In this blog post, Suprateek Neogi from Rajiv Gandhi National University of Law, Punjab talks about ‘Geographical Indication’ or GI.
Italian Parmigiano, Mexican Tequila, French Roquefort, Bikaneri Bhujia, Kolhapuri Chappals, Mysore Silk are all some examples of Geographical Indications and appellations of everyday life. The Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act), in Section 2(e), defines the term “geographical indication” as –
“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.”
This is the legally accepted definition of geographical indication in India since the Act came into force since the 15th of September, 2015.
In simpler terms, GI is a status accorded to a good which is unique to a particular region or area, and are originated from there. These goods have a reputation for their quality. They are associated with a sense of legitimacy and trust simply because they have the tag of belonging to that region. For example, Basmati rice is known for its unique aroma and long grains. It is unique to the Indo-Gangetic plains. Seven states of India, after a long drawn legal battle have been accorded with the status of Geographical Indication (GI) in 2016.
The following types of goods are covered under the ambit of GI –
- Agricultural (example, Basmati rice)
- Natural (example, Makrana marble)
- Handicraft or of any industry (example, Kashmiri pashmina)
- Food stuff (example, Dharwad pedha)
This has been mentioned in Section 2(g) of the GI Act.
The abovementioned goods are easily associated with the place where they are manufactured or grown.
Legal Aspect of Geographic Indication (GI)
Origin of GI From an International Perspective
The laws relating to GI were introduced in India after the ratification of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The TRIPS agreement was signed by all the WTO member countries as a “single undertaking”. A single undertaking, for WTO, is basically an agreement signed by all the member nations.
The TRIPS agreement sets a minimum standard of protection for goods registered under as a GI, which is supposed to be followed by all members of the World Trade Organization (WTO). The purpose of according the status of GI to goods, as per Article 22 (2)(b) of the agreement, is to prevent “an act of unfair competition” and prevention of misstatement regarding the geographical origins of a good, as per Article 22 (2)(a).
Article 22 of the TRIPS Agreement (agreement), which was signed in 1994, was criticized on the grounds for not being comprehensive enough for all goods. Article 23 accords special protection to wines and spirits.
In case of goods other than wines and spirits, the TRIPS agreement accords protection only to the producer in case of any explicit act of misleading the public by trying to pass off a good as a GI protected good, and not otherwise. Following this, Section 10 of the GI Act says that a “homonymous geographical indication may be registered under this Act, if the Registrar is satisfied, after considering the practical conditions” no conflict in terms of public understanding of the goods arises.
But for wines and spirits, even if the misuse of a good does not mislead the public, Members are supposed to make provisions for the protection of wines and spirits simply “eligible” for such protection. Many countries, including India had asked for an extension to the same to include other more useful goods into its ambit, among other demands.
Article 23(1) states that if the name of a wine or spirit, which has been accorded the status of GI is “used in translation or accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like”, even that will be considered a blatant violation of the agreement.
The extension of the agreement, as demanded by various countries including India, has not been provided completely. Although, in 2013, the agreement was amended to become more friendly towards Least Developed Countries (LDC).
Indian GI laws and Jurisdictions
The Geographical Indications of Goods (Registration and Protection) Act, 1999, along with the Geographical Indications of Goods (Registration and Protection) Rules, 2002 govern GI registrations and goods.
According to Section 58(1) of the GI Act, in any case where the validity of the registration of a geographical indication is questioned, the case would be under the jurisdiction of the Intellectual Property Appellate Board.
Further, Section 66 (1)(c) of the GI Act vests the jurisdiction of hearing the cases of infringement upon “any court inferior to a district court having jurisdiction to try the suit”. Section 67 of the GI Act states that injunction, nominal damages and damages on account of profits may be awarded as per the discretion of the judge, at the option of the plaintiff.
The Act, under Section 55, further states that “no suit or other legal proceedings shall lie against any person in respect of anything which is in good faith done or intended to be done in pursuance of this Act”.
Geographical Indications Registry in Chennai has complete jurisdiction over the GI goods in India, including, but not limited to, their registration and application process. The Intellectual Property Appellate Board (IPAB) has the appellate jurisdiction. It is also based in Chennai. The website of the IPAB boasts of being the only tribunal in India which has an international influence. This was visible in the case of Basmati rice involving the Lahore Growers Association (elaborated upon in later sections).
Status quo Before the GI Act
Before the passing of the GI Act, any remedy for any infringement of geographical indication rights were awarded through passing off action under tort law or under the Trade and Merchandise Marks Act, 1958, which has been repealed and replaced by the Trade Marks Act, 1999.
Examples from India
In the present day, India is one of the largest producers of tea in the world and has recorded its highest ever production in the financial year 2015-16, with exports crossing 230 mn kg after about 35 years. India started producing tea under British rule. The first GI ever granted in India was to Darjeeling Tea Plantation was started in the 1840’s under the supervision of the British, as they wanted to give competition to the Chinese monopoly in the market.
