Trends in Geographical Indications

Geographical Indications

 

Introduction

In our day to day life everyone wishes to have the best products, be it clothes, watches, food, drinks or anything. People tend to ask for goods originated from the places they are famously known for. Cheese, for example, the Cotija introduced by the Mexicans, the Roquefort from France or the Mozzarella, a forte of Italy and so many that it gets hard to keep track of.

Famous ancient brands are sometimes associated with products that have a specific geographical origin and go back as early as the 5th century BC, such as wine from the Greek island of Chios, that is referred to as an expensive luxury good in classical Greece. To be sure about the products belonging exclusively from its place of specialty, there is a certain mark that assures the consumers of its originality and quality.

A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess all such qualities or a reputation that are due to that location. These qualities essentially depending upon the geographical place of production, creates a clear link between the products and the place of production. Geographical indications are typically used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products to communicate its originality and quality to the consumers.

Traditionally, Geographical Indications have been considered to be a part of Intellectual Property.  The Paris Convention for the Protection of Industrial Property of 1883 (Paris Convention) refers to “indications of source” and “appellations of origin” as objects of industrial property.[1] Paragraph (3) of the same article also specifies that the term “industrial property” is not limited to “industry and commerce” proper, but applies also to agricultural and extractive industries and to all manufactured or natural products, such as “wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers and flour”.

The basic concept behind the GIs is simple and most likely familiar with shoppers with certain tastes and preferences. Roquefort cheese, Darjeeling tea, Scotch, are some well-known examples of names associated worldwide with products of a specific nature and quality, known for their geographical origin and for having characteristics linked to that origin. The Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement)[2] defines geographical indications as “…indications which identify a good as originating in the territory of a Member [of the World Trade Organization], or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. “[3]

An appellation of origin (AO) is a unique sort of geographical indication generally consisting of a geographical name or a traditional designation utilized on items which have a particular quality or attributes that are basically because of the geographical environment in which they are created. Consumers are familiar with these products and often request for them – even unknowingly – using their geographical name. for example, the appellation ‘Swiss’ allotted to a particular class of watches means that those are manufactured according to the traditional methods that meets the expectations of the consumers worldwide. It is recognized for its quality and Geographical indication.

The geographical indication “Switzerland” or “Swiss” can be used on a watch if:[4]

  • its technical development is carried out in Switzerland;
  • its movement (the motor of the watch) is Swiss;
  • its movement is cased up in Switzerland;
  • the manufacturer carries out the final inspection in Switzerland; and
  • At least 60% of the manufacturing costs are generated in Switzerland.

A movement is considered to be Swiss if: [5]

  • it has been assembled in Switzerland;
  • the technical development is carried out in Switzerland;
  • it has been inspected by the manufacturer in Switzerland;
  • at least 60% of the manufacturing cost are generated in Switzerland; and
  • The components of Swiss manufacture account for at least 50% of the total value, without taking into account the cost of assembly.

Another imperative case to be considered is the unique kind of ceramic Chulucanas pottery, which has been made for ages now. The specific characteristics of the endemic natural resources utilized, like, local clay, the climate and the old and ancestral systems employed makes it one of a kind. In 2006, the “Asociación de CeramistasVicús, the “Asociación Civil de Ceramistas Tierra Encantada” and the “CITE Cerámica de Chulucanas” filed a request for the appellation of origin “Chulucanas”, which was registered in 2008.

Lisbon Agreement defines appellations of origin as “(1)… the geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.”[6]

 

Rights and Protections

A geographical indication right empowers the individuals who have the privilege to utilize the sign to prevent its use by an outsider whose item does not comply with the applicable standards. For instance, in the jurisdiction in which the Darjeeling geographical indication is secured, producers of Darjeeling tea can exclude utilization of the expression “Darjeeling” for tea not grown and produced in their tea gardens or not produced by the norms set out in the code of practice for the geographical indication.

In any case, an ensured geographical indication does not empower the holder to keep somebody from making an item utilizing an indistinguishable method from those set out in the standards for that sign. Protection for a geographical indication is generally obtained by acquiring an authority directly upon the sign that constitutes the indication.

