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PROTECTION OF GEOGRAPHICAL INDICATIONS:

NATIONAL AND INTERNATIONAL PERSPECTIVE

V.K. Ahuja*

I Introduction

GEOGRAPHICAL INDICATION indicates that particular goods

originate from a country, region or locality and has some special
characteristics, qualities or reputation, which are attributable to its place
of origin. 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
01 preparation of the product such as traditional production methods; or
other human factors such as concentration of similar businesses in the
same region, specialization in the production or preparation of certain
products and the maintaining of certain quality standards l The
connection between the goods and place becomes so famous that any
reference to the place reminds the goods being produced there and vice
versa. For example, the reference to District of Champagne, France
brings to mind the wine 'Champagne' which is being produced there.
Geographical indications are valuable property to producers from
particular geographical regions. They basically perform three functions:
Firstly, they identify goods as originating in a particular territory, or a
region or locality in that territory; secondly, they suggest to the consumers
that the goods come from an area where a given quality, reputation or
other characteristic of the goods is essentially attributable to their
geographic origin; and thirdly, they promote the goods of producers of
a particular area.
Although the geographical indications are as valuable as trademarks*
yet the functions of geographical indications are different from that of
the trademarks. Trademarks are owned by enterprises and used to identify
products and services in the market, in particular to distinguish them
from competing products and services whereas a geographical indication

* Lecturer, Faculty of Law, University of Delhi, Delhi

1 Surckha Vasishta and Amar Raj Lall, "Geographical Indications of Goods
(Registration and Protection) Act, 1999" in A K Koul and V K Ahuja (ed ), The
Law of Intellectual Property Rights In Prospect and Retrospect 248 (Delhi, 2001)

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never belongs to a particular enterprise. A geographical indication can

be used by several enterprises at the same time, provided that the products
for which it is used originate in the geographical area to which the
indication refers.
A few examples of the geographical indications are: 'Pilsen' and
'Budweis' beers, 'Champagne', 'Porto', 'Sherry', 'Chianti', 'Cognac',
'Scotch Whisky', 'Basmati' for rice, 'Roquefort', 'Real California
cheese', 'Tuscany' for olive oil, 'Vale dos Vinhedos" for wines, 'Florida
Oranges', 'New Zealand Lamb', 'Indian Carpets', 'Swiss Watches',
'Czech crystal' 'Idaho' for potatoes, 'Hereke' for carpets, 'Havana' for
tobacco.
Geographical indications have features that respond to the needs of
indigenous and local communities and farmers. Geographical indications
- (a) are based on collective traditions and a collective decision-making
process; (b) reward traditions while allowing for continued evolution;
(c) emphasize the relationship between human efforts, culture, land
resources and environment; and (d) are not freely transferable from one
owner to another. 2 Geographical indications, therefore, reflect, inter
alia, the traditions, culture, human efforts, resources, and environment
of particular regions.

II Meaning and definition of geographical indications

Two international treaties - Pans Convention for the Protection of

Industrial Property, 1883 (hereinafter Paris Convention) and the Madrid
Agreement for the Repression of False Indications of Origin, 1891
(hereinafter Madrid Agreement) deal with indication of source 3 and
indication of origin 4 respectively, whereas the Lisbon Agreement for
the Protection of Appellations of Origin and their International
Registration, 1958 (hereinafter Lisbon Agreement) deals with
'appellations of origin'. The TRIPs Agreement also uses the expression
'geographical indications'.

Indications of source/indications of origin

Neither Paris Convention nor Madrid Agreement, defines the

expression 'indications of source' or 'indications of origin' respectively.

2. Felix Addor and Alexandra Grazioli, "Geographical Indications beyond Wines

and Spirits: A Roadmap for a Better Protection for Geographical Indications in the
WTO/TRIPs Agreement" 866 The Journal of World Intellectual Property 2002.
3. Paris Convention for the Protection of Industrial Property, 1883, Art. 10 read
with Art. 9.
4. Madrid Agreement for the Repression of False Indication of Origin, 1891,
Art. 1(1).

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2004j PROTEC TION Ot 01 OORAPHICAL INDICA TIONS 271

Both the expressions, however, carry the same meaning These

expressions, like geographical indications, relate to the geographical
area from where the product originates They do not imply any special
quality, characteristic or reputation of the identified product attributed
to its place of origin. They may be words that directly indicate the
origin of the product, such as names of countries, regions or cities, or
may be figurative or written symbols or emblems that evoke indirectly
the geographical origin of the product, such as the image of Taj Mahal
to identify products from India and the image of Statue of Liberty to
identify products from United States.

