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PGS 503: Geographical indication Page 1

GEOGRAPHICAL INDICATIONS OF GOODS

Dr. Purna K. BaruaDepartment of Plant Breeding & Genetics

Assam Agricultural UniversityJorhat 785013

Email: [email protected]

Definition of geographical indication:

1. Section 2(e) of the GI of Goods (Protection & Registration) Act, 1999 :

geographical indication, in relation to goods, means an indication which identifies such goods as

agricultural goods, natural goods or manufactured goods as originating, or manufactured in the

territory of a country, or a region or locality in that territory, where a given quality, reputation or

other characteristic of such goods is essentially attributable to its geographical origin and in case

where such goods are manufactured goods one of the activities of either the production or of

processing or preparation of the goods concerned takes place in such territory, region or locality,

as the case may be.

2. Trips Agreement (Article 22, Section 1)

Geographical indications are indications which 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 geographical origin.

3. Appellation of origin is another term that refers to GI.

Paris Convention (1967) and Lisbon Agreement (1979) refer GI as appellation of origin:

Appellation of origin means geographical name of a country or region or place to designate a

product originated there and the characteristic qualities are exclusively or essentially due to the

geographical environment including natural and/ or human factors.

Thus, GI is basically a notice that a given product originates in a given geographical area and the

characteristic qualities of the product are essentially due the natural and/ or human factors of that

geographical region.

Examples: Champagne wine, Bordeaux wine, Cognac brandy (France), Havana cigar (Cuba),

Roquefort cheese (England), Scotch whisky (Scotland), Tequila (Mexico), Darjeeling tea, Basmati

rice, Assam tea, Banarasi Saree etc.

Examples of GI registered in India: Muga silk of Assam, Assam Orthodox tea, Darjeeling tea,

Champagne wine, Scotch whiskey (only suggestive list)

GI is an exceptional IPRThe general characteristics of IPR are: IPR is private property; it is exclusive right, granted for

limited period within the jurisdiction (political limits) of a country. IPR is generally evolved to giveincentive for original and new creations or innovations. On the contrary, GI protects traditional

knowledge. GI is a communal property rather than private property. It is indefinitely renewable.

Moreover GI rights are non-transferable unlike the other intellectual properties that are transferable

by licence, assignment or inheritance.

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Similarities of GI and Trademark1. Both TM and GI are sign/ symbol/ logo to identify goods/ product, which may of traditional

nature.

2. Both can be maintained perpetually, i.e. indefinitely renewable.

3. Both are exclusive rights, protected by registration.

4. Both can be applied together, or in combination with other IPRs. E.g. Tata Tea + Assam

orthodox tea; Moet & Chandon + Champagne.

However, there are lot of differences between TM and GI.

Trademark is applicable to both goods and

services.

Geographical Indication is applicable to goods

only

TM sign remains same everywhere. GI is just name, the sign is not constant, unless it

is registered as a logo.

It identifies goods/ service of a company/

undertaking/ enterprise to distinguish from that

of its competitors.

GI identifies goods of a geographical origin.

TM is private property of the registered owner. GI is community right.

TM can be assigned, licensed or inherited. GI cannot be assigned, licensed or inherited.In case of infringement of TM, only civil

remedies are available.

Both civil and criminal remedies are available.

How GI is protected? Four methods of protection are observed in the world.

1. Sui generis legislation: Issues decree e.g. in France and Portugal.

2. Registration under GI law: India and most countries have GI Act.

3. Law against unfair competition or the tort of passing-off: to prevent misleading/ deceptive GI. In

this system there is no formality of registration/ decree. The aggrieved party goes to court to file its

case. Most countries have civil laws to protect it.

4. Registration under Trademark law as collective mark or certification mark: e.g. Stilton cheese

(England) is a certification mark restricted to the farmers who comply with the rules. Japan extendsGI protection through collective mark. Similarly Scotland tomatoes is registered as a collective

mark.

