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IPR Toolkit - India

Geographical Indications of Goods

Introduction to Geographical Indications

"Geographical indications are…indications, which identify a good as originating in the territory…or a region or locality in a territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin."  It can also be defined as a sign used on goods that have a specific geographical origin and possess qualities or a reputation that is due to that place of origin. Most commonly, a geographical indication consists of the name of the place of origin of the goods. For example, "Champagne," "Cognac," and "Tuscany" 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.

Under the TRIPS Agreement, countries are under no obligation to extend protection to a particular geographical indication unless that geographical indication is protected in the country of its origin. Prior to 2003, India did not protect geographical indications of Indian origin. In order to comply with India's obligations in the TRIPS Agreement, it enacted the Geographical Indications of Goods (Registration & Protection) Act, 1999, which came into force with effect from 15th September 2003. 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. 

By registering a geographical indication in India, the rights holder can prevent unauthorized use of the registered geographical indication by others and promote economic prosperity of producers of goods produced in a particular region. Registration of the geographical indication in India is not mandatory as an unregistered geographical indication can also be enforced by initiating an action of passing off against the infringer. It is, however, advisable to register the geographical indication as the certificate of registration is prima facie evidence of its validity and no further proof of the same is required. 

Market Entry Planning

It is advisable to register your geographical indications in India at the earliest time possible. This will help ensure that your exclusivity to the geographical indications is maintained and you have the right to initiate infringement action against any person who is violating your rights. The following steps should also be a part of your overall strategy for protecting your geographical indications in India:

  • Hire a local law firm specializing in IPR. See for example, http://www.legal500.com, which lists various law firms specializing in different areas of law in India 
  • Besides the official search of the Register of Geographical Indications that will be conducted when you will file for registration, it is important to also get common law searches (this includes the internet, market surveys, yellow pages, directories, etc.) conducted to ascertain whether third parties are using your geographical indications and if so, to what extent.
  • Based on this information and after seeking your local counsel's opinion, decide if your geographical indication is available for use or not. Should the geographical indication be available for use, immediately apply for the registration. Also you should consider hiring a watching service to monitor the trademark journals in order to alert you to any published, deceptively similar trade marks or descriptive trade marks that might be of concern to you.
  • It is advisable that you also issue press releases, publish cautionary notices and advertise the geographical indication to ensure that the relevant section of the fact that you are protecting your geographical indication from any kind of third party violation.
  • It is also important that you not only protect your geographical indications in India, but also in the Indian sub-continent (i.e. in the territory of Pakistan, Sri Lanka, Bangladesh, Nepal, Bhutan, Maldives, Afghanistan and Burma). These countries are in close proximity to each other and as India is the biggest market amongst all of them, the geographical indications that acquire reputation in India are likely to be copied in these markets. This could lead to not only counterfeit products being manufactured in these countries, but also these goods being imported to India and various other countries across the world.
  • You should also take immediate steps to register your geographical indications as domain names [top level domain names (tLDs) including country coded top level domain names (ccLDs)] in the Indian sub-continent, as there have been many instances of third parties registering domains for certain well-known marks with the intention of extracting money by selling these domain names to the rights holders.
  • Should you discover that your geographical indications are being infringed, you should take immediate steps to protect them, either by the means of filing oppositions, cancellations, conducting investigations, sending cease and desist notices or initiating appropriate civil and criminal actions.

Who can apply

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 concerned goods can apply for the registration of the geographical indication in the prescribed format.

What cannot be registered as a geographical indication

The following are the geographical indications that cannot be registered in India:

  • 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 comprise or contain scandalous or obscene matter;
  • Which comprise or contain 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; or
  • Which although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be.

Registration Procedure

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 and Part 'B' consists of particulars of the registered authorized users. The various steps that the rights holder should follow for the registration of their geographical indications in India are as follows: 

