Comparison of Geographical Indication of India with USA GI regime and TRIPS

Abstract-

The protection of geographical indication had been one of the most disputable issues over the last few years, in the domain of World Trade Organization. This IPR had been most significant value in the developing country like India, where world famous goods have their origin and existence, example Basmati Rice, Darjeeling Tea, Alphanso Mango, Banarasi Saree, Tirupati Ladoo etc. Trips agreement had also provided the provisions for two- stage protection of GI of goods. GI is used to identify the good’s originating from a particular place having unique characteristics found only in such territory’s environment. Even human factor can also be the cause of uniqueness. This paper is going to describe the meaning, history of GI, basic features and provisions of GI applicable in India, protection of GI in USA and comparison between the two international jurisdiction’s GI regimes, TRIPS provisions dealing with GI and at last will conclude the paper.

Introduction-

Intellectual Property Laws are basically related to the development of the country. It basically protects the creativity of human mind. There are various such kind like Copyright Act, 1957, Trademark Act, 1999, Patents Act, 1970, The designs Act, 2000 and so on. In the same way, a new Act was introduced for the protection and registration of Geographical Indication. Whenever we go to a famous place, we definitely buy its famous thing, like Bikaneri Bhujia, Hyderabadi Biryani, Banarasi Saree, Basmati Rice, Lucknow Chikan Kari, Darjeeling Tea, etc. These are famous for their quality, magnificent taste. Their place of origin has been unique, which needs to be protected. For this, Geographical Indications had been provided by WIPO (World Intellectual Property Organization) at world level. Geographical Indication means indication of goods that have been emerged from a particular geographical dominion, used for identifying natural, agricultural, manufactured, handcrafted or industrial goods. Indian legislature had enacted a law covering such geographical indications known as The Geographical Indications of Goods (Registration and Protection) Act, 1999.

Geographical indication had been used for identifying distinctive character, topographical source of goods, its typical quality and reputation. Geographical Indication is covered under the Intellectual Property Laws giving intangible right to community area whose quality had been resulted into good’s specialty. Even Art. 22(1) of TRIPS Agreement defines Geographical Indication as- “indications which identify a good as originating in the territory of a member, region or a locality in that area, where a given quality, reputation or other features of goods is essentially imputable to its geographical origin. ” Up to the date, 236 plus GIs have been registered under the Act of 1999 in India.

The legislation had also protected the innocent consumers from getting deceived by unauthorized persons who are misusing the Geographical Indication. This had also lead to economic profitability of the producers of such commodities and promoting Indian goods bearing geographical indication in the international markets. Under TRIPS Agreement, if the country where the goods had its origin does not provide protection under GI, then, other countries are under no boundation to protect it. The Geographical Indication Act, 1999 had been a comprehensive legislation which provides for registration and protection for goods having geographical indications. Darjeeling Tea was the first product to get the registration under geographical indication Act, 1999.

Meaning of Geographical Indication

Sec. 2 (1) (e) of GI Act, 1999 clearly defines the geographical indication as “any indication which identifies the goods as agricultural, natural or manufactured as growing in the domain of a nation or in locality or any area of that domain, where the good’s quality, reputation or other such characteristics is attributable to its area of origin. If the good is manufactured one, then its production/ processing/ preparation should take place in such area, region or locality as the case may be.”

Geographical Indication designated products are those which have been originated from a particular area of a country, having unique features due to the environmental factors or other factors of that area or quality and production mechanism of that product. The producer if fulfills the condition set up by the geographical indication owner can use a GI. Examples of GI are- Basmati Rice, Lucknow chikankari, Nagpur oranges, Agra petha, Malabar parantha, etc.

Under the definition of Geographical Indication, the term ‘indications’ under sec. 2(1)(g) refers to “any name, geographical or symbolic representation or any amalgamation of them transferring or advising the geographical origins of goods to which it applies on.

Indication of source and appellation of origin is two different things. The former one means that any symbol or signs indicating that the goods or services had been originated in a country, a region, a specific territory or an area, while the latter denotes the topographical name of the nation, region or specific area which designates that the product has originated with such features which can only be found in such geographical environment which includes natural or human factors or both.

History of Geographical Indication

The traces of geographical indication can be seen in the Egyption civilization where brick makers used these marks to indicate the bricks with which pyramids were made, in the ancient Greece, Thasian wine from Macedonia was famous. In medieval and colonial era where global recognition was there instead of legal one. For ex- Indian spices, Arabian horses, Kashmiri (Pashmina) carpets and shawl, Chinese clay- pots, Dhaka muslin etc. which were world famous products presenting the popularity of particular region.

