GIs: Select Legal Issues with Reference

to GI registration in India

Latha R Nair
Partner, K&S Partners
New Delhi, November 25, 2008
Contents

GIs – The concept

Definition
How is it different from trademarks
Procedure for protection and registration in India
and aspects of enforcement
Benefits of GI protection
Concluding thoughts

© 2008 K&S Partners New Delh

GIs – The concept
Definition

Geographical indications – Collective community rights held in

indications that identify a product as originating in a country or a
region thereof whose quality, reputation or other characteristics
are essentially attributable to their geographical origin.

Two types of GIs – Geographical names (Darjeeling,

Kancheepuram) and non-geographical names (Feni, Basmati,
Pashmina, Alphonso)

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GIs – The concept

How are GIs different from Trademarks?

GIs are collective community rights; trademarks are
private monopoly rights
GIs are recognized over a period of time; trademarks
can be adopted overnight and used – no need for
recognition
GIs being a community right cannot be assigned;
trademarks being private rights can be assigned

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GIs – The concept

The area of production of goods on which GIs are

applied is fixed; goods on which trademarks are
affixed can be produced all over the world if the
proprietor chooses to.

© 2008 K&S Partners New Delh

GI Protection in India
Protection under the new GI Act
 Act in effect since September 15, 2003
 About 100 GIs registered in India
 Even non-geographical names like Feni, Basmati
Pashmina and Alphonso registrable
 Agricultural goods, manufactured goods, natural goods,
handicrafts and foodstuffs eligible for registration.
registration
 Any association of persons or producers or any
organization or statutory authority representing the
interests of the producers of the goods may apply to
register a GI

© 2008 K&S Partners New Delh

GI Protection in India
 An application shall contain the following:
• A statement as to how the geographical indication
serves to designate the goods as originating from the
particular region w.r.t its reputation or characteristics
• Class of goods to which the GI shall apply
• A geographical map of the region where the goods
are manufactured or produced
• Particulars regarding the appearance of the GI-logo or
word
• Statement containing the particulars of the producers
of the concerned goods

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GI Protection in India

• Once applied for, a technical committee would be

constituted by the examiner and thereafter based on
the comments of the Technical Committee, the
examiner will appoint a hearing
• Based on the hearing, an office action will be issued
• Once the office action is satisfactorily responded to,
the GI office will cause the application to be
advertised for oppositions
• Within 3 months of the advertisement any person may
oppose the application

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GI Protection in India

• If the GI passes through the opposition period

unopposed or in the event of opposition it was
decided in favour of the applicant, the Registrar shall
direct the GI to be registered.
• A registered GI is protected against infringement
• The Act prohibits the registration of a GI as a
trademark
• Criminal remedies are provided for under the Act for
applying false geographical indications and falsifying
a geographical indication

© 2008 K&S Partners New Delh

GI Protection in India

Protection as Certification Trademark under the

Trade Marks Act, 1999
 Under Section 71 of the Act, an application may be filed
along with draft regulations
 Regulations are towards administration of the mark
 The proprietor cannot carry on business in the goods of
the kind certified
 While examining the application, the Registrar of
Trademarks would look into:

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GI Protection in India

• Whether the applicant is competent to certify the

goods in respect of which the mark is registered
• Whether the regulations are satisfactory
• Whether in all the circumstances the registration
applied for would be to the public advantage
 The regulations would include provisions as to:
• The certification of the goods by the proprietor
• Conditions of such certification

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GI Protection in India

Enforcement
The real action starts after registration
Once registered, the rights in the GI will have to be
enforced domestically and internationally
Enforcement has two sides: commercial and legal

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GI Protection in India

On the commercial side there must be initiatives

towards:
 Promotional campaigns and marketing efforts;
 Ensuring supply chain integrity
 Creating awareness
 Exploring avenues of tourism in the region

© 2008 K&S Partners New Delh

GI Protection in India

On the legal side focus must be on:

 Keeping in existence a well-oiled inspection machinery
 Regular market checks to ensure quality compliance
 Initiating prompt legal action against infringers and
pursuing such legal action to its logical end
 Creating awareness on use of the GI

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GI Protection in India

Other aspects of enforcement:

 Keeping in view of the international enforcement, it would
be necessary to have an international watch agency to
report world-wide attempts to misappropriate. Darjeeling
example
 Write to all traders and exporters apprising them of the
correct usage of the GI.

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GI Protection in India
 Some examples of correct usage (using
‘Darjeeling’ as an example) would be:
• Recognize that the following constitute abuse of a GI
– Using ‘Darjeeling’ as a generic word to describe a
type of tea
– Allowing Darjeeling to be spelt as ‘darjeeling’
– Describing tea that is not Darjeeling in such a
manner as to bring in an association with
Darjeeling tea (E.g. ‘Darjeeling’ type of tea)

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GI Protection in India
• While making trademark applications to register a trademark
used to trade in Darjeeling tea follow these steps:
– restrict the goods to “tea” only and not the entire class of
goods in class 30 such as ‘tea, coffee, cocoa, sugar..’
Etc’.
– abstain from using the GI Darjeeling along with the mark
– If at all used, disclaim any exclusive rights to the GI
Darjeeling
 It would be a good idea to create a fund from all stake holders,
which could be utilized to meet the legal expenses

© 2008 K&S Partners New Delh

Benefits of GI protection

Domestic
Prevents cultural and bio piracy
Brings in social and economic prosperity of the
region
 Through better sales of the product
 Through other ancillary industries around it (e.g. tourism)
Protection from fakes and prevents genericide of the
GI

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Benefits of GI protection

International
With domestic protection, international protection
becomes relatively easy (Art. 24.9 of TRIPS)
Better export premiums to the stake holders
The GI tag acts as a symbol of quality and origin
Protection from fakes in international markets
Prevents genericide of the GI

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THANK YOU FOR YOUR ATTENTION!

© 2008 K&S Partners New Delh