An Exploration of the Laws and Systems for the Protection ...docs.manupatra.in/newsline/articles/Upload/87888F... · 5 Teshager Dagne, Law and Policy on Intellectual Property, Traditional

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Manupatra Intellectual Property Reports v January 2016 125

An Exploration of the Laws and Systems forthe Protection of Geographical Indicationsin USA, China and India: A Comparative

Analysis

Dr. Faizanur Rahman *

Intellectual property protection that each country allows is directly related to itslevel of development. The extent to which intellectual property protection isoffered in a country is directly proportional to its technological and economicdevelopment. Protection of geographical indications has become front-page newsin the present scenario because of their economic value. The protection that isoffered is not for some invention but is to the reputation associated with a qualityattribute linked to a geographical area. Each country has set out its own standardsfor the protection and registration of Geographical Indications (GIs).

No doubt there is Trade Related Aspects of Intellectual Property Rights (TRIPS)Agreement to deal with the protection of IPRs universally which though appearswell defined, in case of GIs, it is often the cause of differences in regulationsbetween countries. Even after the broad guideline given by the TRIPS Agreementwith respect to GIs in Article 22, across the globe, each country has taken adifferent approach to geographical indication regulation. Countries have generallychosen between two systems of jurisprudence for the protection of GIs, namely,the Common Law system and the Civil Law. Most of the countries have enactedsui generis legislations for the protection of geographical indications after theestablishment of the World Trade Organization (WTO).

This paper critically examines the system and practice of protection granted inrespect of Geographical Indications in United States of America, China and India.

1. Concept and Ideals Implicit inGeographical Indications

GIs designate products that originatefrom a particular region or country andhave a unique character due to theirparticular qualities and productionmethods. A GI is considered a publicright, owned by the state or a collectivistic

entity, with the government being incharge of registering and administeringit. Geographical Indications stand at theintersection of three hotly debated issuesin International Law: InternationalTrade, Intellectual Property andAgricultural Policy.

* Assistant Professor, Law, Jamia Millia Islamia. The author can be contacted [email protected]

Published in Articles section of www.manupatra.com

Manupatra Intellectual Property Reports (MIPR)F-2 [Vol. 1

Manupatra Intellectual Property Reports v January 2016126

International Registration. Article 2 (1)of this Agreement states that:3

The ‘appellation of origin’ means ‘thegeographical denomination of acountry, region, or locality, whichserves to designate a productoriginating therein, the quality orcharacteristics of which are dueexclusively or essentially to thegeographical environment, includingnatural and human factors’.

The Lisbon Agreement also defines“Country of Origin” as:4

The country whose name or thecountry in which is situated the regionor locality whose name constitutes theappellation of origin which has giventhe good its reputation for the qualityand characteristic.

According to these definitions, an AOshould always be a name whichdesignates a country, region or locality.Also, it is fundamental that a goodbearing the name exhibits quality andcharacteristics attributable to thedesignated area of geographical origin.Thus, an AO designates a given qualityand characteristic of a good originatingfrom a certain geographical origin, asexemplified by goods such as DarjeelingTea, produced in the hilly regions of theDarjeeling district of West Bengal andknown for its unique taste, texture andqualities.

Because of the diverse ways in which theprotection of Geographical Indicationsevolved, there was no universallyaccepted terminology. Although they arepart of one of the oldest intellectualproperty regimes, there is difference inopinion regarding the meaning of theirnature. GIs are closely interrelated with

It is fundamental that agood bearing the name

exhibits quality andcharacteristics attributable

to the designated area ofgeographical origin

and seemingly identical to two othervarieties of intellectual propertyrecognized in the earliest internationaltreaties: “appellations of origin” (AO)and “indications of source”. These aresupplemented by the EuropeanCommunity’s two kinds of agri-food GIs:1

Protected Designations of Origin (PDO)and Protected Geographical Indications(PGI).2The first international legaldefinition of an appellation of origin wasspecified in 1958, in the LisbonAgreement for the Protection ofAppellations of Origin and their

1 From 1st August, 2009, the GI protection in the wine sector within the EC will be parallel tothe agri-food field, also applying the terms (protected) designations of origin (PDO) and(protected) geographical indications (PGI)

2 See Article 2(1) of Council Regulation (EC) No 510/2006 on the Protection of GeographicalIndications and Designations of Origin for Agricultural Products and Foodstuffs, OJEU (L93/12)(2006)

3 Lisbon Agreement for the Protection of Appellations of Origin and their InternationalRegistration of 31th October, 1958, as revised at Stockholm on 14 th July ,1967, and asamended on 28th September, 1979, Article 2.1,available at: http://www.wipo.int/lisbon/en/legal_texts/lisbon_agreement.html (Visited in January, 2016) This definition is underreview in order to comply with the original French text of the Agreement and with the TRIPSdefinition

4 See Article 2(2) available at: http://www.wipo.int/lisbon/en/general/(Visited on October,2015)


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An Exploration of the Laws and Systems for the Protection of Geographical Indications in…

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“Indications of Source” are characterizedby a link between the “indication” andthe “geographical origin” of the product,which may be a certain country or a placein a country. Such indications are alsoreferred to as “country of origin”indications. The indication in an“indication of source” need notnecessarily be a geographical name.Words or phrases that directly indicategeographical origin, or phrases, symbolsor iconic emblems indirectly associatedwith the area of geographical origin mayconstitute indications of source. Thus, itrefers to a sign that simply indicates thata product originates in a specificgeographical region, for example, labelssaying “Made in India”, “Swiss Made”or “Product of USA”. Unlike AO, anindication of source need not represent aparticularly distinctive or renownedquality associated with the product’sorigin, although both designations referto geographical locations.5

The term ‘geographical indication’ hasbeen chosen by WIPO to describe thesubject matter of the TRIPS Agreementfor the international protection of namesand symbols which indicate a certaingeographical origin of a given product.In this connection, the term is intendedto be used in its widest possible meaning.WIPO defines GIs as:6

A sign used on goods that have a specificgeographical origin and possessqualities, reputation or characteristicsthat are essentially attributable to thatplace of origin.

WIPO chose to use the term “geographicalindications” instead of previously usedterms like “indications of source” or

“appellations of origin” to increase theamplitude of its meaning. WIPO hasindicated that “reputation” with respectto GIs is mainly related to the history andhistorical origin of the product, an attributemore consistent to products of traditionalknowledge. For GIs such as “Basmatirice”,7 the quality of the rice from the regiondenoted is closely connected to thereputation of the product connoted by thesymbolic name. As such, the protection

TRIPS Agreement is the firstmultilateral agreement to

have introduced the conceptof "geographical indications"

extends not only to the term “Basmati” asdenoted in reference to the region ofPunjab, but also to the reputation of theproduct that the term connotes, thetraditional method of productiondeveloped over time, and the culturalaspects of the product. This distinction issignificant in that the content of the rightsin the latter exhibits “many of thehallmarks of a property right,” while theformer grants a “mere right of action formisrepresentation-easily justified in termsof honest trade and consumer protection.”

The TRIPS Agreement is the firstmultilateral agreement to have introducedthe concept of “geographical indications”in a ground-breaking manner. TRIPS usethe term “geographical indication”,though the writers prefer the term“geographic indication” to describe the

5 Teshager Dagne, Law and Policy on Intellectual Property, Traditional Knowledge andDevelopment: Legally Protecting Creativity and Collective Rights in Traditional KnowledgeBased Agricultural Products through Geographical Indications, 11 ECJILTP 68-117 at 73(2010)

6 About Geographical Indications–World Intellectual Property Organization, available at:http://www.wipo.int/geo_indications/en/about.html (Visited on April, 2014).

7 Basmati rice is grown in Haryana & Punjab, Himachal Pradesh, Rajasthan, Uttar Pradesh,Uttarakhand and Greater Punjab region of Pakistan




concept. It is also sometimes called“geographic indicator”, “geographicalindicator”, or “geographic designation”.Article 22(1) of the agreement provides themost extensive definition of GIs:

Indications which identify a good asoriginating in the territory of aMember, or a region or locality in thatterritory, where a given quality,reputation or other characteristic of thegood is essentially attributable to itsgeographical origin.

GIs are similar to AOs in that bothassociate the quality of a good with ageographical location identified by anindication. Scope-wise, GIs are widerthan “appellations of origin” because GIsare not restricted to the names ofgeographical locations. Other indirectreferences to geographical locations suchas pictorial symbols may also be includedunder the definition of GIs, as long asthey can identify a good with “a givenquality, reputation or othercharacteristic” as originating in aterritory, region or locality in the territory.

