India

Inde
Indien

Report Q191

in the name of the Indian Group

by Tehemtan N. DARUWALLA and Manoj MENDA

Relationship between trademarks and geographical indications

India did not have any specific law governing geographical indications of goods to protect the
interests of the producers of such goods. Under the Agreement on Trade Related Aspects of
Intellectual Property Rights (TRIPS), unless a geographical indication is protected in the country of its
origin, there is no obligation for other countries to extend reciprocal protection.
Accordingly, Parliament made a comprehensive separate legislation, viz. Geographical Indications
of Goods (Registration and Protection) Act, 1999, hereinafter referred to as the GI Act for
registration and for providing adequate protection for GIs. The law relating to GIs is being
administered by a separate GI Registry established in Chennai (Madras).
The GI Act, 1999 came into force on 15th September 2003.
It is a new Legislation. There is no reported case law on the GI Act.
The first GI registered in India on 29th October, 2004 was Darjeeling (word) for tea in Class30.
The total GIs registered in India till 30th January, 2006 is 27 in number.
The definition of a GI as per the GI Act is given in Section 2(1) (e) as follows:
geographical indication, in relation to goods, means an indication
which identifies such goods as agricultural goods, natural goods or manu
factured goods as originating, or manufactured in the territory of 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.
The generic use of GI shows that a product originates from a particular region. The example of
Scotch Whisky is well known all over the world. The primary obligation is that all WTO members
must provide means for interested parties to prevent use which mislead the public on geographical
origin of goods. The second obligation is that the use should not amount to unfair competition.
Article 23 of TRIPS provides for additional protection of GIs for wines and spirits. It is a legiti
mate grievance of several nations that there are no valid or cogent reasons why the additional
protection for GIs should only be restricted to wines and spirits. This grievance was raised when this
question was debated in the AIPPI Congress in Rio de Janeiro. There is no reason why additional
protection should not be given in TRIPS for other type of goods, for example, for Norwegian
Sardines when one come across instances such as Norwegian Sardines made in Alaska or
Basmati rice made in Texas, or Darjeeling tea made in Ceylon or Darjeeling tea made in
Kenya. Recently the Tea Board, India have come across Divine Darjeeling applied for Tea, coffee &
cocoa made in Japan! Will this never end?

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It is submitted that some geographical names have by common usage, been accepted as being
devoid of geographical significance and have become mere trade descriptions. Such GIs cannot
be registered as trade marks even on evidence of distinctiveness. Illustrations of such words are
given below:
Roman candles; Plaster of Paris; Portland Cement; India Rubber; Chinese Lanterns; Amritsar
Shawls; French Polish; Turkish Towels; Eau de Cologne.
These GIs have become generic names or indications and have lost its original meaning and have
become common name of such goods and serves as a designation for or indication of the kind,
nature, type or other property or characteristic of the goods. Such GIs or words are prohibited from
registration under the GI Act. See S. 9(f) read with Explanations 1 & 2.

Questions

I) Analysis of current legislation and case law

1) Do your countrys laws have enactments or systems dealing specifically with GIs, e.g. a
registration system for GIs? If so, what are the criteria of registrability? To which national
authority must an application for protection be made? Does the applicant have the right to
appeal against the refusal of the national authority to register a GI? If so, to which entity?
See remarks on Introduction. The provisions relating to the registration and conditions for
registration are given in Chapter II of the GI Act, 1999. Section 3 of the GI Act provides for
the appointment of a Registrar of GIs and other subordinate officers. The Controller General
of Patents, Designs and Trade Marks appointed under S. 3(1) of the Trade Marks Act, 1999
shall be the Registrar of GIs, who will be assisted by necessary additional officers and staff in
the work relating to administration of this new legislation. Application for protection by way
of registration should be made to the Registrar of GIs.
Section 7 provides that the Register of GI should be divided into two parts namely, Part A
(containing particulars relating to the registration of GI) and Part B (containing particulars
relating to the registration of authorized users).
Section 8 provides that a GI can be registered in respect of any or all the goods comprised
in a prescribed class of goods and in respect of a definite territory of a country or a region
or locality in that territory as the case may be. It is also provided that the classification shall,
as far as possible, conform to the International Classification of Goods. Any question as to the
class within which any goods fall or the definite area in respect of which the GI is to be
registered shall be determined by the Registrar whose decision in the matter shall be final.
Goods as defined in Section 2(1)(f) means any agricultural, natural or manufactured
goods or any goods of handicraft or of industry and includes food stuff.
Section 9 prohibits the registration of certain GIs:
a) the use of which is likely to deceive or cause confusion. This clause is framed to cover a
wide range of acts which are likely to cause confusion or deception. (It is submitted that
it may not be prudent to limit such likelihood of confusion or deception occurring only by
means of visual or phonetic test ); or
b) the use of which would be contrary to any law for the time being in force; or
c) which comprises or contains scandalous or obscene matter; or
d) which comprises or contains any matter likely to hurt the religious feelings of any class or
section of citizens of India; or
e) which would otherwise be disentitled to protection in a court; or

