Rainy Jain, Amity University, Jaipur
Radhika Khanna, Symbiosis Law School, Noida
Yash Pathak, Prestige Institute, Indore
Editor: Kanhaiya Singhal, Faculty of Law, PES University,Bangalore
Geographical Indication (hereinafter referred to as GI) is an aspect of intellectual property
rights which aims to give protection to a product of a community against other producers of
same or similar goods. It is also beneficial to the consumers in a way that it helps in
identification of good quality and authenticity of the product. In a nutshell is the demarcation
between the community producer and its competitor and also maintain a goodwill in market.
GI grants a right to the holder community to restrict others from producing the same product
under the name if they are not from the registered area and do not qualify the specifications
so mentioned in the GI.
The development of a statute in India with regard to GI is very recent. The Geographical
Indications of Goods (Registration and Protection) Act was enacted in 1999 and has come
into force in September 2003 (hereafter referred to as GI Act). The Act grants exclusive right
of registration of a good that is associated with a community and enables its protection.
The question here arises, how does the GI function. As the name suggests it is concerned with
a place or a regional area. It gives special identification to a product that is exclusivelyproduced in that area or region. There should be an established linkage between the goods
and the place.
There are numerous examples of Geographical Indication-
Madhubani Painting in Bihar
The aim of the legislation is to provide for registration for products associated with place and
prevents misuse of the same. It safeguards the interest of manufacturers, producers and also
consumers. Under Article 22 of the TRIPS agreement it is mandatory for the home county of
the produce to protect the interest through Geographical Indication. Only if the home country
protects the same, any other country will be obligated to extend reciprocal protection.
The following are benefits of GI –
i. It prohibits any other party to inappropriately use the GI.
ii. It helps to protect the interest of producers.
iii. Promotes export in the country.
iv. The exclusive right to use the GI lies with the authorised user only.
The registration in case of Geographical Indication is valid for a period of 10 years, this
period can be further extended by way of renewal for a period of 10 years. If the user does
not renew the registration it is bound to be removed from the registration. In such case the
user will not have any protection is case of infringement.
When there is violation of any Geographical Indication there is penalty on the same. Which is
punishable with imprisonment of 6 months to 3 years and/or fine of Rs. 5,000 to Rs. 2 lakh.Court also has power to decrease the punishment taking into consideration any special
LIMITATIONS OF THE ACT
The Calcutta high court in his recent judgement upheld on the hotel run by ITC limited . The
“Darjeeling lounge “was indurated by ITC in January 2013. The plaintiff Tea Board,
establishedthe tea cultivation agency at the name of Darjeeling lounge and got the GI tag and
mark. In April 2005, the Tea Board allegedly reported against Darjeeling lounge for copying
After the exchange of prolonged injunction on 2010 court asked for the injunction by the
infringer to the plaintiff.
Key issues and decision of the Court:
Maintainability Of The Suit
The GI Act, 1999 (“GI Act”) enforced on September 2003. Section 26(1)(a) look over the
trademark got through application under good faith. Further, Section 26(4) of GI Act bars
infringements of suit under five years against the infringer for using same trade mark.
The use of both provision safeguarding the interest of the Darjeeling lounge. and the court
ruled that the infringement and passing off the trade marks in GI act.
Unfair And Infringement Competition Under The GI Act
The Court also lighten the section 22 under which the GI tag is for the goods not for the
services and the Darjeeling lounge is the service providing sector company, The Court
putting the point that there is no competition between alleged infringer and Tea Board which
is the tea company and the infringer was providing the hotel services hence it is the matter of
Passing Off And Infringement Of The Certification Mark
The certification mark was acquired under older trade mark law. the GI act protecting the
interest of goods. On the other hand, the trademark act of 1999 protects the interest of
services also protects the certification marks for the services. The court differentiate between the both markets that’s one is services market and another is
goods market. the certification rights of both the party and looking at the infringing of the
right of certification under 1999 act section 75 .
The court also noted the relation between both the sector how they connect to each other
because while looking over these cases court have to noticed about what they are trading on
and providing services but both of these are opposite sectors of earning so using the slightly
same name is not the infringement of any act.
This protection of the certification mark on the tea and another the lounge using there name
using for their business alleged by the Darjeeling tea.
