Some Selected Case an analysis on obtained by acquiring a right over the sign

that constitutes the indication.

Indian Geographical Indication Act
Authors : Ashutosh kumar Srivastava1 , and Case Analysis
Puja Paul Srivastava2
The Scotch Whisky Association, ... vs
„A geographical indication (GI) is a sign Golden Bottling Limited 4
used on products that have a specific
It is submitted by learned Counsel for the
geographical origin and possess qualities or
Plaintiffs that under the WTO TRIPS
a reputation that are due to that origin. In
Agreement, protection is provided for
order to function as a GI, a sign must
geographical indications in terms of Article
identify a product as originating in a given
22 thereof. Article 22.1 defines geographical
place. In addition, the qualities,
indications as indications, which identify a
characteristics or reputation of the product
good as originating in the territory of a
should be essentially due to the place of
Member, or a region or locality in that
origin. Since the qualities depend on the
territory, where a given quality, reputation
geographical place of production, there is a
or other characteristic of the good is
clear link between the product and its
essentially attributable to its geographical
original place of production‟.3
origin.
A geographical indication right enables
those who have the right to use the Article 22.2 and 22.3of TRIPs read as
indication to prevent its use by a third party follows: -
whose product does not conform to the
applicable standards. For example, in the Article 22.3 Each Member shall provide the
jurisdictions in which the Darjeeling legal means for interested parties to prevent
geographical indication is protected, use of a geographical indication identifying
producers of Darjeeling tea can exclude use wines for wines not originating in the place
of the term “Darjeeling” for tea not grown in indicated by the geographical indication in
their tea gardens or not produced according question or identifying spirits for spirits not
to the standards set out in the code of originating in the place indicated by the
practice for the geographical indication. geographical indication in question, even
where the true origin of the goods is
However, a protected geographical indicated or the geographical indication is
indication does not enable the holder to used in translation or accompanied by
prevent someone from making a product expressions such as 'kind', 'type', 'style',
using the same techniques as those set out in 'imitation' or the like.
the standards for that indication. Protection
for a geographical indication is usually It is submitted by learned Counsel for the
Plaintiffs that the word 'Scot' or 'Scotch' is a
1
Assistant Professor (law) at Banasthali Vidyapith geographical indication within the meaning
,Rajasthan , India
2
Assistant Professor (law) at Banasthali Vidyapith
,Rajasthan , India
3 4
http://www.wipo.int/geo_indications/en/ on 20 April, 2006

