A geographical indication (GI) is a sign used on products that have a specific
geographical origin and possess qualities or a reputation that are due to that
origin. In order to function as a GI, a sign must identify a product as
originating in a given place. In addition, the qualities, characteristics or
reputation of the product should be essentially due to the place of origin.
Since the qualities depend on the geographical place of production, there is a
clear link between the product and its original place of production.
Appellation of origin is a sub type of geographical indication where quality,
method and reputation of a product strictly originate from the delineated area
defined under its intellectual property right registration
Rights Provided Under Geographical Indication
A geographical indication right enables those who have the right to use the
indication to prevent its use by a third party whose product does not conform to
the applicable standards. For example, in the jurisdictions in which the
Darjeeling geographical indication is protected, producers of Darjeeling tea can
exclude use of the term Darjeeling for tea not grown in their tea gardens or
not produced according to the standards set out in the code of practice for the
However, a protected geographical indication does not enable the holder to
prevent someone from making a product using the same techniques as those set out
in the standards for that indication. Protection for a geographical indication
is usually obtained by acquiring a right over the sign that indication.
Protection for a geographical indication is usually obtained by acquiring a
right over the sign that constitutes the indication.
Application Of Geographical Indication
Geographical Indications protection is granted through the TRIPS Agreement. See
also the Paris Convention, the Madrid Agreement, the Lisbon Agreement, and
the Geneva Act. Protection afforded to geographical indications by law is
arguably two folded. On the one hand it is granted through sui generis law
(public law), e.g., in the European Union.
In other words, GI protection should
apply through ex-officio protection, where authorities may support and get
involved in the making of GI collective dimensions together with their
corresponding GI regulatory council, where ongoing discourse with the government
is implied for effective inspection and quality control.
On the other hand, it
is granted through common law (private law). In other words, it is similar to
the protection afforded to trademarks as it can be registered through collective
trademarks and also through certification marks, i.e., in the United States of
GI protection systems restrict the use of the GIs for the purpose of identifying
a particular type of product, unless the product and or its constituent
materials and or its fabrication method originate from a particular area and or
meet certain standards. Sometimes these laws also stipulate that the product
must meet certain quality tests that are administered by an association that
owns the exclusive right to license or allow the use of the indication.
are recognised through public or private law, - depending on the GI protection
system applied among the different WTO state members, either through common law
or sui generis law, the conflicts between prior trade mark registration and GIs
is an international debate that is yet to be resolved and what makes the GI
system rather positional in terms of international trade negotiations.
conflicts are generally resolved through three intellectual property protection
approaches: first in time first in right approach, coexistence approach, GI
Arguably trademarks are seen as a valuable asset in terms of private business
and their economic assets while GIs are strongly connected to socio-economic
development, along the lines of sustainability in countries rich in traditional
The consumer-benefit purpose of the protection rights granted to the
beneficiaries (generally speaking the GI producers), has similarities and
differences to the trade mark rights:
- While GIs confer a geographical origin of a good, trademarks confer a
commercial origin of an enterprise
- While comparable goods are registered with GIs, similar goods and services are
registered with trademarks.
- While a GI is a name characterized by tradition from a delineated area, a trade
mark is a sign as a badge of origin for goods and services.
- While a GI is a collective entitlement of public-private partnership, a trade
mark refers entirely too private rights. With GIs, the beneficiaries are always
a community from which usually, regardless of who is indicated in the register
as applicant, they have the right to use. Trademarks distinguish goods and
services between different undertakings, thus it is more individual (except
collective trademarks which are still more private).
- While with GIs its particular quality is essentially because of the geographical
area, although the human factor may also play a part (collectively), with
trademarks, even if there is any link to quality, it is essentially because of
the producer and provider (individually).
- While GIs are an already existing expression and is used by existing producers
or traders, a trade mark is usually a new word or logo chosen arbitrarily.
- While GIs are usually only for products, trademarks are for products and
- While GIs cannot become numerous by definition, with trademarks there is no
limit to the number that can be possibly be registered or used.
- While GIs may not normally qualify as trademarks because they are either
descriptive or misleading and distinguish products from one region from those of
another, trademarks normally do not constitute a geographical name as there is
no essential link with the geographical origin of goods.
- While GIs protect names designating the origin of goods, trademarks collective
and certification marks where a GI sui generis system exists protect signs or
- While with GIs there is no conceptual uniform approach of protection (public law
and private law sui generis law and common law), the trade mark concepts of
protection are practically the same in all countries of the world (i.e., basic
global understanding of the Madrid System). In other words, with GIs there is no
international global consensus for protection other than TRIPS.
