Updated: Aug 29, 2020
Co-Authors: Shraddha Sharma, Jamnalal Bajaj School of Legal Studies, Banasthali Vidyapeeeth
Vihaan Kumar, Vivekananda Institute of Professional Studies
K. Sreeya Chowdary,Gitam University,Vishakhapatnam
Editor: Kanhaiya Singhal, Faculty of law, PES University,Bangalore
We live in a world that is changing by the minute, and in this world it is a challenging task to know for sure the heritage and origin of a particular food or any item of clothing or a beautiful piece of artefact or handicraft. Many special kinds of food items or types of clothing originate from a specific place and unfortunately some people do not shy away from openly and unethically copying and passing those goods or items as from another region in order to exploit popularity from the quality of those goods or items.
In order to provide legal rights to the people whose trade or craft become available only due to their geographical factors the government provides Geographical Indications or GI Tags.
Its common knowledge that the concept of Geographical Indication has been has been around for centuries, however the French were the first to develop a proper system to catalogue and recognize different articles/foods that showed individual properties and were associated or found or produced only at a specific region. The system they developed was the “appellation d’origine controlee” which is in use in modern day and is called the Appellations of Origin.
When we talk about the historical GI systems, the best example is of the process of making wine. A GI tag for wine may indicate the particular region where the grapes used have been grown, but not only that, the GI will also designate the type of soil, the particular patch of land in the vineyard as well as the climate of that region.
What Is A GI Tag?
A Geographical Indication (GI) tag is a form of intellectual property, a certification given to certain goods or products from a particular area or state or country that is unique to a particular geographical region. Geographical Indications have been given the status of intellectual property. India, as a member of World Trade Organization (WTO), enacted the Geographical Indications of goods (Registration and Protection) Act, 1999 from 15th September 20003.
Like all Intellectual Property Rights, a Geographical Indication is a non-physical asset which composes a legal claim to future benefits through the special rights and privileges attached to it. The GI products are generally agricultural or natural or manufactured items like handicrafts etc. It is an indication or symbol to identify a particular product.
Geographical Indications are integral part of development which advances economic interests. These tags are a tool to protect the ownership rights on the natural resources and manufactured goods. GI’s cannot be sold, rented, transferred as they are either collectively owned by the state. Products having GI tag prevent unauthorized use of products and upgrades financial gain to the producers by exporting the products.
How Is A GI Tag Granted In India?
The Geographical Indication tag is granted as per the “Geographical Indications of goods (Registration and Protection) Act, 1999.” The GI tag is valid only for a period of 10 years, but it can be renewed from time to time for a further period of 10 years. The application for GI is open all the producers of goods or an organization. The application must include the geographical map of the territory or region in the country where the goods are manufactured and the class of goods to which it shall apply. It should be in prescribed form and particular fee must be submitted with a signature.
The applicant must represent the interest of the producers. The application will be scrutinized and examined by groups of authorities. It is compulsory to get GI registered in order to claim any rights in respect of such indication. A product having GI tag prevents unauthorized use of products and upgrades financial gain to the producers by exporting the products. A GI product price increases in the international market as the exports increase. Registration gives right to institution of suit against infringement and recovery of damages for such infringement. Registration acts as a prima facie evidence of validity of the indication and ownership.
Laws Concerning Geographical Indications (GI) And GI Tags
The TRIPS prescribes minimum standards for the protection of GI that all WTO members must provide.
Part II Section 3 of the TRIPS provides the standards concerning the availability, scope and use of GI.
Article 22: Protection of GI
· GIs are indications which identify a good as originating in the territory of a member country where a given reputation or characteristic of the good is attributable to its geographical origin.
· The member countries should provide legal means for prevention of
Ø using or presenting the good so as to mislead the public from the geographic origin of the good,
Ø any such use of that good that constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).
· The member country shall permit the legislation to refuse or invalidate a trademark for the GI with respect to the goods not originating in the territory included, if the use of that good by the member country may mislead the public from the true place of origin.
· The section shall be applicable against any GI which falsely represents to the public that the goods originate in another territory.
Article 23 provides additional protection for the GI for wines and spirits. Along with this there are certain treaties administered by the WIPO which deal partly or completely with the protection of GI such as the Paris Convention, Lisbon Agreement, Madrid Agreement and the Protocol for the Madrid Agreement etc.
The legislative measures taken in India in compliance under TRIPS are the enactment of the Geographical Indications of Goods (Registration and Protection) Act, 1999 which came into effect on the 15th of September, 2003 along with the Geographical Indications of Goods (Registration and Protection) Rules, 2002.
