Geographical Indication An Analysis
Geographical Indication An Analysis
Geographical Indication An Analysis
1 WTO, Background and the Current Situation: Geographical Indications in General (Nov. 2008),
www.wto.org/english/tratop_e/trips_e/gi_background_e.htm.
1. Inclusive of appellations of origin 4 and indications of source5: Hai Hau Rice; Phu
Quoc Fish Sauce The definition of GIs in TRIPS is broader in its scope than appellations of
origin but narrow as compared to indications of source. 6 To illustrate, GIs may indicate
any of the aforementioned attributes in goods by means of words, phrases, symbols and the
like. However, appellations of origin are restricted to the geographical name of the
originating territory and relate only to the quality and characteristics of products. For
example, Hai Hau Rice and Phu Quoc Fish Sauce are appellations of origin from
Vietnam. On the other hand, indications of source extends to an indication referring
directly or indirectly to a country of origin and does not require the conditionalities as above. 7
In other words, an indication of source on a given product is merely subject to the condition
that this product originates from the place designated.8 There is no quality or characteristic
linkage. Nevertheless, the point remains that these two traditional concepts were instrumental
in fashioning the scope of geographical indications under the TRIPS.
2. Expressing Direct and Indirect Indications: Sabah Seaweed and 'Longjing Tea' :-Since,
GIs are indications which seek to identify the source, they can be both direct, i.e., the
geographical names per se, and indirect, i.e., indications expressed via names or symbols. 9 An
example of the former would be Sabah seaweed from Malaysia and the Thai Chaiya
4 Paris Convention for the Protection of Industrial Property, art. 1(2), Mar. 20, 1883, 21 U.S.T. 1583,
828 U.N.T.S. 305 [hereinafter Paris Convention]; Lisbon Agreement for the Protection of
Appellations of Origin and their International Registration, art. 2, Oct. 31, 1958, 923 U.N.T.S. 205
[hereinafter Lisbon Agreement].
5 Paris Convention art. 1(2) and 10, supra note 13; Art. 1(1), Madrid Agreement for the Repression of
False or Deceptive Indications of Source on Goods, Apr. 14, 1891, 828 U.N.T.S. 163 [hereinafter
Madrid Agreement].
6 Min Chiuan Wang, The Asian Consciousness and the Interest in Geographical Indications, 96
TRADEMARK REP. 906, 907 (2006).
7 WIPO, Geographical Indications: Historical Background, Nature of Rights, Existing Systems for
Protection and Obtaining Protection in Other Countries, at 4, SCT/8/4 (2002).
8 Priyanka Sardana and Vijay Sardan, Geographical Indications: Natural Competitive Advantage, at
http://www.pfionline.com/index.php/columns/ipr/122-geographical-indications-natural-competitive-
advantage.
salted eggs where both Sabah and Chaiya are the geographical names directly referring to
the products. On the other hand, Longjing tea also known as Dragon Well tea, is a variety of
roasted green tea from Hangzhou, Zhejiang Province in China but the name by itself does not
provide any geographical reference.
Article 22(3) of TRIPS further posits a connection between trademarks and GIs; it is seen as a
logical complement to Article 22(2) (a) by stretching forth the protection of GIs to the area of
trademarks.11 It recognises a positive obligation on member countries to refuse or invalidate
the registration of a trademark, which consists or contains a GI, which has the effect of
misleading the public as to the true place of origin.
4. GIs as Intellectual Property: Does it fit the bill? :- Under the TRIPS, GIs form a subset of
the corpus of intellectual property rights, but, as the foregoing analyses of the constituent
elements indicates, the rights protected appear to belong to a very unique public sphere
11 DANIEL GERVAIS, THE TRIPS AGREEMENT: DRAFTING HISTORY AND ANALYSIS 194
(Sweet & Maxwell, 2nd ed. 2003).
rather than in private.12 Thus, the beneficiary in the case of GIs is almost often an association
or group of manufacturers in the particular field rather than an individual producer. Further,
though other intellectual property branches are defined by the spatial and temporal factors,
GIs appear to be protected by uninhibited rights to exclude others perpetually. Thus, while
patents, copyright, trade marks and design rights have specific terms of protection, GIS are
not restricted by any such conditions. It is manifest that GIs are distinguishable from the
remaining branches of intellectual property like patents, copyright and trademarks. However,
even though the rationale for the incorporation of GIs into TRIPS remains hazy, this right to
exclude use on non-GI products is sanctioned by the international community on general
policy grounds to individual geographical areas so that they can sustain their products'
quality and local investments.13
Secondly, the consumers mental association between the indication, the place, the goods, the
qualities or characteristics of the goods, and the producers elevates a geographic sign to the
level of a distinctive source identifier in that it functions to distinguish one producing
source from another producing source when used on particular goods. 15 Thus, as pointed out
by WIPO, false use of geographical indications by unauthorised parties is detrimental to
consumers and legitimate producers. While the consumers are induced with the belief that
12 Alberto F. Ribeiro de Almeida, The TRIPS Agreement, the Bilateral Agreements Concerning
Geographical Indications and the Philosophy of the WTO, E.I.P.R. 2005, 27 (4), 150-53, at 150.