Appellation of origin

The Lisbon Agreement defines appellation of origin to mean: 5

JT]he 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.
The aforesaid definition of appellations of origin goes beyond the
definition of indication of source/origin, because the product which is
identified with an appellation of origin must not only originate from a
specific place but also have the quality and characteristics which are
due exclusively or essentially to the geographical environment, including
natural and human factors, from where the product originates

Geographical indications

Article 22(1) of the TRIPs Agreement defines geographical indications

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 characteristic of the good is
essentially attributable to its geographical origin.
The definition of geographical indications does not cover all
indications of source because the product identified with a geographical
indication must not only originate from a specific geographical place,
but also have a quality, reputation or other characteristic, which is
essentially attributable to its geographical origin. The definition of
geographical indications, therefore, encompasses appellations of origin,
as they confine only to the criteria of quality and characteristics of a

5 Lisbon Agreement for the Protection of Appellations of Origin and their

International Registration 1958, Art 2(1)

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product attributable to its geographical origin and not the reputation of

the product.

Law on geographical indications in India

Prior to 1999, there was no specific law in India on geographical

indications which could adequately protect the interests of producers.
Despite India being a party to the TRIPs Agreement, it did not enact a
law on geographical indications until 1999. The judiciary, however, has
been active in preventing persons to take unlawful advantage of
geographical indications.
In Mohan Meakin v. Scotch Whisky,6 the Delhi High Court affirmed
the order of the registrar of trademarks by which he refused to register
the applicant's mark proposed to be used on whisky produced in India
consisting of the words "Highland C h i e f and the device of the head
and shoulders of a gentleman dressed in Scottish highland costume
wearing, inter alia, feather bonnet and plaid and edged with tartan, a
well-known symbol of Scottish origin.
In another case, Scotch Whisky Association v. Pravara Sahakar
KarkhanaJ the Scotch Whisky Association succeeded in restraining the
defendants from selling their whisky under the description "Blended
with Scotch" along with the device of Scottish drummer wearing a kilt
or tartan and the word "Drum Beater".

Basmati controversy

It was in 1997 that India became serious about protecting its

geographical indications. The reason was that on September 2, 1997
United States Patent and Trademark Office granted patent no. 5663484
to Ricetec Inc., a U.S. multinational company based in Alvin, Texas for
new "lines and grains" in the name of 'Basmati' rice. Ricetec claimed
that the new varieties have better characteristics than the original
'Basmati' rice and can be successfully grown in specified geographical
areas in North America. Further, it had been using the trademarks
'Texmati' 'Kasmati', and 'Jasmatf for several years to sell its version
of 'Basmati' rice 8 . The controversy, therefore, was twofold: firstly,
according to India, the grant of patent was invalid; and secondly,
marketing of rice by Ricetec Inc. in the name of 'Basmati' which
according to India was a geographical indication in India, should not be
allowed.
6. AIR 1980 Dei 125.
7. AIR 1992 Bom 294.
8. See also, Jayashree Watal, Intellectual Property Rights in the WTO and
Developing Countries 272-73 (The Hague, 2001).

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2004] PROTECTION OF GEOGRAPHICAL INDICATIONS 111