Geographical indications are more than just a name or a symbol. They reflect a reputation strongly linked to geographical areas of varying sizes, thus giving them an emotional component.[7]A GI’s reputation is a collective, intangible asset. If not protected, it could be used illegally causing its value to be diminished and eventually lost. Protecting a GI authorizes those individuals who have the right to use the indication to take measures against others who use it without permission and benefit from its reputation free of charge (“free-riders”). Protecting a GI is also a way to forestall registration of the indication as a trademark by a third party and to limit the risk of the indication becoming a generic term.[8]

There are various approaches when it comes to protecting a GI-often by implementing two or more approaches. Three main ways to protect a geographical indication are:

  • so-called sui generis systems (i.e. special regimes of protection)

In specific purviews, GIs might be secured through a framework that applies particularly and solely to them – a sui generis arrangement of assurance or protection. Such systems set up a particular right, a sui generis ideal, over GIs, different from a trademark right or any other IP right. A sui generis security framework exists in the EU as to GIs for wines and spirits, agricultural items and food products. Many other different jurisdictions all around the world, for example, India, Switzerland, the Andean Community nations and the African Intellectual Property Organization (OAPI), among others, likewise have sui generis frameworks of assurance.

The terminology used to allude to sui generis rights over GIs is not uniform. Terms such asappellations of origin, controlled appellations of origin, ensured designation of origin, secured geographical indications or just simply geographical indications, are utilized as a part of various enactments.

Usually, an application for enlistment of a sui generis right ought to contain a delimitation of the land territory inside which the product recognized by the GI is produced; a depiction of the item’s characteristics, quality or reputation; and the standards of reputation; with which clients of the right ought to adjust. In certain jurisdictions, the connection between the item’s qualities and the geographical region must be substantiated. Each one of those components is contained in a document, which is sometime called “the product specification “.

Likewise, sui generis frameworks of protection generally require that confirmation and control schemes be established in order to guarantee that clients of the GI comply with the agreed standards of production.

A sui generis right ensures at any rate against any utilization of the GI that would delude shoppers with regards to the genuine topographical birthplace of the item, or that constitutes a demonstration of out of line rivalry. GIs recognizing wines and spirits are also ensured against any use by an ineligible or unapproved individual; even where such utility does not bring about shoppers being deceived or demonstrates an unfair rivalry. In a few jurisdictions with a sui generis framework, such “additional protection” is afforded to GIs that distinguish different kinds of items as well. Furthermore, some sui generis frameworks ensure protection of GIs against use in any interpretation, or against impersonation or inspiration.

Examples- ARGAN OIL, oil from the kernels of the argan tree, grown in Morocco, or GRUYÈRE for a cheese from a specific region in Switzerland

  • using collective or certification marks;

A few nations ensure GIs under trademark law, all the more particularly through collective marks or certification marks. This is the situation, for instance, in Australia, Canada, China and the United States of America.

What is meant by a collective mark or certification mark (or, in some countries, guarantee mark) differs from country to country. Be that as it may, a typical component of these sorts of imprints is that they might be utilized by more than one individual, as long as the clients comply with the regulations of use or standards established by the holder. Those regulations or standards may require that the mark be used only in connection with goods that have a particular geographical origin or specific characteristics.

In a few purviews, the principle contrast between collective marks and certification marks is that the former may just be used by anyone who complies with the standards defined by the holder of the mark. The holder, which may be a private or a public entity, acts as a certifier verifying that the mark is used according to established standards. Generally, the holder of a certification mark does not itself have the right to use the mark.

Insurance for GIs enlisted as collective or certification marks is provided for under general trademark law. At the end of the day, security is afforded against use in the course of trade by third parties without the owner’s consent, of indistinguishable or comparative signs for identical or similar goods where such utility would bring about a probability of disarray[9]

For examples, IDAHO POTATO for potatoes grown in the State of Idaho, in the United States of America, or; PUER for a dark tea from the Yunnan province, in China

  • Methods focusing on business practices

Geographical indications might be ensured through specific laws that emphasis on business practices, such as laws relating to the repression of unfair competition, consumer protection laws or laws on the labeling of products.

