Geographical Indications

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UEducation is a liberating force, and in

our age it is also ~ democratising force,
cutting across the barriers of caste and
class, smoothing out inequalities imposed
by.blrth and other circumstances."
~!ndtraGandhi

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 WI~~~o~~
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Indira Gandhi
UNIVERSITY
MIP-I04
Trademarks, Domain
Names and' Geographical
National Open University
School of Law Indications

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Block

4
GEOGRAPHICAL INDICATIONS
UNIT 13
Introduction to Geographical Indications 5
UNIT 14
Indian Law on Geographical Indications 33
,.

UNIT 15
Infringement of Geographical Indications 76

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Expert Committee (

Dr. D.P.S Parmar Prof. K. Elumalai

Technical Member, Director
Intellectual Property Appellate Board, School of Law
Ministry of Commerce & Industry IGNOU

Prof. S.K. Verma Dr. Suneet Kashyap Srivastava

Director, ISIL Assistant Professor
New Delhi School of Law, IGNOU

" Prof. Salim Akhtar Dr. Gurmeet Kaur

Professor of Law, Assistant Professor
Aligarh Muslim University School ef Law
Aligarh, Uttar Pradesh IGNOU

Dr. Ekbal Hussain Mr. Anand Gupta

Associate Professor Assistant Professor
Jamia Milia Islamia University School of Law
New Delhi IGNOU
'.
Mr. r.c James Ms. Mansi Sharma
Director, Assistant Professor
National Intellectual Property Organisation , School of Law
New Delhi IGNOU

Programme Coordinator: Dr. Suneet Kashyap Srivastava, School of Law, IGNOU, New Delhi

Block Preparation Team

I.nit Writer: Content Editor:
V. Natarajan Mr. r.c. James
Dy. Registrar Head National Institute of
Trade Marks Registry Intellectual Property Organization
Chennai (NIPO), New Delhi
Format & Language Editor:
Dr. Suneet Kashyap Srivastava
SOL, IGNOU, New Delhi

Material Production
Print Production MPOD
Shri S, Burman Shri Tilal< Raj Shri Yashpal
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©Indira Gandhi Naitonal Open University, 2013
ISBN-978-81-266-63IS-6
All rights reserved. No part of this work may be reproduced in any form, by mimeograph or.any
other means, without permission in writingfrom the copyright holder.
Further information on the Indira Gandhi National Open University courses may be obtained
from the University's office at Maidan Garhi, New Delhi-110 068 or the official website of
IGNOU at www.ignou.ac.in

Printed and published on behalf oflndira Gandhi National Open University Registrar, MPDD,
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 BLOCK 4 GEOGRAPHICAL INDICATIONS

This Block consists of 3 units. The Block deals elaborately on Geographical

Indications.

Unit 13 of this course deals with the history of geographical indications, steps
involved in the procedure of recognition of GIs as form of IPR, the need for
legal protection, TRIPS and its application in India, the regulation process, benefits
.., of registration, protection of GI in International Law etc .

Unit 14 of this course deals with the infringement of geographical indications, it

also-discusses famous case laws, the concept of passing off, manner of filing a
suit, acts which do not amount to infringement, rectification and connector of
the register

Unit 15 of this course deals with the Indian law on geographical indications, the
procedure of operation of GI in India, what can be registered as GI, procedure
.
,
for registration, who can register, product specification, methods of production.
This unit also discuss case laws on different aspects of GI.

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 UNIT 13 INTRODUCTION TO
GEOGRAPHICAL INDICATIONS

Structure
13.1 Introduction
13.2 Objectives .e
.
"
13.3 History of Geographical Indications
13.4 Steps Involved in theProcedure of Recognition of anAOC or PDO)
13.4.1 Recognition of'Gls as form ofIPR and its Global Protection
.- 13.4.2 Role o(WIPO .
13.4.3 Need for Legal Protection
If
13,4.4 Indian History and Development ofGIs
13':4.5 Situation Prior to Sui Genesis GI Law
13.4.6 Why Sui Genesis Legislation in India?
13.4.7 Implementation ofGI Act, 1999
13.5 TRIPS and its Application in India
13.5.1 Post GI Act Scenario in India
13.5.2 Steps to be Taken to Enhance Registration Process
13.6 Functions ofGI
13.6.1 Difference between GIs and Trademarks
13.6.2 Benefits of Registration
13.7 Homonymous Geographical Indications
13.8 International Conventions
13.8..1 The Protection ofGI in International Law
13.8.2 The Paris Convention for Protection oflndustrial Property
13.8.3 The 1891 Madrid Agreement on Indications of Source
..
13.8.4 The 1958 Lisbon Agreement
13.8.5 The 1891 Madrid Agreement Act
13.9 WTO and TRIPS
13.10 Methods of Implementation
13.10.1 Collective Marks and Certification Marks
13.10.2 Registration of Collective Marks in India
13.10.3 Certification Marks
13.10.4 Registration of Certification Marks
13.10.5 Unfair Competition Law
13.10.6 Administrative Regulation
13.10.7 European Regulations
13.11 Summary
13.12 Terminal Questions
13.13 Answers and Hints
"Saving the traditional knowledge heritage of a country depends on its wit and
alertness in applying the provisions of various laws in intellectual property rights
(IPR). The Geographical IndicationsAct is one such law enacted in our country
which. can be used to protect the specialties of different regions in producing
goods of high quality and unique fragrance. " 5

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 Geographical Indications
13.1 INTRODUCTION
The phrase 'geographical indication' (GI) was for the first time used in the
Agreement on Trade Related aspects of Intellectual Property Rights (TRIPS
Agreement). But the concept is very.old and dates back to 14thcentury when a
specific legislation was passed on 'appellations of origin' in relation to 'Roquefort
cheese' in France. In brief,' the concept of GIs essentially originated in Europe
where it has been mainly related to agricultural products and foodstuffs, and
eventually expanding to certain industrial products, such as 'Swiss watches'.
"
Till the TRIPS Agreement, the terminologies used. were 'indications of source'
and 'appellations of origin'. Geographical indications are instruments to protect
a product'sreputation, an associated expression and an embedded knowledge.
Consumer confidence on "originality" is tied closely to perceived authenticity,
the product's physical attributes, and place of purchase or consumption and
communicated heritage. While GI has been in use for many decades in different
parts of the world its protection as a form of Intellectual Property Right (IPR)
has acquired statutory recognition in most countries only after the TRIPS
Agreement was finalized in 1994.

GIs are playing a very predominant role in"European economy, the. French being
one among the pioneers in the development of GIs. The GI label helps 4I the
.marketing ofthe products leading to charging premium prices. In France, quality
and geographical link are imperative elements in seeking protection. In that
country, around 600 products have been recognized as early as 1997 in which
1,42,000 producers have been involved with an annual income of 19 billion
Euros then.

13.2 OBJECTIVES
After reading this unit, you should be able to,

• explain geographical indications;

• history of geographical indications;
• role of Gl's as form of IPR and its global protection;
• legal protection in India;
• implementation of the GI Act 1999;
• TRIPS and its application in India;
• differenoe between Gl's and Trademarks; and
• the Registration process.

13.3 mSTORY OF GEOGRAPmCAL INDICATIONS

The Appellations d'Origine Controlee (AOC) was established in 1935 after trial
and error methods since 1905. AOC products had to present, particular
characteristics originating from natural and human factors for recognition. The
recognition and regulation of AOCs were entrusted to a public establishment.
The INAO (Institute national de' origine et de la qualite) and its decision making
body is known as the Committee National. A brief description ofINAO, its tasks,
and deliverables are presented in the following Table:
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 Table 13.1: Ministry of Agriculture Introduction to
Geographical Indications
Ministry of Status as on Tasks of INAo" INAO
Agriculture 1997 INAO The Deliberative The deliberative
authorities - 1 authorities -
2 Control and
INAO (Insti- approval council
tute national Defining the Nationai Committee
de' origine et Head office in geographical for wine, sprits and
"
de la qualite) Paris area of produc- alcoholic beverages A specific author-
tion (PDO) ity
26 regional
A Govern- offices then Defming the National Committee Creation due to a
mental product for dairy products , new organization
Agency Around 250 specifications foodstuffs and of controls
employees forestry
Determining a products(PDO) Defines principles
Budget 20M system of of control and
.. (72 per cent- control of the National Committee approval
person, 28 per products for organic farming
cent- profes- Gives opinion on
sionals) Contributing to National committee control and
the protection for label rouge inspection bodies
ofGIs protected geographi-
cal indications
(PGI)and traditional
specialty
.. guaranteed. (TSG)

The economic success of AOC since 1935 encouraged the legislator to extend
the competence ofthe INAO to all unprocessed or processed agricultural or food
products. The stakes were high, as this was the moment when debate was
beginning within the European Community as to the future and the development
of rural zones and the promotion of products. The Law of2od July, 1990 saw the
creation of two more National Committees, covering dairy produce and
agribusiness products. After the broadening of its competences in 1990 to include
dairy produce and agribusiness products, the Agricultural Orientation Law
published on 9th July, 1999 entrusted the Institute National des Appellations
d'origine with the management of Protected Geographical Indications (PGI),
and provided for the creation of a fourth National Committee. In ten years the
INAO had thus seen its competence extended to all AOCs and to anything
. . .
concermng ongm.

On 14 July 1992, a European regulation established a system of protection for

geographic names, involving two notions, namely, Protected Designation of
Origin (PDO) and Protected Geographic Indication (PGI). On 3rdJanuary, 1994,
a French law containing the following was introduced:-

only AOCs could become PDOs

only labels and certificates of coutormity could achieve European protection

in the framework of the PGI

The INAO was given responsibility in respect of the geographic names of

products under PGI
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 Geographical Indications
13.4 STEPS INVOLVED IN THE PROCEDURE OF
RECOGNITION OF AN AOC (OR PDO)
Steps involved in the procedure of recognition of an AOC (or PDO) are as under:
'-...
~' -
Group of producers define their product with precise specifications
-1-

Application is sent to the relevant Member state

-1-
"
National authorities study, decide whether to accept the registration of
application
-1-
Transmit their decision to the Commission
r,
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A number of control procedures at EU level
-1-

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,
If application meets the requirements, publication in European Union's
Official Journal
-1-
>

An up to date list of the ptoduct names along with specification information

. published on its website

13.4.1 Recognition of Gls as form of IPR and its Global

Protection
In the last quarter of the twentieth century, international trade has grown
. tremendously thereby affecting intellectual property rights in all aspects. Nations,
communities and individual manufacturers have realized that GIs, intended to
designate product quality,highlight brand identity, and preserve cultural traditions,
allows producers to obtain market recognition and often a premium price. For
example, French GI cheeses are sold at a premiumoftwo Euro, Italian 'Toscano'
wine is sold at a premium of 20 per cent since its registration as a GI in 1998.
Further, the EU, the biggest producer of wines and spirits, annually exports wines
to a total value ofEuro 250 billion and spirits to a total value ofEuro 660 billion
(all based on as early as 1997 as the reference year). French wines like Bordeaux
and 'burgundy' are well known world over and of course champagne that has
become a symbol of victory and celebration. It is stated that in case of wines and
in general GIs and the country where a product originates makes a big difference
to sales. Australian wine industry devised their own regional names for wine
like 'Goonawarra' or 'Barossa' and built one ofthe most dynamic wine industry.
As of date 85 per cent of French wine exports use GIs and 80 per cent of EU
exported spirits use GIs. GIs are the lifeline for 138,000 farmers in France and
300,000 Italian employees. Apart from wines and spirits GIs are also v.ery
important to the food products like cheese, tea, coffee, rice and many others.
r

In most developing countries, legal protection for geographical indications is of

comparatively recent origin. These countries need to look into their products
which bear geographical indication tags and urge the international community
to make the necessary amendments to the TRIPS Agreement so that their domestic
producers gain economically. For the large number of artisans engaged in the
production of such products, this protection will also be a social boost, leading
8

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 to recognition for their skills which have local roots. Further, the protection Introduction to
Geographical Indications
afforded by GIs for handicrafts, handlooms and food stuffs help, to some extent,
the preservation oflocal culture and traditional knowledge, as these are tangible
expressions of culture. Artisans may, perhaps, need help from governments in
developing their marketing strategies. But any investment in the sector is likely
to boost the rural economy.

Since GI is a late entrant into IPR protection for the artisan class in India, there
have been a number of successful civil society initiatives, of course, in addition
;. to the state governments' actions, to check the exploitation ofthe artisan producers. ,

In India" the geographical indicat'ion products enjoy a reputation which is is

available in an oral form. The challenge is in converting these oral knowledge
bases into documentary evidence. The handloom and artisan based activities
, have demonstrated economies of small scale production. While that is an
advantage, it has its own limitations, particularly in tackling such complex issues '
of documenting the knowledge and reputation bases.
·. GI protection though similar to the Trademarks protection has two unique
dimensions in indication of geographical location and appellation of origin that
indicates not only the specific location but also the characteristics of qualities
brought about by a combination of geographical environment.

13.4.2 Role of World Intellectual Property Organization

(WIPO)
WIPO is in charge of the administration of a number of international agreements
which deal partly or entirely with the protection of geographical indications.
According to the World Intellectual Property Organization (WIPO), a geographical
indication is a sign used on goods that have a specific geographical origin and
possess qualities, reputation or characteristics that are essentially attributable to
that place of origin. Most commonly, a geographical indication includes the name
of the place of origin of the goods. Agricultural products typically have qualities
that are derived from their place of production and are influenced by specific
local factors such as climate and soil. Whether a sign is recognized as a
geographical indication is a matter of national law. Geographical indications
may be used for a wide variety of products whether they are natural, agricultural
or manufactured. At an international level, 'Champagne', 'Havana', 'Tequila',
'Scotch Whisky', 'Bordeaux', 'Darjeeling Tea' 'Basmati Rice' 'Irish Whisky',
'Porto', and many others are some of the popular examples. Furthermore, through
the work ofthe Standing Committee on the Law of Trademarks, Industrial Designs
and Geographical Indications (SCT), made up of representatives of Member
States and interested organizations, WIPO explores new ways of enhancing the
international protection of geographical indications.
r
13.4.3 Need for Legal Protection

Given the enormous commercial implications ofGIs, the legal protection ofthis
IPR evidently plays a significant role in commercial relations both at the national
as well as at the international level. Without such protection GIs run the risk of
being wrongfully used by unscrupulous businessmen and others. Because they
can misappropriate the benefits emanating from the goodwill and reputation
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 Geographical Indications associated with suchGIs, by' way of misleading the consumers. Such unfair
business practices not only.result in huge loss of revenue for the genuine right-
holders of the GIs concerned but can also hamper the goodwill and reputation
associated with those indications in the long run. For want of adequate legal
protection, the legitimate right holders of various GIs ofIndian origin, for instance,
. '
have long since 'been adversely affected by such unscrupulous business practices .
\
Innumerable companies and 'traders have been found to be free-riding on the
goodwill and reputation associated with various renowned geographical names
,
.
" ofIndian origin, for years. The 'Darjeeling tea' denotes the fine aromatic produces
of the high-altitude areas of North-Bengal, from where it received the name.
According to a rough estimation, around forty million kg of orthodox tea is
being sold worldwide as 'Darjeeling' tea, although the production of authentic
'Darjeeling' tea hovers around a mere ten million kg every year. It is obvious
that in the absence of such fake 'Darjeeling' teas, the price premium associated
with gen.uine 'Darjeeling' tea is likely to increase manifold.

13.4.4 Indian History and Development of GIs

I
As far as India is concerned, the concept of uniqueness of products of certain
geographical region has been recognized ~from ancient times. In the Hindu
scripture 'the Ramayana', the mythical sanjeevani booti (seabuck thorn fruit)
- supposedly a magical berry grown in the Ladakh region of Northern India,
was used to bring back Laxman to life when he fell in the battle with Indrajit.
. Over the centuries, a number of agricultural products, food items as well as
handicrafts and manufactured items have emerged as popular products by virtue
of the special quality associated with the geographical regions in which they are
produced. In recent times, the cultivation ofDarjeeling tea has a history of more
than 150 years. Going further back, Basmati rice was in frequent use in the Mogul
court. Similarly, Bikneri Bhujia (a spicy Indian delicacy) has been sold in the
country for decades. In the South, "Tirunelveli Halwa" (a sweet) dish was started
by two families in a district by that name. The countless spices ofKerala, pickles
from Andhra Pradesh, Feni (liquor) from Goa, Paithani and Banarasi Sarees,
Kanchipuram Silk Saree, Nagpur oranges, have all acquired immense reputation;
need less to mention other countless treasures of GI.

India is a land of treasure,endowed with rich natural resources of agricultural

poducts and other goods of high economic value. India is blessed with diverse
culture which reflects the ancient wisdom and tradition of people. However, for
decades there have been no legislative attempts or Act to protect our heritage,
particularly the fauna and flora and the professional skill of our rural folk. This
has led in certain cases to extinction of several invaluable species of plants and
some are now on the verge of extinction. Most of these products are a major
source of livelihood and income for the rural population who represent more
than 70 per cent of our population. Often connected with traditions, practices
,. and culture of rural community, geographical indications are tightly interwoven
into rural lives which employ traditional methods, practices and know-how to
produce these goodsassociated with geographical indications. Equally, rural folks
in various regions of our country possess unique skill and expertise to produce
hand crafted products like handicrafts, jewelleries, textiles other related products
and they are involved in the above skill for several generations. It is felt that the
quality parameters of the goods are to be consistently maintained so as ensure
the reputation of the goods. This will also help to retain the GI area and prevent
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 > it from being lost. This will create a healthy competition both in the domestic Introduction to
Geographical Indications
and international market to uplift the image of the product and the GI area by
legal protection. It is strongly felt that the prosperity of the producers of goods
and the nation will be enhanced due to GI registration by maintaining and
.' sustaining quality and standard of the products.

13.4.5 Situation prior to Sui Genesis GI Law

The Trade and Merchandise Marks Act, 1958 had provided some protection
" through certification marks. However, this provision did not extend direct legal
protection to all producers. Taking recourse to the provisions on 'passing off'
under the same law was another means to protect GIs, but this was slow and a
cumbersome process. It required proving that the infringer had deliberately tried
to poach on the reputation or a particular product. Besides, success was not always
guaranteed.

Unregistered GIs were are also today protected by an action of 'passing off'
.
,
action which was, first recognized by Danckwerts j in Bollinger v. Costa Brava
wine Co. [1960] RPC 16. Under an action of extended passing offit is recognized
that a class or group of traders may share goodwill in a name or some other
indicator that is distinctive of a particular class of goods such as 'champagne' or
'scotch whisky', Therefore, what is recognized is some kind of collective goodwill
and. GI too is a form of collective goodwill. In Bollinger v. Costa Brava wine
Co. case the plaintiffs who were members of a group of producers from the
Champagne district in France who made a naturally sparkling wine, popularly
known as 'champagne', brought an action of passing off against the defendant
for selling a product called Spanish champagne. Thecourtobserved that passing
off would restrain a trader who sought to attach to their product name or
description with which they have no natural association, "so as to make use of
the reputation and goodwill which has been gained by a product genuinely
indicated by the name or description". Danckwerts J further added that it did not
matter "that the person truly entitled to describe their goods by the name and
i
description are class producing goods in a certain locality and not merely one
individual". Therefore in essence the court recognized that the plaintiffs along
with other members of the class had the requisite goodwill in the name
'champagne'. This was because the name champagne indicated a sparkling wine
that came from the 'Champagne district in France, was made by a particular
method, and from grapes sourced from this Champagne region. As such, the
word "champagne' denotes a distinctive reputation which could only be used by
producers from 'Champagne' region.

13.4.6 Why Sui Genesis Legislation in India?

The protection of Geographical Indications has, over the years, emerged as one
of the most contentious intellectual property right (IPR) issues in the realm of
the World Trade Organization (WTO). Notably, the Agreement on Trade Related
Aspects ofIntellectual Property Rights (TRIPS) - an integral part of the WTO
Agreement, which was ,concluded among 117 countries of the world in April
1994, at Marrakesh specifies norms and standards for the protection ofGls, along
with six other categories oflPRs.

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 Geographical Indications GIs need not always be geographical names (such as, name of a town, a region or
a country) to designate the origin of the goods to which they are associated, but
may consist of symbols as well, if such symbols are capable of indicating the
origin of the goods concerned without literally naming the place of their origins.
One such indication is 'Basmati' forparticular varieties offragrant rice produced
in India. 'Basmati' is not a geographical name it is perceived by the public as an
indication of rice originating from India; Normally GIs may be associated with
manufactured, industrial products, and food items in India other than the vast
majority which are agricultural products, mostly food and beverages. The non-
"
agricultural products, which enjoy GI protection include handicrafts, jewellery .
and textiles. GI serves to recognize the essential role of geographic and climatic
factors and/or human know-how which can play in the end quality of a product.
Like trademarks or commercial names, GIs are also IPRs, which are used to
identify products and to develop their reputation and goodwill in the market. In
fI
an increasingly globalised economy, however, GIs have become much more than
a mere category of IPR. Given the recent trends in the world market, where
consumers, especially those in the developegd world, are increasingly becoming
finicky about the quality and authenticity of the products that they are buying
and are gradually developing preferences for environmentally sound and/or
socially responsible products, GIs are increasingly gaining in importance as
" weapons for such niche marketing because, the information conveyed by GIs
makes it possible to meet the new consumer criteria by identifying products with
added value and specific qualities due to their origin. Leaving aside such economic
and commercial benefits, GIs also serve to convey the cultural identity of a nation,
region or locality, and add a human dimension to goods, which are increasingly
subject to standardized production for mass consumption. Often GIs are also
associated with other social benefits (community rights). Considering the above
importance, a holistic approach was adopted leading to separate sui genesis
legislation in India.

13.4.7 Implementation of GI Act, 1999

The Geographical Indications of Goods (Registration and Protection) Act, 1999
came into force on 15th September, 2003. The enactment of the Act was
necessitated by the Agreement on Trade Related Aspects ofIntellectual Property
Rights (TRIPS, 1994). A Geographical Indication Registry (GIR) with all India
jurisdiction has been set up at Chennai on 15th September, 2003, as per the Act.
Consequent on its membership of the World Trade Organization and the attendant
TRIPS, India explored avenues for extending proper legal protection to
geographical indications. While TRIPS Article 24.9 provides that WTO Members
have no obligation to protect GIs that are not protected in the country of origin,
they must extend protection to goods imported from other countries that do
provide such protection. This fact weighed heavily in the government's efforts
to extend legal means to protect Indian Geographical indications (GIs).
r
According to GI Law, a 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 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
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 of either the production or of processing or preparation of the goods concerned Introduction to
Geograpbical Indications
takes place in such territory, region or locality, as the case may be. "

The Act further clarifies that -

"any name which is not the name of country, region or locality of that country
shall also be considered as the geographical indication if it relates to it specific
geographical area and is used upon or in relation to particular goods originating
from that country, region or locality, as the case may be."

It is interesting to note that in order to remove all doubts about the scope of
goods, the Act states that any goods of handicraft or of industry, including food
stuffs, fall within the meaning of 'goods'.

The Act provides for a registration system through application. However, unlike
with other intellectual property rights, the application must be made by an
f! association of persons or producers or any organization or authority established
by or under a law in force that represents the interests of the producers of the
goods concerned. The reason behind this is that geographical indications are not
built up by one individual but by a community of persons in a particular locality
or region. This concept has also influenced the provision which prohibits
assignments, transmissions, licensing, pledges and mortgages of any right arising
out of registration of a geographical indication. The period of protection is for
ten years which can be renewed indefinitely.

The first application received by the Geographical Indications Registry was for
Darjeeling tea. Dated 27 October, 2003. It was filed by the Tea Board ofIndia,
an authority established by the Government of India. The history of Darjeeling
tea goes back to the 18th century, when tea was planted in the salubrious climate
of the Darjeeling hills of Eastern India. Due to the special weather and soil
conditions in.the region, Darjeeling tea has a unique taste. The application was
examined by a consultative group comprising legal and technical experts, as
well as the Registrar of Geographical Indications. It was also advertised inviting
oppositions. After completion of all formalities, Darjeeling tea became the first
registered geographical indication ofIndia on 29 October, 2004. This was soon
followed by the registration of other products.

Self Assessment Question (Spend 5 minutes)

1) Discuss about Geographical Indication, its growth and development.

...................................................................................................................
13

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 Geographical Indications
13.5 TRIPS AND ITS APPLICATION IN INDIA
The definition of GIs as in TRIPS Agreement is comprehensive and includes
industrial products. Section 3 (Article 22 to 24) of the TRIPS Agreement contains
provisions in relation to GIs. In general to qualify for protection an indication of
a good must 0

• Identify the good and its area of geographical origin.

• The good possess a given quality, reputation or some other characteristic
.
"
which
• . Is essentially attributable to its area of geographic origin.

There is no unanimity on the legal definition of GIs across nationa11egis1ations.

Some use a TRIPS-like definition that is at times limited by a list of products.
fI
Others use the more restrictive definition under the Lisbon Agreement, requiring
the direct use ora geographical name. Most.countries require products.to
~...:.::r'. .
meet
.
,
..certain requirements for protection. Some rely on the TRIPS definition, but others
have additional requirements, includingproductionmethods and product
specifications to ensure quality. Measures to ensure the link between the good
and the designated area of origin are implemented differently. Some include
explicit requirements onall.stages of production, some only for raw materials,
and some only for theproduction process. Finally, some countries treat GIs as an
extension oftrademarks (e.g. the United States), while others have implemented
specific (sui-genesis) legislation (India).