As is known the world over, the long-grained aromatic rice variety

known as 'Basmati' is a traditional produce vastly grown in sub-
Himalayan areas. It is being grown in India for hundreds of years and
farmers have developed various varieties by employing traditional
methods and practices One of the arguments of India was that 'Basmati'
is a geographical indication and since it is being grown m India for
centuries, no other country can allow its persons to use this indication.
It is noteworthy that after the establishment of World Trade
Organization (WTO), there is a substantial duty cut on the Indian
'Basmati' rice in Europe, which has the world's highest demand for
premium rice. Consequently, the competitiveness of Indian 'Basmati'
has increased greatly. India's 'Basmati' exports to Europe rose from
30,000 tonnes to 1,30,000 tonnes. If, therefore, Ricetec Inc. was allowed
to market its rice variety in the name of 'Basmati', India might have to
lose a vast market.
As far as the grant of patent was concerned, the contention of Ricetec
Inc was that its patent covered new 'Basmati' "lines and grains" which
were an improvement over the previous varieties. With reference to the
use of geographical indication 'Basmati', the contention of Ricetec Inc.
was that it was a generic name for types of aromatic rice and not a
specific variety of nee that was native to India. This term, it was claimed,
had been used for decades in a generic way describing this variety from
other sources such as 'American Basmati,' 'Uruguayan Basmati' and
'Thai Basmati.'
The question now arises is: whether 'Basmati' fits into the definition
of a geographical indication given in the TRIPs Agreement? 'Basmati'
is not the name of a geographical area but the product's reputation is
inextricably linked to its region of origin, viz. the Indian sub-continent.
'Basmati', therefore, qualifies for the protection under TRIPs Agreement.
The Ricetec, however, contended that even if the term did fit in the
TRIPs definition at one point of time, it has fallen into the public domain
and has become generic through lack of efforts to protect the name
internationally, It was further contended that Ricetec clearly labels its
products as 'American type basmati rice'. This is a practice, which is
prohibited under TRIPs Agreement for geographical indications relating
to wines and spirits only.9
After hard work of two and a half years, India put together the data
and challenged the patents of Ricetec Inc. in April 2000. The U.S.
Patent and Trademark Office (USPTO) issued patents to only three
strains of hybrid 'Basmati' gram out of 20 claims developed by the
Ricetec while rejecting a more sweeping claim by the company. The

9 TRIPs Agreement, Art 23(1)

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three strains of 'Basmati' to which protection was afforded, were patently

and noticeably different.
As far as the use of geographical indication 'Basmati' by Ricetec
Inc. was concerned, the patent office mandarins stated that Ricetec could
use the 'Basmati' appellation because it was not a trademarked name or
a geographic indicator, unlike 'Champagne' or 'Port', which were
specific to a region. It was further stated that 'Basmati' was not a
geographic indicator even in India. It was grown all over India, Pakistan
and even in Thailand. It was also stated that the 'Basmati' saga had a
turbulent history ever since the perceived transgression in the mid-1990s
was first reported when 'Texmati' and 'Jasmati' hit the shelves of grocery
chain stores. 10 This ruling of USPTO goes against Indian interest so far
as geographical indication 'Basmati' is concerned.

Ill The Geographical Indications of Goods

(Registration and Protection) Act, 1999

The 'Basmati' controversy was an eye opener and India enacted the
Geographical Indications of Goods (Registration and Protection) Act,
1999 (hereinafter an Act). This is the first specific law which provides
for the registration and protection of geographical indications.
The Act defines "geographical indication" in relation to goods, as
'an indication which identifies such goods as agricultural goods, natural
goods or manufactured goods as originating, or manufactured in the
territory of country, or a region or locality in that territory, where a
given quality, reputation or other characteristic of such goods is
essentially attributable to its geographical origin and in 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'. 1 1 The
definition in the Act, though based on the definition given in the TRIPs
Agreement is more explanatory.

Registration of geographical indication

An application for registration of a geographical indication may be

made to the registrar of geographical indications by any association of
persons or producers or any organization or authority representing the
interests of the producers of the concerned goods. The application must
contain the following: 12

10. Times of India 22 Aug 2001.

I 1. The Geographical Indications of Goods (Registration and Protection) Act,
1999, S. 2(1 )(e).
12. Id., S. 11.

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20041 PROTECTION OF GEOGRAPHICAL INDICATIONS 275

(1) a statement as to how the geographical indication serves to

designate the goods as originating from the concerned territory
in respect of specific quality, reputation or other characteristics
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;
(n) the class of goods to which the geographical indication shall
apply;
(in) the geographical map of the territory of the country or region
or locality in which the goods originate or are being
manufactured,
(IV) the particulars regarding the appearance of the geographical
indication as to whether it is comprised of the words or
figurative elements or both,
(v) a statement containing such particulars of the producers of the
concerned goods, if any, proposed to be initially registered
with the registration of the geographical indication as may be
prescribed; and
(vi) such other particulars as may be prescribed.
On acceptance of this application, the registrar of geographical
indications 13 shall advertise it. 14 Any person may oppose it within three
months from the date of advertisement or extended period of not more
than one month l5 The registrar shall, after hearing the parties, if so
required, decide whether and subject to what conditions or limitations,
if any, the registration is to be permitted 1 6 . Thus, where the application
has not been opposed and the time for notice of opposition has expired;
or the application was opposed and it has been decided in favour of the
applicant, the registrar shall register the said geographical indication
and the authorized users, if any, so mentioned in the application. 17
Once a geographical indication is registered, any producer of the
concerned goods may apply to the registrar for registering him as an
authorized user of such geographical indication.
Following geographical indications are not registerable under the
Act-18

