Unit -2 IPR TOPIC- A,B,E

CONCEPT OF GEOGRAPHICAL INDICATIONS

The concept of Geographical Indications (GI) is based on the idea that certain goods derive
their unique quality, reputation or characteristics from the geographical region in which they
are produced. The essential foundation of GI protection lies in the link between the product
and its place of origin.

Historically, geographical names were used to indicate that certain goods possessed
distinctive qualities attributable to climate, soil, human skill, or traditional methods. Over
time, such geographical identifiers became commercially valuable because consumers
began associating them with assured quality and authenticity.

The modern definition of Geographical Indications is provided under Article 22(1) of the
TRIPS Agreement, which defines GIs as:

“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.”

In India, the concept is codified under the Geographical Indications of Goods (Registration
and Protection) Act, 1999.

Thus, the concept of GI revolves around three core elements:

1.​ Identification of goods.

2.​ Geographical origin.
3.​ Essential link between quality/reputation and that origin.

The indication may be:

●​ A geographical name (e.g., Darjeeling),

●​ A non-geographical term (e.g., Basmati),
●​ A symbol or representation identifying a region.

NATURE OF GEOGRAPHICAL INDICATIONS

The nature of Geographical Indications is distinct from other intellectual property rights such
as trademarks or patents.

(a) Collective Right

A GI is not an individual proprietary right. It belongs collectively to the producers of a

particular geographical region. It cannot be privately owned by a single person.

(b) Non-transferable
Unlike trademarks, GIs cannot be assigned, licensed freely, or transferred. The right is
attached to the geographical area and the community of producers.

(c) Link with Territory

The most important feature is the inseparable connection between the product and the
geographical territory. The quality must be essentially attributable to natural factors (climate,
soil) or human factors (skill, tradition) or both.

(d) Public Good Character

GIs serve public interest by:

●​ Protecting consumers from deception.

●​ Protecting producers from unfair competition.
●​ Preserving traditional knowledge and cultural heritage.

(e) Perpetual Protection (Subject to Renewal)

Under Indian law, GI registration is valid for 10 years but can be renewed indefinitely as long
as the characteristic link continues.

SCOPE OF GEOGRAPHICAL INDICATIONS

The scope of GI protection includes:

(1) Types of Goods Covered

Under TRIPS and Indian law, protection applies only to goods, not services.

Goods include:

●​ Agricultural goods
●​ Natural goods
●​ Manufactured goods
●​ Handicrafts
●​ Foodstuffs

(2) International Scope

Protection of GIs is governed internationally by:

●​ Paris Convention for the Protection of Industrial Property

●​ Madrid Agreement for the Repression of False or Deceptive Indications of Source on
Goods
●​ Lisbon Agreement for the Protection of Appellations of Origin
●​ TRIPS Agreement
●​ General protection under Article 22.​
TRIPS provides:
○​ Additional protection for wines and spirits under Article 23.
 ○​ Exceptions under Article 24.

(3) Protection Against

The scope includes protection against:

●​ Misleading use,
●​ False indication of origin,
●​ Dilution,
●​ Unfair competition,
●​ Passing off.

(4) Homonymous GIs

Even similar geographical names may be protected provided differentiation prevents

confusion.

Example: Rioja (Spain and Argentina).

TYPES OF GEOGRAPHICAL INDICATIONS

These classifications are theoretical in nature and are based on the degree of connection
between the product and the geographical area, as well as the manner in which the
geographical link is expressed.

1. Quality-Neutral Geographical Indications

Quality-neutral geographical indications are those which merely indicate the geographical
origin of goods without necessarily establishing that the quality, reputation or characteristics
of the goods are attributable to that geographical region.

In this type, the emphasis is only on origin, not on special quality.

For example, expressions such as:

●​ “Made in India”
●​ “Product of France”

These indications simply inform consumers about the country of manufacture. They do not
guarantee that the goods possess distinctive qualities because of that origin.

