1.

Geographical Indication
A geographical indication is a sign used on products that have a specific geographical
origin and possess qualities or a reputation that are due to that origin. Geographical Indication
(GI) is one of the six Trade-Related Intellectual Property Rights (TRIPS) of the World Trade
Organisation (WTO). It identifies a good as originating from a particular place, where a given
quality, reputation or other characteristics of the good become essentially attributable to its
geographical origin. GIs may be associated with natural, agricultural, manufactured or
industrial goods. Some of the well known GI goods are 'Darjeeling' (tea), Pochhampalli Ikat,
Chanderi Handloom, 'Basmati' (rice), 'Alphonso' (mango), etc.
Given India's historically vibrant and famous craft traditions, a number of craft genres
and products from the crafts sector qualify as GI goods. If harnessed properly, trade gains
from enhanced sale of these GI goods could provide tremendous socio-economic benefits to
the producers of such goods. India, in compliance with the TRIPS Agreement of the WTO,
enacted 'The Geographical Indications of Goods (Registration and Protection) Act, (GI Act)
on 15th September 2003 to provide protection to the goods registered under the Act. Seven
years down the line, evidence from the ground suggests that while there has been some
progress in terms of number of goods registered under the GI Act, there remain a number of
issues and concerns in the context of harnessing the potential commercial benefits out of GI
registration in India.
1.1.

History
The term 'geographical indication' (GI) is a relatively new concept introduced by the

TRIPS Agreement (WTO,1994). However, evidences suggest that the practice of using other
closely related concepts existed even in the pre-industrial times. The concepts such as
'appellations of origin', 'indications of source' 'designations of origin' and 'protected
geographical indications' used names of places and distinctive signs for variety of products as
'indications of geographical origin' (IGO). For example: Mt. Fuji sake and Pisa silk,
Champagne, Florida Oranges, New Zealand lamb, Murano Glass, Swiss Watches, Bukhara
carpets etc.
Prior to the TRIPS agreement of the Uruguay round which concluded in 1994, there were
mainly three international conventions dealing with protection of IGOs, i.e. the Paris
Convention for the Protection of Industrial Property (1883), the Madrid Agreement (1891)

and the Lisbon Agreement for the Protection of Appellations of Origin and their International
Registration (1958). While the Paris Convention and the Madrid Agreement dealt with
'indications of source', the Lisbon Agreement focused on protection of 'appellations of origin
(Kasturi Das, 2006).In terms of providing global protection to these IGOs, however, these
multinational treaties offered limited scope as these conventions were ratified only by few
countries. Hence, signing of the TRIPS Agreement, which brought GI to the fore in
multilateral negotiations; by more than 150 member countries was an important step forward
for the international protection of IGOs. The agreement provided the 'minimum' standards of
protection for GIs (along with all other IPRs) backed by an enforcement mechanism.
However, there remains the problem of a hierarchy in the levels of protection based on an
arbitrary and specious categorisation of goods under the TRIPS Agreement.
In international trade negotiations on IPRs, the European Union has always shown keen
interest and even aggression in seeking effective protection to GI goods. The negotiations,
particularly on the GI section of the TRIPS Agreement, were among the most difficult and
this stemmed from clear division between the main proponents of the TRIPS agreement-the
US and EU. The European Union constantly emphasised on inclusion of GI in the TRIPS
during the Uruguay rounds of negotiation. The fact that GI was finally included in the TRIPS
agreement can be attributed to the EU's remarkable negotiating capacity. The final outcome
was tilted in the interest of the European countries. The Current TRIPS text provides a basic
standard of protection to all other goods and higher standards of protection to wines and
spirits in which they have clear advantages. The EU and its member states have a diverse
portfolio of over 6,000 protected GIs.
Darjeeling Tea was the first good to be registered as a GI good in India. The need for
Darjeeling Tea to get GI protection became pronounced when it was discovered that the
volume of Darjeeling Tea being sold in international market was more than the volume being
produced. This made it clear that gross misappropriation by way of free riding on the brand
reputation of Darjeeling Tea was taking place in the international market. The move for
registration of Darjeeling Tea was initiated soon after the GI Act came into force and the
process of registration was relatively smooth because it was initiated by The Tea Board of
India which is a financially sound body and could afford hiring the services of all required
legal, scientific and other technical experts.