These laws do not create an individual industrial property right over the GI. However, they indirectly ensure GIs seeing as they restrict certain acts that may involve their unapproved utilization.

 

GI in India

In 2004, the first ever geographical indication mark was registered with the advent of Darjeeling Tea. Today the list consists of more than 270 registered GIs such as Pochhanpalli Ikat, Chanderi Handloom, ‘Basmati’ (rice), ‘Alphonso’ (mango).

The aim for introducing such act pertaining to GI was to ensure;

  • Protect for the interest of the producers and add prosperity to them.
  • Protect the consumers or buyers from deception and fraud.
  • Promote export of goods bearing GI quality.

A GI can be defined as: “ “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.”[10]

In India, a GI may initially be registered for a period of ten years, and it can be renewed from time to time for further periods of 10 years. Indian law place certain restrictions in that a registered GI is not a subject matter of assignment, transmission, licensing, pledge, mortgage or any such other agreement.

Since the 14th century it has been the specialty of Banaras to weave brocades with intricate designs with gold and silver threads. There was a time when few used banana tree resin to create threads which are then polished to give the look of silver or gold thread, these were known as kela sari and sold under the impression of being Banarasi Saris. This caused the legit producers to suffer huge loss and even those who bought them. But not long back, around 2009, the Banarasi Brocade was registered in the name of ‘Banaras Brocades and sarees. [11]

Another case of GI came forward in 2008, when Tirumala Tirupati Devasthanams Venkateswar, who manages all the affairs at Tirumala Venkateswara Temple (along with offering the Tirupati Laddu or Sri Vari Laddu)[12] came forward to register their famous laddu for GI in order to prevent black marketing of the same.

In the year 2005, the Government of Tamil Nadu applied for the registration of its famous Kanchipuram sarees to protect its authenticity and quality. These sarees are woven with heavy silk and gold clothand are worn by ladies on special occasions. The government of India recognized the same as an officially registered Geographical indication since 2005-06.

Every Indian might be aware of the famous ‘Nasik Valley Wine’, a place in Maharashtra where the wine is produced from more than 29 wineries. These are protected under the patent of geographical indication since 2010. Nasik is also occasionally known as epithet “The Wine Capital of India”.

In a landmark case of Imperial Tobacco Co. v.  Registrar,[13] Trademark, the Calcutta  High  Court  stated that the concept of “geographic term” namely: Geographical terms and words in common are used to designate a locality, a country, or a section of country which cannot be monopolized as trademarks; but a geographical name not used in geographical  sense  to  denote  place  of  origin,  but used  in  an  arbitrary  or  fanciful way  to indicate  origin  or  ownership  regardless  of  location,  may  be  sustained  as  a  valid trademark……A geographical name according to its ordinary signification is such mark inherently or otherwise incapable of registration subject to minor exceptions.

 

Tea Board, India vs. I.T.C. Limited[14]

This case featured a dispute over “DARJEELING” between Tea Board of India and ITC Limited. The Tea Board asserted exclusivity over “Darjeeling” and ITC maintained that there is more to “Darjeeling” than the tea that is grown there. Tea Board, India (registered proprietor of the GI “Darjeeling”) filed a case against ITC Limited for using the mark ‘Darjeeling’ for its Lounge at the hotel in Calcutta. Under the application for interlocutory injunction, concerned with the existence of a prima facie case of the Tea Board against ITC based on the Trade Marks Act, 1999 (TM Act) and The Geographical Indications of Goods (Registration & Protection Act, 1999 (GI Act), ITC contended that grievances with respect to rights breached under the GI Act are only restricted to goods and not against any services.

The Court concluded the Tea Board’s prima facie failure in proving violation of its registered certification trademark in terms of sec 75 of the TM Act as it had not registered its name as holder of the mark DARJEELING in respect of hotel business but for the purpose of certification of tea as one grown in Darjeeling where benefit of Sections 28 and 29 of the TM Act is not available.

