Protection of Geographical Indications (GIs) From Infringements- An Indian Perspective

Introduction

Geographical indication is an indication which specifies the geographical origin of a product and links it with the essential qualities that are present in the product due to the place of origin. It is mainly used to identify agricultural, handicraft, manufacturing goods from a particular territory which has developed a good will in the market due to its special characteristics. The said characteristics include temperature, humidity, soil etc. associated with the territories that are unique, e.g. Darjeeling tea. Geographical indication can be a mark defined by words or numbers or a combination of both. In international transaction, marks of origin include marks of the country of origin and geographical indications.

The roots of GI can be traced back to the Egyptian Civilization wherein the brick-makers marked bricks to identify origination. In ancient Greece, Thasian wine had demand since it came from island of Thasos in Macedonia. Given India’s historically vibrant and famous craft traditions, a number of craft genres and products from the crafts sector qualify as GI goods.[1] If harnessed properly, trade gains from enhanced sale of these GI goods could provide tremendous socio-economic benefits to the producers. India, in compliance with the TRIPS Agreement of the WTO, enacted ‘The Geographical Indications of Goods (Registration and Protection) Act, 2003 to provide protection to the goods registered under the Act. Ten years down the line, evidence from the ground suggests that while there has been some progress in terms of number of goods registered under the Act, there remain a number of issues and concerns in the context of harnessing the potential commercial benefits out of GI registration in India. This paper aims to discuss relevant international and national legal regimes aims at GI’s, further it throws some light on recent case laws decided by Indian courts and finally ends with conclusion.

Definition of GI:

Geographical Indication (GI) is defined as any indication that identifies a good as originating from a particular place, where a given quality, reputation or other characteristics of the good are essentially attributable to its geographical origin. TRIPS agreement runs[2] ‘Geographical indications are, for the purposes of this Agreement, indications which 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 geographical origin.’[3]

The World Intellectual Property Organisation (WIPO) states that GIs are ‘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.’[4]

From the above two definitions it can be seen that ‘A Geographical Indication identifies a good as originating in a delimited territory or region where a noted quality, reputation or other characteristic of the good is essentially attributable to its geographical origin and/or the human or natural factors there.’[5]

Significance of Geographical Indications

A geographical  indication  is  a  geographical  name  signifying  that  a  product  originates  in  a country or a specific locality. Recently, geographical indication (GIs) emerged as one of the most important instrument of protecting quality, reputation or  other  character  of  goods  essentially  attributable  to  their  geographical  origin.[6] It is valuable to providence, a ‘source identifier’ and indicator of quality. GI helps to promote its goods “eligible for relief from acts of infringement and/or unfair competition”.

 The concern shown  by  the  World  Intellectual  Property  Organization  (WIPO)  and  World  Trade Organization  (WTO)  gave  new  impetus  to  protection  of GIs. According  to  the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications  “a  geographical  indication  is  best  protected  under  trademark  and  unfair competition  law.  Trademark  having  acquired  in  good  faith  had  to  be  protected  against conflicting  geographical  indications.”[7]  Protection  of  GI  prevent  third  parties  from  passing  off  their  products  as  those originating  in  the  given  region.  Famous examples are ‘Champagne’ for sparkling wine and ‘Roquefort’ for cheese from areas of these names in France or ‘Darjeeling’ for tea from this district in India.  It  is not necessary  for  these  indications  to be geographical names as  in  the case of ‘Feta’ for cheese from Greece or ‘Basmati’ for rice from India and Pakistan as there are no places, localities or regions with these names. Plant varieties developed with traditional knowledge  and  associated  with  a  particular  region  can  also  be  protected  as  geographical indications. The advantage in such protection is that it is not time-limited. However, needless to say, commercial benefits can be derived  from  the  protection  of  geographical  indications  only  when  the  name  becomes reasonably famous.[8]

International and National Legal Regimes on Geographical Indications (GIs)

With the expansion of international trade during the 19^th century, GI protection was included in international agreements on the protection of intellectual property.[9] France was the first country to take the initiative and enact a comprehensive system for the protection of geographical indications that later influenced the making of both national laws and international treaties.[10]

GI protection was part of the Paris Convention for the Protection of Industrial Property (1883), but under a different label (‘false indications’). The 1891 Madrid Agreement for the Repression of False or Deceptive Indications also addresses GIs, though it has relatively few parties. In the 20th century, the Lisbon Agreement on Appellations of Origin (1958) set the standard until the negotiation of TRIPS. National law on GIs is even older. The TRIPs Agreement’s protection of geographical indications is quite unusual in that the Agreement first provides for general protection for all geographical indications, and then affords special, elevated protection to geographical indications that concern wine and spirits.[11]

An interesting aspect of the TRIPs Agreement’s on geographical indications protection is the fact that the TRIPs Agreement itself calls for continued negotiations regarding further protection of geographical indications in certain areas of the Agreement.