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 f) which are determined to be generic names or indications of goods and are, therefore,
not or ceased to be protected in their country of origin or which have fallen into disuse in
that country; or
g) which, although literally true as to the territory, region or locality in which the goods
originate, but falsely represent to the persons that the goods originate in another territory,
region or locality, as the case may be.
Explanation 1 to S.9 states as to what is meant by the expression generic names or indications
in relation to goods under subsection (f) of S. 9:
Expln. 1: For the purposes of this section, generic names or indications, in relation to
goods, means the name of a goods which, although relates to the place or
the region where the goods was originally produced or manufactured, has
lost its original meaning and has become the common name of such goods
and serves as a designation for or indication of the kind, nature, type or other
property or characteristic of the goods.
Expln. 2: In determining whether the name has become generic, account shall be taken
of all factors including the existing situation in the region or place in which
the name originates and the area of consumption of the goods.
Section 10 provides for the registration of homonymous GIs. The word homonymous
comes from the word homonym which means the word of same spelling or sound of another
but of different meaning. Such homonymous GI may be registered if the Registrar is satisfied
after considering the practical conditions under which the homonymous indications in
question shall be differentiated from other homonymous indications and need to ensure
equitable treatment of the producers concerned and the consumers are not misled.
Chapter III containing sections 11 to 19 provides the procedure for and duration of
registration of GIs. Any association of persons or producers or any organisation or authority,
established by or under the law, representing interest of producers of the concerned goods
can apply to the Registrar for the registration of GI, in writing in such manner and form and
accompanied by such fees prescribed for registration of the GI.
Thus an Application for registration of GI can only be made by an association of persons or
producers or any organisation or authority established by or under the law representing the
interests of the producers of the concerned goods, and not by a single individual. Every
Application shall be filed in the office of the GI Registry within whose territorial limits, the
territory of GI is situated.
Section 31(1) provides that any person aggrieved by an order or decision of the Registrar
may prefer an appeal to the Appellate Board within three months from the date on which the
order or decision sought to be appealed against is communicated to such person preferring the
appeal.
[Appellate Board has been established under Section 83 of the Trade Marks Act, 1999]

2) What is the status of a GI in your country? Does the registration of a GI confer a property
right? Who would be the rightholder of a GI? Can GIs be the subject of dealings such as
assignment, mortgage and licensing?
Status: The Indian law extends protection of GIs used for goods as defined in Section
2(1)(f) of the GI Act. It would, therefore cover agricultural products, handicrafts such as toys
& dolls, handloom fabrics, Sarees, Agarbattis, Soaps, Tea, Rice, Traditional paintings, and
the like. Use of GI may be more predominant in respect of agricultural products, where such
products typically have qualities attributable to the specific geographical area, influenced by
factors such as climate, soil, water e.g., Darjeeling tea, Coorg Orange.

