GI - indication of collective ownership, linking a product with its place of origin and producers of goods.

Aranmula mirrors - The mystery of its production is a family gift handed over through generetions. It is an
exclusive product of Aranmula, a village in Kerala in India. It is not made of glass but in bell metal. This is a
unique art which is not found anywhere else in the world. These unique metal mirrors are the result of Kerala's
rich cultural and metallurgical traditions. Famous for its secretive construction method and uniqueness in the
make which get Patent protected with a Geographical Indication tag

Earliest treaties touching on GI - Paris Convention - protection of appellations of origin.

Paris Convention for Protection of Industrial Property, 1883:

One of the objects of industrial property is protection of indications of source or appellations of origin.

Industrial property encompasses - agricultural and extractive industries and to all manufactured or natural
products, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beers, flowers and flour.

Lisbon Agreement is a special agreement under the Paris Convention. So, any country party to the Convention
may accede to the Agreement.

Helps to protect appellations of origin in countries other than the country of origin.

(For your ref. An appellation of origin is a special kind of geographical indication generally consisting of a
geographical name or a traditional designation used on products which have a specific quality or characteristics
that are essentially due to the geographical environment in which they are produced.)

GI is more broad than appellations of origin. i.e all appellations of origin are GI but not all GI are appellations
of origin.

TRIPS:

Protection of GI - Art. 22
How it defines GI
 · Signs which identify a good as originating in the territory of a particular or

· a region or locality in that country

· where a given quality, reputation or other characteristic of the good

· is essentially attributable to its geographical origin

Three major conditions

- it must relate to a good

- these goods must originate from a defined area

- the uniqueness of goods must be linked to the geographical origin – qualities, reputation or other
characteristics.

Wrt wines and spirits, additional protection - not only against misuse but also where the true origin is used in
translation or accompanied by expressions such as - kind, type, style, indication or the like.

Indications of Geographic origin fall into three broad categories:

i. indications of source - indication geographical origin of product

ii. appellations of origin - imputing a characteristic quality that relates to geographic factors;
iii. GIs - encompassing both indications of source and appellations of origin.

Under TRIPS, only if GIs are protected under domestic laws, they can be protected in foreign countries.
Thus, this made legislators include provisions allowing different interest groups to claim protection of GIs in
domestic laws. This makes it easier to claim protection in foreign countries.

GIs serve the same functions as TMs, because like TMs they are:
- source identifiers
- guarantees of quality
- valuable business interests

Differences
TM GIs
Private monopoly rights Collective public rights
Identify the source of the product Identify not only the source but also the
characteristic or quality associated with their
locality
Rights in TM may be assigned May not be assigned
Identifies a good or service as originating from Geographical region from where the product
a particular producer originates

TRIPS agreement contains three distinctions in the level of protection

1. for GIs related to all products -22 - definition of GI, how member states should ensure that rights of interested
parties with GIs must be protected
2. for wines and spirits – 23 - exceptions - grandfather clause i.e a Member shall not diminish the
protection of geographical indications that existed in that Member immediately prior to the date of entry into
force of the WTO Agreement
- Each Member shall provide the legal means for interested parties to prevent use of a geographical indication
identifying wines even where the true origin of the goods is indicated by expressions such as “kind”, “type”,
“style”, “imitation” or the like.

3. for generic varieties – 24  this is an exception to article 22. (example – chedar)

Nothing in this Section shall require a Member to prevent continued and similar use of a particular geographical
indication in connection with goods or services by any of its nationals or domiciliaries who have used that
geographical indication in a continuous manner with regard to the same or related goods or services in the
territory of that Member either (a) for at least 10 years preceding 15 April 1994 or (b) in good faith preceding
that date.

