Geographical Indications – Intellectual Property Rights Laws and Practices Important Questions
Question 1.
Who are the beneficiaries of the registration of geographical indications? (5 marks)
Answer:
As per Section 11 of the Geographical Indications of Goods (Registration & Protection) Act, 1999, registered proprietors of geographical indication like any association of persons, producers, organization, or. authority established by or under the law is the beneficiaries of geographical indications. The Applicant has to be a legal entity and should be representing the interest of producers of the goods applied for. Any such organization or association that is not that of the producers may have to prove that they represent the interest of producers. Any Applicant Authority also has to prove that they represent the interest of producers.
Question 2.
Explain the criminal remedies in case of infringement, piracy, or falsification of Gl under the Geographical Indications of Goods (Registration and Protection) Act,1999?
Answer:
A registered geographical indication is infringed by a person who, not being an authorized user thereof 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 which misleads the persons as to the geographical origin of such goods. Hence the infringement of registered G.l. occurs if a person:
- Uses the G.l. on the goods or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner which misleads the public; or
- Uses the G.l. in a manner that constitutes an act of unfair competition; or
- Uses another G.l. to the goods in a manner, which falsely represents to the public that the goods originate in the territory, region, or locality in respect of which such registered G.l. relates.
Chapter VIII of the Geographical Indication of Goods (Registration and Protection) Act, 1999 lays down provisions regarding certain offenses, Penalties and the Procedure to be followed thereof.
The legislature has taken a strong view of the cases of infringement, piracy, falsification, misrepresentation and has made them penal offenses under the Act. The chapter apart from listing penalties for the above-mentioned offenses also details the penalty and procedure to be followed in the prosecution of such offenses.
The following are the acts deemed as offenses:
In the context of offenses, what constitutes the meaning of “applying geographical indication has been dealt with in section 37 and the expression geographical indication has been defined in Section 2 (1) (e).
Section 38 lists two kinds of offenses namely:-
(1) Falsifying a Gl and
(2) Falsely applying a Gl.
- The penalty for falsification of GIs and the circumstances in which a person applies false Gl are enumerated in Section 39.
- Selling goods to which false Gl is applied as outlined in Section 40,
- Enhanced Penalty for subsequent convictions for the offenses of falsifying, falsification of GIs, or selling goods with false GIs.
- Falsely representing a Gl as registered as listed in Section 42. Misrepresenting the Gl as registered, which has not been actually registered is made an offense.
Question 3.
Geographical indications are the new WTO compatible measure to protect well-known traditional knowledge and established trade name. Discuss with reference to Alphonso mango case.
Answer:
Alphanso Mango from Ratnagiri, Sindhudurg, and other adjoining areas in Maharashtra, finally got the status (and thus the legal protection) of a Geographical Indication (Gl) Tag. A Geographical Indication or a Gl is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to their origin. Such a name conveys an assurance of quality and distinctiveness which is essentially attributable to its origin in that defined geographical locality. Darjeeling Tea, Mahabaleshwar Strawberry, Blue Pottery of Jaipur. Banarasi Sarees and Tirupati Laddus are some of the GIs.
Gl products can benefit the rural economy in remote areas, by supplementing the incomes of artisans, farmers, weavers, and craftsmen. Our rural artisans possess unique skills and knowledge of traditional practices and methods, passed down from generation to generation, which needs to be protected and promoted. Recently, Union Minister of Commerce and Industry, Suresh Prabhu, launched the logo and tagline for the Geographical Indications (Gl) of India and said that the Gl will give the rightful share in the intellectual property to the artisan and the place of origin of the product. He emphasized that it’s an area of strength and optimism for India, whereby the Gl tag has given protection to a large number of hand-made and manufactured products, especially in the informal sector.
The Department of Industrial Policy and Promotion has also taken several initiatives in this regard and is actively involved in the promotion and marketing of GIs with a vision to enhance the horizon, both socially and economically for Gl producers.
The king of mangoes, Alphonso, better known as ‘Hapus’ in Maharashtra, is in demand in domestic as well as the international markets not only for its taste but also for pleasant fragrance and vibrant color. It has long been one of the world’s most popular fruits and is exported to various countries including Japan, Korea, and Europe. New markets, such as the USA and Australia have been recently opened up for it. The first product to get a Gl tag in India was the Darjeeling tea in 2004 and there are a total of 325 products from India that carry this indication/recognition.
Question 4.
(b) Texas-based Rice Tec Inc. claimed that their invention pertains to a novel breed of rice plants and grains therefore UPSTO granted the patent on ‘Basmati Rice Lines and Grains’ in September 1997 after three years of examination and accepted all the 20 claims put forward by Rice Tec Inc. What was the consequence when India challenge the patent and why patent granted to three hybrid varieties Bas 867, RTI 1117 and RT.1121.
Answer:
In the case of a patent granted to Rice Tec Inc., an American private company based in Texas, India challenged the grant of patent in the US. Basmati rice, sought-after for its fragrant taste, was developed by Indian farmers over hundreds of years, but the Texan company Rice Tec obtained a patent for a cross-breed with American long-grain rice. Rice Tec was granted the patent on the basis of aroma, elongation of the grain on cooking, and chalkiness. Although, the Indian government filed 50,000 pages of scientific evidence to the US Patents and Trademarks Office, insisting that most high-quality basmati varieties already possess these features. The US Patent and Trademarks office accepted the petition and will re-examine its legitimacy.
The patent – granted only in the US – provided Rice Tec control over basmati rice production in North America. Farmers had to pay a fee to grow the rice and were not permitted to plant the seeds to grow the following year’s crops. India feared the patent may severely damage exports from its own farmers to the US. India has also objected to Rice Tec calling the rice ‘basmati’, insisting the name should be used only for rice grown in the Basmati region of India. The Indian government claimed like status for basmati rice as that granted to Champagne, Cognac, and Scotch whisky.
A team of agricultural scientists screened several research papers, reports, and proceedings of seminars, conferences, symposia, journals, newspapers, and archives for relevant supporting information to establish the existence of prior art in this area in India.
The documentary evidence against the claim Nos. 15, 16, and 17 of the company for novelty were so strong that Rice Tec had to withdraw these claims. The company further withdrew 11 claims. Hence, only five of Rice Tec’s original 20 claims survived the Indian challenges. The patent granted simply gives three hybrid varieties Bas 867 RT 1117 and RT 1121. The new rice has nothing to do with basmati. Importantly, none of the claims granted by the patent pertain to basmati rice as a generic category. Also, the Rice Tec. application was for a patent and not for basmati as a trademark, so there is no question of Rice Tec getting exclusive rights to use the term basmati. The patent granted, Hence, neither prevents Indian Basmati from being exported to the US nor puts it at a disadvantage in the market.
