with TRIPS, 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."46 According to PTO, a GI can take many forms, including a geographic place name
(such as "Napa Valley"), a symbol (such as a picture of the Eiffel Tower, the Statue of
Liberty, or an orange tree), the outline of a geographic area (e.g., the outline of the state of
Florida or a map of the Dominican Republic), a color, or "anything else capable of
identifying the source of a good or service."47 GIs are protected under U.S. trademark laws
against unfair competition and trademark infringement regardless of whether they are
registered with PTO.
According to PTO, GIs "serve the same functions as trademarks, because like trademarks
they are: source-identifiers, guarantees of quality, and valuable business interests."
Establishing a product based on its geography can be complicated, involving establishing a
trademark or a brand name through an extensive advertising campaign. Limited information
specific to food and agricultural products regarding the application process on certification or
collective marks is available from PTO.48 PTO does not protect geographic terms that are
considered "generic" or "so widely used that consumers view it as designating a category of
all of the goods/services of the same type, rather than as a geographic origin." PTO does not
provide oversight of any applicable standards or standards established by private industry
(such as American National Standards Institute and Underwriters Laboratories).
PTO does not have a special register for GIs in the United States. PTO's trademark register,
the U.S. Trademark Electronic Search System (TESS), contains GIs registered as trademarks,
certification marks, and collective marks.49 Statements by USTR claim that EU farm products
hold nearly 12,000 trademarks in the United States.50 These register entries are not designated
with any special field (such as "geographical indications") and cannot be readily compiled
into a complete list of registered GIs. Thus, there does not appear to be specific data available
about GIs registered in the United States in the way that there are for the EU (see above
sections). Some GI names protected under U.S. trademark laws include Idaho Potatoes,
Florida Oranges, Vidalia Onions, Napa Valley Wines, and Washington State Apples.
Examples of foreign GI certification marks protected in the United States include Brunello Di
Montalcino (Italy), Cognac (France), Liebfraumilch (Germany), Mosel (Germany), Vino
Nobile Di Montepulciano (Italy), Darjeeling (India), and Jamaica Blue Mountain Coffee
(Jamaica).51
U.S. law provides that the trademark owner has the exclusive right to prevent confusing uses
of the mark by unauthorized third parties.52 Although registration is not necessary to establish
rights, PTO promotes owning a federal trademark registration to provide for the following
advantages:53

 Constructive notice to the public of the registrant's claim of ownership of the mark,
 A legal presumption of the registrant's ownership of the mark and the registrant's
exclusive right to use the mark nationwide on or in connection with the
goods/services listed in the registration,
 The ability to bring an action concerning the mark in federal court,
 The use of the U.S registration as a basis to obtain registration in foreign countries,
and
 The ability to file the U.S. registration with the U.S. Customs Service to prevent
importation of infringing foreign goods.

Goals and Challenges within Ongoing Negotiations

EU Views and Objectives

EU officials publicly declared their intentions to maintain GI protections as part of the T-TIP
negotiations,64 but the EU's tabled March 2016 proposals included annex lists with roughly
200 protected food and agricultural products, including meats and cheese, fruits and
vegetables, and wines and spirits.65 EU member state Greece has also threatened to veto T-
TIP unless GIs are protected,66 including feta cheese—a name claimed by the Greeks under
the EU's GI regime. According to dairy industry representatives, cheese names on the EU's
GI list represent about "14% of U.S. cheese production, valued at approximately $4.2 billion
per year."67 More recent reports suggest that the EU might consider prioritizing this list to
roughly 50 GIs.68
The EU's March 2016 proposal further notes the need to include specific GI provisions in T-
TIP given perceived shortcomings in the U.S. system relating to GIs.69 The EU cites concerns
regarding registration and judicial costs, ineffective protection against fraud and
infringements, and misleading indications of origin, among other concerns.70 USTR claims
that the U.S. trademark system provides adequate protection for European products in the
United States.71
The EU's March 2016 proposal on wines and spirits includes provisions that would go
beyond the 2006 U.S.-EU Agreement on Trade in Wine as part of the overall stated
objectives to "improve cooperation" and "enhance the transparency of regulations" between
the United States and EU.72 Previously, some in the U.S. wine industry had expressed
concerns given public comments by European trade groups indicating their desire to
renegotiate some provisions in the 2006 agreement. Recently concluded trade agreements
between the EU and other third countries have raised concerns among U.S. winemakers and
could restrict U.S. exports to these countries of wines that use certain "semi-generic" or
"traditional" terms. The EU's T-TIP proposal would restrict the use of semi-generic wine
terms and also extend the agreement to spirits.