GI Act of India:

The Geographical Indications of Goods (Registration and Protection) Act, 1999 was promulgated to comply
with TRIPS.

s 2(1)(f) - goods - any agricultural, natural or manufactured goods or any goods of handicraft or of industry
including foodstuff.
The Act defines "geographical indication" (s. 2(1) (e)), in relation to goods as
- 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 r preparation of the goods concerned takes place in such territory, region or locality, as the case
may be.
Eg: Tequila, Scotch, Cognac, Roquefort cheese

Who is a Producer: s. 2(1) (k)

"producer", in relation to goods, means any person who,-
a. if such goods are agricultural goods, produces the goods and includes the person who processes or
packages such goods; eg: Basmati
b. if such goods are natural goods, exploits the goods; eg: Nagpur Oranges
c. if such goods are handicraft or industrial goods, makes or manufactures the goods, and includes any
person who trades or deals in such production, exploitation, making or manufacturing, as the case may be, of
the goods; eg: all handicrafts - mysore silk etc.

Significance of the act

it confers legal protection to GI
prevent unauthorized use of registered GI
it provides legal protection to GI in India which in turn promotes the export and economic benefits to the
country

Any name which is not the name of a country, region or locality of that country shall also be considered as GI 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.

Roquefort cheese as GI:

- originated in the region of Roquefort-sur-Soulzon, south of France, and matured in the same caves of
this village for minimum 4 months.
- Roquefort comes from the ewe’s milk, the processing of the curd, the Penicillium roqueforti and then the
maturation in the natural caves.
- The mold Penicillium roqueforti was found in the same caves where the cheeses aged.
- Roquefort is noted for its sharp, tangy, salty flavor and its rich, creamy texture.
- Though some are made in Corsica, the final aging is in the limestone caves of Roquefort where the cool
and humid atmosphere promotes growth of the mold Penicillium roqueforti.
- Only cheese that is processed at Roquefort, France, may be labeled “Roquefort Cheese.”
- Its characteristics - aging in the caves + milk from the particular sheep.

Tirupathi laddu:
- Received GI tag under category of foodstuff (s. 2(f))
- the famed sweet laced with a generous helping of dried fruits and nuts.
- It is prepared by Visakha sect of Bramins inside the sacred kitchen of the Srivari temple in Tirumala
shrine.

Protection against misleading use means than it needs to be assessed if consumers are misled by the use of a
designation similar or identical to the GI at issue.
A designation maybe a GI in one country, TM in another or a generic term in still another country.
Eg: SWISS - GI for watches, TM for an airline, generic term for type of cheese in most countries.

Main Function of GI
- to identify the origin of goods
- points to a specific place or region of production that confers particular characteristics and qualities on the
product
- prevent misuse of designation or presentation of a product, which indicates that the product originates in a
place different from where it actually originates.

Prohibition of Registration: s. 9
a. likely to deceive or cause confusion
b. contrary to any law for the time being in force
c. comprises or contains scandalous or obscene matter
d. comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the
citizens of India
e. which would otherwise be disentitled to protection in a court
f. which are determined to be generic names or indications of goods and are not protected in their country
of origin, or which have fallen into disuse in that country; or
g. 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.

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.

Federal Republic of Germany v. Commission of European Communities (Feta case)

- Q was whether Feta could be recognized as designation of origin as it has been used for considerable
time in Member States other than Greece.
- Acc. to the Commission - Feta was not a generic name.
- Various intervening Governments held otherwise - it is Italian for slice, in Balkans and Middle East it is
used to refer to cheese in brine.
- Contented also that it does not owe its quality and characteristics to a geographical environment and that
the name Feta is not the name of a geographical area.
- But the Court concluded that that consumers in Greece considered that Feta carries a geographical and
not a generic connotation.
- Moreover, in other Member States, Feta is commonly marketed with labels referring to Greek cultural
traditions and civilization.
- Thus, consumer in other Member States perceive Feta as a cheese associated with Greece, even if in
reality it has been produced in another Member State.
- Hence, the Court concluded that the term Feta is not generic.

Bloomfield Co. Ltd. v. Bagaria Business Pvt. Ltd.

