DEFINITION - Under the Section 2 (e) of the G.I.
Act, 1999 defines “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 characteristics of such goods is essentially attributable to its geographical
origin and in a 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.”
HISTORY OF THE ACT
Why G.I. Act, 1999 got introduced in India?
Under the TRIPS (Trade-Related Aspects of Intellectual Property), countries do not have a
mandatory obligation to protect a geographical indication if that geographical indication is
not covered within the country of its origin. Moreover, India did not have any laws before
1999 related to geographical indication which could protect the interest of the producers of
G.I. goods.
So what made India introduce the Geographical Indications of Goods (Registration and
Protection) Act, 1999? It was due to three controversial cases related to neem, turmeric, and
basmati.
In the case of Neem, a US Company, WR Grace & Co. was granted patents for storage
process and extraction. The Indian Government filed a complaint against WR Grace & Co.
with the U.S. Patent Office accusing WR Grace & Co. of copying an Indian Invention.
However, later on, they realised that WR Grace & Co. had created a new invention for the
neem extraction process. The Patent was not based on traditional Indian knowledge, so the
Indian Government withdrew its complaint.
In March 1995, in the case of turmeric, a US Patent was granted to two NRI’s for turmeric to
be used as a wound-healing agent. CSIR opposed this Patent at the USPTO based on “Prior
Art”, it claimed that turmeric had been used for thousand years for treating wounds and
rashes in India, and hence it was not a new invention. CSIR showed an antique Sanskrit
manuscript and a paper published in 1953 in the Indian Medical Association Journal as
documentary evidence. The U.S. patent office upheld the objections and cancelled the Patent.
In the case of basmati, a US Patent granted to Texas-based Rice Tec Inc claimed that their
invention is related to a new breed of rice plants and grains. The USPTO approved the Patent
on “Basmati Rice Line and Grains” in 997. After three years of examination and accepted 20
claims put forward by Rice Tec Inc., India opposed the Patent and challenged it. A team of
agricultural scientists presented various proofs and supporting information to establish prior
art in this area in India. Evidence against the claim was so strong that the company withdrew
15 claims, and only five claims out of 20 claims of the company RiceTec Inc. survived Indian
challenges. The patent granted to new hybrid variants that have nothing to do with basmati.
After these three cases, the Indian government, to prevent unfair exploitation, realised the
importance of having comprehensive legislation for the registration and providing adequate
legal protection to geographical indications. The Parliament enacted the Geographical
Indications of Goods (Registration and Protection) Act, 1999, which came into power with
effect from 15th September 2003.
JURISDICTION - Geographical Indications Registry in Chennai has complete jurisdiction
over the GI goods in India, including, but not limited to, their registration and application
process. The Intellectual Property Appellate Board (IPAB) has the appellate jurisdiction. It is
also based in Chennai. The website of the IPAB boasts of being the only tribunal in India
which has an international influence. This was visible in the case of Basmati rice involving
the Lahore Growers Association (elaborated upon in later sections).
The present G.I. is governed by the Geographical Indications of Goods (Registration &
Protection) Act, 1999, and the Geographical Indication of Goods (Regulation and
Protection) Rules, 2002.
Such a unique law particularly gave effect to Articles 22 and 23 under the TRIPS agreement,
which provides for local regulations in pursuit of developing laws relating to geographical
indication. According to the provisions in the Act, a Geographical Indication tag can be
provided upon registration and will be valid for a period of 10 years along with the option to
renew the same from time to time.
The Geographical Indications of Goods (Registration and Protection) Act, 1999, has been
considered to be one of a kind as it departs from its inspiration in a major way. Instead of
being a carbon copy of the TRIPS agreement, which focused mainly on wines and spirits, the
Act constitutes flexibility in the range of products that are determined by the government.
Overall, it lays the foundation for intellectual property rights in India and helps in ensuring a
proper mechanism for implementing its provisions along with a redressal system in cases of
violation.
Key features of the Act: –
It seamlessly lays out the process of registering a Geographical Indication tag for a
product or a commodity.
The Act constitutes a registry for products and commodities, which includes
information regarding the classification it is under, the year it was registered in, and
the state of origin.
It provides clarity on crucial concepts such as ‘authorized user’ as well as ‘registered
proprietor’ by defining these terms in an intelligible manner.
The Act delivers a high level of protection to goods that have been notified or
registered under it.
It acts as an authoritative factor against people infringing on the registered products or
violating their integrity in any other way.
It sanctions the use of a registered product by an authorized owner while invalidating
any other utilization without the consent of the owner.
A registered owner can also seek out legal protection in other member-states of the
World Trade Organization.
The aftermath of registration has the potential of bringing about economic benefits for
the producers as well as raising the product’s status quo in the market.
Compulsory publication of all approved geographical indication applications and for
inviting oppositions.
