Geographical Indication and TRIPS agreement

Geographical Indication

Introduction :

Geographical Indications (GI) is one of the six Trade-Related Intellectual Property Rights (TRIPS) of the World Trade Organisation (WTO) that seeks to provide comprehensive and effective protection to goods registered as GI goods.GIs may be associated with agricultural, manufactured or industrial goods.

Non-agricultural products, which typically qualify for GI protection include handicrafts, jewellery, textiles etc.

India, in compliance with the TRIPS Agreement of the WTO, enacted ‘The Geographical Indications of Goods (Registration and Protection) Act, (GI Act) on 15th September 2003 to provide protection to the goods registered under the Act.

The protection of Geographical Indications has over the years, emerged as one of the most contentious intellectual property rights issues at the global level assumes enormous significance for a country like India.

Geographical indication term has been defined under section 2(1)(e) of the Act. A geographical indication is given mainly to agricultural, natural, manufactured, handicrafts arising from a certain geographical area.

India, as a member of the World Trade Organization (WTO), enacted the Act to comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Geographical indications are divided into two types: indications of origin or appellations of origin.

A registered geographic sign prohibits in any way the use of a geographical insignia which indicates in the designation or representation of goods that such goods originate in a geographic area. For example, Basmati rice and Darjeeling tea are examples of G.I. from India.

The TRIPS prescribes minimum standards of protection of GIs and additional protection for wines and spirits. Articles 22 to 24 of Part II Section III of the TRIPS prescribe minimum standards of protection to the geographical indications that WTO members must provide.

India, in compliance with its obligation under TRIPS, has taken legislative measures by enacting the Geographical Indications of Goods (Registration and Protection) Act, 1999, which came into effect on 15th September 2003 and the Geographical Indications of Goods (Registration and Protection) Rules, 2002.

Article 22 of TRIPS agreement

Article 22 of the TRIPS Agreements define a geographical indication as “signs that originate in a member or identify a good location in an area or locality where a given quality, reputation, or speciality is assigned to its geographical location Is given Is essentially acceptable”.

Article 22 of TRIPS provides the basic framework for the member countries to provide for the protection of all GIs, where the obligation is for members to provide the ‘legal means for interested parties to secure protection of their GIs.

Under Article 22, the scope of protection against the use of indications that mislead the public or are deceptive, protection against the use of indications in a manner that are acts of unfair competition, refusal or invalidation of trademarks that contain or consist of indications, where it may mislead the public.

• Article 22(2)(a) prohibits the use of indications (words, phrases, images or symbols) that will mislead/deceive the public about the goods geographical origin.
• Article 22(2)(b) prohibits any use of GI that constitutes an act of unfair competition as defined in Article 10bis of the Paris Convention, the language of Article 10bis reveals that in order to prohibit such acts as acts of unfair competition.
• Article 22(3) of TRIPS, registration of geographical indications as trade marks shall be refused or invalidated at the request of an interested party, if their use is likely to mislead the public as to the true place of origin, most countries including developing countries prohibit the registration of geographical names as trademarks, unless these have acquired secondary meaning (Watal, 2001).

The higher standard of protection specifically for wines and spirits is provided for in Article 23 of TRIPS.

In the special case of wines and spirits, Article 23(1) of TRIPS prohibits the use of translations of geographical indications or attachment of expressions such as ‘kind’, ‘type’, ‘style’, ‘imitation’ to products not originating from the place indicated, even where the true origin is clearly indicated.

Other sections of the TRIPS Agreement

• Section 11(2) of the GI Act specifies the documentation requirements for applying for a GI in India. Section 32(1) of the GI Rules replicates these provisions and in addition stipulates a few more documentation requirements.
• Section 25 of the Act, by prohibiting the registration of a GI as a trademark, tries to prevent appropriation of a public property in the nature of a geographical indication by an individual as a trademark, leading to confusion in the market.
• Also, according to section 24 of the Act, a GI cannot be assigned or transmitted.

The Registrar of Geographical Indication shall be the Controller-General of Patents, Designs and Trade Marks under the Trade Marks Act, 1999 to discharge the functions under the Act.

The Geographical Indications of Goods (Registration and Protection) Act, 1999 has recognized and protected the names of articles that encourage the manufacturer to invest in maintaining the standards and values of such articles.