Question 5.
Kalyan is a non-profit statutory trust in Andhra Pradesh situated in salubrious surroundings in a rural area. Employing about 14,000 persons, Kalyan produces a special kind of puri using resources peculiar to the area and adopting cooking skills particular to the area. The cooks preparing the puri had developed culinary skills, whose descent could be traced to their ancestors over more than 500 years. Villagers and even outsiders visiting the area savor the special taste of the puri and even get addicted to it. Kalyan is also under the obligation to administer and maintain the trust property and to cater to the needs of the cooks and workmen. Puri is offered at subsidized rates to the customers and has gained a great reputation and distinctiveness over a long period.
Kalyan applied for the registration of geographical indication (GI) for its puri under the Geographical Indications of Goods (Registration and Protection) Act, 1999 (the Act). After following the procedure laid down, the Registrar of Geographical Indications granted registration sought by Kalyan in its favor. In doing so, the procedural formalities contemplated under the said Act and Rules made thereunder were strictly adhered to and the genuineness of the product {puri) was verified by duly appointed experts. The product was classified as ‘foodstuff under the Act. Kalyan, thus, became the registered proprietor.
At the time of the grant of Gl to puri, there were no objections from anyone when the matter was published in the Gl Journal. Thus, there was no pre¬grant opposition to the grant of Gl to puri. But yet, after the grant of Gl, one large foodstuff dealer filed a rectification application alleging that granting of Gl tag for pur/contravened Section 11(1) of the Act and Rules made thereunder and that the said geographical indication was prohibited for registration under Section 9(a) of the Act.
Further, the rectification applicant alleged that there was no industrial purpose served by the grant and that granting a monopoly to a single producer would defeat the very purpose for which the Act was brought into force. Section 11 of the Act refers to ‘any association of persons or producers or any organization or authority established by or under any law for the time being in force representing the interest of producers of the concerned goods and therefore a single producer was not entitled to the grant of Gl. Moreover, the applicant claimed that puri was like any other similar puri made throughout the country and hence the use (consumption) of puri by customers would likely deceive or cause confusion attracting Section 9(a) of the Act. It was prayed by the applicant that the grant of Gl to puri be removed from the Register of Geographical Indications.
Furthermore, the rectification applicant opposed the grant of Gl to puri on the ground that it did not fall under the definition of goods in Section 2(1 )(f) of the Act.
Kalyan (respondent) objected to the locus standi of the applicant stating that the rectification applicant was in no way offended by the registration and that he never objected when the matter was published in the Gl journal before the Registrar of Gl granted the registration to puri. Kalyan contended that the term ‘producers’ mentioned in Section 11 of the Act represents both singular and plural. Interpretation of the term should be done in the light of Section 13(2) of the General Clauses Act, 1897. Producers would include a single producer. Further, the respondent argued that it had the. inherent statutory and equitable rights to fence its intellectual prop^fty. The geographical indication registration was acquired to make the public aware of the Gl tag granted to puri produced by the trust (Kalyan) and to protect them from unauthorized sales. The product was rightly classified, as foodstuff under section 2(1 )(f) of the Act.
Kalyan further opposed the rectification application on the ground that Section 9(a) of the Act prohibited the registration of Gl which would be likely to deceive or cause confusion and that in the case of puri, there was no such confusion and misleading the public. On the other hand, the rectification applicant failed to explain how the registered product would cause confusion. Kalyan argued that the essence of Gl was not only to protect the interest of manufacturers but also that of consumers who were willing to pay more for a genuine product. The legislative intent was to protect the interest of the producers and general public from imitation and consequently with puri having a well-known reputation, the producer (Kalyan) was having every right to fence the product by getting eligible intellectual property protection.
The Registry of Geographical Indications sent notice to both parties. The rectification applicant led no evidence nor did he produce any document, in his favor.
Based on the above, answer the following questions:
(1) Whether the rectification applicant has the locus standi to institute the rectification proceedings against the registered geographical indication puri? Whether the rectification applicant is an aggrieved person?
(2) Whether there was any violation of Section 11 of the Act, in particular with reference to puri being produced by a single producer, Kalyan, and whether puri falls under the definition of ‘goods’ as per Section 2(1 )(f) of the Act?
(3) Whether the rectification applicant had established its case for rectification, particularly in the light of Section 9(a) of the Act?
Answer:
(1) The respondent/registered proprietor (Kalyan) had raised its preliminary objections regarding the maintainability of the rectification application challenging the locus standi of the applicant. Under section 27(1 j of the Gl Act, 1999 read with Rule 65 of the Rules made thereunder, an aggrieved person alone has the right to file a rectification application with the Registrar or the Appellate Board, as the case may be. The section, in particular, authorizes only ‘an aggrieved person, to apply for canceling or varying the registration of a geographical indication on the ground of any contravention or failure to observe the condition entered on the register in relation thereto by the holder of the Gl. A person cannot file a rectification application challenging the registration of Gl unless he can prove his grievances on account of the registration. In the present case, the rectification. the applicant failed to establish as to how he was prejudiced by the registration of the Gl. On the other hand, it is the duty of the rectification applicant to set out fully the. nature of his interest in the registered product.
The rectification applicant was unsuccessful in satisfying the tribunal on this issue of his interest towards the registered Gl. From the averments made in the rectification application, it is apparent that the rectification applicant is a third party and not involved in the same trade or manufacturing a similar Gl product. Therefore, it can be safely concluded that the applicant “lacks standing” to bring an action of this nature and has also failed in proving his locus standi to seek rectification in the registered Gl. The issue is not in favor of the rectification applicant on the ground that he is not an aggrieved person and also not having any interest in the registered Gl.
(2) It has been alleged in the rectification application that Sections 11(1) and 2(1 )(f) of the Act and Rules made thereunder was violated in the grant of Gl to Kalyan, raising an issue that the respondent was the sole producer of the product and therefore, it does not fall within the ambit of Section 11(1). Under section 11(1) of the Act, any association of persons or producers or any organization or authority established by or under any law for the time being in force representing the interest of the producers of the goods may make an application for Gl registration. The respondent/registered proprietor is a statutory trust in the State of Andhra Pradesh and therefore falls within the scope of Section 11 (1) of the Act read with Section 2(1 )(k) thereof, as a ‘person’ and ‘producer’ and the said entity is entitled to make an application for Gl registration for any product subject to proving that it represents the interest of producers of the particular product.