“Reputation” in the protection of GIs mayarise not necessarily from natural factorsemanating from climate or soil quality ofthe product but from other human factorsin the geographical origin also such aslocal inventiveness or the traditionalknowledge or know how used in theplace where the product originates. Suchfactors must contribute to thedistinctiveness of the product, i.e., itscapacity to distinguish itself from otherproducts, and the reputation must beassessed, inter alia, from the consumer’sperception of the indication. The WIPOmaintains that GIs can also ‘highlightspecific qualities of a product which aredue to human factors that can be foundin the place of origin of the products, such

as specific manufacturing skills andtraditions’. The European Court ofJustice in the Feta case 8argued that therewas a close and important interplaybetween natural geographic factors andhuman innovation in the making of fetacheese. In the case of feta cheese, thisinterplay was said to include thedevelopment of small native breeds ofsheep and goats which are extremelytough and resilient, fitted for survival inan environment that offers little food inquantitative terms but, in terms ofquality, is endowed with an extremelydiversified flora, thus giving the finishedproduct its own specific aroma andflavour. The interplay between thenatural factors and the specific humanfactors, in particular the traditionalproduction method, which requiresstraining without pressure, has thusgiven Feta cheese its remarkableinternational reputation.

From this swirl of definitions, the mostimportant conclusion to be drawn is thatthe nature of GI protection is completelydifferent not only according to thecountries but also according to thecategories of the products concerned. Itis pertinent to mention the followingquote from a WIPO document in order tounderstand the concept of geographicalindications:9

Geographical Indications areunderstood by consumers to denote theorigin and the quality of products.Many of them have acquired valuablereputations which, if not adequatelyprotected, may be misrepresented bydishonest commercial operators. Falseuse of geographical indications byunauthorised parties is detrimental toconsumers and legitimate producers.Consumers are deceived into believing

8 [1999] ETMR 478

9 World Intellectual Property Organization, WIPO-International Bureau, 2002; AboutGeographical Indications, Why do Geographical Indications Need Protection? available at:h t t p : / / w w w . w i p o . i n t / s m e / e n / i p _ b u s i n e s s / c o l l e c t i v e _ m a r k s /geographical_indications.htm (Visited in January, 2016)


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that they are buying a genuine productwith specific qualities andcharacteristics, when they are in factgetting an imitation. Legitimateproducers are deprived of valuablebusiness and the established reputationof their products is damaged.

Geographical Indications are a form ofintellectual property rights that do notprotect novel elements but rather anaccumulated goodwill built up over theyears.10 Historically, the concept ofgeographical indications has beenclosely related to the notion of terroir,literally, “soil” or “terrain”. The termconnotes a limited geographical area,whose geology, topography, localclimate, flora and other factors impartdistinctive qualities to productsoriginating there. Thus the concept ofterroir expresses the connection betweenthe geographical location where a foodor beverage is produced and the qualityor other characteristic of the product.Terroir may also comprehend the humanelement of the geographical environment,i.e., the skilled exercise of techniques andknowledge acquired, developed andhanded down over generations.11

GI applies to a specific region within agiven state. The relevant region can bevery large, and in some casesencompasses an entire state; even thename of a Member State can berecognised as a GI, as in the cases, forexample, of ‘Darjeeling Tea’, ‘IrishWhiskey’, ‘Mysore Silk’ and ‘CanadianRye Whisky’. Typically, national ruleslimit the use of a given GI to producerswho, in addition to residing in thedesignated region, follow specifiedmanufacturing practices and use

particular ingredients. These rules aimto ensure that the authentic and specialquality claimed for the protected good ispresent in all products that carry the GI.European case laws indicate that, whenconsidering the grant of a definedgeographical area, the size of the area isimmaterial.12 In 2005 the European Court

Geographical Indications area form of intellectual property

rights that do not protectnovel elements but rather anaccumulated goodwill built

up over the years

of Justice held that Greece had theexclusive right to call its famous saltywhite cheese ‘feta’. The indication‘Swiss-made’ is also a protected GI forwatches. Hence, within a GI-protectedregion there may be numerous distinctand competing producers.

GIs could be iconic symbols or emblemslike the Eiffel Tower to designate a Frenchgood, or the Taj Mahal to designate anIndian good or the Statue of Liberty todesignate an American good. Moreover,denominations that are not ‘directgeographical names’ (such as Basmati)are also feasible.

GI protection means that producersoutside a designated region cannot userecognized GIs, no matter how similartheir product is to the GI-protected

10 Philippe Cullet, Intellectual Property Protection and Sustainable Development, 330 (LexisNexisButterworths, Nagpur, 2005)

11 T.Broude, “Culture, Trade and Additional Protection for Geographical Indications”,BRIDGES September –October 2005 No. 9:18

12 See Concerning the definitional breadth of the specified Geographic Area Case T-109/97,concerning the PDO ‘Altenburger Ziegenkase’ (goats’ cheese made in the Altenburg region,which must contain a minimum percentage of goats’ milk), which was registered by Germanyunder Regulation No. 2081/92





25 th March 1994.17 The EuropeanCommunity and the United States ofAmerica have also another agreement onTrade in Wine of 10th March, 2006.

The United States has provided protectionto foreign and domestic GIs since at least1946, decades prior to the implementationof the TRIPS Agreement when the term ofart “geographical indication” came intowide use.18 Geographical indications areviewed in the US as a sub-set oftrademarks. Therefore, GIs are protectedas trademarks, collective or certificationmarks employing the existing trademarkregime.19Applications for registration ofcollective or certification trademarks mustbe submitted to the US Patent andTrademark Office (USPTO) that is theauthority responsible for the registrationof all trademarks. The United States hasfound that by protecting geographicalindications through the trademarksystem, usually as certification andcollective marks, it can provide TRIPS pluslevel of protection to GIs, of either domesticor foreign origin.

The United States protects thegeographical indications in the followingdifferent ways:

(a) United States Certification Marks

Under the US Intellectual Property RightsLaw, geographical indication is protected

product. Even the phrase methodechampenoise, which denotes a product orprocess method, rather than any regionalquality per se , has been held to beimproper for German producers ofsparkling wine to employ on theirlabels.13 In the Prosciutto di Parma casebefore the European Court of Justice, theConzorio del Prosciuttodi Parmasuccessfully sued two UK firms thatimported whole hams and sliced themin Britain, on the ground that the slicingand packaging of prosciutto di parmawas central to the ham’s valuablereputation and therefore can only occurwithin the limited region designated bythe GI.14

2. Protection of GeographicalIndications-A Comparative Analysis

2.1 United States of America

The US is a member of the WorldIntellectual Property Organization from25 August 1970, a signatory of the ParisConvention for the Protection ofIndustrial Property from 30 May 1887,and the Madrid Protocol Concerning theInternational Registration of Marks from2 November 2003.15 The US is also a WTOMember from 1st January 1995.16 There isan agreement between the EuropeanCommunity and the United States ofAmerica on the mutual recognition ofcertain distilled spirits/spirit drinks of

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13 Gulmann AG in Case C– 306/93, SMW Winzersekt GmbH v. Land Rhineland-Pfalz [1995]ECRI – 5555.

1 4 Case C-108/01 Consorzio del Prosciutto di Parma and Salumificio S. Rita SpA v .Asda Stores Ltd and Hygrade Foods Ltd . [2003] ECRI 05121 avai lable a tcuria.europa.eu.

15 Contracting Parties available at:http://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=15 (Visited in January, 2016)

16 Members and Observers available at: http://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm (Visited on April, 2014)

17 Official Journal L 157, 24 June 1996

18 Available at: http://www.uspto.gov/web/offices/dcom/olia/globalip/pdf/gi_system.pdf(Visited on April, 2014)

19 Section 4 of The US Trade Mark Act of 1946, as amended codified in 15 USC 1051


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under the certification marks protectionsystem.20 The US Trademark Act, 1946regards geographical indication as partof certification mark. The purpose of acertification mark is to inform purchasersthat the goods/services of the authorizeduser possess certain characteristics ormeet certain qualifications or standards.It does not identify source of goods.Specifically for geographical indication,the US certification mark certifies allaspects of the nature of origin of the goodsor services to which it has been applied.The same mark can be used to certify morethan one characteristic of thegoods/services in more than onecertification category e.g., the markROQUEFORT21 is used to indicate thatthe cheese has been manufactured fromsheep’s milk and cured in the caves of theCommunity of Roquefort (France) inaccordance with their long establishedmethods and processes.

The accompanying specimens of useand evidence in the record are reviewedto determine whether the geographicalsign is being used as a certification markto indicate the geographical origin of thegoods/services upon which it is used.22

If the record or other evidence availableindicates that a specific sign in questionhas a principal significance as a genericterm denoting a type of goods/services,then the registration is refused.