- Bloomfield tea indicates tea of a geographical place and plaintiff cannot claim any exclusive right to the
same.
- Held that, Bloomfield being a place in Darjeeling and the Defendant being the owner of a tea estate
there is entitled to use the trade name Bloomfield for selling tea and the plaintiff has no right to resist
particularly when he has no tea estate in the area.
Bisleri International (P) Ltd. v. Dadi Balsara
- held that the words ‘Himalayan’ and ‘Himalaya’ designate the geographical origin and so there is no
distinctive character and are incapable of even acquiring secondary meaning.

Procedure and Duration of Registration - Chapter III

Can be summarized as:

Step 1 - Filing of Application - ss. 8 and 11
Step 2 - Preliminary Scrutiny
Step 3 - Examination - s. 11(5)
Step 4 - Show cause notice
Step 5 - Publication in the GI Journal (within 3 months)
Step 6 - Registration (s. 16)
Step 7 - Renewal (s. 18)
Step 8 - Appeal (to IPAB within 3months - Chapter VII)

Procedure for Registration: s. 11

Who may apply for registration:

- any association of persons or producers or any organization or authority
- representing the interest of the producers of the goods concerned
- who are desirous of registering a GI in relation to such goods
- shall apply for registration to the Registrar in writing

The application shall contain

a. reasons as to why the goods are to be given GI
b. class of which it applies to
c. geographical map of the territory
d. particulars regarding appearance of GI
e. particulars of the producers of the concerned goods (if any)

Filed in the office of the GIs Registry within whose territorial limits the GI is situated.
If not situated in India, it is to be filed in the territorial limits of the place mentioned in the address for services
in India, as disclosed in the application, is situated.

The application is examined by the Registrar who may

- accept it absolutely
- accept it subject to amendments, conditions, limitations, modifications or
- refuse it

If, after acceptance of application but before Registration, the Registrar is satisfied that:
a. The application has been accepted on error
b. in the circumstances of the case, GI should not be registered ; or should be registered based on
conditions and limitations; or registered based on conditions and limitations different from the one to which
the application has been accepted,
the Registrar, may, after hearing the applicant (if he desires), withdraw the acceptance and proceed as if the
application was not accepted.

If application is accepted for registration absolutely or with conditions/ limitations, the Registrar shall cause it
to be accepted with the conditions/ limitations and advertise it in the manner prescribed. (s. 13)

Opposition to Registration:

- Any person within 3 months of advertisement of application of registration may give notice in writing,
in the prescribed manner, of opposition to the registration.
- Registrar shall serve this copy on the Applicant who has to submit a counter-statement within 2 months.
(If he doesn’t do so, application is deemed to be abandoned)
- Parties may be heard, evidence accepted and the Registrar shall decide if registration is to be permitted
or not.

If neither of the parties resides or carries on business in India, Registrar may require him to give security for the
costs of proceeding before him.

Registration - s.16:
Registrar will register the application
- when application for registration has been accepted and,
- time for opposition has expired or opposition has been decided in applicant’s favour and,
- the date will be taken from the date of making of the said application.

s. 18 - it is for a period of 10 years. May be renewed from time to time.

Walker (John) and Sons Ltd. v. Henry Ost and Co. Ltd. (Scotch Whiskey case):
- this case concerned with the product blended whiskey
- this class was entitled to the goodwill in the descriptive term ‘Scotch Whiskey’
- this class was not restricted to traders who dealt in whiskey that had been blended in Scotland but
extended to suppliers of blended whiskey wherever the blending process took place provided that the
ingredients of their product consisted exclusively of whiskies that had been distilled in Scotland
- The court found that the descriptive name under which goods of a particular type or composition were
marketed by the plaintiffs among others happened to have geographical connotations is significant.
- If a product of a particular character or composition has been marketed under a descriptive name and
under that name has gained a public reputation which distinguishes it from competing products of different
composition, the goodwill in the name of those entitled to make use of it should be protected by the law
against deceptive use of the name by competitors, if it denotes a product of which the ingredients come from a
particular locality,
- but should lose that protection if the ingredients of the product, however narrowly identified, are not
restricted as to their geographical provenance.