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Certain geographical locality or region may also develop specific qualities of a product, due
to human factors found in the place of origin of the products, such as specific manufacturing
skills and traditions e.g. Chanderi Saree, Kullu Shawl.
The GI Act permits the registration of geographical names if it satisfies certain conditions and
enables such names to be protected by an action for infringement. Benefits are conferred by
registration. The apex bodies dealing with particular goods, like the Coffee Board, Tea
Board, Spices Board which look after the interests of the producers of such goods as also the
trade concerned, would have to initiate the filing of application and registration of the GI.
Registration gives statutory right and better protection to the GI, and would enable the
proprietor to obtain relief in respect of infringement of GI as provided in the Act.
Where the proprietor has already filed an action for passing off in exercise of his common
law right before registration of the GI, then by reason of registration of the GI during the
pendency of the suit, the proprietor would be able to enlarge the scope of the suit to include
an action for infringement of the GI registered.
Section 21 Rights conferred by registration:
1) Subject to the other provisions the GI Act, the registration of a GI shall, if valid, give
a) to the registered proprietor of the GI and the authorized user or users thereof to obtain
relief in respect of infringement of the GI in the manner provided by the GI Act;
b) to the authorized user thereof the exclusive right to the use of the GI in relation to the
goods in respect of which the GI is registered.
2) The exclusive right to the use of a GI given under section b) of subsection 1) shall be
subject to any condition and limitation to which the registration is subject.
3) Where two or more persons are authorized users of GIs, which are identical with or
nearly resemble each other, the exclusive right to the use of any of those GIs 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 GIs, 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.
Assignment, Mortgage, Licensing: A GI is in the nature of public property belonging
to the producers of the concerned goods. The GIs do not grant a single holder the right to
benefit from the protection but rather limit the protection to a specific area. It shall not be the
subject matter of assignment, transmission, licensing, pledge, mortgage or such other agree
ments. However, on the death of an authorized user his right shall devolve on his successor
intitle. (Section 24).
The right in respect of GI is an intellectual property right and is protected in the same manner
as right in a trade mark. The principles laid down in a passing off action based on a right in
a trade mark would be equally applicable in protecting an action based on a right in a GI.
The GI is registrable under Section 11 only by any association of persons or producers or any
organisation or authority representing the interest of the producers of the concerned goods.
Having regard to the nature of the IPR in GI being vested in a collective body, representing
the commonality of interests, as distinguished from a right in a trade mark, patent or copyright
etc. where the right could be private and individual right, the GI Act explicitly forbids and
disables the registered proprietor to assign, transmit, pledge, mortgage or do any such act to
alienate the right in the common property.

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3) Is the application for or registration of a GI made public in your country? Is it possible to
oppose such application or registration or cancel such registration of a GI? If so, by whom
and on what (absolute or relative) grounds (e.g. generic or descriptive term or prior
trademark)?
Yes. Section 13 of the GI Act, 1999 provides for the advertisement of the Application in
the Geographical Indications Journal. When an Application for registration of a GI has been
accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as
soon as may be after acceptance, cause the Application as accepted together with the
condition or limitations, if any, subject to which it has been accepted to be advertised in such
manner as may be prescribed. Where there is any error or amendment in the Application
after the advertisement, the Registrar may in his discretion cause the application to be
advertised again or notify in the prescribed manner the correction made in the application.
In addition to advertisement in the Journal, the Registrar may put the published GI on the Internet,
Website or other electronic media. The Journal may be made available on CDRom for sale.
Opposition to registration: S. 14 of the GI Act provides that any person may, within
three months from the date of advertisement or readvertisement of an application for
registration or within such further period, not exceeding one month in the aggregate, file a
notice of opposition in writing to the Registrar. The Registrar shall serve a copy of the notice
so received on the applicant and if within two months from the receipt by the applicant does
not file a counter statement of the grounds on which he relies in support of the application, the
application shall be deemed to have been abandoned. If the applicant sends a counter
statement, the Registrar shall serve a copy of it on the person giving notice of opposition.
Thereafter, the Registrar would dispose of the matter providing an opportunity of hearing to
the parties and considering the materials on record and evidences.
Who may oppose? According to the Act, any person can oppose an application for
registration, whether he has or he has not a personal interest in the matter. The law in this respect
is to be distinguished from proceedings in respect of rectification of register and cancellation of
registration, where an application can be filed in the prescribed manner only by any aggrieved
person. No such requirement exists in the case of opposition. Similar provision exists in the
Trade Marks Act, 1999.
Grounds of Opposition: Neither the Act nor the Rules prescribe explicitly as to the
grounds on which the registration of a GI may be opposed. It would seem, therefore, that the
Opponent may take any ground which would prohibit the registration for example, under any
of the provisions contained in Section 9 or that the Application does not fulfill the general
requirements of the Act or the Rule 32 of the Geographical Indications of Goods (Registration
and Protection) Rules, 2002 (provisions relating to the contents of Application).

