Geographical Indications Tags as Intellectual Property in India: Provisions, Procedures & Case Studies

Author: Shruti Bharat Mohite

Edited by: Sulesh Choudhary

INTRODUCTION

In this era of globalization, boundaries are no more boundaries. International players have found their way to pierce into the nook and cranny of the globe. Meanwhile, globalization has also adversely affected rural products, in turn affecting the livelihood of communities. There is a wide threat to rural products, and some of them are getting perished due to a lack of proper knowledge and financial resources. The local products are now facing the threat of losing their own identity in front of their global rivals, who usually carry a globally recognized brand name with them. Here comes the need of a global recognition of the local goods. Geographical Indications is one of the solutions to it. A geographical indication is a sign, which indicates the origin of a product. The origin is due to the various geographical -environmental factors like human factor, natural factor, or maybe a combination of both, which attributes some quality, reputation, and specific characteristics to the products. Geographical indications are considered as “traditional brand” because they are connected to the history and customs of a community. These products are neither made according to the needs of the market nor on the initiative of the business. Apart from these, they are naturally found in a place where a community is developing it there throughout the years. Therefore, the geographical indication is an emerging form of intellectual property rights

Keywords (Minimum 5): Intellectual property, GI Tags, trademarks, GI process

SUB-HEADINGS

Meaning, Definition & Explanation

The importance of the geographical indication is emerging, especially in developing countries, with an intention to protect the authenticity of rural products. A geographical indication is a signature that verifies the authenticity and also the place of origin of that product having unique features. As per TRIPS agreement the definition of GI ‘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 or other characteristic of the good is essentially attributable to its geographical origin’ 2 i.e., a product originating at a particular place having some reputation or characteristics or being manufactured/produced by a particular community are only eligible to get the GI tag. Thus, GI is a tool to promote the goods of a particular area. Some of the famous GI of India are Solapuri Chaddar from Solapur, Kolhapuri Chappal from Kolhapur, Darjeeling Tea, Kashmir saffron from J&K, Feni from Goa, Surat Zari craft, Mysore Silk from Karnataka etc.

Section 2(e) of the Geographical Indication of Goods (Registration and Protection) Act 1999 defines ‘geographical indications’ in relation to goods to mean: “An indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a county, 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 the case where such goods are manufactured goods one of the activities of either the production or of processing or preparations of the goods concerned takes place in such territory, region or locality, as the case may be.”

 Definition of Geographical indication by WIPO: – The WIPO defines GI as, “…a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin.”

European Commission Regulation, on the Protection of Geographical Indications: GI is defined as, “being the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or foodstuff:

1. originating in that region, specific place or country, and
2. which possesses a specific quality, reputation or other characteristics attributable to that geographical origin the geographical link must occur in at least one of the stages of production and /or processing and/or preparation of which takes place in the defined geographical area.”

Historical Background / Evolution

Right from the medieval period, when there was no proper legal protection for trade, products based out of geographical regions were famous. People from Europe and other parts of the world wanted to acquire those products because of its regional characteristics, such as spices from India and tea from China. Initially, GI was protected by the respective regional rulers and the laws prescribed by them. Some rules with respect to GI can be traced back to the 14th and 15th centuries in European countries like England and France. Later in the 20 century, proper formation of rules of GI was framed. France was the only country in the 20th century to enact a comprehensive system for the protection of GI. A major part of this system influence in the drafting of both national and international treaties. Before the 20th century, only three multilateral agreements were addressed for the protection of geographical signs by the World Intellectual Property Organizations (WIPO). The two different parameters which WIPO set for identifying the GI were “the Indication of Source” and “Appellation of Origin.”

Before the GI act, which was enacted in the year 1999, there were no formal procedures or any legal law in India to protect the producers of those products which were either or manufactured within the geographic regions of India. Since then, the judiciary and the government have been active in preventing persons who take unlawful advantage of GI products. Hence, through the enactment of the GI act, maximum protection is guaranteed to the producers to protect their products and curb fake products. This, in turn, helps to improve the socio-economic status of people from rural areas. In Mohan Meakin Breweries Ltd. v. The Scotch Whiskey Association in the year 1980 was related to a brand name ‘Highland Chief used in relation to the product described as “Malted Whisky” along with a device of the head and shoulders of a Scottish gentleman wearing feather bonnet and plaid and a tartan edging gives the impression that the product in relation to which it is used comes from Scotland and is thus likely to deceive or confuse the unwary purchaser in India. The Delhi High Court refused to register the applicant’s mark on Whisky. Similarly, in another case of Scotch Whisky Association v Pravara Sahakar Karkhana in the year 1991, the Hon’ble Justice.Mr.D. R Dhanuka, the Scotch Whisky Association succeeded in restraining the defendants who were selling their Whisky under the description “blended with scotch” along with the word “drum beater with the device of Scottish drummer wearing a kilt or tartan.