13 Irene Calboli, Expanding the Protection of Geographical Indications of Origin under TRIPS:
Old Debate or New Opportunity?, 10 MARQ. INTELL. PROP. L. REV. 181, 203 (2006).
14 Frances G. Zacher, Pass the Parmesan: Geographic Indications in the United States and the
European Union Can There Be Compromise?, 19 EMORY INTL L. REV. 427, 431 (2005).
15 Amy P. Cotton, 123 Years at the Negotiating Table and Still No Dessert? The Case in Support of
TRIPS Geographical Indication Protections, 82 CHI.-KENT L. REV. 1295, 1295 (2007).
they are buying goods of a particular attribute, they are in effect duped with an imitation. This
harms the business and reputation of the manufacturers.
Thirdly, the significance of protecting GIs is also furnished by the cultural element. The
uniqueness vests in that the producer or manufacturer of the product is a collective, a group
that has some unifying inherent characteristic, trait or quality that it is trying to
protect.16Likewise, protection of geographical indications considers the traditions and number
of generations associated with production of the food or beverage. 17 Following such a notion,
Daphne Zografos, a leading commentator on the value and importance of Geographical
Indications in economic growth, argues that traditional cultural expressions in the form of
handicrafts may also be recognised under the ambit of GIs due to the symbolic connection
between the artisanal product and the influencing culture.18
Having examined the ambit of GIs under Article 22(3), we may now turn to an examination
of the current standards of protection under the Agreement.
Scope of Protection against Infringement
A unique feature of GIs under the Agreement is that there is a distinction between the levels
of protection accorded to goods generally and to wines and spirits. As a starting point, there
is a minimum standard of protection which applies to all GIs regardless of the nature and type
of goods. It is left to the individual member countries of the WTO to determine the most
appropriate method of protection, the basic premise being that a GI should not mislead the
public as to its true origin. A higher level of protection is conferred on wines and spirits
generally and an extra-additional protection for wine GIs. The use of GIs identifying wines or
spirits not originating in the place indicated by the GI is prohibited, even where the true
origin of the wines and spirits is indicated, or the GI is accompanied by expressions such as
kind, type, style, imitation or the like. It is not a necessary to show that the consumers might
be misled or the use constitutes unfair competition. In respect of wines, TRIPS provides for
16 Michelle Agdomar, Removing the Greek from Feta and Adding Korbel to Champagne: The
Paradox of Geographical Indications in International Law, 18 FORDHAM INTELL. PROP. MEDIA
& ENT. L.J. 541, 560 (2008).
17 Stacy D. Goldberg, Who Will Raise the White Flag? The Battle between the United States and the
European Union over the Production of Geographical Indications, 22 U. PA. J. INTL. ECON. L.
107, 108 (2001).
18 Daphne Zographos, Can Geographical Indications Be a Viable Alternative for the Protection of
Traditional Cultural Expressions?, in NEW DIRECTIONS IN COPYRIGHT LAW 37, 38 (Fiona
Macmillan & Kathy Bowrey, eds., 2006).
further protection for each GI for wines in the case of homonymous indications and
establishment of a multilateral registry for GIs for wines. Such a hierarchical system of
protection is evidence of the tussle between the old world countries who wanted higher
standards for all GIs and the new world countries who were not agreeable to the
proposition as the latter did not have any significant GIs to protect and therefore was not
ready to accept enhanced minimum standards.19
It is manifest that the provision did not purport to create an exclusive substantive right but left
it to the discretion of the member countries to implement in their national legislations. As a
result, countries provide the protection under different legal regimes, either operating alone or
in conjunction with each other, for example, laws under unfair competition, consumer
protection, protection of certification marks, sui generis laws ie, the Geographical Indications
of Goods (Registration and Protection) Act of 1999 provides for registration and protection of
GIs pertaining to India.
In the context of public confusion and unfair competition, TRIPS envisages safeguard
mechanisms in Articles 22(4) and 24(8). Consequently, the use of homonymous GIs is
prohibited even though literally true as to the territory, region or locality in which the goods
originate, they falsely represent to the public that the goods originate in another territory.