4) Must use requirements be satisfied in order to maintain GI protection? If so, is there any
definition of what constitutes use? Are the legal rules established for appraising the
maintenance of a trademark registration applicable to the appraising of the maintenance of
GI protection?
There is no provision as to the use requirements to be satisfied in order to maintain GI
protection (e.g., such as removal of GI from Register on account of nonuse)
Sec. 2 (3) of the Act provides for the definition of use which is as follows:
In the GI Act (unless the context otherwise requires), any reference to:
a) the use of a GI shall be construed as reference to the use of a printed or other visual
representation of the GI
b) the use of a GI in relation to goods, shall be construed as reference to the use of the GI
upon, or any physical or any other relation whatsoever to such goods.

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 Rules have been framed [Geographical Indications of Goods (Registration & Protection) Rules,
2002] for appraising the maintenance of GI protection they are almost along the same lines
as those under the Trade Marks Rules, 2002. The legal Rules established for appraising the
maintenance of trade mark registration would be applicable for appraising the maintenance
of GI protection.

5) What is the scope of protection of a GI? Is it only protected against use of the name or also
against use of elements of the specification of the GI (e.g. slicing, grating) or any other
practice liable to mislead the public as to the origin of the product (e.g. use of same trade
dress)? Are the legal rules established for determining the scope of trademark protection
applicable to determining the scope of GI protection (e.g. in relation to reputed or
wellknown GIs, likelihood of confusion, infringing and noninfringing acts)? May rights in a
GI be enforced even where a product which allegedly infringes those rights has been made
purely for export?
The Indian law extends protection of GIs used for goods as defined in Section 2(1)(f) of the
GI Act. It would, therefore cover agricultural products, handicrafts such as toys & dolls,
handloom fabrics, Sarees, Agarbattis, Soaps, Tea, Rice, Traditional paintings, and the like.
Use of GI may be more predominant in respect of agricultural products, where such products
typically have qualities attributable to the specific geographical area, influenced by factors
such as climate, soil, water e.g., Darjeeling tea, Coorg Orange.
S.22 Infringement of registered GI
22(1) A registered GI is infringed by a person who, not being an authorized user thereof
a) uses such GI 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
b) uses any GI in such manner which constitutes an act of unfair competition including
passing off in respect of registered GI.
There are two Explanations to clause b) which read as follows:
Expln. 1: For the purposes of this clause, act of unfair competition means any act
of competition contrary to honest practices in industrial or commercial
matters.
Expln. 2: For the removal of doubts, it is hereby clarified that the following acts
shall be deemed to be acts of unfair competition namely:
i) all acts of such a nature as to create confusion by any means whatsoever with the
establishment, the goods or the industrial or commercial activities, of a competitor;
ii) false allegations in the course of trade of such a nature as to discredit the establish
ment, the goods or the industrial or commercial activities, of a competitor;
iii) GIs, the use of which in the course of trade is liable to mislead the persons as to the
nature, the manufacturing process, the characteristics, the suitability for their purpose,
or the quantity of the goods;
c) uses another GI to the goods which although literally true as to the territory, region or
locality in which the goods originate, falsely represents to the persons that the goods
originate in the territory, region or locality in respect of which such registered GI relates.
The GI protection is available against use of the names as well as against use of the
elements of the specification of goods or any other practice liable to mislead the public
as to the origin of the product.

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 Subsection (2) of S. 22 also provides that the Central Government may by notification in the
Official Gazette provide for additional protection for certain goods which are notified. It
further provides that once a GI is lawfully acquired further dealing in such goods shall not
constitute infringement unless the goods are impaired after they have been put in the market.
It is submitted that the rights in GI can be enforced even where a product which allegedly
infringes those rights has been made purely for exports.

6) Can a GI be registered as individual trademark? If so, under what conditions?

