Explain how the protection of geographical indications takes place at the national and international level
A geographical indication (GI) is a name or sign used on certain products which corresponds to a specific geographical location or origin (e.g. a town, region, or country). The use of a GI may act as a certification that the product possesses certain qualities, is made according to traditional methods, or enjoys a certain reputation, due to its geographical origin.
Examples include Darjeeling tea, Basmati Rice, Bikaneri Bhujia Feni (liquor) from Goa, Paithani and Banaras saree, Kanchipuram silk saree, Nagpur oranges, Alphonso Mangoes (many other varieties), Kolhapuri chappals, Lonavala Chikki, Tirunelveli Halwa,foodstuffs like Mysore rasam and many others
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
Protection of GI in India
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.
• 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;”
• GI Registry at Chennai is 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)
S. 9 lays down the following prohibitions to registration of certain GI:-
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 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
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.
• 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’.
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.
• 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.
• Higher level of protection for notified goods (TRIPS ). This will enable such higher level of protection not only in respect of wines and spirits but for other goods as may be decided by the Govt.
• The Act says that in respect of the such notified goods, infringement shall include, interalia, using of such expression as ‘Kind”, “style”, “imitation”, or like expressions by unauthorised users. Such additional protection requires no proof of likelihood of deception. Such prohibition also applies to translations and the use of such GI for notified goods would be forbidden whenever the goods do not come from the area in question.
• Also a trade mark shall not be granted, if it contains a GI for Notified goods and the products do not originate from the region in question.
• The Act makes no difference between an Indian GI or a foreign GI.
• The Act apart form according statutory protection to this form of Intellectual Property would ensure and orderly marketing of premium products. The civil and criminal legal remedies available under the statute would facilitate business confidence among the producers and manufacturers.
Agreement on Trade-Related Aspects of Intellectual Property Rights
The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) defines “geographical indications” as indications that identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin. Examples of geographical indications from the United States include: “FLORIDA” for oranges; “IDAHO” for potatoes; “VIDALIA” for onions; and “WASHINGTON STATE” for apples. Geographical indications are valuable to producers for the same reason that trademarks are valuable. Geographical indications serve the same functions as trademarks, because like trademarks they are: source-identifiers; guarantees of quality; and valuable business interests. Although, as mentioned above “geographical indications” are often associated with Europe, the U.S. system for protection of geographical indications can be dated to at least the Trademark Act of 1946.
In 1994, when negotiations on the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) were concluded, governments of all WTO member countries (151 countries As of August 2007) had agreed to set certain basic standards for the protection of GIs in all member countries. There are, in effect, two basic obligations on WTO member governments relating to GIs in the TRIPS agreement:
1. Article 22 of the TRIPS Agreement says that all governments must provide legal opportunities in their own laws for the owner of a GI registered in that country to prevent the use of marks that mislead the public as to the geographical origin of the good. This includes prevention of use of a geographical name which although literally true “falsely represents” that the product comes from somewhere else.
2. Article 23 of the TRIPS Agreement says that all governments must provide the owners of GI the right, under their laws, to prevent the use of a geographical indication identifying wines not originating in the place indicated by the geographical indication. This applies even where the public is not being misled, where there is no unfair competition and where the true origin of the good is indicated or the geographical indication is accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like. Similar protection must be given to geographical indications identifying spirits.
Article 22 of TRIPS also says that governments may refuse to register a trademark or may invalidate an existing trademark (if their legislation permits or at the request of another government) if it misleads the public as to the true origin of a good. Article 23 says governments may refuse to register or may invalidate a trademark that conflicts with a wine or spirits GI whether the trademark misleads or not.
Article 24 of TRIPS provides a number of exceptions to the protection of geographical indications that are particularly relevant for geographical indications for wines and spirits (Article 23). For example, Members are not obliged to bring a geographical indication under protection where it has become a generic term for describing the product in question. Measures to implement these provisions should not prejudice prior trademark rights that have been acquired in good faith; and, under certain circumstances — including long-established use — continued use of a geographical indication for wines or spirits may be allowed on a scale and nature as before.