13 Id , S 3(1) (The Controller-General of Patents, Designs and Trade Marks is

also the Rcgistiar of Geographical Indications)
14 Id, S 13(1)
15 Id , S 14(1)
16 id , S 14(5)
17 Id S 16
18 Id , S 9

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276 JOURNAL OF THE INDIAN LA W INSTITUTE [Vol. 46 : 2

(i) the use of which would be likely to deceive or cause confusion;

(ii) the use of which would be contrary to any law for the time
being in force;
(iii) which comprises or contains scandalous or obscene matter;
(iv) which comprises or contains any matter likely to hurt the
religious susceptibilities of any class or section of the citizens
of India;
(v) which would otherwise be disentitled to protection in a court;
(vi) 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;
(vii) which are determined to be generic names or indications of
goods and are, therefore, not or ceased to be protected in theit
country of origin, or which have fallen into disuse in that
country. Generic name or indication means the name of goods
which, although relates to the place or the region where the
goods was 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.
The registration of a geographical indication shall be for a period of
ten years but may be renewed from time to time for an indefinite period.19

Rights conferred by registration

It is mandatory to get a geographical indication registered in order

to claim any rights in respect of such indication under the Act.20
However, the rights of action against person for passing off goods as
the goods of another person or the remedies in respect thereof shall
remain unaffected,21
The registration of a geographical indication shall give:22
(i) to the registered proprietor and the authorized user or users
the right to obtain relief in respect of infringement of such
geographical indication;

19. Id., S.18 (1).

20. Id., S. 20(1).
2K Id., S.2042).
22. Id., S. 21(1).

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2004] PROTECTION Ot GEOGRAPHICAL INDICATIONS 111

(II) to the authorized user the exclusive right to the use of the
geographical indication in relation to the goods in respect of
which the geographical indication is registered.

Infringement of the registered geographical indication

A person, who is not an authorized user of a registered geographical

indication infringes it when he: 23
(1) 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, or
(n) uses any geographical indication in such manner which
constitutes an 'act of unfair competition' 24 including passing
off in respect of registered geographical indication; or
(III) 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 persons
that the goods originate in the territory, region or locality in
respect of which such registered geographical indication relates
It is also an infringement to use a geographical indication in respect
of goods not originating in the place indicated by such geographical
indication, even if true origin of such goods is also indicated, and the
geographical indication is accompanied by expression such as "kind",
"style", "imitation" or the like expression. 25

Remedies for infringement of a geographical indication

Two types of remedies are available for the infringement of a

geographical indication -
Civil remedies; and
Criminal remedies.

Civil remedies

The Act provides for the following civil remedies for infringement
of a registered geographical indication:

23 Id , S 22(1)
24 'Act of unfair competition' means any act of competition contrary to honest
practices in industrial or commercial matters, id , explanation 1 to s 22(1) See also
id , explanation 2 to s 22(1)
25 Id, S 22(3)

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278 JOURNAL OF THE INDIAN LAW INSTITUTE [Vol 46 2

(i) Injunction
(ii) Damages or account of profits
(ni) Delivery-up of the infringing labels and indications. 26
These remedies are inclusive, not exhaustive and the court may
provide some other remedies m addition to the aforesaid, such as Anton
Piller order.

(i) Injunction

Injunction includes- temporary injunction and permanent injunction.

Further, the court may also order an ex parte injunction for-
(a) discovery of documents;
(b) preserving of infringing goods, documents or other evidence
which are related to the subject-matter of the suit; and
(c) restraining the defendant from disposing o or dealing with
his assets in a manner which may adversely affect plaintiffs
ability to recover damages, costs or other pecuniary remedies
which may be finally awarded to the plaintiff.27
The aforesaid remedy of injunction is more effective and can prevent
a greater harm to the plaintiff.

(ii) Damages or account of profits

The remedy of damages or account of profits is not cumulative but

alternative. The plaintiff has to elect one of the two remedies at an
earlier stage of the suit. The remedy of damages (other than nominal
damages) or account of profits may be denied where defendant satisfies
the court that he was unaware and had no reasonable ground for believing
that the geographical indication of the plaintiff was registered when he
commenced to use it; and that when he became aware of the existence
and nature of the plaintiffs right in the geographical indication, he
forthwith ceased to use it, 28

(lit) Delivery-up of the infringing labels and indications

It is in the discretion of the court to order the defendant to deliver-

up the infringing labels and indications for destruction or erasure. The
court by taking relevant circumstances into account may or may not
order for such remedy.