1.2.

Introduction
GI acts as a signalling device that helps producers differentiate their products from

competing products in the market and enables them to build a reputation and goodwill around
their products, which often fetch a premium price. GIs are collective rights owned by the
concerned communities. The key socio-economic issues relating to geographical indications
relevant to developing countries include misappropriation, protecting traditional and
indigenous knowledge, improving market access, creating niche market, protection of
reputation, potential income effect and rural development. A consumer survey done in Europe
(WTO,1999) revealed that 40 percent of consumers surveyed were willing to pay a premium
of 10 percent for origin-guaranteed products. Unless a geographical indication is protected in
the country of its origin, there is no obligation under the TRIPS agreement for the other
countries to extend reciprocal protection.
In India 'The Geographical Indications of Goods (Registration and Protection) Act (GI
Act) was enacted in 2003 in compliance with India's obligations under TRIPS at the WTO
The Act has three key objectives: 1. Adequately protect the interest of producers of GI goods
& add to the prosperity of the producers of such goods, 2. Protect consumers from deception,
Out of the total 120 registered GIs, 80 belong to the handicraft category followed by
agriculture, manufactured and food stuff. There is a near complete absence of an effective
post-GI mechanism in India. The Government's role is vital in the post- GI mechanism.
Without government support, most producer groups cannot effectively defend or promote
their GI brands as they do not possess the necessary resources. The Indian Government has
not made any headway in adoption of strategies for branding and promotion of GI products as
well as their marketing and distribution in both domestic and export markets. Currently, the
action related to GI appears concentrated on registration of GI goods and, in many states the
State Governments are acting in haste. The identification and registration is happening
without adequate due diligence. There is a dearth of research from the Indian perspective on
potential benefits from GI protection. While many studies have been done in Europe on the
issue, hardly any systematic assessment has been undertaken by the relevant agencies in India
while identifying the products to be accorded GI status.

Once the goods are registered as GI, they will be protected under the GI Law and any
violation on this account would be tantamount to a legal offence. If the Act is implemented
effectively, it will act as a deterrent to unethical producers selling their low quality and cheap
products free riding on the reputation enjoyed by GI goods. The GI tag attached to products
acts as a signaling device that helps producers to differentiate their products from competing
products in the market and enables them to build reputation and goodwill around their
products, which allows them to fetch a premium price.
But, there are at least two major differences between Trademarks and GI. Firstly, while
Trademarks can be owned individually or by a group of people, GIs are collective rights
owned by the concerned communities. Secondly, Trademarks can be transferred or assigned
to another right holder but GI rights are perpetual collective rights. Besides, since most of
these GI goods or potential GI goods have their origin in rural areas, the increased sales of
these goods as a result of protection under the GI Act has the potential to lead to enhanced
income to the producers' communities and hence to rural development.
1.3. GI Registration
The Government of India has established the 'Geographical Indications Registry' with
all-India jurisdiction at Chennai, where the GIs can be registered. Till March 2010, 120 goods
have been registered under the Act and many more are in the pipeline. The Indian GI Act says
that any association of persons, producers, organization or authority established by or under
the law is eligible to apply for GI registration. The applicant must represent the interest of the
producers.
Producers are defined as persons dealing with the following three categories of goods:
1) Agricultural Goods include the production, processing, trading or dealing; 2) Natural
Goods include exploiting, trading or dealing; and 3) Handicrafts or Industrial goods include
making, manufacturing, trading or dealing. The second stage is the submission of application
for registration under the GI Act, 1999. The due diligence exercise requires tremendous
amount of time, energy, money and technical expertise. The application has to include details
of special characteristics of the product to convincingly prove the uniqueness and establish
linkages between the product and its place of origin. The documentation process is extremely
rigorous

and

requires

elaborate

audio-visual

documentation.