The definition as given in the Indian GI Act 1999 is in consonance with the
definition ofGI as given in the TRIPS Agreement (Article 22 (1)) and is specific
and exhaustive. According to Section 2 (e) of the Indian Act 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
mariufactured goods one of the activities of either the production or of processing
or .preparation- <zfthe goods concerned takes place in such territory, region or
locality, as the case may b~.· ,

Explanation: - For the purposes of this clause, any name which is not tile name
of a country, region orlocality of that country shall also be considered as the
geographical indication if it relates to a specific geographical area and is used
upon or in relation to particular goods originating from that country, region or
- locality, as the case may be.

The Indian definition explicitly extends the GI protection to not only for
agricultural products but also for natural, manufactured goods, handicrafts and
r
food items. The use ofGIs is predominantly with respect to agricultural products
which typically having the qualities attributable to the specific geographical area,
and are influenced by the factors such as climate, soil, etc. The quality parameters
play a key role in the recognition ofGIs. What constitutes 'quality' is a subjective
matter some times especially where food is concerned. Quality attributes normally
includes in an agricultural country like India, apart from the basic prerequisites
, of health and safety, and taste, product characteristics linked to geographical

I
 origin or production method (e.g. organic farming), special ingredients, particular Introduction to
Geographical Indications
local production methods resulting from local expertise and traditions of that
place. It includes preparation, processing, and production methods that enhance
the quality and attractiveness of the product. .

However, certain geographical locality or region may also have highlighted

specific qualities of a product, due to human factors found in the place of origin
of theproducts, such as specific manufacturing skills and tradition. Such place
of-origin may be a village or town, a region or a country. For example,
. 'Switzerland' or 'Swiss', which is often perceived as a GI for products like
" chocolate and watches made in Switzerland. In India 'Kolhapuri' for a particular
kind of 'Chappals' made in Kolhapur district of Maharashtra, 'Bikaner' for a
specific kind of snack called. Bhujia made in Bikaner district of Rajasthan,
Kanjeevaram for a specific kind of silk saris made in Kanjeevaram district of
Tamil Nadu can be examples of manufactured goods with certain qualitities
attributable to their places of origin.

Briefly, Gls essentially fulfill two main functions, namely, protecting the goodwill
of a producer or a section of producers and imparting consumer information.
Often promotion of products having certain characteristics is of considerable
benefit to the region or area where the products are manufactured and to .the area
where they are marketed, Gls protect producers of these region or area against
unauthorized exploitation of the goodwill created by the quality of the products
and advertising appeal of the respective locality or region by competitors and
their, .products, It should be pointed out that effective GI protection is very
important. InSMW winzersekt GmbH land Rheinland-Pflaz [1995] 2 CMLR
718 the European court ofjustice dismissed tCcouncil regulation that prohibited
them from de~nating their sparkling wine as champagne or indicating that the '
wine was produced using the champagne.method. The court in its opinion has
clearly indicated that Gls have a purpose beyond that of protecting the consumer
against confusion about the origin of goods and that pertains to protection of the
goodwill investment ofa region, which produces genuine goods against
misappropriation by others who have not made the same investment in the
goodwill. The court held that the words 'champagne' or 'champagne method'
f
has a value because of the investment of French sparkling wine producers in
. .
producing their product, and German wine producers cannot be allowed to have /

."
a free ride on this investment. '

13.5.1 PostGl Act Scenario in India

After the enactment of 01 Act, it is found that the various quality parameters are
implemented in all registered Gls - the agricultural products, the textiles, the
. handicrafts, etc., which are drawn by the producers keeping in mind the Indian
situation and the Geographical Indications Act requirements. In that process,
various attributes .have been analyzed. In most cases, the quality parameters are
of observational type under in-situ conditions and in certain other cases by
- bringing the samples to the laboratory for simple analysis. It is interesting to
point out that in crops like Coffee, Tea, Cardamom & Cotton DNA finger printing
methodologies have been developed by Indian scientists to use them as markers
to correctly identify the raw materials for the finished products. Besides, in many
"cases of edible GI products ofplant and animal origin, the bio-chemical characters
have also been estimated and the good laboratory practices have been
15

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 Geographical Indications standardized. In view of the fact that the quality of food items as well as other
products like flowers, etc., the Good Agricultural Practices (GAP), Good-
Harvesting Practices (GHP): and Good Manufacturing Practices (GMP) are being
adopted. In the case of Handicrafts, the quality of the raw materials such as
wood, metals, leather, cotton, silk, wool, coir, clay, quartz stone, granite stone
etc., are given much emphasis. It is found from the official GI journal, that the
~.
GI products already registered, those that are recommended by the Consultative
Groups, and the possible GI Products that are likely to be registered are analyzed
in great depth from the quality point of view from earlier literature and experience.
Brief description ofthe GI products and their commercial value are also normally
'f indicated. The information furnished is mainly from published documents,
Internet sources, and discussions with the experts concerned and producer groups.

It is found that in India, most of the registered geographical indications have

been for handloom textiles and handicrafts, two areas predominated by the small
scale sector. The experience of textile products and handicrafts, like the Chanderi
sari, Pochampalli ikat, and Kota Doria which have been given the protection by
registration as geographical indications, helped the producers to boost their
. economic returns significantly. India, therefore, must continue to make efforts to
get allproducts with a geographical indication tag on theregister, Getting products
on the GI register is only the first step towards realizing their economic potential.
Most of the people engaged in the production of such products are small
households or small units, although in the same area. Convincing them to organize
into associations and to enable them move their application for registration are
painstaking and difficult tasks, It is also necessary to draw up standards and
inspection mechanisms to ensure quality. These, however, are just preliminary
troubles; once the system gets organized and protected, benefits are certain in
terms of return and outcome. . .

13.5.2 Steps to be Taken to Enhance Registration Process

• Collect information from literature and earlier reports and through interaction
about the agricultural, natural and manufactured products oftraditional and
heritage value in different parts ofIndia for identifying the possible candidate
products for GI Registration and create a database.

• Study the role of GI areas and their characteristics

\
on the quality of the GI
products.

• Identify and document the diagnostic features of the GI products for easy
recognition of specifications and descriptions of the products.

• Highlight the key quality parameters of the GI products, which are easy to
adopt, to promote the domestic and export market for the products.

• Help in awareness creation and motivate producer groups to protect the

products of traditional and heritage value.
r
• Groups, with a view to further strengthening the movement for protection
of Intellectual Property under the purview of the GI Act for the eventual
upliftment of rural economy in the country.

• The farmer self-help groups in association with local bodies like the
Panchayati Raj Institutions (PRIs) are alternatives waiting to be tapped in a
16 most cost-effective manner.

I I
 • A pro active affirmative action, albeit, in a decentralized yet coordinated Introduction to
Geographical Indications
framework in providing GI protection in the days -to come will be the right
step and give out the required signals to other developing countries and
'least developed country members ofWTO -

Self Assessment Question (Spend 3 minutes)

2) Quality is a Key element in recognition ofGIs-Substantiate this statement.

"

p,

....................................................................................... , .

.. 13.6 FUNCTIONS OF GI
The function of a GI is that it points to a specific place or a region of production
that determines the characteristic qualities of a product that originates from there.
It is important that the product derives its qualities and reputation from that
place. Since those qualities depend on the geographical place of production, a
specific "link" exists between the product and their original place of production.
In case of manufactured goods, the link develops over a period oftime. It is easy
to imagine this concept of GI with respect to agricultural goods as the specific
link can be easily seen, understood or perceived. For example, 'Darjeeling' tea
is known for its flavour and aroma which are attributable to the Darjeeling area,_ .
. of eastern India. 'Basmati' known for a kind of rice having long grain and sweet
aroma are grown in sub Himalayan regions of India. Many other examples of
such GIs can be given. The main function of GIs is to identify the origin of
goods. They point to a specificplace or region of production that confers particular
characteristics and qualities on the product. It is important to emphasize that the
product derives its qualities and reputation from the place of origin. These signs
can acquire a high reputation and commercial value. It may be exposed to
misappropriation and, misuse. This is why it is generally recognized that these
signs need to be protected. GIs are given different names such as appellations of
origin, designations of origin, etc., in different national laws.

13.6.1 Difference between GIs and Trademarks

The relationship between trademarks and GIs is complex. Trademarks generally
identify products from a specific manufacturer. GIs do not identify a manufacturer
(or producer), but rather the product's place of origin. Trademarks imply human
creativity. GIs, on the other hand, are linked to climate, soil and other factors
that are largely independent ofhuman ingenuity. They are expressions or symbols
(such as a flag) which recognize a product as originating in a certain country
with a given quality or reputation or other characteristic which the product has is
attributable is attributable to that place or country or region. In effect GIs act as
source identifiers; they identify goods originating in a particular territory, or a
region or locality in that territory. Also, they act as indicators of quality as they
let consumers know that the goods come from an area where a given quality,
reputation or other characteristic of the goods is essentially attributable to their
17

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 Geographical Indications geographic region. In ad'dition, GIs are business interests as they help to promote
the goods of particular area while a trademark serves as a 'badge of origin', i.e.,
a sign or combinations oi" signs, such as words, numerals, figurative elements,
etc., capable of distinguishing goods or services of one undertaking from those
of others. Further, a single r lerson, legal or natural, is entitled to use a trademark,
the right being accorded in Cl ccordance with the principle of 'first in time, first in
right' and the first user or firs't registrant will generally take precedence while in
the case of GI, all producers L'leionging to the particular region or locality are
entitled to use it. There is no precedence. Therefore, the notion of trademarks
"
implies individual production of goods while the notion of GIs implies the
collective production of goods c.oming from the.same geographical region and
having the same quality, reputation or characteristic attributable to its geographical
origin. Trademarks are easier to protect internationally though it requires active
role of the owner who acquires the right through registration with a competent
f!
domestic authority, while in the case of the GIs, the state or an association of
producers has to play a prominent role in its protection. Also, trademark is a
personal property, which can be transferred by way of assignment, licensing or
any other means, while a GI by its very nature cannot be the subject matter of
licensing or assignment. For example, the know-how for producing champagne
or cognac may be, in principle" transferred to a person producing sparkling wine
or brandy outside the region of champagne or cognac, but the right to label the
licensed product 3.S champagne; or cognac cannot be transferred.

Consumer perceptions of geographical indications and trademarks also differ as

could be seen from the following graph on Turron.

ccmcartso

Fig. 13.].
r

13.6.2 Benefits of Registration

1) It confers legal protection.
II) Prevents unauthorized use of a registered Geographical Indication by others.
Ill) It boosts exports.

18 IV) It promotes economic prosperity of producers of goods.

I
 Introduction to
13.7 HOMONYMOUS GEOGRAPHICAL Geographical Indications

INDICATIONS
The term 'Homonymous', means the same or similar. The use of homonymous
names (i.e. products having the same name) is not excluded for registration. The
benchmark is whether consumers might be misled or not. In cases were the same
name is being used, a distinction must be made, bearing in mind the need to treat
producers in an equitable manner and not to mislead consumers. The traditional
high quality hams of France and Belgium, while using similar words, are
.
"

sufficiently differentiated for consumers. Rioja, - wines produced in Argentina

and Spain, is a good example of homonymous indication.'

Section 10 of the Indian GI Act, 1999 provides for registration of homonymous,

i.e., similar GIs subject to the satisfaction of the Registrar. The Registrar after
f!
'considering the practical conditions under which the homonymous indications
will be differentiated form other such homonymous indications, the need to ensure
equitable treatment of the producers of the goods concerned and after satisfying
himself that the consumers' of such goods will not be confused or misled due to
registration of such homonymous GIs, may register such homonymous indications
This section is in consonance with Article 23(3) ofthe TRIPS Agreement; which
permits each member to "to aetermine the practical conditions under which the
homonymous indications in question will be differentiated from each other taking
in to account the need to ensure equitable treatment ofthe producers concerned
and that consumers' are not misled".

, S~lf Asseisment Questions (Spend 7 minutes)

3) Difference between GI and.Trademark.

.............................................. ~ .

4) Explain Homonymous Geographical Indications .

..................................................... .,. .

•• • • •• •• •• • • •• •• •• •• •• • ot- ••••••••••••••••••••••••••••••••••••••••••••••••••••••• ·"0~ •••••••••••••••••••••••••••••••

13.8 INTERNATIONAL CONVENTIONS I

A GIis a sign used on goods that have a specific geographical origin and possess
qualities, reputation or characteristics that are essentially attributable to that origin.
An Appellation of Origin (Aa) is a special kind of GL GIs are protected in
19
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I
 Geographical Indications accordance with international treaties and national laws under a wide range of
concepts, including laws specifically far the protection of Gls or AOs, trademark
laws in the farm of collective marks or certification marks, laws against unfair
competition, consumer prate~tian laws, or specific laws that recognize individual
GIs.

13.8.1 The Protection of GI in International Law

In the.19th century, it was felt that national protection was not sufficient as products
were often imitated outside ofthe country of origin. To ensure that GIs were also
.
"
protected globally, international cooperation was required. The Paris Convention
for the Protection of Industrial Propertywas adapted in 1883 concerning all aspects
of intellectual property pertaining to' industries including geographical indications.

13.8.2 The Paris Convention on Intellectual Property

__ This was the first multilateral agreement 'which included protection far
. "Indications of source or appellations of origin". It recognizes geographical
indications as a separate intellectual property right. However, it daes not define
this concept clearly.

Article 1(2) of the Paris Convention states:

"The protection of industrial property has as its object patents, utility models,
industrial designs, trademarks, service marks, trade names, indications of source
or appellation of origin, and the repression of unfair competition ", Further Article
10(1) of the Paris Convention providesfor the certain remedies in respect unlawful
use of indications of source on goods. Also Article 10 of the above convention
does mention origin expressly.

However, they are covered by the term "indications of source" as all appellations
of origin are considered to' be indications of the source of goods.

"Appellations of Origin, as defined in the Paris Convention, make a direct link

between the product's quality and its geographical origin, in addition to'
geographical source of the product".

Indications of Source: Indications of source are mast commonly labels such as

'Made in America' or 'Product of Mexico.' The idea originated in the Paris
Convention and the Madrid Agreement. However, neither document actually
defines the concept. It is generally understood that an indication of source is
contingent only an the product's geographical origin and not necessarily its
inherent quality. The MadridAgreement provided specific rules far the repression
of false as well as deceptive indications of source. Article 11b is of the Parris
Convention gives the basis far protection against misleading indications of saurc~,
including appellations of origin, It provides protection against unfair competition.
It contains a non-exhaustive list of acts, which are to' be prohibited. It does not
provide far any special remedies against infringement.

1~.8.3 The 1891 Madrid Agreement on Indications of Source

The Madrid Agreement was the first multilateral agreement to' provide specific
rules far the repression of false and deceptive indications of source in addition to'
false indications. A deceptive indication of source can be the true name of the
20

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 place where the good originates from, but nevertheless confusing the purchaser Introduction to
Geographical Indications
in respect to the true origin and quality of the good.

Article 1(l) of the Madrid Agreement provides that:

"All goods bearing a false or deceptive indication by which one of the countries
to which this Agreement applies, or a place situated therein, is directly or indirectly
indicated as being the country or place of origin shall be seized on importation
into any of the said countries."
"
13.8.4 The 1958 Lisbon Agreement

The aim of the Lisbon Agreement for the Protection of Appellations of Origin
was to provide for the protection of appellations of origin, that is,

"The geographical name of a country, region, or locality,which serves to designate

a product originating therein, the quality and characteristics of which are due
exclusively or essentially to the geographic environment, including natural and
.
,
human factors".

The Lisbon Agreement provided a proper definition of appellation of origin and

extended protection to:

"any usurpation or imitation, even if the true origin of the product is indicated
or if the appellation is used in translated form or accompanied by terms such as
"kind", "type :', "make", "imitation" or the like".

The LisbonAgreement goes further, stating that the geographical name designates
a product, whose quality and characteristics are exclusively or essentially related
to the geographical environment, including natural or human factors. Appellations
of Origin must contain the name of a country, region or locality. This definition
constitutes a higher threshold than for indications of source and narrows the
range of products that are eligiblefor this classification". One of the requirements,
as per the Lisbon Agreement for Protection of Appellation of Origin, is that, that
appellation of origin has to be protected in its country of origin and it is also to
be registered in the international register. Countries are free to adopt their own
system,for designating appellations, either by judicial or administrative decision,
or both. Once registered, an appellation of origin is protected in other member
states. At present, there are 25 signatories ofthe Lisbon Agreement.

13.8.5 The 1891 Madrid Agreement

In some countries, geographical indications are protected thorough trademarks,
as collective marks, certification marks or guarantee marks which are of relevance
to the protection of GIs, as it can also serve as a means of protection of GIs
internationally through the Madrid system for the International Registration of
Marks. The Madrid .system comprises two treaties: the Madrid Agreement
Concerning the International Registration of Marks, and the Protocol Relating
to the Madrid Agreement of1989. The Madrid system of international registration
of marks is applicable among the countries party tothe Madrid Agreement or the
Madrid Protocol. This system gives a trademark owner the possibility of having
his mark protected in several countries by filing one application in a single
Trademark Office..
21

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 Geographical Indications
13.9 WTO AND tRIPS
The TRIPS Agreement provides the basic framework for protecting all GIs. It
specifies the minimum standards of required protection, but leaves members
free to determine the appropriate methods of implementing its provisions. WTO
members are obliged to provide the legal means for interested parties to protect
GI's. The required legal means are not clarified in the Agreement, creating the
problem of multiple systems, and the opportunity for members to explore new
mechanisms. A specific Section of Trade- Related Aspects of Intellectual Property
"
Rights (TRIPS) deals with geographical indications. It is the first multilateral
treaty which contains a separate section on geographical indications. The
Agreement also provided a dispute settlement mechanism, periodic reviews and
a provision for subsequent negotiations. The TRIPS Agreement incorporated a
number of provisions from the Paris Convention and the Lisbon Agreement.
Under the TRIPS Agreement, GI's are subject to the same general principles
applied to other intellectual property rights in the Agreement, including national

·. treatment.

Definition - It provides definition of GIs in,the Article 22.

Basic information - Article 22 ofthe TRIPS defines GIs and lays down standards
of protection. Protects GIs against all uses that are misleading to the public or
which constitute an act of unfair competition is to be extended by all member
countries.

Additional protection for Wines and Spirits - Articles 23.1 and 24.2 provide
for additional protection for wines and spirits. Article 23 requires additional
protection for wines and spirits even when GIs used with expressions like "kind' ,
'type', 'style' and even when there is no risk of public being misled. Roquefort
cheese produced in Norway has protection only under Article 22. India is insisting
on extending the additional protection to other products in the same footing as
wines and spirits. The Indian law under Section 22(2) provides,

The Central Government may, if 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, for the purposes of such
protection.

The scope in Indian law is extended to other products also subject to the
notification in the official Gazette. The Government of India has already notified
the Additional Protection in respect of Wines and Spirits, to comply with TRIPS
Obligation. The copy of the notification is at annexure.

Article 23.4 deals with obligation to enter into negotiations for establishing a
multilateral register for wine GIs. Article 24.3and 24.9 outlines the exceptions
r to obligations for protecting GIs. Article 24 deals with .requirements for future
negotiations. . ;'

The TRIPS Agreementdefinition of GIs is broader than the one contained in the
Lisbon Agreement because it includes products that do not possess any qualities
specifically due to their origin. However, under the TRIPS Agreement,' not every
indication of origin can rise to the level of a GI. Only goods whose quality OR
22 reputation OR 'other characteristics' are linked to its geographical origin, and to

/
/
I
consumer's purchasing decisions can qualify, To be protected, goods must Introduction to
Geographical Indications
originate in the territory with which they are as sociated. Licensing the name of
the good to other growers or processors is therefore, not allowed. The TRIPS
Agreement does not require the use of a real geographical name. It could be a
symbol, such as Taj Mahal. Denominations that: are r.ot a place name, such .as
Basmati rice, can also be a general heading of g.eograp hical indications. Article
23 of the Agreement calls for negotiations to .e.stablish a multilateral" system of
notification and registration of Gl's'for wines eligible for protection in Member
Countries participating in the system.

Exemptions: There are two key exemptions under the TRIPS Agreement. These
exemptions apply regardless of whether the GI is: fix a food \ or whether it qualifies
for additional protection under the wines and sj -irits agreei nent. The first relates .
to terms that have become. generic. If a term has become 'customary' for the
product in the member's territory, then it is cons idered generic and is therefore
ineligible for GI protection. The corresponding p-rovision under Indian GI Act,
1999 is Section 9(t). ' I

Well known indications that originally had a ge ographic cH \ connection have

become generic in many WIO member countries. The TRIP~ , Agreement does
not require a member State to extend protection to a GI if it has become the
generic name for the product in that member's terri tory. The sec ond exception is
a grandfather clause, which protects trademarks a-cquired in goc id faith prior to
the registration of a GI or before the TRIPS Ag reement was l,igned. This is
essentially the 'first-in-time, first-in-right' princiole. The chapi er V- special
provisions relating to trademarks and prior users uru Ier Sections 25 and 26 ofthe
Indian GI Act deals with the above.

13.10 METHODS OF IMPLEMEN'fATilON

The TRIPS Agreement provides the basic framework: forprotecting; all GIs. It
specifies the minimum standards of required protect.ion, but leaves members
free to determine the appropriate methods of implementing its provis.ions.WI'O
members are obliged to provide the legal means for inte irested parties to protect
GI's. The required legal means are not clarified in the A .greement. Members use
many different mechanisms, including general business' laws, trndemark laws,
a~l.(lIorspecial protections for geographical indications.

13.10.1 Collective Marks and Certiflication lVlarks

Collective marks and certification marks provide a certain level of protection for
geographical indications. The registration of collective and certification marks
provides for the use of more than one person or enterprise. Articl e 7bis of the
Paris Convention deals with acceptance filing and protection. The ma in difference
between collective marks and certification mark s is that the former n nay be used
only by particular enterprises, members of the association which owns the
collective mark, whi1~ the latter may be used by anybodj 1 who compfies with the,
defined standards. The members ofthe collec1.ive body are eligible to use GI
generally. It can be an association or group 01~manufac turers or producers or
traders. It is owned by the collective body whic h grants it.s members the right to
use it. Certain quality standards have to be met by its members. Once a
a
geographical indication is registered as collective mark, the association that
23

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 Geographical Indications owns has the right to prohibit its used by others who are not members of the
association.

Self Assessment Question (Spend 6 minutes)

5) What are the major provisons regarding Geographical Indications in the

TRIPS Agreement?

"

13.10.2 Registration of Collective Marks in India

fI Special provisions have been made for registration of collective marks in Sections
61 to 68 of the Trademarks Act, 1999. "Collective mark" is defined to mean a
·. trade mark distinguishing the goods or services of members of an association of
persons (not being a partnership within the meaning of Indian Partnership Act,
1932 ) which is the proprietor ofthe mark fro~~hose of others" [Section 2( I)(g)].

To be registered, the collective mark must be capable of being represented

graphically and meet other requirements as are applicable to registration of trade
marks in general. The points to be noted in such cases are -

I) The collective mark is owned by an association of persons not being a

partnership.

2) The collective marks belong to a group and its use thereof is reserved for
, members of the group.

., 3) The association may not use itself the collective mark but it ensures
compliance of certain quality standards by its members who may use the
collective mark.

4) The primary function ofa collective mark is to indicate a trade connection

with the association or organization who is the proprietor ofthe mark.

13.10.3 Certification Marks

A Certification mark is not owned by a collective body, but by a certification
authority. The entity is body "competent to certify" the products concerned.· It
may be a governmental entity or a private association. It is not to be engaged in
production or the trade ofthe product concerned. The owner of the certification
mark must ensure that the goods bearing the certification mark possess the certified
qualities. The application for the registration of a certification mark is usually
accompanied by regulations which will govern its use. A certification mark may
normally be used by everybody whose products comply with the requirements.
The institution which owns the registered certification mark has the right to
prohibit others whose products do not comply with the standards. It ensures the
protection of the public against misleading practices within the geographical
area and preventing the illegal use of the mark.

24

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I
 A certification mark is not used by its owner, but by other persons. A certification Introduction to
Geographical Indications
mark does not indicate an individual commercial source nor distinguish the goods
or services of one person from those of another person, but rather informs
purchasers that the goods or services of a particular person possess certain
characteristics or meet certain qualifications' or standards, which may include in
particular a geographical origin which is regional in character.

13.10.4 Registration of Certification Marks

" In India, Trademarks Act 1999 (Sections 69 to 78) deals with registration of
certification trade mark. The purpose of a certification trademark is to show that
the goo,ds or services in respect ot-which the mark is used have been certified by
some competent person in respect of certain characteristics such as origin, mode
of manufacture, quality etc.

~ Section 70 of the Act makes it clear that the proprietor of a certification Trade
Mark should not himself carry on a trade in the goods of the kind certified or a
trade of the provision of services of the kind certified. Besides, the certifying
authority who may be an individual or a company or association of persons
should be competent to certify the goods in respect of origin, material, arid mode
of manufacture or performance of services, quality, accuracy or other
characteristics.

13.10.5 Unfair Competition Law

Article 10bis of the Paris Convention requires the provision of effective protection
against unfair competition. It is defined as "any act of competition contrary to
honest p~ctices in industrial or commercial matters."