26. Id., S.67 (1).

21 Id.. S. 67(2).
28 kL, S.67 (3).

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2004] PROTECTION OE GEOGRAPHICAL INDICATIONS 279

All the aforesaid remedies are also available for passing off action.29
Passing off actions are initiated against the infringement of unregistered
geographical indications.

Criminal remedies

Criminal remedies are more effective than civil remedies because

the former can be disposed off quickly. The pendency of a civil suit
does not justify the stay of criminal proceedings in which the same
question is involved. Since criminal proceedings directly strikes at the
honour and social status of an infringer, in some cases he comes for a
settlement out of court to save his prestige. Chapter VIII of the Act
deals with offences and penalties for such offences. It is an offence to
falsify and falsely apply geographical indication and to sell goods with
such false geographical indication. The punishment is imprisonment for
a term which shall not be less than six months but which may extend to
three years and with fine which shall not be less than Rs. 50,000/- but
which may extend to Rs, 2 lacs. The punishment may be relaxed for
adequate and special reasons which shall be recorded in the judgement.30
On second and subsequent conviction, the punishment has been
enhanced to imprisonment for one year which may extend to three years
and fine of Rs. 1 lac which may extend to Rs. 2 lacs.31
The element of mens rea is essential for conviction. If mens rea is
lacking, the accused may be acquitted. The court may, however, where
a person is convicted or acquitted because of lack of mens rea, direct
the government to forfeit all goods and things by means of, or in relation
to which the offence has been committed.32
After discussing the salient features of the Geographical Indications
of Goods (Registration and Protection) Act, 1999 it is now pertinent to
discuss international legal regime on the subject.

IV International legal regime

The international legal regime on the protection of geographical

indications consists of the four international treaties.
Paris Convention
The Pans Convention for the Protection of Industrial Property of
1883 requires the seizure of all goods bearing false indications as to

29 Id, S67 (1)

30 Id , S 39
31 Id, S 41
32 Id , S 46

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280 JOURNAL OF THE INDIAN LAW INSTITUTE [Vol. 46 : 2

their source or the identity of their producer, manufacturer, or merchant,

on importation into the member countries.33 Seizure shall likewise be
effected in the country where the unlawful affixation occurs.34
Importation of such goods shall be prohibited in those countries where
seizure on importation is not permitted.35
The aforesaid provisions are also applicable to a country which is
not a party to Paris Convention but to TRIPs Agreement.36

The Madrid Agreement

The Madrid Agreement for the Repression of False Indications of

Origin, 1891 was adopted to afford effective means to combat the frauds
involved in the use of indications of origin by persons not possessing
the right to such use. The Madrid Agreement provides: 37
All goods bearing a false or misleading indication, by which
one of the countries to which this Agreement applies, or a place
situated therein, is directly or indirectly indicated as being the
country or place of origin, shall be seized on importation into
any of the said countries.
Though, like Paris Convention, the Madrid Agreement limits itself
basically to border measures, yet the scope of Madrid Agreement is
wider than that of the Paris Convention. The Pans Convention deals
only with false indication of source whereas the Madrid Agreement
deals with both the false indications and misleading indications.
Misleading indications of source are those that are literally true about
the source, but nevertheless misleading.
The scope of article 1 of the Madrid Agreement is restricted by the
reservation concerning appellation of generic character, contained in
article 4, which reads:
The tribunals of each country shall decide what appellations on
account of their generic character, do not fall within the
provisions of the Agreement, regional appellation concerning
the source of products of the vine being, however, excluded
from the reserve specified by this Article.
Thus, article 4 authorizes the courts of each country to decide as to
what appellations on account of their generic character, do not fall
within the provisions of the Madrid Agreement. Further, regional

33. Supra note 3, Art. 10 read with Art. 9(1).

34. Id., Art. 10 read with Art. 9(2).
35. Id., Art 10 read with Art. 9(5).
36. Supra note 9, Art. 2.
37. Supra note 4, Art 1(1).