- While with GIs the administrative action is through public law, the enforcement
by the interested parties of trademarks is through private law.
- While GIs lack a truly global registration system, trademarks global
registration system is through the Madrid Agreement and Protocol.
- While GIs are very attractive for developing countries rich in traditional
knowledge, the new world, e.g., Australia, with a different industry development
model they are more prone to benefit from trademarks. In the new world, GI names
from abroad arrive through immigrants and colonisation , leading to generic
names deriving from the GIs from the old world.
Geographical indications have other similarities with trademarks. For example,
they must be registered in order to qualify for protection, and they must meet
certain conditions in order to qualify for registration. One of the most
important conditions that most governments have required before registering a
name as a GI is that the name must not already be in widespread use as the
generic name for a similar product. Of course, what is considered a very
specific term for a well-known local specialty in one country may constitute a
generic term or genericized trademark for that type of product?
For example, parmigiano cheese
in Italy is generically known as Parmesan cheese in Australia and the United
Rural development And Its effects
Geographical indications are generally traditional products, produced by rural,
marginal or indigenous communities over generations that have gained a
reputation on the local, national or international market due to their specific
The recognition and protection on the markets of the names of these products
allows the community of producers to invest in maintaining the specific
qualities of the product on which the reputation is built. Most importantly, as
the reputation spreads beyond borders and demand grows, investment should be
driven to the environment sustainability where these products originate and are
produced. In the International Trade Centre's Guide to Geographical
Indications: Linking Products and their Origins author Daniele Giovannucci
states that geographical indications are by no means a panacea for the
difficulties of rural development.
They can however offer a comprehensive
framework for rural development since they can positively encompass issues of
economic competitiveness, stakeholder equity, environmental stewardship, and
socio-cultural value. The application of circular economy will ensure
socio-economic returns in the long-run to avoid growth at an environmental cost.
This approach for GI development may also allow for investment together with
promoting the reputation of the product along the lines of sustainability when
and where possible.
Rural development impacts from geographical indications, referring to
environmental protection, economic development and social well-being, can be the
strengthening of sustainable local food production and supply (except for
non-agricultural GIs such as handicrafts); a structuring of the supply chain
around a common product reputation linked to origin; greater bargaining power to
raw material producers for better distribution so as for them to receive a
higher retail price benefit percentage capacity of producers to invest economic
gains into higher quality to access niche markets, improving circular economy
means throughout the value chain, protection against infringements such as
free-riding from illegitimate producers, etc economic resilience in terms of
increased and stabilised prices for the GI product to avoid the commodity trap
through de-commodisation, or to prevent/minimise external shocks affecting the
premium price percentage gains (usually varying from 20-25%) added value
throughout the supply chain spill-over effects such as new business and even
other GI registrations preservation of the natural resources on which the
product is based and therefore protect the environment preservation of
traditions and traditional knowledge identity based prestige linkages to
None of these impacts are guaranteed and they depend on numerous factors,
including the process of developing the geographical indications, the type and
effects of the association of stakeholders, the rules for using the GI (or Code
of Practice), the inclusiveness and quality of the collective dimension decision
making of the GI producers association and quality of the marketing efforts
Like trademarks, geographical indications are regulated locally by each country
because conditions of registration such as differences in the generic use of
terms vary from country to country. This is especially true of food and beverage
names which frequently use geographical terms, but it may also be true of other
products such as carpets (e.g. Shiraz), handicrafts, flowers and perfumes.
When products with GIs acquire a reputation of international magnitude, some
other products may try to pass themselves off as the authentic GI products. This
kind of competition is often seen as unfair, as it may discourage traditional
producers as well as mislead consumers.
Thus the European Union has pursued
efforts to improve the protection of GI internationally. Inter alia, the
European Union has established distinct legislation to protect geographical
names in the fields of wines, spirits, and agricultural products including beer.
A register for protected geographical indications and denominations of origin
relating to products in the field of agriculture including beer, but excluding
mineral water, was established (DOOR). Another register was set up for wine
region names, namely the E-Bacchus register.
A register of the geographical
indications for spirits and for any other products is still missing in the
European Union and most other countries in the world. A private database project
(GEOPRODUCT directory) intends to close this gap. Accusations of unfair
competition should although be levelled with caution since the use of GIs
sometimes comes from European immigrants who brought their traditional methods
and skills with them.