In India under Sections 103, 104 and 105 of the Trademarks Act, 1999 unfair
competition by applying false trade mark and trade description is a criminal
offence. Under Section 28 of the Trademarks Act, 1999 civil action for
infringement of trade mark can be taken to stop unfair competition.

13.10.6 Administrative Regulation

Administrative regulation of product may include labelling and food safety
standards which represents another means of ensuring fair trade and consumer
protection. An administrative mechanism can also aim at preventing misleading
use of geographical indications on products. It is the practice that when such
misleading use occurs despite the administrative procedures, usually criminal
sanctions will apply.

Self Assessment Question (Spend 6 minutes)

6) What is Certification Trademark and what are its use as a means of

protection of geographical indication?

..............................................................................•...................................

25

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 Geographical Indications
13.10.7 European Regulations
European countries have a long tradition in the protection of geographical
indications. It includes a variety of product classes, such as cheeses, meat-based
products, fresh meat and offal, products of animal origin such aseggs, honey,
milk products excluding butter, oils and fats, fruits, vegetable and cereals, Beer,
other drinks, 'bread, pastry, cakes, other confectionary items such as biscuits,
dried and processed vegetables and legumes.

The European Commission established a set ofregulations related to agribusiness

"
products other than wines and spirits, with the aim of:
• 'Encouraging the divers,ification of agriculture production
• Promoting characteristic products
• Improving farmers revenues
fI
• Keeping the rural population in the zone
• Providing the consumers with clear genuine information

This Community Regulation No. 2081192 was replaced by Council Regulation

(EC) No 510/2006 of 20 March 2006' on the (Protected designation of
Origin(PDO) and Protected Geographical Indication(PGI)of agricultural
products and foodstuffs (OJ L93,31.3.2006)] and Council Regulation (EC) No
509/2006 of 20 March 2006 on the protection of geographical indications and
designations of origin for agricultural products and foodstuffs as traditional
specialties guaranteed (OJ L93, 31.3.2006). This replaces Regulation (ECE) No
2082/1992.

Based on precedents from 1992, in 2006 the EU Council adopted innovative

regulations on protected geographical indications .(PGI) and protected
designations of origin (PDO); in addition, they recognized traditional specialties
guaranteed (TSG) in a separate regulation.
In respect of a product, the following are the possible identifications:
• The protected Designation of Origin
• The Protected Geographical Indication
• Traditional specialties guaranteed

R.G.L Indi
Fig. 13.2

Protected designation of origin (PDO). This means 'the name of a region, a

specific place or, in exceptional cases, a country, used to describe an agricultural
product or a foodstuff originating in that particular geographic environment
with its inherent natural and human factors; and the production, processing
26 - and preparation of which take place in the defined geographical area'.

I I
 . Protected geographical indication (PGI). This means the name of a region, a Introduction to
Geographical Indications
specific place or, in exceptional cases, a country, used to describe an agricultural
product or a foodstuff originating in that particular geographic environment with
its inherent natural and human factors; As opposed to the PDO, the transformation
and!or elaboration processes are not necessarily carried out within the geographical
area.

Traditional Specialty Guaranteed (TSG)

For a name to be registered under the TSG provisions, the.product must have
.
"
features that distinguish it from other products. First, it must be traditional and
have a specific character and it must be traditional. It has features which .
distinguish the foodstuff of the same category.

The Traditional Specialty Guaranteed (TSG) logo is used for products with
distinctive features which either have traditional ingredients or are made using
fI
traditional methods. Their 'specific' character refers to the feature or set offeatures
which distinguish them clearly from other similar products or food stuffs
.
, belonging to the same category.
PDO example; Beaufort

Fig. 13.3

I ,

Fig.B.4
27

/ I
 Geognphicallndications A.P.D.O involves
• A relationship between the product and its origin, marked by many specially
established natural and human factors. The product cannot be reproduced
outside its area of origin,
• Production, processing and preparation phrases that are carried out in the
same geographical area in which the natural and human factors are located.

A.P.GI. involves

..
'

.
,

Fig.13.5

• A relationship between the product and its origin that is not as strong but is
still sufficient to give a certain reputation,

• A geographical area in which only certain phases of production, processing

and preparation must take place.

PGI example

Fig. 13.6: Scotch Lamb the region.

28

/
 Description: Introduction to
Geographical Indications
Theproduct is derivedfrom lambs born, reared throughout their lives, slaughtered
and dressed in the designated geographical area. The animals will have been
produc-ed and slaughtered in accordance with quality assurance schemes
accredited to European Standard EN 45011 (ISO Guide 65) and having.the same
standards, assessments and assessment frequencies as those set by the applicant.
The geographical link is deeper for PDOs than for PGIs. Explanation of the link
between the product and the Geographical area is the most important element of
the product specification in the case ofPDOs and PGIs as it must demonstrate
why a product is associated with one particular area and not another. The
Colombian coffee Cafe de Colombia is the first non European PDO, which was
recognizedin 2007 and followed by others products.
P,
13.11 SUMMARY
fI

The phrase 'Geographical Indications' (GIs) was used for the first time in an
international instrument in the Agreement on Trade RelatedAspects of Intellectual
Property Rights (TRIPS Agreement), although the concept of protection of
geographical indications was within the scope of the Paris Convention on. the
Protection of Industrial Property of 1883. Prior to that, the expressions
'Appellations of Origin' and 'Protected Designations of Origin' were in use. In
France, as early as 1935, the appellations d'origine conrolle (AOC) was
established to protect designations of origin of products with special characteristics
originating from, particular regions. An agency named Institute national
de 'origine etde la qualite (INAO) was set up in Paris to administer AOC. In
1992, Europe established system for protection of Protected Designations of
Origin (PDC) and Protected Geographical Indications (PGI). With the TRIPS
Agreement in 1994, geographical indications found a proper place among the
intellectual property rights. -:

In the case of developing countries, protection of geographical indications as an

intellectual property right was a new concept. Some developing countries and
some developed countries followed the route of trademark law for protecting
geographical indications.

The World Intellectual Property Organisation (WIPO) administers various treaties

relating to geographical indications also like other intellectual property right
treaties.

The protection of geographical indications is a consumer friendly act in that they

are assured of the genuineness of the product they are buying. For example the
term 'Darjeeling tea' can be used only on the tea produced in Darjeeling.

India, has apart from Darjeeling tea, a number of products from various parts of
the country, whichare indicated by terms indicative of their place of origin, such
as Basmati rice, Feni, Tirunelveli halwa, Banarasi saree and so on.

Earlier in India, products with geographical indications such as Scotch Whisky

got protection through the route oftrade mark and passing off. But such protection
had its own limitations. Therefore, India decided to go for a sui generis legislation.
Accordingly, the Geographical Indications of Goods (Registration and Protection)
Act was promulgated in 1999. This was followed by the Geographical Indications
29

/
I
 ,
Geographical Indications of Goods (Registration and Protection) Rules, 2002. The Act and the Rules were
brought into force with ~ffect from 15 September 2003.

A Geographical Indications Registry was set up in Chennai in 2003 to register

the geographical indications. The office is under the Controller General of Patents,
Designs and Trade Marks, who is also the Registrar of Geographical Indications.
The office has all India jurisdiction,

Since the establishment of the Registry, 178 geographical indications were

registered upto 15 September, 2012.
.
"

A Geographical Indication points to the specific place of origin of the product. It

also means that the goods have certain special characteristics or reputation which
is attributable to that place of origin.

A trademark is a distinctive mark for the products of a particular concern. It,

• except the certification trademark, does not have any relation to quality of the
product.

Registration of GI confers legal protection to the expression, prevents

unauthorised use ofthe term, boosts exp~rts and brings in economic prosperity
to the producers.

Sometimes similar sounding words are used for designating two different
products. They are called homonymous geographical indications. Example is
Rioja wine produced in Argentina and Spain.

The Paris Convention for the Protection ofIndustrial Property was the first treaty
which provided for protection of indications of source or appellations of origin.
. This was followed by the 1891 Madrid Agreement on Indications of Source
which provided specific rules for the repression offalse and deceptive indications
of source.

The 1958 Lisbon Agreement for the Protection of Appellations of Origin defined
the phrase and extended the protection to prevent any usurpation or imitation,
even if the true origin of the product is indication. Terms such as kind, type,
make, etc. were also not to be used in the case of protected appellations.

Some countries protect geographical indications as trademarks under the Madrid

System.

It was the TRIPS Agreement which provided for comprehensive protection for
geographical indications. It, apart from providing for general protection for all
products bearing geographical indications, also provided for higher level of
protection for wines and spirits. That means, ill the case of wines and spirits, the
terms such as kind, type, style, etc. cannot be used.

While the TRIPS Agreement provides for protection of geographical indications,

r
it does not provide the special legal means that should be used to protect the
same. This leaves the countries free to decide on the means. Some countries use
the route oftrademark, such as collective trademarks and certification trademarks,
to extend protectionto geographical indications.

Indian Trademarks Act also provide for registration of collective marks and .
certification trade marks. These are to be done by organisations or entities who
are not to use them.
30

I I
 Unfair competition law is another law that is used in the protection of geographical Introduction to
Geographical Indications
indications. Sections 103-105 of the Trademarks Act oflndia provide for this.

Europe has a long tradition of protection of geographical indications. European

Cominission has promulgated several regulations relating 'to protection of
geographical indications both in agricultural and non-agricultural sectors. The
regulations cover protected designations of origin (PDO) such as Beaufort,
protected geographical indications such as Scotch Lamb, ana traditional speciality
guaranteed products. Cafe de Colombia is the first non European PDO which
., was recognised in 2007.

13.12 TERMINAL QUESTIONS

1) How were Geographical Indications protected in India prior to the enactment
ofthe Geographical Indications of Goods (Registration and Protection) Act,
1999?
2) As per the TRIPS Agreement, what are the requirements for a Geographical
Indication?
3) What are the differences between a Geographical Indication and a Trade
mark? .
4) Whatis a homonymous geographical indication?
5) Write a paragraph on additional protection for geographical indications of
wines and spirits.•

13.13 ANSWERS AND HINTS

Self Assessment Questions
1) Readto Sub-section 13.4.7
2) Read to Sub-section 13.5.1
3) Read to Sub-section 13.6.1
4) Read to Section 13.7
5) Read to Section 13.9
6) Read to Sub-section 13.10.3
Terminal Questions
1) Read to Sub-section 13.4.5
2) Read to Section 13.5
..••...
3) Read to Section 13.6.1
4) Read to Section 13.7
1) Read to Section 13.9

31

I I
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PUBLISHED BY AtmlORITY
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F1UDAY, OCTOBER
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lfI~t:;,q•. -auftr 1tmN ML~TRV OFCOMMERcEANO TNDVSTRV

(~ ~~) (Department or bJdUtfrl.1 Policy and Promotion)