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2004] PROTECTION OF GEOGRA PHTCAL INDICA TTONS 281

appellations concerning the source of products of the vine, e g

'Champagne', 'Cognac', 'Madeira' and 'Porto' etc. are excluded from
the reservation inherent in the provision. As a consequence of this,
regional appellations of products of the vine can never fall within the
public domain and become descriptive or generic terms. Thus, the Madrid
Agreement gives a better protection for indication of source for products
of the vine, and thereby discriminates against other products

Lisbon Agreement

The Lisbon Agreement for the Protection of Appellations of Origin

and their International Registration was adopted in 1958 in order to
secure effective protection for the appellations of origin. It was felt that
neither the Pans Convention nor the Madrid Agreement ensured an
effective protection for appellations of origin. The Lisbon Agreement,
therefore, institutes a procedure of registration of appellations of origin
at the International Bureau on the request of the country of origin and
members of the agreement, declaring that such appellation of origin is
recognized and protected m such country.
The member states have been given the right to refuse acceptance
of the appellation of origin by giving reasons for such refusal withm a
specified time limit. Nationals of other states have also been given the
right within a specified time to present their objections. If no refusal or
objection is made to a proposed international registration of an
appellation of origin, it would then be deemed protected in the contracting
countries without permitting any claim thereafter that such appellation
has become a generic term unless such appellation had ceased to be
protected in the country of origin.
The member states are obliged to protect the appellations of origin
of products of the other contracting states recognized and protected as
such in the country of origin and registered at the International Bureau. 38
The Lisbon Agreement extends protection against all usurpation or
imitation, including cases where the true origin of a product is indicated,
or where the appellation is used in translated form or accompanied by
terms such as "kind", "type", "make", "imitation", or the like.

TRIPs Agreement

The Agreement on Trade related Aspects of Intellectual Property

Rights Including Trade in Counterfeit Goods discusses the law related
to geographical indications in a separate section. The reason was that

38 Supra note 5, Art 1

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specific concerns of European Community wine growers were taken

into account during negotiations at Uruguay Round. Section 3 of part II
of the TRIPs Agreement deals with geographical indications. It contains
three articles. Article 22 deals with the protection of geographical
indications in general. Article 23 sets forth additional protection for
geographical indications for wines and spirits. Article 24 discusses
exceptions and sets forth commitments to a process of future international
negotiations regarding protection of geographical indications.
Article 22 of the TRIPs Agreement obliges member states to provide
the legal means for interested parties to prevent (a) the use of any
means in the designation or presentation of a good that indicates or
suggests that the good in question originates in a geographical area
other than the true place of origin in a manner which misleads the
public as to the geographical origin of the good; and (b) any use which
constitutes an act of unfair competition within the meaning of article 10
bis of the Paris Convention.39
The TRIPs Agreement provides further that a member shall if its
legislation so permits or at the request of an interested party refuse or
invalidate the registration of a trademark which contains or consists of a
geographical indication with respect to goods not originating in the
territory indicated, if use of the indication in the trademark for such
goods in that member is of such a nature as to mislead the public as to
the true place of origin.40
The aforesaid provision shall also apply to a geographical indication,
which, although literally true as to the territory, region or locality in
which the goods originate falsely represents the public that the goods
originate in another territory.41

39. Supra note 3. Art. 10 bis:

(1)
(2) Any act of competition contrary to honest practices in industrial or commercial
matters constitutes an act of unfair competition.
(3) The following in particular shall be prohibited:
1. all acts of such a nature as to create confusion by any means whatever with
the establishment, the goods, or the industrial or commercial activities, of a
competitor;
2. false allegations in the course of trade of such a nature as to discredit the
establishment, the goods, or the industrial or commercial activities, of a
competitor;
3. indications or allegations the use of which in the course of trade is liable to
mislead the public as to the nature, the manufacturing process, the
characteristics, the suitability for their purpose, or the quantity, of the goods.
40. Supra note 9, Art. 22(3).
. 41. Id., Art. 22(4).

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Higher protection for geographical indications for wines and spirits

