Dr Farrukh Khan Advocate Somya Mishra Advocate
Geographical Indications in India are regulated by the Geographical Indications of Goods (Registration and Protection) Act, 1999 came into force with effect from September 2003. India had an obligation under TRIPS to pass a law for the protection and regulation of geographical indications.
Before this act, there was no protection in India for geographical indications. The present geographical indications regime in India is governed by the Geographical Indications of Goods (Registration & Protection) Act, 1999 and the Geographical Indication of Goods (Regulation and Protection) Rules, 2002.
In most cases, a geographical indication consists of the name of the place of origin of the goods. For example, “Champagne,” “Cognac,”, and “Darjeeling Tea” in India. These are geographical indications designating the specific geographical origin from which they originate. Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil.[1] A registered GI is a public property that belongs to the producers of the goods. It cannot be used for licensing, pledges, mortgages, etc. After the demise of the authorized dealer, his right can be exercised by the successor. It is not without reason that the place of origin is prefixed before the product; the GI tag surely makes us proud of the various products of our country.[2]
Under the Act, the Controller-General of Patents, Designs and Trade Marks under Department of Industrial Policy and Promotion, Ministry of Commerce and Industry is the ‘Registrar of Geographical Indications. The Controller General of Patents, Designs & Trade Marks directs and supervises the functioning of the Geographical Indications Registry (GIR).[3] The Geographical Indications Registry (GIR) is in Chennai, and it has All-India jurisdiction.
The holder of a registered GI has certain rights and privileges regarding the goods. By way of registration, the rights holder can prevent unauthorized use of the GI by others, and also boost the economic well-being of the producers and manufacturers of the goods produced in a particular region. One important thing to take note of is that even when the GI is not registered, legal action can be taken against the infringing parties in a suit of passing off. Thus, geographical indication in India has both legislative and common law remedies. Registration of the geographical indication in India is not mandatory. But it is good to have registration nonetheless, as the certificate of registration also acts as prima facie evidence.
There are three broad requirements that a particular good should possess to qualify for GI protection:
- Identification of the good and its particular area of geographical origin.
- It should possess a given quality, reputation or other characteristics, which
- Is essentially attributable to its area of geographic origin.
The Register of Geographical Indications is divided into two parts, part A and Part B.
- Part ‘A’ consists of particulars relating to registered geographical indications.
- Part ‘B’ consists of particulars of the registered authorized users.
The first step before even contemplating registration of GI and any other intellectual property is to conduct a prior search on the name, or rather a clearance search. It is highly recommended to conduct a clearance search. This search helps to ascertain if the GI is available for registration in India. The supporting documents along with the application have to be filed in the Chennai office. The rights holder can file a single application for registration of a geographical indication in different classes of goods as per the prescribed format.
After the filing of the application, the Examiner in the GI office scrutinizes the application and the supporting documents to ascertain whether the requirements of the GI Act and rules are met with or not. The search is very similar to the search carried out for trademarks. The absolute grounds are based on the test of whether the geographic indication has become generic or descriptive. The test of deceptiveness and likelihood of confusion are also involved, and whether the applied GI is deceptive is any absolute terms is also looked into by the examiner.
The examiner then raises objections to the registration of the GI. The applicant is given an opportunity to respond to these objections within a given time frame. And if there is no objection, the geographic indication is advertised in the Geographic Indication Journal. The said journal is published once every two months. Any person then can file a Notice of Opposition within a maximum period of four months of publication in the Journal. In case no opposition is filed, the geographic indication would proceed for registration and a registration certificate will be issued and sent to the applicant. The Intellectual Property Appellate Board (IPAB) has appellate jurisdiction over the Geographic Indication Registry.
If some objections are problems are found in the application, they are forwarded to the parties so that they have time to prepare in advance. If the applicant fails to remedy the said objections within one month of the notification, the application may be treated as abandoned. But the applicant has the right to request an extension of one month by filing the appropriate form and paying the prescribed fee, as mentioned in the GI Rules. After this is done, the examiner submits the application to the registrar for his/her considerations.[4] If the geographical indication is opposed, there is a separate opposition proceeding, wherein the parties can be asked to make representations before the registrar.
A registered geographical indication is granted for a period of 10 years. For continued protection, the registration has to be renewed in a timely manner. Subsequent renewal of geographical indications may be concluded within a period of six months prior to the expiry of the registration. Upon registration, the details of the geographical indication are entered in “Part A” of the Geographic Indication Register, and the details of the registered users of that geographic indication are entered in “Part B” of the Geographic Indication Register.[5] Finally, the Registrar of GI publishes all the GI applications in the journal.
In India, a huge variety of products have been granted geographical protection. One out of such varieties is agricultural products. Such a grant of geographical indication to agricultural goods helps the agricultural field in many ways. It protects that particular cultivated area through a legal right and also enhances the further increasing scope of cultivation of the particular product.
- Dr. Farrukh Khan is an Advocate and Managing Partner of a Law Firm- Diwan Advocates. Somya Mishra is an Advocate, working with Diwan Advocates.
[1] ‘Introduction to Geographical Indications’, IPR Toolkit, available at http://newdelhi.usembassy.gov/iprgeoind.html
[2] Preetha Kadhir, ‘What is the GI tag?’, The Hindu, March 11, 2013, available at http://www.thehindu.com/todays-paper/tp-in-school/what-is-the-gi-tag/article4495471.ece
[3] ‘Laws relating to Geographical Indications (GIs)’, Business.gov.in, available at http://business.gov.in/legal_aspects/geographical.php
[4] ‘Geographical Indications Filing Procedure in India’, S.S. Rana & Co., available at http://www.ssrana.in/Intellectual%20Property/Geograhical%20Indications/GI_Procedure.aspx
[5] Sumita Singh, Geographical Indications in India: Practice and Procedure, available at http://www.asialaw.com/Article/1989056/Geographical-Indications-in-India-Practice-and-Procedure.html?Print=true&Single=true