As with other general trademark laws, title15 USC Section 1052(e)(2) prohibits theregistration of marks which, when usedon or in connection with the goods of anapplicant, are ‘primarily geographicallydescriptive’ of them. Thus a descriptiveterm including a geographical termcannot be registered as a trademark.However, this specifically excludes‘indications of regional origin’. Anindication of regional origin orgeographical indication is registrableunder title 15 USC Section 1054 as acertification mark. In addition, where anapplicant can demonstrate that ageographic term has become associatedwith its goods (or services) and thus hasacquired distinctiveness with regard tothose goods or services, registrationis permitted under title 15 USCSection 1052(f).

(b) United States Collective Marks

In addition, GIs can be protected underthe US law by Collective Marks.23 Thecollective mark is a particular type oftrademark that does not identify thesource of a good but indicatesmembership in a particular organization.The owner of a collective mark, unlikethe owner of a certification mark, can usethe mark to produce and market its owngoods and also promote its members’products. There are two types ofcollective marks in the United States:

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20 Title 5 USC Section 1127 defines a Certification Mark as: any word, name, symbol, ordevice, or any combination thereof used by a person other than its ownertocertify regionalor other origin, material, mode of manufacture, quality, accuracy, or other characteristic ofsuch person’s goods or services or that the work or labour on the goods or services wasperformed by members of a union or other organization

21 U.S. Registration No. 571,798

22 See 15 USC Section 1051(a) (1) (specimens of use in US commerce are required prior toissuing a registration, in the case of use-based and intent-to-use based applications.Specimens of use are required for maintenance of registrations issued under ParisConvention provisions)

23 Title 5 USC Section 1127 defines a collective mark as a trademark or service mark— (1)used by the members of a cooperative, an association, or other collective group ororganization, or (2) which such cooperative, association, or other collective group ororganization has a bonafide intention to use in commerce and applies to register on theprincipal register established by this chapter, and includes marks indicating membership ina union, an association, or other organization





Subject to the provisions relating to theregistration of trademarks, collective,including indications of regional origin,can be registered, in the same mannerand with the same effect as aretrademarks, by persons, and nations,States, municipalities, and the like,exercising legitimate control over the useof the marks sought to be registered.25

(c) Protection of GeographicalIndications as Trademarks in the US

Finally, under the US regime, it is possibleto protect geographical indications astrademarks. Pursuant to well-establishedUS trademark law, geographic terms orsigns are not registrable as trademarks ifthey are geographically descriptive orgeographically misdescriptive of theorigin of the goods (or services).26 TheUnited States does not protect geographicterms or signs that are generic27 for goods/services. Once a geographic designationis generic in the United States, anyproducer is free to use the designation forits goods/services.28 Another feature ofthe United States trademark system is thatit provides the GI owner with theexclusive right to prevent the use of GI byunauthorized parties when such usewould likely cause consumer confusion,mistake or deception as to the source ofthe goods or services.29 In this way, a priorright holder has priority and exclusivityover any later users of the same or similarsign on the same, similar, related, or insome cases unrelated goods/services

(i) Collective trademarks or collectiveservice marks; and

(ii) Collective membership marks.

The distinction between these types ofcollective marks is explained by theTrademark Trial and Appeal Board(TTAB), a USPTO administrativetribunal, as follows:24

A collective trademark or collectiveservice mark is a mark adopted by a“collective” (i.e., an association, union,cooperative, fraternal organization, orother organized collective group) for useonly by its members, who in turn use themark to identify their goods or servicesand distinguish them from those of non-members. The “collective” itself neithersells goods nor performs services undera collective trademark or collectiveservice mark, but the collective mayadvertise or otherwise promote the goodsor services sold or rendered by itsmembers under the mark. A collectivemembership mark is a mark adopted forthe purpose of indicating membershipin an organized collective group, suchas a union, an association, or otherorganization.

Collective trademarks and collectiveservice marks indicate commercial originof goods or services just as “regular”trademarks and service marks do, but ascollective marks they indicate origin inmembers of a group rather than origin inany one member or party.

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24 Geographical Indication Protection in the United States, United States Patent and TrademarkOffice available at: http://www.uspto.gov/web/offices/dcom/olia/globalip/pdf/gi_system.pdf (Visited on April, 2014)

25 15 USC Section1054

26 15 USC Section1052

27 A geographic term or sign is considered “generic” when it is so widely used that consumersview it as designating a category of all of the goods/services of the same type, rather thanas a geographic origin. As an example, the word “banana” cannot be protected as atrademark for banana because the word “banana” is the generic name for the fruit or theterm “cologne” now denotes a certain kind of perfumed toilet water, regardless of whetheror not it was produced in the region of Cologne. Many countries, such as the United States,do not protect generic indications because they are believed to be incapable of identifying aspecific business source or a specifically defined collective producing source

28 15 USC Section 1064

29 15 USC Section 1052 (d)


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where consumers would likely beconfused by the two uses.

Protecting GIs as trademarks, collectiveor certification marks employs theexisting trademark regime, a regime thatis already familiar to businesses, bothforeign and domestic. Moreover, noadditional commitment of resources bygovernments or taxpayers (for example,personnel or money) is required to createa new GI registration or protectionsystem.

(d) Opposition and Cancellation

With respect to protection ofgeographical indication, affected partiescan oppose registration or seek to cancelregistrations, all within the existingtrademark regime in the United States. Ifa party would be aggrieved by theregistration of a trademark, service mark,certification mark or collective mark orwould be damaged by the continuedexistence of a US registration, that partymay institute a proceeding at the TTAB,an administrative body at the USPTO.30

The TTAB has jurisdiction overopposition and cancellation proceedingsas well as over appeals from anexamining attorney’s final refusal toregister a mark in an application. Thelosing party at the TTAB level may appealthe TTAB’s decision to the Court ofAppeals for the Federal Circuit, a courtwith jurisdiction, inter alia , overintellectual property matters. From thatcourt, the losing party may appeal to theUS Supreme Court.

Beyond trademarks, certification andcollective marks, the United Statessystem, like many other countries, affordsother forms of general legal protection to

GIs. These include common legalinstruments such as unfair competitionlaw and some regulatory normspertaining to truth in advertisements andlabelling. Geographical indications areprotected through common law withoutbeing registered by the USPTO also.

The US has not been against theincorporation of GI protection in tradeagreements. Every regional and bilateraltrade pact since the North American FreeTrade Agreement (NAFTA) has includedsome provisions for mutual protectionof particular US GIs, such as TennesseeWhiskey and Bourbon, and thecorresponding national favourites fromthe other country. Moreover, theintellectual property rules in US tradeagreements tend to be stricter than arethe TRIPS provisions.

Two important trade agreements of theUnited States are discussed below:

(i) The United States Regulations of theBureau of Alcohol, Tobacco andFirearms (ATF)

Protection to geographical indications inthe US is also available under the lawsand regulations administered by theBureau of Alcohol, Tobacco, andFirearms.31The pertinent law coveringgeographic indications is the FederalAlcohol Administration Act andImplementing Regulations.32Theseregulations prohibit the labelling andadvertising wines in ways that canmislead the public. Under theseregulations, ATF has the authority toprevent the misleading use ofgeographical indications for distilledspirits, wine and malt beverages.33 Thusregistration is not required before an

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30 Section 2.101of the US Trade Mark Act of 1946

31 Available at: http://www.atf.gov/ (Visited on April, 2014)

32 Laws and Regulations under the Federal Alcohol Administration Act and Other RelatedProvisions of Title 27, United States Code and Title 27, Code of Federal Regulations availableat: http://www.ttb.gov/pdf/ttbp51008_laws_regs_act052007.pdf (Visited on April, 2014)

33 These regulations include 27 CFR Parts 4 and 12 for wine, 27 CFR Part 5 for distilledspirits, and 27 CFR Part 7 for malt beverages





action can be brought in Federal Court. Inline with the homonymous geographicalindication of wines regulated in TRIPS,these regulations also prohibit themisleading use of ‘sound-alike’geographical indication for wines, anduse of a coined word or name thatsimulates or imitates a geographicalindication if it creates a false impression.34

Wine’s advertising, statements, designs,devices or representations that tend tocreate the impression that the wineoriginated in a particular place or regionare prohibited, unless the label of theadvertised product bears an appellationof origin, and such appellation of originappears in the advertisement in directconjunction with the class and typedesignation.