The rectification applicant mentioned that granting of Gl tag to Puri contravened the essential condition for grant of Gl under section 11 (1) of the Gl Act. It further alleged that there was no industrial purpose served by the grant and that such grant shall result in monopoly to a single producer. According to the rectification applicant, Kalyan, being a single producer was not entitled to the grant of Gl and that each and every person involved in the manufacturing of the product is deemed to be a producer of the product and that Puri is not manufactured by the efforts of a single person. It is a product emerging from the effort of employees of Kalyan and Kalyan represents the producers under section 11 (1) of the Act.
The terms ‘producers’ mentioned in Section 11(1) of the Act includes both its singular as well as the plural form. The interpretation of the term should be done in the light of Section 13(2) of the General Clauses Act, 1897 and thus read in that context Kalyan is eligible to apply for Gl registration for its Puri under section 11 (1) of the Act.
The rectification applicant has questioned the classification of Puri as goods under section 2(1 )(f) of the Act. The said section defines ‘Goods’ as ‘any agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes foodstuff. Thus in terms of the said definition, Puri falls within the definition of ‘Goods’ under section 2(1 )(f) of the Gl Act.
(3) Section 9(a) of the Act prohibits the registration of a Gl which would be likely to deceive or cause confusion. In the case of Puri, there is no such confusion or deception of the public. The facts of the case also show that the rectification applicant failed to explain how the registered product will cause confusion in the mind of the public. The essence of the grant of right over Gl is not only to protect the interest of manufacturers but also that of the consumers who are willing to pay more for a genuine product. The legislative intent is to protect the interests of the producer as well as the general public from any imitation of the product. Puri has a well-known reputation and the producer has every right to fence the product by getting eligible Intellectual property protection.
Regarding the applicant’s contention that production of Puri and grant of Gl for Puri shall serve no industrial purpose for which the Act was brought into force, carries no force, as it is evident from the facts of the case that Puri was being manufactured by a large workforce and was therefore serving an industrial purpose. As the skills involved were unique and particular to the place of origin (the area where the trust is located and the area where the culinary skills of the cooks exist having descended from their ancestors), grant of Gl to Puri was done only after following the procedure established by law and after the genuineness of the product was verified by duly appointed experts. Gl is granted to an applicant only after he satisfies the requirements of Section 11 (1) of the Act. The Act does not prohibit the grant of monopoly in respect of a product; rather the intent is to grant the protection to a Gl in order to protect the interest of the manufacturer as also the customers against non-genuine products.
Therefore, it can be safely concluded that the rectification applicant has failed to establish his claim for rectification.
Question 6.
Read and analyze the case study and answer the questions given at the end :
India is the world’s largest producer of tea, with a total production of 846 million kgs in the year 2002, supplying about 31 percent of the world’s favorite hot drink. Among the teas grown in India, Darjeeling tea offers distinctive characteristics of quality and flavor, and also has a global reputation for more than a century. Broadly Speaking, there are two factors that have contributed to such an exceptional and distinctive taste, namely geographical origin and processing, Darjeeling tea has been cultivated, grown, and produced in tea gardens in a well-known geographical area – the Darjeeling district in the Indian State of West Bengal – for over one and a half centuries. The tea gardens are located at elevations of over 2000 meters above mean sea level.
Even though the tea industry in India lies in the private sector, it has been statutorily regulated and controlled by the Ministry of Commerce since 1933 under various enactments culminating in the Tea Act, 1953. The tea Board of India (Tea Board) was set up under this Act. A major portion of the annual production of Darjeeling tea is exported, the key buyers being Japan, Russia, the United States, United Kingdom, and other European Union (EU) Countries such as France, Germany, and the Netherlands.
Efforts made by the Tea Board to ensure the supply of genuine Darjeeling tea In order to ensure the supply and genuine Darjeeling tea, a compulsory system of certifying the authenticity of exported Darjeeling tea was incorporated into the Tea Act, 1953 in February 2000. The system makes it compulsory for all the dealers in Darjeeling tea to enter into a license agreement with the Tea Board of India on payment of an annual license fee. The terms and conditions of the agreement provide, inter alia, that the licensees must furnish .information relating to the production and manufacture of Darjeeling tea and its sale, through auction or otherwise.
The Tea Board is thus able to compute and compile the total volume of Darjeeling tea produced and sold in the given period. No blending with teas of other origin is permitted. Certificates of origin are then issued for export consignments under the Tea (Marketing and Distribution Control) Order, 2000, read with the Tea Act, 1953. Data are entered from the garden invoices (the first point of movement outside the factory) into a database and the issue of the Certificate of Origin authenticates the export of each consignment of Darjeeling tea by cross-checking the details. The customs authorities in India have instructed, by circular, all customs checkpoints to check for the certificates of origin accompanying the Darjeeling tea consignments and not to allow the export of any tea as ‘Darjeeling’ without this certificate. This ensures the sale-chain integrity of Darjeeling tea until consignments leave the country.
Legal Protection at Domestic Level Certification Trade Marks Registration
In order to provide legal protection in India, Tea Board registered the “‘Darjeeling logo’ and also the word ‘Darjeeling’ as Certification Trade Marks (CTMs) under the Trade and Merchandise Marks Act, 1958 (now the Trade Marks Act, 1999).
Gl Registration
The Tea Board has also applied for the registration of the words ‘Darjeeling’ and ‘Darjeeling logo’ under the Geographical Indications of Goods (Registration and Protection) Act, 1999 (the Act) which. came into force with effect from 15th September 2003, in addition to the CTMs mentioned above.
Under the Act:
(1) No person shall be entitled to institute any proceeding to prevent or recover damages for the infringement of unregistered geographical indications.
(2) A registration of geographical indications shall give to the registered proprietor and all authorized users whose names have been entered in the register the right to obtain relief in respect of infringement of the geographical indications. However, authorized users alone shall have the exclusive right to the use of the geographical indications in relation to the goods in respect of which the geographical indications are registered.
(3) A registered geographical indication is infringed by a person who, not being an authorized user thereof,
- Uses such geographical indications by any means in the designation or presentation of goods that indicates or suggests that such goods originate in some other geographical area other than the true place of origin of the goods in a manner which misleads the public; or
- Uses any geographical indications in such a manner which constitutes an act of unfair competition including passing off in respect of registered geographical indications; or
- 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 public that the goods originate in the region, territory, or locality in respect Of which such registered geographical indications relate.
(4) The purpose of the Global Indications of Goods (Registration and Protection) Act, 1999 is to create a public register, and
(5) The Act confers public rights.
