The Basmati Case

Basmati – A variety of Rice from Punjab Province of India & Pakistan

The Rice – a slender, Aromatic, long grain Variety – originated in this region – major export crop for both countries – annual exports worth $ 300m –represent the livelihood of thousands of farmers

The “Battle of Basmati” –started in 1967 – RiceTec Inc, USA awarded a patent – US 5663484 relating to plants & seeds –seeking monopolies – various rice lines – including some – characteristics similar to Basmati lines

Concerned with potential effects on exports – In 2000 – India – requested re-examination

The Basmati Case (Contd..)

The patentee – withdraw a number of claims – those covering those covering basmati type lines

Further claims withdrawn – concerned raised by USPTO

The dispute - from patent – the misuse of the name Basmati”

In some Countries – the terms “Basmati” – only to long grain aromatic rice grown in India and Pakistan

RiceTec – for registration of trademark “Taxmati” in UK – claiming “Basmati” – generic term – successfully opposed – a code of Remarketing of rice established in UK – similar regulations in Saudi Arabia – the World’s largest importer of Basmati rice

The Basmati Case (Contd..)

The code – the belief in consumer, trade and Scientific circles – the distinctiveness of authentic Basmati rice – only from northern regions of India & Pakistan – unique and Complex combination – environment, soil, climate, agricultural practices, genetics of Basmati varieties

In 1998 – US Rice Federation – term “Basmati” – generic – a type of aromatic rice

A Collective US & Indian Civil socitey organisations – petition – preventing US-grown rice –being advertised with the word “Basmati”

In May 2001, US Deptt of Agriculture/ US Federal Trade Commission – rejected

The Basmati Case (Contd..)

Held – neither labeling of rice as “American-grown Basmati” – misleading –deemed “Basmati” – a generic term

The Problem – not limited to US – Australia, Eqypt, Thailand and France – also growing – take a lead – officially deemed “basmati” – a generic term

The name “Basmati” – can be protected – registering it as a Geographical Indication

But India – explain - why no action – against gradual adoption of generic status of Basmati – over last 20 years – why no formal protest – US Federal Trade Commission – declared “basmati” – generic

Advantage One function of these names-their

geographical connotation Geographical indications acquire high

reputation, thus valuable commercial asset

Often exposed to misappropriation, counterfeiting or forgery

Their protection – national as well as international – highly desirable

International Scenario Hardly any category of IP law containing

such a variety of concepts of protection The Paris Convention – notion of

geographical indication missing However Article 1 para (2) defines as

subject of IP Indication of Source and Appellations of origin

Distinction Indication of Source:

Any expression or sign used to indicate a product or service originates in a country , a region or a specific place

Champagne – a special kind of sparkling wine – originate – Champagne region of France; Cognac – brandy – French region around the town of Cognac

Appellation of origin: Geographical name of a country, region or

specific place serving to designate a product originating therein the characteristic qualities due exclusively or essentially to geographical environment including natural or human factors or both natural and human factors

Differnce (Contd..)

Use of an appellation of origin – quality link – product and its area of production

Use of an indication of Source – merely subject to condition – product in question originates from the place designated by the indication of source

Appellations of origin – special kind of indication of source

Traditionally “indication of source” comprises all appellations of origin

Generally rather a designation for all those indications of source – not considered to be appellations of origin

Geographical Indications – also Appellations of Origin (Examples)

• Bordeaux Wine

• Stilton Cheese

• Roquefort Cheese

• Champagne

• Sheffield Steel

• Stilton – way –Cheese is made – not where – originates

• Sheffield Steel – a geographical indication – not claim – qualities – situation of Sheffield - in the north of England

Progress “Geographical Indication” as chosen by WIPO –

subject matter of a new treaty for international protection of names and symbols – indicating a certain geographical origin of a given product

Used in its widest possible meaning Embraces all such existing means of protection

regardless whether they indicate qualities due to its geographical origin or merely indicates the place of origin

Also covers symbols – capable of indicating the origin without literally naming its place of origin

Examples: Eiffel Tower for Paris, the Matterhorn for Switzerland or the Tower Bridge for London

GI v/s Trademark

Trdemark identifies the enterprise – offers certain products or services on the market

A Geographical indication identifies a geographical area – one or several enterprises located –produce the kind of product – GI is used; no “owner” –sense – one person/enterprise exclude other from use of a GI but each and every enterprise – in the area – right to use – said indication – products originating – said area but subject to compliance with certain quality requirements as prescribed; Champagne – all wine growers – but Moet – its Champgne – “Moet”

Meaning of ”protection” of Geographical Indications

Right to prevent unauthorized persons from using GI – for products – not originating from geographical place indicated

or not complying with the prescribed quality

standards.