(ii) North American Free TradeAgreement (NAFTA)

This regional treaty was a free tradeagreement which came into force onJanuary 1, 1994 and was signed by theGovernments of Canada, UnitedMexican States and the United States ofAmerica. NAFTA’s intellectual propertyprovisions create the highest legalstandards for protection andenforcement of intellectual property evernegotiated.35NAFTA mandates minimumstandards of intellectual propertyprotection but does not prevent countriesfrom establishing even higher standards.The Agreement requires each country totreat nationals of other countries in amanner that is no less favourable thanthat accorded its own nationals.36 Thedefinition of GI and the substantiveprovisions of the protection under theTreaty are virtually identical to those inthe TRIPS Agreement. Article 1712 of the

NAFT Agreement defines the frameworkof protection that would be available togeographical indications subject tocertain exceptions. It provides for theprevention of the use of any means in thedesignation or presentation of a good thatindicates or suggests that the good inquestion originates in a territory, regionor locality other than the true place oforigin, in a manner that misleads thepublic as to the geographical origin ofthe good and any use that constitutes anact of unfair competition within themeaning of Article10bis of the ParisConvention.37

(e) Critical Analysis

From the above discussion we canconclude that

(i) The US certification mark canprovide legal protection forgeographical indication quitestrong as that for the specialisedones because the US certificationmark protection also requires alinkage between the products andthe products’ place of origin. Thislinkage should be part of allgrounds for certification. Once thelinkage has been established andthe certification has been granted,the certification marks couldprotect one or more products,including one or more producersin the given regions.

(ii) In most instances the authority thatexercises control over the use of ageographical term as a certificationmark in the US is a governmentalbody or a body operating withgovernmental authorization. Whena geographical term is used as a

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34 Section 4.64 Regulations Title 27 Code of Federal Regulations

35 North American Free Trade Agreement - Chapter Seventeen: Intellectual Property availableat: https://www.nafta-sec-alena.org/Home/Legal-Texts/North-American-Free- Trade-Agreement?mvid=1&secid=b6e715c1-ec07-4c96-b18e-d762b2ebe511 (Visited in January,2016)

36 Article 1703 NAFTA

37 Article 1712 (1) NAFTA


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certification mark, two things areimportant i.e., to preserve thefreedom of all persons in the regionto use the term and to preventabuses or illegal uses of the markwhich would be detrimental to allthose entitled to use the mark. Thusa private individual is not in thebest position to fulfill theseobjectives satisfactorily. Thegovernment of a region is often thelogical authority to control the useof the name of the region. Thegovernment, either directly orthrough a body to which it hasgiven authority, would have powerto preserve the right of all personsand to prevent abuse or illegal useof the mark.

2.2 Dualism of Protection ofGeographical Indications in China

China is a member of the WorldIntellectual Property Organization from3rd June, 1980 and a signatory to the ParisConvention for the Protection of IndustrialProperty from 19th March, 1985 and theMadrid Agreement concerning theInternational Registration of Marks from 4October 1989.38 China was admitted tothe WTO on 11th December, 2001, andthereby was bound to incorporate TRIPSprotections into its national law.39

Although China had many productsknown by their place of origin, such asJinhua ham, Fuling pickled mustardtuber, and Huangyan tangerines,40 it wasslow to offer GI protection. Admission to

the WTO spurred significant efforts byChinese legislators to update intellectualproperty laws. Ultimately, China decidedto protect GIs with both trademark lawand also under the AOC model.

China maintains two parallel andindependent systems for protectingGeographical Indications. The first is atrademark registration system and thesecond is the Special Label programmefor the Protection of GeographicalIndications or Marks of Origin. TheTrademark regime covers trademarkswith geographical names for goods andservices. The Special Label system isconceptually similar to the EU’s sui generisPGI/PDO system in that it specificallydeals with GIs and distinguishes themwith a special label indicating a registered‘geographic indication product’. Itprotects Geographical Indications of bothagricultural and handicraft products. Thegoverning agencies administeringChina’s two GI systems are separate andoperate independently of each other.41 AGI registered under the Special Labelprogramme may subsequently also beregistered as a certification or collectivemark.

(a) Geographical Indication Registrationand Protection under China’s TradeMark Law

China made and amended rules andguidelines relating to IPRs to deal withthe new protection obligations imposedby TRIPS. Among those rules andguidelines, the Trade Mark Law,42 theRegulations for the Implementation of the

38 Contracting Parties available at :http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=2 (Visited in January, 2016)

39 Members and Observers available at: http://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm (Visited on April, 2014)

40 Christopher Heath (ed.),Intellectual Property Law in China 144 (Kluwer Law International,Netherlands, 2005)

41 The State Administration of Quality Supervision, Inspection and Quarantine administersChina’s AOC model of GI protection.

42 Trade Mark Law (promulgated by the Standing Comm. Nat’l People’s Cong., Aug. 23,1982, effective 1st March , 1983), translated in PRCLEG 2107 (LEXIS)





Trade Mark Law (“ImplementingRegulations”),43 and the Measures for theRegistration and Administration ofCollective Marks and Certification Marks(“Administration Measures”)44 pertaindirectly to the protection of GIs.

Marks are administered by theTrademark Office of the StateAdministration for Industry andCommerce (SAIC) and include collectiveand certification marks. Trademarks inChina utilize a ‘first to register’ systemof protection. Unlike common lawcountries, trademark rights in Chinacannot be obtained through use. GIs canbe registered as collective marks orcertification marks in China and receivethe protection for trademarks under theTrade Mark Law.45 China’s use ofcertification and collective marks issimilar to their application in thecommon law system but there are somedistinct differences as well. Under theChinese Trade Mark Law, registration ofGIs as certification marks or collectivemarks is subject to the requirement thatthey meet the definition of a geographicalindication as a sign which:46

Identify a particular good as originatingin a region, where a given quality,reputation or other characteristic of thegoods is essentially attributable to itsnatural or human factors.

So only goods are eligible to GIprotections under the Trade MarkLawand services are unqualified for suchprotection. The types and different

categories of goods are not defined byTrade Mark Law and it can be inferredthat all goods including agricultural andindustrial goods are eligible for theprotection. This resembles more a suigeneris GI law, than the certification marksystem as applied in the United States.The law further states that certificationmarks identify characteristics of productsor services, the owner of the mark musthave control over the use of the mark,and the owner cannot use the mark.47

Certification marks are used todistinguish the intrinsic characteristicsof otherwise similar products or services.Similarly, Chinese collective marksidentify the affiliation of producers orsuppliers to the registered owner of themark. Thus, once registered, a collectivemark is to be used by members of thegroup only. New members are permittedto use the mark, so long as they meet theregistrant’s membership requirements.SAIC procedures for registering GIs aseither certification or collective marksrequire that the applicant be a group,association or other organizationapplying to register a geographicalindication, because a certification orcollective mark must be composed ofmembers from the relevant GI region.48

They are required to submit proof of therules and standards that the registrationmust comply with, as well as proof oftheir qualifications and capacity tocontrol the mark, and to manage andaudit the required standards and qualityof the GI product.49

43 Regulation for the Implementation of the Trade Mark Law (promulgated by the St. Council,3rd August, 2002, effective 15th September, 2002), translated in PRCLEG 2444 (LEXIS)

44 Measures for the Registration and Administration of Collective Marks and CertificationMarks (promulgated by the St. Admin. for Indus. and Commerce, April 17, 2003, effective1st June, 2003), translation available at: http://sbj.saic.gov.cn/english/show.asp?id=60&bm=flfg (Visited on April, 2014)

45 The Chinese Trade Mark Law of 23 August 1982 covers all goods and services. The Englishversion of the Trade Mark Law of 2001 is available at:http://202.108.90.115/english/show.asp?id=47&bm= flfg(Visited on April, 2014)

46 Id., Article 16(2)

47 Id., Article 3

48 Id., Article 4

49 Supra Note 44 Article 5


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To successfully register aSpecial Label of Origin, the

applicant must be anorganization, association orenterprise designated by the

relevant regional governmentat or above the country level

137

The Trademark regime for the protectionof GIs in China thus provides:

(i) Definitions for GIs and thereforenames and signs that meet suchdefinition may be registered ascollective or certification marksprovided they satisfy all theconditions for registration ascertification or collective marks;

(ii) Formal application procedureswhich require that applicant toprovide documents showing thegiven quality, reputation or anyother characteristic of the goodsindicated by the geographicindication; the correlation betweenthe given quality, reputation or anyother characteristic of the goods,and the natural and human factorsof the region indicated by thegeographic indication;

(iii) All processes such as opposition,50

cancellation,51 renewal etc. that arestandard processes in anytrademark law. Ten-year term thatis perpetually renewable.52

(b) China’s ‘Special Label’ System

China’s ‘Special Label’ system forprotecting GIs is administered by the StateAdministration of Quality Supervision,Inspection and Quarantine (SAQSIQ),which created the special Protection of(National) Geographical IndicationProducts (PGIP) in 2005.53 A GIP inChina under the system is defined as aproduct that uses raw materialsoriginating from a specific region andthat is produced in a specificgeographical area using traditional

techniques, the quality, special featuresand reputation of which are essentiallydetermined by the geographical featuresof the region, and which is approved tobe named after its place of originaccording to the Regulations. There is nospecial provision under the system forwines and spirits. GI registration underthe SAQSIQ System entailscomprehensive government involvement.