Status of registration of Global Indications (Gl):
The Registration of the marks applied for by the Tea Board has not yet been granted. The Registrar has, however, after examining the application for registration filed by the Tea Board advertised for any expression of opposition. It is only after considering opposition if any, that the Registrar may decide to register the Gl of the Tea Board. Reasons for Gl protection at domestic level and export markets The reasons for the need for additional protection for Glover and above the
CTM has been set out by the chair of the Tea Board as follows :
- When CTM registration is not accepted in a jurisdiction where protection is sought, for example, France for Darjeeling;
- Because Gl registration is necessary to obtain reciprocal protection of a mark mandate under EU Regulation 2081/92; and
- Registration gives clear status to a Gl, indicating a direct link with geographical origin.
Quite apart from the aforesaid reasons the Act in India has also been enacted in order to comply with its obligation under the Agreement on Trade-Related Aspects, of’ Intellectual Property Rights (TRIPS), which requires WTO members to enact appropriate implementation legislation for Gl.
Steps were taken at the international level
1. Registration of Darjeeling tea and logo:
In order to protect ‘Darjeeling’ and ‘Darjeeling logo’ as Gl, the Tea Board registered the mars in various countries, including the United States, Canada, Japan, Egypt, United Kingdom, and some other European countries, as a trademark/CTM. In this context, it is relevant to note that on 3rd August 2001 the UK Trade Registry granted registration of the word ‘Darjeeling’ as of 30th March 1998 under the UK Trade Marks Act, 1994. The United States has also accepted the application of the Tea Board for the registration of ‘Darjeeling’ as a CTM in October 2002.
2. The appointment of the International Watch Agency:
In order to prevent misuse of ‘Darjeeling’ and the logo, the Tea Board has since 1998 hired the services of Compumark, a worldwide watch agency. Compumark is required to monitor and report to the Tea Board all cases of unauthorized use and attempted registration. Pursuant to Compumark’s appointment, several cases of attempted registrations and unauthorized use of ‘Darjeeling’ and Darjeeling Logo have been reported.
3. The assistance of overseas buyers:
In order to ensure the supply of genuine Darjeeling tea, the Tea Board has sought the help of all overseas buyers, sellers, and Tea Councils and Associations insofar as they should insist on certificates of origin to accompany all export consignments of Darjeeling tea.
Local and external players and their roles
The Tea Board, the sole representative of tea producers in India, is responsible for the implementation of the government’s regulations and policies. It is vested with the authority to administer all stages of tea cultivation, processing, and sale (including the Darjeeling segment) through various orders issued by the government. It works in close co-operation with the Darjeeling Planters Association, which is the sole producers’ forum for Darjeeling tea. Both the Tea Board and the Darjeeling Planters Association (DPA) have been involved at various levels in protecting and defending the Darjeeling tea’ and ‘Darjeeling logo’. The primary objects are
- to prevent misuse of the word ‘Darjeeling’ for tea sold worldwide;
- to deliver the correct product to the consumer;
- to enable the commercial benefit of the equity of the brand to reach the Indian tea industry and ultimately the plantation worker;
- to achieve an international status similar to champagne or Scotch whisky in terms of both brand and equity and governance/ administration.
The Tea Board assumed the role of the complainant in making and filing an opposition or other legal measures whenever cases of unauthorized use or attempted or actual registration of Darjeeling and Darjeeling logo was brought to its notice. Such legal measures and generally taken where negotiation is filed. For instance, in February 2000 in Japan, the Tea Board filed an opposition against Yutaka Sang yo Kabushiki Kaisa of Japan for registration of the trademark ‘Darjeeling Tea’ with the map of India, the International Tea KK of Japan for registration of Darjeeling Women device in Japan underclass 30/42 (tea, coffee, and cocoa) and against Mitsui Norin KK for the use in advertising of the ‘Divine Darjeelin’ logo. These opposing parties defended the invalidation action filed against them.
Some disputes relating to Darjeeling tea have been settled through negotiation undertaken by the Tea Board of India with the foreign companies concerned with the help of their respective governments. Thus, the Tea Board with the help of the Indian Government continues to negotiate with France at various levels over the activities of the French trademark authorities. Moreover BULGARI, Switzerland agreed to withdraw the legend ‘Darjeeling’ Tea fragrance for men’ pursuant to legal notice and negotiations.
In one of the cases in France, the Tea Board put the applicant Comptoir des Parfums (which advertised in March 1999) on notice, and drew its attention to the prior rights and goodwill in the name of Darjeeling as the Gl for tea, requiring it to withdraw its application voluntarily, Based on the correspondence, the applicant consented to the amendment of all specifications of goods by the addition of ‘all those goods being made of Darjeeling tea or recalling the scent of Darjeeling tea’. The amendment proposed by the applicant was found by the examiner to be descriptive of the goods in question.
‘The Tea Board of India feels that a partnership with the buyers in the major consuming countries such as Germany, Japan, and the United Kingdom would be the only long term solution to the problem of possible passing off’. However, it strongly opposes any attempt at individual registration in the case of private labels or their misuse in specific overseas jurisdictions. Challenges faced and the outcome The Tea Board has faced a series of hurdles, challenges, and difficulties in the protection and enforcement of the word ‘Darjeeling’ and of the Darjeeling logo. Some of the major challenges faced by the Tea Board’s effort to protect ‘Darjeeling’ and the Darjeeling logo in Japan, France, Russia, the United States, and other countries are given below :
(i) Unauthorized use and registration of Darjeeling Tea and logo in Japan In the first case the Tea Board filed an invalidation action against International Tea KK, a Japanese company, over the registration of the Darjeeling logo mark, namely, Darjeeling Women ‘serving tea/coffee/coca/soft drinks/fruit juice’ in the Japanese Patent Office (JPO) on 29,h November 1996 with the trademark registration number 3221237. The impugned registration was made notwithstanding the registration in Japan of the identical Darjeeling logo mark by the Tea Board, with the trademark registration number 2153113, dated 31st July 1987.
The Tea Board also filed a non-use cancellation action. On 28th August 2002, the JPO Board of Appeal held that the pirate registration was invalid because it was contrary to public order and morality. With regard to the Tea Board’s non-use cancellation action, the JPO decided that International Tea KK had not furnished sufficient evidence to substantiate its use of registration and thereby allowed the appeal of the Tea Board.
In the second case, the Tea Board opposed the application for ‘Divine Darjeeling’ in class 30 (Darjeeling tea, coffee, and cocoa produced in Darjeeling, India) filed by Mitsui Norin KK of Japan advertised on 29th February 2000. The opposition was mainly on three grounds, namely
- ‘Divine’ is a laudatory term and accordingly the mark for which protection is sought is mere “Darjeeling1, which is clearly non-distinctive;
- ‘Divine Darjeeling’ is misleading insofar as ‘coffee and cocoa produced in Darjeeling’ are concerned, all the more so because the district of Darjeeling does not produce coffee or cocoa;
- Darjeeling tea qualifies as a geographical indication under international conventions including TRIPS and ought to be protected as such in Japan, a member of TRIPS.