Before the TRIPS agreement of Uruguay round, which was held in 1994, there were 3 international multilateral agreements dealing with the Geographical Indications. These are Paris Convention for protection of industrial property (1883), Madrid Agreement for suppression of false and deceitful indications of source of goods (1891) and at last, Lisbon Agreement for protection of appellation of origin and their international registration (1958). Both the former convention had focused more on indication of sources and the latter one had its main focus on appellation of sources.

Paris Convention (1883)

It is a foremost global convention dealing with the protection of Geographical Indications. This convention was the result of the requirement of nations to protect their all forms of industrial and intellectual property outside their territory. This convention does not expressly have used the term geographical indication but had used the term ‘indication of sources’. It restricts the use of false indication of source. Art. 1(2) of the Convention deals with the credentials to indication of source and appellation of origin in the industrial property objects.

Madrid Convention (1891)

Under this convention also, the term ‘indication of source’ was used instead of geographical indications. It provides provisions for capturing of such products which are using deceitful indication of source. Madrid agreement did not form part of TRIPS agreement but still is in action. Art. 4 of the convention provides that each member nation’s court will decide that which appellation will be precluded from the purview of agreement, on the basis of their generic features.

Lisbon Agreement (1958)

This had an important role while drafting TRIPS provision covering geographical indication. This agreement had provided higher standards of protection and first time defined the term ‘appellation of origin’ under Art. 2(1) of the Agreement. Art. 1 provides that once the appellation of origin is registered, then it will be protected under other signatory countries too.

There was a draft treaty made in the year 1975 for the protection of geographical indications. It had widened scope than the Lisbon Agreement. There was no compulsory obligation on the member states to have municipal laws on appellation of origin. The draft provides the same prohibition on use of such goods having false geographical indication as the origin of those goods. Under the treaty, geographical indications have to comply with certain standards for registration that are- official name of state which indicates its source, products originating in state and it must certify its use.

TRIPS Agreement (1994)

There have been standards laid down under the TRIPS agreement for protection of geographical indications need to be followed by WTO (World Trade Organization) member nations, within their national jurisdiction, but there are certain problems of hierarchy, because TRIPS includes the sole, similar definition of all geographical indications, no matter which category the product belongs. It obligates two types of protection- Under Art.22, general protection which applies to all geographical indications and under Art. 23, additional protection provided to the wines and spirits only. India being a signatory member of WTO had enacted the legislation complying with TRIPS Agreement named as The Geographical Indications of Goods (Registration and Protection) Act, 1999 which was enforced on 15th September, 2003.

Salient Features of Act, 1999

The preamble of the Act of 1999 deals with registration and better protection of geographical indications related with goods. The key features of Act are-

1. Set up Geographical Indication Registry.

2. Provides registration for GI for particular classes or categories of goods.

3. Provides provision for restriction particular geographical indications registration.

4. Prolongation of GI’s Register in two parts- Part A contains all geographical indications which are registered and Part B contains details of authorized users. Even prolongation can be done through computers.

5. Provisions have been made for mandatory advertisement of all acquired applications for geographical indications to provide opportunity to persons to raise their relevant objections.

6. Provisions for upper level for preservation for apprised goods.

7. Provides for the registration for authorized users of registered GI and describes their rights and effect of registration.

8. The Act provides the opportunity to the registered owner or authorized user to take the action against that person who acts in the contravention of the Act.

9. This Act also provides to the registered owner with the right of renewal, rectification and restoration of geographical Indications.

10. Being a public property, geographical indications cannot be assigned to anyone.

11. Geographical indications cannot be registered as trademark.

12. Provide provision for appeal to an Intellectual Property Appellate Board against the decision of Registrar by the aggrieved party.

13. This Act had sanctioning part by describing the offence and its penalty.

14. Provisions providing central govt. with power to make rules regarding application filing procedure, its contents etc.

15. Act describes potency of registrar, maintenance of register, protection of identical geographical indications and so on.

Important provisions of Geographical Indications in India-

Besides enacting the GI Act, 1999, Indian government had also adopted GI Rules, 2002 for complying with the provisions of TRIPS agreement. It is the central government who decides that which product should come within the purview of GI Act, 1999 and unlike the TRIPS agreement, it does not limit itself up to spirits and wines. Sec. 2 (1) (e) of GI Act defines the term geographical indications.

