IPR MODULE 9

GEOGRAPHICAL INDICATION

 It is basically a product which indicates a particular geographical location for e.g.,

Kashmiri Apple, Darjeeling Tea etc.
 It basically acts as an authentication for quality and unique attributes of a good that it gets
due to its geographical origin

 Section 2(e) of the GI Act –

 “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.

 Some examples – Bordeaux, Champagne, Chianti

 In India the first GI under GI Act was of Darjeeling Tea

 GI Tag is a public property which can be used by everyone who lives in the particular are
which has the geographical indication

 HISTORY OF GI
 Under the TRIPS, countries do not have a mandatory obligation to protect GI
 Moreover, India did not have any laws related to GI before 1999
 GI was introduced in India due to 3 controversial cases:

 Azadirachta Indica – Neem tree. In 1971 a US timber importer started importing

neem from India and made an invention and sold it and applied for a patent on
Neem

 Turmeric case – Similar to neem. In 1995 A US patent was granted to two NRIs
for turmeric. This was opposed by CSIR and the patent was cancelled

 Basmati case – US Patent was granted to a Texas based race tec inc for a new
breed of rice plants and grains.

 These cases led us to think that there needs to be some geographical protection for
products used in India from a number of years
 Hence the GI act 1999 was introduced to prevent unfair exploitation and provide
adequate protection to geographical indications.
 OBJECTIVES OF GI ACT
 It is supposed to prohibit unauthorised persons from misusing geographical
indications and to protect consumers from deception
 To encourage and promote exports of goods bearing India GI

 REGISTRATION OF GI – Section 8
 A GI may be registered regarding any or all of the goods included in such types of
goods as may be listed by the registrar
 It can be regarding a particular area of a country, or a region or locality
 Registrar may also classify the goods according to international division of goods to
register geographical indications and publish in an alphabetical index of various
goods.
 REGISTRATION OF GI IS NOT MANDATORY

 WHO CAN APPLY FOR GI

 Any union of persons or producers or any organisation or authority established or

under any law expressing the concern of the producers of the concerned goods can
apply for registration of a GI

 Under the Act, Producer means –

 Anyone who provides the goods and involves the person who prepares or
packages the goods.
 It also includes anyone who utilises the goods in case of natural goods
 Anyone who creates or produces the handiwork or manufactured goods
 Anyone who purchases or trades in such production, exploitation, building or
manufacturing of the goods

 DURATION
 10 years and can be renewed from time to time by ppaying renewal fee

 PROHIBITION OF REGISTRATION OF CERTAIN GI – Section 2(1)(e)

 If product falls under these it would not be registered
 If the use deceives or confuses
 If use is opposed to any law
 If it includes disreputable or offensive matter
 It constitutes any element likely to hut religious sentiments or of any group or
community
 Which will contrarily be disentitled to safeguard in a court
 Which are confirmed to be non-exclusive names or indications of goods and
are hence not or discontinued to be guarded int heir origin place or which have
come into disuse in that country
 If it belongs to another territory in which the goods originate but dishonestly
represented that goods originate in another territory
 INFRINGEMENT
 Infringement includes unfair competition
 Section 20(1) – if there is no registration, you can’t file for registration
 Section 20(2) – if no registration, then still it can qualify for passing off
 Action against infringement can be initiated in a District Court or High court having
jurisdiction
 Reliefs includes injunctions, discovery of documents, damages or account of profits,
delivery up of infringing labels and indications for destruction or erasure

Chapter I: Preliminary
The Geographical Indications of Goods (Registration and Protection) Act, 1999
 Extent: The Act extends to the whole of India [Section 1(2)].
Key Definitions [Section 2]
 Geographical Indication (GI) [Section 2(1)(e)]:
o An indication identifying goods as originating from a specific country, region,
or locality.
o Crucial Test: A specific quality, reputation, or other characteristic of the good
must be essentially attributable to its geographical origin.
o For Manufactured Goods: One of the activities (production, processing, or
preparation) must take place in that region.
 Indication [Section 2(1)(g)]:
o Includes any name, geographical or figurative representation (like a logo), or
combination of them conveying the geographical origin.
 Goods [Section 2(1)(f)]:
o Covers agricultural, natural, or manufactured goods, including handicrafts,
industry goods, and food stuff.
 Producer [Section 2(1)(k)]:
o Agricultural goods: The person who produces, processes, or packages.
o Natural goods: The person who exploits the goods.
 o Handicrafts/Industrial: The person who makes/manufactures.
o Includes: Any person who trades or deals in such production, exploitation, or
making.
 The Two Categories of Rights Holders:
1. Registered Proprietor [Section 2(1)(n)]: An association of persons/producers
or an organization representing the interest of the producers (The entity that
owns the GI).
2. Authorised User [Section 2(1)(b)]: The actual producer registered under
Section 17 to use the GI (The individual who uses the GI).
 Deceptively Similar [Section 2(1)(c)]:
o A mark that so nearly resembles another GI that it is likely to deceive or cause
confusion.