The JPO Opposition Board dismissed the invalidation action filed by the Tea Board of India primarily on the ground that the marks ‘Divine Darjeeling’ as a whole was not misleading or descriptive of the quality of goods. However, the non-use cancellation action succeeded, because the registered proprietor was not able to place on record adequate evidence to prove the use of the mark in Japan.
In yet another case, the Tea Board brought an invalidation action against the Japanese trademark registration of ‘Darjeeling tea’ with a map of India in class 30 by Yutaka Sangyo Kabushiki Kaisa, on the ground that the registration was contrary to public order and morality. This action was rejected on the ground that ‘the written English characters “Darjeeling tea” and the map of India for the goods of Darjeeling tea are used as an indication of the origin and quality of Darjeeling tea and will not harm the feelings of the Indian people’. However, the non-use cancellation action filed by the Tea Board succeeded, because the registered proprietor was not able to place on record sufficient evidence to prove the use of the mark in Japan.
A perusal of these decisions reveals that the JPO did not decide the contention of the Tea Board relating to the TRIPS Agreement, which requires WTO members to provide the legal means to prevent the use of a Gl for goods originating in a geographical area other than the true place of origin in a manner which misleads the public to constitute an act of unfair competition. Indeed, non-disposal of the argument that the procedural guidelines of WTO be followed dilutes the effect of the TRIPS Agreement.
Other instances of defending Gl against developed countries
(1) France:
While the Indian system protects French GIs, France on the other hand does not extend similar or reciprocal protection to Indian GIs. Thus French law does not permit any opposition to an application for a trademark similar or identical to a Gl if the goods covered are different from those represented by the Gl. The owner of the Gl can take appropriate judicial proceedings only after the impugned application has proceeded to registration.
The net effect of such a provision has been that despite India’s protests, Darjeeling has been misappropriated as a trademark in respect of several goods in class 25, namely, clothing, shoes, and headgear. The French Examiner – even though he found evidence in favor of the Tea Board of India (i) on sufficient proof of use of ‘Darjeeling’ tea in France, and (ii) that the applicant had slavishly copied the name Darjeeling in its application – held that the respective goods ‘clothing, shoes, headgear’ and ‘tea’ are not of the same nature, function and intended use,.produced in different places and sold through different networks.
The Examiner also held that even if the applicant has slavishly copied the Tea Board’s Darjeeling logo (being the prior mark), the difference in the nature of the respective goods is sufficient to hold that the applicant’s mark may be adopted without prejudicing the Tea Board’s rights in the name ‘Darjeeling’.
In another case, the Tea Board opposed the application against the advertised marks for Darjeeling in classes 5, 12, and 28 by Dor Francois Marie in France. The French Examiner rejected the Tea Board’s opposition and held that the respective goods did not (i) have the same nature, function, and intended use; and (ii) share the same distribution circuits. However, he held that although the applicant’s mark constituted a partial reproduction of the Tea Board’s prior figurative registration for the Darjeeling logo, the designated goods lacked similarity to that of the Tea Board’s prior marks, and the logo, therefore, may be used as a trademark without prejudicing the prior rights of the Tea Board.
(2) Russia:
The Tea Board filed an application for unauthorized use by a company of the word ‘Darjeeling’. This application was objected to on the ground of conflict with an earlier registration of the identical word by a company named ‘Akotus’. The Russian Patent Office overruled the objection and accepted the application of the Tea Board for the word ‘Darjeeling’.
(3) United States:
The Tea Board is opposing an application filed by its licensee in the United States to register’Darjeeling nouveau’ (‘nouveau’ is the French for ‘new’) relating to diverse goods and services such as clothing, lingerie, Internet services, coffee, cocoa and so on in respect of first flush Darjeeling tea. The registration application is under consideration even though ‘Darjeeling’ is already registered under US CTM law.
(4) Other Countries:
In several cases, the Tea Board opposed attempted registration and unauthorized use of the word ‘Darjeeling’ in Germany, Israel, Norway, and Sri Lanka before the Patent Office of the country concerned.
Costs of Protection and enforcement for the Industry and the Government
Another major challenge faced by the Tea Board relates to legal and registration expenses, costs of hiring an international watch agency, and fighting infringements in overseas jurisdictions.
Thus during the last four years, the Tea Board has spent approximately US$ 2,00,000 for these purposes. This amount does not include administrative expenses including the relevant personnel working for the Tea Board, the cost of setting up monitoring mechanisms, software development costs, and so forth. It is not possible for every geographical indication right holder to incur such expenses protection. Further, like overseeing, monitoring, and implementing Gl protection, the high cost of taking legal action can prevent a country from engaging a lawyer to contest the case, however genuine and strong the case may be. Moreover, a lack of expertise in the proper handling of highly complex legal language is another challenge to be met.
Lessons for Others
The Tea Board appears to be not satisfied with the policy as well as the approach of the patent authority in Japan and France. In order to deal with the situations described above, India, along with several other member countries of the WTO, wants to extend the proposed register for Gl to include products or goods, other than wines and spirits, which may be distinguished by the quality, reputation or other characteristics essentially attributable to their geographical origin.
The main advantage would be to develop a multilateral system of notification and registration of all geographical indications. In this connection, a joint “paper has recently been submitted to the TRIPS Council. The Doha Ministerial Declaration under Paragraphs 12 and 18 also provides a mandate for the issue of providing a higher level of protection to GIs to products other than ‘wines and spirits’ to be addressed by the TRIPS Council. According to the Tea Board, (i) extension of protection under Article 23 for products other than wines and spirits in required where no legal platform exists to register a Gl or a CTM which is a TRIPS obligation, for example, Japan; (ii) once the scope of protection is extended it would not be necessary to establish the credentials/reputation of a Gl before fighting the infringement of similar ‘types’, ‘styles’, or ‘look-alikes’, and (iii) additional protection would rectify the imbalance created by the special protection of wines and spirits.
The experience in defending Gl in France, the United States, and Japan further strengthen the Tea Board’s perspective on the subject. Despite registration of ‘Darjeeling’ as a Gl in France, the Tea Board was unsuccessful in defending it because French law does not permit any opposition to an application for a trademark, similar or identical to a Gl. Likewise, India’s efforts to protect Darjeeling’ in Japan did not succeed because the prefix ‘Divine’ has not gained currency in the Japanese language. From the experiences described above, it is felt that it is high time to evolve a rule that no application for registration of a Gl of the same or similar goods or products or even similar type, style, or look-alike already registered in that country be ordinarily entertained by the competent authority of the country concerned.