Electronic copy available at: http://ssrn.com/abstract=2702921

of Article 22.1 in as much as it identifies
whisky produced in Scotland.
For the purposes of this clause, any name
which is not the name of country, region or
locality of that country shall also be
considered as the geographical indication 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;
20. Section 20(1) of the Act prohibits any
person from instituting any proceedings to
prevent or to recover damages for the
infringement of an unregistered
geographical indication. However, this does
not affect the rights of action against any
person for passing off goods as the goods of
another person or the remedies in respect
thereof [Section 20(2)]. Learned counsel for
the Plaintiffs also drew my attention to
Section 67 of the Act which empowers a
Court, inter alia, to grant either damages or
account of profits.
Tea Board vs ITC Limited 5
The GI Act announces in its preamble that it
provides for the registration and better
protection of geographical indications
relating to goods. In its statement of objects
and reasons, the bill that preceded the Act
proclaimed that unless a geographical
indication was protected in the country of its
origin, there would be no obligation under
the agreement on Trade Related Aspects of
Intellectual Property Rights (TRIPS) for
other countries to extend reciprocal
protection and that would be to the
detriment of goods bearing Indian
geographical indications in the international
5
On 20 April, 2011
Electronic copy available at: http://ssrn.com/abstract=2702921
market. Section 2(1)(f) of the GI Act defines
"goods" to mean any agricultural, natural or
manufactured goods or any goods of
handicraft or of industry including foodstuff.
The following sub-section gives an inclusive
definition of "indication" to imply any
name, geographical or figurative
representation or any combination of them
conveying or suggesting the geographical
origin of the goods to which it applies.
Section 2(1)(e) of the GI Act is of the very
essence of this statute:
(2) The exclusive right to the use of a
geographical indication given under section
(b) of sub-section (1) shall be subject to any
condition and limitation to which the
registration is subject.
(3) Where two or more persons are
authorised users of geographical indications,
which are identical with or nearly resemble
each other, the exclusive right to the use of
any of those geographical indications shall
not (except so far as their respective rights
are subject to any conditions or limitations
entered on the register) be deemed to have
been acquired by anyone of those persons as
against any other of those persons merely by
registration of the geographical indications,
but each of those persons has otherwise the
same rights as against other persons as he
would have if he were the sole authorized
user."
"22. Infringement or registered geographical
indications.- (1) A registered geographical
indication is infringed by a person who, not
being an authorized user thereof,-
(a) 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
One need must address the fundamental
point of principle raised by the defendant:
that the rights of the plaintiff in respect of its
registered marks are only to protect goods
and cannot be extended to any form of
services. The first part of such contention is
that in so far as the plaintiff is the registered
proprietor of a geographical indication and
the GI Act is confined only to goods, the
plaintiff cannot have any cause of action
against any service that may use the
identical geographical indication. The
second part of the submission on such score
implies that if a certification mark is in
respect of any goods, a complaint of
infringement may be brought against any
other goods or persons connected therewith;
or if a certification trade mark is in respect
of any services, a complaint may be brought
against any other service or persons
connected therewith: but a complaint may
not be brought by the registered proprietor
of a certification trade mark relating to
goods against any service or persons
connected therewith; and, the registered
owner of a certification trade mark relating
to any service may not complain against any
infringing goods or persons connected
therewith. The point raised as to the cross-
category impermissibility of a complaint, in
case of both a geographical indication and a
certification trade mark, does not have to be
conclusively answered at this stage. There is
no application for rejection of the plaint on
the ground that it does not disclose any
cause of action. But since the point has been
urged, a tentative view has to be expressed
for, if a cross-category objection cannot be
maintained, there is no question of entering
into the merits of the matter any further.
Shamnad Basheer vs Union Of India6
This case was related to the The
qualification for the post of Senior Joint
Registrar of Trade Marks and Geographical
Indications is prescribed hereunder:
''(i) Degree in Law from a recognised
University;
(ii) Twelve years practice at a Bar or Twelve
years experience in a State Judicial Service
or in the Legal Department of a State
Government or of the Central Government
or in the processing of applications for
registration filed under the Trade Marks Act
or Geographical Indications Act or in
teaching law in a recognised University or
Institute.
or Masters Degree in Law of a recognized
University with ten years' experience in
teaching law or in conducting research in
law in a recognized University or Research
Institution.'' 9.12. In the present case, a
technical member takes part on equal terms
along with a judicial member in the decision
making process. The qualification is also
prescribed as 12 years of practice at the bar
or 12 years experience in a State Judicial
Service with a Degree in Law. With the
above said qualification, along with other
qualifications, there cannot be any difficulty
in appointing such a person as a technical
member. However, the problem would
possibly arise when a person sought to be
appointed as a technical member merely
because he works in the Legal Department
of a State Government or Central
Government or involved in the process of
applications for registration filed under the
Trade Marks Act or Geographical
Indications Act or in teaching law in a
recognised University or Institute. Similarly,
a Masters Degree in Law of a recognised
6
on 10 March, 2015
University with ten years' experience in
teaching law that may be a qualification for
appointment of a Registrar cannot be termed
as a qualification requisite for appointment
of a technical member. The Scheme of the
Act also provides for the appointment of a
technical member as a Vice Chairman and
then as Chairman. Therefore such persons
cannot be made eligible. We are fortified in
our views by the judgment rendered in
R.K.Jain Vs. Union of India, ((1993) 4 SCC
119), wherein, the Honourable Supreme
Court adjudicated.
collective use by those who comply with
defined standards.
Broadly speaking geographical indications
are protected in different countries and
regional systems through a wide variety of
approaches and often using a combination of
two or more of the approaches outlined
above. These approaches have been
developed in accordance with different legal
traditions and within a framework of
individual historical and economic
conditions.

 Geographical indications are

typically used for agricultural
products, foodstuffs, wine and spirit *********
drinks, handicrafts, and industrial
products.
 These rights are so new for India so
that as per the expansion of law and
economy relating to Intellectuality of
Geographical Indication , new
conflict will arise & people will also
aware to their rights

There are three main ways to protect a

geographical indication:

 so-called sui generis systems (i.e.

special regimes of protection);
 using collective or certification
marks; and
 methods focusing on business
practices, including administrative
product approval schemes.

These approaches involve differences with

respect to important questions, such as the
conditions for protection or the scope of
protection. On the other hand, two of the
modes of protection — namely sui generis
systems and collective or certification mark
systems — share some common features,
such as the fact that they set up rights for