Chapter II: The Register & Conditions for Registration

1. Administration [Sections 3 - 5]
 The Registrar [Section 3]: The Controller-General of Patents, Designs and Trade
Marks also serves as the Registrar of Geographical Indications.
 The Registry [Section 5]: A "Geographical Indications Registry" is established for
the purpose of this Act. It has a head office and may have branch offices with defined
territorial limits.
2. The Register [Sections 6 - 7]
 The Record [Section 6]: A Register is kept at the head office containing
names/addresses of proprietors and authorized users.
o No Trusts: No notice of any trust (express, implied, or constructive) can be
entered in the register.
 Two Parts of the Register [Section 7]: This is a key distinction for your exams.
o Part A: Contains details of the Registered Proprietor and the GI itself.
o Part B: Contains details of the Authorised Users (the actual producers).
3. Classification [Section 8]
 Registration is not just for a name, but for specific goods within a definite territory
(country, region, or locality).
 Goods are classified according to the International classification of goods.
4. Prohibition of Registration [Section 9]
This section is the "negative list." A GI cannot be registered if it:
 (a) Deceives or causes confusion.
 (b) Is contrary to any law.
 (c) Contains scandalous or obscene matter.
 (d) Hurts religious susceptibilities.
 (e) Is disentitled to protection in court.
 (f) Is a Generic Name (Important: A name that originated from a place but has lost its
original meaning and is now just the common name for that type of good).
 (g) Falsely represents that goods originate in another territory (even if literally true).
5. Homonymous GIs [Section 10]
 Definition: These are GIs that are spelled or pronounced the same but originate from
different places.
 Rule: They can be registered if the Registrar is satisfied that:
1. They can be differentiated in practice.
2. Producers are treated equitably.
3. Consumers will not be misled.

Chapter III: Procedure & Duration of Registration

1. The Application Process [Section 11]
 Who Applies: An association of persons/producers or an organization representing
the producers' interests. (Note: An individual producer usually does not apply for the
GI itself here).
 Key Contents: The application must include:
o Statement of Case: Explaining how the quality/reputation is due to the
geographical environment.
o Map: A geographical map of the territory.
o Class of Goods:.
o Particulars of Appearance: Words or figurative elements.
 Examination: The Registrar examines the application and can accept it absolutely or
with amendments.
2. Advertisement & Opposition [Sections 13 - 14]
 Advertisement: Once accepted, the application is advertised to the public.
 Opposition Timeline: Any person can oppose the registration within 3 months
(extendable by 1 month) from the date of advertisement.
 Counter-Statement: The applicant has 2 months to send a counter-statement. If they
fail to do so, the application is deemed abandoned.
3. Registration Certificate [Section 16]
 If there is no opposition (or the applicant wins), the GI is registered.
 Crucial Date: The date of registration is deemed to be the date of making the
application (Retrospective effect).
4. Registration of Authorised User [Section 17]
 Who: This section is for the individual producer claiming to be a producer of the
registered goods.
 Procedure: They must apply separately to be registered as an "Authorised User." The
process (filing, advertisement, opposition) is the same as for the main GI registration.
5. Duration & Renewal [Section 18]
 Term: Valid for 10 years.
 Renewal: Can be renewed indefinitely for blocks of 10 years.
 Restoration: If removed for non-payment of fees, it can be restored if an application
is made within 1 year from expiration.

Chapter IV: Effect of Registration

1. Unregistered GIs [Section 20]
 No Infringement Suit: You cannot sue for infringement if your GI is not registered.
 Passing Off Remains: However, you can still sue for passing off (a common law
remedy) even if unregistered. This protects the goodwill and reputation of the goods.
2. Rights Conferred [Section 21]
This section distinguishes between the two types of rights holders we discussed in Chapter I.
 Right to Suit: Both the Registered Proprietor AND the Authorised User have the
right to obtain relief for infringement.
 Right to Use: Only the Authorised User has the exclusive right to use the GI in
relation to the goods.
 o Note: If there are multiple authorized users (e.g., 50 different tea estates), they
all have co-equal rights and cannot sue each other for using the GI.
3. Infringement [Section 22]
A registered GI is infringed by a person who is not an authorised user if they:
 Mislead regarding Origin: Use a designation that suggests the goods originate in a
different area than their true origin.
 Unfair Competition: Commit an act of unfair competition (contrary to honest
practices), such as creating confusion or making false allegations to discredit a
competitor.
 Literal Truth but Misleading: Use a name that is literally true (e.g., a region with
the same name in another country) but falsely represents to consumers that the goods
are the protected GI.
 Additional Protection (High Level): For specific notified goods (like wines/spirits),
using the GI with expressions like "kind", "style", or "imitation" constitutes
infringement, even if the true origin is indicated.
4. Exception: Exhaustion of Rights [Section 22(4)]
 If someone lawfully buys a GI product (e.g., a retailer buys a crate of Darjeeling tea
from an authorised user), they can resell it, process it, or package it without
infringing, unless the condition of the goods is impaired.
5. Prohibition on Transfer [Section 24]
 Total Ban: A registered GI cannot be assigned, transmitted, licensed, pledged, or
mortgaged.
o Reason: A GI belongs to the region, not a specific company.
 The Only Exception: On the death of an authorised user, the right devolves to their
successor in title.