Further, the Gl status and apprehended or actual violation of Gl should be published at both domestic and international levels. Moreover, adequate steps should be taken to evolve rules and procedures for Gl or CTM registration in all the member countries of the WTO. This would prevent conflict to a great extent. Finally* a vigilance cell should be established to check the violation and misuse of the Gl of any product.
Questions :
(1) How does ‘Darjeeling Tea’ satisfy the criteria of geographical indications under the Geographical Indication of Goods (Registration and Protection) Act, 1999?
Why was a compulsory system of certifying the authenticity of exported Darjeeling Tea incorporated into the TEA ACT, 1953 in 2000?
(2) In case the Government of India is interested to protect the ‘Darjeeling Tea’ under the Geographical Indications of Goods (Registration and Protection) Act, 1999, how can an application be filed, and what should be the contents of the application? Explain in the context of the case study.
(3) Elaborate on the unauthorized use and registration of Darjeeling Tea and logo in Japan and defending Gl against developed countries.
(d) What was Doha Ministerial Declaration under Paragraphs 12 and 18 and what did Tea Board experience in defending Gl in France, the USA, and Japan?
(4) What are the initiatives taken by the Tea Board of India to ensure geographical indications (Gl) protection to ‘Darjeeling Tea ‘? What measures would you suggest to pave way for enhanced protection of Intellectual Property Rights (IPRs) in the context of ‘Darjeeling Tea’?
Answer:
(1) The term “Geographical Indication” is defined in Section 2(1 )(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999 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 another 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 preparation of the goods concerned takes place in such territory, region or locality, as the case may be.”
In the case of Darjeeling Tea, the key features which make it eligible to be granted registration and thus protected under the Gl Act, 1999 are:
- It offers distinctive characteristics of quality and flavor.
- It has had a global reputation for more than a century.
- It has been cultivated grown and produced in tea gardens in a well-known geographical area — the Darjeeling district in the Indian State of West Bengal for over one and a half centuries.
- It has tea gardens which are located in the district of Darjeeling at elevations of over 2000 meters above sea level.
In order to ensure the supply of genuine Darjeeling tea, a compulsory system of certifying the authenticity of exported Darjeeling tea was incorporated into the Tea Act, 1953. in the month of February 2000. The system made it compulsory for all the dealers of Darjeeling tea to enter into a license agreement with the Tea Board of India on payment of an annual license fee. The terms and conditions of the agreement provide, inter alia, that the licensees must furnish information relating to the production and manufacture of Darjeeling tea and its sale, through auction or otherwise. The Tea Board is thus able to compute and compile the total volume of Darjeeling tea produced and sold in the given period. No blending with teas of other origin is permitted.
Certificates of origin are then issued for export consignments under the Tea (Marketing and Distribution Control) Order, 2000, read with the Tea Act, 1953. Data is entered from the garden invoices (the first point of movement outside the factory) into a database, and the issue of the certificate of origin authenticates the export of each consignment of Darjeeling tea by cross-checking the details. Furthermore, the Customs Authorities under their circular has made it mandatory to check at each checkpoint the Certificate of Origin in respect of each Darjeeling Tea Consignment. Thus, ensuring the sale-chain integrity of Darjeeling Tea until the consignment leaves the country.
(2) Filing of Application
- An application for the registration of a Geographical Indication by the Government of India can be made in triplicate in Form Gl – 1(A) for a single class and in Gl -1 (C) for multiple classes.
- A Convention Application shall be made in triplicate in Form Gl -1 (B) for a single class and in Gl.-1 (D) for multiple classes. ‘
- Power of Attorney, if required.
- The application shall be signed by the applicant or his agent.
- The application is to be made to the Registrar of Geographical Indications.
Contents of Application
As provided in Section 11 of the Gl Act, 1999, an application for registration of a Gl should include the requirements and criteria for processing a Gl application as specified below:
- A statement as to how. the geographical indication serves to designate the goods as originating from the concerned territory of the country or region;
- The class of goods to which the GI shall apply;
- The geographical map of the territory or locality in which goods originate or are manufactured;
- The particulars of appearance of the geographical indication;
- Particulars of the producers;
- An affidavit of how the applicant claims to represent its interest in the Gl;
- The standard benchmark for the use or other characteristics of the Gl;
- The particulars of special characteristics;
- Textual description of the proposed boundary;
- The growth attributes in relation to the Gl pertinent to the application;
- Three certified copies of the map of the territory, region, or locality;
- Particulars of special human skill involved, if any;
- Full name and address of the association of persons or organization seeking registration;
- Number of producers; and,
- Particulars of inspection structures, if any, to regulate the use of the Gl. [Rule 32].
On receipt of the application, a number is allotted. Thereafter, the examiner scrutinizes the application to check whether it meets the requirements of the Gl Act and the Rules. Deficiencies, if any, found through a preliminary examination would be communicated by the Examiner to the Applicant. The deficiencies need to be complied with, the time limit mentioned in the communication. [Rule 31] Upon compliance with the deficiencies, the Registrar shall ordinarily constitute a Consultative Group of experts (not more than seven representatives) to ascertain the correctness of the particulars furnished in the Statement of Case.
The Consultative Group is chaired by the Registrar of Geographical Indications. [Rule 33] After issuance of the Examination Report, submissions of the applicant would be considered. If no further objection is raised, the application would be accepted and published (within three months of acceptance) in the Geographical Indications Journal. [Rule 34 & Rule 38] After advertisement of a Geographical Indication in the Geographical Indications Journal, any person may within three months oppose the registration of an application for G I. This period may be extended by a period, not exceeding one month, by making an application to the Registrar along with the prescribed fee. Such an application for extension shall be filed before the expiry of the period of three months. The Notice of Opposition shall be filed only before the Registrar of Geographical Indications at Chennai. [Section 14, Form GI-2]
(3) In a case, the Tea Board had filed an invalidation action against International Tea KK, a Japanese Company, over the registration of the Darjeeling logo mark, namely, Darjeeling women ‘serving tea/coffee/coca/soft drinks/fruit juice1 in the Japanese Patent Office (JPO) on 29lh November 1996 with the trademark registration number 3221237. The impugned registration was made notwithstanding the registration in Japan of the identical Darjeeling logo mark by the Tea.1 Board of India, with the trademark registration number 2153713, dated 31st July 1987. The headboard had also filed a non-use cancellation action. On 28th August* 2002, the JPO Board of Appeal had held that the pirate registration was invalid because it was contrary to public order and morality. With regard to the Tea Board’s non-use cancellation action, the JPO decided that International Tea KK had not furnished sufficient evidence to substantiate its use of registration and thereby allowed the appeal of the Tea Board.