In order to successfully register a SpecialLabel of Origin, the applicant must be anorganization, association or enterprisedesignated by the relevant regional

50 Supra Note 45 Article 30

51 Id., Article 44(4)

52 Id., Articles 37 and 38

53 Provisions for the Protection of Products of Geographical Indication (promulgated by theGen. Admin. of Quality Supervision, Inspection and Quarantine, 7th June, 2005, effective15th July, 2005) It replaced the previous 1999 Regulations for Protection of Designations ofOrigin

54 Id., Article 8

55 Id. Article 10

government at or above the countrylevel.54 The Regulation on Protection ofProducts of Geographical Indicationsthus provides:

(i) Definition of geographical indicationand therefore applications forproducts that need to be protectedmust satisfy these definitions and theapplication must be accompanied bythe specification with standards ofproduction and managementnorms;55





(ii) Formal Procedures for theapplication and registration of GIs.In addition to other details asrequired by the Regulation, thatapplicant has to indicate thegeographical origin of a product orservice and the qualities andcharacteristics of the said productor service, which are exclusivelydue to the place of origin, includingnatural and human factors;56

(iii) Formal and substantiveexamination of the GI application;57

(iv) Publication of the decision to granta protection title to a GI or refusalof application;

(v) Opposition to the grant ofregistration of a GI within twomonths after the publication ofacceptance by the Gen. Admin. ofQuality Supervision, Inspectionand Quarantine (AQSIQ);58

(vi) Cancellation of registered GI if notused within two years after itsregistration;59

(vii) Prohibition of Unauthorized use ofregistered geographical indicationsincluding cases where the trueorigin is indicated or a geographicalindication is used in translation orin combination with expressionssuch as “sort of”, “kind of”,“imitation” and “the like”.60

If the panel approves the application, theSAQSIQ publishes a notice of approvaland the GI is protected.61 A special label

is then created for use on all productsprotected by the GI. For the Chinese PGIP,any manufacturer of the product, beyondthe registrant, may use the special labelso long as they meet the conditions ofsuch use.62 The process by whichmanufacturers gain the right to use aSAQSIQ System GI is very similar to theSAQSIQ System GI registration process.

Apart from these legislations which havespecial provisions for GIs there are stillseveral laws in China that can providecommon protection for GIs. For example,the Law against Unfair Competition andthe Law on Product Quality prohibitforging the origin of a product and theLaw on the Protection of ConsumersRights and Interests provides thatconsumers shall enjoy the right to obtaintrue information about the origins ofcommodities and business operatorsmust provide authentic information. Allthese provisions are available for alldesignations on origins of goods and GIscan also be protected under them. Anyconduct “infringing upon the lawfulrights and interests of another businessoperator” constitutes an act of unfaircompetition. Therefore, the wrongful useof a GI protected by the Trade Mark Lawor the SAQSIQ Provisions is alsoprohibited by the Unfair CompetitionLaw. The Unfair Competition Law, theProduct Quality Law and the ConsumerRights Law were not drafted with thespecific intent of protecting GIs.Nonetheless, they do erect substantiallegal barriers to GI misuse.

56 Id., Article 10

57 Id., Article 12: The term “local quality and inspection departments” is defined as the “entryand exit inspection and quarantine bureaus and the quality and technical supervisionbureaus of the various localities”



60 Id., Article 12

61 Id., Article 16

62 Slightly different from the EU’s system where any manufacturer must be certified to meetthe conditions of such use


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On 30 November 2012 the EuropeanCommission announced the finalizationof the”10 + 10" project that ensuresprotection in China of ten famousEuropean food names registered asgeographical indications.63 The projectwas based on a protocol that becameoperational in 2011 after four years’negotiations, providing a road map forthe mutual recognition by the EU andChina of 10 traditional food names thatalready enjoyed GI status in theirrespective jurisdictions.

(c) Critical Analysis

(i) Protection of GIs with both trademarklaw and GI specific legislation is notonly unnecessary, it isdisadvantageous. The extent ofoverlap between the TrademarkSystem and the SAQSIQ System hascreated confusion and conflict. Thefact that the same geographicalindication is to be reviewed andapproved by two agencies, followingtwo different administrativeprocedures, not only creates a stateof chaos, but also imposes a heavyburden of operation costs on marketactors. It also results in conflictamong the right holders and whilereconciling their interests some rightowners are left without the protectionthey deserve.

(ii) As the SAIC and the SAQSIQoperate independently underdifferent governing legislation, therelationship between Special

Labels and certification/collectivemarks is ambiguous, andsometimes there is little precedentto gauge how rules are to beinterpreted. The same issue appliesto the registration and enforcementprocess. Though registrationprocedures includes a step forobjection, it is not clear whether aSpecial Label can object during acertification/collective mark’sapplication process, nor is it yetclear whether the Trademark Officecan enforce the violation of acertification or collective mark by aSpecial Label and vice versa.

(iii) There are potential conflicts betweentraditional trademarks and GIs in theform of certification marks andcollective marks. Traditionaltrademarks registered prior to 2001were permitted to use genericgeographic names. These existingtrademarks were then ‘grandfathered’into the new Trade Mark Law in 2001.Under the ‘first-to-file’ principle inChina’s trademark registrationprocedure, a mark identical or similarto a registered trademark used onsimilar goods cannot be registered.64

Thus, the Effect of SAQSIQ SystemRights on Subsequent TrademarkSystem Registrations is unclear. It isalso unclear whether a previouslyregistered Trademark System GIprevents a subsequent SAQSIQSystem Registration.

63 The EU list comprises: Grana Padano; Prosciutto di Parma; Roquefort; Pruneauxd’Agen/Pruneauxd’Agen mi-cuits; Priego de Cordoba; Sierra Magina; Comte; White Stilton Cheese/Blue Stilton Cheese; Scottish Farmed Salmon and West Country Farmhouse Cheddar. TheChinese list comprises: DongshanBai Lu Sun (asparagus), GuanxiMi You (honey pomelo),Jinxiang Da Suan (garlic), Lixian Ma Shan Yao (yam), Longjing cha, (tea) Pinggu Da Tao(peach), Shaanxi ping guo (apple), Yancheng Long Xia (crayfish), Zhenjiang Xiang Cu(vinegar) and Longkou Fen Si (vermicelli). See e.g., China-EU Cooperation on GeographicalIndications Moves Forward, European Commission, available at:http://ec.europa.eu/agriculture/newsroom/26_en.htm (Visited in January, 2016)

64 Article 13 of the Chinese Trade Mark Law, 1982





GIs of Indian origin havesince long been adverselyaffected by unscrupulousbusiness practices for the

want of adequate legalprotection

140

(iv) An inconsistency between thegoverning Administration Methodsand Implementation Rules of theTrade Mark Act creates anomalies inChina’s collective marks wherebythe connection between members ofthe group using the registered markand the geographic location and/or the producing area of theregistered product to which themark is applied is not clear. Thelegislation enables anyone qualifiedto be a member of the registrant

mark,66 without the group’s consentand the registrant group cannotprevent its use, thus circumventingprovisions of the AdministrativeMethods demanding control of theuse of the mark. Thus, there is noapparent means by which entitieswishing to use the corporate-ownedcollective mark may join thecorporation in order to use thecollective mark.

China would have sensibly looked to theestablished GI protection systems ofother nations when reforming its laws toimplement its obligations under TRIPSregarding GIs in order to avoid theseconflicts.

2.3 Development of GeographicalIndication Protection in India

Being party to the Paris Convention for theProtection of Industrial Property67, India hasfor long recognized ‘indications ofsource’ and ‘appellations of origin’ aselements of industrial property.

Even so innumerable companies andtraders have been free-riding on thegoodwill and reputation associated withvarious renowned geographical namesof Indian origin, for years. The legitimateright holders of various GIs of Indianorigin have since long been adverselyaffected by unscrupulous businesspractices for the want of adequate legalprotection as is clear from the grant ofpatents on products like neem, turmericand basmati to aliens. To meet thischallenge, need for introduction of anappropriate law on geographicalindications in India was the felt desire oflocal producers to have protection in

group to register a product,regardless of place of production,hence the connection between themark and producing area is diluted.

