Overall, geographical indications started getting recognition in the territories around the world in the form of a collective mark, a certification mark or a geographical indication. This was basis the national legislations which came to be adopted by a particular country and the scope of rights defined thereunder.

While none of the conventions offer protection to services which are originating from a region or are unique to a region, the TRIPS does not specifically bar protection to be extended to services. Accordingly, some national legislations extend the geographical indication protection to services. Some countries which extend the protection to services include Switzerland and Croatia.

In India, the Geographical Indications of Goods (Registration and Protection) Act, 1999 came into force on 15-9-2003. The basic objective of this legislation was to adopt the obligations under the TRIPS Agreement and also to provide a mechanism for protection of registered geographical indications. Under this legislation, 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.”^[1] The explanation to the definition, in compliance with TRIPS Agreement, states that “For the purposes of this clause, any name which is not the name of a country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be.”^[2] Therefore the Indian legislation provides specific protection to geographical indications which are not names of geographic locations.

Under the Indian legislation, a geographical indication may be registered in respect of goods falling under the classification identified by the Registrar, which include handicraft, agriculture, food, manufactured goods, etc., wherein, such class of goods in respect of a definite territory of a country, or a region or locality in that territory. The classification of the goods has to be in accordance with the international classification of goods for the purposes of registration of geographical indications. However, should there be any question inter alia as to the class within which any goods falls or the definite area in respect of which the geographical indication is to be registered the Registrar may pass a decision in respect thereof.^[3]

Further, the Indian legislation also provides for prohibition on registration of certain geographical indications, which includes geographical indication:

• the use of which would be likely to deceive or cause confusion;
• the use of which would be contrary to any law for the time being in force;
• which comprises or contains scandalous or obscene matter;
• which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
• which would otherwise be disentitled to protection in a court;
• 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; and
• 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, shall not be registered as a geographical indication.

The legislation further clarifies that for the purposes of the section on restrictions, “generic names or indications”, in relation to goods, means the name of a goods which, although relates to the place or the region where the goods was originally produced or manufactured, has lost its original meaning and has become the common name of such goods and serves as a designation for or indication of the kind, nature, type or other property or characteristic of the goods. It further clarifies that in determining whether the name has become generic, account shall be taken of all factors including the existing situation in the region or place in which the name originates and the area of consumption of the goods.^[4]

Further, any association of persons or producers or any organisation or authority established by or under any law in force representing the interest of the producers of the goods concerned, may apply for a geographical indication in the prescribed manner. Once the registration is granted it is valid for a period of 10 years and may be renewed for subsequent 10-year intervals perpetually.

If any person uses a registered geographical indication by any means in the designations or presentation of goods that indicates or suggests that such goods originate in a geographical area which misleads the persons as to the geographical origin of such goods or uses any geographical indication in such manner which constitutes an act of unfair competition including passing off in respect of registered geographical indication, then such person is said to have infringed a registered geographical indication. However, the laws of exhaustion of rights apply to goods bearing geographical indications. In other words, where the goods in respect of which a geographical indication has been registered, are lawfully acquired by a person other than the authorised user of such geographical indication, further dealings in those goods by such person including processing or packaging, shall not constitute an infringement of such geographical indication. An exception to this would be in a situation where the condition of goods is impaired after they have been put in the market.

In case of civil consequences, the registered proprietor and the authorised user may instate a suit (a) for the infringement of a registered geographical indication; or (b) relating to any right in a registered geographical indication; or (c) for passing of arising out of the use of any geographical indication which is identical or deceptively similar to the geographical indication, whether registered or unregistered. Criminal consequences include imprisonment for a term which may extend to two years, or fine, or both.

Unauthorised use of a geographical indication has civil as well as criminal consequences. In case of civil consequences, the registered proprietor and the authorised user may instate a suit (a) for the infringement of a registered geographical indication; or (b) relating to any right in a registered geographical indication; or (c) for passing of arising out of the use of any geographical indication which is identical or deceptively similar to the geographical indication, whether registered or unregistered. Criminal consequences include imprisonment for a term which may extend to two years, or fine, or both.