The Calcutta High Court held that the word “Darjeeling” is not the exclusive right of the Tea Board, and decided the case in favour of the Kolkata hotel ITC Sonar and its Darjeeling Lounge.

 

Quite recently there arose a dispute between the states of West Bengal and Orissa, both claiming to be the creators of the famous sweet dish ‘Rasogolla’ (Rasgulla). This conflict started in 2015, when west Bengal applied for the GI status for the “Banglar Rasogolla” (Bengali Rasgulla). The Government clarified that there was no conflict with Odisha, and its application was only for a specific variant which was different in “both in colour, texture, taste, juice content and method of manufacturing” from the variant produced in Odisha.[15]The GI Registrar office at Chennai clarified that the GI tag was not for Rasgulla as a generic term, and was irrelevant to the debate about the origin of the sweet. The office also stated that Odisha had not so far applied for any GI tag, but it could also get a GI tag by presenting the necessary evidence.[16]

 

Development and challenges

Prior to the TRIPS agreement of the Uruguay round,[17] there were three important international conventions dealing with protection of IGOs, i.e. the Paris Convention for the Protection of Industrial Property,[18] the Madrid Agreement[19] and the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration.[20] While the Paris Convention and the Madrid Agreement dealt with ‘indications of source’, the Lisbon Agreement focused on protection of ‘appellations of origin’

The current GI and AO rules and regulation has evolved –

  • The Paris Convention for the Protection of Industrial Property (1883)
  • The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (1896)
  • The TRIPS Agreement (1995)
  • Nice Treaty (2003)
  • Lisbon Agreement (2009)

The Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications was adopted on 20 May2015.This significantly expands the scope of the Lisbon Agreement from just AOs, which are a narrower subset of GIs in which products are exclusively or essentially linked to a geographical environment, to the broader category of GIs.[21]

The GI has helped in the development of the rural areas by protecting their rights and giving them the credits they deserve, because GI products tend to generate a high premium that in return contribute to create employment which ultimately may help to prevent rural exodus. The GI added value to the region not just by earning profits but promoting the region as a whole by contributing to the creation and promotion of the ‘regional brand’. For example, the COMTÉ CHEESE, also known as the ‘Gold of Jura Mountains’(from eastern France).

A GI to be recognized just by registration, a court or administrative decision or other means, is not enough, per se, there is the set of rules and mechanisms underlying the functioning of a GI that ought to be followed. Developing a GI scheme involves a number of important steps, such as:[22]

  • identifying the product’s characteristics and assessing whether it has potential in internal or external markets;
  • strengthening the cohesion of the group of producers and other operators involved, who will be the pillars of the GI scheme;
  • Setting up standards, sometimes called a code of practice or regulations of use. The code of practice or regulations of use usually, among other things, circumscribes the product’s geographical region of production, and describes the production and processing methods. It may also describe the factors, natural and/or human, that are present in the region and contribute to the characteristics of the product;
  • devising a mechanism to effectively attribute the right to use the indication to any producer and other operator concerned who produces the product within the established boundaries and according to agreed standards;
  • establishing traceability, verification and control schemes in order to ensure continued quality and compliance with the code of practice or regulations of use;
  • devising marketing strategies;
  • obtaining legal protection for the GI and designing an enforcement strategy

It might take several years to complete a GI scheme due to various steps involved; however, the time consumed in this process varies on some of the following factors, among others:[23]

  • the level of cohesion and organization of the group of producers and other operators concerned;
  • the number and degree of conflicting interests and the way in which such interests are managed;
  • the number and level of obstacles to legal protection of the GI – domestically or in foreign markets;
  • the existence of institutional support

Over the recent past, the GIs have emerged quite significantly as a form of IPR in the Indian scenario. The GI mark helps the producers to distinguish their mark from the as well as enables consumers to select genuine and quality products. The Geographical Indications of goods (registration and protection) act, 1999 coupled with the ‘Geographical Indications of Goods (Registration and Protection) Rules, 2002 came in force w.e.f the 15th September 2003. It was drafted in compliance with India’s obligation under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs) of the World Trade Organisation (WTO) so as to take advantage of the ‘minimum’ standards of GI protection that the TRIPs sets out for the WTO members to comply with in their respective national legislations.[24]

But, prior to enactment of GI Act,[25] there was no law for the protection of geographical indication in India.