Protecting GI against becoming generic expressions – lose all their distinctiveness – lose protection

Meaning (Contd..) Whether a geographical indication – generic term –

void of any protection ? To be determine by national law A GI - regarded in one country – a GI and is

protected Whereas consider in other country a generic or

semi-generic term Examples for such diverging treatment of G names

– “Champagne” and “Chablis” – in France – for products originating from a certain geographical area, certain quality Whereas in USA regarded as being semi generic names, also used for wines not originating from French area of production

Various Forms at National Level Three main categories: Protection – not based on a decision taken

by the competent authority but from the direct application of legislative provisions or principles of Jurisprudence

Through registration of collective marks (including agricultural labels) or certification marks (or Guarantee marks)

All special titles of protection – decision made by the competent government authority – comprises the protection of appellations of origin e.g. Russian Law or the French Law of 1919

Special Titles of Protection Protection of indication of Source – false

or deceptive use – insufficient Besides the need for protection –

encouragement of local, traditional methods of production emerged

In France, First statute – protection of GI through a special title of industrial property – appellations of origin

Because of success of the French appellations of origin, same or similar system introduced – other country – the sector of wines and spirits

Registration of Collective Marksor Certification Marks

Provides a means for the protection of GI independent of Statutory or Judicial measures

Collective mark – use by the members of collective body – an association or cooperative, owned by the association – grants exclusively grants its members – right to use

Certification marks owned by a certification authority – ensures goods bearing the mark possess the certified qualities

Used to certify inter alia the origin of products or services

The Law of Unfair Competition Use of certain GI for goods or services – not

originating – misleading – deceive consumers A misappropriation of the goodwill of a person –

entitled – use the GI An action for unfair competition Conditions for a successful action vary from

country to country, following basic principles recognized Acquired certain reputation or goodwill Use misleading Proof of damages or likelihood of damages required

Protection of Geographical Indications through Multilateral Treaties

The Paris Convention for the Protection of Industrial Property : Article 1(2); Article 9(3); Article 10(1); Article 10(2)

The Madrid Agreement for the Repression of False and Deceptive Indications of Source on Goods : Article 1(1); Article 3; Article 4

The Lisbon Agreement for the Protection of Appellations of Origin and their international Registration : Article 1(2); Article 2(1); Article 2(2); Article 5(1); Article 5(3) to (5); Article 5(6); Article 3

Geographical Indications and TRIPS

The negotiations – most difficult – clear division – main proponents – US and EU

In subsequent discussions in TRIPS council – emerges divisions – developed and developing countries

The outcome – current text of TRIPS – a basic standard of protection – a higher standard – for wines and spirits

Higher Standard – not reflect – unique characteristics of wines and spirits – rather compromise reached

This imbalance – demands – additional protection – number of countries – including India, Pakistan, Kenya, Mauritius and Sri Lanka

Geographical Indications and TRIPS (Contd..)

Other Countries – Argentina, Chile and Gautamala argument – extending the additional protection – impose extra financial and administrative burden – other WTO members – outweigh any trade benefit

Such burden – fall heavily – developing countries

Difficult to evaluate the merits – both sets of arguments – of course – reflect differences – perceived economic interest – both developed and developing countries

Requires further negotiations – TRIPS Council – a multilateral register of geographical Indications for Wines

Geographical Indications and TRIPS (Contd..)

The Doha Ministerial Conference – extended – this mandate - a system – includes spirits – the purpose – not clearly defined

Group of Countries differ – some – full international register – all member countries – obliged – protection to geographical indications – meeting the requirements for registration

Others – as a voluntary system of registration – source of information

To date – three different proposals – EU Proposal, The Hungarian Proposal and Joint Proposal by US, Canada, Chile and Japan

Geographical Indications and TRIPS (Contd..)

The EU – a register – effective for all WTO members – irrespective – any geographical indications – included on the register

Any WTO member – wish to challenge any inclusion – notify the country concerned – enter into negotiations – for resolving the disagreement

The Hungarian Proposal – any inclusion successfully challenged – certain specified grounds – that geographical indication – need not to be protected – other WTO members

In both these two proposals – presumption of eligibility – any legal means – in any WTO members

Geographical Indications and TRIPS (Contd..)