This concept corresponds closely to the notion of “Indications of Source” under the Paris
Convention for the Protection of Industrial Property and the Madrid Agreement for the
Repression of False or Deceptive Indications of Source on Goods.

Key characteristics:

●​ No strict requirement of special quality.

●​ No strong causal link between product and geographical environment.
 ●​ Primarily informational in nature.
●​ Provides minimal protection.

Thus, quality-neutral GIs are the weakest form of geographical indication.

2. Qualified Geographical Indications

Qualified geographical indications are those where the goods possess a specific quality,
reputation or other characteristic that is essentially attributable to the geographical origin.

Here, the geographical link is not merely descriptive but forms the basis of the product’s
uniqueness.

This type corresponds to the definition under Article 22(1) of the TRIPS Agreement and
under Section 2(e) of the Geographical Indications of Goods (Registration and Protection)
Act, 1999.

Examples include:

●​ Darjeeling Tea
●​ Basmati Rice
●​ Kanchipuram Silk
●​ Scotch Whisky

In these cases:

●​ The quality and reputation are linked to soil, climate, traditional methods, or human
skill.
●​ The product cannot be replicated outside the region without losing authenticity.

Key characteristics:

●​ Strong geographical link.

●​ Quality/reputation is essential.
●​ Protected under international and domestic GI law.
●​ Economically valuable and premium priced.

Qualified GIs represent the most commonly recognized and legally protected form of GI.

3. Direct Geographical Indications

Direct geographical indications are those in which the name of the geographical place itself
is used directly to designate the product.

The geographical name appears explicitly in the indication.

Examples:

●​ Champagne
 ●​ Mysore Sandal Soap
●​ Banaras Silk
●​ Swiss Watches

In these cases:

●​ The geographical name is clearly identifiable.

●​ Consumers immediately associate the product with that place.
●​ The place name itself functions as the GI.

Direct GIs are easier to identify and protect because the geographical origin is explicitly
mentioned.

4. Indirect Geographical Indications

Indirect geographical indications are those which do not directly use the geographical name
but imply geographical origin through symbols, words, images, or expressions associated
with a region.

The geographical reference is inferred rather than expressly stated.

Examples include:

●​ Use of the Taj Mahal to imply Indian origin

●​ Mount Fuji to imply Japanese origin
●​ Bagpipes or tartan patterns to imply Scottish origin
●​ Pyramids to imply Egyptian origin

Under international law, particularly the Paris Convention for the Protection of Industrial
Property and the TRIPS Agreement, even indirect indications that mislead the public
regarding origin are prohibited.

Key characteristics:

●​ Geographical origin is implied.

●​ May consist of symbols, landmarks, scripts or cultural identifiers.
●​ Protection depends on likelihood of confusion or deception.
●​ Often examined under unfair competition principles.

Indirect GIs are more complex because the geographical link must be established through
interpretation.

A. Indications of Source

This notion appears in:

●​ Paris Convention for the Protection of Industrial Property​

 ●​ Madrid Agreement for the Repression of False or Deceptive Indications of Source on
Goods

Indication of source merely indicates that a product originates from a specific geographical
place.

Key features:

1.​ There must be a geographical link.

2.​ No strict requirement that quality is attributable to that region.
3.​ The indication may be direct (e.g., “Made in India”) or indirect (symbols like Taj
Mahal).

It is the broader and weaker category of GI.

B. Appellations of Origin

This is a narrower and stronger concept.

Defined under Article 2 of the Lisbon Agreement for the Protection of Appellations of Origin
as:

The geographical name of a country, region or locality which designates a

product whose quality and characteristics are exclusively or essentially due to
the geographical environment, including natural and human factors.

Three essential elements:

1.​ Must be a geographical name.

2.​ Must designate a product originating there.
3.​ Quality must be essentially or exclusively attributable to that region.

Appellations of origin require a stronger causal link between product and geography than
indications of source.

