Protection of Geographical Indication (GI) has, over the years, emerged as one of the most contentious IPR (Intellectual Property Rights) issues in the realm of the WTO’s Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS defines GI as any indication that identifies a product as originating from a particular place, where a given quality, reputation or other characteristics of the product are essentially attributable to its geographical origin. Also a geographical indication (GI) gives exclusive right to a region (town, province or country) to use a name for a product with certain characteristics that corresponds to their specific location.
The Geographical Indications of Goods (Registration and Protection) Act, 1999 protect the GI’s in India. Registration of GI is not compulsory in India. If registered, it will afford better legal protection to facilitate an action for infringement.
A well protected GI, when pro-actively used, can be an effective marketing tool as it conveys to the consumers of particular goods and services a certified level of quality, reputation and special characteristics of those goods and services. If not accorded protection, any person can use any geographical indication to any goods or services which may not be at par with the standards of the original goods and services and can cause confusion among the consumers and deceive them. Lack of awareness among the stakeholders of GIs, non -existence of quality control mechanisms are the reasons for the failure in achieving the objectives. Moreover, the Act which is formulated at par with the trademarks law tends to be more trader-centric than producer-centric.
NEED FOR LEGAL PROTECTION OF GI
Given its commercial potential, legal protection of GI assumes enormous significance. Without suitable legal protection, the competitors who do not have any legitimate rights on the GI might ride free on its reputation. Such unfair business practices result in loss of revenue for the genuine right-holders of the GI and also misleads consumers. Moreover, such practices may eventually hamper the goodwill and reputation associated with the GI.
INTERNATIONAL PROTECTION FOR GI UNDER TRIPS
At the international level, TRIPS sets out minimum standards of protection that WTO members are bound to comply with in their respective national legislations. However, as far as the scope of protection of GI under TRIPS is concerned, there is a problem of hierarchy. This is because, although TRIPS contains a single, identical definition for all GI, irrespective of product categories, it mandates a two-level system of protection: (i) the basic protection applicable to all GI in general (under Article 22), and (ii) additional protection applicable only to the GI denominating wines and spirits (under Article 23).
This kind of protection is challenging, if Article 22 fails to provide sufficient intellectual property protection for the benefit of the genuine right-holders of a GI. A producer not belonging to the geographical region indicated by a GI may use the indication as long as the product’s true origin is indicated on the label, thereby free-riding on its reputation and goodwill.
THE INDIAN GI ACT
India has put in place a sui generis system of protection for GI with enactment of a law exclusively dealing with protection of GIs. The legislations which deals with protection of GI’s in India are ‘The Geographical Indications of Goods (Registration & Protection) Act, 1999’ (GI Act), and the ‘Geographical Indications of Goods (Registration and Protection) Rules, 2002 (GI Rules). India enacted its GI legislations for the country to put in place national intellectual property laws in compliance with India’s obligations under TRIPS. Under the purview of the GI Act, which came into force, along with the GI Rules, with effect from 15 September 2003, the central government has established the Geographical Indications Registry with all-India jurisdiction, at Chennai, where right-holders can register their GI.
Unlike TRIPS, in the GI Act does not restrict itself to wines and spirits. Rather, it has been left to the discretion of the central government to decide which products should be accorded higher levels of protection. This approach has deliberately been taken by the drafters of the Indian Act with the aim of providing stringent protection as guaranteed under the TRIPS Agreement to GI of Indian origin. However, other WTO members are not obligated to ensure Article 23-type protection to all Indian GI, thereby leaving room for their misappropriation in the international arena.
The definition of GI included in Section 1(3) (e) of the Indian GI Act clarifies that for the purposes of this clause, any name which is not the name of a country, region or locality of that country “shall” also be considered as a GI if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be. This provision enables the providing protection to symbols other than geographical names, such as ‘Basmati’.
While registration of GI is not mandatory in India, Section 20 (1) of the GI Act states that no person “shall” be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an “unregistered” GI. The registration of a GI gives its registered owner and its authorized users the right to obtain relief for infringement. The GI Registry with all India jurisdictions is located in Chennai with the Controller-General of Patents, Designs and Trade Marks is the Registrar of GIs, as per Section 3(1) of the GI Act. Section 6(1) further stipulates maintenance of a GI Register which is to be divided into two parts: Part A and Part B. The particulars relating to the registration of the GIs are incorporated in Part A, while the particulars relating to the registration of the authorized users are contained in Part B (Section 7 of the Act).