By Contrast – the Joint Proposal – US, Canada, Chile and Japan – a system of registration – binding only – those – seeking to participate

Participating members – make use of register – e.g. examining trademark applications – containing /consisting of - a geographical indications

Non- participating members – encouraged to make similar use – register

Negotiations on the register – to be completed

Indian Scenario In respect of any agricultural goods, natural

goods, manufactured goods including food stuff, goods of any handicraft – no specific Law governing geographical indications of such goods

Under TRIP, no country under obligation to extend protection – unless – GI protected in the country of its origin

India required to offer protection imported from other countries

Necessary to have a comprehensive legislation for registration – providing adequate protection for geographical indications; hence the bill

Salient Features Definitions of Several Important Terms Establishment of a GI Registry Maintenance of a Register of GIs in two Parts –

Part A and Part B Registration in specified classes Prohibition of registration of certain GI Compulsory advertisement Registration of Authorized Users Renewal, rectifications and restoration Prohibition of registration of GI as a trade mark; Offences and penalties Effects of registration and rights conferred by it. and many more …..

ACT 48 of 1999 The Geographical Indications of Goods (registration

and Protection) Bill, 1999 was introduced After having passed by both the houses of

Parliament in December 1999 received the assent of the President.

Came on the statute Book as THE GEOGRAPHICAL INDICATIONS OF GOODS

(REGISTRATION AND PROTECTION) ACT, 1999 To be administered by the Controller General of

Patents, Designs and Trademarks – Registrar of Geographical Indications

The Geographical Indications Registry at Chennai

Geographical Indication (Definition) As per sec 2(e): An indication which identifies such goods as

agricultural goods, natural goods or manufactured goods as

Originating or manufactured in the territory of country, or a region or locality in that country

Where a given quality, reputation or other characteristics of such goods

Essentially attributable to its geographical origin And in case where such goods are manufactured

goods One of the activities of either production or of

processing or preparation of goods concerned Takes place in such territory, region or locality as the

case may be

What is a Geographical Indication (GI)? “Geographical Indication” is in

relation to goods Agricultural goods Natural goods Manufactured goods

Goods of Handicraft Industrial goods Foodstuff

Agricultural GoodsAlphanso / Dasheri / Langda Mango

India has peculiar human skills (tools and techniques). These skills have been tried, tested and verified. The traditional processes are still looks better than what we call it modern method. Examples:

Tribals produce very high quality of Tin from Cassiterite mineral in Bastar Dist with traditional processes but better purity.

Jharkhand Iron ore processing upto 99.99% purity by local people with local skill.

Medicinal and Herbal plants in bio-diversity area.

Produced good oil / pest etc.

Natural GoodsMining of Goa Iron Ore

Surface Diamond Mining Tools in Panna

It is traditional diamond picking way by locals

Handicrafts Special Wood Works from NE Region

Special Tools and Material

Handicrafts Special Wood Works from Nagaland

Special Tools and Material

Handicrafts Kauna (Water Reed) Crafts Manipur

Kauna is a type of reed usually grown in the wetlands and marshes.  Imphal valley of Manipur is the centre for kauna crafts. This is often used for making mats, Chairs, cushion, coasters, bags, moorah etc. This product is in great  demand.

Materials and Skills Madhubani painting, Dharbhanga

HandicraftsJaipur blankets

Human Skills

HANDICRAFTSBHADOHI CARPET

Tools and Skills

Food ItemBengal Rasgulla

Materials and Skills

What is a GI (contd.) Indication

Any Name (includes abbreviation) Geographical or Figurative

representation e.g. Logo Any Combination of name and figure

What is a GI (contd.) As originating or Manufactured

in the territory of a country, or region or locality in the territory

What is a GI (contd.) where a given

quality reputation or other characteristic of such goods

Is essentially attributable to its geographical origin

What is a GI (contd.) And in case of manufactured goods One of the activities of

Either production or Of processing Or preparation

Takes place in Such territory Region locality

What is a GI (contd.)

Any name which is not the name of a country, region or locality of that country shall also be considered as a geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality.

Who Can Register?

Any association of persons or producers or any organization or authority established by or under law representing the interest of producers of the concerned

goods

Producer Agricultural goods

Producer Processor Packager

Natural Goods Exploiter

Manufactured Goods Manufacturer

Who Can Apply? Any association of persons, producers,

organizations or authority established by or under law

The applicant – represent the interest of producers

The application – in writing – prescribed form

The application – addressed to the registrar along with prescribed fee.

