This blog will discuss the concept of geographical indications, its international evolution, and related case-laws.
- 1 Introduction
- 2 Geographical Indication Protection Internationally& Evolution of the term
- 3 Various Instances of Geographical Indication, Registration
- 4 Related Case Laws
A geographical indication is a sign or mark given by the registrar to be used on a product that originated from a particular geographical location. The indication shows the establishment of a link between the origins of the particular goods with a particular location. It possesses the particular qualities or reputation that are due to that origin. That is, it shows a link between the good and its geographical location. For example apples of Kashmir, oranges of Nagpur, etc.
These special characteristics, qualities, or reputation may be due to various factors, e.g. natural factors such as raw materials, soil, regional climate, temperature, moisture, etc.; or the method of manufacture or preparation of the product such as traditional production methods; or other human factors such as the concentration of similar businesses in the same region, specialization in the production or preparation of certain products and the maintaining of certain quality standards
Geographical Indication Protection Internationally& Evolution of the term
The GIs originates from the Paris Convention, 1983. Even though the Convention did not use the expression explicitly, Article 1(2) of the Convention used the expressions ‘appellation of origin’ and ‘indications of source’. Lisbon and Madrid agreement which is concluded in 1891 and governs the international registration of marks has outlined the scope of aforesaid expression. The Lisbon Agreement explains the term appellation of origin as:
“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 geographic environment, including natural and human factors.
The Agreement also defines the term ‘country of origin’ as:
“Country whose name or the country in which is situated the region or locality whose name constitutes the appellation of origin which has given the product its reputation. The latter defines the expression ‘indications of source’ to mean:
‘Geographical indications’ (GIs) as an instrument of intellectual property protection are very much an invention of the TRIPS Agreement. TRIPS Article 22.1 defines
“Geographical indications more broadly as indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristics of the good is essentially attributable to its geographical origin” 1Suresh C Srivastava, Geographical Indication under TRIPS Agreement and Legal Framework in India: Part I,(9), Journal of Intellectual Property Rights, 9-23, (2014).
Further TRIPS Agreement has given special privilege to wines and spirits and they are protected unconditionally. Also, various Articles of the agreement provide the categories of protection.
Furthermore, the evolution of the term GI can be traced from above. The first convention emphasized the quality of the good based on the environment and the same is instrumental in quality. It was modified and the origin became incidental. The TRIPS Agreement brought a conclusive definition and it included the essence of both the previous definitions.
Various Instances of Geographical Indication, Registration
Darjeeling Tea Case
Out of various tea plantations in India, Darjeeling tea’s outstanding quality and flavor are the outcomes of the processing and geographical origin. First, it took registration under the Trade and Merchandise Marks Act 1958 (now the Trade Marks Act, 1999) as no action was there for the protection of geographical indication. The word ‘Darjeeling’ was also registered under the same act. In October 2004, Darjeeling was granted the GI status in India to become the first application to be registered in India as a GI. After the registration of Darjeeling tea in the domestic as well as international market, the tea board fought various infringement suits against various countries including the USA, Germany.
Erode turmeric has applied for the Geographical indication in the year 2010. The application stated that the turmeric is cultivated in the Erode area in Coimbatore and they also claimed based on various ancient documents that Arab Traders, in the 13th century had carried turmeric as part of their trade. Further, Posselts Textile Journal [February I917] mentions Erode as one of the districts in the Madras Presidency where turmeric was chiefly cultivated,” according to the application. There are various varieties of Turmeric and the same has been registered for instance Sangli Turmeric, Waigaon Turmeric.
The basmati rice is one of the superior quality rice in India and is part of India’s heritage. The same came in question when in 1997 an American company RiceTec Inc. got patent registered in the US patent office for the aromatic rice grown outside India. And they said the company tried to enter the international market with the names Kasmati, Texmati. India filed an infringement application in the US patent office which established a separate committee and the findings of the committee were in favor of Indian Basmati Rice and it stated that the quality and aroma found in the Indian Basmati cannot be compared to Basmati elsewhere. 2Case No. 493, Application number: US 08/272,353.
Related Case Laws
Tea Board of India v. ITC Ltd.
The facts of the present case (also known as the Darjeeling tea case) are that the defendant has wrongfully used the Geographical indication for naming his own lounge business as ‘DARJEELING LOUNGE’. The issue in the present case was that the defendant has wrongfully used the term for his business and he is deceiving the public by selling the goods from his place with the indication that they are originating from the geographical area which on the contrary are not at all from Darjeeling. The plaintiff’s right of the geographical indications and other registered rights has been fraudulently used by him to mislead and continues to mislead all persons using the facilities at its said Lounge, creating sold threat to the geographical origin of the goods. This created unfair competition and the situation of passing off. The court held that the bar of limitation provided in section 26(4) of the GI, Act, 1999 which talks about the registration of a mark under trademark similar to the one registered under the Geographical Indication Act, 1999 if not challenged within five years from the registration then it is barred under the section.
The bar for five years applies here as the lounge opened in 2003 while the suit was filed in the year 2010. The bench further observed that there no infringement under the said act as Lounge is not related to goods. Also, the petitioner’s rights are only limited to tea and the same is also not registered as a trademark. The further geographical indication was only limited to the place of origin of tea. i.e., Darjeeling. Thus, the defendant’s lounge does not fall within the category of ‘goods’”. The Court stated that no relation can be established between the defendant’s ‘DARJEELING LOUNGE’ and the plaintiff’s rights under the Trademark or GI act. Thus, the allegations are baseless and the Court dismissed the suit with a fine.
BanglarRasogolla v. Odisha Rasagola
In the present as a dispute arose when in November 2017, West Bengal State Food Processing and Horticulture Development Corporation Limited got GI registration for BanglarRassogolla. This was objected stating that the origin of the sweet is Jagannath Temple PuriOdissa. An application of the removal was and the registration body stated that Odisha got registered as ‘Odisha Rasagola’. The court opined it is very crucial to note here that registration is not given by the GI Registryforthe term ‘Rasogolla/ Rasagola.’BanglarandOdissa is the two-prefix attached to GI tags, thus, indicating that ‘Rasogolla/ Rasagola’ is a general term that anyone can use in their trade and business. Therefore, none of the states has got any monopoly on the word ‘Rasogolla/ Rasagola’. So, everyone is permitted in the trade to continue selling the sweet as Rasogolla/ Rasagola or any other synonym. Only the usage of the word ‘BanglarRasogolla’ and ‘Odisha Rasagola’ by anyone other than the ‘authorized user’ has been prohibited under the law.
Scotch Whisky Association v. Golden Bottling LTD 32006(32) PTC 656 (Del)..,
In the present case, the plaintiff brought an action for passing off against the defendant, who was manufacturing and selling “Red Scotch” whisky. The plaintiff argued that the word “Scot” or “Scotch” is within the meaning of article 22.1 of the TRIPS Agreement 4The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995, art.22.Similar to the recognition given to whisky produced in Scotland. The court held that the defendant is liable for passing off and prevented the defendant from using the present or similar name by passing an order of permanent injunction. 5Ibid