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Legal Dimension of Geographical Indications

Geographical indications means any indication which define the goods as originating in the territory of a country or a region or locality in that territory, provided a given quality reputation or other characteristics of the product are attributable to its geographical origin. Darjeeling tea became the first GI tagged product in India, in 2004-05.

Geographical Indications

According to the World Intellectual Property Organisation, 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. Under Article 1(2) and 10 of the Paris Convention for the Protection of Industrial Property, GI is covered as an element of IPRs. It is also covered under Article 22 to 44 of the TRIPS Agreement. GI tag is not only given to agricultural or natural products but also to the manufactured products. Once registered, GI tag is valid for a period of ten years and may be renewed thereafter from time-to-time.

Protection of Geographical Indications

GI tag is closely related with economic and cultural aspect of the regions, hence, there is often an infringement of GI tags by the other regions. Over the years, several cases have been noticed, thus several initiatives have been taken at national and international level for the protection of GI tags.

International treaties related to protection of GI are as follows:

Paris Convention

After the origin of concept of industrial property, the first convention was convened in 1883 to ensure that intellectual works of the creator are protected in countries, who are signatories to the convention. Patent, trademarks, industrial designs, utility model’s service marks, trade names and GI were included under the industrial property. The convention has 30 Articles. Out of which Article 9 and 10 deals specifically with the GI tag. Article 9(1) states that all goods unlawfully bearing a trademark or trade name shall be seized on importation into those countries of the Union where such mark or trade name in entitled to legal protection. Article 10 (1) states that, the provisions of Article 9 shall apply in cases of direct or indirect use of a false indication of the source of the goods or the identity of the producer, manufacturer or merchant.

Madrid Agreement

To ensure repression of false and deceptive indication of GI tags an agreement was adopted in 1891, within the framework of the Paris Union. This agreement is popularly referred as the Madrid agreement. Article 1(i) of the agreement provides that any product bearing a false and deceptive indication by which one of the member countries of this agreement, or a place situated within the territory of that member, is directly or indirectly indicated as the country or place of origin, must be seized on importation into any member country of the agreement.

Lisbon Agreement

After many years of Madrid agreement, another agreement was signed in 1958, to improve the protection of the intellectual property and was too relied upon as a model while drafting the TRIPS Agreement provision on GI. Article 1(2) states that the member of countries should provide protection within the jurisdiction, to the ‘appellation of origin’ of the products manufactured in other member countries, subject to the condition that these appellation are protected in the country of their origin and are with International Bureau of WIPO.

TRIPS Agreement
In order to provide holistic protection to intellectual property, a multilateral agreement Trade Related Aspect of Intellectual Property Rights (TRIPS) agreement was signed. It came into effect on Ist January, 1995. There are several provisions for the protections of the GI.

The Article 22 of the agreement deals with the protection of GI tag, which is as follows:

Protection of Geographical Indications
Geographical indications are, for the purposes of this agreement, indications which identify 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 geographical origin.

In respect of geographical indications, members shall provide the legal means for interested parties to prevent:
  1. the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good.
  2. any use which constitutes an act of unfair competition within the meaning of Article 10 (b) of the Paris Convention (1967).

A member shall, ex-officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that member is of such a nature as to mislead the public as to the true place of origin.

The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate falsely represents to the public that the goods originate in another territory.

Provisions of Geographical Indications in India

India has enacted the Geographical Indications of Goods (Registration and Protection) Act in 1999. This act is an example of comprehensive acts which provide protection to the GI tag in country. The act contains 9 Chapters and 87 Sections.

The important sections in the context of Protection of GI, are discussed below:

Definition of Geographical Indications (Section 2)
As per Section 2(e), ‘geographical indication’, in relation to goods, means 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.

Registrar of Geographical Indications (Section 3)

The Controller-General of Patents, Designs and Trademarks appointed under sub-section (1) of Section 3 of the Trademarks Act, 1999, shall be the Registrar of Geographical Indications. [Section 3(1)]

The Central Government may appoint such officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the registrar, such functions of the registrar under this act, as he may from time-to-time authorize them to discharge. [Section 3(2)]
Prohibition of Registration of Certain Geographical Indications (Section 9)

A geographical indication

  1. the use of which would be likely to deceive or cause confusion; or
  2. the use of which would be contrary to any law for the time being in force; or
  3. which comprises or contains scandalous or obscene matter; or
  4. which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
  5. which would otherwise be disentitled to protection in a court; or
  6. which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin, or which have fallen into disuse in that country; or
  7. which, although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be, shall not be registered as a geographical indication.