Yes. A GI can be registered as an individual trade mark but only if it meets with the criteria
laid down under the Trade Marks Act, 1999.
Furthermore, Section 25 of the GI Act sets out the criteria and circumstances in which
registration of a GI as a trade mark is prohibited. The Registrar of Trade Marks shall suo moto
or at the request of an interested party, refuse or invalidate the registration of a trade mark
which contains or consists of a GI with respect to the goods or class or classes of goods not
originating in the territory of a country or a region or locality in that territory which such GI
indicates, if use of such GIs in the trade mark for such goods, is of such a nature as to confuse
or mislead the persons as to the true place of origin of such goods or class or classes of goods
or which contains or consists of a GI identifying goods or class/classes of goods notified u/s.
22(2).
Section 26, however, protects a trademark which contains or consists of a GI which has
been applied for or registered in good faith under the law of trademarks for the time being in
force or where such trade marks have been used in good faith before the commencement of
the GI Act or before the date of filing of an application for registration of a GI. It also provides
that the GI Act shall not apply to GIs with respect to goods or class of goods which have
become the common name of such goods in India on or before 1st January, 1995 (date on
which the TRIPS Agreement came into force). It protects the right of any person to use his name
or the name of his predecessor in business except where such name is liable to cause
confusion or mislead the public. It further provides that no action in connection with the use of
registration of a trade mark shall be taken after five years from the date from which such use
or registration which infringes any GI registered under the GI Act has become known to the
registered proprietor or the authorized user.

7) Do your countrys laws provide for collective or certification marks? If so, under what
conditions can a GI be registered as a collective mark or a certification mark?
Yes. India provides for the registration of collective or certification marks. This is under the
Trade Marks Act, 1999.
A collective mark as defined under Section 2(1)(g) of the Trade Marks Act, 1999,
means a trade mark distinguishing the goods or services of members of an association of
persons [not being a partnership within the meaning of the Indian Partnership Act, 1932 (9
of 1932)] which is the proprietor of the mark from those of others.
A certification trade mark as defined under Section 2(1)(e) of the Trade Marks
Act, 1999, means a mark capable of distinguishing the goods or services in connection with
which it is used in the course of trade which are certified by the proprietor of the mark in
respect of origin, material, mode of manufacture of goods or performance of services, quality,
accuracy or other characteristics from goods or services not so certified and registrable as
such under Chapter IX in respect of those goods or services in the name, as proprietor of the
certification trade mark, of that person.
The certification trade mark is not owned by an association or group of producers or persons
as in the case of a collective mark, but owned by a certifying agency or authority, which does
not itself trade in those goods. e.g. I.S.I., AGMARK, WOOLMARK.

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 A GI can be registered as a Collective mark or a Certification trade mark only if it meets the
criteria prescribed under the Trade Marks Act, 1999 as mentioned in Answer to Q.6. A GI
identifies the particular goods as originating in a certain country, region or locality, where a
given quality, reputation or other characteristics of the goods is essentially attributable to its
geographical origin comprising natural environment and human factors. The Tea Board, India
has registered the Darjeeling Logo and also the word Darjeeling as Certification trade marks
under the Trade & Merchandise Marks Act, 1958 in India. The Tea Board, India has also
obtained registration of these two marks as Certification Trade Marks in U.S.A., Canada, Japan,
Egypt & U.K.

8) Does inclusion of a protected GI as part of a trademark qualify as legal bar to the registration
of such trademark?
Yes. Inclusion of a protected GI as a part of a trade mark qualifies as legal bar to the
registration of such mark as per S.9 of the Trade Marks Act, 1999 which provides for the
absolute grounds for refusal of registration of a trade mark.
S. 9(1)(b) implies that the trade marks which consist exclusively of marks or indications which
may serve in trade to designate the kind, quality, quantity, intended purpose, values,
geographical origin or the time of production of the goods or rendering of the service or other
characteristics of the goods or service shall not be registered. It also provides that a trade mark
shall not be refused registration if before the date of application for registration it has acquired
a distinctive character as a result of the use made of it or is a wellknown trade mark.
Section 25 of the GI Act provides for prohibition of registration of GI as a Trade Mark.
Section 26 of the GI Act however, provides protection to certain trade marks.