In another case, the Tea Board had filed its opposition in respect of an application for registration of ‘Divine Darjeeling’ under class 30 (Darjeeling Tea, Coffee and Cocoa product in Darjeeling, India) filed by Mitsui Norin KK of Japan advertised on 29th February 2000. The grounds of opposition were:
- ‘Divine’ is a laudatory term and accordingly the mark for which protection is sought is mere ‘Darjeeling’, which is clearly non-distinctive;
- ‘Divine Darjeeling’ is misleading insofar as ‘coffee and cocoa’ products in Darjeeling’ are concerned, all the more so because the district of Darjeeling does not produce coffee or cocoa;
- Darjeeling tea qualifies as a geographical indication under international conventions including TRIPS and ought to be protected as such in Japan, a member of TRIPS.
The Opposition application filed by Tea Board was however dismissed by the JPO Opposition Board stating that the mark ‘Divine Darjeeling’ as a whole was not misleading or descriptive of the quality of goods. In yet another case, the Tea Board brought an invalidation action against the act of trademark registration of ‘Darjeeling tea’ with the map of India in class 30 by a Japanese company, Yutaka Sangyo Kabushiki Kaisa, on the ground that the registration was contrary to the public order and morality. The action was however rejected on the ground that ‘the written English characters ‘Darjeeling tea’ and ‘Map of India’ for the goods of Darjeeling tea are used as an indication of the origin and quality of Darjeeling tea and will not harm the feelings of the Indian People’. However, the non-use cancellation action filed by Tea Board succeeded, because the registered proprietor was not able to place on record sufficient evidence to prove the use of the mark in Japan.
A perusal of these decisions reveals that the JPO did not decide the contention of the Tea Board of India relating to the TRIPS Agreement, which requires WTO members to provide the legal means to prevent the use of a Gl for goods originating in a geographical area other than the true place of origin in a manner which misleads the public to constitute an act of unfair competition. Indeed, non-disposal of the argument that the procedural guidelines of WTO be followed dilutes the effect of the TRIPS Agreement.
Indian Legal System protects French GIs, while France on the other hand does not extend similar or reciprocal protection to Indian GIs. Thus, French law does not permit any opposition to be made to an application for registration of a trademark similar or identical to a Gl if the goods covered are different from those represented by the G I. The owner of the Gl can take appropriate judicial action only after the impugned application has proceeded for registration. The net effect of such a provision has been that despite India’s protests, ‘Darjeeling’ has been misappropriated as a trademark in respect of several goods in class 25, namely, clothing, shoes, and headgear in France. The French Examiner — even though he found evidence supporting the case made out by the Tea Board of India:
- On sufficient proof of use of ‘Darjeeling’ tea in France, and
- That the applicant had slavishly copied the name ‘Darjeeling’ in its application – held that the respective goods falling in the category of ‘clothing, shoes, headgear’ and ‘tea’ respectively are not of the same nature, function and intended use, produced in different places and sold through different networks.
The Examiner also held that even if the applicant has slavishly copied the Tea Board’s Darjeeling logo (being the prior mark), the difference in the nature of the respective goods is sufficient to hold that the applicant’s mark may be adopted without prejudicing the Tea Board’s rights in the name ‘Darjeeling’.
Russia:
The Tea Board had filed an application for unauthorized use by a company of the trademark ‘Darjeeling’. This application was objected to on the ground of conflict with an earlier registration of the identical word by a company named ‘Akorus’. The Russian Patent Office overruled the objection, and accepted the application of the Tea Board of India for the use of the trademark ‘Darjeeling’. United States: In a case, the Tea Board was opposing an application filed by its licensee in the United States to register ‘Darjeeling nouveau’ (‘nouveau’ is the French for ‘new’) relating to diverse goods and services such as clothing, lingerie, Internet services, coffee, cocoa and so on in respect of first flush Darjeeling tea. The registration application is under consideration even though ‘Darjeeling’ is already registered under US CTM law.
Other Countries:
Quite apart from the above, in several cases, the Tea Board of India opposed attempted registration and unauthorized use of the word ‘Darjeeling’ in Germany, Israel. Norway and. Sri Lanka before the Patent Office of the country concerned. (d) Paragraphs 12 and 18 of the Doha Ministerial Declaration relate to the extension of the additional protection for Geographical Indications to products other than ‘Wines’ and Spirits. According to paragraphs 12 and 18 of the Doha Ministerial Declaration and the decision of the Trade Negotiation Committee (TNC) of 1st February 2002, the issue of ‘extension’ of the protection of Geographical Indications for ‘Wines’ and ’Spirits’ to Geographical Indications for other products shall be addressed in the regular meetings of the TRIPS Council on a priority basis. Paragraphs 12 and 18 thus provide a mandate for the issue of “providing a higher level of protection to GIs to products other than ‘wines and spirits’ to be addressed by the TRIPS Council”. According to the Tea Board,
(i) Extension of protection under Article 23 for products other than wines and spirits is required where no legal platform exists to register a Gl or a CTM which is a TRIPS obligation, for example, Japan;
(ii) Once the scope of protection is extended it would not be necessary to establish the credentials/reputation of a Gl before fighting the infringement of similar ‘types’, ‘styles’, or look-alikes’; and”
(iii) Additional protection would rectify the imbalance created by the special protection of Wines and Spirits.
Despite the registration of ‘Darjeeling’ as a Gl in France, the Tea Board was unsuccessful in defending it because French law does not permit any opposition to an application for a trademark, similar or identical to a Gl. Likewise, India’s efforts to protect ‘Darjeeling’ in Japan did not succeed because the prefix ‘Divine’ has not gained currency in the Japanese language.
It is felt that it is high time to evolve a rule that no application for registration of a Gl of the same or similar goods or products or even similar type, style or look-alike already registered in that country be – ordinarily entertained by the competent authority of the country concerned Further, the Gl status and apprehended or actual violation of Gl should be published at both domestic and international levels. Moreover, adequate steps should be taken to evolve rules and procedures for Gl or CTM registration in all the member countries of the WTO. This would prevent conflict to a great extent. Finally, a vigilance cell should be established to check the violation and misuse of the Gl of any product.
(e) The Tea Board of India took the following initiatives to ensure Geographical Indication (Gl) Protection to ‘Darjeeling Tea’:
(i) The Compulsory system of certifying the authenticity of exported Darjeeling tea. With this, it has made it compulsory for all the dealers in Darjeeling tea to enter into a license agreement with the Tea Board of India.