",,~.l ~,2010
,i NOTIF1CATION
few Delhi .•the 1st October, 20)0
~.31f. 240'(3'f).-~ ~ ''ifilif!·oft:t", ~ S.Q. 240l(1).-Whereas sub-seeUon (2) of
($I'l(;fi<QI~~) ~f1fqq, 1999 lit tmT22""-n-\tm 'Section22 ofGeograpmcal lndicadon of'Oood:s~
and Protection) Act, 1999 provides fondditional protection
(2) -q~~atl~~a1l1fft M~ ~'lt~~-
for certain goods or class or classes of goods as notified;
~tf!";jd ~~qft~t;
And whereas, tbeQmtral Govemmentis satisfted that
3lrt ~, ~ ~ ~ t % 1!fl1I3U ifiT 4·~r{li<ti
a notification extending additional JjrOteCtion asprovidcd in
~ ( ci3i)q:;(OI ,am tiwttT) ~, 1999 lft'\ tmT 22 ~ sub-section (3) of Section 22 ofl:he Geograpbicallndication
0tJ-'W (3) .q~"Ttt ~'lt ~ at~fte ~'81ll of Goods (Reglstlation and Protection) Act. 1999 is
~~~~~~t; necC$Sl.f')'~
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ifiT~~1"t ~~1tf ~ tlf.l~~3tr_~ ofOoods (R.egistration .,.d Proteetion) Act, 1999. the list of
thogoodsspecifiedbltbtSchedld.givenbelow~extended
ltr~ •• ~o5t _22,.rr~-'1m (3)~~ ~
additional proteetion under sub-section (3) of Section 22 of
1R~ lin1l ft5qy ~ tI the said Act.
~

StrWNo. List oftbe goods

1.

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V.BHASKAR... Jt.Secy.

hil\~ by the MIftIJe'. 00\ mm.mt or ("di. Press, Rln.

Ro.1i1. MJorapuri, New Dcfhi.Il0064
and Published by die ConlNl1er or Publlc.liQns, Oelhi-lIOO$4

32

/ I
 UNIT 14 INDIAN LAW ON
GEOGRAPHICAL INDICATIONS

Structure
14.1 Introduction
14.2 Objectives
..
' 14.3 Aim and Objectives of GI Law
14.4 Some Definitions
14.5, How GI Act Operates In India?
., 14.6 Salient Features of the Gl Act
14.7 Criteria for Registration
fI 14.7.1 What cannot be Registered as GI?
I
14.8 Procedure for Registration
14.8.1 Products Form
14.8.2 Agricultural Products
14.8.3 Livestock-Based Products
14.8.4 Fish-Based Products
·14.8.5 Natural Products
14.8,6 Manufactured Products
14.8.7 Industrial Goods: Wet Grinders
14.9 'Administration of the Act
14.9.1 Who can Register?
14.9.2 Product Specifications
14.9.3· Description of the Product
. 14.9.4 Methods of Production
14.9.5 Uniqueness
14.10 Key Points during Examination of Application
14.11 Registration of 'Authorized User'
14.12 Criteria for Protection of GI Goods
14.12.1 Element of 'Originating'
14.12.2 Quality Determination
14.12.3 Reputation
14.13 Illustrations of Gl Applications
14.14 Remedies for Violations
14.15 Conclusion
14.16 Summary
14.17 Terminal Questions
14.18 Answers and Hints
14.19 References

14.1 INTRODUCTION
Association of place name to quality or uniqueness of a product is an ancient
practice. The following are some examples of this: i) Calico (white or unbleached
cotton cloth from Calicut, 16th) ii) Malacca (brown cane used as walking stick
33

/
 Geographical Indications from Malacca, 19th) iii) India rubber (natural rubber) iv) Muslin (light weight
cotton cloth from Mosul, Iraq). However, laws controlling association of place
names to products are of recent origin. Europe got into the tradition of legal
protection for such names (appellations of origin) early. Appellation d'origine
controlee of France, from the early 20th century (1930), protects certain geographic
words by designated producers in designated producing regions. E.g. Bordeaux
wines. This is based on a nexus of quality with the land.

India has approximately 17 per cent of the world population. It has only 0.6 per
"
cent of the world trade and 1.4 per cent ofthe world GDP. 99.4 per cent of world
market is outside of India. We must consider an effective and efficient plan to
become a resource base for the world. Geographical Indication is, no doubt, one
of the timely options. It is well known from our existing understanding that no
amount of money or technology can ever replace the presence of effective
human skill. Indian GI Law is peculiar and offer protection to natural Goods
also. India has a variety of natural products and resources such as diamonds in
Madhya Pradesh (Chattarpur, Panna, Satna, etc), Chhattisgarh (Bastar; Jaspur,
etc) quality gold in Kamataka, Tin in Chhattisgarh good quality iron ore, classical
building stone, marble (Rajasthan and Gujarat), Kota stone (Rajasthan), granite
(Madhya Pradesh, Rajasthan, South India), Dholpur Red stone, Mandi Salt (H.P.),
Rock Phosphate (Rajasthan) and many more. These
and traitional manufacturing practices have given rise
to place oriented reputations for many products such
as Diamond cutting techniques, Surat.

• Salem cotton,
• Lucknow chikan works,
• Miiradabad.utensils and decoration material, and
• NE region unique bamboo and craft work.
..
Fig. 14.1
Similarly, there are a number ofhandicrafts and handlooms in different parts of
the country such as Chanderi Sari in Madhya Pradesh, Pochampally Ikat inAndhra .
Pradesh, Kanjeevaram silk in Tamil Nadu. India also has food items such as
Bengali rasgulla and Bikeneri bhujia.

Fig. 14.2
34

I ,I
In order to get intellectual property protection for such products which carry a Indian Law on
Geographical Indications
geographical indication tag, the Parliament enacted the Geographical Indications
of Goods (Registration and Protection) Act, 1999. It seeks to provide for the
registration & better protection ofGI relating to Goods. The Act is administered
by the Controller General of Patents, Designs and Trademarks, who is the
Registrar of Geographical Indications. The Geographical Indications Registry is
located at Chennai.

14.2 OBJECTIVES
After reading this unit, you should ~e able to:

• explain the aim and objectives of the GI Act;

• explain the way of operation of the Act in India;
• describe the criteria for registration;
• explain the procedure of registration;
• describe the administration of the Act; and
• explain the remedies for the violation of GI Act.

14.3 AIM AND OBJECTIVES OF GI LAW

Fig. 14.3

The broad objectives of the Geographical Indications of Goods (Registration

and Prtection) Act, 1999 are:

• To give statutory cover

• Extend minimum stantard of -protection as per the Agreement on Trade
Related aspects ofIntellectual Property Rights (TRIPS Agreement)

• Prevent consumers from being misled or deceived

• Make available only authentic products in the market

35

/
 Geographical Indications • Promote economic prosperity of producers and manufacturers of the GI
products

• Standardize the quality parameters, and ensure high value/high quality

agricultural and manufactured goods

• Promote regional prosperity

• Spread prosperity among supply chain

• Promote registration of quality neutral GI

"

• Encourage private inspection structure' to verify production standards

including origin, quality, and hygiene and encourage quality management
discipline.

The Statement of Objects and Reasons for enactment of the law states Tat at
fI present there is no specific law governing geographical indications of goods in
the country which could adequately protect the interests of producers of such
.. It
goods. Exclusion of unauthorised persons from misusing geographical indications
would serve to protect consumers from deception, add to the economic prosperity
of the producers of such goods and also promote goods bearing Indian
geographical indications in the export market.

14.4 SOME DEFINITIONS

Some of the important definitions used in the Act will clarify the objects, purpose
and coverage of the legislations as well as its implementation structure

• GOODS: Any agricultural, natural or manufactured goods or any goods of

handicraft or of industry and includes foodstuff.

• The manufactured goods are those which are either produced or processed
or prepared or packaged in that territory / region / locality.

• INDICATION includes any name, geographical or figurative representation

originating from a definite geographical territory. It should have a GIVEN
QUALITY or REPUTATION or OTHER CHARACTERISTICS
essentially attributable to its Geographical Origin.

• NAME should indicate the territory / region / locality of the origin of goods
& its abbreviation. PRODUCER, in relation to goods, means any person,
who,
a) If such goods are agricultural goods, produces the goods and includes
the person who processes or packages such goods;
b) If such goods are natural goods, exploits the goods;
c) If such goods are handicraft or industrial goods, makes or manufactures
r the goods, and includes any person who trades or deals in such
production, exploitation, making or manufacturing, as the case may be
of the goods.
• REGISTRAR means the Register of Geographical Indications referred to
in Section 6;

• REGISTERED (with its grammatical variations) means registered under

36 this Act,

/
 • REGISTERED PROPRIETOR, in relation to a geographical indication, Indian Law on
Geographical Indications
means any association of persons or of producers or any organization for
the time being entered in the register as proprietor of the geographical
indication;

• REGISTRAR means the Registrar of Geographical Indications referred to

" in Section 3;

• TRIBUNAL means the Registrar or, as the case may be, the Appellate Board
"
before which the proceeding concerned is pending,

14.5 HOW GI ACT ()PERATES IN INDIA?

The Act provides for a Register of Geographical Indication to be maintained by
the Geographical Indications Registry. This Register is divided into two parts -
f! Part A and Part B. Part A of the register contains details of distinguishing
I
characteristics of the good and of the registered proprietor which would be an
association of persons who are producers or a body representing interest of such
producers like the Tea Board, Coffee Board, Spice Board, etc. It is possible for
such organizations to take on board all the producers in respect of a particular
geographical indication by collective reference in the application. Part B of the
register contains particulars of 'authorized users' ofGI such as those producers
(including traders and dealers) who have not been included in the original
application for registration. The Indian legislation seeks to establish two purposes.
First it fulfils India's obligation under TRIPS agreement by providing public
record of the registered GI with defined characteristics. This is done through
Part A of the Register. The second purpose, is to ensure an orderly marketing of
products bearing a registered GI to prevent various forms of commercial abuses.
This is done through Part B of the Register.

The intellectual property inherent in a geographical indication is not an individual

property but, a property belonging to a group or community bound by territorial
limits. Some GI products have limited number of producers like in the case of
Darjeeling Tea which is cultivated in only 87 tea gardensof Darjeeling region.
But there are large number of GI products having thousands of producers such
as Bikaneri-Bhujia, Basmati Rice, Assam Tea, etc. It is not possible for all of
them to join together and come forward to file GI applications The subordinate
legislation [Rule 32( 1)(5)] accordingly provides that the content of an application
which requires a Statement to be furnished containing particulars of the producers
may make a collective reference to all the producers of the goods in respect to
which the application is made. This will assure that no bona fide producer in the
region, locality, or territory is left out in the lurch. Thus, even where no such
reference is made in the original application, all the left out producers can be
registered as authorised users in Part B through an application subsequently.One
of the unique concepts under the Indian statute is the provision relating to
Registered Proprietor wh'ich is defined under Section 2 (1) (n) as follows:

• "Registered Proprietor, in relation to a geographical indication, means any

association of persons or of producers or any -organization for the time
being entered in the register as proprietor of the geographical indications."

The intellectual property inherent in a geographical indication is not an individual

property but a property belonging to a group or community bound by territorial
37

I
 Geographical Indications limits. However, given the socio-economic condition in the country, there are a
large number of Indian GIs where the, producers or manufactures have not yet
been able to join together-and form into an association. Many producers of goods
bearing GI in India are generally resource poor and lack the legal awareness to
encash on the potential goldmine they are sitting on. It is for this reason that
Section I of the Act provides that any association of person or producers or other
. organization or authority established by or under any law for the time being in
force representing the interest of the producers of the goods concerned who are
desirous of registering the GI in relation to such goods can apply in writing to
the Registrar in the prescribed form. The registered proprietor only gives the
.'. initialmomentum of securing registration ofthe relevant GI. The Act also provides
that once the GI is registered, an infringement action can be initiated both by the
registered proprietor and by the registered authorized users whose names have
been entered in Part B of the GI Register.

14.6 SALIENT FEATURES OF THE ACT

,. • Wide definition of GI
• Registration Procedure
s:
• Authorised user concept
• Collective right concept
• Penalties for infringement and offences
• Higher level of protection for notified goods
• Prohibition of assignment, etc.
• Prohibition of registration of GI as a trademark
• Protection for foreign GIs
• Appellate Board
The Act is divided in to 9 chapters, containing 87 sections. Pursuant to Section 3
of the Act, the Controller General of Patents, Design and Trade Marks has been
appointed as the Registrar of GIs who will discharge his function through his
officers as appointed the therein. At the moment, the GI Registry has been
established in Chennai with all India jurisdiction. A Register of GIs will also be
kept at the GI registry under the superintendence and control of the Registrar of
GIs (Section 6) in which details of all registered GIs with names, addresses and
description 0 f the proprietors, the names, addresses and description of authorized
users and such other details would be entered. This register is divided in to two
parts namely; part A in which details as to the registration of the GIs has to be
entered and part B will contain particulars to the registration of authorized users
(Section 7).

r
The application for registration will have to indicate precisely the goods to which
the GI shall apply. The goods are divided in to 34 classes and are mentioned in
the Fourth Schedule to the Geographical Indications of Goods (Registration and
Protection) Rules, 2002 (hereinafter 'the Rules'). It should also be noted that if
the goods for which registration has been applied for fall in more than one class
and for which only one application fee has been paid, the applicant may have
either to restrict the specification of goods to include in one class or pay 'the
38

"

/
 appropriate additional class fee. The decision of the Registrar as to which class Indian Law on
Geographical Indications
any goods fall in to shall be [mal. It should be further noted that like the
classification of goods under the Trade Marks Act 1999, the classification as
given under the Act in the Fourth Schedule, is based on the international
classification system established under the Nice Agreement of June l S", 1957.

Self Assessment Question (Spend 5 minutes)

1) Explain the salient features of GI Act.

.,

.,

14.7 CRITERIAFORREGISTRATION
The criteria for Registration the GI must fall within the scope ofthe definition of
the expression 'geographical indication'. In addition, such a GI should not fall
within the purview of prohibitions as contained in Section 9 and they are:

a) the use of which would be likely to deceive or cause confusion; or

b) the use of which would be contrary to any law for the time being in force; or

c) which comprises or contains scandalous or obscene matter; or

d) which comprises or contains any matter likely to hurt the religious

susceptibilities of any class or section of the citizens of India: .or

e) which would otherwise be disentitled to protection in a court; or

f) which are determmes to generic names or indications of goods and are,

. therefore, not or ceases to be protected in their country of origin, or which
have fallen to disuse in that country; or

g) 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.

14.7.1 What cannot be Registered as GI?

.-
A) The use of which would be likely to deceive or cause confusion
Deception or confusion need not be actual. It may be probable. Protection
of public interest is the primary consideration before the Registrar

What the Registrar has to see is whether looking at the circumstances of the
case a particular GI is likely to deceive or cause confusion (see National
Sewing Thread Company Ltd. v. James Chadwick & Co. Ltd and others
AIR 1953 SC 357, pg 364). The court must be satisfied that there is a real
tangible danger of confusion if the mark, which is sought to be registered, is
39

/ I
 Geographical Indications put on the Register (WilliamBailley (Burmingham Ltd's Application (1935)
52 RPC l36, pg.l53). However, the Registrar ought not to refuse to register
a mark as calculated to .deceive where there is no evidence, intrinsic or
extrinsic, of a design to pass off goods as those of another where the marks
are distinct, and where registration would be permitted, but for the mere
possibility of confusion by inexperienced people (Reddaway & Co. Ltd. 's
Application (1925) 42 RPC 397, Pg. 401: Ch. 393.

B) The use of which would be contrary to any law for the time being in
force
"
The Trademarks Act, 1999 prohibits registration of marks that are prohibited
under the Emblems and Names (prevention of Improper Use) Act, 1950,
the law relating to copyright and the common law tort of passing-off.
Similarly, in case of GIs, registration of such GIs is prohibited under these
" laws with the Trademarks Act, 1999 in addition.

C) Which comprises or contains scandalous or obscene matter

Whether a GI that has been applied for registration is scandalous or obscene
has to be decided by the tribunal on the facts and circumstances of each
case. The onus is on the applicant to show that the GI applied for registration
is not scandalous or obscene.

D) Which comprises or contains any matter likely to hurt the religious

susceptibilities of any class or section of the citizens of India
In case of GIs, each case has to be seen in its own peculiar facts and
circumstances. Use of pictures of Gods, Goddesses and other religious heads
as trademarks or GIs, per se is not objectionable. However, some sign or
word or particular usage may hurt the religious and' moral susceptibilities
and hence such trademark or GI falls under his prohibition.

For example, the use of Hindu Gods in respect of beef or meat products or
such use of Muslim saints for pork products would offend the religious
susceptibilities of the respective sections ofpublic and therefore registration
of such GIs would fall under the purview of Section 9 (d). Registration of
the mark 'HALLELUJAH' in respect of articles of clothing for women was
refused as offending against morality and religious susceptibilities of certain
people (Hallelujah TM (1976)RPC 605).

E) Which would otherwise be disentitled to protection in a court

The established principle of law is that the protection is not to be extended
"to persons whose case is not founded in truth" (Eno v Dunn 7 RPC 311,
pg.3J8).Apart from equity as mentioned earlier a GI will not be registered
if it violates laws relating to copyright, tort of passing off, Emblems and
names and other laws also depending upon the circumstances and merits of
the case.

F) Which are determined to generic names or indications of goods and

are, therefore, not or ceases to be protected in their country of origin,
or which have fallen in to disuse in that country,
The sub clause, i.e. Section 9 (f) has to be read in conjunction with
Explanations 1 and 2 as given in the Act. According to Explanation 1 'generic
40

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 names or indications' means the name of goods which, although relates to Indian Law on
Geographical Indications
the place or the region where the goods were originally produced or
manufactured, has lost its original meaning and has become the common
name of such goods and serves as a designation for or indication of the
kind, nature, type or other property or characteristics of the goods. In other
words, the name has ceased to be distinctive of a particular source and
become common to the trade. This provision corresponds to Article 24(9)
of the TRIPS Agreement, which declares "there shall be no obligation under
this agreement to protect Gls which are not or cease to be protected in their

.. country of origin, or which have fallen in to disuse in that country". Article

6 of the Lisbon Agreement clearly states that an appellation of origin will
not be deemed to have become generic as long as the same is protected ill
its country of origin. .
.,
According to Explanation 2 which states that in determining whether the
name has become generic, account shall be taken of all factors including
the existing situation in the region or place in which the name originates
and the area of consumption of the goods. It need not be mentioned that the
value ofa GI dirniriishes if the product has no longer the exclusive meaning
and its origin loses relevance. The GI no longer indicatesto the market
place the source of the product and instead it is considered the common
general name of the product. Intellectual properties are valuable assets and
owners make great efforts to prevent their GIs from becoming generic.
Example can be given from India, where the Indian Government has to
fight a legal battle to protect its Gls.

G) Which, although literally true as 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
Geographical indication, which falsely represents to the persons that the
goods originate in a locality other than of its true origin, though literally
true as to the locality of origin, cannot be registered. This provision intends
preventing deception and falsification of Gls. Falsity of representation,
in absence of any fraud, does not depend upon the meaning which the maker
intended or believed it to have or upon the construction which the court
itself puts upon it, but upon the way in which it could be reasonably
understood by the person to whom it is addressed. In Parker Knoll Ltd v.
Knoll International Ltd. [1962] RPC 265, it was observed, "It is literally
truthful for the appellants to say that their furniture is manufactured by Knoll
International, but if that statement conveys to a member of the public that
the furniture is manufactured by Parker-Knoll, it is a false representation".

14.8 PROCEDUREFORREGISTRATION
The procedure for registration of a GI is prescribed in Chapter III of the Act read
with Chapter 11of the Rules. Section 11 of the Act deals with application for
registration, its content, filling procedure, acceptance or refusal. It should be
noted that unlike an application for registration of a trade mark where an
application may be made by any person, an application for registration of a GI
pursuant to Section 11(1) can be made only by an "association of persons or
producers or any organization or authority established by or under any law for
41

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Geographical Indications the time being in force representing the interests of the producers of the concerned
goods, who are desirous of registering a GI in relation to such goods." Bodies
. like the Tea Board, Coffee Board, and the Spices Board are some examples of
such associations or organizations. The GI Act covers a wide area. The Indian
situation and climatic conditions.provide opportunity for 'n' number of products.
The various POTENTIALS FOR GI REGISTRATION are as under:

14.8.1 Products Form

Agriculture
Horticulture / Aromatic & Medicinal Plants / Bio-Fuels - Plants for
Renewable Source of Energy
Animal Husbandry (Dairy, Meat, Poultry, Wool, Hides & Skin, Ornamental
Birds)
Aquaculture / Ornamental Fish / Seaweed / Salt / Pearl / Shell
Sericulture, Lac Culture, Apiculture
Agro-Forestry / Social Forestry / Urban Forestry
Wines & Spirits
Cottage Industry, Handicrafts, Textiles
Natural Products, Food Products, Manufactured Products, etc.

14.8.2 Agricultural Products

a) Crop-Based Products

1) FOOD GRAINS (Cereals, Millets, Pulses)

2) EDIBLE & NON-EDIBLE OILS (Annuals and Trees)
3) FRUITS.(Annuals and Trees)
I'
4) VEGETABLES
5) SUGARS
6) SPICES (Annuals and Trees)
7) BEVERAGES (Coffee, Tea, Cacao, etc.)
8) WINES & SPIRITS (
9) NUTS (Cashewnut, Walnut, Pistanut)
10) FLOWERS (Commercial, Ornamental)
11) HERBAL MEDICINES (Cultivated)
12) FIBRES: Cotton,
13) Silk- Mulberry, Eri, Muga, Tropical Tassar, Oak Tassar
,. 14) Jute, Wool, Linen, Ramie, Agave, Coir, Kapok, Pandanus, Banana;
Gongra, etc.
15) GUMS AND RESINS
16) MAT GRASSES
. 17) BIOFUELS \ .
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 Indian Law on
14.8.3 Livestock-Based Products Geographical Indications

• Milk Products (Cow, Buffalo, Goat, Yak, Camel, etc.)

• I}HOA BASED:-Bal mithai, Singori, Mathura Pera, Agra peda, Sandesh,

Dharwad Peda

• CHEESE BASED:-Chhena poda, Rasabalai, Rasagulla, Kheer Sagar

ChomChom, Lalmohan

• YOGURT BASED:-Bal misthti doi

"
• Poultry Products (Layers, Broilers; Ducks, Quails, Turkeys, Ewes, etc.)
• Sheep & Goat Products

• Meat Products
"
• Skins and Hides
fI
• Earthworm Proteins
.f
" • Food Products from Microbes

14.8.4 Fish-Based Products

• Fish / Prawn / Crab / Mussel/Oyster Products
(Inlandz fresh water, Marine, Estuarine, etc.)
• Ornamental Fishes
,. Seaweeds
• Pearls
• Sea Shell Products Fig. 14.4

Agro-Forestry Based Products:- Neem, Teak, Pongamia, Mahua, Bamboo,

Casuarina, Palmyra, Acacia, Ailanthus, Morinda, Eucalyptus, Pine, Asafoetida,
Camphor, etc.

14.8.5 Natural Products

a) Non-Timber Forest Products
• Wild medicinal plants and products

• Wild Horticultural Produces - Fruits, Greens, Spices, Essential Oils,

Shikakai, Soapnuts, Emulsions, etc.

• Edible and Medicinal Mushrooms

• Resins and Gums

• Rock Bee / Indian Bee / Little Bee / Dammer Bee Honey and Wax

• Lac Insect Dye / Cochineal Insect Dye

• Insects of Food and Medicinal Value

b) Ores and Minerals - White / Red / Yellow Kaolin

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 Geographical Indications c) Granites, Kadapa Stones, Marble Stones

"

.,
Fig.14.5

14.8.6 Manufactured Products

.. A) HANDLOOM TEXTILES: Cotton, Silk, Woolen and Jute Textiles;
Embroidary, Knitting, Shawl, Carpet,
I
B) HANDICRAFTS - Jewellery, Ornaments, Painting, Mats, Toys & Dolls, i
Wood, Bamboo, Cane, Leather, Clay, Plaster of Paris, Terracota, Metal, Sea j
Shell, P~1m,Coconut Shell, Coir, Horn, Musical Instruments, Bags, Effigy,
Mirror, Motifs, Pierced Silkworm Cocoon Garlands, Toys and Dolls, Paddy
Grain Garlands and Raths, etc.

C) HANDLOOMS AND HANDICRAFTS

• Textiles & Textile Goods, Waste Products, Embroidery, Furnishing, etc.
• Cane & Bamboo Products, Mats, etc.
• Brass & Bell Metal
• Pottery, Woodwork, Toys, Dolls, etc. ,

• Musical Instruments, Articles for Games, Stone Carving, etc.

D) FOOD PRODUCTS based on grains, fruits, tubers, vegetables, milk, meat, 1

fish; microbes, etc. 1

14.8.7 Industrial Goods: Wet Grinders

This is a classic example of recognizing a product mainly on the strength of
local reputation, in addition to other requirements as laid down by the Act. The
granite stone used in the manufacture of Coimbatore Wet Grinder is unique with
a hard mass. The wet grinder is used in the preparation of herbal medicine,
botanical pesticides and the idly / Dosa dough. There is no heat developed during
grinding because of the wet process. Again in spite of continuous grinding for
hours, the silicon content ofthe granite will not come offfrom the granite, which
is peculiar to the type of granite stone ofthe Coimbatore region.

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 Indian Law on
14.9 ADMINISTRATION OF THE ACT Geo,graphioaJ Indications

Pursuant to Section 11(2) read with Rule 32, an application for registration ofGl
has to be filed on form Gl -1 in triplicate along with 5 representations ofthe said
Gl and the official fees prescribed in the first schedule which is Rs.5000/- only.
The application should also contain a statement of case showing as to how the
concerned Gl serves to designate the good as originating from the concerned
territory ofthe country or region or locality in the country as the case may be, the
class of goods to which it relates, 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, particulars of the producers of the goods and other related
details. The rule further prescribes that the applicant has to file an affidavit with
the application clearly stating as to how the applicant claim to represent the
interest of the producers. Also, the application should clearly state the standards
or the industry standard as regards production, exploitation, making or
••
t manufacture 0 f the goods having specific quality, reputation or other characteristic
of such goods that is essentially attributable to its geographical origin, the
particular human skill involved, the uniqueness of the geographical environment
or other inherent characteristics associated with the Gl to which the application
relates, the name and address ofthe applicants and all other related details along
with specification, description and methods of production.

14.9.1 Who can Register?

Any association of persons or producers or any organization or authority
established by or under law representing the interest of producers of the concerned
goods can apply for registration.

How to Apply?
Application for registration ofa Gl should be in the prescribed form (GI-IA to
ID whichever is applicable) accompanied by the prescribed fee - Rs.5000/- per
class.

It must be made in triplicate along with three copies of a statement of case

accompanied by five copies of additional representations

Statement of Case

• Gl serves to designate the goods as originating from the concerned

Geographical Area, in respect of specific quality, reputation or other
characteristics
• Three certified copies of the map of the territory or region.
• Human skills involved or uniqueness ofthe Gl environment or other inherent
characteristics of the GI.
• Mechanism to ensure that the standards, quality, integrity, and consistency,
or other special characteristics are maintained by the producers.
• An affidavit as to how the applicant claims to represent the interest of the
concerned persons, producers, authority or organizations.

45

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 Geographical Indications Proof of Origin and Method of Production
• Brief description about the origin and the evolution of the GI and its
production method.

• Documentary proof Gazetteers & Authentic Texts

• Additional Representation

• Name and address of the applicant and Agent ifany.

"
• Specification and class of goods.

• Period of use.

., Signing of the Application

• In the case of Association by the Authorized Signatory

• In the case of Body Corporate / Organizations / Authority by the. Chief

.
,
executive, M.D, Secretary, or other Principal Officer.

• In the case of Partnership by at least one of the partners

Payment of Fees can be by
• Cash
• Money Order
• Bank Draft / Cheque
•
• Draft and Cheque shall be in favour of the Registrar of GI and payable at
Chennai

14.9.2 Product Specifications

The product specification is the key element in the designation of a product

name as it establishes the conditions to be observed by all parties thereafter.
Producers draw up their own specifications.A product specification has to contain
all the technical information necessary to describe the product. It must be
sufficiently detailed so as to allow any new producer in that region to 'start the
production of the sp.ecific product. It is the main evidence in support of an
application. The conditions in a specification are binding on producers of the
Registered GI and are the reference point for any inspections. As such it is the
determining factors in obtaining registration, and also in maintaining confidence
in the system.

The main elements of the specification are:

I) Name of the product

,. 11) Description of the agricultural product or foodstuff(including information

on raw materials and physical, chemical microbiological or taste
characteristics)

Ill) "
Evidence that the product originates in the relevant area.

IV) Definition of the geographical area.

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 V) _ Description of how tproduct is obtained, plus anyrelevant details on local Indian Law on
Geographical Indications
production, processing, packaging, etc.

VI) 'Details of the link between the product and the geographical area concerned

VII) Any other requirements as per GI law.'

14.9.3 Description of the Product

" The product description should cover:

• Physical attributes (shape, colour, weight, etc.)

• Chemical features (minimum fat content, maximum water content, etc)