A GI may be registered in respect of any or all of the goods, comprised in such class of goods as may be classified by the Registrar. The Registrar is required to classify the goods, as far as possible, in accordance with the International classification of goods for the purposes of registration of GI (Section 8 of the Act). A single application may be made for registration of a GI for different classes of goods and fee payable is to be in respect of each such class of goods.
In India a GI may initially be registered for a period of ten years, and it can be renewed from time to time for further periods of 10 years. Indian law place certain restrictions in that a registered GI is not a subject matter of assignment, transmission, licensing, pledge, mortgage or any such other agreement.
Rights of Action Against Passing-Off
The GI Act in India specifies that nothing in this Act “shall” be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. In its simplest form, the principle of passing-off states that no one is entitled to pass-off his/her goods as those of another. The principal purpose of an action against passing off is therefore, to protect the name, reputation and goodwill of traders or producers against any unfair attempt to free ride on them. Though, India, like many other common law countries, does not have a statute specifically dealing with unfair competition, most of such acts of unfair competition can be prevented by way of action against passing-off. Notably, Article 24.3 of TRIPS clearly states that in implementing the TRIPS provisions on GIs, a Member is not required to diminish the protection of GIs that existed in that Member immediately prior to the date of entry. This flexibility has been utilised by India in the GI Act (Section 20(2)) in maintaining the right of action against passing-off, which has been a part of the common law tradition of India, even prior to the advent of the TRIPS Agreement.
Any lawsuit relating to infringement of a registered GI or for passing of an unregistered GI has to be instituted in a district court having jurisdiction to try the suit. No suit shall be instituted in any court inferior to a district court [Section 66 of the Geographical Indications of Goods (Registration and Protection) Act, 1999].
Tea Board, India v ITC Limited may be the first case on infringement of a registered geographical indication (GI) to be decided by an Indian Court. The Calcutta High Court denied an interim injunction to the Tea Board of India, the registered proprietor of the GI, Darjeeling. The Tea Board sued ITC, inter alia, under the Geographical Indication of Goods (Registration & Protection) Act 1999, for infringement of its registered GI against the use of the name “Darjeeling Lounge, alleging such use amounted to an act of unfair competition including passing off.
The Tea Board sought relief on the basis that use of the name Darjeeling Lounge by ITC to refer to a section of its hotel, amounts to an act of passing-off and therefore, an act of unfair competition. In response, the Court noted that every kind of passing-off would not necessarily amount to an act of unfair competition without further elucidating the dividing line between the two concepts. The Court explained that the registered proprietor can complain against the use of the GI under a passing-off action, if the GI has any “nexus” with the product with which it is exclusively associated with under its registration. ITC’s Darjeeling Lounge being an exclusive area within the confines of its hotel, it is accessible only to its high-end customers, who may merely frequent the area and be served with any beverage. Accordingly, the Court concluded that there was scarcely any likelihood of deception or confusion.
Further, in holding that the use of Darjeeling was not the sole prerogative of the Tea Board, the Court highlighted that the word has been used so extensively in trading and commercial business for decades prior to the GI Act that the subsequent registration of the GI would not, prima facie, entitle the Tea Board to any interim relief in this case.
Effectively, the court has limited the scope of passing-off under the GI Act to only those cases where there is identity in the goods, and has also pointed that the descriptiveness or generic nature of a GI may be a factor in denying an interim injunction. While it is a ruling only at the interlocutory stage, the decision is likely to have significant ramifications in future cases in India, especially when obtaining interim injunctions forms a critical aspect of any IP litigation strategy.
STATUS OF GI REGISTRATIONS IN INDIA
Around 65 GI’s of Indian origin have already been registered with the GI Registry. These include GI like Darjeeling (tea), Pochampalli, Ikat (textiles), Chanderi (sarees), Kancheepuram silk (textiles), Kashmir Pashmina (shawls), Kondapalli (toys), and Mysore (agarbattis).
GI’s registered during 2007-08 include ‘Muga Silk’ from Assam, ‘Madhubani paintings’ from Bihar, ‘Malabar pepper’ and ‘Alleppey Green Cardamom’ from Kerala, ‘Cora Cotton’ from Tamil Nadu, ‘Allahabad Surkha’ from Uttar Pradesh, ‘Nakshi Kantha’ from West Bengal, ‘Monsooned Malabar Coffees’ from Karnataka and Kerala. There is many more Indian GI in the pipeline for registration under the GI Act.