International obligation and protection system

1. Bilateral Agreement e.g. between France and Spain: They agree to protect each others GIs and

mutually exchange the lists of GIs.

2. Multilateral Agreement: Sets minimum standards. TRIPS Agreement of WTO (1994), Paris

Convention on industrial property (1967) and Lisbon Agreement for the Protection of Appellations

of Origin and their International Registration (1958)

TRIPS Agreement

There are now 153 WTO Members, and India is a founder Member. According to TRIPSAgreement WTO Members are obliged to provide legal means to protect GIs. TRIPS sets minimum

standards for the protection of GI. There is no obligation to protect a GI of other Members if that GI

is not protected at home.

Article 22 TRIPS Agreement: All Members must provide legal system to protect GI and to prevent

the use of marks that mislead the public as to the geographical origin of the goods. Members may

refuse to register a trademark or may invalidate an existing trademark if it misleads the public as GI.

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Article 23 of TRIPS gives Special provisions for wines and spirits. All Members must provide

protection to prevent the use of a GI for wines and spirits not originating in the place indicated by

the GI. GI of wines and spirits cannot even be indicated by expressions such as "kind", "type",

"style", "imitation" or the like. Moreover Members may refuse to register or may invalidate a

trademark that conflicts with a GI for wine or spirits.

Article 24 Members are not obliged to protect GI, if it has become a generic term for describing the

product.

In the Doha Development Agenda of WTO launched in December 2001 Members are negotiating

for a multilateral Register of GIs. Some Members, especially the European Community, are

negotiating for inclusion of GIs on products other than wines and spirits under Article 23 of TRIPS.

However, this is opposed by others e.g. United States.

Paris Convention (1967)

Paris Convention refers GI as Appellations of Origin. Essentially both are synonymous.

Appellations of origin must be protected against unauthorized use of an AO that is misleading/

deceptive. There are 173 Members of Paris Convention (1967). India joined lately on December 7,

1998.

Lisbon Agreement (1958, 1967, 1979)Lisbon Agreement for the Protection of Appellations of Origin and their International Registration

(1958, 1967, 1979): There are 27 Members party to Lisbon Agreement. Prominently, India, UK,

USA etc are not Members. The Agreement provides for single international registration that

provides protection in different Member countries.

Benefits of GI protection1. Consumers are ensured of original product and its qualities.

2. Encourages local enterprises including village industries.

3. Economic importance: products sell at premium prices e.g. Basmati rice, Darjeeling tea,

Assam Muga silk, Scotch whiskey, Champagne wine etc.

4. GI registration stimulates exports.

5. GI registration helps preserving indigenous tradition and culture.

Stakeholders of GIs

1. Producers who produce, deal, exploit or manufacture the goods.

2. Proprietors of the GI.

3. Authorized users of GI.

Why was GI law enacted in India?1. There was international obligation under the Trips Agreement.

2. GI protection was necessary to protect and promote Indian goods in global market.

3. It was also necessary to prevent deception of consumers.

4. GI registration system is required for economic prosperity of the producers of traditional

goods having trade reputation.

GI may become genericExamples: Bordeaux mixture (Copper sulphate + lime) (France), Tortila (Mexico), Pasta, Pizza

(Italy), Chow mien (China). Is Basmati going to be generic? Generics are public properties no

protection of generics as GI.

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The Geographical Indications of Goods (Registration and Protection) Act, 1999The GI Rules, 2002 Enforced from September 2003.

The Act defines Geographical Indication. It provides a mechanism for registration of GIs and

establishes a GI Registry. It defines authorized users and registered proprietor. The Act gives higher

level of protection for certain notified goods. It also provides remedies for infringements.

Who can apply?Any association of persons or producers or any organization or authority established by or under

law representing the interest of producers of the concerned goods can apply for registration of GI,and not individual persons.

How to apply?1. Application for registration of a GI should be in the prescribed form (GI-1) accompanied by

prescribed fee of Rs.5000/- per class of goods.