INTRODUCTION TO INTERNATIONAL TREATIES AND CONVENTIONS

Meaning and Importance of International Treaties in Intellectual Property

International treaties and conventions are formal agreements between sovereign States that
create binding legal obligations at the international level. In the field of Intellectual Property
(IP), treaties aim to harmonize laws across nations, ensure minimum standards of
protection, and facilitate international cooperation.

In the context of Geographical Indications (GIs), international agreements were necessary

because:

●​ Goods identified by geographical names are traded globally.

●​ Misuse of geographical names in foreign markets harms producers.
 ●​ Protection in one country alone is insufficient in international commerce.
●​ Uniform standards reduce trade disputes and unfair competition.

Thus, international conventions provide a framework through which member States agree to
protect geographical indications beyond national borders.

Early Development of International Protection of Geographical Indications

The protection of geographical indications evolved gradually through international

instruments. Initially, protection was limited to preventing false indications of source. Over
time, the scope expanded to include reputation, quality, and stronger forms of protection.

The major international treaties governing geographical indications are:

●​ Paris Convention for the Protection of Industrial Property

●​ Madrid Agreement for the Repression of False or Deceptive Indications of Source on
Goods
●​ Lisbon Agreement for the Protection of Appellations of Origin
●​ TRIPS Agreement

Each treaty progressively strengthened GI protection.

Paris Convention for the Protection of Industrial Property, 1883

Paris Convention for the Protection of Industrial Property was the first international
agreement addressing industrial property, including indications of source and appellations of
origin.

(a) Scope

The Convention applies to industrial property in the broad sense, including:

●​ Patents
●​ Trademarks
●​ Industrial designs
●​ Indications of source
●​ Appellations of origin

(b) Key Contributions

1.​ National Treatment Principle​

Member States must treat foreign nationals the same as their own nationals in
matters of protection.
2.​ Protection against False Indications​
Article 10bis introduced protection against unfair competition.
3.​ Border Measures​
States were required to seize goods bearing false indications of source.
However, the Paris Convention did not define “geographical indications” clearly. Protection
was limited and dependent on national implementation.

Madrid Agreement (1891)

Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods
expanded upon the Paris Convention.

Key Features:

●​ Repression of false or deceptive indications of source.

●​ Seizure of goods with misleading geographical labels.
●​ Prevention of “generisation” of certain geographical names.

The Madrid Agreement broadened protection but had limited membership, which reduced its
global effectiveness.

Lisbon Agreement (1958)

Lisbon Agreement for the Protection of Appellations of Origin represented a major

advancement.

(a) Focus

It specifically protects “Appellations of Origin.”

(b) Definition

Appellation of origin means the geographical name of a country, region or locality

designating a product whose quality or characteristics are exclusively or essentially due to
the geographical environment, including natural and human factors.

(c) Features

●​ International registration system.

●​ Protection even if used with expressions like “type,” “kind,” or “style.”
●​ Protection continues as long as protected in the country of origin.
●​ Stronger protection than Paris or Madrid.

However, strict protection standards resulted in fewer member States.

TRIPS Agreement (1994)

TRIPS Agreement brought geographical indications fully into the modern intellectual property
regime.

It is administered by the World Trade Organization (WTO) and is binding on all WTO
members.
(a) Definition – Article 22(1)

Defines GIs as indications identifying goods as originating in a territory where a given quality,
reputation or other characteristic is essentially attributable to geographical origin.

(b) Two Levels of Protection

1.​ Article 22 – General Protection

○​ Prevent misleading use.
○​ Prevent acts of unfair competition.
○​ Invalidate misleading trademarks.
2.​ Article 23 – Additional Protection
○​ Applies specifically to wines and spirits.
○​ Prohibits use even if true origin is indicated.
○​ Prohibits use of expressions like “type,” “style,” or “imitation.”
3.​ Article 24 – Exceptions
○​ Provides transitional arrangements.
○​ Protects prior trademark rights.
○​ Allows generic exceptions.