• Microbiological information (e.g., any bacteria present)

fI

, • Biological details (race, variety, etc)

f'
• Organoleptic characteristics (taste, flavour, colour, odour, etc)

The description essentially establishes the ways in which a product is specific,

and details how it is to be differentiated from other products in the same category.
Specification of processing, packaging and presentation may also be important,
because methods of cutting, slicing grating or packaging may be essential in
maintaining the characteristics and value of the product.

14.9.4 Methods of Production

The description of the method of production must be sufficiently informative to
allow any producer within the region to produce the foodstuff concerned, if
desired.

The main requirements are for information on:

The method of obtaining the agricultural product or foodstuff

The authentic local method of production

Packaging (where relevant)

It should be noted that a single application can be made with respect to different
classes of goods though the applicants have to pay fees with respect to each such
class. The application can be filed in the office of GI registry within whose
territorial jurisdiction the place mentioned in the address of service in India as
disclosed in the application is situated. As mentioned above the GI registry has
been .established in Chennai with all India jurisdictions. On receipt of the
application tHeRegistrar shall cause the application to be examined as to whether
the said application meets the requirements of the law.

Self Assessment Question (Spend 8 (4x2) minutes)

2) Explain the following.

1) Product specification

2) Description

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 Geographical Indications
3) Method of Production

4) Uniqueness

...................................................................................................................

"
..~ " , ; .

"

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14.9.5 Uniqueness
Peculiar features that make the GI different from other similar goods, For example,
Kerala, has different climatic and soil condition leading to three different popular
varieties of rice (Navara, Matta and Pokkali) one has medicinal value and the
other a very good appetizer and provides strength and the last is grown in a
peculiar environment.

PALAKKADAN MATTA RICE

Specification:

• It is a coarse variety of rice with

bold grains and red pericarp. The
"Palakkadan matt a" is a unique
Fig. 14.6
cereal having high content of
nutrients and is indispensable for those who do hard physical work.

Description:
• The grain is grown on unique black cotton or regars soil, derived from rocks
r
rich in lime peculiar to Palakkad also in "Poonthalpadam"where the soil is
heavy, containing 60-80% of clay and silt and posses low permeability and
high water holding capacity.
• These soils, the humid weather ofPalakkad, easterly winds that blow through
the Palakkad gap, the rivers that flow from the Western Ghats, and the bright
sunshine determine the unique taste and quality of the Palakkadan Matta
Rice.
48

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 Uniqueness: Indian Law on
Geographical Indications

• The rice has got a unique taste. The coarse rice with red pericarp by itself
ensures high content of nutrients. "Par-boiling" of the rice further ensures
retention of nutritional value.

NAVARARICE

Specification:

"
• The "Navara Rice" is an indigenous
medicinal rice variety.
• There are two varieties of'navara, the black
colour and golden. Fig. 14.7
.. • Yellow colour. But the rice is purple in colour in both cases.

Description:

• Navara is used effectively in certain ayurvedic treatments in Kerala like in

Panchakarma treatment from very olden times. It is also used as a health
food especially in rainy seasons.

• The Navara rice plant prefers warm humid conditions.

• As Navara is medicinal rice the cultivation has to be organic otherwise the

chemicals used might adversely affect its medicinal properties and thereby
the health of the patients and consumers.

• Navara has to be kept at least for a year as paddy before conversion to rice
for better results.

• Raw rice ofNavara is used. Navara rice is easily digestible and hence a light
food and has got a unique taste. The yield ofNavara is very poor due to its'
short duration and susceptibility of the plant to the weather changes.

Uniqueness:

• The rice is known as "Shashtika Rice" for its unique and peculiar
characteristic requirement of only sixty days to grow and mature.

• It is valued for its curative properties in circulatory, digestive and rheumatic

complaints.

Another example, this time a manufactured good from Kerala is described

below:
ARANMULA KANNADI (ARANMULA METAL MIRROR)
Specification
It is a unique metal mirror of reflecting a rich culture
as well as mythological heritage.
'.
• This wonderful creation of human skill is made
of metal alloys.
• The image of this mirror is similar to silicon
synthetic glass mirror image without any
distortion. Fig. 14.8
49

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 Geographical Indications • This highly brittle high - tin - bronze also known as Speculum Metal yields
a highly polished surface and a clear reflection image and is very popular
for clarity. This Mirror also has got telescopic effect on its mage (i.e.) distant
objects can be seen nearby.

Description
• Produced through lost wax process, but it is entirely
different from the usual casting of other areas.

" • Each and every stage of the process of its production

is being done manually.
.• As'traditional as the mirror making technology is the
artisan's belief that the metallurgical composition of __ ------'
the mirror is divine and that some undisclosed metals Fig. 14.9
alloyed with the copper and tin are responsible for the distortion - free
images.

Uniqueness
• Aranmula kannadi is the most unique of the generic metal mirror as no
other similar mirror is available anywhere in the world. This is the rarest
handicraft. One piece of mirror will take almost six months for the
completion and each and every stage ofthe process ifits production is being
done manually without any help of the machine. The highly reflecting surface
of the mirror is according to the local belief due to the addition of some
herbal powders to the moulden metal whose identification is known to few
members of the artisans.

• The mysterious component of the local mud (clay) used for moulding purpose
to the alloy also to contribute to the uniqueness ofthis Mirror.

• The world's renowned metallurgists and scientists have tried to produce

similar Mirror with the same composition of metals but failed in their
attempts.

14.10 KEY POINTS DURING EXAMINATION OF

APPLICATION
i) Agricultural goods
The origin of the product in the GI area is first verified and authenticated from
publications. The technical details furnished under specification, description,
uniqueness and method of production are critically examined for correctness
and the identity of the product. The physical and edaphic factors ofthe GI areas
and the climatic conditions prevailed during the cropping seasons are scrutinized
with reference to their contribution to the quality parameters ofthe product and
the specific factor(s) identified. Data on chemicals/nutrient contents of the
products and the morphological features are examined and the methodology
adopted for generating the data chocked with the applicant. In the method, of
production, traditional methods practiced in the GI areas and the human skill
involved in the production are emphasized. To avoid chemical contamination of
the products and to protect the environment, organic farming is given importance.

50

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 ii) Handicrafts and manufactured products Indian Law on
Geographical Indications
The local availability of raw materials, their quality, the traditional or improved
methods of production, the skill of the personnel/artisans and their involvement
through generations (heriditary) are mainly looked into. It is also stressed that
the dyes used in the textiles, the paints and colours employed in the production
of toys, paintings, etc. should be of natural (plant) origin, or less toxic as the
chemical colours are dangerous and poison affecting the"human health. In respect
of furniture and wooden handicrafts, use of seasoned wood is given importance.
,"
ill) Food products
The processing methods adopted to get the raw materials for the preparation,
their 'quality, the techniques adopted and the machinery used are the points
considered. Maintenance of hygienic conditions in the various stages of
'preparation and in the machinery unit and avoidance of chemical preservatives
j~
are stressed. Apart from the nutritional status of the food, the acceptability test
,I infortnation by the appraisers (including organo leptic test) and the keeping quality
shelf life and packaging receive due consideration.

For purposes of examination the Registrar under his chairmanship constitutes a

consultative group of not more than seven persons well versed in that particular
field. Thereafter the Registrar will communicate his objections to the applicant
who within a stipulated time has to meet these objections and if necessary request
for hearing for satisfying the registrar as to the merits of the application. In case
no response, is received to the objections or the applicant fails to attend hearing
the application will be dismissed. Thereafter the Registrar may propose to accept
the application subject to conditions, amendments, modifications, or any other
limitations as he deems fit and direct the same to be advertised in the GI journal
(Gazette Publication).

After the GI proposed to be registered has been advertised any person within
three months and within a further period not exceeding one month can give in
writing to the Registrar, his or her opposition to the said registration pursuant to
Section 14 of the Act. Thereafter the procedure is similar as followed in the case
of registration of the trademarks. The Registrar shall cause the notice of opposition
to be served on the applicant and within a stipulated time the applicant has to file
his counter statement to this notice. Thereafter within a certain time frame as
enumerated in the Act the parties have to file their evidences and after that the
Registrar shall hear the parties if required. The Registrar then on the basis of
these documents and hearings take a decision as to whether the registration is to
be permitted or not and if to be permitted then subject to what conditions or
limitations. The application, if accepted, would then proceed to registration and
a Registration Certificate will be issued pursuant to Section 16 of the Act.

A schemeatic description of the procedure of registration is presented below:

51

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 Geographical Indications
ICATION }

"

· ,

,r
~

Fig. 14.10

14.11 REGISTRATION OF 'AUTHORIZED USER'

The Act make provisions for two parts, namely, Part A and Part B in the 01
Register, Registration details of 'Authorized User' have to be recorded in Part B
ofthe Register. The Act defines Authorized User in Section 2(1) (a) as a person
who is the authorized user ofa 01 registered under Section 17 oftheAct. Section
17 states that any person who claims to be the producer of goods in respect of
which a 01 has been registered under Section 6, may apply inwriting to the Registrar
for registering him as an authorized user of such a 01. The registration procedure
of an 'Authorized User' is broadly similar to the procedure for registration ofa 01
as discussed above. The application should be on Form 01-3 along with prescribed
fees and has to be accompanied by the following documents, namely:

1) Statements of case of how the applicant claims to be the producer of the

registered 01 along with an affidavit which should include, inter alia, since
when he has been a producer, the turnover, the extent of cultivation of
agriculture land where applicable, the volume of processing, packing,
exploitation, production or manufacture of the goods, as the case may be,
the extent of export, the regulation governing cultivation or the accepted
method of cultivation, production, exploitation, manufacture or the making
of the goods may also be relevant.

r 2) T!Je applicant should also furnish any copy of agreement between the
registered proprietor and the proposed authorized user or a copy ofthe letter
of consent from the registered proprietor of the 01. (Where such consent
letter is not appended then a copy of the application has to be endorsed to
the registered proprietor for information and the applicant has to intimate
the Registrar as to service ofthe application on the proprietor of the registered
01.
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 Section 17(3) makes it clear that the provisions of chapter III of the Act relating Indian Law on
Geographical Indications
to-

a) the filling and examination of the application;

b) the refusal and acceptance of registration;

c) with drawl of acceptance of application;

d) advertisement :of application;

" e) opposition to registration;

f) correction error in an amendment of the application and;

g) registration.

Shall apply in respect of the application and registration of authorized users in

the same manner as they apply for the application for registration of the 01.

Self Assessment Question (Spend 5 minutes)

3) Discuss the Examination Process in a 01 application.

Duration
Section 18(1) ofthe Act provides that registration of a 01 shall remain valid for
a period of 10 years, which may be renewed from time to time. Pursuant to
Section 18(2) registration of authorized user too shall be valid for 10 years or for
the period till the date on which the registration ofthe 01 in respect of which the
authorized user is registered expires, whichever is earlier. Therefore, registration
of the authorized user depends on the registration of the 01 and is eo-terminus
with the same. -

An application for renewal of registration of a 01 or an authorized user of a 01

the application has to be made in the prescribed manner along with the prescribed
fees, i.e., on Form 01-3 or form 01-4 as the case maybe and maybe made at any
time not more than six months before the expiration of the last registration. The
renewal shall be for a further period often years. The person who is proprietor of
the registered 01, failing which by any of the authorized users on record, as the
case may be, must :filesuch an application for renewal. (Section 18 (3) Rule 60
(1) & (2)). In case no request on Form 01-3 or Form 01-4 is received within 3
months of the date of expiration then the Registrar shall issue a notice to the
registered proprietor or the authorized users.as the case may be about the date of
the registration and the conditions upon which the renewal of the registration
must be obtained. Ifno such request for renewal is obtained from the registered
proprietor or the authorized user the Registrar shall remove the registration or
the name of the authorized user from the register provided that the Registrar
53

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 Geographical Indications shall not take recourse to such a drastic action if such an application along with
the surcharge for renewal is received within six months from the expiration date.
Similarly, even on expiry of thy grace period of six months and within one year
from the date expiration the Registrar on receipt of an application for renewal
along with prescribed fees and subject to his satisfaction may renew the same.
Every restoration or renewal of a GI will be advertised in the Journal. Section 19
of the Act highlights the effects of removal from the register of a GI due to non-
payment of renewal fees.
,"
14..12 CRITERIA FOR PROTECTION OF GI GOODS
14.12.1 Element of 'Originating'
• "Originating" in the territory means that the good must be mined, grown or
manufactured in that territory (normally there should be some flexibility).
,I 14.12.2 Quality Determination
Standards specified in the law for the product concerned or, through customary
use in the respective industry with 3 E in quality.

3E in quality
• Effectiveness ( doing the right things) - extent to which planed activities
are realized and planed results achieved
• Efficiency ( doing things right) - relationship between the result achieved
and the resources used
• Excellence - Doing the right things right!!
Manufacturing purposes - the storage, duration or conversion, specific
equipment, skills, ingredients (origin, type of cultivation), additives, shapes and
sizes, etc.

Verification - Done by the body responsible for geographical indications or the

product certification body.(Inspection Structure)

Production if produced by a traditional method or that its production, preparation

and processing has occurred in a particular geographical area can contribute to
its "quality".

• Qualitative link - the defmition would lead to a disadvantage for the

countries whose geographical indications apply not to agricultural or crafts
products but to industrial products. (Link which may have existed at the
beginning of the manufacturing of an industrial product, may subsequently
be broken to the extend that its existence is henceforth difficult to prove).

14.12.3 Reputation
• Reputation isbased on the distinctive character ofthe product, i.e., its capacity
to distinguish itself from other products.

• The stronger a product's identity, the more it will be able to display its
established reputation. The economic value of the reputation may also be a
key factor in evaluating the element of reputation. It is enough that the public
54

/
 associates a good with a territory because the public believes the good to Indian Law on
Geographical Indications
have desirable characteristics, i.e., that the good enjoys a "reputation" linked
to the identifier ofthe place. Reputation implies the link to territory may be
.based on human labour in the place.

14.13 ILLUSTRATIONS OF GI APPLICATIONS

Agricultural Goods

"
DARJEELING TEA (logo)

Specification:

• Leaves are small, leathery, dark glossy green

in colour often covered with a downy silvery
pubescence.

Description: Fig. 14.11

• The botanical name of the

plant is Camellia sinensis.

• A set of agricultural
practices has been
developed to sustain
growth of shoots, while maintaining bush heights Fig, 14.12
suitable for manual plucking. Plucking begins in March and closes by late
November.

• Its rare flavour is a result of combination of plant genes, soil chemistry,

elevations, temperature and rainfall. After final grading, nomenclatures are
assigned according to the size of the grade.

• This fall into three categories: (a) Whole leaf - FTGOP - Fine Tippy Golden
Flowery Orange Pekoe; (b) Brokens - TGBOP - Tippy Golden Broken
Orange Pekoe, and (c) Fannings - GOF - Golden Orange Fannings.

• The above gradations relate only to the size of the lea~ and not to quality
differentiations. All grades are the product of the same green leaf.

• Light body and golden or amber in color, Darjeelings can have a sweet muscat
(grape) flavour or a more crisp astringent flavour.

• Darjeelings are the highest grown teas in the world (4000 - 8000 ft).

Uniqueness:
• Darjeeling tea has the distinctive and naturally occurring organoleptic
characteristics of taste, aroma and mouth feel.

COORG GREEN .cARDAMOM(R.GI)

Specification: It is the fully ripened and dried fruit of the

perennial plant Elettaria cardamomum of the Malabar
variety.

• This grade is unique in its colour, size, chemical

constituents and oil content. Its colour is ranging from Fig. 14.13
greenishto brown withglobalshapeskinnbbed or smoothandpedicelsseparated. 55

I
 Geographical Indications Description

• It has the major components of cardamom oil i.e., 1, 8- cineole and a -

terpinyl acetate in' abundance. Detailed studies on volatile oil reveal that,
var. Malabar contains high percentage of 1, 8- cineole compared to other
varieties thereby bringing in a fresh campharaceous cool odour with a
diffusive taste and a refreshing' effect. However the quantity of a - terpinyl
acetate is comparable.

• It is having campharaceous cool odour with a harsh taste and a refreshing

effect due to the higher amount ofl, 8 cineole (41.0) while the alpha-terpinyl
.
"
acetate (30.0) content is comparable .

• The cardamom-growing soils of Karnataka are mostly clay loam. The soil
pH ofKarnataka is higher and also the CEC (Cation Exchange Capacity) of
. , Coorg soils is higher than the soils of other cardamom growing areas .

• The organic carbon content percentage is also at an up. On an average the

cardamom soils from Coorg in Karnataka contain much less NH40AC and
.. . RN03, extractable K compared to soils of other areas though the other soil
properties are comparable. Coorg Green Cardamom is one of the oldest,
most popular and sought after cardamom
. ,~
from India.

HANDICRAFTS- TEXTILES SILK GOODS

KANCHIPURAM SILK SAREE(R.GI)
Specification
• The Kanchipuram Silk Saree
is hand-woven with dyed silk
yarn with interleaved designs
made with 'Jari' - a Silk
thread twisted with a thin
Silver wire and then gilded
with pure Gold.
• The silk thread used for
r
weaving Kanchipuram Fig. 14.14
Sarees is made up of three
single. threads twisted
to gether. Hence, the
Kanchipuram Silk Saree is
usually stronger and more
expensive.
• The total constituents ofthe
Lace: Silver-191 gms
(78%), Silk- 51.55 gms
(21 %), Gold-2.45gms
(1%).
Fig. 14.15

• A typical Kancheepuram Silk Saree is known for its distinguished

characteristics of heavy weight, bright colours and solid zari borders with
"Pallu" with unquestionable durability.

56

I I
 Uniqueness Indian Law on
Geographical Indications
• Petni is theunique process of joining the Mundhi ofa different colour to the
body of the saree in such a manner that the two pieces blend together in
harmony of colour and to the naked eye does not betray that theyare different ,
pieces of cloth.
• The width of the Mundhi is 18" to 22" in a 6 yards saree and 27" to 32" in a
9 yards saree.
.
"
• The lustre ofthis fabric is attributed to the local water used for de-gumming
and dying of raw silk.,
• The' quality of the silk, the distinguishing characteristics of heavy weight,
bright colour and solid zari borders with 'pallu' with durability were the
key points .

.r Manufactured Goods
Comparison of main features of five kinds of Paintings

Mysore Madhubani Thanjavur Orissa Nirmal

Traditio.nal Paintings Paintings Pattachitra Paintings
Paintings Paintings

Off shoots of the Heritage rooted in Off shoots of the The painting is The medium
Vijayanagara . the rhythms of Vijayanagara done on a piece used in nirmal
school of.painting, Hindu ritual life. school of painting. of coarse cotton painting is
The painting Three forms of Paintings Are done cloth. It is a wood. The
technique includes paintings, Aripona on Wooden, living art which sketch of the
gesso or applying (worship)~ Vratas Canvasses, Walls has its root since art is traced
a mixture of ' (vows) and and Glass. ancient times. and filling of
plaster and glue, Sanskaras (rites of Paintings are The motifs used colours is done
gold foil is used passage) are colourful and in the painting to make the
for depicting prevalent. It uses bright. Originated symbolises. the painting. The
intricate details of white rice paste, during the maratha different poses of appearance is
jewellery, turmeric and period from 17 to oddissi and very beautiful
costumes and sindoor to depict 19th century. The gotipua dance. and smooth.
architectural tantric symbolic compositions The materials
details that frame forms, symbols for consist of one needed are cotton
the deity. Mysore the mother goddess main figure, a cloth, tamarind
painting differs and motifs. deity or several seeds, chalk and
from Thanjavur Colours used are deities. Most of the powders. The
painting in the prepared from paintings depict colours are
application of natural sources. child form of Lord vegetable origin
colours and which Paintings on wall, Krishna and his and mineral
are of plant origin. floor clothes, and various pranks or sources. Theme
hand made paper, other deities. Glass of painting range
saris, curtains and painting is done on from the
bed sheets are very the glass. Gold incidents in
popular. No paint and Krishna life and
specific dimension. aluminium pieces the avatars of
in the place of Vishnu to the
precious and semi epic tales of
precious stones. Ramayana and
Mahabharata.

57

/ I
 Geographical Indications MYSORE TRADITIONAL PAINTINGS(R.GI)

Specification
• A special relief work called "gesso" is done to
enhance the jewellery and other
embellishments in the paintings. These are later
covered with 24-carat gold leaf and then the
painting is given the finishing touches.
"
Description
• The Mysore painting is usually executed now
a day on a paper pasted on cloth or wood.
• Pure gold leaf not only enhances the luster of
Mysore paintings but also makes the gesso Fig. 14.16
work last longer. Also the gesso work in Mysore paintings' is low in relief
.. and intricate. The medium is water colour .

Uniqueness
• The foil work is delicate.
• The Mysore School does not use stones and
the relief work is subtle. The foil work is
delicate.
• The artist has the flexibility to use a wider
spectrum of colours and need not necessarily
restrict the painting to the deep primary
colour.
• The use of light and shade effect is more
predominant. Fig. 14.17

MADHUUANI PAINTINGS(R.GI)
Specification

• Paintings have no specific dimension. They

are carved in small sizes as well as in big size
on walls, floors, clothes or craft papers.
Rectangular size of paintings, generally 2 'X
4 are very popular on silk and cfaft paper.
I

The decorative style of Madhubani paintings

abhors empty space. The women will work Fig. 14.18
out here design by filing it more and more with familiar details which
suddenly seen to take on life and power.

Description

• Madhubani paintings have got very important

place in Modem paintings in the world. Wall
paintings floor paintings, ceiling painting
and paintings on clothes, painting on a ~
handmade paper are very popular.
Madhubani paintings designed over saris, ~~\...'1
11",,'

58 Fig. 14.19

/
I
 curtains and bed sheets, pillow covers are very much popular and lover by Indian Law on
Geographical Indications
every man and woman in present societies.

~ Colours used are prepared from natural sources. Originally, these village
painters used to collect the soot of the .night lamp to prepare black colour
and turmeric powder was used fer making yellow colour, orange was
prepared from Harshingara (Shefali) flower and' red flower and red from
Kusum, flower, indigo mixed with mustard extract provided another variety
of red. Raw materials are mixed with goat milk, gum Arabic and juice from
..
'
bean plants.

• There are two methods of paintings one in which the sketch is prepared and
figures are filled. on cloth, paper etc. in with different colours. In other
paintings, articles like flute and clothes etc. are shown with numerous small
straight lines. This is known as line painting and is more strenuous to make.
The outlines are either sketched with black lines or filled with colours.
• The colours are applied flat with no shading. There is normally a double
line drawn for theoutlines with the gap between the lines filled by cross or
straight tiny lines.

Uniqueness
• Madhubani is known all over the world for giving new dimension, new
Horizon and new definition of the art of paintings and has become. Synonym
to Madhubani Paintings. Madhubani painting is an unique and specialized
are of this region.
• Thus retaining the originality and uniqueness of this wonderful tribal art
form.
THANJAVUR PAINTINGS (R.GI)

Specification

• Thanjavur painting consist of one main figure, a deity, with a well rounded
body and almond shaped eyes. This figure would be housed in an enclosure
created by means of an arch, curtains etc.

Fig. 14.20

• The painting would be made by the gilded and gem-set technique - a

technique where gold leaves and sparkling stones are used to highlight certain
aspects of the painting like ornaments, dresses etc. The painting would be
bright and colourful and breathtakingly beautiful. The impact in a darkened
room is that of a glowing presence.
59

/
 -,

Geographical Indications • Thanjavur Paintings are mainly made on wooden canvasses, apart from glass,
and walls which includes-miniature form also.

Description
• Thanjavur paintings are one of the India's greatest traditional art forms and
the common theme running through these paintings is mythology and
demonstrates that spiritually is the essence of creative work.

"
Uniqueness
• The depiction/description of the main
figures in the Thanjavur paintings are with
rounded bodies and almond shaped eyes,
v,
lighter colour, ornamentaL

,t • The embellishments made over the basic

drawings with precious and semi-precious
.. stones as well as the relief work at times
give a 3D effect on a two dimensional
medium.
• It is a unique kind of painting done with
little use of a paintbrush and no two
paintings are ever look alike. Fig. 14.21

ORISSA PATTACIDTRA
Specification
Raw materials for Pattachitra can be divided into two broad headings i.e. raw
material for patta and raw material for colours. These raw materials are listed
below:

1) Patta
It is a double thickness coarse cotton cloth pasted together. This Patta is usually
ofGSM 565.71 and thickness of 4.07 mm. The materials required for this are:

• Cotton cloth
• Tamarind seeds
• Chalk powder or khadi

2) Colours

All the colours used 4I Pattachitra are vegetable and mineral colors.
These are available at RsAO-50 per kg. The source of each color is:
• vermillion red - hingula (cinnabar)
r
• brick red - geru (red ochre)
• yellow - hart ala (orpiment)
• white - sankh (conch shell)
• black - lamp black
• gum resin (limonia acidissirnia) - kaintha plant
60

/
 Other Raw materials which were used in the product diversification process are Indian Law on
Geographical Indications
as follows:
• Card board of two types- thin and thick available at Rs-3-5 per piece
• Fevicol available at Rs.36 per 200 rnl
• Glass pieces available at Rs.I5 per box
• Fabric-tussar, cotton available at Rs.I80 and Rs.45
. ,.respectively.
• Lamination sheets available at Rs.24! sheet
" • Fancy yam available at Rs.2!m
• Buckram cloth available.at Rs.30 per m
• Rivets available at Rs.2 per piece
Description
The painting of patachitra is a living art which has its roots since ancient times.
The word Pattachitra is derived from the Sanskrit word "patta", which means a
painted piece of cloth,or a plate; chitra means paintings or picture The brillinantly
coloured patachitra works were produced at puri or souveriers for the pilgrims
ofthe Jaganath temple. Themes for these paintings range from incidents in Krishna
life and the avatars ofVishnu to the epic tales of Ramayana and Mahabharata.

Themes used in this art are:

• Lord Jagannath and the triad of deities
• .Episodes from the Hindu epics
• Worship of various gods and goddesses
• Folklores
• Erotic Paintings

Uniqueness
.' The most important feature ofpattachitra is the canvas on which the painting
is done, without this base; called patta astra the significance of the art is
incomplete. The uniqueness of the Patta chitra i.e. the preparation of patta
has been discussed in the method of preparation.
• The motifs used in the painting sybolises the different posses of oddissi and
gotipua dance. All the paintings done depicts one or the other story.

BAGH PRINTS OFMADHYA PRADESH

Specification
• The hand block printed fabrics from Bagh are popularly known as Bagh
prints. The designs are very typical with geometrical patterns inter placed
such that the total effect of the repeating patterns give a very harmonious
appearance and appeal to the fabric. It's done totally in black and red-on
white surface using natural colours (vegetable colours).Now use of other
natural colours (vegetable colour) -likemustard, khaki is also in vogue.

Description
• Bagh prints are known for their fine quality printing and bright vegetables
colours and recognized by their geometric repetitive patterns in different
61

"

I
 Geographical Indications variations and colours that are mainly red and black block printed
predominantly on white base. Khaki and mustard vegetables colours are
used for dyeing the fabric after printing.

• The block designs that have managed to survive with time are nearly 200
years old and are still being used; sO,meof them are 100 to 50 years old and
on printing still find a market for themselves. New additions are done every
six months as per market demand and feel. At the same time care is taken to
see that this new design is a new variation of the old one.

..
'
Some old blocks and their names that are being still used are as follows:
Nandana, Laheriya, Attha, nandana ki mirache, Nandana ka butta, Aabotcha butta,
Khede ka bodh, Indori bodh, Indori saaj, Indori addya, Ahmedabadi saaj, Makhi,
.. Palliwali zanjira, Zanjiri, Jodhpuri, Jawareya, Molya border, Molya bodh, Khirala
, , kaire, Mungphali, Chaukada, Nareyal, Teekoni and Thuddi.

