Geographical Indication of Goods

(Registration and Protection ) Act,

1999

Name: Dominic Alvares

BBA.LLB (H) Section-B

A322115111

Batch 2015-2020
What is Geographical Indication ?

In simple layman language the term Geographical Indication would refer to “a sign that
identifies a product as emerging from a particular location or area which provides the product
a unique quality or reputation or some other characteristic.”1

As per World Intellectual Property Organisation (WIPO), “a geographical indication (GI) is a

sign used on products that have specific geographical origin and possess qualities or a
reputation that are due to that origin. The qualities depend on the geographical place of
production, there should be a clear link between the product and it’s original place of
production”. 2

India being a member of the World Trade Organisation (WTO) are bound to comply with the
Agreement on Trade – Related Aspects of Intellectual Property Rights.3

Section 2(3)(e) of the Geographical Indication of Goods (Registration and Protection) Act,
1999 defines “geographical indication” 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 a locality in that territory, where a
given quality, reputation or other characteristic of such goods is essentially attributable to it’s
geographic origin and in the 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 maybe”.4

Article 22(1) of the TRIPS agreement reads, “geographical indications are, for the purpose of
this agreement, indications which identify a good as originating in the territory of a member,
or a region or locality, in that territory, where a given quality, reputation and or other
characteristic of the good is essentially attributable to it’s geographical origin.5

1
https://www.ipos.gov.sg/AboutIP/TypesofIPWhatisIntellectualProperty/Whatisageographicalindication.aspx
2
http://www.wipo.int/geo_indications/en/
3
“The Protection of Geographical Indication In India” – Dr. Sudhir Ravindran, Arya Mathews.
4
http://www.wipo.int/wipolex/en/text.jsp?file_id=128105
5
https://www.wto.org/english/docs_e/legal_e/27-trips_04b_e.htm
Objective

The objective behind the enactment of this Geographical Indication of Goods (Registration
and Protection) Act, 1999 by Act no. 48 of 1999 on 30th December, 1999, can broadly be
categorised under three thresholds.6

a. Geographical indication by means of specific law governance could adequately

protect interests of the producers of such goods.
b. Exclusion of unauthorized persons by carrying out geographical indications would
protect consumers from being deceived.
c. Goods bearing Indian geographical indications would be promoted in the export
market.

Conditions for Registration

Any producer, organisation, association of persons, or authority established under law has the
right or power to apply for a geographical indication, as long as the person applying
represents the interests of the producers.

The registration application for a geographical indication should be in written form, alongside
the prescribed fees, and it should be addressed before the “Registrar of geographical
indications”.7

The corollary to Section 98 of the Geographical Indications of Goods (Registration and

Protection) Act, 1999 deals with conditions for registration of certain geographical
indications. The conditions include :
a. The geographical indications be such that it is not of deceiving or confusing nature.
b. The geographical indications be such that it is not contrary to any existing enforceable
law.
c. The geographical indication be such that it does not contain any obscene or
scandalous content.
d. The geographical indications be such that it does hurt any religion or section of
society of the country.
6
http://www.ssrana.in/Intellectual%20Property/Geograhical%20Indications/GI.aspx
7
Section 3 of the Geographical Indications of Goods (Registration and Protection) Act, 1999.
8
http://lawmin.nic.in/ld/PACT/1999/The%20Geographical%20indications%20of%20goods%20(Registration%20
and%20Protection)%20Act,%201999.pdf
 e. The geographical indication be such that it does not disentitle to protection in any
court.
f. The geographical indications be such that the determined generic names or indications
of goods are not ceased but protected in their origin country.
g. The geographical indications be such that it truly represents the goods to the territory,
locality or region of it’s origin and not elsewhere.

The Geographical Indication Registration Process

The registration process under the Geographical Indication of Goods (Registration and
Protection) Act, 1999 requires a few number of steps as per rules laid down by the
Geographical Indications Registry, Intellectual Property, India.
The steps are as follows: 9
1. Filing of application: the initial step is to check whether the indication falls within
the ambit of the definition of a Geographical Indication under Section 2(1)(e) 10 of the
Act.
 Application must be in triplicate form.
 Application must be duly signed by the applicant or his agent and must be
attached by a statement of case.
 Application must contain details of special characteristics and information
regarding how such standards are to be maintained.
 Application must contain three certified copies of the map of the specified
region relating to the Geographic Indication.
 Application must contain details of the inspection structure for regulation of
Geographic Indication to the territory it relates.
 The application must include the applicant’s address. In case of multiple
producers, collective reference to all the producers are to be made in the
application and the geographic indication if registered would be accordingly
indicated in the register.

The applicant is required to have an address for service in India. The application as per
the guidelines are to be filed either be a registered legal practitioner or a registered agent.