2. Application in triplicate along with three copies of a Statement of Case accompanied by five

copies of Additional Representations.

Application forms and fees: 1st

Schedule: Fees & Form Nos., 2nd

Schedule: Forms

Application for registration Form GI-1 Rs. 5000

Opposition to registration Form GI-2 Rs. 1000Application for registration as authorized user Form GI-3 Rs. 500

Renewal of registration Form GI-4 Rs. 3000

Classification of goods in India (4th

Schedule in GI Rules 2002) - 34 classes of goods

Statement of Case It describes:

1. How the GI serves to designate the goods as originating from the concerned geographical

area, in respect of specific quality, reputation or other characteristics which are due

exclusively or essentially to the geographical environment

2. Three certified copies of the map of the territory, or region.

3. Particulars of human skills involved or uniqueness of the geographical environment or otherinherent characteristics of the GI.

4. Particulars of the mechanism to ensure that the standards, quality, integrity, and

consistency, or other special characteristic maintained by the producers, or manufacturers of

the goods;

5. An affidavit as to how the applicant claims to represent the interest of the concerned

persons, producers, authority or organizations.

6. Proof of origin and method of production.

Proof of origin and method of production1. It is a brief description about the origin and the evolution of the goods and its production

method.

2. Documentary proof of origin may be Gazettiers and other authentic texts.3. Uniqueness of the goods: Description of peculiar features that makes the GI different from

other similar goods.

Additional representations Name and address of the applicant and Agent if any.

Specification and class of goods.

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Period of use.

GI Registry in Indiahttp://ipindia.nic.in/girindia/

The GI Registry is at Chennai having all India jurisdictions. The Controller-General of Patents,

Designs & Trademarks (Mumbai) is the Registrar of GI. The Register of GI is divided into two

parts:Part A contains details of distinguishing characteristics of the goods and of the registered proprietor.

Part B contains particulars of authorized users of GI such as the producers (traders and dealers).

Prohibitions of certain GIs: Examples

1. GI of goods use of which would be likely to deceive or cause confusion in the public.

2. GI which would be contrary to any law.

3. Goods which comprises or contains scandalous or obscene matter.

4. GI comprising or containing any matter likely to hurt the religious sentiment of any class or

section of the citizens.

5. Goods that would be disentitled to protection in a court.

6. GI that are determined to generic names or GI ceases to be protected in their country of

origin, or which have fallen in to disuse in that country.7. GI that falsely represent to the persons that the goods originate in another territory, region or

locality.

Term of protectionRegistration is valid for 10 years but can be recurrently renewed on payment of renewal fee.

Similar procedure followed for registration as an authorised user.

Effect of registration as GI1. Infringement action can be initiated both by the registered proprietor and authorised users

whose names have been entered in the GI Register.

2. A registered GI is infringed by a person who is not an authorised user, uses such GI by any

means in the designation or presentation that indicates or suggests that such goods originatesin a geographical area other than the true place of origin of such goods in a misleading

manner or uses a GI which constitutes an act of unfair competition (Act explains it as

dishonest practices).

Remedies for InfringementCivil remedies - cover the injunction damages- include the delivery of the infringed goods for

destructive purpose and forfeiting of the goods which bear upon the fake representation of the

original GI.

Criminal remedies imprisonment 6 months to 3 years and/ or fine Rs.50,000 to Rs.2,00,000.

If the one commits same offence again: minimum sentence of 1 year with minimum fine of

Rs.2,00,000.

Higher protection for notified goods1. Not only in respect of wines and spirits but also other goods as may be notified by the Govt.

2. In respect of such notified goods, infringement shall include using of such expression as

kind, style, imitation, or like expressions by unauthorized users.

3. Such additional protection requires no proof of likelihood of deception.

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4. Such prohibition also applies to translations and use of such GI for notified goods would be

forbidden whenever the goods do not come from the area in question.