9) Do your countrys laws, e.g. trade or merchandise legislation, require the application of
correct designations of origin/source on agricultural products and foodstuffs?
Yes. The Notification under Section 117 of the Trade & Merchandise Marks Act, 1958 issued
by the Central Government requires the goods to show the Indications of Origin. The Trade
Marks Act, 1999 and the GI Act makes it an offence to apply false trade descriptions or GIs
respectively to the goods. The GI Act also empowers the Central Govt. to require by a
notification in the Official Gazette the application of correct designation of origin or source
on goods. S. 39 of the GI Act provides penalty for applying false GI. Whereas S. 40 provides
penalty for selling goods to which false GI is applied.

10) How are conflicts between trademarks and GIs resolved under your countrys laws? Do they
coexist or does either the trademark or GI prevail? Is there a rule for determining whether the
trademark or GI should prevail, and what are the criteria to take into account (e.g. the first
in time, first in rightrule, the reputation of the geographic region or the reputation of the
trademark, the length of time that the name has been used to indicate the geographic region
and the extent of such usage, the length of time that the trademark has been used and the
extent of such usage)?
As to what amounts to infringement of a registered GI is covered in the answer to Question
5. In answer to Question 6 above the circumstances in which registration of a GI as a trade
mark is prohibited are set out. S. 25 categorically states that notwithstanding anything
contained in the Trade Marks Act, 1999 the Registrar of Trade Marks shall suo moto or at the
request of an interested party refuse or invalidate the registration of a trade mark which
a) contains or consists of a GI with respect to goods or class or classes of goods not originating
in the territory of a country, or a region or locality in that territory which such GI indicates,
if use of such GI in the trade mark for such goods, is of such a nature as to confuse or
mislead the persons as to the true place of origin of such goods or class or classes of goods;

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b) contains or consists of a GI identifying goods or class or classes of goods notified under
subsection (2) of S. 22 by the Central Government.
S.26 to some extent could be said to deal with coexistence of a trade mark and GI. As
mentioned in answer to Question 6, S. 26 of the Gi Act gives protection to certain trade marks
which contains or consists of a GI and has been applied for or registered in good faith under
the law relating to trade marks, or where rights to such trade marks have been acquired
through use in good faith. S. 26 of the GI Act reads as follows:
S. 26 Protection of certain trade marks:
1) where a trade mark contains or consists of a GI and has been applied for or registered
in good faith under the law relating to trade marks for the time being in force, or where
rights to such trade mark have been acquired through use in good faith either
a) before the commencement of this Act; or
b) before the date of filing the application for registration of such GI under the GI Act,
nothing contained in this Act shall prejudice the registrability or the validity of the
registration of such trade mark under the law relating to the trade marks for the time
being in force, or the right to use such trade mark, on the ground that such trade
mark is identical with or similar to such GI.
2) Nothing contained in this Act shall apply in respect of a GI with respect to goods or class
or classes of goods for which such GI is identical with the term customary in common
languages as the common name of such goods in any part of India on or before the 1st
day of January, 1995.
3) Nothing contained in this Act shall in any way prejudice the right of any person to use,in
the course of trade, that persons name or the name of that persons predecessor in
business, except where such name is used in such a manner as to confuse or mislead the
people.
4) Notwithstanding anything contained in the Trade Marks Act, 1999 or in the GI Act no
action in connection with the use or registration of a trade mark shall be taken after the
expiry of five years from the date on which such use or registration infringes any GI
registered under the GI Act has become known to the registered proprietor or authorized
user registered in respect of such GI under the GI Act or after the date of registration of
the trade mark under the said Trade Marks Act subject to the condition that the trade mark
has been published under the provisions of the said Trade Marks Act, 1999 or the rules
made thereunder by that date, if such date is earlier than the date on which such
infringement became known to such proprietor or authorized user and such GI is not used
or registered in bad faith. The theory of Exhaustion of GI rights if it can be called so is
set out in Subsection 4 of S. 22 which reads as follows:
S.22(4) Notwithstanding anything contained in this section, where the goods in respect of
which a GI has been registered are lawfully acquired by a person other than the authorized
user of such GI, further dealings in those goods by such person including processing or
packaging, shall not constitute an infringement of such GI, except where the condition of
goods is impaired after they have been put in the market.
Attention is invited to S. 30 of the Trade Marks Act, 1999 which sets out the limits on effect
of registered trade mark. Subsection 2(a) of the said S. 30 of the Trade Marks Act, 1999
states that a registered trade mark is not infringed where the use in relation to goods or
services indicates the kind, quality, intended purposes, value, geographical origin, the time of
production of goods or of rendering of services or other characteristics of goods or services;