Registration of Geographical Indications in India

The Register of Geographical Indications will keep a Geographical Indications Registry at the head office Chennai. In that register, all registered geographical indications with the names, addresses and descriptions of the proprietors, the names, addresses and descriptions of authorised user and such other prescribed matters relating to registered geographical indications are entered. Such registers may be maintained wholly or partly on computer. The Registrar can keep the records wholly or partly in computer floppies or diskettes or in any other electronic form, subject to prescribed safeguards. A copy of the register and such other documents as may be notified by the Central Government in the official Gazette shall be kept at each branch office of the G.I. Registrar. The Register has two parts. Part A contains particulars relating to the registration of geographical indications. Part B contains the particulars relating to the authorised users. Registration is required both for a geographical indication as well as an authorised user. A geographical indication is registered for a period of ten years. The registration can be renewed from time to time for further ten years from the expiration of last registration. An authorised user is registered for a period of ten years, or till the date of expiry of the registration of the geographical indication for which the authorised user is registered whichever is earlier. For registration, or renewal of registration an application is to be made in the prescribed format accompanied by the prescribed fee in each case. If the registration is not renewed when due, the geographical indication or the authorised user for it, as the case may be, is removed from the register.

However, an application to continue the registration can be made within six months from the expiration of the last registration. Registration of a geographical indication is not mandatory under the Act. However, if a geographical indication is registered, it affords a better legal protection to authorised users in cases of infringement of registered geographical indications. No infringement proceedings can be launched under the Act, for an unregistered geographical indication, either to prevent infringement or to recover the damages. In case of two or more authorised users, they would have co-equal rights as against other persons and no one will have the exclusive right to the use of any of those geographical indications.

Any right to a registered G.I. is not the subject matter of assignment, transmission, licensing, mortgage or any such agreement. But on the death of an authorised user, the user’s right in a registered G.I. passes on to his successor.

The following are the geographical indications that cannot be registered in India:

1. Things which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin, or which have fallen into disuse in that country
2. Things which comprise or contain any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India
3. Things which would otherwise be disentitled to protection in a court
4. The use of which would be likely to deceive or cause confusion
5. The use of which would be contrary to any law for the time being in force
6. Things which comprise or contain scandalous or obscene matter
7. Things 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.

Infringement of Registered Geographical Indications and Appeals

A registered geographical indication is infringed by a person who, not being an authorised user thereof uses such geographical indication by any means in the designations or presentation of goods that indicates or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner which misleads the persons as to the geographical origin of such goods. Hence the infringement of registered G.I. occurs if a person:

Ø  Uses the G.I. on the goods or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner which misleads the public; or

Ø  Uses the G.I. in a manner that constitutes an act of unfair competition; or

Ø  Uses another G.I. to the goods in a manner, which falsely represents to the public that the goods originate in the territory, region or locality in respect of which such registered G.I. relates.

Suit and Relief for Infringement

A suit for infringement of a registered G.I. is to be instituted in a District Court having jurisdiction to try the suit. The court can grant to the plaintiff relief in the form of injunction and, at the option of the plaintiff, either damages or account of profits together with any order for destruction or erasure of infringing labels and indications, if necessary.

However, the court shall not grant relief by way of damages or account of profits, if the defendant satisfies the court that he was unaware and had no reasonable ground to believe that the GI complained of was on the register in the name of plaintiff and that when he became aware of the existence and the nature of the plaintiff’s right in the geographical indications, he forthwith ceased to use it.

Appeals against an order or decision of the Registrar or the rules framed under the Act lie to the Appellate Board, established under the Trade Mark Act, 1999. The aggrieved person may prefer an appeal to the Appellate Board normally within three months from the date on which the order or decision is communicated. After this period, no appeal is admitted. A person will be considered to have committed offence under the G.I. Act in the following circumstances:

i) falsely applying geographical indication;

ii) falsifying a geographical indication.

In a prosecution for falsifying or falsely applying a geographical indication to goods, the burden of proving the assent of the proprietor lies with the accused.

Penalty for Offences

Under Section 67 of the GI Act, the civil remedies include injunctions (ex parte or any other interlocutory order) as well as damages or an account of profits, at the option of the plaintiff. This may be coupled with an order for the delivery-up of the infringing labels and indications for their destruction or erasure. In 2006, the Delhi High Court in the case of the Scotch Whisky Association v. Golden Bottling Limited,[12] granted the plaintiff a permanent injunction as well as damages of Rs. 5,00,000/- under Sec. 67 of the GI Act. It also asked the defendant to bear the expenses of the litigation which was Rs. 3,10,000/­-. In this case, Scotch Whisky had a GI tag and the plaintiffs contended that the defendants were infringing on their GI tag by selling its whisky under the name ‘Red Scot’. The Court held that the plaintiffs intellectual property rights had been infringed upon and granted them relief under the GI Act.

