Lucknow, UP, India, 226028

GEOGRAPHICAL INDICATIONS: RADAR OF THE INTELLECTUAL PROPERTY RIGHTS LEGAL REGIME IN INDIA

Rahil Setia 1

Millions of people toil in the shadow of the law we make, and much of their livelihood is made possible by the existence of intellectual property rights”                – Alex Kozinski 

I. INTRODUCTION

The term Geographical Indications essentially connotes a sign which is used with various products to signify the geographical origin of the specific product. It also serves to indicate the unique characteristics and attributes of the product which, on the other hand, flow from the phenomenon that a product belongs to a certain geographical origin. Besides signifying the origin of goods, it also enables a community or a region to protect goods of their region from other competing goods and establish goodwill of goods. The indispensability of application of Geographical Indication is further fostered by the idea of potential misappropriation of Geographical Indications by competitors and thus tampering with the goodwill and reputation of the Geographical Indication as well as the goods associated with such a Geographical Indication Tag. 

II. BRIEF HISTORICAL EVOLUTION OF GEOGRAPHICAL INDICATION IN INDIA

The idea of Geographical Indications has been one of the most significant issues in the World Trade Organization’s (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). India, to fulfill the mandate of TRIPS and to bring its laws in consonance with the International Legal Principles enacted “The Geographical Indications of Goods (Registration & Protection) Act, 1999” and “The Geographical Indications of Goods (Registration and Protection) Rules, 2002”. These regulate the application and protection of Geographical Indication Tags in India. 

III. IMPORTANCE OF THE ACT

The Act establishes an effective mechanism to protect customers by ensuring that they buy only authentic products and not the ones that have misappropriated the Geographical Indication Tags. It protects producers of a particular geographical region by preventing the misappropriation of Geographical Indication Tags and also provides them with various economic benefits. Section 2 of the Act deals with definitions and interpretation. Geographical Indications are defined under section 2(1)(e) of the Act which is an inclusive definition with a wider ambit to factor in various misappropriations under the act. Section 2(1)(b) defines an Authorised User as someone who has been authorized to use a Geographical Indication Tag under section 17 of the Act. There are certain Geographical Indications which cannot be protected by registration under the Act, the criteria and grounds for rejecting the registration is provided under section 9 of the Act.

IV. REGISTRATION ENTITLEMENT AND THE PROCEDURE THEREOF

Section 8 of the Act states that the Registrar of Geographical Indications may classify the goods by the International Classification Standards to a particular territory, locality or region of the country and arrange it in the form of an Alphabetical Index of Classification of Goods and thereby decides the entitlements of goods to be registered with a particular geographical area. Registration Procedure is provided extensively under Section 11 of the Act, which talks about parties eligible to apply for registration, contents of the registration application, and the subsequent scrutiny and publication procedure. Upon receipt of the application, the Registrar Advertises it in the Geographical Indications Journal and receives Opposition to the publication thereof. After all these machinations have been duly adhered to, the registration is granted by the Registrar by a Certificate which contains the Seal of the Geographical Indications Registry.

V. VALIDITY OF REGISTRATION AND OTHER ANCILLARY CONSIDERATIONS

The registration of Geographical Indications is valid for 10 years, after which it can be renewed by payment of a prescribed fee. In case the registered proprietor fails to pay the requisite fee for renewal, the Geographical Indication’s registration would lapse. Restoration could be done by paying the fee to Registrar within one year from the date when the last registration expired.

VI. POST REGISTRATION REGULATORY MECHANISM

The registration of Geographical Indication is not mandatory but Section 20 states that the right to sue for infringement arises out of the infringement of only a “Registered Geographical Indication”, which again connotes the indispensability of registration to enable a registered proprietor to effectively enforce his/her rights. Section 21 of the Act states about the rights that registered Geographical Indications are connected with, like the right to sue for infringement and right to exclusive use. Section 24 provides that Geographical Indications are not the subject matter of assignment, transmission, mortgage, pledge., etc. An appeal may lie from Registrar’s order to the Intellectual Property Appellate Board within three months from the date of order.

VII. LANDMARK PRONOUNCEMENTS

Scotch Whisky Association v. Pravara Sahakar Karkhana Ltd.[1], Plaintiff sued the defendant for using words “Blended Scotch Whisky”, which could be held that Plaintiff had sufficient interest in preventing the passing off of Indian Whisky to protect the reputation of their brand.

Tea board of India v. ITC Ltd.[2], the Plaintiff claimed that Defendant has misappropriated the word “Darjeeling” in the word “Darjeeling Lounge”. However, the court held that there cannot be GI Tag for the word “Darjeeling” alone. 

India-US Basmati Rice CaseRiceTec, a US-based company was granted Patent for Basmati Rice by US Patent Office, India took refuge of the TRIPS and challenged the grant of patent Decision was given in favor of India, as Patent by name of Basmati was scrapped and was given of Bas 867, RT 117 and RT 121, which are rice lines of a Pakistani Basmati.

Darjeeling Tea Case, In the 1980s, Tea Board undertook many efforts to protect the special Darjeeling Tea from being misused and infringed upon, as there was an imminent threat to it from tea being imported from Nepal, Sri Lanka., etc. Board created a Logo and registered it in foreign jurisdictions which lent it some protective umbrella. However, presently it is protected under The Geographical Indications of Goods (Registration & Protection) Act, 1999.

Odisha-West Bengal Rasgulla CaseIn this case, Odisha laid a claim that Rasgulla originated from Jagannath Temple in Puri in and around the 12th Century. On the other hand, West Bengal claimed that it was first prepared by a West Bengal confectioner Nobin Chandra Das in the 1860s. Initially, GI Tag was granted to the West Bengal. Odisha filed a petition against this grant of GI Tag and finally managed to secure the GI Tag for its indigenous and local version of Rasgulla in July

2019. Now, this same product would be recognized in two different states with two different textures and tastes.

VIII. CONCLUSION

Geographical Indications serves to protect the rich and diversified heritage and cultural products which have the potential to be signature products for India at the Global level. They instill a sense of confidence in the concerned geographical region that their products are safer and are being protected from any potential infringement. India has come a long way in strengthening its Geographical Indications branch of the Intellectual Property Rights by enacting the appropriate National Legislation. The act was even amended further in the year 2002 to bring it to line with the commitments of India under several international instruments such as the TRIPS. It is hoped that India as a country, would continue to not only effectively utilize the rich cultural heritage that it has to its advantage, but to also keep on strengthening its protective legal framework to provide thrust and boost to the economy. 

Author(s) Name: Rahil Setia (Army Institute of Law)

Image

[1] AIR 1992 Bom 294.

[2] CS No. 250 of 2010.