Paris convention and Lisbon agreement
International trade made it important to try to harmonize the different
approaches and standards that governments used to register GIs. The first
attempts to do so were found in the Paris Convention on trademarks (1883, still
in force, 176 members), followed by a much more elaborate provision in the
1958 Lisbon Agreement on the Protection of Appellations of Origin and their
Registration. 28 countries are parties to the Lisbon agreement: Algeria, Bosnia
and Herzegovina, Bulgaria, Burkina Faso, Congo, Costa Rica, Cuba, Czech
Republic, North Korea, France, Gabon, Georgia, Haiti, Hungary, Iran, Israel,
Italy, Macedonia, Mexico, Moldova, Montenegro, Nicaragua, Peru, Portugal,
Serbia, Slovakia, Togo and Tunisia. About 9000 geographical indications were
registered by Lisbon Agreement members.
Agreement on Trade-Related Aspects of Intellectual Property Rights
The WTO Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) defines geographical indications 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.
In 1994, when negotiations on the WTO TRIPS were concluded, governments of all
WTO member countries (164 countries, as of August 2016) had agreed to set
certain basic standards for the protection of GIs in all member countries.
are, in effect, two basic obligations on WTO member governments relating to GIs
in the TRIPS agreement:
Article 22 of the TRIPS Agreement says that all governments must provide legal
opportunities in their own laws for the owner of a GI registered in that country
to prevent the use of marks that mislead the public as to the geographical
origin of the good. This includes prevention of use of a geographical name which
although literally true falsely represents that the product comes from somewhere
Article 23 of the TRIPS Agreement says that all governments must provide the
owners of GI the right, under their laws, to prevent the use of a geographical
indication identifying wines not originating in the place indicated by the
geographical indication. This applies even where the public is not being misled,
where there is no unfair competition and where the true origin of the good is
indicated or the geographical indication is accompanied by expressions such as
kind, type, style, imitation or the like. Similar protection must be given to
geographical indications identifying spirits.
Article 22 of TRIPS also says that governments may refuse to register a
trademark or may invalidate an existing trademark (if their legislation permits
or at the request of another government) if it misleads the public as to the
true origin of a good. Article 23 says governments may refuse to register or may
invalidate a trademark that conflicts with a wine or spirits GI whether the
trademark misleads or not.
Article 24 of TRIPS provides a number of exceptions to the protection of
geographical indications that are particularly relevant for geographical
indications for wines and spirits (Article 23). For example, Members are not
obliged to bring a geographical indication under protection where it has become
a generic term for describing the product in question. Measures to implement
these provisions should not prejudice prior trademark rights that have been
acquired in good faith and under certain circumstances including long
established use continued use of a geographical indication for wines or spirits
may be allowed on a scale and nature as before.
In the Doha Development Round of WTO negotiations, launched in December 2001,
WTO member governments are negotiating on the creation of a multilateral
register of geographical indications. Some countries, including the EU, are
pushing for a register with legal effect, while other countries, including the
United States, are pushing for a non-binding system under which the WTO would
simply be notified of the member respective geographical indications.
Some governments participating in the negotiations (especially the European
Communities) wish to go further and negotiate the inclusion of GIs on products
other than wines and spirits under Article 23 of TRIPS. These governments argue
that extending Article 23 will increase the protection of these marks in
international trade. This is a controversial proposal, however, that is opposed
by other governments including the United States who question the need to extend
the stronger protection of Article 23 to other products. They are concerned that
Article 23 protection is greater than required, in most cases, to deliver the
consumer benefit that is the fundamental objective of GIs laws.
Judicial Approach On Geographical IndicationScotch Whisky Association v. Pravara Sahakar Karkhana Ltd.
, (AIR 1992 Bom 294)
is a leading case on this subject. In this case, the plaintiff Scotch Whisky
Association, a company incorporated under the Companies Act of United Kingdom
instituted the passing off action against the defendants- a manufacturer of
various brands of Indian Whisky like blended scotch whisky
or Blended with
Scotch' under various brand names, Drum Beater
and God Tycoon.
facts, the Bombay High Court held: The Plaintiff had sufficient interest to
prevent passing off of Indian Whisky manufactured by the defendant and to
prevent damage to reputation and goodwill of Scotch whisky. The defendants were
passing off their goods as blended Scotch whisky which in fact they were not.
The case therefore merited interim injunction.
