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Geographical Indications
An Indian Perspective

Shiv Kothari 28th April 2011

Scope of Presentation

Geographical Indications Introduction

Current International debate on Geographical Indications

Overview of the Indian GI registration system

Geographical Indications developing countries as a tool for

Intellectual Property
Outcome of ones intellectual efforts Different from other forms of property Incentive to create reward Advantage in Competition - creates Monopoly right

Sources of IP Law
Article 38 ICJ Treaty Law Customary International Law Precedents and Doctrines General principles of law

TRIPS Agreement
Copyright and related rights Trade marks Geographical Indications (GIs) Industrial designs Patents Layout designs of integrated circuits Protection of undisclosed information Control of anti-competitive practices in contractual licences

GIs the concept

GIs are essentially the DNA of Nature impregnated into the Mother Earth difficult to clone and beyond scientific calculation. GIs are about culture, geography, traditions, heritage and traditional practices of people and countries.

Geographical Indications
Any noun or adjective (need not necessarily be a geographical name) that designates geographical location and would tend to be regarded by buyers as descriptive of the geographical location of origin of goods.

GIs and Developing Countries

Instrument of Rural Development - promotion of products having certain characteristics could be of considerable benefit to the rural economy, in particular to less-favored or remote areas, by improving the incomes of farmers and by retaining the rural population in these areas (EC Regulation 2081/92) e.g. Italian Tuscan Olive Oil sold at premium ever since its registration in 1998. Differentiation of products can lead to: Increase in prices of the protected products Allows genuine producers to capture the rents, entry barriers for fakes More Antiguan Coffee and Darjeeling Tea sold than produced - shows large market for genuine products. Issue is whether the framework is appropriate for developing countries.

Significance
At international level Champagne, Havana, Tequila, Scotch Whisky, Bordeaux, Burgogne, Irish Whisky, Porto, Cognac, Sherry, Camembert, Gouda and many others are some of the popular examples. We purchase these products simply for their qualitative properties attributing the same to their geographical origin. From ancient times every region had its claim to fame for its products for example Arabia for horses, China for its silk, Dhaka for its muslin, Venice for glass, India for its spices.

Economic Importance and products sell at premium. Basmati rice exports form India and Pakistan, Darjeeling tea, a registered GI sells at a premium world over.

The Statute
In India the Geographical Indications of Goods (Registration and Protection) Act, 1999 came in force with effect from September 2003. The salient features of the Act are defines Geographical Indication, provides a mechanism for registration of GIs, establishes a GI Registry, elaborates the concept of authorised user and registered proprietor, higher level of protection for notified goods and remedies for infringements.

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Definition
Section 2(e) of the Act defines a GI as : geographical indication, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

Explanation: - For the purposes of this clause, any name which is not the name of a country, region or locality 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;

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Salient Features
Goods means any agricultural, natural or manufactured goods or

any goods of handicraft or of industry and includes food stuff.

Producer also defined Produces, deals, exploitation , manufactures as the case may be. Therefore to qualify for protection an indication must: 1. Identify the good and its area of geographical origin. 2.Possess a given quality, reputation or other characteristics which 3.Is essentially attributable to its area of geographic origin. Manufactured goods over a period of time while agricultural goods easily discernable.

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Registration
GI Registry at Chennai having all India jurisdiction.

Registry maintains a Register of GI which is divided in to two parts, Part A and Part B. Part A contains details of distinguishing characteristics of the goods and of the registered proprietor which would be an association of persons or producers or a body representing interest of such producers like for instance the Tea Board, Coffee Board, Spices Board etc.
To include all producers a collective reference may be made in the application. Part B contains particulars of authorised users of GI such as those producers (traders and dealers) who have not been included in the original application for registration. (this provision included due to socio economic factors

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Prohibitions in Registration
S. 9 lays down the following prohibitions to registration of certain GI:
the use of which would be likely to deceive or cause confusion; or the use of which would be contrary to any law for the time being in force;or which comprises or contains scandalous or obscene matter; or which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or which would otherwise be disentitled to protection in a court; or 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; or 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.