Most

of

the

lead

applicants/producers do not have the capacity/resources to undertake this process. Some

applicants hire legal and scientific experts to file the application on their behalf.

After the preparation of application is completed, applications can be filed and submitted by
a legal practitioner or a registered agent and submitted to the Registrar of Geographical
Indications, Chennai along with a prescribed fee. The application must be in writing in
triplicate in the prescribed format. The application has to be signed by the applicant or his
agent and accompanied by a statement of case.
After the application is submitted, the examiner at the Registrar's office scans the
application and deficiencies have to be corrected by the applicant within one month. The
content of the statement of case is assessed by a consultative group of experts in the area and
an examination report is issued. Post this process, in case of any objection, the Registrar
communicates with the applicant and is given two months to respond or apply for a hearing.
The Registrar may also withdraw an application after the hearing. Every application within
three months of acceptance is published in the Geographical Indications Journal, which is bimonthly and bi-lingual (Hindi and English) statutory publication. The Journals are published
on the Registrar of Geographical Indications website and any person can file a notice of
opposition within three months opposing the GI application published in the journal. At this
stage, the applicant can send a copy of counterstatement which can be accepted or result in
abandoning of the application after a hearing. When an application of GI has been accepted,
the Registrar registers the geographical indication and the applicant is issued a certificate
with the seal of the Geographical Indications Registry.
A registered GI is valid for 10 years and can be renewed on payment of renewal fee. Any
person aggrieved by an order or decision can file an appeal to the intellectual property
appellate board (IPAB) within three months. GI is a public property belonging to the
producers and it cannot be transmitted, assigned or mortgaged. The Appellate Board or the
Registrar of GI has the power to remove the GI or an authorized user from the register
2. Trademark
A trademark is a sign capable of distinguishing the goods or services produced or
provided by one enterprise from those of other enterprises. Any distinctive words, letters,
numerals, drawings, pictures, shapes, colors, logotypes, labels or combinations used to
distinguish goods or services may be considered a trademark. In some countries, advertising
slogans are also considered trademarks and may be registered as such at national trademark
offices. An increasing number of countries also allow for the registration of less traditional
forms of trademarks, such as single colors, three-dimensional signs (shapes of products or

packaging), audible signs (sounds) or olfactory signs (smells). However, many countries have
set limits on what can be registered as a trademark, generally only allowing for signs that are
visually perceptible or that can be represented graphically.
2.1.

Introduction
The main function of a trademark is to enable consumers to identify a product (whether a

good or a service) of a particular company so as to distinguish it from other identical or

similar products provided by competitors. Consumers who are satisfied with a given product
are likely to buy or use the product again in the future. For this, they need to be able to
distinguish easily between identical or similar products. By enabling companies to
differentiate themselves and their products from those of the competition, trademarks play a
pivotal role in the branding and marketing strategies of companies, contributing to the
definition of the image, and reputation of the companys products in the eyes of consumers.
The image and reputation of a company create trust which is the basis for establishing
a loyal clientele and enhancing a company's goodwill. Consumers often develop an emotional
attachment to certain trademarks, based on a set of desired qualities or features embodied in
the products bearing such trademarks. Trademarks also provide an incentive for companies to
invest in maintaining or improving the quality of their products in order to ensure that
products bearing their trademark have a positive reputation.
Without trademark registration, your investments in marketing a product may become
wasteful as rival companies may use the same or a confusingly similar trademark for identical
or similar products. If a competitor adopts a similar or identical trademark, customers could
be misled into buying the competitors product thinking it is your companys product. This
could not only decrease your companys profits and confuse your customers, but may also
damage the reputation and image of your company, particularly if the rival product is of
inferior quality. Given the value of trademarks and the importance that a trademark may have
in determining the success of a product in the marketplace, it is critical to make sure that it is
registered in the relevant market(s).
While selecting a trademark it is helpful to know which categories of signs are usually
not acceptable for registration. Applications for trademark registration are usually rejected on
what are commonly referred to as absolute grounds in the following cases: Generic terms.
For example, if your company intends to register the trademark CHAIR to sell chairs, the