Some rather vastly well-known international GI Tags are of Gruyere Cheese from Switzerland, Mexican Tequila, Roquefort Cheese from France, Georgian wines, Pinggu Peaches from China among others.
GI tags have been provided in India for many important goods such as Darjeeling Tea, Alphonso Mango, Kanchipuram Silk Saree, Basmati Rice, Kolhapuri Chappal etc. for many of which the GoI had to fight legal battle for decades in the International Courts to get the tag in India.
International Position: What Has GI Protection Achieved So Far
A founding member of the Lisbon Treaty (1958), Mexico uses Appellations of Origin (AOs) to protect Tequila. Tequila is a spirit which is derived from the heart of a plant called the “blue agave”. It’s making dates back to early-middle 16th century. The entire history of the Tequila industry is shaped by the deep rooted conflicts between the agave farmers, the custodians of agave farming and the tequila companies. The farmers never received any real representation, moreover the State does not provide any agency or any platform which is specifically dedicated to GI without intervening on the farmer’s work. Consequently, the product sold as an AO “Tequila” is becoming increasingly different from its traditional standards. Hence, even if the Mexican GI law is formally very strict, the concrete protection on Tequila is an example of how GI rules should not be applied.
The Roquefort Cheese is being produced since 3.500 BC. The production was regulated initially in 1411 by King Charles VI. It is one product whose consumers are most likely to be associated with France. In the present day, its production employs more than 10,000 workers. A protected designations of origin (PDO) was granted to this product in 2008, since then it has been very well organised by collective bodies. It also significantly contributes to the development of the low density population region where it is being produced.
The Gruyere cheese production was started by a community of 150 people in L’Etivaz. It was also the first PDO registered in Switzerland, the aim was to improve the reputation of the cheese and the area where it is being produced. Fortunately, these goals have been very well achieved owing to the well-coordinated associations of the producers and the State.
The Moroccan government filed an application in the European Union (EU) for protecting Argan as a Protected Geographical Indication (PGI). The WIPO points out that the work by the cooperatives of Argan producers is vital for the preservation of traditional knowledge, rural society and environment in different areas. Argan based products such as oil have had a positive impact on the economic front and when granted a PGI, its value would be strengthened and protected in the EU.
A lot of times, as evidently shown by the scenarios of different countries, GIs are adopted in order to improve the reputation of traditional products and to achieve the developmental goals and gather resources for preserving the related traditional knowledge. But the point of consideration is that GIs or GI Tags are not some miracle symbols that can single handedly foster development. It is a coordinated effort between the producers, the State and the relevant stakeholders that actually protect the indigenous and traditional knowledge while also providing the necessary representation to the original custodians of the product.
Position of Geographical Indication (GI) Tags in India
As we know that a geographical indication (GI) is a name or sign which is used on products to differentiate them from others, because of their possession of a certain quality, usage of any traditional methods in their production, or enjoying a reputation due to their geographical origin.
Although the usage of one of the first GI systems started back in France from the early part of the 20th century known as appellation d'origine controlee (AOC), but it has spread to various countries including India as who are members of the World Trade Organisation (WTO) by the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") which got concluded in 1994.
The GI tags in India are issued as per the provisions of the Geographical Indications of Goods (Registration and Protection) Act,1999 which came into force with effect from 15 September 2003, by the Geographical Indication Registry under the Department of Industry Promotion and Internal Trade, Ministryof Commerce and Industry.
Any individual producer, an association of persons, any organisation, or authority established by or under the law can apply to get a GI tag and the application moved in such prospect should be written in the proper format along with prescribed fee to the concerned authority. The registration of a geographical indication and hence, getting a GI tag is valid only for a period of 10 years although it can be renewed from time to time for a further period of 10 years each through every subsequent renewal.
However, it shall not be assigned or transferred, pledged or mortgaged to others and even if the authorised user of the GI tag dies, his right transfers to his successor in title. Darjeeling Tea became the first GI tag issued product in India, which was issued to it in the period of 2004-2005 and since then, the number of the registrations as well as applications, both have just increased rapidly.
According to the latest report by the Indian Government, around 370 GI tags have been assigned to various goods as per the Sec 2 (f) of the Geographical Indications of Goods (Registration and Protection) Act,1999.
Judicial Pronouncements Relating to Geographical Indications
· Case Study: Tea Board of India vs. ITC Ltd.