(c) Significance

TRIPS made GI protection mandatory for WTO members and required domestic legislation
to implement minimum standards.

Role of WIPO and WTO

The World Intellectual Property Organization (WIPO) administers:

●​ Paris Convention
●​ Madrid Agreement
●​ Lisbon Agreement

The WTO administers the TRIPS Agreement.

Together, these institutions ensure:

●​ International cooperation
●​ Dispute resolution
●​ Monitoring compliance
●​ Development of global GI standards

GEOGRAPHICAL INDICATIONS AND TRADEMARK INTERFACE

Introduction
The relationship between Geographical Indications (GIs) and Trademarks represents one of
the most complex and debated intersections in intellectual property law. Both function as
distinctive signs in the marketplace, yet their philosophical foundations, ownership
structures, and legal objectives differ significantly.

A trademark identifies the commercial origin of goods or services and grants an exclusive
private right to an individual or enterprise. A geographical indication, on the other hand,
identifies goods as originating from a specific territory where a given quality, reputation or
other characteristic is essentially attributable to that geographical origin.

The conflict arises when the same sign functions simultaneously as a trademark and as a
GI, or when prior rights are claimed under one regime against the other. The central question
is: Should priority be given to private trademark rights or collective geographical
rights?

Conceptual Foundations of the Conflict

The core distinction lies in the nature of rights:

Trademark Geographical Indication

Private right Collective community right

Based on distinctiveness Based on territorial linkage

Transferable and Non-transferable

assignable

Protects business goodwill Protects regional

reputation

Despite these differences, both serve a common purpose: preventing consumer deception
and unfair competition. The overlap occurs when a geographical name is adopted as a
trademark, especially before or after GI protection is granted.

International Framework – TRIPS Agreement

The interface is addressed primarily under the TRIPS Agreement.

Article 22 – General Protection

Members must prevent misleading use of GIs and unfair competition.

Article 23 – Additional Protection

Provides stronger protection for wines and spirits, even without proof of confusion.

Article 24(5) – Prior Trademark Protection

This provision protects prior trademarks that were:

●​ Applied for,
●​ Registered, or
●​ Used in good faith,

before GI protection was granted.

This reflects the principle of “first in time, first in right.”

Thus, TRIPS balances GI protection with prior trademark rights.

Indian Legal Position

India regulates the interface through:

●​ Trade Marks Act, 1999

●​ Geographical Indications of Goods (Registration and Protection) Act, 1999

1. Protection of Prior Trademarks – Section 26 GI Act

A registered GI shall not invalidate a trademark that was:

●​ Registered in good faith,

●​ Applied for in good faith,
●​ Or acquired through prior use in good faith.

Thus, bona fide prior users are protected.

2. Refusal of Trademark Containing GI – Section 25 GI Act

A trademark shall not be registered if:

●​ It contains a GI,
●​ Goods do not originate from the indicated region,
●​ Use is likely to mislead the public.

Thus, later trademarks cannot override protected GIs.

3. Absolute Grounds – Section 9 Trade Marks Act

Geographical names cannot be registered if:

 ●​ They are descriptive,
●​ They indicate origin,
●​ They are deceptive.

However, if such terms acquire distinctiveness (secondary meaning), they may be

registered.

4. Doctrine of Prior User in Trademark Law

Indian trademark law recognizes the superiority of prior user over registration.

Section 34 of the Trade Marks Act provides that:

A prior user of a trademark has superior rights over a later registered proprietor.

Thus:

●​ Even an unregistered prior user can defeat a later registered trademark.

●​ Prior use must be continuous and bona fide.

When applied to GI conflict:

●​ If a trader has been using a geographical term as a trademark prior to GI registration,

his rights may be preserved.
●​ However, bad faith use is not protected.

Judicial Approach to GI–Trademark Conflict

1. Imperial Tobacco Co. v. Registrar

“Shimla” was refused registration because it was a well-known geographical name lacking
distinctiveness.