Currently India has 478 geographical indications registered for goods from various regions in India and abroad. The most recent additions include the Sambhal Horn Craft, which relates to artifacts made from horn and bone of dead animals; Mainpuri Tarkashi, which is a technique of inlaying brass, copper or silver wires in wood; and Mahoba Gaura Patthar Hastashlip, which is a stone craft done on a soft white-colour stone which is typical to the region. These three geographical indications are for the region of Uttar Pradesh. Some of the foreign geographical indications recognised in India include “Napa Valley” for wine from Napa Valley, United States of America; “Champagne” for sparkling wine from the region of Champagne, France; “Prosecco” for sparkling wine from Italy and “Lamphun Brocade Thai Silk” for handicrafts from Thailand.

Recent developments

While enforcement in respect of geographical indications has not seen a lot of court facing litigations, the courts in India have been prompt in taking action against unauthorised use of geographical indications, where required. Some reported judgments include the suit filed by the Tea Board against ITC Limited^[5], wherein ITC Limited had named one of its premium executive lounges in ITC Sonar Hotel as “Darjeeling Lounge”. The Tea Board did not succeed in the suit since the High Court at Calcutta observed that the registered geographical indication and certification trade marks are restricted to tea and cannot extend to lounge services. In another instance, the Tirumala Tirupati Devasthanams applied for registration of the Tirupati Laddu under Class 30. The registration was granted to this geographical indication tag. However, in 2009, a public interest litigation was filed in the Madras High Court on the grounds that the geographical indication was granted to a single producer, there is a lack of distinctiveness, and the geographical indication tag is generic in nature of the name. However, the petition was dismissed since an alternate and efficacious forum i.e. the Registry or the Intellectual Property Appellate Board (IPAB) (which was a functional body then) exists. The individual challenging the registration then went on to file a rectification with the intellectual property (IP) office, however, this was to no avail.

In respect of other development, the Department for Promotion of Industry and Internal Trade (DPIIT) in March 2023, has issued operational guidelines for financial assistance for undertaking the initiatives for promotion of geographical indications^[6]. This was issued in furtherance of DPIIT’s adoption of the National Intellectual Property Rights (IPR) Policy in 2016 to develop IPR ecosystem. Under the National IPR Policy, the Government of India undertook to provide financial assistance to eligible agencies for “initiatives for promotion of geographical indication”.

As per the operational guidelines, the objective is to provide varied platforms to geographical indication (GI) stakeholders thereby giving them ample opportunities for business development and income generation. These may include various exhibitions and fairs to showcase the products, thematic exhibitions, live demonstrations, buyer-seller meets, brand promotion events, seminars, gift fairs, niche market creation, etc.  Further, initiatives as per the operational guidelines would also include capturing socio-economic status of GI goods producers, their livelihood conditions and other related information, which would assist in devising suitable policy interventions. The operational guidelines also provide an illustrative list of eligible agencies and also an illustrative list of eligible activities for which financial assistance may be sought.

Conclusion

While recognition has been granted to geographical indication, often the right holders find there to be some overlap between geographical indication, trade mark and to some extent even traditional knowledge. Accordingly, in view of the governments initiative to provide financial assistance it would be interesting to see how the balance between the three rights is met with more geographical indication right holders coming forward and showcasing their work and consequently enforcing their rights.

Footnote

[1] Geographical Indications of Goods (Registration and Protection) Act, 1999, S. 2(1)(e)

[2] Geographical Indications of Goods (Registration and Protection) Act, 1999, S. 2(1)(e)

[3] Geographical Indications of Goods (Registration and Protection) Act, 1999, S. 8.

[4] Geographical Indications of Goods (Registration and Protection) Act, 1999, S. 9.

[5] Tea Board  v. ITC Ltd., 2011 SCC OnLine Cal 1083.

[6] Ministry of Commerce and Industry, Government of India, Department for Promotion of Industry & Internal Trade, TM and GI Section, Operational Guidelines for Financial Assistance for Undertaking the Initiatives for Promotion of Geographical Indications (GIs) <https://dpiit.gov.in/sites/default/files/Ops_Guidelines_10March2023.pdf>.

This article was originally published in SCC Online on 11 September 2023 Co-written by: J.V. Abhay, Partner and Apoorva Murali, Partner. Click here for original article

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