The Tea Board of India was established under the Tea Act, 1953. The tea board owns all the intellectual property rights under the Trademarks Act, 1999, Geographical Indications of Goods (Registration & Protection) Act, 1999 and Copyright Act, 1957. The logo and even the title, Darjeeling Tea, have been protected by IP laws. Darjeeling Tea is a recognized Trademark even in countries like China, Australia, Egypt, Lebanon, USA and so on.
Basmati rice is a special type of rice, with long grains and a unique aroma which differentiates it from other varieties of rice. It is found in the Indo-Gangetic Plains. Basmati rice has been a part of intense GI conflict between various states, and even nations like Pakistan and the United States.
RiceTec, a Texas-based company, developed ‘Texmati’ or ‘American Basmati’, which they patented under the United States Patent and Trademark Office (USPTO). This was challenged by a few Indian NGOs claiming that the term “basmati” could only be used for rice grown in India and Pakistan. After presenting all the evidence, the NGOs won, and RiceTec withdrew its key claims.
India and Pakistan haven’t been known to agree on many issues, and GI registration of basmati rice isn’t one of the exceptions. The Basmati Growers Association (BGA) Lahore argued that the tag of Basmati can only be accorded to the rice grown in the territory of Pakistan. They further argued that they had been producing the rice for a longer time, and hence, they have more right to be accorded the GI registration. Although India and Pakistan had initially applied for a joint Basmati GI tag, the efforts were thwarted due to the stand of the GBA.
BGA filed a case under the Intellectual Property Appellate Board (IPAB), Chennai against the claim of Agricultural and Processed Foods Export Development Authority (APEDA) who wanted registration for seven Indian states. IPAB “is the only tribunal in India which has a global impact” according to their website.
The IPAB has directed the GI Registry to accord the tag of GI to Basmati rice produced in seven states, namely, Punjab, Haryana, Himachal Pradesh, Uttarakhand, parts of Uttar Pradesh and Jammu & Kashmir. This has been after years of legislative battles. Madhya Pradesh is still demanding GI registration for the rice grown in some of their districts.
In 2006, the Scotch Whisky Association (SWA) filed a suit against Golden Bottling Limited for geographical indications infringement. The defendant was manufacturing “Red Scot” which was allegedly misleading for the consumers. The case of Scotch Whisky Association v. Golden Bottling Limited was heard by the Delhi High Court in 2006. The definition of “Scotch Whisky” under UK Scotch Whisky Act, 1988 and the Scotch Whisky Order, 1990 accorded the status of a geographical indication to the product. But, since the same was not accorded the status of GI in India, the court could not go by that definition. Section 20(1) of the GI Act protects unregistered GIs against any suit instituted. So action was available only in form of the tort of passing off.
The case was settled outside of the courts. Later, in 2015, the government recognized Scotch whisky as per the definition under Section 2(e) of the GI Act.
Is GI Relevant to Businesses or Just Communities
Most of the applicants of GI are from rural backgrounds. The tea growers of Darjeeling, whose interests are represented by the Tea Board in legislative matters, have seen financial advantages after Darjeeling Tea was accorded the GI status. Darjeeling tea was the first product to be accorded the status in India.
The commercial and social advantages are interrelated in this case. The makers of the Darjeeling tea can charge a higher price for their product as they do not have to face outside competition. Without being accorded the status of a geographical indication, the tea growers would have to face competitions from outside, including big companies with a lot of capital on their hands.
Most goods which apply for GI registration originate from rural areas. GI registration can also be seen as a commercial medium for rural empowerment and employment generation. Commercialization of a unique product leads to the product turning generic and the market prices falling down, along with the quality in most cases. This is avoided by according the GI status.
What Are The Advantages of a Registered GI
For a Producer:
A producer of a good which has been accorded the status of a geographical indication has various commercial advantages. The producer becomes the sole seller of the commodity, and in the case of having a single “principal place of business” can even be said to have a monopoly.
According to rule 3 of the Geographical Indications of Goods (Registration and Protection) Rules, 2002, a “principal place of business” is basically the place from where the business regarding the GI registered good takes place. If multiple places are occupied for the purpose of business, they are included. The term also applies for those goods which have not been accorded the status as per the Act.
GI registration provides the registered producer and the authorized user the exclusive right to protect the registered GI on the specified goods. GI registration is a producer friendly legislation, aimed at protecting the industry for unique goods, whose uniqueness exists due to their geographical location. GI, as a type of Intellectual Property (IP), has a lot of commercial value.
For a Consumer:
A good which has a GI tag is associated with immense reputation in terms of quality and prestige. A consumer gets value for their money when they buy a good with a GI tag, as the tag ensures that the product has all the features associated with it. For example, the taste of real Darjeeling tea is different from that of those trying to pass of their products as the same.