What does it Imply An indication or appellation of origin Used to identify agricultural, natural or

manufactured goods originating in the said area

Originates from a definite territory in India Should have a special quality or

characteristics or reputation based on the climatic or production characteristics unique to the geographical location

Why GI Protection Cultural Argument

Community Property Matter of National Pride Protection of Reputation, Goodwill Protection of Quality Protection of the ‘Original’ Product Advances in Plant Breeding and

Biotechnology Protection of Traditional Knowledge

Why GI Protection (contd.) Economic Argument

Protection Against Unfair Competition Demand vs.Supply Advantages of Premium: Niche Market Consumer Perception of Genuineness of goods Higher Prices Attracting Foreign Investors, eg partnerships Important Role in Rural Development Employment Generation

Why GI Protection (contd.) International Commerce TRIPS obligation No protection if not protected in

the country of origin

Examples of Possible GIs

in India Basmati Rice Darjeeling Tea Kanchipuram Silk Saree Alphonso Mango Nagpur Orange Kolhapuri Chappal Bikaneri Bhujia Rampur Knife Aligarh Lock etc.

Benefits of Registration Confers legal protection to geographical

Indications in India Prevents unauthorized use of a registered

geographical indications by others Boosts exports of Indian geographical

indications by providing legal protection Promotes economic prosperity of

producers Enables seeking legal protection in other

WTO member countries

Conditions for Registration (Sec 8)

May be registered in respect of any or all of the goods, comprised in such class of goods and in respect of a definite territory of country, or a region or locality

Classification shall as far as possible, conform to the international classification of goods

Any question arising classification of goods or determination of the definite area – to be determine by the Registrar – final decision

Part A and Part B of the Register(sec 7)

The Register – two parts – Part A and Part B

The Particulars relating to the registration of the geographical indications – Part A of the register

The particulars relating to the registration of the authorized users – Part B of the register

Prohibition of Registration (sec 9)

Seven Categories:- Use likely to deceive or cause confusion Use contrary to law in force Comprises or contains scandalous or obscene matter Contains any matter likely to hurt the religious

susceptibilities of any class or section of citizens Otherwise be disentitled to protection in a court Determined to be generic names or indications of

goods or cease to be protected in their country of origin

Literally true as to the territory, region or locality but falsely represent to the persons that goods originate in another territory, region or locality

Application for Registration

Any association of person producers or any organization desirous of registering a GI Apply in writing in the prescribed form Accompanied by the prescribed fee.• The application shall contain A statement as to how GI serves to designate the

goods as originating from the concerned Territory

Class of goods to which GI shall apply The geographical map of the territory, region ..in

which goods originate or being manufactured The particulars regarding GI – comprised of the

words or figurative element or both A statement containing particulars of producers

Application for Registration (Contd..)

A single application for different classes of goods and fee shall be in respect of each such class of goods

Filed in the office of GI Registry within whose territorial limits, that particular territory is situated

Every application – examined May refuse or accept absolutely or subject to

amendments, modifications, conditions as think fit In case of refusal or conditional acceptance, shall

records in writing the grounds and material relied upon in arriving such decision

The Registration Procedure

Filing an application

Examination

Acceptance

Advertised inThe GI Journal

Entered in theGI Register

Registration Certificate issued

ObjectionsOpportunityFor hearing

Refused

Appeal To IPAB

Opposition,If any

Allowed orrefused

AcceptanceOf GI Particulars of regd.

GI entered in Part AOf the registerParticulars of regd.

Authorized user entered In Part B of the register

Who can Apply ? ANY ASSOCIATION OF PERSONS,

PRODUCERS, ORGANISTION OR AUTHORITY ESTABLISHED BY OR UNDER LAW.

THE APPLICANT MUST REPRESENT THE INTEREST OF THE PRODUCERS.

How to Apply ? APPLICATION SHOULD BE MADE IN THE

PRISCRIBED FORM. SHOULD BE SIGNED BY APPLICANT OR

BY HIS AGENT. APPLICATION SHOULD BE IN TRIPLICATE

ALONG WITH STATEMENT OF CASE IN TRIPLICATE AND FIVE ADDITIONAL REPRESENTATION.

Forms and Fees GI-1(A):- GOODS IN SINGLE CLASS.

Rs.5,000/- GI-1(B):- GOODS IN SINGLE CLASS FROM

A CONVENTION COUNTRY. Rs.5,000/- GI-1(C):- GOODS IN DIFFERENT

CLASSES. Rs.5,000/- FOR EACH CLASS.

GI-1(D):- GOODS IN DIFFERENT CLASSES FROM A CONVENTION COUNTRY. Rs.5,000/- FOR EACH CLASS.