Different types of products that are printed are as follows:

• Cotton bedcovers in two different sizes for single bed and double bed
respectively.
• Saris are printed in different materials like cotton, silk and chiffon.
• Cushion covers mainly in cotton, in different sizes.
• Table covers of different sizes and shapes in cotton material.
• Duppattas and stoles in cotton and silk material.
• Recently, durries printing has also been worked on.
• Salwar suit material and yardage dress material.
Uniqueness
• The process of pre-printing, printing and post printing at Bagh as mentioned
above in details, itself is unique and imparts quality of colour and print to
the fabric. The appearance of the fabric being mainly in black & white and
red & white gives it a bold look - still maintains harmony ~ue to the fine
designs used in blocks for printing. The above parameters were stressed
while granting registration.

INDUSTRIAL GOODS
E.I. LEATHER (R.GI)
• The product is leather made out from raw hides and skins which are Vegetable
Tanned.
• These E.I. Leathers are produced in Tamil Nadu predominantly in Trichy,
Dindigul, part of North Arcot District and Pallavaram.
• The Age old process followed to
manufacture this G.I. Product is
unique with respect to use of pure
vegetable extracts and other
materials of vegetable origin,
combining the Human Skill
involved in various stages with
traditional recipes.
62 Fig. 14.22

I I
 • The uniqueness of Tanning lies in understanding the visual changes that the Indian Law on
Geographical Indications
skin exhibits in various stages on examination in surilight and quality of
water used in the process. Also the weather contributes to its quality.

• E.I. Leather has its own uiliqueness that is hidden with in the skin. Its
unmistakable sound, its feel, specific fragrance, its natural. characteristic
light beige colour, all are its individual characters exhibited under the
influence of natural Geographical environment prevailing in the E.I tanning
area. The specifications are given in Table.

"
Colour Characteristic Light Beige/Pale Golden
Yellow Colour
Taste Astringent
. ,
Tensile Strenght About 180 Kg/cm'
Shrinkage Temperature About 85U C
of
.. Degree ofTannage
Smell
About 40%
Characteristic Fragrance of Vegetable
Tanned Leather Smell Sound . Exclusive Characteristic of crackling sound
if handled by hand.
E.I.Tanning is eco-friendly,

• Possibility to generate high gloss on rubbing, flat and smooth surface are its
special characters.

• E.I.Leather enjoys the advantage of fullness, Good water perspiration

absorption, lends itself for up gradation.

• The colour of the product is very special and the light that lends the natural
leather a warm pale golden tone which is unique that is amenable for
converting into different uses like garments, shoes, furniture and _Leather
Goods.
• It is eminently suitable for dressing into semi chrome leather for shoe and
garments, leather goods etc.

COIMBATORE WET GRINDER(R.GI)

Specification
• Wet grinder is a home
appliance, which is
used for preparing the
batter, which is the
ingredient for idlis
and dosas. Fig. 14.23

• Various types of wet grinders are produced, starting from 21 capacity and up
to 40 I capacity. Higher capacity wet grinders from 3 1onwards are used for
commercial purpose like hotels, marriage halls, commercial batter
manufacturers, etc.
• The product consists of mainly three sub-assemblies. These are Drum, Motor
and Cabinet. 63

/ I
 Geographical Indications • These sub-assemblies are assembled together to form a Wet Grinder. The
,
motor drives the drum assembly, which does the grinding action.

• These stones are semi granite in nature with a composition having small
quantity of Silica and Mica.

• Traditional, technical and experienced labourers who are skilled in the

manufacture of wet grinders are available only in Coimbatore.

Description

" • The granite stone used in the manufacture of Coimbatore Wet Grinder is
unique with a hard mass. The wet grinder is used in the preparation of Herbal
.medicine, botanical pesticides and the idly / Dosa dough. There is no heat
developed during grinding because of the wet process. Again inspite of
continuous grinding for hours, the silicon content of the granite will not
come off from the granite, which is peculiar to the type of granite stone of
fI the Coimbatore region.

.. • It is a home appliance used for preparing batter which is the ingredient for
idlis and dosas. Differertt types wet grinder from 2 1to 40 1 capacity are
produced. The uniqueness of the wet.grinder was examined with reference
to the stone used for manufacturing which is semi granite in nature with a
small quantity of silica and mica. Despite continuous grinding for hours,
the silicon content of the granite will not come off which is peculiar to the
type of granite stone available in Coimbatore and Erode districts of Tarnil
Nadu. There is no heat developed because of wet process. The availability
of traditional and experienced skill labourers only in Coimbatore was the
other factor examined for granting registration. .'

Uniqueness
• The uniqueness of these wet grinders is the particular stone used for
manufacturing. These stones are available from the hills located in
Coimbatore and Erode districts.

MYSORE SANDALWOOD OIL(R.GI)

Specification
• Kamataka Soaps and Detergents Limited is the
Registered Prooprietor.
• Manufactured in the Districts of Mysore and
Shimoga of Kamataka.
• The sandalwood oil is made of natural
sandalwood trees - "santalum album" - grown
in this region through distillation.
• It is colourless to golden yellow, somewhat viscid
r
oily liquid. In perfumery it is valued for its non-
varying composition and fixative properties and
for its persistent heavy sweet, woody scent. Fig. 14.24

• The Sandalwood oil produced is tested as per Indian Standard Specification-

IS - 329 for itsphysiochemicalcharacteristicssuch as colour,appearance,specific
gravity,refractive index, santalol content, ester value and solubilityetc.
64

I
 • It has been also awarded Agmark Certification which is an international Indian Law on
Geograpbical Indications
benchmark for Quality.

Description

• It' is largely used in medicine, beauty aids and cosmetic preparation. It would
act as an antiseptic, analgesic, antibiotic etc. The sandalwood oil produced
in the region is largely used as an excellent fixative in all the heavy and
oriental types of perfume.

"
• Sandal wood oil is obtained through distillation process from sandalwood
trees grown in the districts of Shimoga and Mysore. This oil is used as an
excellent fixative in he various perfumes. The physio-chemical characteristics .
such as colour, appearance, specific gravity, refractive index, santol content,
.. ester value and solubility factors were found to be in conformity with IS
329 specifications .

.f Uniqueness
• Indian Sandalwood Oil especially produced in Mysore region has powerful,
pleasant, sweet, woody aroma and long lasting property due to higher santalol
content (minimum 90%) which is unique in nature.

14.14 REMEDIES FOR VIOLATIONS

• Common-law Remedies

Registered Gls
• Action for infringement of Registered G.Is
• Opinion & Criminal Action

14.15 CONCLUSION
"The intellectual property inherent in a geographical indication is not an individual
property but a property belonging to a group or community bound by territorial
limits. However, given the socioeconomic condition in the country, there are a
large number ofIndian GIs where the, producers or manufactures have not yet
been able to join together and form into a continuous Many producers of good
bearing GI in India are generally resource poor and lack the legal awareness to
encash on the potential goldmine they are sitting on. It is for this reason that
Section 11 of the Act provides that any association of person or producers or
other organization 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 the GI in relation to such goods can apply in writing
to the Registrar in the prescribed form. The registered proprietor only gives the
initialmomentum of securing registration of the relevant GI. TheAct also provides
that once the GI is registered, an infringement action can be initiated both by the
registered proprietor and by producers (authorized users) whose names have
been entered in the' Authorized user' meaning the producers ofthe goods whose
names have been entered in the register.

65

I I
 Geographical Indications
-.14.16 SUMMARY 1
India enacted the Geographical Indications of Goods (Registration and Protection)
Act, 1999 to provide better protection to Indian geographical indications. It is a
sui generis legislation. The Act provides for a system of registration of
geographical indications at the Geographical Indications Registry in Chennai.
The Act provides wide definition to the term geographical indication. It has also
the concept of authorized user. It provides for registration of foreign GIs. The
Act also provides for an Intellectual Property Appellate Board to hear appeals
.
"
against the decisions of the Registrar of Geographical Indications. Other salient
features of the Act are concept of collective right, provision for higher level of
· protection for certain declared goods, prohibition of assignment of the rights,
· prohibition of registration ofGI as a trademark, and provision of civil and criminal
remedies in case of infringement of the rights.
fI The Act lays down detailed criteria for registration. In Section 9, it lists the kind
of geographical indications which cannot be registered.
.. · Any association of persons or producers or any organisation or authority
established by or under law representing the interests of producers ofthe goods
concerned can apply for registration in the prescribed form. It should be
accompanied by a statement of case giving details ofthe product. The application
should also contain proof, of origin as well as method of production. Each
application is to be accompanied by the prescribed fee.
Detailed product specifications have to be furnished with the application. The
main elements of the specification are:
\
• Name ofthe product
• Description of the agricultural product or foodstuff (including information
on raw materials and physical, chemical microbiological or taste
characteristics)
• Evidence that the product originates in the relevant area.
• Definition of the geographical area.
-,
I
• Description of how the product is obtained, plus any relevant details on
local production, processing, packaging, etc. I

• Details ofthe link between the product and the geographical area concerned
• Any other requirements as per GI law.
The product description should cover:
• Physical attributes (shape, colour, weight, etc.)
• Chemical features (minimum fat content, maximum water content, etc)
• Microbiological information (e.g., any bacteria present)
• Biological details (race, variety, etc)
• Organoleptic characteristics (taste, flavour, color, odour, etc)
The description of the method of production must be sufficiently informative to
allow any producer within the region to produce the foodstuff concerned, if
desired. This should include, the method of obtaining the agricultural product or
foodstuff, the authentic local method of production and the packaging (where
66 relevant).

/ 1
 Detailed illustrations from cases of registered geographical indications are given. Indian Law on
Geographical Indications
These include cases ofPalakkadan matta rice and Arnm1a kannadi.
Key points during examination of the application differ with the kind of goods
SUGhas agricultural goods, or handcrafts or food products .:
The Registrar sets up a Consultative Group to examine the eligibility of the
applied product and if satisfied on the basis of the report of the Group, the same
is advertised in the officialjournal. Objections can be raised by interested parties.
These are examined in a quasi judicial way. Where the application meets all the
." requirements and the objections are settled, the same are registered. Registration
is for a period of ten years, but the same can be renewed from time to time
indefinitely.' .
All producers can apply-for registration as authorized users. There is a prescribed
application form. The procedure is much simpler than that of registration of a
registered proprietor.
.f Illustrations of GI applications in the cases of Darjeeling Tea, Coorg green
t
.
, cardamom, Kanchipuram silk saree, Mysore traditional paintings, Madhubani
paintings, Thanjavur paintings, Orissa Pattachitra, Bagh prints ofMadhya Pradesh,
El leather, Coimbatore wet grinder, and Mysore sandalwood oil are provided.

14.17' TERMINAL QUESTIONS

1) What are the objectives of the Geographical Indications of Goods
(Registration and'Protection) Act, 1999?
2)' What are,the salient features of the Act?
3) What are the indications that cannot be registered?
4) What is the procedure for registration of a geographical indication?
'.,.

5) What is the procedure for registration of an authorised user?

14.18, ANSWERS AND HINTS

Self Assessment Questions
1) Refer to Section 14.6
2) Refer to Sub-section 14.9.2, 14.9.3, 14.9.4, 14.9.5
3) Refer to Section 14.10
Terminal Questions
1) Refer to Section 14.3
2) Refer to Section 14.6
3) Refer to Sub-section 14.7.1
4) Refer to Section 14.8
5) Refer to Section 14.11

14.19 REFERENCES
GI Registry Journals

67

,.

/
 Geographical Indications ANNEXURE
REGISTERED GI GOODS
Table 1: Comparisons of Characteristic Features of Coffee
Coffee

Monsooned Malabar Arabica Coffee Monsooned Malabar Robusta

Coffee

"
Monsooned Malabar Arabica coffee is carefully Monsooned Malabar Robusta
prepared by using the raw coffee beans (green coffee is carefully prepared by
beans), obtained from the whole crop cherry of using the raw coffee beans (green
Arabica coffee (Coffea arabica L.). beans), obtained from the whole
crop cherry of Robusta coffee
.. The Monsooned Malabar Arabica coffees are
prepared and traded in four different grades
(Coffea canephora Pierre ex
Froehner.).
viz., Monsooned Malabar Arabica-AAA;
,t• Monsooned Malabar Arabica-AA; Monsooned
Malabar Arabica - A and Monsooned Malabar
The Monsooned Malabar Robusta
coffees are prepared and traded in
Arabica Triage.
two different grades VIZ.,
Monsooned Malabar Robusta-AA
This specialty coffee derives its name from the
and Monsooned Malabar Robusta
region (Malabar) and the special process
(monsooning) involved in preparing it. Triage.

Raw coffee beans (green beans) subjected to Monsooned Malabar Robusta

monsooning process during South-West coffee is a unique specialty coffee
monsoon season (June-September). from from India. This specialty coffee
Mangalore(Karnataka) to Kozhikode in derives its name from the region
preparing it. (Malabar) and the special process
(monsooning)involvedinpreparing it.
Kerala in the Malabar coast region. During the
The monsooning process makes the
During the monsooning process, many
qualitative and quantitative changes occur in the beans to swell to almost double their
coffee beans which impart a characteristic cup original size, change the colour from
quality. theinitial goldenbrown colour to pale
yellow/ straw colour.
During the monsooning process, the cherry
coffee absorbs moisture gradually and the During the monsooning process, the
moisture content in the beans goes up to 14-15 cherry coffee absorbs moisture
and beans swell almost double their size. gradually and the moisture content
in the beans goes toI4-15%.
Colour changes from initial golden brown to pale
yellow/straw colour.

The density (weight per volume) of the beans

also decreases making the beans become light
and porous.

The coffees subjected to monsooning process Monsooning process in the Malabar

in the Malabar Coast region during South West Coast region during South West
monsoon alone' would acquire the unique monsoon.
characteristics of Monsooned Malabar Arabica
coffee. In the cup Monsooned Malabar
Robusta coffee exhibits good body/
Malabar Arabica coffee exhibit good body/ strength, mild acidity, rich toned
strength, mild acidity, rich toned sweeter and
sweeter and mellow taste which' is
mellow taste which is the uniqueness of the
the uniqueness of the specialty
specialty Monsooned Malabar Arabica coffees.
Monsooned Malabar Robusta
These coffees are mainly used in blends to add coffees.
68 body, crema and increase sweetness in the cup.

/ I
 Table 2: Comparisons of Characteristic Features of Cardamom Varieties Indian Law on
Geographical Indications

Cardamom AUeppey Green Cardamom Coorg Green Cardamom

Varieties
Specification Alleppey Green cardamom is the Coorg Green cardamom or Coorg
dried capsules of Elettaria clipped cardamom (otherwise
cardamom, kiln dried, having a called) is the dried capsule variety
reasonably uniform shade of of Eletteria Cardamomum grown
green colour, measuring 5-8 mm in Coorg.
"
in diameter,having minimum
Colour ranging from pale yellow
splits, mature, ringled, three
cornered capsules, having ribbed to brown, global shape, skin ribbed
appearance. or smooth; the pedicels separated,
a unique feature of this variety
alone.

r Description Cardamom is a shade-loving

crop. It is grown extensively in
It is cultivated in the Coorg
District, Chickmagalur District,
the hilly regions of South India Hassan District, and North Kanara
especially m Kerala, at District of the State ofKarnataka.
elevations of 800-1300 m. above Cardamom is a shade loving crop.
mean sea level as an under crop It is grown extensively in the hilly
in forest lands. regions of South India , Coorg
One of the prominent post- being one of the prominent
harvesting measures is retention destination, at elevations of 800 -
of green colour which is the soul 1300 m. above mean sea level as
an under crop in forest lands.
of Alleppey Green.
In Alleppey that the cardamom It is more adaptable and drought
was processed with the help of resistant.
skilled labour.
Superiority of Alleppey Green
(cardamom oil) is its superior
sensory qualities, a better total
perception of the flavour.
Uniqueness Alleppey Green is a grade name Coorg Green Cardamom is one of
that asserts quality. the oldest, most popular and
The importance of cardamom as sought after cardamom from India.
a spice and as a medicine.
This grade is unique in its colour,
It is having a sweet fruity floral size, chemical constituents and oil
odour resultinginpleasant mellow content.
flavour.
High, retains chlorophyll for a The superiority of cardamom is
long time during storage. due to their volatile oil contents.
Another unique feature of this
It brings a fresh campharaceous
grade of cardamom is its size. It
cool odour with a diffusive taste
stands apart from others in
and a refreshing effect.
length (21mm) and also in size
(5 - 8mm in diameter).
The volatile oil in the seeds of
Alleppey Green is much higher
in percentage (7.5-11.3) when
compared to the other grades.
69

/
/
I
 Geographical Indications Table 3: Comparison of Characteristic Features of Textile Goods

1 characteristics Silk is the strongest of Natural fibre of Cotton yam: 80 s to 120 s There are fine wool and
all the natural fibers. plant origin. counts (mainly of combed coarse wool producing
quality) are used both in sheep breeds.
Dimensional Stability: The quality depends
warp way and weft way.
Silk does not generally on the yam, which Males produced more
shrink due to the fact in turn depends on Silk yams: 20/22 D to 13115 wool than females.
that its molecular the quality ofkapas D Silk is used both in warp
Males had higher
structure is not easily (seed cotton), as way and weft way.
percentage of medullated
distorted. influenced by the
The silk yams are not de- fibre as compared to
location, season,
gummed like other handloom females.
" cultivars,and method
centers and this provides a
of production and
sheer texture to the fabric.
harvesting, post-
harvest processing,
etc.
2 Physical Heavy weight (450g- Light weight Warp: 20122 Deenier cora The average fleece
attributes 1200 g), bright colours, (600gms) They silk weight is 5 kg per sheep
solid zari borders with have a smooth finish Weft: 21100 gas mercerized per year. The amount-and
"pallu", and have a distinctly cotton yam. type of wool that a sheep
original border and Border: Half fine jari produces is depend upon
pallav. Fish, conch Pallu: 21100 Mercerized its breed and genetics,
shell and flower yam + Half fine-jari nourishment, agro-
motifs are woven Putta: Half fine jari climatic conditions, and
into the fabric. Extra warp: Halffinejari shearing interval.
Extra welf: Half fine jari
3 Quality The chief attraction of Cotton Fibre The peculiar quality of the The yarn used to
the silk fabric is its Length of staple goods is joining the body manufacture the goods is
lustre. The water used (mm) warp with the pallav warp still spun by traditional
for degumming has Extra-long staple which is locally called as methods and fabricated
certain properties in Exceeding 32.5 mm TOPE TEN!. Three types of on Khaddis (traditional
order to impact lustre different yams namely Silk x Handlooms). Textures..
Long and Medium
to silk. The zari in the Silk, Silk x Cotton, Art silk x method of weaving are its
staple (25- 32
border and pallu in Cotton. unique quality features.
mm) used in the
sarees is also of unique
production of fme
and excellent quality.
and medium-fine
They include mainly a yams.
simple flame test, and
Medium and Short
a microscopic test to
staple (24.5 mm)
ascertain the purity of
used in the
the fabric. It gives the
production of
results in seconds. If
coarse yams.
the fabric bums slowly
leaving a black residue
and smells like burnt
hair, it is pure silk.

4 Uniqueness The designs are mainly The motifs used on 'khat' that is present in the Woolen yam is woven
embossing type in the fabric, ie., Crab, base fabric besides any other into the warp for
many other silk fabrics. Fish, Conch, Boat, type of value addition by colourful pattern worked
These fabrics are Axes, Fan, Bow and weaving or any other process into indigo blue, deep
washable any number Temple which such as embroidery, printing, green, chrom yellow,
of times due to the reflect the cross painting, dyeing etc. The deep red and black etc. in
unique structure and cultural heritage of Khats are made in the fabric different coloured
processes of these the area. so skillfully that the fabric according to customers
fabrics. becomes transparent. demand, taste.

70

/ I
 Table 4: MARBLEDEPOSITS IN INDIA (In million tons) Estimated Indian Law on
.. Geographical Indications

It can be protected under GI Law (Natural Goods. Subject to compliance of other

requirements. It appears no marble application has been received by the registry)

State Total

-Rajasthan . 1144

Jammu & Kashmir 405

"

Madhya Pradesh (estimated), 400 .

,
Gujarat 95

Chhattisgarh 83
,
,I

Maharashtra 59

Haryana 22

Uttaranchal 6

Sikkim 2

All India Total 2216

71

I
 Geographical Indications Table 5: Comparison of Characteristic Features of Rice

Rice Varieties Navara Rice Palakkadan Matta Rice Pokkali Rice

Specification Two varieties of navara It originates from the Rice produced in the pokkali
the black glumes and definite territory of tract in Ernakulam, Alappuzha
golden yellow colour Palakkad district. The grains and Thirissur dts of Kerala is
glumed. The rice is purple are bold and the pericarp is called pokkali rice. Grain is
in colour in both. red: medium bold, good cooking
quality, special taste and
average protein content of 7.5
," .to 8.5% and intermediately
amylase (20 to 27.7%) content.
Volume expansion of high yield
«
mg varieties is between 3.1 to
4.5. Hulling% is more than 80;
Milling% more than 75%
pokkali rice and value added
products have special taste and
cooking qualities with
medicinal value.
Description An indigenous medicinal Indigenous cereal ofPokkali cultivars are famous for
rice variety of Kerala. Palakkad in Kerala. It is a salinity tolerance pokkali,
coarse variety of rice with cheruvirippu and chettivirippu
Used effectively in certain
bold grains and red pericarp.are the traditional ruling
ayurvedic treatments and
cultivars. They have yield
also used as a health food The Palakkadan Matta is a
potential of 1000-1500 kglha.
especially m rainy unique cereal having high
Most of the land races are tall
seasons. content of nutrients and is and lodging type. They have
Known as 'Shashtika indispensable for those who kneeling ability to keep the
Rice' for its unique and do hard physical work. panicles above flood water
peculiar characteristic, level. The genotypes show
matures in 60days after special ability for internodal
planting. elongation to overcome tidal
Valued fort its curative and flood water. Pokkali
properties in circulatory, varieties have very good initial
digestive and rheumatic seedling VIgour, luxuriant
complaints. growth and tillering capacity
(12 to 16 tillers/plant). Panicles
long (25 cm) and have 120 to
160 grams.
Uniqueness Indigenous medicinal The rice is bold and red in Organic farming cultivation.
plant in Kerala, used in colour. It has unique taste. Has very good cooking quality.
ayurvedic treatments. Has Parboiling ofthe rice further Bold grain with medium
a unique taste and easily ensures retention of amylose content and distint
digestible. nutritional value. The grains organeoleptic characteristics of
is grown on unique black taste, flavour etc. Make the
cotton or regar soil, derived consumers preference more, for
,. from rocks rich in lime these varieties and the value
peculiar to Palakkad and added products. Traditional
also m Poonthalpadam cultivators have high
where the soil is heavy, digestibility and mainly used as
containing 60 to 80% clay parboiled rice. Red kernel
and silt and possess low colour makes pokkali products
permeability and high water more nutritious. They have
holding capacity. medicinal properties. Used in
72

/
 These soils, the humid the treatment of piles, Cholera
weather of Palakkad gap and and typhoid.
the rivers that flow from the
Western Ghats and the bright
sunshine determine the.
unique taste and quality.

Method of Normal cultivation Cultivation starts on vishu The system of prawn filtration!
production practices are adopted. day. Fields are ploughed 4 to rice -fish culture/rice-shrimp
" Prefers warm humid 5 times. During the full culture adopted by farmers.
conditions. As it is a moon night the seeds spread During summer months, due to
medicinal variety, m the court yard and ingression of salt water from
organic farming exposed to moon light. the sea, the soil salinity is
practices are adopted. Seeds cured like this is kept washed off in heavy monsoon
in the special rooms with rains the inherent acidity of soil
wooden panels. After doing regenerators. The soil is acidic
pooja the seeds are sown by and the PH is 3 to 4.5.
broad casting. Direct sowing
is adopted for the first crop. The surface soil is disturbed.
Harvested in Sep-Oct during When the soil and weather
Onam, the harvest festival. conditions become favourable
Simultaneously the for sowing, the baskets
preparatory activities for the containing the dried seeds are
second crop begin. re-soaked for 3-6 hrs. The
Transplanting is usually mounds are then raked and the
done for the second crop. top levelled. The sprouted
The second is harvested seeds are sown on the top of
coinciding with a variety of mounds or ridges, which act as
local festivals including nursery in situ. The sown seeds
'Kongan pada' which is the will be pasted to mounds or
only war festival of Kerala. ridges with clay to avoid
removal of seeds by flooding
and to reduce damage by birds.
Paddy from Pokkali tract is
processed by traditional
system.

A ten step guide for registration ofGI in India

Step 1: Filling of application
Step 2: Preliminary Scrutiny within three months from the date ofthe order or
decision.
Step 3: Examination Case. Thereafter, an Examination Report is issued. If the
Registrar accepts an application it will be published in the GI Journal.
The Registrar
Step 4: Show cause notice
Step S : Publication in the geographical Indications Journal
Step6: Opposition to registration
Step 7: Registration
Step 8 : Renewal
Step 9: Additional protection to notified goods
Step 10: Appeal : Any person aggrieved by an order or decision ofthe Registrar
under thisAct or the Rules may prefer an appeal to the IntellectualProperty
Appellate Board (IPAB). 73

I I
 ,
UNIT 15 INFRINGEMENT OF
GEOGRAPHICAL INDICATIONS

Structure
15.1 Introduction
15.2 Objectives

.
" 15.3 Suit for Infringement and Passing Off
15.3.1 Spanish Champagne Case
15.3.2 Indian Case Laws
15.4 Difference between Passing off and Infringement
.,
15.5 The Concept of Passing Off
fI
15.6 Evolution and Development of the Concept

.. 15.7
15.8
Judicial Decisions
Infringement
15.8.1 Meaning ofInfringement
15.8.2 Remedies for Infringement
15.9 Manner of Filing the Suit
15.9.1 Acts not Amounting to Infringement
15.9.2 Trans-border Reputation
15.10 Criminal Prosecution
15.11 Rectification and Correction of the Register
15.11.1 Correction of the Register
15.11.2 Alteration of Registered Geographical Indications
15.11.3 Adaptation of Entries in Register to Amend or Substitute Classification of
Goods
15.11.4 Appeals to the Appellate Board
15.11.5 Appearance of Registrar in Legal Proceedings
15.12 Summary
15.13 Terminal Questions
15.14 Answers and Hints
15.15 References and Suggested Readings

15.1 INTRODUCTION
The Need for Enforcement
The Geographical Indications of Goods (Registration and Protection) Act, 1999,
like the Trademarks Act, 1999 and Copyright Act, 1957 contains specific
provisions as to the place; procedure and also the reliefthat can be craved form
the courts in such a suit for infringement and passing off. The Act also provides
for criminal prosecution of persons who indulge in falsification of GIs.

Steps have been taken to ensure adequate legal protection for'Darjeeling Tea' in
India and abroad at heavy cost. The actual-instances of misuse' from within and
outside the country are galore for Indian handicrafts and handloom products,
74

"

/
 posing serious threats to their survival. Duplicate ofKanchipuramand Banarasi sarees Infringement of
Geographical Indications
is available in Indian market. Poor quality imitations are also being produced at cost
only one-tenth of the price of an original saree.· In the case of 'Kashmir
Pashmina' (shawls), a registered GI, Silk-pashmina and various other categories of
woollen shawls are produced within India as well as from neighbourhood with an
Asian species of mountain goat called Chyangra or Capra Hiracus. However,
enforcement ofGls associated with such traditional arts and crafts products would be
an extremely challenging venture even within India, let alone in other countries.
Handlooms and handicrafts are so Id from a variety of formal and informal outlets in
," India making it a Herculean task to keep vigilance on imitations. Notwithstanding
difficulties, it is encouraging to see that the right holders of some of the registered
GIs in India have started taking initiatives towards enforcement oftheir legal rights witliin
the country, The experience of 'Pochampalli Ikat' is worth mention here. In May, 2005
it came to the notice of the right holders of this GI that a retailer in Hyderabad was
selling imitations of'Pochampalli Ikat' sarees, while a Mumbai-based manufacturer
was manufacturing and selling these imitations. In June 2005, a case was filed
in the Delhi High Court against the manufacturing and selling ofthese imitations.
Importantly, this was the first ever infringement case filed under the GIAct in India.
However the defendants (both the manufacturer and the retailer) accepted the charge
of infringement and pleaded for out-of-the-court settlement. Declaring their
unawareness about the GI protection of 'Pochampalli Ikat', they claimed to have
destroyed all the fake sarees and undertook that thereafter such sarees would not be
available in the market or else they would be ready to pay the requisite penalty.
Finally, the matter was resolved out-of-the court.

The right in respect of "Geographical Indications" is an intellectual property right and

is protected in the same manner as right in a trade mark. Section 20 of GI Act states-

No action for infringement of unregistered geographical indication-(l) No

person shall be entitled to institute any proceeding to prevent, or to recover damages
for, the infringement of an unregistered geographical indication.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for
passing off goods as the goods of another person or the remedies in respect thereof

The law recognizes the common law rights ofthe owner to take civil and criminal
action against any person for passing off goods of another person or the remedies
thereof

There isno definition ofthe expression "passing off in the GI Act, though the expression
"passing off>is used in the following sections:-Section 20(2) - As indicated above,
this section preserves the common law right of action against any person for passing
off goods as the goods of another person provided by another person and recognizes
the owner's rights to obtain remedies under the common law. Section 66(c) - In this
section, the right of a GI owner is recognized to file a suit or an action for passing off
arising out of the use by the defendant of any GI which is identical with or deceptively