(v) Finally, in China, corporations canregister and own collective marks,despite not being a group,association or collective. The TradeMark Act’s Administrative Methodsstate that a collective mark is to beused by members of the registrantgroup only, prohibiting use by non-members.65 However, the Trade MarkAct’s Implementation Rules allownon-members of the registrantgroup also to use the collective

65 Article 17 of Regulation for the Implementation of the Trade Mark Law, 2002

66 Article 6 of Measures for the Registration and Administration of Collective Marks andCertification Marks, 2003

67 Paris Convention for the Protection of Industrial Property 20th March, 1883, available at :http://www.wipo.int/treaties/en/text.jsp?file_id=288514 (Visited in January, 2016)


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respect of products which originated intheir own regions.

Although the Indian courts applied thecommon law principle of passing offaction to GIs as in case of trademarks butneed for a legislative framework wasobvious if GIs were to be given effectiveprotection. It is in such a scenario thatIndia took steps to enact legislations forprotection of Intellectual Property incompliance with the TRIPS Agreement. Thelegislation namely Geographical Indications(Registration and Protection) of Goods Act,199968 is one such step. India byintroducing Geographical Indication(Registration and Protection) Act, 1999 (GIAct), which is a sui generis legislation,innovated a legal protection for itsgeographical indications at the nationallevel. Thus India in 1999 granted statutoryrecognition to geographical indicationsas intellectual property rights, in order topreserve and develop its traditionalresources and knowledge. From then on,the thrust for the protection ofgeographical indications has increasedsteadily given the fact that India has arich natural heritage and has manyagricultural varieties, tribal handicrafts,natural and manufactured goods/foodstuffs which are peculiar to it andneed to be protected as geographicalindication.

The developing countries, like India,have shown keen interest in the subjectof GIs in recent years. India and fewother developing countries have turnedto GIs in seeking an integrated approachto protect their natural wealth.69 Thedevelopment of the law of GIs in Indiahas been spurred by both the greaterneed and the additional opportunitiesoffered by the global marketplace for thediversification of agricultural productsand foodstuffs.

In India, patents have been protected bystatutes for many decades, butgeographical indications have beenmostly protected through the judiciary’suse of the passing off action or consumerprotection measures. Till 1999geographical indications could not beregistered in India because of the absenceof any statutory protection and thusIndian geographical indications werebeing misused by persons outside India.

68 Geographical Indications of Goods (Registration and Protection) Act, 1999, Act, 48 of1999. The Act came into force on 15th September, 2003

69 Ritika Banerjee and Mohar Majumdar, “In the mood to Compromise? Extended protectionof geographical indications under TRIPS Article 23” 6 Jnl of Intellectual Property Law &Pract657-663 at 662 (2011)

Concerns over biopiracy inIndia led to an increased

focus on geographicalindications and to the

adoption of the GeographicalIndications of Goods

(Registration and Protection)Act, 1999

The ratification of the TRIPS Agreementand concerns over biopiracy in India ledto an increased focus on geographicalindications and to the adoption of theGeographical Indications of Goods(Registration and Protection) Act, 1999. Tocarry out the provisions of this Act, theCentral Government also notified a set ofRule in 2002 called as ‘GeographicalIndications of Goods (Registration andProtection) Rules, 2002. Unless ageographical indication is protected inthe country of its origin, there is noobligation under the TRIPS Agreement forthe other countries to extend reciprocalprotection. Being a signatory to the TRIPSAgreement, India was obliged to set intoplace national intellectual property lawswhich also include GI laws. India





consciously incorporated formally theprovisions of Articles 22, 23 and 24 of theTRIPS Agreement through this Act andthus made structural adjustments andtried to change the mind-set of its people.The Parliament recognized that providinglegal protection for Indian geographicalindications would boost exports andpromote economic prosperity forproducers of goods produced in aneconomic territory. Thus, the desire toprotect geographical indications frommisappropriation and abuse eventuallyled to the adoption of a separate system ofregistered protection for the geographicalindications which allows for collectiverights.

(a) The Geographical Indication ofGoods (Registration and Protection)Act, 1999

The Act seeks to provide for theregistration and better protection ofgeographical indications for goodsrelating to India. Goods that may qualifyfor GI registration and protection in Indiainclude natural, agricultural andmanufactured goods (handicrafts,manufactured goods, foodstuffs) so longas the production, processing and/orpreparation takes place in the territorystated in the registry.70 There is also aprovision in the Act for broadly extendinga higher level of protection envisagedunder Article23 (1) of the TRIPS Agreement.

The Act has been divided into ninechapters. Chapter I is preliminary, whichdefines various terms used in the Act.Chapter II deals with the register andconditions for registration includingappointment and powers of registrar andalso prohibition of registration of certaingeographical indications. Chapter IIIprovides for the procedure for andduration of registration. Chapter IVdescribes the effect of registration. ChapterV contains the special provision relating

to trademarks and prior users. ChapterVI provides for rectification and correctionof the Register. Chapter VII is concernedwith the appeals to the Appellate Board.Chapter VIII prescribes offences, penaltiesand procedure and the last chapter i.e.,Chapter IX is miscellaneous.

The Object of the Act of 1999 is three fold:71

(i) Firstly, a statutory legal frame workgoverning the geographicalindications of goods in the countryis envisaged with an intent to grantadequate protection to the producersof such goods;

(ii) Secondly, to prohibit unauthorizedpersons from misusing geographicalindications and to protect consumersfrom deception; and

(iii) Thirdly, to promote export of goodsbearing Indian geographicalindications.

The salient features of the Act are asfollows:

(i) Definitions and interpretation ofseveral important terms like‘geographical indication’, ‘goods’,‘producers’, ‘package’, ‘registeredproprietor’, ‘authorised user’ etc.;

(ii) Provision for the establishment of aGeographical Indications Registry;

(iii) Provision for the maintenance of aRegister of Geographical Indicationsin two parts-Part A and Part B anduse of computers, etc. formaintenance of such registers. WhilePart A will contain all registeredgeographical indicators, Part B willcontain particulars of registeredauthorised users;

(iv) Registration of geographicalindications of goods in specifiedclasses;

7 0 Section 2(1)(f) of Geographical Indications of Goods (Registration and Protection)Act, 1999

71 Draft Manual of Geographical Indications Practice & Procedure Published by the Office ofController General of Patents, Designs and Trademarks, (31st March, 2011)


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(v) Prohibition of registration of certaingeographical indications;

(vi) Provision for framing of Rule by theCentral Government for filling ofapplications, its content andmatters relating to substantiveexamination of geographicalindication applications;

(vii) Compulsory advertisement of allaccepted geographical indicationsapplications and for invitingobjections;

(viii) Registration of authorised users ofregistered geographical indicationsand providing infringement actioneither by a registered proprietor oran authorised user;

(ix) Provisions for the renewal,rectification and restoration ofgeographical indications andauthorised user;

(x) Provision for higher level ofprotection for notified goods;

(xi) Prohibition of assignment etc. ofgeographical indication as it ispublic property;

(xii) Prohibition of registration ofgeographical indication as atrademark;

(xiii) Appeal against Registrar’sdecisions would lie to theIntellectual Property AppellateBoard established under theTrademarks legislation;

(xiv) Provision relating to offences andpenalties;

(xv) Provision detailing the effects ofregistration and the rightsconferred by registration;

(xvi) Provisions for reciprocity, power ofRegistrar, maintenance of index,

protection of homonymousgeographical indication, etc.

In India GIs are defined as under:72

‘Geographical Indication’, in relation togoods, means an indication whichidentifies such goods as agriculturalgoods, natural goods or manufacturedgoods as originating, or manufactured inthe territory of a country, or a region orlocality in that territory, where a givenquality, reputation or other characteristicsof such goods is essentially attributableto its geographical origin and in casewhere such goods are manufacturedgoods one of the activities of either theproduction or of processing orpreparation of the goods concerned takesplace in such territory, region or locality,as the case may be.

Explanation added to the above Sectionfurther clarifies any name which is notthe name of a country, region or localityof that country shall also be consideredas the GI if it relates to a specificgeographical area and is used upon orin relation to particular goodsoriginating from that country, region orlocality, as the case may be.

Further “goods” under the Act includesany agricultural, natural or manufacturedgoods or any goods of handicraft or ofindustry and includes foodstuff.73 A closerlook at the definition shows that the Indianlaw explicitly extends the protection togeographical indications used not onlyfor agricultural products, but also formanufactured goods. The definition thushas gone beyond what was the concept ofgeographical term in Imperial Tobacco Co.of India Ltd. v. The Registrar of Trademarks74

where the Calcutta High Court whileexplaining the concept of “geographicalterm” limited the definition as under:75

7 2 Section 2(1)(e) of Geographical Indications of Goods (Registration and Protection) Act,1999

73 Id., Section 2(1)(f)

74 AIR 1977 Cal 413

75 Id. at 414





A geographical name according to itsordinary signification is such markinherently or otherwise incapable ofregistration subject to minor exceptions.A geographical name not used ingeographical sense to denote place oforigin, but used in an arbitrary or fancifulway to indicate origin or ownershipregardless of location, may be sustainedas a valid trademark.