Sections 39 and 40 of the GI Act, state that the penalty for applying false geographical indications and for selling goods to which false geographical indications are applied is imprisonment which may be between six months to three years and fine which may be between fifty thousand to two lakh rupees.

Moreover, there are other remedies available to the rights holder under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.[13] These rules recognize geographical indication as intellectual property and the GI Act as intellectual property laws. Under these rules, the rights holder can record its registered GI with the Customs authorities. Once the procedure under these guidelines are complied, the Customs authorities have the power to seize imported goods at the border, if there is prima facie evidence or reasonable grounds to suspect that they are infringing on the geographical indication of the rights holder, without obtaining any orders from the Court.

Enforcement of Geographical Indications

The remedies available for protection of geographical indications may broadly be classified into Criminal remedies & Civil remedies

Criminal Remedies

The Geographical Indications of Goods (Registration and Protection) Act, 1999 contains penal provision for violation of various provisions relating to geographical indications given below:

(i) Falsifying and falsely applying geographical indications to goods.[14]

(ii) Selling goods to which false geographical indications is applied.[15]

(iii) Falsely representing a geographical indication as registered.[16]

(iv) Improperly describing a place of business as connected with the geographical indications registry.

(v) Falsification of entries in the register.

The punishment prescribed for the aforesaid offences varies from six months to three years imprisonment and a fine of not less than Rupees fifty thousand but may extend to Rupees two lakh. However, the court for adequate and special reasons in writing may impose lesser punishment The Act[17] also prescribes for enhanced penalty for second or subsequent conviction.

The Act [18] empowers the Court to direct the forfeiture to Government of all the goods and things by means of or in relation to which certain offences mentioned therein have been committed. The Act empowers the Deputy Superintendent of Police to take cognizance of geographical indications offences and may search and seize things and articles involved therein

Civil Remedies

The suit for infringement has to be filed in court not inferior to that of a district court having jurisdiction. In any suit for infringement of geographical indications the defendant pleads that registration of the geographical indications relating to plaintiff is invalid, the court trying the suit shall:

(i) if any proceedings for rectification of the register to the geographical indications relating to plaintiff or defendant are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the geographical indications relating to plaintiff or defendant is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.[19]

Case-Laws

The Indian judiciary has played a significant role, particularly in the absence of any enforced legislation, in protecting GIs. They have entertained petitions in cases of infringement of GIs that misleads the consumer as to the place of origin or constitutes unfair competition. India has  also  taken  legislative  measures  by  enacting  the  Geographical  Indications  of  Goods (Registration  and Protection) Act,  1999  along with  the Geographical  Indications of Goods (Registration and Protection) Rules, 2002 which on implementation would go a long way to protect GIs and provide a model for other countries to follow.[20]

In Imperial Tobacco Co. v.  Registrar, Trademarks[21]  the Calcutta  High  Court  explained  to  the following concept of “geographic term” namely: Geographical terms and words in common use designate a locality, a country, or a section of country which cannot be monopolized as trademarks; but a geographical name not used in geographical  sense  to  denote  place  of  origin,  but used  in  an  arbitrary  or  fanciful way  to indicate  origin  or  ownership  regardless  of  location,  may  be  sustained  as  a  valid trademark……A geographical name according to its ordinary signification is such mark inherently or otherwise incapable of registration subject to minor exceptions.

Pochampalli Ikat Case[22]

Pochampally is a small town in Nalgonda district of Andhra Pradesh, a handloom cluster is known for its very unique Ikat[23] design for centuries. It has about 5000 weavers who weave the handloom with traditional design called Ikat. With the objective of converting this uniqueness into commercial value, the Textiles Committee launched a cluster initiative under its Cluster Development Programme to facilitate the local associations “Pochampally Handloom Weavers’ Co Op. Society Ltd”, an autonomous society registered under the society Act 1860 and “Pochampally Handloom Tie & Dye Silk Sarees Manufactures Association” an association established under the law are the two bodies that are responsible for production and marketing of Pochampally Ikat.

The Directorate (Handlooms & Textiles) Government of Andhra Pradesh, Weavers Service Centre (WSC), APTDC, NABARD have been involved in the process of GI registration. The services of APTDC were used for filling before GI registry and NABARD has provided funds under its DRIP to cover the costs involved.[24] The famous Pochampally ikat tie-and-dye sari has won Intellectual Property Rights protection, more than a year after its first applied. It is the first traditional Indian craft to receive this status of geographical branding. The design won protection in the Geographical Indications category. This will protect the Pochampally handloom sari from unfair competition and counterfeit. An estimated one hundred thousand weavers in Andhra Pradesh may benefit from the granting of Intellectual Property Rights to the traditional tie-and-dye fabric, which has seen falling demand due to competition from cheaper fabrics copying from their design.