  • Hire an IPR law firm
    It is advisable to hire a local IPR law firm, so as to get proper guidance regarding the laws and the procedures that are followed in India. For example, see www.legal500.com.
  • Conduct a clearance search
    It is advisable to conduct a clearance search to ascertain if the geographical indication is available for registration in India. Should the geographical indication be available it would be advisable to register the same at the earliest.
  • Preparing of documents and filing of application
    The rights holder can file a single application for registration of a geographical indication in different classes of goods as per the prescribed format. The application can be filed in the Office of Geographical Indications, Chennai. The application to be filed should contain a statement as to how the geographical indication serves to designate the goods as originating from the concerned territory of the country or region or locality in the country, in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical environment, with its inherent natural and human factors, and the production, processing or preparation of which takes place in such territory, region or locality. It should also include the class of goods to which the geographical indication shall apply, the geographical map of the territory of the country or region or locality in the country in which the goods originate or are being manufactured, the particulars regarding the appearance of the geographical indication (as to whether it is comprised of words or figurative elements or both) and any statement containing particulars of the producers of the concerned goods. The format for filing the application for geographical indications in India is available at http://www.patentoffice.nic.in/ipr/gi/Girule~1.PDF. 
  • Examination and Publication of the Application
    After the application has been filed, the examiner reviews the application and the accompanying statement of case. For purposes of examination, the Registrar of Geographical Indications ordinarily constitutes a Consultative Group of not more than seven representatives to ascertain the correction of the particulars as mentioned in the Statement of Case. Thereafter, the Registrar issues an examination report. Depending on the merits of the application and of any evidence of use, the Registrar may accept or reject the application either absolutely or subject to certain modifications. The Applicant is required to respond to the rejection or objections within two months of the receipt of the examination report failing which the application will be dismissed. After the acceptance of the application by the Registrar, either absolutely or subject to certain conditions and with or without a hearing being conducted, the application will be published.
  • Opposition and Registration
    Any person may, within three months of the publication of the application to register a geographical indication, file an opposition. After serving the opposition documents on the Applicant and after examining the evidence and hearing the parties, the Registrar of Geographical Indications may decide whether and subject to what limitations or conditions the registration is to be permitted.
  • The Registrar of Geographical Indications may register the geographical indication after the application has been accepted and not opposed or if opposed the opposition has been decided in favor of the Applicant. Thereafter the Registrar will issue the Registration Certificate in the prescribed format and sealed with the seal of the Geographical Indications Registry to each of the Applicant and the authorized users.
  • Term of Registration
    The registration of a geographical indication is for a 10-year period, and is renewable, indefinitely.

The flow chart showing the registration process for the geographical indication is as mentioned herein below:[1] 

Flow chart showing the registration process

Any aggrieved person can make an application to the Registrar of Geographical Indications or the Appellate Board in the prescribed manner on the ground that there has been a contravention or failure to observe the condition entered on the register, by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register and after hearing both the parties the tribunal may make such order as it thinks fit.
 
Any person who is aggrieved by the order of the Registrar of Geographical Indications may appeal the order before the Appellate Board.

Authorized Users

Part B of the Register of Geographical Indications contains the particulars relating to the registration of  authorized users. An authorized user is any person who  claims  to be the producer of the goods in respect of such geographical indications as have been registered under the Act. Such person, along with the registered proprietor of the geographical indication, may apply in writing to the Registrar of Geographical Indications to register  as an authorized user. A copy of the application form is available at http://www.patentoffice.nic.in/ipr/gi/Girule~1.PDF. This application has to be accompanied by a Statement of Case and an affidavit of how the authorized user claims to be the producer of the registered geographical indications. These documents may be accompanied by a letter of consent from the registered proprietor of the geographical indications; where such letter of consent is not furnished, a copy of the application is endorsed to the registered proprietor for information and the Registrar is intimated of due service by the proposed authorized user.  The procedure followed by the Registry of Geographical Indications for examination, publication, opposition and registration of the application filed by the authorized user is the same as is followed in the case of an application for registration of the geographical indication.

Infringement & Enforcement Remedies available under the Act

A person, not being an authorized user, infringes a registered geographical indication when he uses:

  • Such geographical indication by any means in the designation 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;
  • Any geographical indication in such manner that constitutes an act of unfair competition including passing off in respect of registered geographical indication. The acts that constitute 'unfair competition' as mentioned above are:

    - all acts that are of such nature as to create confusion by any means whatsoever with the establishment, the goods or the industrial and the commercial process;
    - false allegations in the course of the trade of such a nature as to discredit the establishment, the goods or the industrial or commercial activities, of the competitor;
    - geographical indications, the use of which in the course of the trade is liable to mislead the persons as to the nature, the manufacturing process, the characteristics, the suitability for their purpose or the quantity of the goods; or
  • Another geographical indication for goods which, although true to the territory from which the goods originate, falsely represents that the goods originate in the territory in respect of which such registered indication relates.