U.S. Views and Objectives:

Many U.S. food manufacturers view the use of common or traditional names as generic terms
and the EU's protection of its registered GIs as a way to monopolize the use of certain food
and wine terms and as a form of trade protectionism. Specifically, several industry groups
have expressed concern that the EU is using GIs to impose restrictions on the use of common
names for some foods—such as parmesan, feta, and provolone cheeses and certain wines—
and limit U.S. food companies from marketing these foods using these common names. The
United States does not protect a geographic term that is considered "generic"—that is, being
"so widely used that consumers view it as designating a category of all of the goods/services
of the same type, rather than as a geographic origin."73
Bilateral trade concerns arise when a product name recognized as a protected GI in Europe is
considered a generic name in the United States. For example, in the United States, "feta" is
considered the generic name for a type of cheese. However, it is protected as a GI in Europe.
As such, feta cheese produced in the United States may not be exported for sale in the EU,
since only feta produced in countries or regions currently holding GI registrations may be
sold commercially. According to USTR, "The United States continues to have serious
concerns with the EU's system for the protection of GIs, including with respect to its negative
impact on the protection of trademark and market access for U.S. products that use generic
names."74
Complicating this issue further are GI protections afforded to registered products in third
country markets. This has become a concern for U.S. agricultural exporters following a series
of recently concluded trade agreements between the EU and countries such as Canada, South
Korea, South Africa, and other countries that are, in many cases, also major trading partners
with the United States. Specifically, provisions in these agreements may provide full
protection of GIs and not defer to a country's independent assessment of generic status for
key product names. For example, separate recent agreements negotiated by the EU with
Canada and South Africa could reportedly recognize up to 200 EU GIs for milk and dairy
products, and could affect U.S. trade with Canada and South Africa.75 The text box below
lists some of the cheese names where use is now restricted or at risk of being restricted in
certain markets because of the EU's GI protections. Similar types of GI protections are
reportedly also in other trade agreements between the EU and other countries, affecting a
range of food products and wine. In addition to facing trade restrictions for U.S. products in
the EU market, these protections may limit the future sale of U.S. exported products bearing
such names to these third countries, regardless of whether the United States may have been
exporting such products carrying a generic name for years.
USTR's 2016 Special 301 Report on the status of global IPR protection and enforcement
outlines U.S. concerns related to the treatment of GIs in the U.S.-EU trade negotiations and
other initiatives with Canada, China, Costa Rica, El Salvador, Japan, Jordan, Morocco, the
Philippines, South Africa, Vietnam, and others. According to this report, among the stated
U.S. goals are

 ensuring that the grant of GI protection does not violate prior rights (e.g., in cases in
which a U.S. company has a trademark that includes a place name);
 ensuring that the grant of GI protection does not deprive interested parties of the
ability to use common names, such as parmesan or feta;
 ensuring that interested persons have notice of, and opportunity to oppose or to seek
cancellation of, any GI protection that is sought or granted;
 ensuring that notices issued when granting a GI consisting of compound terms
identify its common name components; and
 opposing efforts to extend the protection given to GIs for wines and spirits to other
products. 33

UNIT-9

GI CASE STUDIES

Case Study 1: Kashmir Saffron

 Background: Kashmir Saffron is a GI-protected spice renowned for its intense flavor,
aroma, and deep red color, resulting from its cultivation in the specific climatic
conditions of the Kashmir Valley.
 Case: Due to high demand and limited production, fake or adulterated saffron often
enters the market, either claiming to be from Kashmir or blending lower-quality
saffron with genuine Kashmir Saffron.
 GI Significance: The GI tag plays a crucial role in:
o Protecting Authenticity: Prevents misrepresentation and ensures consumers
are purchasing genuine Kashmir Saffron.
o Ensuring Price Premiums: GI-certified saffron commands higher prices,
supporting the livelihoods of farmers engaged in traditional cultivation
practices.
o Preserving Cultural Heritage: Kashmir saffron holds significant cultural and
historical value in the region, and the GI helps preserve this important aspect.
 Legal Issues:
o Infringement: Producers who sell fake or adulterated saffron as Kashmir
Saffron are violating the GI protection.
33
Geographical Indications (GIs) in U.S. Food and Agricultural Trade: https://www.everycrsreport.com/reports/R44556.html
 o Enforcement Challenges: Limited resources and the ability to monitor the
entire supply chain create obstacles in effectively enforcing the GI
protection.34