One can only protect its GI globally, if;

  • By obtaining protection directly in the jurisdiction concerned
  • By taking advantage of bilateral agreements concluded between countries
  • Through WIPO’s Lisbon System for the International Registration of Appellations of Origin

Remedies

Through the Madrid System for the International Registration of Marks (i.e. as a collective or certification mark)In the Indian scenario, the remedies relating to the infringement of Geographical Indications are similar to the remedies relating to the infringement of Trademark. Under the (Indian) Geographical Indications of Goods (Registration and Protection) Act, 1999, falsification of a Geographical Indication will carry a penalty with imprisonment for a term which may not be less than six months but may extend to three years and with fine which may not be less than INR 50,000 (approx. US$ 1075) but may extend to INR 2, 00,000 (approx. US$ 4300).

Under Section 67 of the GI Act, the civil remedies include injunctions (ex parte or any other interlocutory order) as well as damages or an account of profits, at the option of the plaintiff. This may be coupled with an order for the delivery-up of the infringing labels and indications for their destruction or erasure. In 2006, the Delhi High Court in the case of the Scotch Whisky Association v. Golden Bottling Limited [26]granted the plaintiff a permanent injunction as well as damages of Rs. 5,00,000/- under Sec. 67 of the GI Act. It also asked the defendant to bear the expenses of the litigation which was Rs. 3, 10,000/­-. In this case, Scotch whisky had a GI tag and the plaintiffs contended that the defendants were infringing on their GI tag by selling its whisky under the name ‘Red Scot’. The Court held that the plaintiffs intellectual property rights had been infringed upon and granted them relief under the GI Act.

The remedies available for protection of geographical indications may broadly be classified into Criminal remedies & civil remedies

Criminal Remedies

The Geographical Indications of Goods (Registration and Protection) Act, 1999 contains penal provision for violation of various provisions relating to geographical indications given below:

(i) Falsifying and falsely applying geographical indications to goods.[27]

(ii) Selling goods to which false geographical indications is applied.[28]

(iii) Falsely representing a geographical indication as registered.[29]

(iv) Improperly describing a place of business as connected with the geographical indications registry.

(v) Falsification of entries in the register.

The punishment prescribed for the aforesaid offences varies from six months to three years imprisonment and a fine of not less than Rupees fifty thousand but may extend to Rupees two lakh. However, the court for adequate and special reasons in writing may impose lesser punishment The Act also prescribes for enhanced penalty for second or subsequent conviction.[30]

The Act empowers the Court to direct the forfeiture to Government of all the goods and things by means of or in relation to which certain offences mentioned therein have been committed.[31] The Act empowers the Deputy Superintendent of Police to take cognizance of geographical indications offences and may search and seize things and articles involved therein

Civil Remedies

The suit for infringement has to be filed in court not inferior to that of a district court having jurisdiction. In any suit for infringement of geographical indications the defendant pleads that registration of the geographical indications relating to plaintiff is invalid, the court trying the suit shall:

(i) if any proceedings for rectification of the register to the geographical indications relating to plaintiff or defendant are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the geographical indications relating to plaintiff or defendant is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.[32]

Conclusion –

Even though being one of the oldest forms of IP, the concept of geographical indication has been recently made a subject of generalized interest. A GI tag/mark gives a sense of pride, not only to producers but also the consumers as a symbol of quality along with the surety regarding its originality and safety of rights to the parties involved. This concept of geographical indications and appellation of origin is a boon to people, not only in India but, worldwide. India has not been left behind in the race; rather it has legitimately taken the concept of IPR forward.

By:Aparna Jain, Harinder Narvan, Aashrika Ahuja and Ankita Banerjee, KNOWLEDGENTIA CONSULTANTS

 

 

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