World Intellectual Property Organization (WIPO) states that, “A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production”. Geographical indication indicates the origin of particular goods; its points out their territorial origin or locality. Some goods have special characteristics and qualities on the basis of which they build their reputation. The place of origin affects gets attached to their reputation so much so that reference to goods becomes synonymous to where it was originally produced.
France became the first country to actually afford a geographical indication through legal instrument. For example- France has a famous district of Champagne and we all know how inherently the reputation of Champagne (alcoholic beverage) is attached to its place of origin. The French Wine trade faced a crisis in the early 20th Century and thus the need for Geographical indication (hereinafter GI) arose. This concept was realized in 1919. Internationally the Lisbon Agreement for the Protection of the Appellations of Origin and their International Registration, 1958 was adopted to introduce the concept of GI. The TRIPS agreement also gave a fair definition of GI.
IMPORTANCE OF GIs
- Consumers are paying more and more attention to the geographical origin of products and many care about specific characteristics present in the products they buy.
- In some cases, the “place of origin” suggests to consumers that the product will have a particular quality or characteristic that they may value.
- Geographical indications (GI) therefore function as product differentiators on the market, by enabling consumers to distinguish between products with geographical origin-based characteristics and others without those characteristics.
- Geographical indications can thus be a key element in developing collective brands for quality-bound-to-origin products.
RIGHTS GRANTED TO THE OWNER
- A geographical indication right enables those who have the right to use the indication to prevent its use by a third party whose product does not conform to the applicable standards.
- For example, in the jurisdictions in which the Darjeeling geographical indication is protected, producers of Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in their tea gardens or not produced according to the standards set out in the code of practice for the geographical indication.
- However, a protected geographical indication does not enable the holder to prevent someone from making a product using the same techniques as those set out in the standards for that indication.
- Protection for a geographical indication is usually obtained by acquiring a right over the sign that constitutes the indication.
ADVANTAGES OF TAGGING GOODS WITH GI
- Protecting a geographical indication (GI) enables those who have the right to use the indication to take measures against others who use it without permission and benefit from its reputation (“free-riders”).
- A geographical indication’s reputation is a valuable, collective, and intangible asset. If not protected, it could be used without restriction and its value diminished and eventually lost.
- Protecting a GI is also a way to prevent registration of the indication as a trademark by a third party and to limit the risk of the indication becoming a generic term.
- In general, GIs, backed up by solid business management, can bring with them: Competitive advantage, more added value to a product, increased export opportunities, and strengthened brand.
WHAT CAN BE GI TAGGED
- Section 2 (1) (e) of Indian Geographical Indication of Goods (Registration and Protection) Act, 1999 specifically states that GI means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a 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) Darjeeling Tea
- The very first GI tag ever to be given in India was the Darjeeling tea GI. In 2004 the Darjeeling Tea claimed its historical backdrop to go back to the 1830s.
- It is well-known throughout India and abroad owing to its flavour and quality. The Tea Board went against ITC Limited as they has a premier executive lounge, the “Darjeeling Lounge” at ITC Sonar.
- In 2010, the Board filed a civil suit at Calcutta HC seeking injunction on the use of trademark “Darjeeling” in its “Darjeeling Lounge” name. They pleaded infringement of trademark and their Registered GIs. Furthermore, the Board stated that ITC’s acts will cause confusion amongst the guests who use this lounge.
- This will in turn cause unfair competition along with deception. Interestingly, the defendants argued that Darjeeling Tea is not the most important thing about the Place Darjeeling.
- Thus, the Board cannot have a singular claim over the name of a place. The monopoly ends at “Tea” and not Darjeeling. They further pleaded that this suit was barred by limitation as “Darjeeling Lounge” has been used before the commencement of the GI Act itself.
- The Suit was decided in favour of ITC Limited. The Court noted that lounge services are very different from Tea and the GI is limited to tea only.
2) Kolhapuri Chappals
- In 2019, the CGPDTM granted GI tag to Kolhapuri Chappals. There was a joint bid for the GI by “Dr. Babu Jagjeevan Ram Leather Industries Development Corporation of Karnataka and Sant Rohidas Leather Industries & Charmakar Development Corporation Limited of Maharashtra” (LIDCOM).
- Finally, the GI was granted to 2 states and 8 districts due to the large demand of Kolhapuri Chappals and the misbalance when it came to the low supply of leather in Maharashtra.
- The competition has also increased over the years and the there is a significant change in taste amongst the youth.
3) The Rasgulla GI
- This was one of the highly publicised GI disputes. In this dispute the origin of Rasgulla was questioned and claimed by 2 states- West Bengal and Odisha.
- In 2017, WB received GI status for “Banglar Rasogolla”. The WB State Food Processing and Horticulture Development Corp. (WBSFPHDCL) filed for GI for Banglar Rasogolla.
- Odisha also obtained the GI tag for “Odisha Rasogola” claiming that this variety is produced in a village named Pahala in Odisha. Even though both the states hold the GI tag, there are various dissimilarities in the “Rasogollas”.
- There lies a vast dissimilarity between the date of claim, historical background, colour, texture and even in taste. WB’s Rasogolla was first made by Nobin Chandra Das who hailed from Kolkata.
- His rasogolla became popular in the rest of India. On the other hand, Odisha claimed that their Rasogola was used as an offering at Lord Jagganath’s Temple. WB’s claim goes back to 1860s whereas Odisha claimed that their Rasgola was produced as early as the 12th Century.
- The colour and texture are also different. Banglar Rasogolla is white in colour spongy whereas Odisha’s Rasgolla is soft in texture and Light brown in colour. WB’s Rasgolla is sweeter than that of Odisha’s.
- Hence, the Registrar was justified in granting GIs to both the states as each had a unique twist to the Rasgollas. The vast distinction between both products go on to show that it will not create any confusion or deception amongst the customers.
4) Tirupathi Laddu
Tirumala Tirupathi Devasthanam had applied for the GI of Tirpathi Laddu under class 30. It successfully received the GI tag in 2009.
It is usually offered as Prasad while worshipping Lord Venkateshwara at the Sri Vari Temple in Tirupathi located in Andhra Pradesh. A PIL was filed before the Madras High Court against the GI obtained by a certain R.S Praveen Raj who had obtained the tag “Tirupathi Laddu”.
He was a resident of Trivandrum. He came up with 3 contentions. Firstly, he stated that the GI was granted to a single producer. Secondly, no as such distinction between the products.
Lastly, it was contended that “Tirupathi Laddu” is a very generic name. The PIL was ultimately dismissed as under the GI Act, 1999, it is provided that such disputes shall go to either the GI Registry or the IPAB (Which has been dissolved recently).
OUR STRATEGY FOR GI REGISTRATION
1) Ensuring feasibility of obtaining registration through an extensive search made to verify if the goods satisfy the provisions of Section 2 (1) (e) as well as Section 9.
2) Application filing process :- Filling out all the technicalities involved with the goods. Ensuring that the application is quintessentially made in triplicate. Sending the application form through appropriate modes to the registry.
3) The Examiner will scrutinize the application for any deficiencies. An Examination Report would be issued, which will promptly be addressed by us.
4) If the Registrar has any objection to the application, resolution of the same by us. Further prosecution support.
5) Once the application has been published in the journal, there might be chances of opposition from any individual or entity. Resolution of the same.
6) Once all issues are resolved, the Registrar accepts the application and grants the client with the certificate of registration.
7) Renewal services and further support.