(b) Special Provisions in Relation toTrademarks and Prior Users

Chapter V of the Act deals with the specialprovisions relating to trademarks and priorusers. Registration of GI as a trademark isnot permitted. The basic intention of thisprovision is to prevent appropriation of apublic property in the nature of ageographical indication by an individualas a trademark leading to confusion in themarket. According to the Section 25 of theAct the Registrar of Trademarks shall, suomotu or at the request of an interested party,refuse or invalidate the registrations of atrademark which:

(i) contains or consists of ageographical indication withrespect to the goods or class orclasses of goods not originating inthe territory of a country , or a regionor locality in that territory whichsuch geographical indicationindicates, if use of such geographicalindications in the trademark forsuch goods, is of such a nature as toconfuse or mislead the persons asto the true place of origin of suchgoods or class or classes of goods;

(ii) contains or consists of ageographical indication identifyinggoods or class or classes of goodsnotified under sub-section (2) ofSection 22.76

But Section 26 is in nature an exceptionto the law in Section 25 of the Act. ThisSection protects the trademark whichcontains or consists of a geographicalindication and has been applied for orregistered in good faith under the lawrelating to trademarks for the time beingin force, or where rights to suchtrademark have been acquired throughuse in good faith either:

(i) before the commencement of thisAct; or

(ii) before the date of filing theapplication for registration of suchgeographical indication under thisAct;

Section 9(1) (d) of the Trade and MerchandiseMarks Act, 1958 provides that a trademarkwhich is a geographical name in itsordinary signification is not to beregistered except in some cases. Section 9(1) of the Trade Marks Act, 1999 alsoprovides for absolute grounds for refusalof registration of a trademark whichconsists exclusively of marks orindications which may serve in trade todesignate the kind, quality, quantity,intended purpose, values, geographicalorigin or the time of production of thegoods or rendering of the service or othercharacteristics of the goods or services.Thus even before the commencement ofthe GI Act of 1999 protection was given inIndia to the geographical names frombeing registered as trademarks withcertain limitations. For example in ImperialTobacco Co. of India Ltd. v. The Registrar ofTrademarks77 the appellant made anapplication before the Registrar applyingfor registration as a trademark of a labelbearing the device of snow-clad hills inoutline and the word “Simla” writtenprominently in various panels of the

76 According to Section 22(2) the Central Government may, if it thinks necessary so to do forproviding additional protection to certain goods or classes of goods under sub-section (3),by notification in the Official Gazette, specify such goods or class or classes of goods, forthe purposes of such protection

77 AIR 1977 Cal 413


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label, used as wrapper of packets ofcigarettes. The application for registrationwas refused by the Calcutta High Court onthe ground that ‘Simla’ was neither aninvented word nor a word having adictionary meaning. Its geographicalsignification was thus plain andunequivocal and the snow-clad hills inoutline in the label made the geographicalsignificance inescapable. Even so, it washeld, a geographical word is not anabsolute disqualification for the purposeof registration in Part A of the Register, asSection 9(2) of the Trade and MerchandiseMarks Act, 1958 provides that ageographical name “shall not beregistrable in Part A of the register exceptupon evidence of its distinctiveness”. Ageographical name in its ordinarysignification can thus be registered uponevidence of distinctiveness and suchevidence will establish if the mark hasacquired distinctiveness. The affidavitevidence by dealers adduced by theappellant in support of the proof ofacquisition of distinctiveness wasconsidered insufficient to establishdistinctiveness in “a magically short timeof barely three years”, as “distinctivenessof goods in a trade by association with aparticular name requires normally a hardlaborious time consuming process inbusiness”. The court agreed with thefinding of the Registrar that theappellant’s mark had not becomedistinctive and evidence is not such as toprove such distinctiveness. The Courtfurther stated ‘Simla’ is too prominent acity, the capital of Himachal Pradesh, wellknown in the country and abroad and inits ordinary or geographical significanceit is inherently neither distinctive noradapted to distinguishing the goods ofthe appellant as a particular trader fromthose of others, and is also hit by theprovisions of Section9(1) (d) of the Tradeand Merchandise Marks Act, 1958.

In some cases geographical words havebeen accepted as trademarks, wheresuch words show distinctive characterby reason of use or other circumstancesbut the Trade Marks Act, 1999 providesthat a trademark which consistsexclusively of marks or indicationswhich may serve in trade to designatethe geographical origin of goods are

A geographical word is notan absolute disqualification

for the purpose of registrationin Part A of the Register

not registrable. For example inYorkshire Copper Works Ltd. v. Registrarof Trade Marks78 case the Applicantapplied to register the word“Yorkshire” for solid-drawn tubes andcapillary fittings, all being made ofcopper or non-ferrous copper alloys.There was no other manufacturer ofsuch goods in Yorkshire, and evidencewas filed that the mark had acquired“100 per cent distinctiveness”. As theregistration of the trademark wasrefused by the Registrar, an appeal wasmade to the House of Lords. The House ofLords held that even though the markmight have acquired suchdistinctiveness, the Registrar is boundto have regard to the extent to which itwas “inherently adapted todistinguish” the goods in questionand, inasmuch as it was not soadapted, it should not be registered. Asthe mark was beyond question ageographical name, even though it hasno direct reference to the character orquality of goods, it could not be

78 (1954) 71 RPC 150 (HL)





registered if it was according to itsordinary signification of ageographical name. Lord Simonds heldthat:79

Paradoxical perhaps, the more apt aword is to describe the goods of amanufacturer, the less apt it is todistinguish them: for a word that is aptto describe the goods of A, is likely to beapt to describe the similar goods of B. Itis, I think for this very reason that ageographical name is prima facie deniedregistrability. For, just a manufacturer isnot entitled to a monopoly of a laudatoryor descriptive epithet, so he is not toclaim for his own a territory, whethercountry, country or town, which may bein the future, if it is not now, the seat ofmanufacture of goods similar to his own.

The application was rightly rejected andthe test laid down was that ageographical name can only beinherently adapted to distinguish thegoods of A when you can predicate of itthat it is such a name as it would neveroccur to B to use in respect of similargoods. Of such names the classicexamples are “Monte Rosa” for cigarettesor “Teneriffe” for boiler plates. Thus theappeal was dismissed with costs.

Geographical terms or signs cannot beregistered as trademarks if they aremerely geographically descriptive orgeographically mis-descriptive.However, if a geographical sign is usedin such a way as to identify the source ofthe goods or services, and if consumershave over time come to recognize it asidentifying a particular company,manufacturer or group of producers, itno longer describes only the place oforigin, but also the “source” of theuniqueness of the goods or services. Atthis point, the sign has thus acquired a“distinctive character” or “secondarymeaning” and can therefore be registered

as a trademark. In Nilgiri Dairy Farm v. ARathnasabhapthy80the trademark used bythe plaintiff and its predecessor was‘Nilgiri Dairy Farm’ for the milk used inmanufacture of dairy products whichcame from Coimbatore District and notfrom Nilgiri district since 1905. Prior to1965 the defendants used different nameand mark for their dairy products. Butafter 1965 they commenced usingplaintiffs’ trade name and mark. One ofthe contentions raised on behalf of thedefendant was that since ‘Nilgiri’ was ageographical name and ‘Dairy Farm’ wasdescriptive of the business, the samecould not form a valid trademark. But‘Nilgiri Dairy Farm’ was accepted as aprotectable trademark though the word‘Nilgiri’ was a geographical name and‘Dairy Farm’ was descriptive of thebusiness. The court held that the name‘Nilgiri Dairy Farm’ had become a tradename to the extent necessary to maintainan action of passing off, and as theplaintiff had acquired a valuablereputation by use, the court wouldrestrain the unauthorised use of thatname and mark in a manner calculatedto deceive the public and cause damageto the plaintiff.