The additional protection for geographical indications for wines and

spirits provided under the TRIPs Agreement addresses long-standing
European concerns about the use of labels to describe imitation products
with no direct connection to the geographical area denoted by the
label.42 Article 23 requires that each member shall provide the legal
means for interested parties to prevent use of a geographical indication
identifying wines/spirits for wines/spirits not originating in the place
indicated by the geographical indication in question, even where the
true origin of the goods is indicated or the geographical indication is
used in translation or accompanied by expressions such as "kind", "type",
"style", "imitation" or the like. It is noteworthy that the practice to use
the aforesaid expressions along with geographical indication is prohibited
only for wines and spirits and not for other products.
The difference between the general protection available under article
22 and additional protection available under article 23 is that with
additional protection it is prohibited to use a designation such as
"sparkling wine in the style of champagne, produced in Chile" or "Napa
Valley wine of France". Whereas, according to the general standard of
protection of article 22, designations such as "Roquefort cheese, produced
in Norway" or "Bukhara Carpets, made in United States of America"
are permissible. In case of 'Basmati' controversy, Ricetec contended
that it was labeling its products as "American type Basmati Rice", and
such a practice was not prohibited under article 22 of the TRIPs
Agreement. In the latter cases, the designations do not mislead the
public, as the true origin of the product is actually indicated. The
protection of geographical indications under article 22 is available only
against those uses that mislead the public or that constitute an act of
unfair competition. Article 22, therefore, enables competitors from
outside the region of geographical indication, to take undue advantage
of the reputation of a geographical indication. There also exist a
possibility of such geographical indications of being turned into generic
names. "Frankfurter sauges", "Kiwi fruit", and "Barmuda shorts" have
met the same fate and became generic names. 43
Under article 23(2), refusal or invalidation are provided for
trademarks which contain or consist of a geographical indication
identifying wines and spirits, for wines and spirits where the product is
not of the indicated origin, regardless of whether the public is misled
regarding the product's true origin.

42. Id., Art. 23.

'43. Supra note 2 at 879 & 881.

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In case of homonymous geographical indications for wines, each

such indication shall be protected subject to the provisions of article
22(4). Homonymous geographical indications are those indications which
are spelled and pronounced alike, but which designate the geographical
origin of products stemming from different countries. One such example
is "Rioja", which is the name both of a region in Spain and a region in
Argentina, and the designation is used on wines produced in both
countries. According to article 23(3), such products are required to be
differentiated from one another, taking into account the need to ensure
equitable treatment of the producers concerned and that consumers are
not misled. Problems may arise where both products are marketed in the
same area, and where the products of one country have specific qualities
and characteristics which are non-existent in the products originating
from the other country. The homonymous geographical indication, in
such a case shall be considered to be misleading and shall not be allowed
there.44
In order to facilitate the protection of geographical indications for
wines, article 23(4) provides for negotiations for the establishment of a
multilateral system of notification and registration of such geographical
indications.
Article 24 provides for the negotiations to increase the protection of
individual geographical indications under article 23. The council for
TRIPs shall keep under review the application of the provisions of this
section and shall take such action as may be agreed to facilitate the
operation and further the objectives of section 3 (geographical
indications).
Paragraphs 4 to 9 of article 24 contain exceptions and concessions
which address the concerns of developing countries.
A geographical indication on its being used in a continuous manner
for 10 years preceding 15 April 1994 or in good faith shall not be
prevented even if it would not have been allowed otherwise under the
TRIPs Agreement.45
Article 24(5) recognizes the rights acquired through trademarks in
good faith. The TRIPs Agreement does not require that a member state
extend protection to a geographical indication if that geographical
indication is the "generic" name for the goods in that member state.46
For example, "Dijon Mustard", a style of mustard originally from the
French town of Dijon - to denote now a certain kind of mustard,
regardless of its place of production.47
44. Id at, 879.
45. Supra note 9. Art.24 (4).
46. Id., Art. 24(6).
47. Details available at: http://www.wipo.int/about-ip/en/about_geographical_
ind.html

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The TRIPs Agreement allows persons to use their own names in

business, unless the name themselves are used in a misleading manner.48
Further, there shall be no obligation to protect geographical indications,
which are not or ceased to be protected in their country of origin, or
which have fallen into disuse in that country.49

Post - Uruguay Round developments

Under Doha mandate two issues are being debated - (i) creating a
multilateral register for wines arid spirits; and (n) extending the higher
level of protection beyond wines and spirits

(1) Multilateral register for wines and spirits

The negotiations for creating a multilateral register for geographical

indications for wines and spirits are required under article 23(4) of the
TRIPs Agreement. The TRIPs council had started work on a multilateral
registration system for geographical indications for wines and spirits in
July 1997. The negotiations are now under the Doha Agenda.
Two sets of proposals have been submitted over the years
representing the two main lines of argument in the negotiations - (A)
the Joint paper and (ii) the EU proposal.
The 'Joint Paper' group proposes a voluntary system where notified
geographical indications would be registered in a database. Those
members choosing to participate would have to consult the database
when taking decisions on protection in their countries. Non-participating
members would be 'encouraged' but not 'obliged' to consult the database.
The EU proposal states that the registration would establish a
"presumption" that the geographical indication is to be protected in all
other countries - a presumption that can be challenged on certain grounds
under EU proposal. Once a term has been registered, no country could
refuse protection on the grounds of exceptions in article 24 such as
generic name etc., unless it had challenged the term within 18 months.
The secretariat has produced a document compiling the various
positions. Few important questions arise out of the debate - What legal
effect, if any, would a registration system need to have within member
states, if the register is to serve the purpose of 'facilitating protection'?
To what extent, if at all, should the effect apply to countries not
participating in the system? There is also the question of the
administrative and financial costs for individual governments and whether
they would outweigh the possible benefits.