Similarly, Article 24 (8) applies where a persons name is similar to the geographical
indication in a manner, which has the effect of misleading the public.
Thus, the decisive factor in the protection of GIs is whether the public is being misled or
unfair competition is caused. This leads to different protection for the same GI in different
Each Member shall provide the legal means for interested parties to prevent use of the
geographical indication identifying wines for wines not originating in the place indicated by
the geographical indication in question, even where the true origin of the goods is indicated
or the geographical indication is used in translation or accompanied by expressions such as
kind, type, style, imitation or the like.21
22 G.E. Evans and Michael Blakeney, The Protection of Geographical Indications after Doha: Quo
Vadis? 9 J. INTL ECON. L. 575, 581 (2006).
23 Kevin M. Murphy, Conflict, Confusion and Bias under TRIPS Articles 22-24, 19 Am. U. Intl L.
Rev. 1181, 1224 (2004).
Application for GI
Geographical indication is generally owned by a community. Any organization or association
of people established under law can apply for geographical indication in prescribed format
indicating the interest of the producers of the concern goods.
Qualifications for GI
The following are the geographical indications that cannot be registered in India:
1. Things 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
2. Things which comprise or contain any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India
3. Things which would otherwise be disentitled to protection in a court
4. The use of which would be likely to deceive or cause confusion
5. The use of which would be contrary to any law for the time being in force
6. Things which comprise or contain scandalous or obscene matter
7. Things 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.
Registration for GI
An application shall be made in the prescribed format with the Form GI-1.
From the perspective of a developing country, one of the best features of the Indian Act is the
comprehensive definition given of GI, whereby agricultural, natural and manufactured goods
all come under the ambit of GI. This is especially important in the Indian context considering
the wide variety of goods that is deserving of protection ranging from agricultural products
like Basmati, Darjeeling tea to manufactured goods such as Banrasi sari, Kolhapure chappals,
Chanderi silk etc. Section 11 of the Act provides that any association of persons, producers,
organization or authority established by or under the law can apply for registration of a GI.
Another important aspect of the Act is the possibility of protecting a GI indefinitely by
renewing the registration when it expires after a period of ten years. In the domestic context,
the Indian Act has tried to extend the additional protection reserved for wines and spirits
mandated by TRIPS to include goods of national interest on a case to case basis. Section 22.2
of the Act endows the Central Government with the authority to give additional protection to
certain goods or classes of goods. This is especially important in the developing country
context considering that we may not have wines and spirits to protect like the West but other
exotic niche products like teas, rice etc.
A number of observers point out that of all the different types of intellectual property rights,
GI may be more amenable to the particular context of developing countries. GIs may
especially facilitate protection of the collective rights of the rural and indigenous
communities in their indigenous knowledge, ensuring that the entire community which has
preserved the knowledge and has passed it on with incremental refinement over generations,
stand to benefit from the knowledge and that this is not locked up as the private property of
one individual24. Other advantages of GIs are that the knowledge remains in the public
domain, the scope of protection is limited to controlling the class and/ or location of people
who may use the protected indication and the rights can potentially be held in perpetuity as
long as the product-place link is maintained 25. Also, holders of a GI do not have the right to
assign the indication, thus, preventing its transfer to non-locale producers.
Evidence on the socio-economic impacts of GIs in the Indian context are, however, limited
although anecdotal evidence suggests that GIs have significant implications for producers in
developed and developing countries26. Interestingly, the collective nature of GIs also brings to
the fore significant collective action related problems across various stages of organization
and governance.27 For example, a group of producers may take the initiative in the GI
registration process, while others not willing to join initially may join later thereby attempting
to free-ride on the efforts of the forerunners. In India, there are many GIs that are registered
in the names of some central or state government departments or bodies, yet there is no
homogeneity among those initiatives and involvements across states. A number of studies
have also found that GIs could lead to exclusion of many from enjoying the benefits. 28 Firms
with better bargaining positions may also end up making disproportionate share of the
economic value generated from securing protection.29
It is against this backdrop that our study has tried to assess the situation on the ground with
respect to a number of registered GIs, through indepth, field level case studies as well as
primary survey based on a standard questionnaire prepared for the purpose. Some of these
27 Das, 2009.
29 Rangnekar, 2004.
case studies include Muga silk of Assam, Banaras brocades and saris, Malabar pepper and
Vazhakulam Pineapple, all of which are registered GIs.