9
http://www.ipindia.nic.in/the-registration-process-gi.htm
10
http://www.advocatekhoj.com/library/bareacts/geographicalindicationsofgoods/index.php?Title=Geographi
cal%20Indications%20of%20Goods%20(Registration%20and%20Protection)%20Act,%201999
2. Preliminary Scrutiny and Examination: the application process is followed by a
scrutiny and an examination.
 The application is scrutinized by the examiner to monitor deficiencies.
 After the scrutinised report mentioning the deficiencies are informed to the
applicant, it must be clarified and amended by the applicant within one month.
 The statement of case attached in the application is reviewed and assessed by
consultative board of experts.
 After the due scrutiny and assessment process is completed, the Examination
report is issued.
3. Show cause notice: after the issue of the examination report, the following procedure
is followed.
 If the Registrar is unsatisfied or has an objection regarding the application, he
communicates the same to the applicant.
 The applicant is then required to respond within a period of two months or
apply for a hearing.
 The applicant needs to communicate his decision, and if he / she is going for
appeal, a request for the same is to be made within one month.
 If an application is accepted in error, the Registrar may withdraw the
application after providing an opportunity of being heard.
4. Publication in the Geographical Indication Journal: After the application is
accepted, within three months it has to be published in the Geographical Indications
Journal.
5. Opposition to Registration: after the publication in the Geographical Indications
Journal, a procedure for “opposition to registration” may arise.
 Any person within three months (extendable by one month on request) from
publication at the Geographical Indications Journal has the opportunity to file
a notice of opposition against the application.
 The copy of the “notice of opposition” is sent to the applicant by the Registrar.
 The applicant is required to send a copy of the counter statement within two
months.
The copy if the counter statement is to be served to the person filing the
“notice of opposition” by the Registrar. If an applicant fails to reply with the
counter statement, it is presumed that he has abandoned his application.
  Both the parties are then required to lead their evidences by way of an
affidavit and supporting documents, and subsequently a date of hearing is
fixed.
6. Registration: the main registration process actually is completed with this process.
 Once the application for the Geographic Indication is registered, the Registrar
finally registers the geographic indication. The date of filing is regarded as the
date of registration.
 A certificate with the seal of the Geographic Indications Registry is issued by
the Registrar to the applicant.
7. Renewal: the registration of the Geographic Indication is for a period of 10 years or
for the termed period till the date on which the registration of geographic indication in
respect of which the authorised user is registered expires, whichever is earlier, after
which it needs to be renewed by payment of a renewal fee.
8. Appeal: persons aggrieved by the orders or decisions have the option for appeal
before the Intellectual Property Appellate Board (IPAB) within a period of three
months.

Public Review11

The public has the power to inspect the documents.

 Section 78(1)12 mentions about certain documents which are generally available at the
Head office of the Geographical Indications Registry.
 A copy of the registration certificate and related documents mentioned under section
78 of the act, as per Central Government inspection rules are to be present at the every
branch office of the Geographic Indications Registry.
 The inspection by the public can be done on the payment of a certain fee on all
working days of the Geographical Indications Registry as prescribed by the Registrar.
 Central government on occasions may direct the Registrar to distribute copies of
journal and documents to encourage public review.

11
http://www.ipindia.nic.in/the-registration-process-gi.htm
12
http://www.advocatekhoj.com/library/bareacts/geographicalindicationsofgoods/index.php?Title=Geographi
cal%20Indications%20of%20Goods%20(Registration%20and%20Protection)%20Act,%201999
Need for registration under Geographical Indication of Goods (Registration and
Protection) Act, 1999.

Registration under the Geographical Indication of Goods (Registration and Protection) Act,
1999 ensures certain rights on the registered proprietors and authorised users.

Following are some of the rights:13

1. In case of infringement of Geographical Indication, the aggrieved party has the right
to obtain relief.
2. Exclusive right towards use of Geographical Indication in relation to goods in respect
of which geographical indication is registered.
3. In case of multiple authorised users for a registered geographic indication, the users
have co – equal rights.

Landmark Case Laws

Imperial Tobacco Co. v. Registrar, Trademarks14: The Calcutta High Court in this case
explicitly explained the term and the following concept of “geographic term”15 as:
“geographical terms and words used in common use designate a locality, a country, or
section of country which cannot be monopolized as trademarks…… a geographic name
according to it’s ordinary signification is mark inherently or alternatively incapable of
registration subject to certain exceptions.”

Tea Board, India v. I.T.C. Limited1617: This case was filed before the Division Bench of the
Calcutta High Court. In this case the Tea Board of India bearing the “geographic indication”
– “Darjeeling” and the logo of a woman holding tea leaves was dealt with as the certification
trademark “Darjeeling” under the Trade Marks Act, in connection with tea. The ITC Sonar
Hotel in Kolkata named it’s executive lounge hotel as “Darjeeling Lounge”.

The question raised was whether by virtue of certification trade mark, the plaintiff could
restrain the defendant for infringement and passing off, in carrying out the business of
hospitality services for naming one of it’s lounges in the hotel as “Darjeeling Lounge”,

13
http://www.mondaq.com/india/x/519434/Trademark/Geographical+Indications+Law
14
AIR 1977 Cal 413 of 422
15
http://lawmantra.co.in/protection-of-geographical-indications-gis-from-infringments-an-indian-perspective/
16
GA No. 3137 of 2010, CS No. 250 of 2010.
17
http://www.selvamandselvam.in/blog/the-tea-board-vs-itc-limited-going-overboard-with-gi/
wherein the food and beverage items served to the customers are not necessarily restricted to
products grown or evolved in the Darjeeling district.

The Court in this judgment was of the opinion that the Tea Board’s prima facie failure in
proving violation of its registered certification trademarks in relation to Section 75 of the
Trademark Act18 was because they did not register the name of the mark “Darjeeling” in
respect to hotel business, instead registered it with the intention of certification of tea grown
in Darjeeling wherein Sections 28 and Section 29 of the Trademark Act are unavailable.

Conclusion

Intellectual property rights nowadays are more controversial, political and economical.
Patents, copyrights, trademarks, service marks, designs and geographic indications are few of
the most discussed and debatable topics especially when relating to biotechnology, food
security, trade, education, research and public health. Therefore, in this highly mechanised
economy of today, understanding of IPR’s has almost become a matter of informed policy
relating to matters of human development. Geographical indication therefore, is an emerging
arena for intellectual property matters, which needs to be protected and safeguarded using
necessitated legislations.

18
https://indiankanoon.org/doc/1613598/