48 Supra note 9, Art 24(8)

49 Id , Art 24(9)

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The chairperson also circulated a 'draft text' on April 16, 2003,

which was discussed at the April 29-30 meeting and further discussed
in June and July 2003. The draft text contains - preamble; participation;
notification (substantive conditions, contents, language, form, circulation
and publication); registration; legal effects in participating members;
legal effects in non-participating members; legal effects in least-
developed country members; modifications of notifications and
registrations; withdrawals; fees and costs; and contact point. Since June
2003 meeting, the chairperson has continued consultations. 50

(ii) Extending higher level of protection beyond wines and spirits

Under article 23 of the TRIPs Agreement, additional protection is

given to wines and spirits only. A number of member states want to
negotiate the issue of extending higher level of protection to other
products also. At the same time many other member states oppose this
move. Those advocating the extension see the higher level of protection
as a means of marketing their products, and they object to other countries
"usurping" their geographical indications. Those opposing extension
argue that the existing level of protection under article 22 is adequate,
and that providing enhanced protection would be expensive. They also
reject the "usurping" accusation particularly when migrants have taken
the methods of making the products and the names with them to their
new homes.
In Doha Declaration, which was adopted in November 2001, the
ministers included a specific reference to extension by noting, in
paragraph 18 that "issues related to the extension of the protection of
geographical indications provided for in Article 23 to products other
than wines and spirits will be addressed in the Council for TRIPs pursuant
to paragraph 12 of this Declaration". Paragraph 12 provides that
"negotiations on outstanding implementation issues shall be an integral
part" of the Doha work programme. Where there is not a specific
negotiating mandate in the Doha Declaration, implementation issues
shall be addressed as a matter of priority by the relevant WTO bodies,
which shall report to the Trade Negotiations Committee (TNC), by the
end of 2002 for appropriate action.
Members interpret paragraph 12 of the Doha Declaration differently.
Many developing and European countries argue that the so-called
outstanding implementation issues are already part of the negotiation
and its package of results. Whereas other members argue that since

50. Details available at: http://www.wto.org/english/tratop_e/trips_e/gi_back-

ground_e.htm

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2004] PROTECTION OF GEOGRAPHICAL INDICA TIONS 287

TNC has not decided to include these issues in the talks, they cannot be
negotiated.
The difference of opinion over the mandates means that the
discussions have had to be organized carefully. At first they continued
in the TRIPs council in 2002. In 2003 they have been the subject of
informal consultations chaired by Director-General Supachai
Panitchpakdi. Members remain deeply divided, with no conclusion in
sight, although they are ready to continue discussing the issue.51

V Conclusion

With the enactment of the Geographical Indications of Goods

(Registration and Protection) Act, 1999, and its being coming into force
on September 15, 2003, India will be able to protect its geographical
indications abroad. It is expected that recurrence of 'Basmati' like
controversy will be prevented. It is noteworthy that 'Basmati' rice is by
no means the only Indian item that can take advantage of geographical
indication. The list includes for example "Darjeeling Tea" and "Assam
Tea". We have to protect these geographical indications. Apart from
this, "Kanji", the delicious juice of black carrots from Northern India,
"Kolhapuri slippers", "Lucknavi Chicken dresses", Bikaneri Bhujia" etc.
may also be protected as geographical indications under the Act. There
is, thus, a need for the Indian corporate sector to identify various
geographical indications and get them registered under the Act in order
to get international protection for them.
At international level, India is one of the forerunners in advocating
the extension of higher protection to geographical indications for products
other than wines and spirits. There is an urgent need for such higher
protection for all other products. The practice adopted by Ricetec Inc.
of using the term "American type Basmati" can only be curbed if higher
protection is also given to products other than wines and spirits. By
extending such higher protection to geographical indications for all
products, such geographical indications will be protected from becoming
generic names. It is, however, noteworthy that India extends higher
level of protection to all products without any discrimination in its
territory.

51. Ibid.

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