The Patent Information Centre of the Assam Science Technology and Environment Council
(ASTEC) secured registration for muga in 2006, which is incidentally the first registered GI
from the north-eastern region. While ASTEC is the registered proprietor of the muga GI, till
date, there are no registered users. One to one interviews with weavers and silk traders in the
town of Sualkuchi revealed very low awareness about the GI protection of muga. While the
price of muga has been rising over the last few years, that has little to do with GI registration.
The reason for the high prices of the muga yarn, according to the various stakeholders
interviewed, are diminishing area under muga cultivation owing to rubber cultivation,
diseases at the cocoon stage, loss incurred due to the outdoor nature of muga rearing, and so
on. Nevertheless, higher prices have not been able to encourage the farmers to hold on to
muga cultivation. As a result, muga has become almost three times more expensive,
compared with other similar varieties of silk. Apparel with 100 per cent muga yarn is rarely
produced these days, except to cater to the state emporiums, or for special orders. Muga is
often blended with imported tussar silk from China or with other indigenous silk yarn such as
pat. Meanwhile, as observed in the field, power-loom is getting increasingly popular for
muga weaving, dealing a further blow to handloom weavers. In an interview, an applicant for
registered use of muga observed that fabric woven on the power-loom has certain advantages
and could be the only way out for entrepreneurs like him as many weavers are leaving the
profession owing to un-remunerative wages. Regarding the setting up of a quality control and
inspection mechanism, as required by the law, ASTEC has proposed employing the services
of the Seri Bio Lab of the Institute of Advanced Study in Science and Technology, Guwahati,
Malabar pepper
Malabar pepper is famous for its quality. It is classified under two grades garbled and un-
garbled. History is replete with instances of foreigners coming to the Malabar Coast to trade
in Indian spices in general and pepper in particular. It is stated that the exorbitant price of
pepper during the middle ages, a trade which was monopolized by the Italians, forced the
Portuguese to seek a sea route to reach India. Pepper is used as a spice and it has also got
medicinal properties. Malabar pepper is cultivated in the geographic regions comprised in the
Malabar region of the erstwhile Madras Presidency. Now these areas comprise in the states of
Kerala, Karnataka and Tamil Nadu. Malabar pepper accounts for around 25 per cent of the
entire worlds supply of pepper. This pepper is unique for its sharp, hot and biting taste.
Highly aromatic, with a distinctive fruity bouquet, it has the perfect combination of flavour
and aroma. In order to protect the brand value of Malabar pepper, the Spices Board applied
for a GI registration and after completing the formalities the registration was granted. As
pepper is exported in huge quantities, there was a feeling that the GI tag would give better
legal protection against counterfeit products, more visibility to the brand etc. None of the
respondents interviewed by TERI researchers were aware of any infringement action initiated
against any of the counterfeit producers. There was also a general feeling that it is the traders
who reap benefit out of the GI tag and not the farmers. The general refrain was that farmers
do not get any extra benefit from the GI tag, which is also corroborated by findings from the
TERI survey discussed later. The general mood in the sector at the time of field visit was a
worry over the declining price in pepper. There were demands that there should be a complete
ban on future trades in pepper.
Vazhakulam Pineapple
There was considerable interest shown among the academia and practicing lawyers about the
GI tag for Vazhakulam Pineapple. Some interviews were conducted by TERI researchers as a
result of this. Pineapple is produced as a commercial fruit crop in India. The main pineapple
producing states are Kerala, West Bengal, Assam and Tripura. Vazahkulam, known as the
Pineapple City, is located in Muvattupuzha taluka of Ernakulam district. The pineapple
cultivation in that region started in the forties. It is a variety called Mauritus which is
cultivated in this region. The pineapple produced in this region has a distinct taste. It is very
sweet and not very juicy. Because of these features, there is a huge demand for Vazhakulam
Pineapple.
From 1985 onwards, many farmers started taking up large scale commercial cultivation of
this pineapple. Because of less juice content in the fruit, this variety of pineapple is mainly
consumed as a fruit. These distinctive features were noticed in pineapples grown in an area
roughly falling within 60 kms in and around Vazhakulam. These areas fall under the revenue
districts of Ernakulam, Idukki, Kottayam and Pathanamthitta. However 90 per cent of the
pineapple is produced in Vazhakulam area only. The farmers attribute the distinctive taste of
the pineapple to the soil in the region. The main demand for Vazakkulam pineapple comes
from the state of Kerala only. The export market is mainly the Gulf countries.
As the fruit has to be consumed within 4 -5 days of harvesting, exporting does not make
much of commercial sense. In order to protect the brand name, GI application was jointly
filed by the Pineapple Farmers Association, Nadukkara Agro Processing Company Ltd.