In Bikanervala v. New Bikanerwala81 thedefendant started using a trademark/trade name with a prefix ‘NEW’ to themark ‘BIKANERWALA’ which wasvisually, structurally and phoneticallysimilar to the mark/trade name of theplaintiff. An interim injunction wasgranted restraining the use of trade name/trademark ‘New Bikanerwala’ though theexpression ‘BIKANER’ is a well-knowngeographical city of Rajasthan, which isknown and recognized for a particulartype/kind of food articles for humanconsumption. The court held though thetrade name contained a geographicalname, but conveyed a distinct and specific

79 Id. at 154

80 (1975) 2 Karn. LJ 505

81 2005 (30) PTC 113 (Del)

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meaning in common parlance in view ofthe user by the plaintiff of over 100 years. Atrademark/trade name, even if it containsor refers to a geographical name, but if itconveys a distinct and specific meaningin common parlance as to indicate theorigin of the person or the product and thesaid mark has assumed a secondarysignificance, the same can constitute validtrademark/trade name and is capable ofprotection under the Trademark Act as wellas under the common law against passingoff by a defendant

(c) Critical Appraisal

No doubt India formulated a legislationin the form of the 1999 Act, but the law inthis regard is yet to solidify and far fromstrong foundation. As with most GIsystems, the administration of the IndianGI system under the GeographicalIndications of Goods (Registration andProtection) Act, 1999 presents somechallenges which are as follows:

(i) While the definition of GIs in the GIAct indicates that goods implyagricultural goods, natural goods ormanufactured goods, Section2(1) (f) 82

of the GI Act defines “goods” tomean any goods of handicraft or ofindustry and food stuff as well.Such discrepancy could have beenavoided by the lawmakers ofIndia.83

(ii) Though many GIs are registered inIndia, there is no registration ofauthorized users in all cases.Definition of ‘producer’ under theAct includes persons who trade inor deal in production, exploitation,making or manufacturing of GIgoods.84 This definition gives anupper hand to traders and

middlemen, thus actual producersget marginalized. They may registerGIs which may have potential forcommercial exploitation and bylimiting the geographical area andidentifying producers in whom theyhave interest and who may not bereal producers, misuse the law.

(iii) No rural producer is bothered tochallenge infringement of GI nor ishe interested in getting himselfregistered as an authorized user.

(iv) Sometimes, the majority ofproducers are not actively involvedin the application and are unawarethat a GI has been registered, leavingthe local government the task ofinforming them of their rights andopportunities after the fact.

(v) Moreover, producers that aremembers of the group owning theregistered GI do not automaticallyhave the right to use the GI but theymust be registered as an‘Authorized User’, which entails aregistration procedure, payment ofapplicable fees, and approval fromthe registered proprietor of the GI.

(vi) Lack of awareness, capacity orresources may preclude legitimateproducers of the GI product fromregistering.

(vii) There are no provisions within theAct to ensure that the traits asrequired under the Act for the initialregistration like quality, reputationand characteristics, are maintainedpost-registration.

(viii) Section9 (f) prohibits the registrationof GIs that are determined to begeneric. This exception of genericide,

82 Section 2(1)(f) of the Act: “ goods” means any agricultural, natural or manufacturedgoods or any goods of handicraft or of industry and includes food stuff”

83 Kasturi Das, Protection of India’s ‘Geographical Indications’: An Overview of the IndianLegislation and the TRIPS Scenario 46 IJIL 39-73 at 50 (2006)

84 Section 2(k) of Geographical Indications of Goods (Registration and Protection) Act, 1999


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which is broader than required, is aserious blow to the producers in acountry like India where manytraditional agricultural productsderive their peculiar qualities andcharacteristics from the particulargeographical region where they aregrown.

(ix) The artisans like weavers,goldsmiths and other craftsmen maynot be affluent or literate in Englishlanguage, so the publication mustbe in the local language. The mainobject of the Act is to protect thosepersons who are directly engagedin exploiting, creating or making ormanufacturing the goods. They havethe hands-on experience of the GIproducts. When these creators ormakers complain that theapplication has been made behindtheir back, the registration shouldnot be allowed to remain.

(x) The advertisement in Section 13 ofthe Act, in the Trade Journal is ofno use and will not serve the samepurpose as a public notice akin tothe Section 4 of the Land AcquisitionAct1894 notice.85

TRIPS Agreement leaves it exclusively inthe discretion of the country of origin todecide whether a particular geographicalname has become generic or not. Indiaought to have kept the scope of genericide

as narrow as possible, i.e., it should haveallowed its courts to determine which termis generic and which is not, based onlyon the situation in India (the country oforigin) and not based on the status in theareas of consumption.86 As an overallassessment, there is a genuine and sinceredesire on the part of delegations to move

TRIPS Agreement leaves itexclusively in the discretionof the country of origin to

decide whether a particulargeographical name hasbecome generic or not

forward and resolve the remainingdifferences in the Act.

3. Comparison of GeographicalIndication Protection between theUnited States of America, China andIndia

The essential points of comparisonbetween the United States of America,China and India in providing protectionto the geographical indications areprovided in Table:

85 Id., Section 4:Publication of preliminary notification and power of officers thereupon: (1)Whenever it appears to the [appropriate Government] the land in any locality [is needed or]is likely to be needed for any public purpose [or for a company], a notification to that effectshall be published in the Official Gazette [and in two daily newspapers circulating in thatlocality of which at least one shall be in the regional language], and the Collector shall causepublic notice of the substance of such notification to be given at convenient places in thesaid locality [(the last of the dates of such publication and the giving of such public notice,being hereinafter referred to as the date of the publication of the notification)]

86 J A Reddy and S Chatterjee, “ A Critique of the Indian Law and Approach towardsProtection of Geographical Indications with Specific Reference to Genericide” 12 JIPR 572-580 at 576 (2007)

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Type ofProtection

RelevantRegulatoryFramework

Scope ofProtection

AdministrationResponsible forRegistration

Protection

USASui generis protectionfor wines and spiritsand; Trademarkregime

The AlcoholicBeverage Labelling Actof 1988,United StatesCode, Title 15 (USC)and The Lanham TradeMark Act of 1946

Applicable to all goods(agricultural and/orindustrial) and services

United States Patentand Trademark Office

For a period of 10years, renewable forfurther periods of 10years

CHINASui generis protectionandTrademark regime

The Chinese TradeMark Law of 23August 1982;China’s ‘Special Label’System of 2005

Sui generis protectionof GIs: Applicable togoods (agriculturaland handicraft)but notservices.Trademarkregime:Applicable to all goodsand services

SAIC and SAQSIQ

Sui Generis system:Protection is unlimitedin time. Trademarkregime: for a period of10 years, renewablefor further periods of10 years

INDIASui generis protectiononly

The GeographicalIndications of Goods(Registration andProtection) Act, 1999and The GeographicalIndications of Goods(Registration andProtection) Rules of2002

Applicable to goods:agricultural, handicraft ,manufactured and foodstuffsbut not services.The 4th Schedule of theRules also includesalcoholic beverages but,excludes beer

The Registrar ofGeographicalIndication

For a period of 10years, renewable forfurther periods of 10years

4. Conclusion

From the above discussion it can beconcluded that the legal protection of GIsdiffers not only from one product toanother but from one country to the other.The requirement of relationship betweenquality, reputation, or other characteristicof the good and its geographical originare fundamental to the protection of a GIalmost universally. Aim to prevent abusehas given rise to separate forms of legalprotection for geographical indicationsboth nationally and internationally.

While there is some consistency in theimplementation of the legal tests in lawsof countries throughout the world thereare also a number of major differences inthe way in which these tests are applied.If all domestic regulations were identicaland perfectly enforced then trade in GIproducts would constitute no significantproblem. As regulations differ greatly inpractice, so trade agreements are neededto deal with the interface of these differentways of administering GI protection.


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The United States incorporates GIs as asection of its existing intellectualproperty legislation i.e., trademark law.The process of applying for GI protectionvia United States certification or collectivemarks appears to be a simpler process asthe requirements for inspection andverification in the former are set by thecertification mark owner rather than thegovernment. The United States systemsare fairly representative of the diversityof approaches utilized by most countriesactive in the field of GI protection today,and can therefore serve as useful models.

In many developing countries, thesystem of GI protection is often at anembryonic stage and governments havea very limited capacity either to facilitatetheir own GIs or protect foreign ones.87

China is among these as well. China’sGI system has undergone significantchange over the past few years. FurtherChinese legislation is different from that

of the United States under whichregistration of a trademark isrefused/rescinded if the trademarkconsists of a “well-known foreigngeographic term” even if it is notrecognized as indicating the place oforigin of the goods. It is interesting tonote that India provides for the protectionof non-agricultural GI products througha sui generis GI system, while the Chineseproducts are protected under both thetrademark law and the sui generis GIsystem. The problem in India is that it isunclear about how to tailor its GIregulations to promote its interests in theacquisition, development andapplication of traditional products, andtherefore how best to exploit theseflexibilities. Moreover the Indian GI Actis applicable to goods only and not toservices. So there is need to bring serviceswithin the ambit of GI protection underour GI Act like the US and China.

87 For example in sub-Saharan Africa, systems exist, but are essentially not being utilized forreasons such as confusing regulations, costs, and inaccessible bureaucracy. In others, suchas Argentina and Cuba, systems exist but apply to a limited range of products (i.e. wine,spirits, and tobacco). Some countries such as Chile, India and Turkey are taking advantageof the potential for GI development in a number of areas.

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