Listing authorised users of registered geographical indications and giving terms for
infringement action either by a registered proprietor or an authorised user.
Requirements for a higher level of protection for notified goods.
REGISTRATION OF GEOGRAPHICAL INDICATION
Section 8 of the G.I. Act gives that a Geographical Indication may be registered regarding
any or all of the goods, included in such types of goods as may be listed by the registrar.
Moreover, regarding a particular area of a country, or a region or locality in that territory, as
the case may be. According to the prescribed manner, the registrar may also classify the
goods according to the international division of goods to register geographical indications and
publish in an alphabetical index of various goods.
THE FOLLOWING GEOGRAPHICAL INDICATIONS ARE PROHIBITED FROM
REGISTRATION UNDER SECTION 9 OF THE ACT:
A geographical indication
1. the use of which would be likely to deceive or cause confusion;
2. the use of which would be contrary to any law for the time being in force ;
3. which comprises or contains scandalous or obscene matter;
4. which comprises or contains any matter likely to hurt the religious susceptibilities of any
class or citizens of India.
5. which would be disentitled to protection to protection in the court of law.
6. 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;7. 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, but falsely
represent to the persons that the goods originate in another territory, region or locality, as the
case may be, shall not be registered as a geographical indication.
OBJECTIVES AND PURPOSES: –
The Geographical Indication of Goods (Registration and Protection) Act, 1999, is accurately
called a sui generis legislation as it remains unprecedented when talking in terms of domestic
law. The Act’s principal aim is to provide worldwide recognition to a deserving product that
would ultimately benefit its producers and marketers.
The legislation primarily focuses on consumer awareness as it bestows a metaphorical mark
of authority upon the superior or distinctive product so as to let the people know of its
features if and when they purchase it. This also makes people more willing towards paying a
premium for the product as it would augment their status in society. It is also a common
pattern that most products with a GI tag are organically produced, which makes it safer in
comparison to its competition.
The existence of the Act itself makes India one of the countries that has adopted international
law in a hostile manner to enforce its principles and provisions. This, in turn, raises India’s
status with respect to Intellectual Property Rights across an international stage.
Apart from providing legitimacy to a particularly unique product, the law symbolizes and
recognizes the good’s superiority over other products in the same category and prevents it
from being generalized with them. A perfect example is the case of Kashmiri Saffron itself as
it was previously considered to be on par with lower quality saffron produced in Iran or
Spain, and thus the producers could not avail any benefits despite their hard work and
determination behind making a superior product.
Moreover, the Act is solely responsible for providing a system of redressal and remedy for
the aggrieved victims of GI infringement. This includes sanctioning the owner’s rights
concerning the registered product. For instance, the owner or the registered proprietor has a
right to sue the person who has violated his/her exclusive right over the product.
The Geographical Indications of Goods (Registration and Protection) Act, 1999, has
facilitated the registration of over 360 products in the course of 21 years. This has not only
led to financial prosperity and increased exports but has also helped in preserving traditional
knowledge of an indigenous product. It can be safely assumed that the legislation has been
successful so far in achieving its goal of securing the exclusive rights of a unique product
with its producers.
EXAMPLES FROM INDIA
Darjeeling Tea
In the present day, India is one of the largest producers of tea in the world and has recorded
its highest ever production in the financial year 2015-16, with exports crossing 230 mn kg
after about 35 years. India started producing tea under British rule. The first GI ever granted
in India was to Darjeeling Tea Plantation was started in the 1840’s under the supervision of
the British, as they wanted to give competition to the Chinese monopoly in the market.
The Tea Board of India was established under the Tea Act, 1953. The tea board owns all the
intellectual property rights under the Trademarks Act, 1999, Geographical Indications of
Goods (Registration & Protection) Act, 1999 and Copyright Act, 1957. The logo and even the
title, Darjeeling Tea, have been protected by IP laws. Darjeeling Tea is a recognized
Trademark even in countries like China, Australia, Egypt, Lebanon, USA and so on.
Basmati Rice
Basmati rice is a special type of rice, with long grains and a unique aroma which
differentiates it from other varieties of rice. It is found in the Indo-Gangetic Plains. Basmati
rice has been a part of intense GI conflict between various states, and even nations like
Pakistan and the United States.
RiceTec, a Texas-based company, developed ‘Texmati’ or ‘American Basmati’, which they
patented under the United States Patent and Trademark Office (USPTO). This was
challenged by a few Indian NGOs claiming that the term “basmati” could only be used for
rice grown in India and Pakistan. After presenting all the evidence, the NGOs won, and
RiceTec withdrew its key claims.
India and Pakistan haven’t been known to agree on many issues, and GI registration of
basmati rice isn’t one of the exceptions. The Basmati Growers Association (BGA) Lahore
argued that the tag of Basmati can only be accorded to the rice grown in the territory of
Pakistan. They further argued that they had been producing the rice for a longer time, and
hence, they have more right to be accorded the GI registration. Although India and Pakistan
had initially applied for a joint Basmati GI tag, the efforts were thwarted due to the stand of
the GBA.