Registration of GI-

However the registration process is not compulsory in case of GI, but sec. 20(1) clarifies the disadvantage of unregistered GI that its owner cannot file suit or claim any relief in case of infringement. So, to provide a right to the owner of GI products to claim damages against infringer or offender (who had been using GI related products in an unauthorized way), registration is necessary. Chapter 2 of the Act talks about registration process and conditions required for the same. Sec.3 says that the Comptroller- General appointed for patents, Designs and Trademarks under sec. 3(1) of Trademarks Act, 1999 will be the registrar in case of geographical indications. He had the power to withdraw or transfer any case, pending before the officer, dealing with the matter either de novo or continue from where it was pending. Sec.5 talks about the establishment of GI registry (in Chennai) whose head office will be notified by the central govt. For keeping all the records of GI, a register is to be maintained and kept at head office and its copies at other branches. It can be even recorded in the electronic forms.

Sec. 9 provides the conditions where the registration of GI is prohibited. These are-

• When its use is likely to defraud or creates confusion in the mind.

• If its use is contrary to the law prevailing in the country.

• If it contains scurrilous or indecent matter.

• If it contains such content which would likely to injure the religious feelings of any citizen or class in India.

• Which the court had disentitled or denied for the protection under the Act.

• Which have not been provided protection in its country of origin.

• Misrepresented to the person of good’s origin in a territory or place which is otherwise not occurred in that place or territory.

Procedure and timing for registration-

Chapter-3 provides mechanism and duration for the registration. Sec.11 provides provision for application for registration. The first question arises in our mind is that who can apply? So the answer is any association of person, any organization or producers or any person or authority representing the interest of producer can apply in written to the registrar in the manner prescribed along with the fees for the same. A single application can be filed for different classes of goods in GI Registry. The application shall contain class of goods, topographical map of GI territory, detailing regarding emergence of GI, particulars of producers, statement describing the specific features, quality or other characteristics of goods which are exclusively found in place of origin due to its natural factor, human factor and so on. Then applications are checked by the registrar. He may either refuse or admits the application. He may also ask for the required amendments or modifications. If he refused or conditionally accepts, then he has to write the reasons for doing so.

Sec. 12 says that if the registrar after accepting the application but before registering it, realizes that the application was accepted in mistake or registration is subjected to certain restrictions, can withdraw it and continue as if the application letter had never been accepted but before that he have to give due opportunity to speak to the applicant.

Sec. 13 provides that once the application letter had been accepted by registrar, he should cause the same to the advertisement describing its factual particulars. In case if the error is found out under sec. 12 then he can even re- advertise it.

Sec. 14 says that within 90 days of advertisement, or the further period of 1 month in aggregate, any person can file his objection to registrar, who may further give copy of notice to the applicant and the applicant has to file reply within 60 days and if not, then the application shall be considered as rejected. Once the reply is given, then the registrar will send a copy of it to the person raising his objection. Both the parties will be heard, relevant facts and evidence will be taken and at last registrar will take decision.

Sec. 16- Where an application had been accepted without any objection or in case of if objected had decided in applicant’s favour, Registrar will register the GI and its authorized user (if any mentioned in the application) and date of filing of application will be the registration date. After registration, registrar will provide a certificate (having the seal of GI Registry) to applicants and its authorized users. If after the filing of application for registration, due to applicant’s default, registrar is unable to register the GI within 12 months, then the application will be rejected.

Producer of GI registered goods can apply to registrar for registering himself as an authorized user.

Sec. 18 talks about duration, renewal, removal and restoration of registered GI. The duration of registered GI and its authorized user is given for 10 years and can be renewed from time to time. Renewal can be done by applying to the registrar and paying prescribed fees to further 10 years from the date of original GI registration or from last renewal date. It is the duty of registrar to tell the applicant about the expiry of registered GI and time period for renewal and fees to be paid for such. Registrar may remove the GI registration if the applicant did not comply with the method of renewal. Once removed, then on submission of application and prescribed fees by registered owner or authorized user for restoration, the registrar after 6 months and within 1 year of such removal, if thinks reasonable to do so, can again restore it.

Effects of Registration

Chapter 4 deals with this topic. Sec. 20 says that a person or community who had not registered his goods under geographical indication does not have the right to file any suit for claiming compensation for any kind of infringement.