The defendants resorted to unfair
means by using the words Blended with Scotch
and indulged in colourable
imitation and unfair trading in an attempt to harvest unjust benefits by
appropriation of plaintiff's goodwill. The defendant was restrained from
advertising or offering for sale or distributing in any country Whisky, which is
not Scotch whisky. It is evident from the aforesaid decision that the judiciary
in India has consistently extended the umbrella of legal protection to GIs even
in the absence of any legislation in force at that point of time.
In appropriate cases the court may on an application by the plaintiff pass an
exparte order requiring the defendant to permit the plaintiff accompanied by
solicitor or attorney to enter his premises and take inspection of relevant
documents and articles and take copies thereof or remove them from the custody.
The necessity for such an order arises where there is a grave danger of relevant
documents and infringing articles being removed or destroyed so that the ends of
justice will be defeated. (Anton Piller v. Manufacturing Processes
Basmati Rice case
Basmati is a unique, long grain aromatic rice cultivated traditionally only in
the Indo-Gangetic plains of India and Pakistan. India has been exporting
Basmati rice to several countries of the world including the US, Europe and
Middle East countries for several decades and a over a period of time, it has
acquired a unique position in the world market. The patenting of the world
famous Basmati rice the crown jewel of the Asian sub-continent India and
Pakistan by the US Company Rice Tec Inc.
woke India and many other developing
countries and made them aware of the unfair world market trend. The Basmati
which has extra long grain, soft textured, aromatic rice has been cultivated
since time immemorial in the foothills of the Himalayas. The rare agroclimatic
conditions this region endow Basmati rice with certain characteristics, physical
and sensory, not found elsewhere nor amenable to replication. This makes Basmati
a premium product in the international market and the uniqueness needs to be
preserved and protected.
Basmati commands a premium price both in domestic and
international markets. Approximately one million hectares in India and 0.75
million hectares in Pakistan are planted in Basmati varieties, where it is
cultivated by hundreds and thousands of small farmers. In India alone basmati
exports were valued at approximately US$ 475 million in 1998-99. The serenity of
the surroundings was suddenly broken by bold new headlines which read US Rice
Company says India and Pakistan don't own word Basmati.
Ever since the
company, Rice Tec, based in Texas, United States, patented Basmati rice, there
has been a hue and cry in India and Pakistan. The fear of cultural piracy from
the western multinationals is felt by the Indian farmers.
In February 1996, the
APEDA12 has found that Rice Tec had registered for a trademark for exporting
what they called. Texasmati
in the UK and had lodged a case against Rice Tec
in an UK economic court. Thus this was the authority strategy i.e., to file such
cases in all the countries that Rice Tec approaches for trademarks.
The first legal issue, which arose in the protection of Basmati as a
geographical indication is as to whether it is a generic name?
Rice Tec in its claim states
that it is a generic name and therefore cannot be protected as a geographical
indication. Various reports have referred to the US Company's use of such names
as Basmati, Kasmati, Jexamati and Jasmati.
In fact, the company has used
the brand names Kasmati, Texmati, and Jasmati in the US and UK since before the
patent was issued. It has been using the term Basmati as a generic term for
considerably longer, Rice Jec has produced and marketed Texas Basmati and
American Basmati rice and labelling it as such for 20 years and exporting the
products for 15 years with no objection ever previously raised, the company
stamen says. Since the word Basmati is not a place name, its validity as a
geographical indication would depend on whether Basmati can be shown to be
closely and exclusively associated with a geographical area, although the world
trade agreement calls it as geographic appellation.
The name and the patent are
completely separate issues; and there is also a distinct difference between the
use of Basmati as a generic term, and the use of brand names such as Texmati and
Jasmati. Two types of intellectual property are involved with names; Trademarks
and Geographical Indications. The concern what Indian authorities had was the
fear of Rice Tec getting a trademark on Texmati, Texmati is deceptively similar
to Basmati and therefore cannot be registered as a trademark.
An action of
passing off was also expected to succeed. However this was only an immediate
solution available to the problem in hand since by virtue of Article 24.9 of the TRIPs Agreement, at that time India had no law protecting GI. This prevented
Indian from approaching the WTO dispute settlement body and asking any other
members country to protect our GI. Therefore the only hope we Indians had was
relying on tort protection of passing off and unfair competition laws as usual.
It is extremely laborious to prove passing off repeatedly. Moreover, there was
the danger of the lack of the tort law (passing off) protection in the country
where we seek to protect our GI along with the fact that courts in US have been
extremely unpredictable on this issue This was the position of India which
highlighted the need to legislate laws for protection of GI in our country.