There was a law suit filed under GI Act on infringement of GI of POCHAMPALLI IKAT.  In this case plaintiffs are manufacturing POCHAMPALLI IKAT fabric made of natural materials such as cotton or silk or a combination of both, having designs that are evocative of the diffused diamond or chowka design. But the defendant was selling some sarees by using false GI HYCO POCHAMPALLI. To protect their legal rights the plaintiffs filed a suit against defendants’ for injunction restraining infringement of GI, passing off, unfair, competition.  After hearing contentions from both the parties the court said ‘ the adoption of the mark HYCO POCHAMPALLI by the defendant is blatantly dishonest and malafide attempt to derive unfair advantage by creating the impression that the Defendants products have some connection, nexus, association, affiliation with or endorsement by the plaintiffs. Eventually, the verdict was not delivered and the case was settled out of court after the errant party pleaded innocence on the account of his ignorance about the Act. Finally the suit was decreed in favour of plaintiff.

Tea Board, India vs. I.T.C. Limited[25]

The dispute is on “DARJEELING” between Tea Board of India and ITC Limited. The Tea Board asserts exclusivity over “Darjeeling” and ITC maintains that there is more to “Darjeeling” than the tea that is grown there. Tea Board, India (registered proprietor of the GI “Darjeeling”) took ITC Limited to court for the use of the mark ‘Darjeeling’ for its Lounge at the hotel in Calcutta. Under the application for interlocutory injunction, concerned with the existence of a prima facie case of the Tea Board against ITC based on the Trade Marks Act, 1999 (TM Act) and The Geographical Indications of Goods (Registration & Protection Act, 1999 (GI Act), ITC sought to cut the claim contending that grievances with respect to rights breached under the GI Act is only restricted to goods and not against any services. ITC wanted the GI Act to be understood as providing protection only to goods against goods and not having room enough to allow a complaint by a registered proprietor of a GI against any service. The argument put forth was that the GI Act seeks to protect indications with respect to goods only, identified on account of quality or reputation or other characteristics attributable to their geographical origin and cannot be extended to any services.

The Court concluded the Tea Board’s prima facie failure in proving violation of its registered certification trademark in terms of sec 75 of the TM Act as it had not registered its name as holder of the mark DARJEELING in respect of hotel business but for the purpose of certification of tea as one grown in Darjeeling where benefit of Sections 28 and 29 of the TM Act is not available.

The decision raised interesting ramifications on the GI marketplace in India, as the Calcutta High Court held that the word “Darjeeling” is not the exclusive right of the Tea Board, and decided the case in favour of the Kolkata hotel ITC Sonar and its Darjeeling Lounge. Although the situation of GI protection at the domestic level is somewhat manageable, the same is not true in regards to protection of GI at the international level.[26] For example, on an average around 4 crore kgs of tea per annum is being sold globally as ‘Darjeeling tea, ’ whereas the production of authentic Darjeeling tea is around 90 lakh kgs only.

Very recently master craftsmen from Varanasi are being lured to China to produce these imitations with cheaper Chinese silk due to which imitations of the world renowned ‘Banarasi’ sarees are flooding the Indian market over the past several years, particularly in the Surat region of the Indian state of Gujarat. These imitations cost only one‐tenth of the price of an original ‘Banarasi’ saree, and therefore posing a threat to the competition in India.[27] It is for this reason that large section of weavers in Varanasi are now forced to look for other means of livelihood.

Conclusion:

Intellectual property is an integral part of international trade. Since an intelligent and effective use of knowledge always contributes in the national economic prosperity. Given its commercial potential, the legal protection of GI assumes enormous significance. Without such protection, competitors not having legitimate right on a GI might ride free on its reputation. Such unfair business practices result in loss of revenue for the genuine right holders of the GI and also misleads the consumers. Moreover, such practices may eventually hamper the goodwill and reputation associated with the GI. In order to rule out its misuse and to tap the potential economic and socio economic benefits emanating from this IP, it is essential to ensure an appropriate legal protection for GIs at the national as well as the international level.  Infringement of GIs is an issue which is still generating controversies and the outcome of such controversies are extremely important from the point of view of a developing country like India, which has in its possession of number of world famous Geographical Indications. Finally the need of the hour is that the Government of India should create awareness to rural producers regarding registration of GIs so that their products will be marketed globally it will generate huge foreign exchange to exchequer.

Submitted by:
Dr. P. Sree Sudha
Faculty of Law, Dr. B. R. Ambedkar University, Etcherla, Srikakulam, Andhra Pradesh, India,