In order to protect its geographical indication against unauthorized use, the rights holder may send a cease and desist notice after becoming aware of any violation. Thereafter, depending on the response of the infringer, the rights holder has the option of either initiating a civil or criminal litigation against the infringer.

Civil Action: The rights holder may initiate either infringement and/or passing off proceedings against an infringer. The infringement proceedings may be initiated if the geographical indication has been registered. However in case the geographical indication is not registered, the rights holder still has the option of initiating a passing off action against the infringer. The relief that the court may grant in the case of infringement and/or of passing off includes injunction, and at the option of the rights holder either damages or accounts of profits, delivery-up of the infringing labels and indication for destruction or erasure. One of the landmark judgments in India regarding the protection of geographical indications is Scotch Whisky Association & Ors. v. Golden Bottling Limited {2006(32) PTC 656 (Del)}. In this case, the Delhi High Court passed an order of permanent injunction retraining the infringer from using the word 'Scot' as a part of its brand name, as it gives an impression to the unwary consumer of whisky that the product originates in Scotland or that it is Scotch Whisky.

  • Jurisdiction and Venue: The suit for passing off and/or infringement can 
    be initiated in any court not inferior to the District Court depending on the valuation of the suit. The suit can be at the place where the rights holder or one of the rights holders actually and voluntarily reside or work for gain or carries on business.
  • Elements of the Complaint: In the Complaint, the rights holder is required to demonstrate that (a) the alleged infringing act involves a mark that is identical or similar to the GI of the rights holder; (b) the infringing representation of a geographical indication is being used in connection with goods and might lead to confusion in public regarding the origin of the infringing goods; (c) the unlawful act interfered with the rights holder's rights of exclusive use and/or caused the rights holder economic loss and/or resulted in loss of reputation and goodwill.
  • Statue of Limitations: As a general policy in India, as is prescribed in the Limitation Act, the rights holder has a period of three years from the cause of action for filing the suit. However, as geographical indication infringement is a continuing offence and the infringer violates the exclusive proprietary right of the rights holder every time he commits a discreet infringing act, the infringing period will run anew with each new act. Nevertheless, it is advisable that the legal action be initiated against the infringer as promptly as possible in order to establish the seriousness of the rights holder's intent before the Court.
  • Ex-parte Interlocutory Injunction: Indian courts may grant ex-parte interlocutory injunctions, provided that the rights holder is able to establish its rights before the Court, including the gravity of the offence and that the violation of its proprietary rights merit immediate consideration. Ex-parte interlocutory injunction is a temporary injunction granted for the course of the trial restraining the infringer from use of the infringing trademark, without any notice to the infringer and on the date of the first hearing itself. 
  • Appointment of the Local Commissioner: Depending on the facts of the case, it is also advisable to ask the court to appoint a local commissioner on the first date of the hearing who will raid the premises of the infringer where the infringing goods are stored in order to seize the goods.
  • Damages: There has been a change in the Indian judicial system in recent times with the judiciary awarding some damages and costs to the rights holder because of violation of their intellectual property rights. In the case of Scotch Whisky Association & Ors. v. Golden Bottling Limited {2006(32) PTC 656 (Del)}, the Delhi High Court awarded damages to the amount of INR 5, 00, 000 (approximately $ 12,500) for the violation of its Intellectual Property Rights and also awarded the sum of INR 3, 10, 000 (approximately $7,750) as costs for the litigation.

                                                  
Criminal Litigation: The Geographical Indications of Goods (Registration and Protection) Act, 1999 provides for remedies for violation of geographical indications under the criminal laws too. Under the criminal laws, if a person is convicted of an offence for applying false geographical indications or selling goods to which a false geographical indication is applied, the Court may direct the defendant to forfeit the goods to the government.

Any person who falsely applies a geographical indication, or sells goods to which false geographical indications are applied, may be punished by imprisonment for a term not less than six months but not exceeding three years with a fine, which shall not be less than fifty thousand rupees (approximately $1,250), but which may extend to two lakh rupees (approximately $5000). No prosecution of any offence under this Act shall be commenced after the expiry of three years next after the commission of the offence charged or two years after the discovery thereof by the prosecutor, whichever expiration happens first.

Police have the power to suo moto conduct raids and seizure operations. However, before making any search and seizure, the police officer shall obtain the opinion of the Registrar of Geographical Indications on the facts involved in the offence and shall abide by the opinion that has been obtained.