Egs: whiskey case, champagne case etc. from TM

The effect of Registration is seen in s.20 which prohibits any person to institute any proceeding to prevent, or to
recover damages for, the infringement of an unregistered geographical indication.
However, this does not affect the rights of action against any person for passing off goods as the goods of
another person or the remedies in respect thereof.

Scotch Whiskey Assn. v. Golden Bottling Ltd.

- the plaintiffs filed a suit for restraining the defendant from dealing with whisky under the name ‘Red
Scot’ or any other name containing the word ‘Scot’
- The Scotch Whisky Act and the Scotch Whisky Order showed that even in Scotland, all whiskey
produced need not necessarily fall within the definition of Scotch Whisky.
- Scotch whiskey is known worldwide as a whisky produced in Scotland and is advertised as such.
- Df was manufacturing and selling ‘Red Scot’ whisky which gave an impression that it is Scot whisky.
- It was argued that ‘Scot’ or ‘Scotch’ is a GI within the meaning of Art. 22(1) of TRIPS as it identifies
whisky produced in Scotland.
- The plaintiff being the holder of unregistered GI, the court injuncted the Defendants from passing off its
‘Red Scot’ whisky as a produce of Scotland.

Rights conferred by registration: Ss. 21 and 22

i. right to obtain relief in respect of infringement of the geographical indication
ii. to the authorized user - the exclusive right to the use of the GI wrt the goods under which it was
registered

Infringement - s. 22
GI is infringed by a person who, not being an authorised user thereof,-
i. uses such geographical indication by any means in the designations or presentation of goods that
indicates or suggests that such goods originate in a geographical area other than the true place of origin of
such goods in a manner goods; or which misleads the persons as to the geographical origin of such goods; or
ii. uses any geographical indication in such manner which constitutes an act of unfair competition
including passing off in respect of registered geographical indication.
iii. uses another geographical indication to the goods which, although literally true as to the territory, region
or locality in which the goods originate, falsely represents to the persons that the goods originate in the
territory, region or locality in respect of which such registered geographical indication relates.

"act of unfair competition'' means any act of competition contrary to honest practices in industrial or
commercial matters. They include:
- all acts of such a nature as to create confusion by any means whatsoever with the establishment, the
goods or the industrial or commercial activities, of a competitor;
- false allegations in the course of trade of such a nature as to discredit the establishment, the goods or the
industrial or commercial activities, of a competitor;
- geographical indications, the use of which in the course of trade is liable to mislead the persons as to the
nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the
goods;

Penalty for infringement - 6months to 3years; 50k to 2 lakhs (Chapter VIII)

s. 23 of the GI Act like s. 31 of TM Act recognizes registration of a GI to be prima facie evidence of its validity.

Black Hills Jewelery Mfg. Co. v. Gold Rush Inc.

- the appellees are in the business of manufacturing a certain design of gold jewelry which they market
under the name “Black Hills Gold Jewelry”
- The defendants too used the same name to describe their jewelry which was similar in style to the
appellees, but not manufactured in the Black Hills of South Dakota.
- District Court - likelihood of confusion to consumers. who wished to purchase a product produced in the
Black Hills. Appellees have been making this high quality jewelry for over 100 years and sold it as Black Hills
Gold Jewelry.
- Also, this would allow appellants to wrongfully profit from appellees’ reputation and goodwill and
result in business losses to appellees.

Also write J. Bollinger v. Costa Brava Wine Co. Ltd., Vine Products Ltd. v. Mackenzie and Co. Ltd.