The majority of goods applying for GI Registration belong to the micro, small and medium enterprises, which majorly originate from the rural areas. GI registration aids the enterprises to increase their market share, which otherwise would have been dominated by the large businesses. Hence, the consumers get authentic goods instead of generic and mass produced goods.
How to Register a Good as GI
- Types of Applications:
- Ordinary – For registration of a GI in India.
- Convention – Registration of a GI, which is already recognized in another country.
- Single Class – Includes the registration of goods belonging to a particular class of goods.
- Multi Class – Includes the registration of goods belonging to multiple classes of goods.
- The registration process for the GI tag begins with filing of an application for the same. The Geographical Indications registry demands that the “application must be made in triplicate”.
- The applicants may be the producer(s) of the respective goods themselves, or any organization or authority which have the permission to act as the agent of the producer(s).
- The application must be filed to the office of the GI registry, which is in Chennai.
- The application must contain all the relevant details like –
- The details of the “principal place of business”, defined under Section 3 of the Geographical Indications of Goods (Registration and Protection) Rules, 2002.
- Historical evidence to back the claims.
- A detailed description of the good and its usage.
- The method of production.
- Other relevant details for determining the GI status of the good.
- The application will be subjected to scrutiny by the Registry and a panel of experts, which would be designated by them.
- The applicant will have the time of one month to remedy the errors, if any.
- The Registrar is further vested with the powers to rescind the application if the errors are not dealt with.
- Upon the acceptance of the application, the Registry will publish the same within three months of the acceptance.
- Any person can file an opposition to the publication of the GI application within three months (extension can be provided for another month).
After the acceptance of the application, the date of filing of the application will be the date of registration. A certificate with the seal of the GI registry shall be issued to the applicant. Appeal against the registration can be made to the Intellectual Property Appellate Board within three months of the registration of the good.
Section 9 of the Geographical Indication of Goods (Registration and Protection) Act, 1999 names a few exceptions, which cannot be registered under the GI Registry. These are the goods which –
- May cause confusion or deceive the public
- May be scandalous in nature
- Are contrary to the law in force at the time
- May hurt religious sensibilities
- Are generic i.e. not unique
Important Points Regarding GI Registration
- A registered GI shall be valid for 10 years and can be renewed on payment of renewal fee.
- The application must be addressed to the Geographical Indications Registry, Chennai.
- The applicant must have an address for service in India.
- Generally, application can be filed by (1) a legal practitioner, (2) a registered agent.
Transfer of GI
Section 24 of the GI Act states that the GI tag cannot be transferred to any other user under any condition. Only in case of the death of the authorized user, the rights of the GI shall “devolve on his successor in title under the law for the time being in force”.
Renewal of GI
- A request for the renewal of a GI can be filed by the authorized user of the GI at any time within the last six months of the previous registration period.
- If no such request is filed before the Registrar, then the Registrar shall notify the user after one month, and before three months of the expiry of the GI.
- The application can further be made within six months after the expiry of the earlier time period of GI, which, if not done, can lead to cancellation of the GI.
- The corresponding form for renewal is called GI-1, and is available on the website http://www.ipindia.nic.in/.
- The required fee for every class of GI is INR 5000 for renewal.
What is a Trademark and How is it Different From a GI
Section 2(zb) of the Trade Marks Act, 1999 says ““trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors”.
A trademark is basically a symbol which is unique to a person, company, good etc. This symbol is capable of differentiating it from other objects or persons. For example, Nike’s trademark is in the form of a tick. The layman, and even the authorities associate that particular tick Nike.
A trademark can be associated with objects, companies etc., while a GI can only be associated with a particular geographical location.
India is a land full of diverse cultures and goods. Each state and even district has their own culture and produce goods unique to that area. A lot of the goods originate uniquely from that area, but not all are accorded the Geographical Indication status as per the definition under Section 2(e) of the Act. A lot of consideration is put into the applications by the GI Registry. The recent case of Basmati rice is a clear example of how the GI registrations affect not only our nations but others too.
The Agreement on Trade-Related aspects of Intellectual Property Rights (TRIPS) was the multilateral agreement which brought the issue of geographical indications into the forefront in India. The TRIPS agreement, although very substantial and well written, has been criticized on the basis of the fact that it doesn’t accord the same level of protection to other commodities as the level accorded to “wine and spirits”. India was one of the countries asking for an extension to the protection accorded under the agreement after the Uruguay Round of General Agreement on Trade and Tariff (GATT) in 1994.
The TRIPS Agreement has been amended to include other pressing matters like making provisos for Least Developed Countries (LDCs), however, the issue of according the same level of protection as wines and spirits to other goods has not been addressed appropriately yet.
India has a very comprehensive registration process for Geographical Indications, which has incorporated the democratic principles of our Constitution. It has ample provisions for challenging of the registration of goods under the GI Act.
According to the Controller General of Patents, 285 goods were registered as GI in the period of 2009-15 and 224 were in the examination process. This further reiterates the popularity and need of GI registrations in India.
What are your views on this? Feel free to comment below & share the article.