mark would be rejected since chair is the generic term for the product. Descriptive terms.
These are words that are usually used in trade to describe the product in question. For
example, the mark SWEET is likely to be rejected for marketing chocolates as being
descriptive. In fact, it would be considered unfair to give any single chocolate manufacturer
exclusivity over the word sweet for marketing its products. Similarly, qualitative or
laudatory terms such as RAPID, BEST, CLASSIC or INNOVATIVE are likely to give rise to
similar objections unless they are part of an otherwise distinctive mark. In such cases, it may
be necessary to include a disclaimer clarifying that no exclusivity is sought for that particular
part of the mark Deceptive trademarks. These are trademarks that are likely to deceive or
mmislead consumers as to the nature, quality or geographical origin of the product. For
example, marketing margarine under a trademark featuring a COW would probably be
rejected, as it would be considered misleading for consumers, who are likely to associate the
mark with dairy products (i.e. butter). Marks considered to be contrary to public order or
morality. Words and illustrations that are considered to violate commonly-accepted norms of
morality and religion are generally not allowed to be registered as trademarks. Flags, armorial
bearings, official hallmarks and emblems of states and international organizations which have
been communicated to the International Bureau of WIPO are usually excluded from
registration.
Reproduction, counterfeit, copy or imitation of a mark in connection with sale,
distribution or advertising of goods or services with intent to cause confusion or deception. A
trademark holder, who proves continued or intentional use of his mark can get an injunction
on use of the mark and damages, including the infringers profits and legal costs. Trademark
holders can also file a federal civil suit under Section 43(a) of the Lanham Act, which
protects consumers against false or misleading use of words, symbols or devices in commerce
2.2.

Trademark Registration
As a first step, you have to send or hand in a duly completed trademark application form,

which will include the contact details of your company, a graphic illustration of its mark (a
specific format may be required) a description of the goods and services and/or class(es) for
which your business wishes to obtain trademark registration, and pay the required fees. Note
that some trademark offices (e.g. US and Canada) may also require proof of use or a
declaration that your company intends to use the trademark. The relevant trademark office
will give you more precise information concerning the application process.

The steps taken by the trademark office to register a trademark vary from country to
country but, broadly speaking, follow a similar pattern: Formal examination: the trademark
office examines the application to make sure that it complies with the administrative
requirements or formalities (i.e., whether the application fee has been paid and the application
form is properly filled in). Substantive examination: in some countries, the trademark office
also examines the application to verify whether it complies with all the substantive
requirements (e.g., whether it belongs to a category which is excluded from registration by
the trademark law and whether the trademark is in conflict with an existing mark on the
register in the relevant class(es)). Publication and opposition: in many countries, the
trademark is published in a journal with a set period of time for third parties to oppose its
registration. In a number of other countries the trademark is only published once it has been
registered, with a subsequent period for petitions to cancel the registration. Registration: once
it has been decided that there are no grounds for refusal, the trademark is registered, and a
registration certificate is issued which is generally valid for 10 years. Renewal: the mark may
be renewed indefinitely by paying the required renewal fees, but the registration may be
canceled entirely for certain goods or services if the trademark has not been used for a certain
period of time specified in the relevant trademark law. The legal rights arising out of a
trademark registration are normally limited to the territory to which they pertain; so,
ordinarily, valid registration of a trademark in your home country gives you rights only in
your own country unless your mark is considered to be a well-known mark. While the term of
protection may vary, in a large number of countries, registered trademarks are protected for
10 years. Registration may be renewed indefinitely (usually, for consecutive periods of 10
years) provided renewal fees are paid in time. Make sure that someone in your company is
made responsible for ensuring timely renewal of trademark registrations in all countries of
continuing interest to your business.
Once you have registered the trademark of your company in the country where it is
located (home country) there are three main ways to register the trademark in other countries:
The National Route: your business may apply to the trademark office of each country in
which it is seeking protection by filing the corresponding application in the required language
and paying the required fees. As indicated earlier, a country may require you to use the
services of a locally-based trademark agent for this purpose. The Regional Route: if you wish
to apply for protection in countries which are members of a regional trademark system you
may apply for registration, with effect in the territories of all Member countries, by filing an