similar to the plaintiff's. The district court is hayingjurisdiction to try the suit. Section
67(3)(b) - This sub-section sets out the circumstance in a passing off suit where the
c0mt shall not grant reliefbyway of damages or on account of profits for passing off
action under GI Act, 1999. An unregistered GI is placed on the same footing as a
registered GI in respect of offences, penalties and procedures (vide Sections 37 to
41) and in respect of all civil actions as contemplated in Section 66 and 67, apart from
the specific provision in Section 2(3). In Erven Warnink BV & Anor v. J Townend & 75

/
 Geographical Indications Sons Ltd. (1980 RPC 31), the House of Lords laid down the characteristics ofpassing
off action: -A misrepresentation made by a trader in the course ofhis trade to prospective
customers ofhis or ultimate consumers of goods or services supplied by him which is
calculated to injure the business or goodwill of another trader and which causes actual
damage to a business goodwill of the trader by whom the action is brought or will
probably do so. .

15.2 OBJECTIVES
"
After reading this unit, you should be able to:

• explain the need for enforcement ofthe GI Act;

• describe suits for infringement and passing off;
• difference between passing off and infringement;
• meaning of infringement;
• remedies of infringement; and
• acts not amounting to infringement.

15.3 SIDT FOR INFRINGEMENT AND PASSING OFF

A suit for infringement or relating to any other right in a registered GI pursuant to
Section 22 ofthe Act is to be instituted before a court not inferior to a District Court.
Similarly a passing off action too has to be initiated before the District Court. Sub-
section (2) clearly states that the 'District Court having jurisdiction' shall mean a district
court within the local limits of who sejurisdiction, at the time of institution ofthe suit or
other proceedings, the person instituting the suit or proceeding, Le.the plaintiffvo Iuntarily
resides or works for gain. This is in contrast to Section 20 of Civil Procedure Code,
1908 (CPC) which lays down that a suit shall be instituted in a Court within the local
limits of whose jurisdiction the defendant at the time ofthe commencement ofthe suit
actually or voluntarily resides or works for gain. Therefore this jurisdictional clause is
a departure from the normal law as contained in the CPe. With this clear provision the
combination ofthe causes of action, viz. infringement ofGI, passing off, has now
become easy. It should also be noted that the jurisdiction for fillinga suit for infringement
or passing off is not based on or linked with the operative jurisdiction of the GI
Registry where it is situated as held in P.M. Diesels Ltd v. Patel field Marshal
Industries (1998) PTC 260 Del (DB). Also the place where the cause of action
arose will determine the jurisdiction ofthe court. This implies that the court in a district
where normally, spurious goods were sent for sale on a commercial scale has jurisdiction
to entertain the suit.

The period of limitation for filling a suit for infringement and passing offis three years
from the date of the impugned act under the Limitation Act, 1963. However, the
.• Supreme Court in Bengal Waterproofv. Bombay Waterproof AIR 1997 SC 1398
< held that as an act of passing offis an act of deceit and tort and every time when such
tortuous act or deceit is committed by the defendant the plaintiff gets a fresh cause of
action to come to the Court by appropriate proceedings. Similarly infringement of a
registered trade mark would also be a continuing wrong so long as the infringement
continues. Therefore, whether the earlier infringement has continued or a new
infringement has taken place, cause of action for filing a fresh suit would obviously
arise in favour of the plaintiff who is aggrieved by such infringements oftrademark or
76 passing off action alleged against the defendant.

I
 In a suit for infringement and passing off, the following reliefs may be given to the Infringement of
Geographical Indications
plaintiffby the court. Such relief may include an order for injunction (subject to such
terms which the court may think is fit in the facts and circumstances ofthe case) and at
the option of the plaintiff, either damages or accounts of profits, together with or
without any order for the delivery ofthe infringing labels and indications for destruction
or erasure. The order for injunction may be made exparte and may include interlocutory
orders on the following matters namely:

a) For discovery of documents;

" b) Preserving of infringing goods, documents or otherevidence which are related to
the subject matter ofthe suit;
c) Restraining the defendant from disposing of or dealing with his assets in a manner,
-, which may adversely affect plaintiff's ability to recover damages, costs or other
pecuniary remedies which may be finally awarded to the plaintiff.

Clearly no distinction is made as to kind of relief granted in a suit for infringement or a

,~
• passing off. Also it is pertinent to note that the explicit provision as to the ex-parte
relief are in nature ofAnton Pillar Orders or Mareva Injunction as granted in UK and
other common law countries.

A list of defences which the defendant may plead to avoid paying damages (other than
nominal damages) or an account ofprofits in a suit for infringement are:

Where the defendant satisfies the court -

• That at the time he commenced to use the GI complained of in the suit he was
unaware and had no reasonable ground for believing that the GI ofthe plaintiff
was on the register; and
• That when he became aware ofthe existence and nature ofthe plaintiff's right in
the GI, he forthwith ceased to use the GI in relation to good in respect of which
it was registered.

Such defence can also be pleaded in a suit for passing off. It should also be mentioned
that generally in such suits for infringement whether copyright or trademarks or GI a
successful plaintiffis entitled to either an inquiry as to damages or at his election an
account of profits. i.e., at his choice or election he is entitled to anyone ofthese
remedies. The reason is that since account of profits is more in the nature of an
equitable remedy, the plaintiffby taking the profits made by the infringer by use of his
property condones the acts of infringement. (Caxton Publishing Co. Ltd v.
Sutherland Publishing Co. Ltd [1939] x.c 178 at 198).

Scotch v. Scot: Delhi High Court upholds rights in the unregistered

geographical indication "Scotch Whisky"

In perhaps a first case of passing-off under the newly enacted Geographical Indications
of Goods (Registration and Protection) Act, 1999, the Delhi High Court upheld the
claims of the Scotch Whisky Association in the unregistered geographical indication
'Scotch' for a fine whisky originating from Scotland. The defendant, Golden Bottling
Limited, a local liquor company, was using the mark 'Red Scot' to descnbe its Indian
whisky. The plaintiff sued the defendant on the ground that its use of the mark 'Red

77

I I
 Geographical Indications Scot' was bound to pass off its whisky as Scotch whisky. While passing the order, the
High Court observed that Scotch whisky can be produced only according to the
conditions under the Scotch Whisky Order, 1990. The Court further observed that all
whiskies that are produced in Scotland need net necessarily fall within the definition of
Scotch whisky. Most countries, particularly of the common law tradition, protected
GIs under 'passing off', There is an array of case laws en 'passing off in Commonwealth
countries,

15.3.1 Spanish Champagne Case

"
• J Bollinger & Ors v. The Costa Brava Wine Co Ltd. (1960) RPC 16
. .
• Case against manufacturing and selling sparkling white wine under the name
'Spanish Champagne'
• Decision protected collective rights and geed will'
fI
• . "It ought net to matter that the persons truly entitled to describe their goods
by the name and description are a class producing goods in a certain locality
and net merely one individual."
• Held persons "who from time to time want to purchase Champagne, as the
wine with the great reputation, is likely to be misled by the description
"Spanish Champagne." Hence, defendants were injected from passing off

Unregistered GIs were are also today protected by an action of 'extended passing
off' a variant of the classic passing off action, first recognized by Danckwertsj in
Bollinger v. Costa Brava wine Co. [1960] RPC 16. Under an action of extended
passing off it is recognized that a class er group of traders may share goodwill in a
name or some ether indicator that is distinctive of a particular class of goods such as
'champagne' er 'scotch whisky'. Therefore what is recognized is some kind of collective
goodwill and of course GI tee is a form of collective goodwill, In Bollinger v. Costa
Brava Wine Co. case the plaintiffs were members of a group of producers from the
champagne district in France who made a naturally. sparkling wine, popularly known
as 'champagne', brought an action of passing off against the defendant fer selling a ,I
product called Spanish champagne. The court observed that passing off would restrain
a trader who sought to attach te their product name er description with which they
have ne natural association, "se as to make use ofthe reputation and goodwill which
has been gained by a product genuinely indicated by the name er description".
Danckwerts J further added that it did net matter "that the person truly entitled to
describe their goods by the name and description are a classproducing goods in a
certain locality and net merely one individual". Therefore, in essence the court
recognized that the plaintiffs along with ether members of the class had the requisite
goodwill in the name' champagne'. This was because the name champagne indicated
a sparkling wine that came from the 'champagne' district in France, was made by a
particular method, and from grapes sourced from this champagne region, As such, the
word champagne denotes a distinctive reputation which ceuld only be used by
producers from 'Champagne' region, The Bollinger decision was followed in other
cases namely in vine products v. Mackenzie [1969J RPC 1 (Sherry- wine produced
by the Solera process in the province of Jerez de la Fontera in Spain); John
.78
1

/ I
 Walker & sons v. henry ost [1970J RPC 489 (scotch whisky distilled, but not Infringement of
Geographical Indications
necessarily blended, in Scotland); Taittinger SA v.. Allbev [1993JFSR 641
(Champagne); Consorzio del Prosciutto di parma v. Marks & Spencer
[1991JRPC 351; Consorzio del Prosciutto diparma v.AsdaStores [1988J FSR
697 (Parma ham) in Chocosuisse v cadbur [1998JRPC 117; [1999J RPC 826
wherein Laddie 1. recognized that the Swiss chocolate industry had collective goodwill
in the words 'Swiss Chocolate'.
"
15.3.2 Indian Case Laws
India has also followed the common law path. There are some important case laws
from different High Courts

• Dyer Meakin Breweries v. Scotch Whisky Association, AIR 1980 Del 125
fI

• Scotch Whisky Association v. Paravara Sahakar Shakar Karkhana, AIR

1992 Bom295

• Khoday Distilleries v. Scotch Whisky Association, AIR 1999 Mad 274

Dyer Meakin Breweries v. Sctoch Whisky Association (SWA)

• Case of Highland Chiefwhisky

• Spanish Champagne case ratio was relied upon by SWA.

• Held that the words' Highland Chief, , ,"would be likely to deceive or confuse
unwary purchasers in thinking that the whisky is Scotch whisky."

This appeal under Section 109 of the Trade and Merchandise Marks Act, )958
(hereinafter referred to as the 'Act ') is directed against the order of Assistant Registrar
of Trademarks, Delhi dismissing the opposition filed by the appellant and ordering the
registration applied for by the respondent..

Case History-The respondent filed an application to register a trade mark consisting

of a label colltaining the bust portrait of a Scottish Highlander and the words "Highland
Chief' in Class 33 in respect of Whisky, The appellant filed a notice of opposition,
after its advertisement in the Trade Marks Journal of Io" March, 1964.

The appellant is a body corporate, incorporated under the United Kingdom Companies
Act, 1948, It does not itself carry on the trade but includes amongst its members
leading producers and sellers of Scotch whisky. One of the principal aims of this
Association is to protect the interests ofthe producers and sellers of Scotch whisky. It
is stated in the notice to opposition that the description 'Scotch Whisky' is not generic
but relates solely to the geographical origin ofthe product in relation to which it is
used. It is also stated that the brand name 'HIGHLAND CHIEF' when used in relation
to a product descnbed as 'malted whisky' will be assumed by the purchasers to relate
to a product of Scotland since the highlands of Scotland ate an area world famous for
the production of whisky. It is further stated that the impression ofthe purchasers that
the words 'HIGHLAND CHIEF' indicate that the whisky in relation to which they
,,"
79

I 1
 Geographical Indications are used comes from Scotland will be confirmed, if they see these words used on the
labels the subject of the application ofthe respondent, since it bears prominently the
device of the head and shoulders of a gentleman dressed in Scottish highland costume
wearing inter-alia feather bonnet and plaid and edged with tartan a well known symbol
of Scottish origin. It is thus submitted that the mark in question would be likely
to deceive or cause confusion; its use would be contrary to law for the time
being in force and it would be disentitled to protection in the Court.

"
The respondent resisted the notice of opposition and stated that the label in question
bore its name and place of manufacture and bottling clearly in bold letters also stating
that the product is a 'Produce ofIndia'. It was also pleaded that the consumers would
not be deceived into believing that their product came from Scotland. Especially as
there were many brands of whisky produced in India both by respondent and others.
•• However, it was conceded that the appellants consist of members who were leading
producers and consumers of Scotch whisky and one of its principal aims was to
protect the interests ofthe producers and sellers of Scotch whisky. It was also conceded
that Scotch whisky is not generic but relates solely to geographical origin ofthe product.
'-

The contention that the multi-coloured label having the words "Highland Chief' also
contains the name of respondent and the words "Produce in India" and so there can
be no confusion in the mind ofthe public that the whisky has been produced in Scotland
has no force. In this label, as already described by me, the words 'Highland Chief are
shown in very bold letters on the top of this label in a scroll underneath which is the"
portrait ofa ''Highland Soldier". Under the portrait is another scroll wherein, in bold
words, the words 'malted whisky' are written. The rest ofthe description stating that
it is manufactured by 'Kasauli & Lucknow Distilleries Bottled at Lucknow Distillery'
r is in fine type and the words "DYER Meakin Breweries LTD" is slightly bolder than
the words 'Produce in India' but definitely far less significant than the words 'Highland
Chief and 'Malted Whisky', The words 'Produce ofIndia' is barely visible and is not
at all legible in the advertisement which appeared in the Trademark Journal. This label
is surrounded by tartans design. The over-all impression created by the words as well
as the design is that the whisky is manufactured in Scotland and is one ofthe brands of
'Scotch Whisky'. May be experienced persons will not be taken in but this seems to
have been designed for taking in somebody. The reason given by the respondents that
the portrait of a Highland Soldier as well as the tartan design around this label has
been adopted only because the object was to give something colourful but not to
confuse anyone is a baseless one. I cannot imagine that if the purpose was simply to
give something colourful in the said label and not to mislead or confuse anyone then
the respondents failed to find out any colourful design of an Indian Motif and had to go
all the way to 'Scotland' to do so. In this country those citizens who like to drink
whisky will prefer Scotch whisky over the Indian product. Unless persons examine
the label minutely which usually a customer does not do and goes by the over-all
impression created by the name and the multi-coloured label, is definitely going to
confuse it with the Scotch whisky. It would be more so when a person is familiar with
80

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 Highland Nectar, Highland Cream, Highland Queen, and Highland Club. He is more Infringement of
Geographical Indications
likely to conclude that 'Highland Chief is one ofthe similar brands ofwhisky.

I find the approach ofthe learned Assistant Registrar of Trademarks was wholly
erroneous. The un-rebutted affidavit of David Banks, as discussed above, had
established the case of the appellant that the word 'Highland' when used in relation to
whisky was synonymous with the whisky produced in Scotland and that it was thus
understood by the public of India. The appeal is, therefore, allowed and the order of
the learned Assistant Registrar of Trademarks is set aside and the application no .
.., 214480 of the respondent for registration ofthe trademark in question in Class 33 is
hereby dismissed. The appellants will be entitled to costs.

., SWA v. Paravara Sahakar Shakar Karkhana

'. • Whisky blended with Scotch sold under names Drum Beater and Gold Tycoon.

" • Held, ''the action in passing offwould be maintainable where the plaintiff could
prove injury to its business or goodwill which could take a variety of forms even
though the defendant was not passing offits goods as the goods of the plaintiff."

Khodey Distilleries v. Scotch Whisky Association

• Peter Scot Case

• Held, 'Scot' would be evocative of'Scotch Whisky' and would lead to confusion
and / or deception.

• Hence it would be ineligible for registration in itself or in combination with Peter.

15.4 DIFFERENCE BETWEEN PASSING OFF AND

INFRINGEMENT
For a passing off action registration is not a factor. It is based on the goodwill acquired
through use. Passing off action is based on well established common law principle that
nobody has any right to represent his goods as somebody else. Such action is recognized
both in respect of unregistered as well as registered marks'. In Durga Dutt Sharma V.
N.P. Laboratories, the Honourable Supreme Court has laid down that "An action for
passing offis a Common law remedy, being in substance an action for deceit, that is,
a passing offby a person ofhis own goods as those of another person". In case of a
passing off action, the defendant's goods need not be same as that ofthe plaintiff. In
an action for infringement, the goods may be for similar goods. In passing off action
identity or similarity of marks is not sufficient; there must also be likelihood of confusion.
In case of infringement, if the marks are identical or similar no further proofis required.
An action for infringement on the other hand is based on the right acquired by registration
under the Act and is possible only in respect of registered GIs.

An action for infringement is a statutory right. It is dependent upon the validity of the
registration and subject to other restrictions laid down in the GI Act. On the other
hand, the gist of the passing off action is that A is not entitled to represent his goods as 81

..

I
"

I
 Geographical Indications
the goods ofB but it is not necessary for B to prove that A did this knowingly or with
any intent to deceive. It is enough that the get-up ofB's goods has become distinctive
ofthem and that there is a probability of confusion between them and the goods of A.
The case ofneither actual deception nor any actual damage may be proved. "~n an
action for infringement, the plaintiff must, no doubt, make out that the use of the
defendant's mark is so close either visually, phonetically or otherwise and the Court
reaches the conclusion that there is an imitation, no further evidence is required-to
establish that the plaintiff's rights are violated. In the case of passing off, the defendant
.
" may escape liability ifhe can show that the added matter is sufficient to distinguish his
goods from those ofthe plaintiff"

15.5 THE CONCEPT OF PASSING OFF

Passing off-Passing offis a form oftort. The law of passing off, based on common
law, has remained substantially the same over more than a century though its formulation
.
, .has changed over the time. The object of this law is to protect the goodwill and
reputation of a business from encroachment by dishonest competitors. 'No man is
entitled to represent his goods as being the goods of another man, and no man is
permitted to use any mark, sign or symbol, device or other means, whereby, without
making a direct false representation himself to a purchaser who purchases from him,
he enables such purchaser to tell a lie or to make a false representation to somebody
else who is ultimate customer'. To put it in short, it is an actionable wrong for any
person to pass offhis goods or business as and for the goods or business of another
person by whatever means that result may be achieved. The law of passing off can be
summarized in one short general proposition that no man may pass offhis goods as
those of another. More especially it may be expressed in terms of elements which the
plaintiffin such an action has to prove in order to succeed. Passing offis a wrong, a
common law tort which protects the goodwill of a trader from misrepresentation. It is
a way of misleading the public into believing falsely. The goods are projected as if well.
known, which is actually not so. It is popularly known as the tort of"passing oft".

As held in the famous case ofN. R. Dongre v. Whirlpool Corporation

-"A man may not sell his own goods under the pretence that they are the goods of
another man."Law aims to protect traders from this form ofunfair competition. Legally,
classifying acts under this tort aims to protect the right of property that exists in goodwill
Goodwill is defined as the part ofbusiness value over and above the value ofidentifuible
business assets. Basically it is an intangible asset.

-The DutchAdvocate case was the first case where the basic elements ofthe wrong of
r
passing offwere put forth by Lord Fraser. They were as follows:

• a misrepresentation

• made by a trader in the course oftrade,

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 • to prospective customers ofhis or,uhimate consumers of goods or services supplied Infringement of
Geographical Indications
by him,

• which is calculated to injure the business or goodwill of another trader (in the
sense that this is a reasonably foreseeable consequence) and

• which causes actual damage to a business or goodwill of the trader by whom the
action is brought or (in a quia timet action) will probably do so.

" Later in the JifLemon case, Lord Oliver reduced these principles to three basic
features( now known as the classical trinity) which included reputation misrepresentation
damage to goodwill. To sum it up, the tort of passing off covers those cases where
one trader falsely misrepresents his goods as those of another traderlbrand, which has
.. a good reputation! goodwill in the market and thus leads to damaging his goodwill. In
a passing 0ff action, the plaintiff must prove that there is a similarity in the trade names
or marks and that the defendant is passing offhis goods as those ofthe plaintiff's.
Remedies could include injunction or damages or both. Damage or likelihood of damage
form the core all passing offactions.

15.6 'EVOLUTION AND DEVELOPMENT OF THE

CONCEPT
• Liability in the tort of passing offrevolves around misrepresentation. In the 17th
century, Southern vs how and Dean v. Steel, it was categorized under deceit or
defamation.

• ' , In the eighteenth century, all cases of passing offwere classified as cases of
deceit, limiting the tort to cases where there was a proof of bad faith. In the
nineteenth century, in the case Millington v. Fox, it was decided that proof of
fraud was not necessary in such a wrong and it was from here that the actual tort
of passing offbegan building its own definition.

• In the case Cartier v. Carlile, it was decided that "mere proof of likelihood of
deception was sufficient to prove".

15.7 JUDICIAL DECISIONS

,
Southern v. How

The earliest documented case where there was an indication of pas sing off, this one
dates back to 1618. In this case mark of an eminent clothing brand was used to dupe
a customer, who bought the defendant's low grade clothing thinking it was the plaintiff's
brand. The defendant was held liable.

Calvin Klein Inc. USA v. InternationalApparel Syndicate

• In this case, the plaintiff an internationally reputed US company with a tremendous

goodwill for designer clothing brought an action for passing off and trademark
infringement against InternationalApparel Syndicate, an Indian company to stop 83

/
 Geographical Indications them from using the trade name Calvin Klein and the mark CK.

• Calvin Klein did not have a market in India, but their goodwill was based on their
reputation earned through advertisements. They also had worldwide trademark
registrations in 136 countries including India. In India, their registration covered
only textile goods, while their application for trademark registration for clothing,
footwear and headgear was 'still pending. False representation by the Indian
company that they were official CK licensees and marketing their products under
the trade name ofCalvin Klein led to the Calcutta High Court passing an interim
'.
orde~ for injunction, stopping International Apparel Syndicate from using the
name Calvin Klein and the mark CK, which subsequently became permanent.

• The defendants' contention that the plaintiffs could not bring an action because
they did not sell their goods in India was disallowed. The court said that the
fI

marks were used with an intention to deceive the customers and to trade riding
on the international reputation of Ca lvin Klein.

Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors

• The defendants manufactured pressure cookers under the name ''Honda'', in India.
Their application for registration had already been rejected once before and they
had applied for registration again, while continuing to sell their products.

• The plaintiffs, popular all over the world for their motor goods and electrical
appliances brought an action against the defenda:nts. In India, they ran a joint
venture with the Siddharth Shriram Group.

• In the judgment, it was held that with an established business and sale of quality
products, the name ''Honda'' had become associated with the plaintiffs' reputation
and its goods. It was said that it is very easy for the public to associate the
plaintiffs with any product that carries the name of"Honda". Further, the
honourable judges also held that by using the name "Honda" the defendants
were creating confusion in the consumers' minds, which was indirectly affecting
the business of the plaintiffs in an adverse way. An injunction was ordered to stop
the defendants from using the name ''Honda''.

Colgate Palmolive Company and Anr. v. Anchor Health and Beauty Care
Pvt.Ltd.

• Both the plaintiffs and the defendants manufacture well known toothpaste brands.
The plaintiffs sued the defendants for passing off. The contention of the plaintiffs
was that the defendants' use of colour and pattern of colours in their dental
products was dangerously similar to the plaintiffs'. According to the plaintiffs the
proportion of colours (red and white) used by the defendants was almost identical
to that of the plaintiffs (1/3:2/3). The reason for bringing in such an action was
that the plaintiffs were established in the Indian market since 1951, and had a
84

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 Infringement of
tremendous goodwill in the country, while the defendants had entered the market
Geographical Indications
only in 1996.

• It was held by the court that though there cannot be any monopoly over colour, in
a country with a huge number of illiterate and semi-literate people, by marketing
a new product with a design closely resembling that ofthe older product, it is
easy to create confusion in the minds of the public, especially when a similar
product has been prevailing in the market for close to half a century. It was
.., adjudged that the defendants were using the trade dress ofthe plaintiffs. The
court ordered an injunction, restraining the defendants from using the red/wliite
combination in the disputed order.

• Passing offis not defined, but various courts have tried to follow the common law
.in helping build an idea of passing off. Passing off is said to take place when a GI,
registered or unregistered is infringed in a manner where not only is the indication
dangerously similar to that ofthe plaintiffs', but also it rides on the plaintiffs'
goodwill to help establish a market and thus ruin the plaintiffs' market. "Goodwill"
plays a big part in instituting an action against the tort of passing off.

• GI infringement is restricted by Section 45 of the GI Act, 1999, as its ambit

stretches up to registered indications only.

In a country where a considerable percentage of the population lives in rural areas, it

is very easyto pass off goods. Thousands of instances of passing off can be found out
throughout India. Passing offhas come a long way through the common law system
and now has some well defined principles and ambit.

Action for Passing Off is a common law remedy, in substance being an action for
deceit that is passing offby a person of his own goods as those of another. It is a
remedy available to the owner of an unregistered GI who obtains reputation and
goodwill by long use ofthe same. An action for Infringement is a statutory remedy,
available to a person who acquires right in a GI on its registration.

15.8 INFRINGEMENT
lS.S.l Meaning of Infringement

Infringement ofGI is defined in Section 22 of the GI Act, 1999 ("the Act"). It is

similar to the law tof passing off except that it is' concerned mainly with the use ofthe
indication. On the other hand, passing offis a misrepresentation by the user calculated
to injure the goodwill of the original trader. Nevertheless, the protection against
infringement is absolute. Once it is shown to offend the owner ofthe indication the
offending user cannot escape liability. In the case of infringement, the burden of proof
is on the plaintiff, as the plaintiff will have to prove that the various aspects listed under
infringement section have been violated. 85

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 Geographical Indications
15.8.2 Remedies for Infringement

The Act provides civil as well as criminal remedies for infringement. A suit for
infringement ofGI can be instituted in any court that is not inferior to a Djstrict Court,
In addition, infringement proceedings may be initiated in High courts by invoking their
original jurisdiction. The provisions of the Code of Civil Procedure, 1908 determine
the jurisdiction of the court for the purpose of infringement suits, Aregistered proprietor
or the authorised user can sue for infringement. The suit is generally filed against the
.
"
infringer; An infringer is one who uses, or contemplates or threatens to use an indication
that is similar to the plaintiff's registered indication. Tile person who intends to sue
does not give any notice to the alleged infringer.

There are two examples ofthis situation:

fI

• In the case Castrol Limited and another. v. P.K. Sharma and others, the plaintiff
.
, was the registered owner of the trademarks.

• Castrol, Castrol GTX, and Castrol GTX 2.in respect of oils for heating, lighting
and lubricating. In December 1994, the plaintiffs came to know that the defendant
was carrying on the businessofselling multigrade engine oils and lubricants under
the trademark 'Castrol GTX' and 'Castrol CRB' in identical containers as used
by the plaintiffs. The plaintiff filed a suit for perpetual injunction. The court held
that the use of the said trade marks by the defendants is clearly dishonest and is
an attempt of infringement.

In Ranbaxy Laboratories Limited v;Dua Pharmaceuticals Limited, the plaintiff

company manufactured drugs under the trade name "Calmpose". The defendant
company subsequently floated its similar product under the trademark "Calmprose".
The said marks appeared phonetically and visually similar and the dimensions of the
two strips were, practically the same including the type of packing, the colour scheme
and manner of writing. The court held.it to be a clear case of infringement oftrademark
and issued a permanent injunction against the defendant.

15.9 MANNEROFFILINGTHESUIT
There is no particular form of filing the pleading except that it must contain a clear and
concise statement of material facts. The claim should include issues relating to the
likelihood of confusion, counterfeit marks, and the dilution. The registered proprietor

,. or authorised user has the right to prevent its use in ways that would lessen its