The court held to imposed the fine of 1 lakh for infringing certain act
EFFECTIVENESS OF THE GEOGRAPHICAL INDICATION ACT
The Registration of a GI gives its owner the exclusive right over using the gi marks on their
product. the registration gives the right to its owner to suit against the infringer of their right.
the Infringement is taken place by using the name of other already registered company which
indicated that the owner of this company is the king of this product . The registration can’t be
shared to any other under any mode but in the matter of inheritance it can be transferred to
their legal relative after the death of the owner.
If any person tries to make any fraud with the GI tag shall be punished for the imprisonment
of not less than six month but which can be extend to 3 years or with fine which shall not be
less than 50000. in case pf the second sequent offence the person shall be imprison for the
period of 1 year which may be extend up to 3 years or with fine of Rs. 1 lakh which may
extend to 2 lakh or with both. The judge under the circumstances can reduce the punishment
with the noted reason and can increase it but not more than the limit provided.
Geographical indication like any other intellectual property is one of the lately discovered but
finely benefitted opportunity for the products which have exceptionally different qualities
because of their place or origin or manufacturing. Geographical indication act is governed by
the Geographical act, 1999 and goods falling under the category of GI are given a specific
sign and symbols so that the consumers can be well aware about thee quality of the product.
With increasing in the rate of crime the intellectual rights are also not safe as many sellers
with the wrong intention of just earning profit sell the imitated products under the false
impression of the original product and poor consumers unknowingly buy those products.
There have been various instances where the products is a subject matter of a dispute. In
certain cases manufacturer intentionally adds certain words which actually belongs to the
original product and sell them in the market under a wrong impression like in one of the
foreign case popularly known as Scotch Whiskey association case whiskey company was
restrained from using the word ‘scot’ from its name as it was a deception for the consumers
and created a confusion between the original and imitated product, following the same
judgement the Delhi High Court held the same in Cartier international B.V. v. Cartier
International, Time incorporated v. Lokesh Srivastav and another 1 , Microsoft corporation v.
Yogesh Popat and another 2 .
In one of the landmark cases of Tea Board of India Vs. ITC Ltd 3 . The defendant
fraudulently used the word ‘DARJEELING’ for naming one of its premise and mislead the
customers to believe it as the place of origin which was not true. The court held the using this
name could possess a great threat to the tea business of that place and hence plaintiff moved
interlocutory application for granting temporary injunction for using the name.
In ComiteInterprofessionnel Du Vin De Champagne v. M/s. Chinar Agro Fruit
Products 4 , section 22 of geographical indication came into picture where the the defendant
was restrained from using the word ‘CHAMPAGNE’ for the non-alcoholic sparkling drink.
The word ‘CHAMPAGNE’ was registered by the plaintiff under the geographical indication
(registration and protection) Act, 1999. The use of that word led to the infringement of
plaintiff’s right under section 22(3).In one of the famous case of Bikanerwala v. New Bikanerwala 5 the court held that using
similar deceptive name for selling the product is infringement of the right of the plaintiff. The
defendant named shop as ‘AGARWAL BIKANERWALA’ and used to deal in sweets and
snacks and on the other hand the petitioner was using the word ‘BIKANERWALA’ since
1981 and got registered in 1992. So, the court restrained the defendant from selling,
advertising any food material under the unique mark/name.
It is not wrong to say that the geographical indication act,1999 is still evolving and its roots
are still not very strong in order to protect its infringement. GI laws are new to India and need
a strict interpretation to provide full protection against the infringement. The place of origin
or manufacturing of any product is given due importance under GI because such place is
exceptionally distinguished because of its climate, location etc. Before registering and GI all
the criteria should be kept in mind for its eligibility. From the commercial point of view
every entrepreneur wants to earn more and more profit by selling the products which
consumers demands for and every customer wants standard quality original product but
sellers fraudulently sells imitated goods for the sake of profit. Every country has different
variety of goods which are outstanding blend of its rich culture, climatic conditions and India
being a diverse country in every term has different state which are rich in their respective
culture so it should be kept in mind those products representing the heart of place should be
preserved and provided full protection from any kind of infringement.
1 2005 (30) PTC 3 (del)
2 2005 (30) PTC 245 (Del)
5 2005 (30) PTC 113 Del