Darjeeling Tea caseDarjeeling Tea
could be considered as the most important geographical
indication along with Basmati
for India. Darjeeling tea is the tea produced in
the hilly areas of Darjeeling district of West Bengal. Today, India is the
World's largest grower of tea with a total production of 826.17 million
kilograms in the year 2002.
The district of Darjeeling is situated in the State
of West Bengal, India. Tea has been cultivated, grown and produced in tea
gardens geographically located in this area for the last 150 years. The unique
and complex combination of agro-climatic conditions prevailing in the region and
the production regulations imposed, lends the tea a distinctive and
naturally-occurring quality and flavour which has won the patronage and
recognition of discerning consumers all over the world for well over a century.
The tea produced in the region and having special characteristics is and has for
long been known to the trade and the public all over the words as Darjeeling
tea. According to records, the commercial tea gardens were planted by British
tea interests in 1852. Darjeeling was then only a sparsely populated hamlet
which was being used as a hill resort by the army and affluent people. However,
by 1866, Darjeeling had 39 gardens producing a total crop of 21,000 kilograms of
tea harvested from 4,400 hectares. By 1874, tea cultivation in Darjeeling was
found to be a profitable venture and there were 113 gardens with approximately
Today, nearly 17, 400 hectares in 85 tea gardens produce around
11.5 million kilograms of tea. The Easter and spring flushes have the unique
Darjeeling flavour and command a high price. Most of the tea coming on to the
world market, as counterfeit' Darjeeling seems to be coming from Kenya and Srilanka. The other source is said to be Nepal. Nepalese tea is produced in
similar geographic conditioned to that of Darjeeling tea.
About 60 percent of Nepalese tea is exported to India and most of the Nepalese
tea estates gardens are owned by Indians. There are allegations that Nepalese
tea is imported in to India is repackaged as Darjeeling tea and exported Nepal
is small produces and exporter of tea in the world market. What will happen if
40000 tons of counterfeit
Darjeeling disappears from the world market because of protection
of the geographical indication for Darjeeling Tea
We could expect the price
of Darjeeling tea to go up depending on the price elasticity of demand of
Darjeeling tea, which will benefit the producers of Darjeeling tea. counterfeit
Darjeeling produced in India and consumed in India.
Darjeeling produced in other countries consumed in India. counterfeit
Darjeeling produced in India and consumed outside India. counterfeit'
Darjeeling produced in India and consumed outside India. Since Darjeeling has a
high reputation, both the Tea Board and the Darjeeling planters Association have
been involved at various levels in protecting this common heritage.
The protection is essentially geared to:
- Prevent misuse of the word Darjeeling for other types of tea sold
- Deliver the authentic product to the consumer.
- Enable the commercial benefit of the equity of the brand to reach the
Indian industry and hence the plantation worker.
- Achieve international status similar to champagne or Scotch Whisky both
in terms of brand equity and governance/administration.
One of the first significant measures was taken by the Tea Board to protect
Darjeeling as a geographical indication about 15 years ago by developing a
Darjeeling Logo. The Darjeeling logo created in 1983 has since been registered
in various jurisdictions including UK, USA, Canada, Japan and Egypt and some
European countries as a Trademark/Certification Trademark/collective Mark.
Tea Board has obtained home protection
by registering the Darjeeling Logo and
also the word Darjeeling
as a certification mark under the Indian Trade and
Merchandise Marks Act, 1958. Under the new Geographical Indication of Goods
(Registration and Protection) Act, 1999 (which has come in to force on September
15, 2003), the tea Board has also filed applications for the Darjeeling logo as
well as Darjeeling word to be registered as a geographical indication. Under
the new Act Darjeeling is registered as GI.
The GI Act, which came into force, along with the GI Rules, with effect from 15
September 2003, has been instrumental in the extension of GI status to many
goods so far. The central government has established the Geographical
Indications Registry with all-India jurisdiction, at Chennai, where
right-holders can register their GI. Unlike TRIPS, the GI Act does not restrict
its special protection to wines and spirits alone.
The central government has discretion to decide which products should be
accorded higher levels of protection. This approach has deliberately been taken
by the drafters of the Indian Act with the aim of providing stringent protection
as guaranteed under the TRIPS Agreement to GI of Indian origin.
However, other WTO members are not obligated to ensure Article 23-type
protection to all Indian GI, thereby leaving room for their misappropriation in
the international arena. Registration of GI is not compulsory in India. If
registered, it will afford better legal protection to facilitate an action for
infringement. Once a GI is registered in India, it becomes relatively easier to
seek protection in other countries, particularly the member countries of WTO.
Written By : Ritika Gupta