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Protection Of Geographical Indication And Its Judicial Findings

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 geographical indication.

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 America.

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.

As GIs 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.

These conflicts are generally resolved through three intellectual property protection approaches: first in time first in right approach, coexistence approach, GI superiority approach.
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 knowledge.

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 services.
  • 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 indications.
  • 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 States.

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 unique qualities.

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 tourism.

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 undertaken.

International issues

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.

There 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 else.

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 Indication

Scotch 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.

On these 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 (1976) R.P.C. 719).

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 case

Darjeeling 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 6000 hectares.

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. counterfeit 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:
  1. Prevent misuse of the word Darjeeling for other types of tea sold worldwide.
  2. Deliver the authentic product to the consumer.
  3. Enable the commercial benefit of the equity of the brand to reach the Indian industry and hence the plantation worker.
  4. 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.

The 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

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