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 Subsection (1) of S. 26 of the GI Act clearly protects certain trade marks. S. 26(1) reads as
follows:
S. 26(1) where a trade mark contains or consists of a GI and has been applied for or
registered in good faith under the law relating to trade marks for the time being in force, or
where rights to such trade mark have been acquired through use in good faith either
a) before the commencement of this Act; or
b) before the date of filing the application for registration of such GI under the GI Act,
nothing contained in this Act shall prejudice the registrability or the validity of the registration of
such trade mark under the law relating to the trade marks for the time being in force, or the right
to use such trade mark, on the ground that such trade mark is identical with or similar to such GI.
Subsection (1) of S. 26 is along the lines of article 24.5 of TRIPS which provides that
Where a trade mark has been applied for or registered in good faith or where rights to such
trade mark have been acquired through use in good faith either
a) before the date of application of these provisions in that Member as defined in Part VI; or
b) before the GI is protected in its country of origin;
measures adopted to implement this section shall not eligibility for or the validity of the
registration of the trade mark, or the right to use a trade mark is identical with, similar to, a GI.
These legal provisions suggest that a subsequent GI cannot trump a prior trade mark which
has been registered in good faith under the law of trade marks or where rights to such trade
marks have been acquired through use in good faith even though such trade mark is identical
with or similar to such GI under the GI Act.

II) Proposals for adoption of uniform rules

The Groups are invited to put forward any proposals for adoption of uniform rules regarding
the relationship between trademarks and GIs. More specifically, the Groups are invited to
respond to the following questions:
11) Should countries provide for registration systems dealing specifically with GIs? If so, what
should the key features of such system be? Should a multilateral system of registration of GIs
be established? If so, what should the key features of such multilateral system be? Specifically,
which international body should be tasked with establishing such system? How should the
application for or registration of a GI be notified/made public (either in your country or at a
multilateral level) in order to avoid that a trademark may conflict with a GI previously
unknown to the trademark owner?
Yes, countries should provide for registration systems dealing specifically with GIs. This has
been done in India by enacting the Geographical Indications of Goods (Registration &
Protection) Act, 1999.
The key features of the registration system should be as follows:
1) Compulsory advertisement of all accepted GI applications and for inviting objections;
2) Clear cut provisions as to prohibition of registration of certain GIs;
3) Prohibition of registration of GI as a trade mark;
4) Renewal, rectification, and restoration of GIs;
5) Provision for appeal against the Registrars decision;
6) Proper maintenance of the Register of GIs;
7) Provision as to what constitutes infringement of GIs and offences relating to GIs.

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 The application for or registration of a GI should be published in a Geographical Indications
Journal so that any person can oppose/file Opposition Proceedings prior to registration.
It would be advisable if a reputed body like WIPO is tasked with establishing the system of
registration dealing specifically with GIs.

12) Do you have any suggestions as to the acquisition, maintenance, scope and enforcement of
GI protection? What should the scope of protection of a GI be? Should the legal rules
established for appraising the acquisition, maintenance, scope and enforcement of trademark
protection apply to the appraising of the acquisition, maintenance, scope and enforcement of
GI protection?
Yes, indeed. The acquisition, maintenance and scope of enforcement of GI protection has
been adequately provided for by the GI Act in India. Rules and principles which are applied
in respect trade marks, certification marks and collective marks could be usefully applied in
respect of acquisition, maintenance and scope of enforcement of GI protection.

13) Should a protection of GIs by individual and/or collective or certification marks be possible?
Yes. GIs can be protected as individual trade marks or collective marks or certification marks.
Please also refer to the criteria and observations made in answers to Question No.6 & 7.