The appellant submitted before the court that the defendant has infringed the geographical indication assigned to him by the name of ‘DARJEELING’ by setting up its business premises with the usage of the word by naming it ‘DARJEELING LOUNGE’. Thus, the plaintiff had moved an interlocutory application for temporary injunction to restrain the defendant from infringing the rights in any manner possible by the usage of this GI. The defendant submitted that the said application was not maintainable in the view of Trademark Act as well as GI Act and also by limitation.
The Hon'ble Justice SahidullahMunshi of Calcutta High Court, opined that the suit by Tea Board was barred by limitation as the hotel lounge was started in January 2003. But the suit was filed only in 2010 which thereby exceeded the time limit of filing the case under 5 years as per Section 26(4) of the GI Act. Justice Munshi observed that, "It is also not found that there has been any infringement under the Geographical Indications of Goods Act because the defendant's 'Lounge' is not relating to goods. Plaintiff's rights conferred by the registration of the word 'Darjeeling' is only in relation to tea. 'Darjeeling' is not a trade mark.
It is only used to indicate geographical indication of a place of origin of tea originating from Darjeeling. The law relates to geographical indication is confined only to goods. The plaintiff does not own any right in the name of 'Darjeeling' for any goods other than tea. The Geographical Indications Act can only extend to goods and admittedly, the defendant's lounge does not fall within the category of 'goods'".
· Case Study: Shamnad Basheervs Union Of India
In this case before the High Court of Delhi, the issue raised as to the appointment of the post of Senior Joint Registrar of Trade Marks and Geographical Indications for which qualifications were sought under:
“i) Degree in Law from a recognised University;
(ii) Twelve years practice at a Bar or Twelve years’ experience in a State Judicial Service or in the Legal Department of a State Government or of the Central Government or in the processing of applications for registration filed under the Trade Marks Act or Geographical Indications Act or in teaching law in a recognised University or Institute or Master’s Degree in Law of a recognised University with ten years' experience in teaching law or in conducting research in law in a recognised University or Research Institution.''
It was held that “In the present case, a technical member takes part on equal terms along with a judicial member in the decision making process. The qualification is also prescribed as 12 years of practice at the bar or 12 years’ experience in a State Judicial Service with a Degree in Law. With the above said qualification, along with other qualifications, there cannot be any difficulty in appointing such a person as a technical member.
However, the problem would possibly arise when a person sought to be appointed as a technical member merely because he works in the Legal Department of a State Government or Central Government or involved in the process of applications for registration filed under the Trade Marks Act or Geographical Indications Act or in teaching law in a recognised University or Institute. Similarly, a Master’s Degree in Law of a recognised University with ten years' experience in teaching law that may be a qualification for appointment of a Registrar cannot be termed as a qualification requisite for appointment of a technical member. The Scheme of the Act also provides for the appointment of a technical member as a Vice Chairman and then as Chairman. Therefore such persons cannot be made eligible.”
· Case Study: Scotch whisky Association &ors. V. Golden Bottling Ltd.
In 2006, an organisation named SWA filed a case against Golden Bottling Limited for manufacturing a “Red Scot” whisky. The SWA alleged that the name of the whisky gave the consumers the impression that the whisky had originated in Scotland and it was in fact the real Scotch whisky. The court, after analysing the definition of “Scotch Whisky” under the UK Scotch Whisky, Act, 1988 and Rule 3 of the Scotch Whisky Order, 1990 agreed that Scotch Whisky was a GI.
However since Scotch whisky was not registered as a GI in India back then, the court was unable to uphold the GI. The court relying on Section 20(1) of the Indian GI Act, 1999, which prohibits any person from instituting any proceedings to prevent or to recover damages for the infringement of an unregistered GI, held the Defendant guilty only of the tort of passing off. Subsequently, the Government of India, vide a 2010 notification, recognized Scotch Whisky as a GI and it further filed cases in 2015 on organisations that had been using the term “Scotch Whiskey” and gained a victory in the suit.
 Section 21, Geographical Indications of Goods (Registration and Protection) Act, 1999.  Section 23, Geographical Indications of Goods (Registration and Protection) Act, 1999.  S Bowen, "Development from Within? The Potential for Geographical Indications in the Global South" (2010)  J Frayssignes, "Sistem IV: Roquefort Cheese (France)", Labels of origin for food: local development, global recognition (2011) S Réviron, "System II: L’Etivaz Cheese"  WIPO, Protecting Society and the Environment With a Geographical Indication 2006 (32) PTC 656 (Del.)