2. Dyer Meakin Breweries v. Scotch Whisky Association

Use of “Highland Chief” for non-Scottish whisky was restrained as misleading.

3. Scotch Whisky Association v. Pravara Sakhar Karkhana Ltd.

Use of “Blended Scotch Whisky” for Indian whisky was held deceptive.

4. Tea Board of India v. ITC Ltd.

Use of “Darjeeling Lounge” for hotel services was permitted because:

●​ No confusion,
●​ Different industries,
●​ GI registration limited to tea.

This demonstrates the coexistence principle.

Theoretical Foundations of the Interface Between Geographical Indications and
Trademarks

The interface between Geographical Indications (GIs) and Trademarks represents one of the
most intellectually complex areas within intellectual property law. At first glance, both appear
to function similarly: they are signs used in trade that distinguish goods in the marketplace.
However, their philosophical foundations, legal structures, economic objectives, and social
implications differ profoundly. The tension between them is therefore not accidental but
structural.

To understand this interface properly, it is necessary to move beyond statutory provisions

and examine the theoretical underpinnings of each regime.

I. Conceptual Nature of Trademarks

A trademark is fundamentally a commercial sign. It identifies goods or services as originating

from a particular enterprise. The core function of trademark law is the prevention of
consumer confusion. When a consumer sees a mark, the law assumes that the mark signals
consistency of source and quality. Therefore, trademark protection is justified on two
principal grounds: consumer protection and protection of business goodwill.

From a theoretical perspective, trademark law is rooted in classical liberal and

market-oriented philosophy. It recognizes and protects private commercial investment. A
trader who invests capital, labor, and reputation into building a brand is entitled to legal
protection against imitation. This justification aligns with the Lockean labor theory, which
posits that one acquires property rights through labor and investment.

Trademark rights are therefore private rights. They are transferable, assignable, licensable,
and capable of being used as commercial assets. They are not tied to geography or culture;
they are tied to commercial identity. Their legitimacy lies in market performance and
distinctiveness rather than territorial authenticity.

In short, trademark law protects the identity of an enterprise in a competitive marketplace.

II. Conceptual Nature of Geographical Indications

Geographical indications, in contrast, are not private but collective in nature. A GI identifies
goods as originating from a specific geographical territory where a particular quality,
reputation, or characteristic is essentially attributable to that geographical origin.

The theoretical foundation of GI protection lies in the relationship between land, tradition,
community knowledge, and product characteristics. Unlike trademarks, which are artificially
constructed commercial identifiers, GIs derive legitimacy from natural and human factors
existing within a defined territory.

The philosophical justification for GI protection includes several dimensions:

1.​ Protection of traditional knowledge – Many GI products are the result of centuries
of community-based skills and inherited practices.
 2.​ Rural and regional development – GI protection allows communities to command
premium prices.
3.​ Prevention of free riding – It prevents outsiders from exploiting established
geographical reputation.
4.​ Cultural preservation – GIs often embody cultural heritage and identity.

Unlike trademarks, GIs cannot be freely assigned or transferred. They belong collectively to
all authorized producers within the geographical region. The right is inseparable from
territory. This makes GI law communitarian rather than individualistic.

Thus, while trademark law protects commercial individuality, GI law protects territorial
authenticity.

III. Structural Basis of the Conflict

The conflict between GIs and trademarks emerges because both operate as source
identifiers. However, they indicate different types of source. A trademark identifies
commercial source; a GI identifies geographical source.

When a geographical name is registered as a trademark, especially prior to GI recognition, a

direct conflict arises. The question becomes whether a private trader can claim exclusive
commercial rights over a term that historically and culturally belongs to a region and its
producers.

The tension becomes more pronounced when considering the doctrine of priority. Trademark
law traditionally follows the principle that the first user or registrant obtains superior rights. GI
protection, however, is not based on priority of registration but on authenticity of origin. It
recognizes collective historical association rather than first-in-time commercial appropriation.