Case Study 2: Manipuri Black Rice

 Background: Manipuri Black Rice, known as "chakhao", is a GI-protected rice

variety native to Manipur, India. It boasts unique nutritional properties, including high
antioxidant content, as well as a distinct aroma and nutty flavor.
 Case: As its reputation grows, concerns have been raised about unauthorized
cultivation and sale of Manipuri Black Rice outside of the defined GI region.
 GI Significance: The GI serves to:-
o Guarantee Origin: Ensure consumers can purchase authentic Manipuri Black
Rice grown and processed within the designated geographical area.
o Promote Traditional Practices: GI protection helps preserve
traditional cultivation methods and supports local farmers.
o Economic Development: GI recognition can stimulate economic growth by
increasing the value and demand for genuine Manipuri Black Rice.
 Legal Issues:
o Misappropriation: Producers who falsely sell rice cultivated outside the GI
region as Manipuri Black Rice risk legal action for infringement.
o Difficulty of Enforcement: Protecting the GI tag can be challenging due to
limited resources and the potential for mislabeling in complex supply chains.

Case Study 3: Spanish Champagne Case

Facts:

 In the early 20th century, Spanish producers used the term "Champagne" to label their
sparkling wines, leading to disputes with French producers of Champagne, a protected
GI in France.

Issue:

Could a non-EU country (Spain) be prevented from using a term protected as a GI within the
EU (Champagne)?

Outcome:

 The dispute was settled through international agreements, specifically the Madrid
Agreement and the Lisbon Agreement for the protection of appellations of origin
and their international registration.
34
Kashmiri Saffron Receives the Geographical Indication (GI) Tag:
https://www.kashishipr.com/blog/kashmiri-saffron-receives-the-geographical-indication-gi-tag/
  These agreements established a system for the mutual recognition and protection of
GIs between member countries.
 As a consequence, Spain agreed to phase out the use of "Champagne" for its
sparkling wines and adopt alternative names.

Significance:

 This case highlights the importance of international cooperation in protecting GIs

and the role of international agreements in resolving disputes.35

Case Study 4: Darjeeling Tea Case:

Facts:

 Darjeeling tea, a type of black tea known for its distinct flavor and aroma, is a
protected GI in India.
 In 2003, a dispute arose regarding the use of the "Darjeeling" name on tea produced
outside the Darjeeling region within India.

Issue:

Could the "Darjeeling" GI protection be extended to cover tea produced within India but
outside the specific Darjeeling region?

Outcome:

 The Indian courts ruled in favour of the Darjeeling tea producers, recognizing the GI
protection for tea produced only within the defined geographical area of
Darjeeling.
 This decision helped to safeguard the reputation and quality associated with
genuine Darjeeling tea.36

Significance:

 This case demonstrates the importance of clearly defining the geographical scope of
a GI and enforcing protection within those boundaries to prevent misleading
consumers.37

Case Study 5: Pochampally Ikat Case:

Facts:

 Pochampally Ikat is a type of handloom textile woven in the Pochampally region of

Telangana, India, known for its intricate geometric patterns and vibrant colors.
 In 2004, the Pochampally Ikat received GI protection in India.
35
A case of champagne: a study of geographical indications :
https://research-management.mq.edu.au/ws/portalfiles/portal/170417133/Publisher_version.pdf

36
The Story of Darjeeling Tea: The Champagne of Teas - The Spice & Tea Shoppe (salty-savory-sweet.com)
37
How an imposter has been threatening the champagne of teas (finshots.in)
Issue:

The case involved protecting the GI from unauthorized use of the name and design by
producers outside the Pochampally region.

Outcome:

 The Indian courts have issued several rulings in favor of the Pochampally Ikat
producers, granting injunctions against producers using the name or imitation designs
for their textiles.
 These efforts aim to safeguard the livelihoods of traditional weavers in the
Pochampally region and preserve the unique cultural heritage associated with the
textile.

Significance:

 This case exemplifies the ongoing efforts to protect GIs from misappropriation and
dilution and ensure fair competition for traditional producers.38

Case Study 6: Tripathi Ladoo Case:

Facts:

 Tripathi Ladoo, a type of sweet made from gram flour and sugar, is a famous sweet
associated with the town of Rewari in Haryana, India.
 In 2014, the Tripathi Ladoo received GI protection in India.

Issue:

The case involved protecting the GI from unauthorized use of the name by producers
outside the Rewari region.

Outcome:

 The Indian courts have granted interim injunctions against producers using the
"Tripathi Ladoo" name for their sweets produced outside the Rewari region.
 These measures aim to protect the reputation and distinctiveness of the genuine
Tripathi Ladoo associated with the specific geographical location and traditional
knowledge.

38
GI AS AN INSTRUMENT FOR SUSTAINABLE DEVELOPMENT: A CASE OF POCHAMPALLY IKAT:
https://textilevaluechain.in/in-depth-analysis/articles/traditional-textiles/gi-as-an-instrument-for-sustainable-development-
a-case-of-pochampally-ikat/