Difference between geographical indications and trademarks

Geographical indications and trademarks are different forms of intellectual property rights. Geographical indications and trademarks are signs used to distinguish goods and services. Both forms of intellectual property help the consumers to identify the products. This is the common element between these two rights. Because of this similarity, both these rights are often used interchangeably. One of the major advantages of GI is that the product with the GI tag never compromises on the quality. This expectation also increases the purchasing of the product. GI is thus very much similar to the functioning of the trademark. The major difference is that trademark helps us to identify the goods of a certain organization. There is no geographical region associated with the trademark.18 But, when it comes to GI, the place of origin plays a very important role in identifying the product’s quality. This makes GI differ from other intellectual property rights. GI is fixed and cannot be sold separately from the granted region. For example, GI has been provided to Ratnagiri Alphonso mango, where Ratnagiri is a region in Maharashtra where these mangoes are grown. But if some farmers from Ratnagiri migrate to another place and start cultivating Alphonso mango, then the same cannot be sold with the former GI tag. A trademark is a creative sign used by the owner or the person authorized too so. The same trademark can be sold or leased to another person by the same establishment, owning it. For example, the McDonalds golden arch is an example for a trademark, and the owner and franchise can use it. Whereas, GI cannot be licensed to any other person. Human creativity is needed for making trademarks.

1. Goods, originating in a particular territory, region, or locality: – Origin of goods is one of the vital elements in determining GI. But to identify the origin, proper delimitation of the region is necessary considering the specific nature of the product. Delimitation means dividing a particular area into appropriate administrative zones. It will help to identify that the concerned geographical area is situated in a specific zone or region. For example, Aranmula Kannadi. Aranmula is a region in the Pathanamthitta district. The Kannadi (Mirror) is made in the region called Aranmula. Hence it is called Aranmula Kannadi, increasing the importance of the area called Aranmula.
2. Quality: – Quality is one of the main attractions of goods having a GI tag. The quality of goods is mainly due to two things (1) natural quality and (2) quality attributable to the method of manufacturing. Natural qualities mainly due to the physical and chemical properties of raw materials, temperature, and climate of that particular region, soil, landscape, etc. In the case of agricultural products, quality depends on the soil, harvesting methods, seeding, and packaging of the finished products. For example, the prominent Palakkadan matta is popular because of its unique taste, which is cultivated in the district of Palakkad Kerala. This rice is cultivated in the dense black cotton soil. The soil contains clay and silt, which gives a natural flavour to the rice. Quality attributable to the method of manufacturing includes the quality of raw materials and the method of manufacturing. The actual presentation of the product is also due to the quality.
3. Reputation: – Reputation of the goods is related to the historical origin of the goods. Every good having GI tag has some history. It will help to distinguish it from other forms of product. While registering for GI tag, the applicants must show the proof of origin, i.e., the history related to the product.
4. Terroir: – There is another element other than quality and reputation but which can be linked between the product and its geographical origin, which is called terroir. Terroir is connected with the human environment and natural instincts, which can sometimes be spiritual aspects. Thus, terroir sometimes lacks scientific technology and analysis. Therefore, some feel that terroir cannot form the basis for geographical indications.

Legal Provisions / Procedure / Specifications / Criteria (if any)

The Basmati rice and Darjeeling tea controversy are the major incidents that can be quoted with respect to the passing of Geographical Indication of Goods (Registration and Protection) Act 1999. The law provides specific rules for the registration and protection of GI. The act is administered by the Controller General of Patents, Designs, and Trademark. The Controller General is also called as the Registrar of GI. There are three main objectives of GIGA. They are, (i) Protection of Geographical indications of goods in the country could, in turn, protect the interest of producers of such goods (ii) Misuse of GI by unauthorized persons and also to protect consumers from misleading (iii) To bring economic prosperity to the country by promoting the GI in the trade market. The Indian GIGA Act provides for multilateral registrations of GI, including owners from outside India.     

GI Process in India

To apply for Geographical Indications, there are four types of application which need to be examined as to which should be proceeded with. They are:

1. Ordinary application: – an application filed to register a GI of India
2. Convention application: – an application filed for GI registration from a convention country, i.e., any country or group of countries which are signatories or party to an international region or bilateral treaty. It should submit the proof of registration of that GI in the home country.
3. Single class application: – an application submitted for the registration of GI less than one class of category.
4. multi-class application: – an application submitted for the registration of GI under more than one category of goods. As the registrar is the appellate officer of GI, the registration of GI is made to the registrar by the associations or communities of producers of the concerned goods. The application must contain:

(i) A statement indicating the proof of origin of the product, its quality, reputation or other characteristics may be due to the human and natural factors and methods like production, processing takes place with respect to a particular region or territory.

 (ii) The product should be represented as a true Geographical Indication without any supporting samples.

 iii) There should be proper journals or report with a unique feature of the product, and the same must be produced to the concerned people inspecting the product.

 (iv) A geographical representation or a map of the territory of the country must be submitted.

(v) Where a particular attribute of a product, for example, the colour of the product is claimed to be an element of a GI in the application for registration, the application must contain a clear explanation stating the importance of that attribute.