Tea Board of India v. ITC (can also be used for TM)

- The Tea Board of India holds the famous GI “Darjeeling” and the logo of a woman holding tea leaves,
as well as the certification trade mark “Darjeeling” under the Trade Marks Act, in connection with “tea”.
- ITC, Limited used “Darjeeling Lounge” as the name for its executive lounge at its Kolkata hotel.
- The Tea Board had previously filed a suit against ITC for using the word Darjeeling for their lounge.
The suit mainly revolved on issues of infringement of the GI and the certification TMs, as well as for passing
off and dilution.
- Df’s contention was that the GI Act is intended only for goods and the defendant rendering a service will
not fall within the vice of infringement under the GI Act.
- The court held that the goods “tea”, does not confer any right over the word “Darjeeling”, a
geographical name, so as to prevent the defendant from rendering its services of hospitality to the public by
 naming one of the lounges of its hotel as “Darjeeling Lounge” as the object of the G. I. Act is to give better
protection of geographical indications relating to goods.
- with respect to certification of TM, the court held that “Darjeeling” cannot be exclusively claimed by the
plaintiff by virtue of its registration as a GI or as a certification TM.
- Wrt passing off, it can be complained of if the word or the GI has any nexus with the product with which
it is exclusively associated upon the registration. In this case, it is hardly that the people would confuse a high
end lounge with a product.
- Wrt dilution, the name “Darjeeling” has been extensively used in trading and commercial circles for
decades before the GI Act was enacted. Thus, the plaintiff’s recent registration would prima facie not entitle it
to enjoy the kind of exclusivity that it asserts.

Darjeeling Tea as GI:

- ‘Darjeeling’ tea is a premium quality tea cultivated, grown, manufactured and produced in the hilly
regions of the Darjeeling district
- it has distinctive characteristics of quality and flavor
- it maintains a global reputation for more than a century for its distinctive taste
- It still follows the orthodox method of production - using old traditional industrial method which helps
the tea to maintain its inherent aroma.
- The first attempt on the part of the Tea Board of India towards protection of the ‘Darjeeling’ brand was
undertaken way back in 1983, when the ‘Darjeeling’ logo was created. The Tea Board obtained home
protection for the Darjeeling logo as a certification trade mark under the Indian Trade and Merchandise Marks
Act 1958 (now the Trade Marks Act, 1999).
- The logo was later registered as a trademark in several other countries like the UK, the USA, Canada,
Japan
- TheTea Board applied for GI protection of ‘Darjeeling’ in October 2003. In October 2004, Darjeeling
was granted the GI status in India to become the first application to be registered in India as a GI.
- to ensure the supply of genuine tea, a compulsory system of certifying the authenticity of exported
Darjeeling Tea was incorporated into the 1953 Tea Act in Feb 2000
- This system makes it compulsory for all cultivators to register themselves with the Tea Board of India
and obtain a license.
- Recognition of Darjeeling Tea as a Geographical Indicator in the international arena is still to be
achieved, primarily due to the fact that Article 23 of TRIPS gives good protection to Wines and Spirits, but
currently not for other products.
Assignment and Transmission : s. 24
prohibits assignment, transmission, licensing, pledge, mortgage and the like of the rights in respect of the
registered GI.

Prohibition of Registration of Geographical Indication as Trade Mark: s.25

The Registrar of Trade Marks shall refuse or invalidate the registration of a TM which -
a.  contains or consists of a geographical indication with respect to the goods or class or classes of goods not
originating in the territory of a country, or a region or locality in that territory which such geographical
indication indicates, if use of such geographical indications in the trade mark for such goods, is of such a nature
as to confuse or mislead the persons as to the true place of origin of such goods or class or classes of goods;
b. contains or consists of a geographical indication identifying goods or class or classes of goods notified under
sub-section (2) of section 22.

A. Bailey & Co. Ltd. v. Clark, Son & Morland Ltd. - Glastonbury case
- case related to registration of TM ‘Glastonburys’ in respect of slippers.
- Glastonbury - name of a town.
- enjoys a reputation connected with sheepskin slippers and the efficient tanning of the sheepskins with
the wool which are used in their manufacture.
- Lord Russell held that one would always pay higher prices for slippers made in Glatsonbury as opposed
to anywhere else as there is something about their tanning which does not appear anywhere else.
- It was held that the word ‘Glastonburys’ ought not to have been registered as a TM.