Provisions under the Customs Laws: Besides the civil and the criminal remedies mentioned herein above, there are also certain provisions under the Customs law which prohibit the importation of infringing goods in India. The Customs Authorities have recently promulgated guidelines known as the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, under which the rights holder can record its registered geographical indications with the Customs authorities. These guidelines authorize the Customs officials to seize goods infringing the geographical indications of the rights holder at the border without obtaining any orders from the court . Under these rules, the Customs authorities have initiated a recordation system using which the rights holder may give a notice in writing to the Commissioner of Customs or any other Customs officer authorized by the Commissioner at the port of import of infringing goods requesting the suspension of clearance of goods suspected to be infringing the geographical indications of the rights holder. Subsequent to the filing of such notice, the Commissioner is bound to notify the rights holder within the prescribed time regarding the acceptance or rejection of this notice. In case of acceptance of the notice, the normal period of validity of such registration is one year during which assistance will be rendered by the Customs authorities to the rights holder to prohibit the importation of infringing goods at the border. After the grant of this registration, the importation of goods that infringe the right holder's geographical indications are deemed to be prohibited, as has been defined under the Customs Act, 1962. The Customs officers have the authority to suspend the clearance of such prohibited goods either at the information received by the rights holder or by initiating suo moto action, provided they have prima facie evidence or reasonable grounds to believe that the imported goods are infringing the geographical indications of the rights holder. After the clearance of the suspected goods is suspended, the Customs authorities have to inform the rights holder Should the rights holder not execute the requisite bond and join the proceedings against the importer within the prescribed period, the Customs authorities will release the suspended goods. These rules also empower the Customs officers to destroy the suspended goods under official supervision or dispose them outside the normal channels of commerce after it has been determined that the goods detained have infringed the geographical indications of the rights holder and that no legal proceeding is pending in relation to such determination. These rules also prohibit the re-exportation of the goods infringing geographical indications in an unaltered state.

Expected Developments
 
The Customs authorities are in the process of upgrading their information technology infrastructure so that they can accept notices from rights holder electronically.

Geographical Indications Legislation and Regulation in India

The Geographical Indications of Goods (Registration and Protection) Act, 1999 The Geographical Indications of Goods (Registration and Protection) Rules, 2002

International  Treaties to which India is a signatory

Paris Convention for the Protection of Industrial Property
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

Geographical Indications Related Websites

http://www.dipp.nic.in
http://ipindia.nic.in/
http://www.cbec.gov.in/
http://www.wipo.int/about-ip/en/geographical_ind.html


FAQs

1. Can I register my geographical indication as a trademark too?

No. The trademark law in India bars the registration of any geographical indication as a trademark.
 
2. Is there a penalty for falsely representing a geographical indication as registered?

Yes. Falsely representing a geographical indication as registered is an offence under the Geographical Indication of Goods (Registration and Protection) Act, 1999. Any person who commits this offence may be punished by imprisonment for a term, which may extend to three years, by a fine or by both.

3. Where are the offices of the Registrar of Geographical Indications located in
 India?

The Registry of Geographical Indications in India is based at Chennai.

4. What are the categories of goods that may be protected by geographical
 indications?

There are 34 different classes on the basis of which the goods are classified. The classifications can be found at: http://www.patentoffice.nic.in/ipr/gi/Girule~1.PDF 

5. What is the fee for filing an application for the registration of geographical
 indications?

The filing fee for filing one application in one class is INR 5,000 (approximately  $125)

6. Can I conduct a clearance search to ascertain if the geographical indication that I
 propose to register is available?

Yes

7. Can I claim priority in India from an application filed in other Convention  
countries?

Yes

8. Can I file one application for the registration of one geographical
indication in different classes of goods?

Yes. The Geographical Indications of Goods (Registration and Protection) Act, 1999 allows the filing of a multi-class application.

9. What is an Appellation of Origin and how is it different from a
Geographical Indications?

An appellation of origin means the geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors. All appellations of origin are geographical indications but not all geographical indications are appellations of origin. Appellation of origins are used on those goods which, along with being an indication of source, also signify the quality and the characteristics of the product which is due exclusively to the geographical environment. For example, Roquefort cheese, which is said to taste the way it does because it is matured in a certain way in the caves of Roquefort is an appellation of origin and a geographical indication. 


[1] See Article 22 of the TRIPS Agreement    
2http://www.keralaindustry.org/e_magazine/geographical_indications_registr.htm
3 http://www.cbec.gov.in/customs/cs-act/notifications/notfns-2k7/csnt47-2k7.htm