Case Laws / Precedents / Overruling / Judicial Development of the Concept 

The two major incidents that triggered the need for a strict rule for the protection of GI are:

Basmati Controversy

On September 2nd, 1997, the United States Patent and Trademark Office granted a patent to RiceTec inc. a US MNC based in Alvin, Texas, for new “lines and grains” in the name of “Basmati” rice. The reason providing the trademark is because of the claim made by RiceTec Inc that the new variety of rice developed by them possessed better characteristics than original Basmati rice, which can be grown in specific areas in North America. For several years they have been using the trademark names “Texmati,””Kasmati,” and “Jusmati,” which they claimed to be a version of Basmati rice. From India’s perspective, this was not at all acceptable because,

 (i) The grant of the patent was invalid

 (ii) Marketing of rice with the name basmati was against India’s interest as it was considered as a GI in India.

Basmati is a long-grained aromatic rice variety vastly grown in sub-Himalayan areas by using traditional methods and practices for centuries. Hence no other country should be allowed to use this indication. Indian Basmati rice is being exported to many countries, and the highest demand for this rice was from Europe. Due to this high demand in Europe, there was a very minimal duty on Basmati rice. But after the RiceTec Inc. started its own Basmati variety, the competition increased among different varieties of Basmati rice, and India feared to lose a huge market. RiceTec inc. claimed that the patent was granted to new ‘Basmati’ (lines and grains) and considered it as an improvement over the previous variety. They also argued that Basmati was a generic name for all types of aromatic rice, not a variety of rice from Indian origin. They claimed that Basmati was used in a generic way for decades for different varieties of rice, such as ‘American Basmati,’ ‘Uruguayan Basmati’ and ‘Thai Basmati.’ According to them, Basmati is not the name of any geographical area, but India claims that the name, reputation, and quality of the rice are truly dependant on its area of origin, i.e., India subcontinent. Therefore, it needs to be protected under the TRIPs agreement. RiceTec Inc. Still argued and stated that their products are stated as ‘American type Basmati rice,’ which is prohibited under the TRIPs agreement for GI under Article 23 with respect to wines and spirits and not for other products. India challenged the patent of RiceTec inc. in the year 2000. The US Patent and Trademark Office (USPTO) rejected granted patents only three types of hybrid Basmati grain and rejected seventeen types out of a total of twenty patents claimed by the company. The patent office also stated that patents could be granted to the three different varieties of Basmati because the term Basmati was neither a trademark nor a geographic indicator, unlike Champagne, which was specific to a region. They also stated that Basmati was grown all over the Indian subcontinent and was not limited to India’s specific region. The US grocery stores thus saw Texamti and Jasmati hitting their shelves post in the mid- the 1990s. This purely goes against Indian interest, and if the developed countries like the US put pressure on developing nations for allowing patenting of crops in their wish, the developing countries will lose the right to challenge the patents on their crops.

Darjeeling Tea Controversy

Another major issue problem faced in India was an incident related to Darjeeling tea. Darjeeling tea is a special kind of tea found in the Darjeeling district in the northern Indian state West Bengal. The problem was related to companies around the world selling tea with the brand of Darjeeling but, was not grown in Darjeeling. Due to these fake products resembling as Darjeeling tea, the original makers of Darjeeling tea were losing its large market share. Consequently, India realized that to protect its geographical indications globally, India has to set some common rules and regulations. As a result, the geographical indications of Goods (Registration and Protection) Bill 1999 passed by both the houses in India. It came into force on September 15th, 2003, along with Geographical Indications of Goods (Registration and Protection) Rules 2002. There was no legal theory dealing specifically with GI or appellations of origin prior to this. As a result, the GI tag was provided to Darjeeling tea, making it the first product to receive the GI tag in the year 2004.

CONCLUSION & COMMENTS

India is a nation having a multitudinous number of GI discovered the whole way across the nation. It is, for the most part, a direct result of such enhanced climatic conditions, human aptitudes and customs among different states. GI, if appropriately recognized and secured are fit for adding to a huge segment of income for a developing nation like India. As India is a signatory to the TRIPS Agreement, it is the commitment to give insurance for those items having a GI tag. To ensure the GI India embraced the GI Act, which came into power, alongside the GI Rules, with impact from 15 September 2003, has been instrumental in the augmentation of GI status to numerous products up until now. The central government has built up the Geographical Indications Registry with all-India purview, at Chennai, where right-holders can enlist their GI. In contrast to TRIPS, the GI Act doesn’t confine its unique assurance to wines and spirits alone. The central government has the circumspection to choose which items ought to concur more elevated levels of security. This methodology has intentionally been taken by the drafters of the Indian Act with the point of giving severe assurance as ensured under the TRIPS Agreement to GI of Indian birthplace. In India, enlistment for GI isn’t mandatory. In the event that the proprietor of the GI is enlisted under the GI Act if there should be an occurrence of encroachment, the proprietor can file a suit. When a GI is enrolled in India, it turns out to be moderately simpler to look for insurance in different nations too. So, a country like India, protecting GI will produce a lot of income

REFERENCES

1. Cases Referred
   1. Basmati controversy
   2. Darjeeling tea controversy
   3. Mohan Meakin Breweries Ltd. v. The Scotch Whiskey Association
   4. Scotch Whisky Association v Pravara Sahakar Karkhana
2. Statutes Referred
   1. GI Act 1999