Sec. 21 provides rights to the registered proprietor of GI. The main right is that of filing suit against infringement of registered GI goods. Authorized users have the sole right to use registered GI goods subject to conditions of registration. Where there are 2 or more authorized users of registered GI goods, there co- equal rights are given.

Sec. 22 talks about infringement of registered goods under GI. When the unauthorized or unpermitted person uses the registered GI goods for performing unfair competition (included passing off too). Even the registration is the prima facie evidence and certificate of registration is admissible in all courts and IPAB within Indian jurisdiction. Sec. 24 prohibits the assignment/ transmission, pledge/ licensing/ mortgage of registered GI. But the rights of authorized user can be passed on to his heir after his death.

Appeals to Appellate Board

Sec. 31 says that any aggrieved person, from the orders of registrar, can file an appeal in IPAB in 3 months from the date of order passed which is appealable. No appeal shall be admitted if filed after expiry tenure except of reasonable cause satisfying the board. No court is allowed to interfere in the matter referred under sec. 31(1) of the Act, 1999.The appellate board will follow the procedure provided under the provisions of sec. 84 (2), (3), (4), (5), (6), sec. 87, 92, 95 and 96 of Trademarks Act, 1999.

Offences and Penalties- Chapter- 8 of GI Act.

Sec. 38 talks about the person is said to falsifying and falsely applying GI, if he without consent of authorized user, makes that GI or similar GI or falsifies the actual GI through addition, alteration, effacement or any other way. The person is said to apply false GI when he applies deceptively identical GI to the goods or its packaging.

Sec. 39 provides penalty for falsifying or false applying of GI of imprisonment minimum of 6 months and not exceeding 3 years. This provision also provides fine of minimum Rs. 50k and maximum of Rs. 2 lacs. Even court can award lesser punishment than prescribed but should have adequate reasons for that.

Sec. 40 says that any person who sells or hires foods to which false GI is applied is punishable for minimum 6 months to maximum 3 years of prison and fine of minimum Rs. 50k to Rs. 2 lakhs. If the accused proves up to the satisfaction of court that he had taken reasonable cautions against the offence being committed or at the time in which offence is committed, he had no reason to surmise the authenticity of GI or had acted decently, then court can relieved him.

Court may also enhanced the punishment if found guilty the same person second time on same subject matter with imprisonment of minimum 1 year to maximum of 3 years and fine of min. 1 lakh to max. of 2 lakhs under sec. 41. There is a penalty for falsification of entries in the GI register or falsely describing any palce of business linked with the GI registry with imprisonment not exceeding 2 years or fine or both.

Sec. 46 provides the authorities (court) with the right to order the (Central Govt.) with seizure of goods against which the offence had been committed and later can order to destroy or disposed it off.

Sec. 49 describes about that in case if the offence is done by company, then every person responsible for such act will be made punishable. That person will not be liable who will prove that the offence committed without his knowledge or he exercised all his due diligence to prevent it. If the negligence of director, manager, secretary or other officer is proved, then, they will be held liable.

Sec. 66 provides that suits for infringement of registered GI or rights related to registered GI or passing off arising from the use of any GI deceptively identical to that of plaintiff, by defendant is filed in the district court and not in any court below that.

Relief in case of passing off

Sec. 67 talks about relief granted by court against infringement or for passing off which includes injunction (including ex- parte and interlocutory orders) and if plaintiff requests, then, damages and even delivery of infringed goods or labels and indications. The order of injunction may be passed so as to produce the related documents, protecting of infringed goods or other evidences related to subject matter of the suit or to prevent defendant from disposing off the subject matter which could have adverse effect on the rights of the plaintiff.

But where the defendant satisfies the court that he was unaware of the fact and neither had the reason to believe that the GI which he was using had been already registered under the name of plaintiff. Once he came to know of the existing of plaintiff’s right over such GI, he immediately ceased to use it. In such case, court will not pass any kind of damages to plaintiff either in case of infringement suit or passing off.

Approximate of 65 and plus geographical indications have been registered under the GI registry. This includes Basmati Rice, Darjeeling Tea, Kashmiri shawls, Madhubani paintings, Kanchipuram silks, Hyderabadi Biryani, Bikaneri Bhujia, Lucknow Chikan kari etc.