Thus, the structural conflict lies between two different legitimizing principles:

●​ Priority of private commercial use.

●​ Authenticity of territorial origin.

IV. The Good Faith Dilemma

One of the most debated theoretical issues in this interface concerns the concept of “good
faith.” International frameworks, particularly the TRIPS Agreement, allow prior trademarks to
coexist with GIs if adopted in good faith.

However, the concept of good faith is deeply problematic. Does it mean absence of
fraudulent intent? Does it require ignorance of geographical reputation? Can a multinational
corporation claim good faith when adopting a geographical name associated with a known
region?

From a theoretical standpoint, good faith must be understood not merely as absence of
malice but as absence of unfair appropriation. If a trader knowingly adopts a geographical
name to capitalize on existing reputation, such adoption should not be protected. Yet proving
such intent is difficult.
The ambiguity surrounding good faith reveals the tension between legal certainty and
equitable justice. Trademark systems favor certainty and stability, while GI systems
emphasize moral and cultural legitimacy.

V. Consumer Confusion versus Free Riding

Trademark law traditionally requires proof of likelihood of confusion. If consumers are not
confused about the source of goods, trademark infringement may not be established.

GI protection often extends beyond confusion. It aims to prevent dilution and free riding.
Even if consumers know that a product does not originate from the geographical region, the
use of the geographical name may still dilute its uniqueness or unfairly exploit its reputation.

This distinction is crucial. Trademark law is confusion-centered; GI law is

reputation-centered.

From a normative perspective, one may argue that preventing confusion protects
consumers, while preventing free riding protects producers and communities. The balance
between these objectives is at the heart of the interface debate.

VI. Economic and Developmental Perspectives

From an economic perspective, trademarks are tools of market competition. They reduce
search costs, encourage investment in quality, and facilitate brand differentiation.

GIs, however, operate as instruments of rural and regional economic development. They
allow communities to differentiate their products based on geographical uniqueness. In
developing countries especially, GI protection is viewed as a mechanism to empower small
producers and preserve biodiversity.

The international debate over GI expansion, particularly beyond wines and spirits, reflects
deeper economic interests. European countries, rich in GI products, support stronger GI
protection. Common-law countries, with strong trademark traditions, often resist expansion.

Thus, the GI–Trademark conflict is not purely legal but geopolitical and economic.

VII. Models of Resolution

Several theoretical models attempt to reconcile the conflict.

One model prioritizes trademarks, emphasizing commercial certainty. Another model

prioritizes GIs, emphasizing cultural preservation. A more balanced model supports
coexistence where confusion is unlikely.

The most sophisticated approach is contextual balancing. This approach considers:

●​ Whether the trademark was adopted in genuine good faith.

●​ Whether the GI has acquired significant reputation.
●​ Whether consumers are likely to be misled.
●​ Whether coexistence would dilute geographical identity.
This balancing model seeks harmony rather than hierarchy.

VIII. Cultural and Sociological Dimensions

Beyond economics and law, the interface reflects a broader cultural tension. Trademarks
symbolize industrial capitalism and corporate identity. GIs symbolize land-based tradition
and collective memory.

In an era of globalization, local identities are increasingly commodified. GI protection

attempts to preserve authenticity in global markets. Trademark protection, by contrast, often
promotes corporate expansion.

Thus, the interface represents the intersection of globalization and localization.

IX. Normative Evaluation

A rigid supremacy of trademarks risks enabling private monopolization of public

geographical names. Conversely, rigid GI supremacy risks destabilizing legitimate
commercial investments.

The ideal framework must therefore:

●​ Protect prior bona fide trademark rights.

●​ Prevent opportunistic or bad faith appropriation.
●​ Safeguard collective geographical reputation.
●​ Maintain consumer clarity.

A nuanced and contextual approach is essential.