5. Trademark shall not be granted, if it contains a GI for notified goods and the products do not

originate from the region in question.

6. The Act makes no difference between an Indian GI and a foreign GI.

The GI Registry has registered 178 goods till July 26, 2012 as reported in the official website.

THE FOURTH SCHEDULE of the GI Rules, 2002

Classification of goods Name of the classes

(Parts of an article or apparatus are, in general, classified with the actual article or apparatus, except

where such parts constitute articles included in other classes).

Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry;

unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions;

tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning

substances; adhesive used in industry

Class 2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood;colorants; mordents; raw natural resins; metals in foil and powder form for painters; decorators;

printers and artists

Class 3. Bleaching preparations and other substances for laundry use; cleaning; polishing;

scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions,

dentifrices

Class 4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions;

fuels(including motor spirit) and illuminants; candles, wicks

Class 5. Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for

medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental

wax; disinfectants; preparation for destroying vermin; fungicides, herbicides

Class 6. Common metals and their alloys; metal building materials; transportable buildings of

metal; materials of metal for railway tracks; non-electric cables and wires of common metal;ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common

metal not included in other classes; ores

Class 7. Machines and machine tools; motors and engines (except for land vehicles); machine

coupling and transmission components (except for land vehicles); agricultural implements other

than hand-operated; incubators for eggs

Class 8. Hand tools and implements (hand-operated); cutlery; side arms; razors

Class 9. Scientific, nautical, surveying, electric, photographic, cinematographic, optical,

weighing, measuring, signalling, checking (supervision), life saving and teaching

apparatus and instruments; apparatus for recording, transmission or reproduction of

sound or images; magnetic data carriers, recording discs; automatic vending machines

and mechanisms for coin-operated apparatus; cash registers, calculating machines, data

processing equipment and computers; fire extinguishing apparatus

Class 10. Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes

and teeth; orthopaedic articles; suture materials

Class 11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying

ventilating, water supply and sanitary purposes

Class 12. Vehicles; apparatus for locomotion by land, air or water

Class 13. Firearms; ammunition and projectiles; explosives; fire works

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Class 14. Precious metals and their alloys and goods in precious metals or coated therewith, not

included in other classes; jewellery, precious stones; horological and other chronometric

instruments

Class 15. Musical instruments

Class 16. Paper, cardboard and goods made from these materials, not included in other classes;

printed matter; bookbinding material; photographs; stationery; adhesives for stationery or

household purposes; artists materials; paint brushes; typewriters and office requisites(except furniture); instructional and teaching material (except apparatus); plastic

materials for packaging (not included in other classes); playing cards; printers' type;

printing blocks

Class 17. Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not

included in other classes; plastics in extruded form for use in manufacture; packing,

stopping and insulating materials; flexible pipes, not of metal

Class 18. Leather and imitations of leather, and goods made of these materials and not included in

other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and

walking sticks; whips, harness and saddlery

Class 19. Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch

and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20. Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork,reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl,

meerschaum and substitutes for all these materials, or of plastics

Class 21. Household or kitchen utensils and containers(not of precious metal or coated therewith);

combs and sponges; brushes(except paints brushes); brush making materials; articles for

cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building);

glassware, porcelain and earthenware not included in other classes

Class 22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other

classes) padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials

Class 23. Yarns and threads, for textile use

Class 24. Textiles and textile goods, not included in other classes; bed and table covers.

Class 25. Clothing, footwear, headgear

Class 26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles;artificial flowers

Class 27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing

floors; wall hangings(non-textile)

Class 28. Games and playthings, gymnastic and sporting articles not included in other classes;

decorations for Christmas trees

Class 29. Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and

vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats

Class 30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations

made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking

powder; salt, mustard; vinegar, sauces, (condiments); spices; ice

Class 31. Agricultural, horticultural and forestry products and grains not included in other classes;

live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for

animals, malt

Class 32. Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit

juices; syrups and other preparations for making beverages

Class 33. Alcoholic beverages (except beers)

Class 34. Tobacco, smokers articles, matches

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General Information(As per the official website, http://ipindia.nic.in/girindia/)

What is a Geographical Indication? It is an indication.