Leading Cases on geographical indications

Scotch Whisky Association Vs. Pravar Sahakar Kharkhana Ltd., in this case, plaintiff had filed passing off action against defendant, who had been making various brands of whisky in India such as blended with whisky, under the different brand names like- drum beater etc. Bombay High Court had held that plaintiff had satisfactorily interest in filing of the passing off action against defendant manufacturing Indian whisky which had been hampering the reputation and good will of the plaintiff.

Basmati Rice controversy case, where Basmati rice had unique, long and aromatic smell cultivated under the foothills of Himalaya. India had been exporting it to several western countries since a long time. An US company named Rice tech, situated in Texas, given application for patent, in the name of Texamati or Jasmati (which was deceptively similar to Indian rice breed Basmati). When came into knowledge, then Indian farmers felt fear of cultural piracy, filed case against the US co. US co. defended by saying that India and Pakistan don’t owe the term Basmati as there is no such place in either of the country.

Since, there had been no such place named ‘Basmati’, but its validity is based upon Basmati should be figured out as closely and exclusively connected to the geographical area (i.e. geographic appellation). USPTO held in favor of India, saying the name ‘Basmati’ is attributed to India and Pakistan, but India had no legislation for protection of Basmati Rice and after this case, India formulated laws on GI.

Darjeeling Tea Caseis very important case as in this case Darjeeling tea which had its origin in the small hills of Darjeeling district, West Bengal, was the first product to get Geographical Indication protection in India, to protect the product of Indian origin from being passed off by foreign jurisdictions.

Comparison of Indian GI with that USA GI protection regime

Besides India, there are many signatory countries of World Trade Organization, who have been part of multi- lateral agreements inculcated protection of GI within their local jurisdiction. Some of them are- United State of America, China, Thailand, most of the European countries, etc. We are dealing here the comparison between the Indian and USA GI protection mechanism.

GI protection under USA IP laws

USA had been a signatory of WTO from 1-1-2015 and member of World Intellectual Property Organization (WIPO) from 25 August, 1970. USA had signed on 30 May, 1887- Paris Convention on Industrial Property and on 2 Nov. 2003 signed Madrid Convention on International Registration of marks. USA had even made a mutual agreement with European Union on the recognition of some distilled spirits or spirit drinks and trade of wine. Since 1946, USA had given protection to the national and international GI’s, which is far prior to the introduction of TRIPS Agreement. GIs are protected in USA as trademarks as they are counted as the subset of trademark.

An application for the registration of certification and collective trademarks are submitted to US Patent and Trademark Office (USPTO). It is the authority which provides registration to all Trademarks. The USA had provided trademark level of protection to all GIs.

Ways adopted in USA to protect GIs

US Certification Marks

US Intellectual Property Rights, US trademarks Act, 1946 marks GI as a part of certification mark. Its main objective is to make aware purchaser or customers regarding the goods of authorized user have some features or qualities. It even certifies more than one feature which goods possess and in more than one certification group. The best example of this is Rouqefort cheese which signifies that it is manufactured from sheep’s milk and made in the Rouqefort community’s cave following their already established procedure. Where an applicant can prove the geographic expression had been connected with its goods or services, thus achieved distinguishing feature, then the registration is allowed.

US Collective Marks

This mark is also used to protect the geographical indication in USA. It is a particular mark which identifies membership of a particular organization and not the origin of goods. Unlike the certification mark, the proprietor of collective mark can use the mark to manufacture or produce and publicize it and sale it in the market. Collective trademark/ service-mark and collective membership mark are two kinds of collective marks. The difference between the two kinds is that the former one is adopted by the association and is used by its members who uses the mark to identify their goods or services and distinguish them from that of non- members. The latter one specifies membership in association or organization.

GI in USA protected as trademark

US had provided protection to the GI as trademark. USA does not provide protection to the geographical signs which are common for goods and services. They are not registered as trademarks if they are geographically explanatory or non- explanatory of source of goods or services. US trademark laws provide registered owner of GI to restrict any unauthorized person from using such goods having registered GI, if it is deemed that it will create confusion in the minds of consumer, deception related to the origin of goods and services. In this way, registered owner had the exclusive rights over GI goods and services.