application at the relevant regional office. The regional trademark offices are: The African
Regional Industrial Property Office The Benelux Trademark Office The Office for the
Harmonization of the Internal Market of the European Union The Organisation Africaine de
la Proprit Intellectuelle. The International Route: If your home country is a member of the
Madrid system and your trademark has been registered or applied for in or with effect in that
country, you may use the Madrid system (administered by WIPO) to register your trademark
in the more than 70 countries that are party to the system.
2.3.
Trademark Types
2.3.1. Service Mark
A service mark is very similar in nature to a trademark. Both are distinctive signs; trademarks
distinguish the goods of one enterprise from those of others, while service marks fulfil the
same function in relation to services. Services may be of any kind, such as financial, banking,
travel, advertising or catering, to name a few. Service marks can be registered, renewed,
cancelled, assigned and licensed under the same conditions as trademarks.
2.3.2. Collective Mark
A collective mark is generally owned by an association or cooperative whose members may
use the collective mark to market their products. The association generally establishes a set of
criteria for using the collective mark (e.g., quality standards) and permits individual
companies to use the mark if they comply with such standards. Collective marks may be an
effective way of jointly marketing the products of a group of enterprises which may find it
more difficult for their individual marks to be recognized by consumers and/or handled by the
main distributors.
2.3.3. Certification marks
Certification marks are given for compliance with defined standards, but are not confined to
any membership. They may be used by anyone whose products meet certain established
standards. In many countries, the main difference between collective marks and certification
marks is that the former may only be used by a specific group of enterprises, e.g., members of
an association, while certification marks may be used by anybody who complies with the
standards defined by the owner of the certification mark

2.3.4. Well-known marks

Well-known marks are marks that are considered to be well-known by the competent
authority of the country where protection for the mark is sought. Well-known marks generally
benefit from stronger protection. For example, well-known marks may be protected even if
they are not registered (or have not even been used) in a given territory. Courtesy: Melinda
Consortium Courtesy: The Woolmark Company In addition, while marks are generally
protected against confusingly similar marks only if used for identical or similar products,
well-known marks are protected against confusingly similar marks for even dissimilar
products, if certain conditions are met. The main purpose of this stronger protection is to
prevent companies from free-riding on the reputation of a wellknown mark and/or causing
damage to its reputation or goodwill.
2.4.

Internet Domain Name

The use of trademarks on the Internet has raised a number of controversial legal problems

with no easy or uniform solution. One important problem stems from the fact that trademark
rights are territorial (that is, they are only protected in the country or region where the mark
has been registered or used), whereas the reach of the Internet is global. This creates
problems when it comes to settling disputes between persons or companies legitimately
owning identical or confusingly similar trademarks for identical or similar goods or services
in different countries. Legislation in this area is still developing and treatment may differ
from one country to another. NUTELLA courtesy of Ferrero S.p.A. What is a domain name
and how does it relate to trademarks? An important problem concerns the conflict between
trademarks and domain names. Domain names are Internet addresses, and are commonly
used to find websites. For example, the domain name wipo.int is used to locate the WIPO
website at www.wipo.int. Over time, domain names have come to constitute business
identifiers thus often coming into conflict with trademarks. Often national laws, or courts,
treat the registration of the trademark of another company or person as a domain name as
trademark infringement, popularly known as cybersquatting. If this happens, then, your
business may not only have to transfer or cancel the domain name, but it may also have to
pay damages or a heavy fine. Therefore, it is important that you choose a domain name which
is not the trademark of another company, particularly a well-known trademark.