Chapter VI of the Act deals with Rectification and Correction of the Register. The same is done by the Tribunal
either on application of an aggrieved person or suo motu.

Appeals: Chapter VII - ss. 31 to 36

Any person aggrieved by an order or decision of the Registrar may prefer an appeal within 3 months from the
date on which the order or decision is sought to be appealed against.
After expiry of 3 months, an appeal may be allowed only by showing sufficient cause.
No court or other authority shall have or, be entitled to, exercise any jurisdiction, powers or authority in relation
to the appellate provisions of the Appellate Board. (s. 32)
Appearance of Registrar in legal proceedings.- s. 35
The Registrar shall have the right to appear and be heard-
a. In any legal proceedings before the Appellate Board in which the relief sought includes alteration or
rectification of the register or in which any question relating to the practice of the Geographical Indications
Registry is raised;
b. in any appeal to the Board from an order of the Registrar on an application for registration of a
geographical indication or authorized user-
i. which is not opposed, and the application is either refused by the Registrar or is accepted by him subject
to any amendments, modifications, conditions or limitations, or
ii. which has been opposed and the Registrar considers that his appearance is necessary in the public
interest, and the Registrar shall appear in any case if so directed by the Board.

The Registrar may, in lieu of appearing, submit a statement in writing signed by him, giving such particulars as
he thinks proper of the proceedings before him relating to the matter in issue or of the grounds of any decision
given by him and such statement shall be evidence in the proceeding.

Defences: s. 47
If a person is accused of an offence under s.39 (applying false GIs), he can use the following defences
a. He was employed on behalf of other persons to apply GIs
b. He was not interested in the goods or other things by way of profit or commission
c. he had taken all reasonable precautions against committing the offence and that he had no reason to
suspect the genuineness of the GI
d. on demand made by/ on behalf of the prosecutor, he gave all the information in his power wrt the
persons on whose behalf the GI was applied.

When one is accused of an offence under 39, 40 (selling goods to which false geographical indication is
applied) or 41(second or subsequent conviction), one can plead that the registration of the GI is invalid.

Wrt infringement, first the validity of the registration is to be looked into. An application for the same can be
made to the Appellate Board.

Offences and Penalties: Chapter VIII (I feel it may be important for problem solving questions)
s.37 - Applying GI to goods is considered as an offence.
s.38 - falsification of a GI
- Applying of a GI by a person without the assent of the authorized user of the GI or
- using any package bearing a GI which is identical with or deceptively similar to the GI,
- for the purpose of packing, filling or wrapping therein any goods
- other than the genuine goods of the authorized user
- is considered as falsely applying a GI
- Penalty - 6months to 3 yrs + fine of 50k to 2lakhs

No person shall make any representation.-

a. with respect to a geographical indication, not being a registered geographical indication, to the effect
that it is a registered geographical indication; or
b. to the effect that a registered geographical indication is registered in respect of any goods in respect of
which it is not in fact registered; or
c. to the effect that registration of a geographical indication gives an exclusive right to the use thereof in
any circumstances in which having regard to limitation entered on the register, the registration does not in
fact give that right.
Penalty - 3yrs/ fine/ both

Relief in suit for infringement or for passing off: s. 67

i. Damages or account of profits
ii. Order for the delivery-up of the infringing labels and indications for destruction or erasure. (Delivery up:
this is a Court Order which requires one party to  deliver goods, plant, or documents to another party.)
iii. An order of injunction

s. 77 - Indexes:
There shall be kept under the directions and supervision of the Registrar,-
a. an index of registered geographical indications,
b. an index of geographical indications in respect of which applications for registration are pending,
c. an index of the names of the proprietors of registered geographical indications, and (d) an index of the
names of authorized users.