Application for Registration (Section 11)

Any association of persons or producers or any organisation or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods, who are desirous of registering a geographical indication in relation to such goods shall apply in writing to the registrar in such form and in such manner and accompanied by such fees, as may be prescribed, for the registration of the geographical indication. [Section 11(1)]

The application under sub-section (1) shall contain:
  1. a statement as to how the geographical indication serves to designate the goods as originating from the concerned territory of the country or region or locality in the country, as the case may be, in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical environment, with its inherent natural and human factors, and the production, processing or preparation of which takes place in such territory, region or locality, as the case may be;
  2. the class of goods to which the geographical indication shall apply;
  3. the geographical map of the territory of the country or region or locality in the country in which the goods originate or are being manufactured;
  4. the particulars regarding the appearance of the geographical indication as to whether it is comprised of the words or figurative elements or both;
  5. a statement containing such particulars of the producers of the concerned goods, if any, proposed to be initially registered with the registration of the geographical indication as may be prescribed; and
  6. such other particulars as may be prescribed. [Section 11(2)]

Withdrawal of Acceptance (Section 12)

Where, after the acceptance of an application for registration of a geographical indication but before its registration, the Registrar is satisfied:
  1. that the application has been accepted in error, or
  2. that in the circumstances of the case, the geographical indication should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted, the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.

Registration (Section 16)

Subject to the provisions of Section 12, when an application for registration of a geographical indication has been accepted and either:
  1. the application has not been opposed and the time for notice of opposition has expired; or
  2. the application has been opposed and the opposition has been decided in favour of the applicant, the registrar shall, unless the Central Government otherwise directs, register the said geographical indication and the authorized users, if any, mentioned in the application and the geographical indication and the authorized users when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of Section 84, be deemed to be the date of registration. [Section 16(1)]

On the registration of a geographical indication, the registrar shall issue each to the applicant and the authorized users, if registered with the geographical indication, a certificate in such form as may be prescribed of the registration thereof, sealed with the seal of the Geographical Indications Registry, [Section 16(2)]

Duration, Renewal, Removal and Restoration of Registration (Section 18)

The registration of a geographical indication shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section. [Section 18 (1)]
The registration of an unauthorized user shall be for a period of ten years or for the period till the date on which the registration of the geographical indication in respect of which the authorized user is registered expires, whichever is earlier. [Section 18(2)]

The Registrar shall, on application made in the prescribed manner, by the registered proprietor or by the authorized user and within the prescribed period and subject to the payment of the prescribed fee, renew the registration of the geographical indication or authorized user, as the case may be, for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be. [Section 18(3)]

At the prescribed time before the expiration of the last registration of a geographical indication or the authorized user, as the case may be, the Registrar shall send notice in the prescribed manner to the registered proprietor or the authorized user, as the case may be, of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of time prescribed in that behalf those conditions have not been duly complied with, the Registrar may remove the geographical indication or the authorized user, as the case may be, from the register.

Provided that the Registrar shall not remove the geographical indication or the authorized user, as the case may be, from the register, if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the geographical indication or the authorized user, as the case may be, and shall renew the registration of geographical indication or the authorized user, as the case may be, for a period of ten years under sub-section (3). [Section 18(4)]

Where a geographical indication or authorized user, as the case may be, has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the geographical indication or the authorized user, as the case may be, on receipt of an application in the prescribed form or on payment of the prescribed fee, if satisfied that it is just so to do, restore the geographical indication or the authorized user, as the case may be, to the register and renew registration of the geographical indication or authorized user, as the case may be, either generally or subject to such condition or limitation as he thinks fit to impose, for a period of ten years from the expiration of the last registration. [Section 18(5)]

Infringement of Registered Geographical Indications (Section 22)

A registered geographical indication is infringed by a person who, not being an authorized user thereof:
  1. uses such geographical indication by any means in the designations or presentation of goods that indicates or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner which misleads the persons as to the geographical origin of such goods; or
     
  2. uses any geographical indication in such manner which constitutes an act of unfair competition including passing-off in respect of registered geographical indication. [Section 22(1)]
    The Central Government may, if it thinks necessary so to do for providing additional protection to certain goods or classes of goods under sub-section (3), by notification in the official gazette, specify such goods or class or classes of goods, for the purposes of such protection. [Section 22 (2)]
Any person who is not an authorized user of a geographical indication registered under this Act in respect of the goods or any class or classes of goods notified under sub-section (2), uses any other geographical indication to such goods or class or classes of goods not originating in the place indicated by such other geographical indication or uses such other geographical indication to such goods or class or classes of goods even indicating the true origin of such goods or uses such other geographical indication to such goods or class or classes of goods in translation of the true place of origin or accompanied by expression such as ‘kind’, ‘style’, ‘imitation’, or the like expression, shall infringe such registered geographical indication. [Section 22(3)]

Relief in Suit for Infringement or for Passing-off (Section 67)

The relief which a court may grant in any suit for infringement or for passing-off referred to in Section 66 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or account of profits, together with or without any order for the delivery-up of the infringing labels and indications for destruction or erasure.

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