The Act provides remedies for violation of Geographical Indications under the criminal laws too. A person who does any of the following things will be punishable with imprisonment for a term between six months and three years and a fine of minimum 50,000 and a maximum of 2 lakh rupees.

A Person shall be punishable with imprisonment for a term, which may extend to three years, or with a fine, or with both for making any representation falsely representing Geographical indication as registered Geographical indication.

Indian geographical indications which are registered in India are:

• Basmati rice
• Darjeeling tea
• Banaras Brocades and Sarees
• Coorg orange
• Phulkari
• Kolhapuri chappals
• Kangivaram sarees
• Agra Petha

For getting registration, the indications should fall within the purview of Section 2(1) of Geographical Indication Act, 1999.

The main benefits which accrue from registration under the Act are as follows :-

• • Confers legal protection to GI in India
• • Prevents unauthorized use of a registered geographical indication by others
• • Enables seeking legal protection in other WTO member countries.

The rights that have been granted to the person who is protected under the geographical indication act are the right to sue, the right to grant license to others, the right to exploit, right to get relief.

Exceptions :

Articles 24(3) to 24(9) of the TRIPS Agreement that take away considerably from the benefits to the owners of geographical indications.

The most important is the exclusion from protection of a geographical indication that is not or ceases to be protected in the country of origin or has fallen into disuse in that country (Article 24.9).

Another exception is identical with the common name of such goods or services or in the case of wines, identical to the customary name of a grape variety found in that Member country (Article24.6)

Conclusion :

Geographical indications are essentially an instrument to promote products commercially, but it can generate wealth, add value, protect the producing region and generate development, expand the export of products, strengthen the domestic market, and promote the products and their historical and cultural heritage, among other issues.

By specific laws governing the geographical Indication of goods in the country, which can adequately protect the interests of the producers of such goods, to exclude unauthorized persons from misuse of geographical signals and protect consumers from fraud, and promoting Indian geographical bearing goods in the export market under Geographical Indicators Goods (Registration and Protection) Act, 1999.

Amendments :

The Government of India has recently notified rules to amend Geographical Indications of Goods (Registration and Protection) Rules, 2002. The said rules will be called as Geographical Indications of Goods (Registration and Protection) (Amendment) Rules, 2020 ;

• • As per the amended Rule 56 (1), the application for registration of Authorized User(s) can be made in Form GI-3. Such request is required to be accompanied by a Statement of Case mentioning applicants claim as producer of the registered GI under consideration.
• • According to the Rule 56 (2), the applicant has to provide copy of such request to the registered producer of GI and thereafter intimate the same to the Registrar.
• • As per the amended Rule 59 (1), upon acceptance of the application for registration of Authorized User, after completion of opposition stages (if any) in favor of the applicant, the Registrar would enter the details of the Authorized User in Part B of the register and issue necessary registration certificate to the applicant.
• • Rule 59 (2) sub clause (f) and (g) which mandated requirement of priority date and details of appropriate office, related to the GI for which the application is made, have been omitted.
• • Rule 59(3) has been amended, wherein the requirement of submission of “unmounted representation of the GI” along with request for issuance of registration certificate as an authorized user has been obviated.
• • The First Schedule, entry 3A with respect to fee of Form GI-3 for an application for the registration of an Authorized User of a registered GI under Section 17, Rule 56(1), has been reduced to INR 10.
• • Also, entry 3C of the First Schedule, with respect to fee of Form GI-3 for renewal of Authorized User has been reduced to INR 10 and will be considered as entry 3B. However, previous entry 3B, has been removed for the said schedule.
• • The Second Schedule has been amended to confirm the amended Frist Schedule.
• • Also, amended Form GI 3A and Form GI 3B have been notified.

Case Laws

•> Tea Board, India v ITC Limited, the first case on infringement of a registered geographical indication (GI) to be decided by an Indian Court.

•> The Scotch Whisky Association, ... vs Golden Bottling Limited on 20 April, 2006.

•> Telefonaktiebolaget Lm Ericcson ... vs Union Of India & Ors. on 13 July, 2012.

•> The State Of Madhya Pradesh vs The Intellectual Property ... on 5 February, 2016.

•> M/S.Sahee Leathers vs The Registrar Of Geographical on 14 June, 2019.

•> Khoday Distilleries Limited vs The Scotch Whisky Association on 12 October, 2007.

•> Mylan Laboratories Limited vs Union Of India & Ors on 8 July, 2019.