(NAPCL), and the Kerala Agricultural University. The Pineapple Farmers Association is a
registered society under the Charitable Societies Act. It was formed in 1990 mainly to address
the marketing issues.
More than 500 pineapple farmers are members of this Association. The main objectives of the
association are: to unite and strengthen the pineapple farmers; to create awareness on farming
and marketing issues; to provide assistance in seeking financial and technical help from
various government and non-government agencies; and to engage in promotion activities.
The Nadukkara Agro Processing Company Ltd. is a public limited company with a
shareholding pattern of 70 per cent held by farmers and 30 per cent by the state of Kerala.
NAPCL is involved in the production of many pineapple based products like pineapple juice,
pineapple fruit candies among others. The Kerala Agricultural University was instrumental in
providing the scientific details needed for the GI registration and is involved as the inspection
body to regulate the quality standard parameters. The purpose of going for a GI registration
was for brand value. No case of infringement has come to the notice so far. The office bearers
of the farmers association were very candid in explaining that the major benefit of the GI
registration was the greater visibility of the brand. Most of the farmers are big farmers who
have taken land for lease. The lease land mainly comes from the rubber plantations, during
their replantation time. In the first 34 years of replantation, pineapple is cultivated as an
inter crop. These plantations would stretch from 50 100 acres. It is cultivated as an
intercrop in coconut farms too. There are farmers who have resorted to pineapple cultivation
as the main crop. There was a feeling among the representatives of the farmers association
that as GI is intended to help the marketing of the product as it brings in more brand
visibility, the farmers are not directly benefitted. The general feeling to be gathered after
interaction was that direct benefit for farmers was not seen as the purpose of GI tag.
33 Scotch Whisky Association v. Golden Bottling Limited , 2006 (32) PTC 656 Del.
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:
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 Act38 also prescribes for enhanced penalty for second or subsequent
conviction.
The Act 39 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. The Act empowers the Deputy Superintendent of Police to take cognizance of
35 Sections 38 and 39
36 Section 40
37 Section 42
38 Section 41
39 Section 46
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
isprima 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.40
Case-Laws
The Indian judiciary has played a significant role, particularly in the absence of any enforced
legislation, in protecting GIs. They have entertained petitions in cases of infringement of GIs
that misleads the consumer as to the place of origin or constitutes unfair competition. India
has also taken legislative measures by enacting the Geographical Indications of Goods
(Registration and Protection) Act, 1999 along with the Geographical Indications of Goods
(Registration and Protection) Rules, 2002 which on implementation would go a long way to
protect GIs and provide a model for other countries to follow.41
Imperial Tobacco Co.v. Registrar, Trademarks42:-
40 Sections 57 and 66
41 Suresh C. Srivastava, Geographical Indications and Legal Framework in India, Economic and
Political Weekly, September 20, 2003.
44 The term Ikat has its origin in Malay Indonesian expression Mangikat meaning to bind, knot or
wind around. PochampaalIkat, the technique of resist dyeing is mostly done with geometrical
designs, involves the sequence of tying (or wrapping) and dyeing exposed sections of bundled yarn to
get a pre-determined colour scheme prior to weaving. The patterns formed on the yarn are then
configured into the woven fabric.
The decision raised interesting ramifications on the GI marketplace in India, as 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.
Although the situation of GI protection at the domestic level is somewhat manageable, the
same is not true in regards to protection of GI at the international level. 47 For example, on an
average around 4 crorekgs of tea per annum is being sold globally as Darjeeling tea,
whereas the production of authentic Darjeeling tea is around 90 lakh kgs only.
Very recently master craftsmen from Varanasi are being lured to China to produce these
imitations with cheaper Chinese silk due to which imitations of the world renowned
Banarasi sarees are flooding the Indian market over the past several years, particularly in the
Surat region of the Indian state of Gujarat. These imitations cost only onetenth of the price
of an original Banarasi saree, and therefore posing a threat to the competition in India. 48 It is
for this reason that large section of weavers in Varanasi are now forced to look for other
means of livelihood.
Critical Analysis
An analysis of the legal framework as well as experiences with registered GIs, both from the
case studies and the survey indicate the presence of a number of challenges. An important
dimension of GI is that it does not protect knowledge or technology as such. It only protects
the name or indication. This essentially means that the famous Banarasi sari can be produced
anywhere in the world but it cannot be named Banarasi sari. For a price-conscious
consumer, it might not make much sense to buy GI certified products at a premium, if the
same product is available elsewhere. Some of the other challenges are given below.
47 Geographical Indications in the Indian Context: A Case Study of Darjeeling Tea, ICRIER
Working Paper No 11, September 2003.
Conclusion