Provision for opposition and cancellation of GI registration

In registration process, any ostentatious party can raise an objection and apply for cancellation of registration. The aggrieved party can file objection against registration of trademark, service-mark, collective or certification mark or continued existence of US registration, in Trademark Trial and Appeal Board (TTAB), which is an USPTO administrative tribunal. Along with such jurisdiction, it can also hear the appeals from the refusal order of attorney from registering the mark. Above TTAB, Court of appeals for the federal circuit is there to hear appeals from the order of TTAB and finally the appeal goes to US Supreme Court. Apart from the collective, certification mark, trademarks, USA had adopted common legal mechanism for protection of GIs, such as Unfair Competition law, etc.

USA had never supported the incorporation of GI under trade agreements. Ever local and bilateral trade treaty had included the mutual protection to GIs (since establishment of NAFTA). For eg- Tennessee Whiskey, Bourbon, etc. The US IPR rules are stricter than the provision of TRIPS agreement. Two main trade agreements of USA are-

United Nation States Regulations of the Bureau of Alcohol, Tobacco and Firearms (ATF)

ATF had also provided protection of GI in USA and such law is named as Federal Alcohol Administration Act and Implementing Regulations, which does not allow the labeling and publicizing of whines in such a way which could mislead the public. It also prohibits the deceptive use of GI for malt beverages, whines and distilled water. Thus no registration is required for bringing an action before the federal court.

North American Free Trade Association (NAFTA)

This is a regional treaty, enforced on 1st January, 1994. It had been signed by Mexico, USA and Canada. The IP laws under NAFTA provide high standards for implementation of intellectual property provisions. The law under NAFTA provides that the member states will treat the foreign nationals in the same manner as they treat their nationals. This treaty contains identically similar provisions of GI to that of TRIPS agreement. Art. 1712 of NAFTA treaty provides structure of GI protection subject to certain exceptional conditions. It prevents the use of any means which presents the goods indicating the source of goods is in place other than the actual place of origin, so that to create mislead the public regarding the origin of goods or services and do unfair competition.

Critical Evaluation of US GI protection regime

1. The US certification mark provides strong lawful protection to the GI than the specialized ones. This mark provides connection between the goods and goods’ place of origin. Once this connection is established and certification mark is granted, it protects one or more products along with one or more than one producer.

2. Governmental body or any body authorized by government is the one who is exercising control over the using of geographical term as certification mark in USA. When a geographical term is being used as a certification mark, then it is important to protect the rights of all persons in that area and to prohibit any illegal usage of mark which could harm others who are authorized to use such marks. Thus, it is not in the hands of private individual to fulfill these purposes adequately.

Comparison between India and USA GI protection laws

• In USA, there is a sui generis protection provided to the wines and spirits and GI protected under Trademark provisions, while in India, only sui generis protection is provided and no trademark regime for GI protection.

• In USA, the legislation regarding GI protection are- The Alcoholic Beverage Labelling Act (1988), US code, Title 15 (USC) and The Lanham trade mark Act, 1946. But in India, legislation formulated is GI of Goods (Registration and Protection) Act, 1999 and GI of Goods (Protection and Registration) Rules, 2002.

• The US GI related laws are related to protection of all goods (whether agriculture or industrial or both) and services but in Indian GI Act, it is applicable to all goods (agriculture, manufactures, handicraft, food stuff) but not to services. Schedule 4 of GI rules states the inclusion of alcoholic beverages except beer.

• Under US laws, USPTO (US Patent and trademark Office) is the authority for registration of GI, while in India, Registrar is responsible for registration of GI products.

• The protection to registered GI under US and India both, is provided for 10 years which can be renewed for further period of 10 years.

Protection of GI under TRIPS Agreement

Officially, geographical indication had been introduced from the TRIPS agreement, signed in 1994. World Trade Organization members through trips had given goods to retain its ethos of land area by attaching GI to its goods having unique quality from the place of origin. TRIPS obligate a two level protection to GI, one to the geographical indication in general and other to the wines and spirits. Prior to the TRIPS agreement, there was no agreement which deals with the term ‘GI’. However, there had been three agreements i.e. Paris Convention, Madrid and Lisbon agreement were dealing with the related concepts of GI i.e. Indication of source and Appellation of Origin. But these three treaties does not have any important notable effect on the protection of GI. The advent of GI protection comes with the TRIPS agreement, because it had provided the minimum standards of protection, which the signatory countries of WTO were bound to follow and make their laws accordingly and secondly, it had a support of very strong dispute resolving mechanism, under WTO system, which secure enforcement mechanism.