uniqueness. The main criterion for dilution is that the unauthorised use which would
create a likelihood of confusion or misleads the end user as to the source ofthe goods.
As per the Limitation Act, 1963, the period of limitation for filing a suit restraining the
infringement of-a indication by injunction is three years fromthe date of infringement.

86

"

/
 Infringement of
15.9.1 Acts not Amounting to Infringement Geographical Indications

Generally, the registered proprietor or an authorised user can sue the offending user
for infringement However, exceptions to this are as follows: .

1) Ifthe use of the GI has been in accordance with honest practices .

. 2) If the user has indicated the character, quality, or geographical origin ofthe goods
" and when it is not attracted under Section 22 ofthe GI Act.

3) When the registration ofthe GI is not valid and liable to be expunged.

4) If the registered proprietor has consented to the use ofthe indication.

"
5) Innocent Infringement - where the defendant's use ofthe indication is shown to
be innocent, he is still guilty of a legal wrong. Reliefby way of injunction, but not
to damage or an account of profits to the plaintiff

6) The plaintiffis debarred from suing or claiming the reliefs sought by his own conduct,
for example, the plaintiff's trade is fraudulent.

15.9.2 Trans-borderReputation

In Kornai Trading Co. & Others v. Gillette UK Limited, the Division Bench of
Bombay High Court held as fo llows: -In our judgment, it is not possible to conclude
that the goodwill or the reputation stands extinguished merely because the goods are
not available in the country for some duration It is necessary to note that the goodwill
is not limited to a particular country, because in the present days, the trade is spread
all over the world and the goods are transported from one country to another very
rapidly and on extensive scale. The goodwill acquired by the manufacturer is not
necessarily limited to the' country where the goods are freely available.

In Whirlpool Corporation and another v.N.R. Dongre and Others, after referring
to several cases, the judge observed as under: "These cases recognized that the
reputation of a trader, trading or carrying on the business in another country, can travel
to a country where he had carried no business. The traders' trans-border reputation
can be on the basis of extensive advertisements and publicity. Such a trader could
obtain injunction in a court where he was not trading to protect his reputation. The
Indian courts als9 recognize the existence oftrans-border reputation. a product and
its trade name transcends the physical boundaries of a geographical region and acquires
a trans-border or overseas or extra-territorial reputation not only through import of
goods but also by its advertisement. The knowledge and the awareness ofthe goods
of a foreign trader and its trademark can be available at a place where gOOQ~are not
being marketed, and consequently not being used."

I
I'"

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 Geographical Indications
Self Assessment Question (Spend 7 minutes)

1) Discuss the history and development of Passing Off.

••••••••••••••••••••••••••••••••••••••••••••••••••••••• , •• ~ •• 'I. ••••••••••••••••••••••••• ~ •••••••••••••••••••• 0·•••••••••••••••••••••••••••••••••••••••••••••••

.
"

"

15.10 CRIMINAL PROSECUTION

Chapter VIII ofthe GI Act details certain acts as offences punishable by imprisonment
or with fine or with both. The following are the acts deemed as offences:

d) Falsifying and falsely applying GIs as listed in Section 38.

e) Selling goods to which false GI is applied as outlined in Section 40.

f) Falsely representing a GI as registered as listed in Section 42.

r g) Improperly descnbing a place ofbusiness as connected with the GIs Registry

as listed in Section 43.

h) Falsification of entries in the Register as listed in Section 44.

The chapter apart from listing penalties for the above-mentioned offences also details
the penalty and procedure of prosecution. In the context of offences under this chapter
•
an important question is as to what constitutes meaning of 'applying geographical
indication'. The expression geographical indication has been defined in Section 2 (l)
(e). Section 37 elaborates the meaning of expression 'applying geographical indication'
and accordingly a person is deemed to apply a GI to goods when he:

• applies it to the goods themselves; or

• applies it to any package in or with which the goods are sold, or exposed for sale, or
had in possession for sale or for any purpose of trade or manufacture; or

• places, encloses or annexure any goods which are sold, or exposed for sale, or
had in possession for sale or for any purpose of trade manufacture, in or with any
package or other thing to which a GI has been applied; or
88

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 Infringement of
• uses a GI in any manner reasonably likely to lead to the belief that the goods in
Geographical Indications
connection
.
with which it is used are designated or described by that GI; or
/

• in relation to the goods uses a GI in any sign, advertisement, invoice, catalogue,

business paper, price list or other commercial documents and goods are delivered
to a person in pursuance of a request or order made by reference to the
GI as so used.

Sub-section E2) further clarifies that a GI shall be deemed to be applied to goods,

.
"

whether it is woven in, impressed on, or otherwise worked in to, or annexed or affixed
to, the goods or to any package or other thing.

Section 3.8lists two kinds of offences, namely:

~ • falsifying a GI and

.
,
\• • falsely applying a GI.

Subsection (1) states that a person shall be deemed to falsify a GI who,

• without the assent ofthe authorized user of the GI makes that GI or deceptively
similarGl

• falsifies any genuine GI, whether by alteration, addition, effacement or otherwise

The section 'is applicable to both registered and unregistered DI. In the case of the
registered GI, the complainant may obtain form the Registered a certified copy of
entry in the register in respect ofthe GI to establish proprietorship, The request has to
be made onForm GI-7: along with the copy of the registered GI as per Rule 96. In
case ofunregistered GIthe Proprietor has to establish his title by evidence of
prior of use,

Sub-section (2) further states that a person shall be deemed to falsely apply to goods
a GI when he without the assent ofthe authorized user oftheGI:

• applies such GI or a deceptively similar GI goods or any package containing

goods;

• uses a package bearing a GI, which is identical with or deceptively similar to the
GI of such authorized user, for the purpose of packaging, filling or wrapping
therein any goods other that the genuine goods ofthe authorized user ofthe GI.

Any GI falsified as mentioned above is a "false GI" and the onus lies on the prosecution
of proving the offence as committed by the accused as mentioned above. However,
the burden of proving the assent of the proprietor lies on the accused.

The penalty for falsification ofGIs and the circumstances in which a person applies
false GI are enumerated in Section 39 which states that any person-
89

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 1
Geographical Indications • who- fa1sifiesany GI;
• falsely applies to goods any GI; or
• makes, dispose of, or has in his possession, any die, block, machine, plate or
other instrument for the purpose of falsifying or of being used for falsifying a GI;
or

• applies to any goods to which an indication ofthecountry or place in-which they

were made or produced or the name the address of the manufacturer or person
" for whom the goods are manufactured is required to be applied Under Section
, 71 (power to require goods to show indication of origin), a false 'indi~ation of
such country, place, name or address; or
>

• tampers with, alters or effaces an indication of origin which has been applied to
any goods to which it is required to' be applied under Section 71; or .

• cause any of the things as detailed above,

If proven, the accused shall be punished with imprisonment for a termfiot less than six
months which may extend to three years and with a fine not less than fifty thousand
rupees which may extend to two lakh rupees. The court for special reasons to be
recorded in writing may sentence the accused to imprisonment less than three years or
with a fine less than fifty thousand rupees. The accused may take the defence that he
r.. ~

acted "without intent to defraud" and ifproven he shall be absolved ofthe liability.

A person who sells goods to which false GIs have been applied pursuant to the Section
. ,

40 shall be punishable with imprisonment or fine unless he prove~ that he-,

a) he has takeri all reasonable precautions against committing an offence and that he
at the time of commission of the offence had no reason to suspect the genuineness
of the GI or that any offence has been committed in respect ofthe goods; or

b) That on demand of the prosecutor he gave-all the information with respect to the
person form whom he had acquired such goods; or

c) That he had acted 'innocently

- ,
It was held ui Shantilai Uttamram Mehta v. Dhanji-Kanji Shah (1961) 63 Born
LR 69-that whether an accused took all "reasonable precautions" against committing
. ,

an offence against this section is one of fact and will have to be determined with
reference to the circumstances of each case.

Section 41 clearly states th~t a person who has already been convi~ted for !he a{oresaid
· offences of falsifying, falsification ofGIs or selling goods with false GIs shall be, liable
for enhanced penalty for subsequent convictions for the same offence.

Section 50 (2) clearly lays down that no court inferior to that of a Metropolitan
90

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 Infringement of
Magistrate or judicial Magistrate of first class shall try an offence under this Act and
Geographical Indications ,l

Sub-section (3) lays down that the above stated offences under Sections 39,40 and
41 are cognizable. Sub-section (4) enacts that a police officer not below the rank of
Deputy Superintendent ofPolice or equivalent, ifhe is satisfied that a cognizable offence
has been committed or is likely to be committed, may search and seize - without
warrant - the goods, die, block, machine, parts, plates, or other instruments or things
involved in the commission ofthe offence, and whenever found shall be produced
.,
before the Magistrate at the earliest. However, the proviso to Sub-section (4) clearly
mandates that the police officer before making any search and seizure shall obtain the
opinioh ofthe Registrar on the facts involved in the offence relating to the GI and shall
abide by the opinion of the Registrar. This proviso cla~se corresponds to that ofthe
proviso clause to Section 115(4) ofthe Trademarks Act, 19?9 which mandates such
prior opinion of the Registrar.

Any person aggrieved by such. seizure of goods or the machine parts or has any
interest in the same may apply to the Judicial Magistrate for restoration and the
Magistrate after hearing the applicant and the Prosecution shall make appropriate
orders.

Other offences are enumerated in Sections 42, 43, and 44 .and basically pertain to
. .
misleading the public as to the status of the GI. Section 42 clearly prescribes
imprisonment or fine or both for anybody who mjsrepresents that a GI which is not
registered is a registered GI or is registered with respect to class of goods when in fact
it is not misrepresents that registration ofa GI gives him or her an exclusive right to use
the same when in fact the registration does not. Sub-section (3) also indicates that
while using a GI to indicate registration the words "registered geographical indication"
or any other expression, symbol or sign like ''R. GI" maybe used. Section 43 prescribes
penalty for-improperly descnbing a place ofbusiness as connected with the GI Registry
and Section 44 for falsification of entries in the register. However, no court shall take
cognizahce of these offences under Sections 42, 43, or 44 except on complaint in
writing made by the Registrar or any officer authorized by him in writing.

Often such offences of infringement and piracy are committed by corporate and to fix
.responsibility for the same becomes a little difficult and hence, Section 49 has been
inserted which clearly lays down that if such offence is committed by an company
every person in charge of and responsible to the company for the conduct of its
business at the time of the commission ofthe offence shall be deemed to be guilty of
the offences and shall be liable to be proceeded against and punished accordingly.

The legislature has taken a strong view of infringement, piracy, i~lsification,

misrepresentation and has now made them penal offences.

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 . Geographical Indications
Self Assessment Question (Spend 4 minutes)

2) Discuss about Falsifying and Falsely Applying GI.

..
'

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15.11 RECTIFICATION AND CORRECTION OF THE

REGISTER
Power to cancel or vary registration and to rectify the register-

D On application made in the prescribed manner to the Appellate Board or to the

Registrar by any person aggrieved, the tribunal may make such order as it may
think fit for cancelling or varying the registration of a geographical indication or
authorized user on the ground ofany contravention, or failure to observe the
condition entered on the register in relation thereto,

2) Any person aggrieved by the absence or omission from the register of any entry,
or by any entry made in the register without sufficient cause, or by any entry
wrongly remaining on the register, or by any error or defect in any entry in the
register, may apply in the prescribed manner to the Appellate Board or to the
Registrar, and the tribunal may make such order for making, expunging or varying
the entry as it may think fit.

3) The tribunal may in any proceeding under this section decide any question that
may be necessary or expedient to decide in connection with the rectification of
the register. ,,-

4) The tribunal, of its own motion, may, after giving notice in the prescribed manner
to the parties concerned and after giving them an opportunity of being heard,
make any order referred to in Sub-section (1) or Sub-section (2),

5) Any order ofthe Appellate Board rectifying the register shall direct that notice of
the rectification shall be served upon the Registrar in the prescribed manner who
shall upon receipt of such notice rectify the register accordingly.

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 15.11.1 Correction of the Register Infringement of
Geographical Indications

Correction of register- The Registrar may, on application made in the prescribed

I

manner by the registered proprietor or the authorized usen-

• correct any error in the name, address or description ofthe registered proprietor
or the authorised user, as the case may be, of a geographical indication, or any
other entry relating to the geographical indication on the register;
"
• enter any change in the name, address or description ofthe association of persons
or of producers or any ogranization or authority, as the case may be, who is
registered as proprietor of a geographical indication on the register;

• cancel the entry of a geographical indication on the register;

\ . • strike out any goods or class or Classes of goods from those in respect of which
a geographical indication is registered from the register, and may make any
consequential amendment or alteration in the certificate of registration, and for
that purpose, may require the certificate ofregistration to be produced to him.

15.11.2 Alteration of Registered Geographical Indications

• The registered proprietor of a geographical indication may apply in the prescribed

manner to the Registrar for leave to add to or alter the geographical indication in
any manner not substantially affecting the identity thereof, and the Registrar may
refuse leave or may grant it on such terms and subject to such limitations as he
may think fit.

• The Registrar may cause an application underthis section to be advertised in the

prescribed manner in any case where it appears to him that it is expedient so to
do, and where he does so, if within the prescribed time from the date of the
advertisement any person gives notice to the Registrar in the prescribed manner
of the opposition to the application, the Registrar shall, after hearing the parties if
so required, decide the matter.

• Where leave is granted under this section, the geographical indication as altered
shall be advertised in the prescribed manner, unless the application has already
been advertised under Sub-section (2).

15.11.3 Adaptation of Entries in, Register to Amend or

Substitute Classification of Goods

• The Registrar shall not make any amendment ofthe register which would have
the effect of adding any goods or classes of goods to those in respect of which
a Geographical Indication is registered (whether in one or more classes)
immediately before the amendment is to be made or antedating the registration
of a geo graphical indication in respect of any goods: Provided that this sub-
section, shall not apply when the Registrar is satisfied that compliance therewith
would involve complexity and that the addition or antedating, as the case may 93

I
 Geographical Indications be, would not affect any substantial quantity of goods and would not substantially
prejudice the rights of aJ?yperson.

• A proposal so to amend the register shall be brought to the notice ofthe registered-
. .
proprietor and every authorised user ofthe geographical indication affected
and advertised in the prescribed manner, and may be opposed before the
Registrar by any person aggrieved on the ground that the proposed amendment
contravenes the provisions of sub-section
"

15.11.4 Appeals to the Appellate Board ..

• (1) Any person aggrieved by an order or decision of the Registrar under this
Act, or the rules made there under, may prefer an appeal to the Appellate
Board within three months from the date on which the order or decision sought
to be appealed against is communicated to such person preferring the appeal.
(2) No appeal shall be admitted ifit is preferred after the expiry of the period
specified under Sub-section (1): Provided that an appeal may be admitted
after the expiry ofthe period specified therefore, if the appellant satisfies the
Appellate Board that he had sufficient cause for not preferring the appeal within
the specified period. (3) An appeal to the Appellate Board shall be in the
prescribed form and shall be verified in the prescribed manner and shall be
accompanied by a copy ofthe orderor decision appealed against and such
fees as.maybe prescribed.

Bar of jurisdiction of courts, etc- No court or other authority shall have or, be
entitled to, exercise any jurisdiction, powers or authority in relation to the matters
referred to in Sub-section of Section 31.
'f'
Procedure of the Appellate Board- The provisions of Sub-sections (2), (3), (4),
(5), (6) of Section 84, Section 87, Section 92, Section 95 and Section 96 of the
Trademarks Act, 1999 , shall apply to the Appellate Board in the discharge of its
functions under this Act as they apply to it in the discharge of its functions under the
Trademarks Act, 1999.

Procedure for application for rectification, etc., before Appellate Board- An

application for rectification of the register made to the Appellate Board under Section
27 shall be in such form as may be prescribed.

A certified copy of every order or judgment ofthe Appellate Board relating to a

registered geographical indication under this Act shall be communicated to the
Registrar by the Appellate Board and the Registrar shall give effect to the order of
the Bard and shall, when so directed, amend the entries in, or rectify, the register in
accordance with such order.
-
15.11.5 Appearance of Registrar in Legal Proceedings
The Registrar shall have the right to appear and be heard-

• In any legal proceedings before the Appellate Board in which the relief sought
94

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 includes alteration or,rectification ofthe register or in which any question relating Infringement of
Geographical Indications
to the practice ofthe Geographical Indications Registry is raised;

• I? any appeal to the Board fr~m an order ofthe Registrar onan application for
registration of a geographical indication or authorised user-

Which is not opposed, and the application is either refused by the Registrar or is
. accepted by him subject to any amendments, modifications, conditions or
limitations, or .
"
which has been opposed and the Registrar considers that his appearance is
. .
necessary in the public interest, and the Registrar shall appear in any case if so •
directed by the Board.. ~

• Unless the Appellate Board otherwise directs, the Registrar may, in lieu of
~ppearing, submit a statement in writing signed by him, giving such particulars as
he thinks proper of the proceedings before him relating to the matter in issue or
.. of the grounds of any decision given by him affecting it, or ofthe practice of the
Geographical Indications Registry in like ~ases, or of other matters relevant to
the.issues and within his knowledge as Registrar, and such statement shall be .
evidence in the proceeding.

Self Assessment Question (Spend 5 minutes)

3) Discuss about Rectificationand Correction of the Register.

•••••••••• "," •••••••••• ..!.~.:.: ••••••••••••••••••••••••••••••••••• " •••••••••••••••••••••••••••••••••• 0.0 ••••••••••••••

15.12 SUMMARY
While the law provides protection for geographical indications, there is also need
for its proper implementation. The Geographical Indications of Goods (Registration
and Protection) Act, 1999 contains specific provisions for obtaining relief from the
courts on infringement of a registered geographical indication. Infringement action
cannot be initiated against an unregistered geographical indication. A registered
proprietor can also take civil and criminal action against an infringer for passing off
under the Law of Torts.

Suits for infringement and passing off are to be initiated in District courts having
jurisdiction. The period of limitation ofthree years apply in these cases. In civil suits
the following immediate orders can be sought:

a) for discovery of documents;

95

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 Geographical Indications
b) for preserving of infringing goods, documents or other evidence which are related
to the subject matter of the suit;

c) for restraining the defendant from d~sing of or dealing with his assets in a
manner, whiclt may adversely affec{plaintifPs ability to recover damages, costs
or other pecuniary remedies which may be finally awarded to the plaintiff
'.-

There are case laws both from England and India with regard to infringement as
" well as passing off of geographical indications. One ofthe famous such cases is
-the Spanish Champagne case from UK. Three major Indian case laws are the
following:

• Dyer Meakin Breweries v. Scotch Whisky Association, AIR 1980 Del

125

• Scotch Whisky Association v. Paravara Sahakar Shakar Karkhana,

AIR 1992 Born 295
'..
• Khoday Distilleries v. Scotch Whisky Association, AIR 1999 Mad 274

For passing off action, registration is not a factor. It is based on the goodwill acquired
through use. An action for infringement on the other hand is based on the right acquired
by registration under the Act and is possible only in respect of registered GIs.

Passing off is a form oftort. The concept of passing off, of course, has a long evolution.
Some ofthe famous cases that contributed to the development ofthe concept are the
fullowing:
-, ;-

• Southern v.How (1618)

• Calvin Klein Inc. USA v. International Apparel Syndicate

• Honda Motors Co. Ltd. v. Charanjit $jngh and Ors.

•
• Colgate Palm olive company andAnr. v. Anchor Health and Beauty Care
Pvt. Ltd.

Infringement is when a person not being an authorised user uses a registered

geographical indication falsely or in a misleading manner. The Act provides civil
as well as criminal remedies for infringement. A suit for infringement ofGI can
be instituted in any court that is not inferior to a District Court. There is no
particular form of filing the pleading except that it must contain a clear and
concise statement of material facts. Certain acts such as use in accordance
with honest practices or innocent infringement or when the registration of the
Geographical Indication is not valid are not amounting to infringements. The
Indian.courts also recognize the existence oftrans-border reputation.
96
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 Infringement of
As per the GI Act, the following acts are deemed as criminal offences which can Geographical Indications
attract imprisonment or fine or both'-

a) Falsifying and falsely applying GIs.

b) Selling goods to which false GI is applied.

c) Falsely representing a GI as registered.

d) Improperly describing a place of business as connected with the GIs.

e) Falsifi~ation 0 f entries in the.Register,

If proven, the accused will be punished with imprisonment for a term not less than six
months which may extend to three years and with a fine not less than fifty thousand
rupees which may extend to two lakh rupees.

Wrong entries in the Geographical Indication Register can be rectified and corrected
by the Registrar after following certain procedures, mostly on application by an affected
party. Appeals against the decisions ofthe Regist~ar are to be filed with the Intellectual
Property Appellate Board. The Registrar has the right to appear and be heard in the
appeals before the IPAB in certain cases involving the decisions ofthe Registrar.

15.13 TERMINAL QUESTIONS

1) What action can be taken on infringement of an unregistered geographical
indication?

2) What are the differences between passing off and infringement suits?

3) What are the criminal offences under the Geographical Indications of Goads
(Registration and Protection) Act, 1999?

4) How can mistakes in the Geographical Indications Registry can be corrected?

15.14 ANSWERS AND HINTS

Self Assessment Questions

1) Refer to Section 15.5 and 15.6

2) Refer to Section 15.10

,
3) Refer to Section 15.11

Terminal Questions

1) Refer to Section 15.3

2) Refer to Section 15.4

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 ,
Geographical Indications
3) Refer to Section 15.10

4) Refer to Section 15.11

15.15 REFERENCESAND SUGGESTED READINGS'

1) R.E V. Heuston and R.A Buckley, Salmond & Heuston on the Law of Torts.

2) WL. Morison, Unfair Competition and 'Passing-off'.

"

3) Suman Naresh, Passing-Off, Goodwill and False Advertising.

4) Andrew Christie, Of Passing off and Plastic Lemons, 49(3) TheCambridge Law
Journal

fI
5) Peter Russell, Passing offby Misdescription, 43(3) The Modem Law Review.

6) Trade Marks and Passing Off-Narayanan 6th edition,

7) Venkateswaran on Trade Marks and Passing Off 5th edition

'-.

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 ANNEXURE Infringement of
Geographical Indications

TllWESCHEDULESTWULATEDFORD~RENTACTnnTIESUNDER
GEOGRAPHICAL INDICATIONS ACT AND RULES FOR PROCESSING
APPLICATION FOR REGISTRATION
SI. Activity Time Prescribed Relevant
No Provision
1 Compliance of the notice Within one month from the date of Rule 31
under Rule 31 to remedy Receipt of the Notice.
the deficiencies in the
application for
.
Registration of GI
2 Finalization of Within three month from the date of Rule 33
examination of constitution of the consultative group.
application by the
Consultative Group

3 Advertisement Within three months of the acceptance Rule 38

of the application.

4 Notice of Opposition Within three months or further period Section 14 r/w

not exceeding one month in the a Rule 41(1)
aggregate from the date when the
Journal was made available to the
public.

5 Application for Within three months period from the Rule 41 (5)
extending time for filing date on which journal was made
notice of opposition by available to the public.
one month

6 Forwarding of the copy Within two months of the receipt of Rule 41(6)
of notice of opposition to the notice by the Registrar.
the applicant

7 Filing of counter Within two months from the receipt Rule 43(1)
.statement of the applicant of the copy of the Section 14(2)
notice of opposition from the Registrar. r/w Rule 41(6)

8 Serving of the counter Within two months from the date of Section 14(3)
statement on opponent receipt of the counter statement by the r/w Rule 43(1)
Registrar.

9 Evidence in support of Within two months from the date of Section 14(4)
opposition by the serving of the copy of the counter r/w Rule 44(1)
opponent statement or within such further period
not exceeding one month in the
aggregate thereafter as the Registrar
may on request allow.

10 Filing of application for Before the expiry of the period of two Rule 44(3)
the extension of the months from the date of serving of the
period for filing evidence copy of counterstatement on the
in support of opposition opponent.
bv one month. 99

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 Geographical Indications

11 Evidence in support of Within two months or within such Rule 45(1)

application by the further period not exceeding one
applicant month thereafter in aggregate as the
Registrar ~ay on request allow, on
the receipt by the applicant of the
copies of affidavits in support of
opposition or of the intimation that
the opponent doesn't desire to adduce
" any evidence.

12 Filing of application for Before the expiry of the period of two Rule 45(2)
the extension of the months from the date of Receipt of
period for, filing the copies of affidavits in support of \
·, evidence in support of opposition by the applicant.
application by 1 month.

.. 13 Filing of evidence in With inone month from the receipt

reply by opponent by the opponent of the copies of the
Rule 46

applicant's affidavits or within such

further periodhot exceeding one
month thereafter as the Registrar may
on request allow. .

14 Notice for hearing Within 3 months of completion of the Rule 50(1)

evidence.

15 Application for renewal May be made at any time not more Section 18(1)
of Registration ofG.I. or than 6 months before the expiration & (2) r/w Rule
authorized user of the last registration. 60 (1)

16 Notice before the At a date not less than one month and Section 18(4)
Renewal of GI or not more than three months before the r/w Rule 60(2)
authorized user expiration of the last registration.

17 Transmission of Within two months of receipt of the Section 27(1)

application and statement application by the Registrar. r/w Rule 65
for the rectification.

18 Filing of counter- Within two months or within further Rule 66

statement by registered period not exceeding two months in
proprietors the aggregate from the receipt of the
copy of the application for
rectification by Registered Proprietor.

19 Serving of the counter Within one month from the date of Rule 66
statement on the receipt of the counter statement by the
applicant Registrar.
r

20 Evidence in support of Within.two months from the date of Rule 66

Rectification by the serving of the copy of the counter
Applicant statement or within such further
period not exceeding one month in
the aggregate thereafter as the
Registrar may on request allow.
100

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 Infringement of
Geographical Indications
21 Filing of application for Before the expiry of the period of two Rule 66
the extension of the months from the date of serving of the
period for filing copy of counter statement on the
.
evidence in support of applicant.
Rectification by one
month. -,

22 Evidence in support of Within two months or within such Rule 66

Registered G.L by the further period not exceeding one
"
Registered Proprietor month thereafter in aggregate as the
~ Registrar may on request allow, on the
receipt by the Registered Proprietor of
the copies of affidavits in support of
" rectification or of the intimation that
the applicant doesn't desire to adduce
any evidence.

23 Filing of application for Before the expiry of the period of two Rule 66
the extension of the months from the date of Receipt of the
period for filing copies of affidavits in support of
evidence in support of Rectification by the Registered
Rectification by one Proprietor.
month,

24 Filing of Evidence in With in one month from the receipt by Rule 66

reply by Applicant the applicant of the copies of the
Registered Proprietor's affidavits or
.
within such further period not
exceeding one month thereafter as the .
Registrar may on request allow, .
25 Notice for Hearing Within 3 months of completion of the Rule 66
evidence.

26 Appeal to the Appellate Within 3 months from the date on Section 31

Board which the order or decision sought to
be appealed against is communicated
to such person preferring the appeal.

101

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 NOTES

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MPDDlIgnou-P.O.1K March 2017 (Reprint)

ISBN: 978-81-266-6315-6