BGA filed a case under the Intellectual Property Appellate Board (IPAB), Chennai against
the claim of Agricultural and Processed Foods Export Development Authority (APEDA) who
wanted registration for seven Indian states. IPAB “is the only tribunal in India which has a
global impact” according to their website.
The IPAB has directed the GI Registry to accord the tag of GI to Basmati rice produced in
seven states, namely, Punjab, Haryana, Himachal Pradesh, Uttarakhand, parts of Uttar
Pradesh and Jammu & Kashmir. This has been after years of legislative battles. Madhya
Pradesh is still demanding GI registration for the rice grown in some of their districts.
Scotch Whisky
In 2006, the Scotch Whisky Association (SWA) filed a suit against Golden Bottling Limited
for geographical indications infringement. The defendant was manufacturing “Red Scot”
which was allegedly misleading for the consumers. The case of Scotch Whisky Association
v. Golden Bottling Limited was heard by the Delhi High Court in 2006. The definition of
“Scotch Whisky” under UK Scotch Whisky Act, 1988 and the Scotch Whisky Order, 1990
accorded the status of a geographical indication to the product. But, since the same was not
accorded the status of GI in India, the court could not go by that definition. Section 20(1) of
the GI Act protects unregistered GIs against any suit instituted. So action was available only
in form of the tort of passing off.
The case was settled outside of the courts. Later, in 2015, the government recognized Scotch
whisky as per the definition under Section 2(e) of the GI Act.
Is GI Relevant to Businesses or Just Communities???
Most of the applicants of GI are from rural backgrounds. The tea growers of Darjeeling,
whose interests are represented by the Tea Board in legislative matters, have seen financial
advantages after Darjeeling Tea was accorded the GI status. Darjeeling tea was the first
product to be accorded the status in India.
The commercial and social advantages are interrelated in this case. The makers of the
Darjeeling tea can charge a higher price for their product as they do not have to face outside
competition. Without being accorded the status of a geographical indication, the tea growers
would have to face competitions from outside, including big companies with a lot of capital
on their hands. Most goods which apply for GI registration originate from rural areas. GI
registration can also be seen as a commercial medium for rural empowerment and
employment generation. Commercialization of a unique product leads to the product turning
generic and the market prices falling down, along with the quality in most cases. This is
avoided by according the GI status.
HOW TO REGISTER A GOOD AS GI
Types of Applications:
Ordinary – For registration of a GI in India.
Convention – Registration of a GI, which is already recognized in another country.
Single Class – Includes the registration of goods belonging to a particular class of goods.
Multi Class – Includes the registration of goods belonging to multiple classes of goods.
The registration process for the GI tag begins with filing of an application for the same. The
Geographical Indications registry demands that the “application must be made in triplicate”.
The applicants may be the producer(s) of the respective goods themselves, or any
organization or authority which have the permission to act as the agent of the producer(s).
The application must be filed to the office of the GI registry, which is in Chennai.
The application must contain all the relevant details like –
The details of the “principal place of business”, defined under Section 3 of the Geographical
Indications of Goods (Registration and Protection) Rules, 2002.
Historical evidence to back the claims.
A detailed description of the good and its usage.
The method of production.
Other relevant details for determining the GI status of the good.
The application will be subjected to scrutiny by the Registry and a panel of experts, which
would be designated by them.
The applicant will have the time of one month to remedy the errors, if any.
The Registrar is further vested with the powers to rescind the application if the errors are not
dealt with.
Upon the acceptance of the application, the Registry will publish the same within three
months of the acceptance.
Any person can file an opposition to the publication of the GI application within three months
(extension can be provided for another month).
After the acceptance of the application, the date of filing of the application will be the date of
registration. A certificate with the seal of the GI registry shall be issued to the applicant.
Appeal against the registration can be made to the Intellectual Property Appellate Board
within three months of the registration of the good.
IMPORTANT POINTS REGARDING GI REGISTRATION
A registered GI shall be valid for 10 years and can be renewed on payment of renewal fee.
The application must be addressed to the Geographical Indications Registry, Chennai.
The applicant must have an address for service in India.
Generally, application can be filed by (1) a legal practitioner, (2) a registered agent.
ACCORDING TO THE CONTROLLER GENERAL OF PATENTS, 285 GOODS
WERE REGISTERED AS GI IN THE PERIOD OF 2009-15 AND 224 WERE IN THE
EXAMINATION PROCESS. THIS FURTHER REITERATES THE POPULARITY AND
NEED OF GI REGISTRATIONS IN INDIA.
OFFENCES & PENALTIES
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PROCEDURE OF REGISTRATION - [Link]
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GEOGRAPHICAL INDICATION -
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