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Application
Section 11 of the Act deals with application for registration, its contents, making and filing, acceptance or refusal. Once filed the Registrar will have the Application examined and may consult a expert group to verify the technical details. Thereafter the Examination report is issued to which the Applicant files a reply and on satisfaction the Registrar accepts the Application which will then be published in the GI journal. Any person then can file a Notice of Opposition within a maximum period of four months of publication in the Journal. Thereafter the matter will for reply, evidence and then hearing. If the Registrar accepts the Application then a certificate of registration issued. Registration is valid for ten years but can be renewed from time to time on payment of renewal fee. Similar procedure followed for registration as an authorised user.

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Effect
The Act provides that once the GI is registered, an infringement action can be initiated both by the registered proprietor and by authorised users whose names have been entered on the Register. A registered GI is infringed by a person who not being an authorised user, uses such GI by any means in the designation or presentation that indicates or suggests that such goods originates in a geographical area other than the true place of origin of such goods in a misleading manner or uses a GI which constitutes an act of Unfair competition (Act explains it as dishonest practices). The Act provides for both civil and criminal remedies for infringement. The civil includes imposition of fines, forfeiture to government of all goods and things means of which the offence had been committed, damages, account of profit, together with or without any order for delivery of the infringing label and indications for destruction or erasure. The criminal remedies includes imposition of fine or imprisonment or both.

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GI v/s TM
In addition the statute vide section 25 prohibits registration of GI as a trade mark. The Registrar of Trade Marks shall suo motu or at the request of interested party refuse or invalidate the registration of a trade mark which consists of a GI with respect to goods not originating in the territory which such GI indicates, if use of such a GI as a trade mark would confuse or mislead the public as to the true origin of the goods. However, the Act protects use of trademarks that consists of a GI where it is registered in good faith under the Trade Marks Act or where the right to such trade mark was acquired prior to coming in to force of the Act.

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What is the GI extension issue?

o Article 22 deals with GIs at a general level. o Article 23 offers an additional level of protection to wine and spirit GIs o Additional level means that member states are to protect against incorrect usage of the relevant GI even without the requirement of deception and confusion o Under Article 22 they are to protect against misleading and incorrect usage.

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To illustrate.
Article 22
o The expression Indian Gruyere cheese actionable only on proving that:
Gruyere as a cheese is well known in India The said expression would be misleading as to geographical origin

Article 23
o The expression Indian Champagne actionable:
Merely on the ground that such usage is incorrect (despite the de-localizing factor Indian)
Not necessary to prove that it is well-known in India.

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What is so unfair about Art. 23?

In the same provision dealing with one type of product, there are two levels of protection. Benefits to only wine producing countries most of them are developed countries Most developing countries do not have wines as a major revenue earning product mostly their products are handicrafts, rice, tea coffee, spices etc. Their economies are heavily dependant on such products Given the disparities, these products might find it difficult to compete in international markets Take the case of India which has a diversity in every area be it culture, traditions, food, art forms, crafts.

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Ground realities of Article 23

Scope of Article 23 protection
o Wine and spirit GIs are protected against qualifiers such as kind, type, style, imitation etc., as well as de-localizing elements. There is no need to prove deception and confusion o Hence, these GIs are spared from varying and subjective interpretations of unfair competition by various national courts thereby leading to an equal and even legal status of the GI. o Consequently, the GI never becomes generic

What is not under the purview of Article 23?

o Protects only identical GIs - Champagne v. Champagne
o Does not protect expressions deceptively similar to a GI - Cognac v.