At universal level, signatory nations are bound to provide protection to the GI only against fraud or deceptive use and to stop unfair competition. GI is defined under Art. 22.1 stating that GI is the indication which identifies a good originating from a territory, region or locality which attributed to product’s quality, or other characteristics. TRIPS had covered whole goods under the GI protection, while Indian GI had covered agricultural, handicraft and manufactured goods.

Art. 22.2 provides that member states shall provide legal measures to interested parties to avoid the misuse of any goods which have origin in such geographical area other than the true place of origin. This made available to the authorized user or registered owner to claim damages against offenders.

Art. 22.3 provides that it is mandatory for member countries to invalidate the registration of trademark, containing a GI dealing with goods which had not been originated from the area claimed. This could lead to the confusion of public regarding right place of origin. This provision had been given under sec. 25 (a) of GI Act, 1999.

Art. 22.4 of TRIPS talks about homonymous GI which had been given under sec.9 of Indian GI Act, 1999. The provision restricts the registration of homonymous GI

Art. 23 of TRIPS deal exclusively with the protection of GI in respect of wines and spirits. Art. 23.1 prohibits use of such GI identifying spirits or wines which has not originated in the place indicated by GI. Art. 23.2 invalidates the registration of illegal GI irrespective of fact that whether public is deceived. Sec. 25 (b) deals with similar provisions. Art. 23.3 provides that homonymous GI for only wines and not spirits, whose usage is not deceptive to the public under, Art. 22 (4) of Trips agreement. Here in the case both the GIs are protected and members have to determine such conditions under which homonymous indications can be differentiated. Counterpart provision in Indian GI Act is sec. 10, which applies to any homonymous GI not limited to the wines only. Art. 23.4 provides for multi- lateral mechanism for GIs notification and registration.

Art. 24 of TRIPS agreement provides for the negotiation and exceptions at international level dealing with continuous and identical use of GIs for wines. Art. 24.3 had been talking about that while enforcing this section, a member shall not decrease the protection of GIs already in existence to the member immediately before the date of enforcement of WTO agreement. Sec. 20 (2) of GI Act, 1999 deals with the same provision in name of passing of action.

Taking care of possible conflicts, which could arise between GI and Trademark, Art. 24.5 of TRIPS agreement had allowed the right holders to maintain certain acquired rights. Art. 24.9 remove the obligation on members from protection of such GI, which- is not protected or ceases to protect or not in use in the country of origin. Same provision is given under sec. 9 of Act, 1999 which prohibits for certain GIs from registration. Hence, these three Articles (Art. 22, 23, 24) are the main provisions in the TRIPS agreement which specifically deals with GI at international level. We can see the similar provisions in the Indian GI Act, 1999 which proves that Indian legislation had taken initiative to comply with TRIPS agreement being a member of WTO and signatory of TRIPS agreement.

Conclusion

India had been signatory member of different agreements and the most important is the TRIPS agreement. With that, India had introduced the legislation for the registration and protection of GI of goods relating to the origin of goods. GI is included under the IPR laws in India as it deals with intangible rights of area or community or territory of a nation where it has its origin. There is no mandatory provision for registration but without registration, aggrieved owner cannot claim for damages against the infringement of GI. All registrations are mentioned in the Register. The Indian legislation had adopted sui generis protection. The goods covered under GI Act can be either natural, agricultural, handicraft, industrial or manufactured one. This had showed the increased importance of spreading the level of protection for GI of wines and spirits.

Then, we have compared the Indian GI with that USA and viewed some comparing points between the two. From this, we get to know that legal framework of GIs varies from country to country. To protect from violation, separate legal remedy had been provided to protect GI, both domestically and globally. The USA had been registering their GI mark under the Trademark Laws, which is not in case of India. In many of the developing nations, the GI protection mechanism is at starting level, that either the govt. in such countries can protect self GI or protect the foreign ones. The main problem in Indian GI system is that it does not cover services. There is a hope that with the development, changes could be made in the legislation and services could be included under the domain of GI Act just like that of US and China.

References

Websites Referred-

• https://www.altacit.com/

• http://www.indianjournalofmanagement.com/

• http://www.ipindia.nic.in/

• http://www.legalserviceindia.com/

• https://www.researchgate.net/

• https://shodhganga.inflibnet.ac.in/

• https://www.sourcetrace.com/

• https://unctad.org/

• https://www.wto.org/

About Author

Pratibha Kumari

Hello readers, i am pratibha kumari, law student from Banasthali Vidyapith, Rajasthan