It is used to identify agricultural, natural, or manufactured goods originating in the said area.

It originates from a definite territory in India.

It should have a special quality or characteristics unique to the geographical indication.

Examples of possible Geographical Indications in India:Some of the examples of Geographical Indications in India include Basmati Rice, Darjeeling Tea,

Kancheepuram silk saree, Alphonso Mango, Nagpur Orange, Kolhapuri Chappal, Bikaneri Bhujia

etc.

What are the benefits of registration of Geographical Indications? It confers legal protection to Geographical Indications in India.

It prevents unauthorized use of a registered Geographical Indication by others.

It boosts exports of Indian Geographical indications by providing legal Protection.

It promotes economic Prosperity of Producers.

It enables seeking legal protection in other WTO member countries.

Who can apply for the registration of a Geographical Indication?Any association of persons, producers, organization or authority established by or under the law can

apply. The applicant must represent the interest of the producers. The application should be inwriting in the prescribed form. The application should be addressed to the Registrar of

Geographical Indications along with prescribed fee.

Who is the Registered Proprietor of a Geographical Indication?

Any association of persons, producers, organisation or authority established by or under the law can

be a registered proprietor. There name should be entered in the Register of Geographical Indications

as registered proprietor for the Geographical Indication applied for.

Who is an authorized user?A producer of goods can apply for registration as an authorized user, with respect to a registered

Geographical Indication. He should apply in writing in the prescribed form alongwith prescribed

fee.

Who is a producer in relation to a Geographical Indication?

A producer is a person dealing with three categories of goods Agricultural Goods including the production, processing, trading or dealing.

Natural Goods including exploiting, trading or dealing.

Handicrafts or industrial goods including making, manufacturing, trading or dealing.

Is registration of a Geographical Indication compulsory?While registration of Geographical indication is not compulsory, it offers better legal protection for

action for infringement.

What are the advantages of registering? Registration affords better legal protection to facilitate an action for infringement.

The registered proprietor and authorized users can initiate infringement actions.

The authorized users can exercise right to use the Geographical indication.

Who can use the registered Geographical Indication?

Only an authorized user has the exclusive rights to use the Geographical indication in relation to

goods in respect of which it is registered.

How long is the registration of Geographical Indication valid? Can it be renewed?The registration of a Geographical Indication is for a period of ten years. Yes, renewal is possible

for further periods of 10 years each. If a registered Geographical Indications is not renewed, it is

liable to be removed from the register.

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When a Registered Geographical Indication is said to be infringed?When unauthorized use indicates or suggests that such goods originate in a geographical area

other than the true place of origin of such goods in a manner which misleads the public as to their

geographical origins.

When use of Geographical Indication results in unfair competition including passing off in

respect of registered Geographical indication.

When the use of another Geographical Indication results in a false representation to the public

that goods originate in a territory in respect of which a Geographical Indication relates.Who can initiate an infringement action?The registered proprietor or authorized users of a registered Geographical indication can initiate an

infringement action.

Can a registered Geographical Indication be assigned, transmitted etc?

No, A Geographical Indication is a public property belonging to the producers of the concerned

goods. It shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or

such other agreement. However, when an authorized user dies, his right devolves on his successor

in title.

Can a registered Geographical Indication or authorized user be removed from the register?Yes, The Appellate Board or the Registrar of Geographical Indication has the power to remove the

Geographical Indication or authorized user from the register. The aggrieved person can file an

appeal within three months from the date of communication of the order.How a Geographical Indication differs from a trade mark?A trade mark is a sign which is used in the course of trade and it distinguishes goods or services of

one enterprise from those of other enterprises; whereas a Geographical Indication is used to identify

goods having special characteristics originating from a definite geographical territory.

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