Calognac

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Practical effects of protection under Article 23

Wine and spirit GIs get an additional level of protection and will never become generic once protected

Other GI owners have to invest huge resources to defend their GIs in foreign markets
WTO members can also enter into negotiations for increased level of protection of wine and spirit GIs with other members without letting the exceptions in Article 24 affecting them For instance, if France wants to hold negotiations with US for Champagne, US cant use Art. 24.4 exception Whereas if India wants to hold negotiations with the US for Darjeeling or Basmati misuse, US can use the 24.4 and 24.5 exceptions The protection offered to GIs under TRIPS amounts to having double standards

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Indian GI Act Framework

GIs can be granted to an individual, a family, a partnership, a corporation, a voluntary association etc or any 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. GIs protect and reward traditions while allowing for products to evolve over time GIs can be protected over long periods as long as the collective tradition is maintained Indian Act protects GIs for an initial period of 10 years, which can be renewed after the expiry of the initial period of protection for another 10 years GIs would cease to be on the register if not renewed six months after the expiration of the last registration

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Indias famous GIs

Banarasi silks Paschmina shawls Kashmir carpets Basmati rice Darjeeling tea Assam tea Bengal Cotton Alphonso Mangoes Pochampalli silk Chanderi silk Hyderabad pearls Kerala Nendran bananas Jaipur silver jewellery Nilgiri tea Coorg coffee Mysore sandal products Mysore silk Malabar pepper Kancheepuram silks Lonawala chikis (food stuff) Nilgiri tea Coir products from Kerala Cardamom from Kerala Aranmula mirrors Nagpur oranges Phulkari embroidery work

Geographical Indication
Darjeeling Tea Pochampally Ikat Chanderi saree Kotpad Handloom fabric Kota Doria Kancheepuram silk Tea

Product
Textile Textile Textile Textiles Textiles

State
West Bengal Andhra Pradesh Guna, Madhya Pradesh Koraput, Orissa Kota, Rajasthan Tamil Nadu

Date of Registration
29.10.04 31.12.04 28.01.05 02.06.05 05.07.05 02.06.05

Bhavani Jamakkalam
Mysore Agarbathi Aranmula Kannadi Salem Fabric Solapur Chaddar Solapur Terry Towel Mysore Silk Kullu Shawl Madurai Sungudi Kangra Tea

Textile, carpets
Incense sticks Metal Mirror Textiles Textiles Textiles Textiles Textiles Textiles Tea

Erode,Tamil Nadu
Mysore, Karnataka Kerala Tamil Nadu Maharashtra Maharashtra Karnataka Himachal Pradesh Tamil Nadu Himachal Pradesh

05.07.05
02.06.05 19.09.05 19.09.05 19.09.05 19.09.05 28.11.05 12.12.05 12.12.05 12.12.05

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Geographical Indication
Coorg Orange

Product
Horticulture Product

State
Karnataka

Date of Registration
30.01.2006

Mysore Betel Leaf

Nanjanagud Banana Mysore Sandalwood Oil Mysore Sandal Soap Bidriware

Horticulture Product
Horticulture Product Essential Oil Soap Handicrafts

Karnataka
Karnataka Karnataka Karnataka Karnataka

30.01.2006
30.01.2006 30.01.2006 30.01.2006 30.01.2006

Channapatna Toys and Dolls

Coimbatore Wet Grinder Mysore Rosewood Inlay Kasuti Embroidery Mysore Traditional Paintings

Handicrafts
Wet Grinder Handicrafts Embroidery (Textiles) Paintings

Karnataka
Tamil Nadu Karnataka Karnataka Karnataka

30.01.2006
30.01.2006 30.01.2006 30.01.2006 30.01.2006

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Case of Basmati Rice

Bas Aroma, Basmati Aromatic Rice Production area belt on Northern India and adjacent part of Pakistan Unique Characteristics long grain (increases substantially on cooking), distinctive aroma and taste. Efforts to usurp the GI Case for joint registration India and Pakistan.

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GI Registration in SAARC
Economic potential untapped
Products similarity - distinctive signs for distinct products Need to address territoriality - SAARC cooperation needed Need to protect at home essential clause of TRIPS Agreement - GI registration not in itself can protect valuable reputation.

Need to take this as a development issue

Role of the Governments

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Thank You !!!