(ii) The Tea Board registered the ‘Darjeeling logo’ and also the word ‘Darjeeling’ as Certification Trade Marks (CTMs) under the (Indian) Trade and Merchandise Marks Act, 1958 (now the ‘Trade Marks Act, 1999’).
(iii) The Tea Board of India has also applied for the registration of the words ‘Darjeeling’ and ‘Darjeeling logo’ under the Geographical Indications of Goods (Registration and Protection) Act, 1999.
(iv) In order to protect ‘Darjeeling’ and ‘Darjeeling logo’ as a Gl, the Tea Board of India registered the marks in various countries.
(v) The Tea Board hired the services of a worldwide agency COMPUMARK, to check and prevent the misuse of the ‘Darjeeling’ and Darjeeling logo. For example, a company called Bulgari’ from Switzerland agreed to withdraw its application to use the tag ‘Darjeeling Tea fragrance for- men’. Several such cases were settled through negotiations.
(vi) The Tea Board has sought the help of all overseas buyers, sellers, and Tea Council and Associations to insist on Certificates of Origin to accompany all export consignments of Darjeeling tea. To protect against the violations of its Intellectual Property Rights, an organization should ensure the protection of its trade secrets in a foreign country also. Every company has to take certain important and crucial measures to ensure the protection of its trade secrets.
It may be prudent for the companies to conduct an intellectual property audit to identify the protectable business information. This will help the companies to assess the value of the information useful for their business. The intellectual property audit is the starting point for the development of a trade secrets protection program.
Once the audit is complete, the next step is to determine the appropriate level of security necessary to protect different types of trade secrets. If a trade secret is well protected, there is no term of protection. Trade secret protection can, in principle, extend indefinitely and in this respect offers an advantage over patent protection, which, lasts only for a specified period.
The Tea Board of India feels that a partnership with the buyers in the major consuming countries such as Germany, Japan, and the United Kingdom would be the only long-term solution to the problem of possible passing off.’ However, it strongly opposes any attempt at individual registration in the case of private labels or their misuse in specific overseas jurisdictions. Governments of several countries working together have a prominent role to play in resolving disputes. Recently, India and the United States have led the way in this regard by establishing “an annual high-level Intellectual Property (IP) Working Group with appropriate decision making and technical-level meetings as a part of the trade policy forum.” Similarly, India could look at treaties like the Hague Treaty on Industrial Designs to strengthen its IPR regime.
In the context of protection of any misuse or wrongful use of ‘Darjeeling Tea’ or any deceptively similar trade name or mark which is applied to a product not belonging to that region which holds a right over it under the Gl Act, 1999, it is necessary that a concerted effort be made by all the nations as also the concerned International Organizations, especially the TRIPS, to ensure that there is no violation committed in their respective territory of the rights of others.
Question 7.
What is a geographical indication? How is a geographical indication different from a trademark? List out the examples of possible Indian Geographical Indications?
Answer:
The geographical indications are the indications that identify a good as originating in the territory or a region or a locality where a given quality, reputation, or other characteristics of the good is attributable to its geographical origin.
According to section 2 (e) “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 another 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 preparation of the goods concerned takes place in such territory, region or locality, as the case may be. The difference between geographical indication and trademark are as follows:
| Geographical Indication | Trade Mark |
| It denotes that the product originates from a particular place, which has a reputation for certain characteristics attributable to that place of production or manufacture. | It is a mark used by an enterprise in relation to goods or services to distinguish them from those of others. |
| It represents a common heritage of the community of producers in the geographical region or locality, whose products share the same qualities and characteristics, so that geographical indication may be used by all the producers engaged in their production in that region or locality | It is proprietary in nature, with exclusive right on the owner to use the mark. |
Examples of possible Indian geographical indications are:
- “Darjeeling” for tea of Indian origin;
- “Kanjeevqram Silk” denotes that product from Kanjeevaram in Southern India;
- “Benaras Silk” indicating products of Indian origin.
Other examples are:
- Kolhapur Chappals,
- Agra Petha,
- Kota Masuria,
- Bikaneri Bhujia etc.
Question
When is a registered geographical indication said to be infringed? Can a registered geographical indication be assigned, transmitted, etc?
Answer:
According to Section 22, a registered geographical indication is said to be infringed by a person who, not being an authorized user thereof geographical indication by any means in the designations of presentation of goods that indicates or suggest that such goods originate in a geographical area other than the true place of origin of such goods in a manner good; or which misleads the persons as to the geographical origin of such goods; or uses any geographical indication in such manner which constitutes an act of unfair competition including passing off in respect of registered geographical ‘indication.
“Act of unfair competition” means any act of competition contrary to honest practices in industrial or commercial matters.
No, a registered geographical indication cannot be assigned, transmitted, etc. A geographical indication is a public property belonging to the producers of the concerned goods. It shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage, or such other agreement. However, when an authorized user dies, his right devolves on his successor in title.
Question 8.
Who can apply for the registration of a geographical indication? What is the benefit of registration of geographical indications? Who is a registered proprietor of a geographical indication?
Answer:
As per Section 11 of the act, an application for registration of a geographical indication may be made by,
- any association of persons or producers or any organization or authority established by or under any law for the time being in force;
- who must be representing the interest of the producers of the concerned goods; and
- desirous of registering a geographical indication in relation to such goods.
The benefits of registration of geographical indication are:
- Registration gives to the registered proprietor and its authorized users, the legal right to the exclusive use of the geographical indication;
- It also gives the right to obtain relief in case of its infringement. Exclusion of unauthorized persons from misusing geographical indications would ensure that genuine products of -the rightful producers are marketed.
Any association of persons, producers, organization, or authority established by or under the law can be a registered proprietor of the company. Their name should be entered in the Register of the geographical indication as registered proprietor for the geographical indication applied for.
Question
What is the prohibition of registration of certain geographical indications?
Answer:
Section 9 of the Act prohibits the registration of certain geographical indications. They are as follows:
- The use of which would be likely to deceive or cause confusion;
- The use of which would be contrary to any law for the time being in force;
- Which comprises or contains scandalous or obscene matter;
- Which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
- Which would otherwise be disentitled to protection in a Court;
- 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;
- Which although literally true as to the territory, region, or locality in which the goods originate but falsely represent to (he persons that the goods originate in another territory, region, or locality, as the case may be shall not be registered as a geographical indication.
It may be noted that “Generic names or indications”, in relation to goods means the name of a good which, although relates to the place or the region where the goods were 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.