14) How should conflicts between trademarks and GIs be resolved? Please propose a specific rule
for determining whether trademark or GI should prevail, which is likely to be broadly
accepted. If coexistence is contemplated, should such coexistence be limited to the country
of origin or relate to the relevant markets?
When conflict arises between trademark and GI, consideration can be given to the fact that
which of the two has priority over the other. The conflict between a GI and a trade mark can
be resolved by using the first in time first in right principle. At the same time it is submitted
that the first in time first in right need not be the sole basis in deciding or resolving such
conflicts. This principle should be determined according to the jurisdiction or territory where
the dispute actually takes place. Also a trade mark and a GI can coexist within a specific
jurisdiction, possibly with an obligation to add clarifying information to be used in connection
with the trade mark (e.g., by way of a disclaimer )..
Administrative and judicial bodies such as Courts of law which decides trade mark disputes
can decide conflicts between trade marks & GIs.
It may not be feasible to propose a specific rule for determining whether trade mark or GI
should prevail. Each case must be decided on its own facts and circumstances.
There can be coexistence between a GI and a trade mark but it should preferably limited to
the country of origin.

Summary

India did not have any specific law governing Geographical Indications of goods. However, in
view of TRIPS the Geographical Indications of Goods (Registration & Protection) Act, 1999 was
passed and came into force on 15th September, 2003. It is a new legislation. There are no reported
case laws on the GI Act.
The total number of GIs registered in India till 30th January, 2006 is 27 and is mainly in respect of
agricultural and manufactured goods. The definition of Geographical Indications is given under
the GI Act. Some geographical names have by common usage been accepted as being devoid of
geographical significance and have become mere trade descriptions. Such GIs cannot be
registered as trade marks even on evidence of distinctiveness. The GI Act provides for registration

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and conditions for registration. Criteria for registrability is brought out in Section 9 of the Act. The
procedure for registration and duration of registrations and the persons who can apply to the
Registrar for registration of GI, are provided for under the Act. Section 10 of the GI Act provides
for registration of homonymous GIs. Application for registration of GI can only be made by an
association of persons or producers or any organization or authority established by or under the
law representing the interests of the producers of the concerned goods, and not by a single
individual. Any person aggrieved by an order or decision of the Registrar, can prefer an appeal to
the Appellate Board.
Registration gives statutory right and better protection to the GI, and would enable the proprietor to
obtain reliefs in respect of infringement of GI, as provided for in the GI Act.
Section 21 confers rights of registration of GI to the registered proprietor and the authorised user to
obtain relief in respect of infringement of the GI and it also gives to the authorised user the exclusive
right to the use of the GI in relation to the goods in respect of which the GI is registered.
GI is public property belonging to the producers of the concerned goods. GIs do not grant a single
holder the right to benefit from protection but rather limit the protection to a specific area. GI shall
not be the subject matter of assignment, transmission, licensing, pledge, mortgage or such other
agreements. However, on the death of an authorised user, his right in the registered GI shall devolve
on his successor in title under the law for the time being in force.
Section 13 of the GI Act, provides for the advertisement of the application in the Geographical
Indications Journal. Provision for opposition to registration and the persons who can oppose and
the grounds of opposition are set out in the GI Act. There is no provision as to use requirement
which has to be satisfied in order to main GI protection.
Infringement of a registered GI by a person, who, not being an authorized user thereof under
Section 22 of the GI Act which is discussed in answer to Question no. 5.
A GI can be registered as an individual trade mark, collective mark or certification trade mark, if it
meets with criteria laid down under the Trade Marks Act, 1999.
Section 25 of the GI Act sets out criteria and circumstances in which registration of GI as a trade
mark is prohibited. Section 26 however, protects a trademark which contains or consists of a GI
which has been applied for or registered in good faith under the Trade Mark law or where such
trade marks have been used in good faith before the commencement of the GI Act or before the
date of filing of an application for registration of GI.
Inclusion of a protected GI as a part of trade mark qualifies as a legal bar to the registration of such
mark as per S. 9 of the Trade Marks Act, 1999 which provides for the absolute grounds for refusal
of registration of a trade mark. Indias laws provide for correct designation of origin or source on
agricultural products and food stuffs.
It is submitted that countries should provide for registration systems dealing specifically with GIs.
The suggestions are incorporated in the answer to the proposal for adoption of uniform rules.

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