Statement of Case A STATEMENT AS TO HOW THE

GEOGRAPHICAL INDICATION SERVES TO DESIGNATE THE GOODS AS ORIGINATING FROM THE CONCERNED GEOGRAPHICAL AREA IN RESPECT OF SPECIFIC QUALITY, REPUTATION OR OTHER CHARACTERISTICS WHICH ARE DUE EXCLUSIVELY OR ESSENTIALLY TO THE GEOGRAPHICAL ENVIRONMENT WITH ITS INHERENT NATURAL AND HUMAN FACTORS AND THE PRODUCTION, PROCESSING OR PREPRATION OF WHICH TAKES PLACE IN SUCH GEOGRAPHICAL AREA.

Statement of Case DESCRIPTION OF GEOGRAPHICAL

AREA OF PRODUCTION. MAP OF THE AREA WITH

LATTITUDE AND LONGITUDE AND ATTESTED BY COMPETENT AUTHORITY.

BRIEF DESCRIPTION OF GOODS.

Statement of Case PROOF OF ORIGIN – A BRIEF HISTORY OF

THE ORIGIN AND EVOLUTION OF THE G.I WITH SUPPORTING DOCUMENTS.

METHOD OF PRODUCTION OF THE GOODS. UNIQUENESS –

UNIQUE GEOGRAPHICAL ENVIRONMENT ISPECIAL HUMAN SKILLS OTHER INHERENT CHARACTERISTICS

ASSOCIATED WITH G.I.

Statement of Case INSPECTION STRUCTURE –

PARTICULARS OF THE MECHANISM TO ASSURE THAT THE STANDARD, QUALITY, INTEGRITY AND CONSISTENCY OR OTHER SPECIAL CHARACTERISTIC IN RESPECT OF THE GOODS ARE MAINTAINED BY THE PRODUCERS.

Details of the Applicant DETAILS OF ALL THE APPLICANT

TOGETHER WITH ADDRESS SHOULD BE GIVEN.

IF THERE IS A LARGE NUMBER OF PRODUCERS A COLLECTIVE REFERANCE TO ALL THE PRODUCERS CAN BE MADE IN THE APPLICATION AND THE G.I, IF REGISTRED, WILL BE INDICATED ACCORDINGLY IN THE REGISTER.

Additional Representation REPRESENTATION OF THE G.I. SPECIFICATION OF GOODS. CLASS OF GOODS. NAME AND ADDRESS OF THE APPLICANT

AND AGENT IF ANY. PERIOD OF USE. SHOULD BE SIGNED BY APPLICANT OR

AGENT.

Translation and Transliteration IF A G.I CONTAINS A WORD OR WORDS IN

CHARACTER OTHER THAN ROMAN OR DEVNAGARI.

- AN ENDORSMENT SHOULD BE MADE IN THE APPLICATION FORM AND ADDITIONAL REPRESENTATION TO THAT EFFECT.

- SUFFICIENT TRANSLATION AND TRANSLITERATION SHOULD BE GIVEN.

Affidavit AN AFFIDAVIT AS TO HOW THE

APPLICANT CLAIM TO REPRESENT THE INTEREST OF THE ASSOCIATION OF PERSONS OR PRODUCERS OR ANY ORGANISATION OR AUTHORITY ESTABLISHED BY OR UNDER ANY LAW SHOULD ACCOMPANY THE APPLICATION.

AFFIDAVIT SHOULD BE PROPERLY STAMPED.

Payment of Fee FEE MAY BE PAID –

1) CASH

2) MONEY ORDER ADDRESSED TO REGISTRAR OF GI CHENNAI.

3) CHEQUE OR DEMAND DRAFT DRAWN ON A SHEDULED BANK IN FAVOUR OF REGISTRAR OF G.I CHENNAI AND PAYABLE AT CHENNAI.

Signing of the Documents APPLICATION SHOULD BE SIGNED BY

AUTHORISED SIGNATORY. BODY CORPORATE – CHIEF EXECUTIVE

OR MANAGING DIRECTOR. ORGANISATION OR AUTHORITY –

SECRETORY OR OTHER PRINCIPAL OFFICER.

PARTNERSHIP – ANY ONE OF THE PARTNERS.

Signing of the Documents CAPACITY OF THE SIGNATORY SHOULD

BE STATED BELOW THE SIGNATURE. NAME OF THE SIGNATORY SHOULD BE

GIVEN IN HINDI OR ENGLISH IN BOLD LETTERS ALONG WITH THE SIGNATURE.

Where to Sent ? THE APPLICATIONS SHOULD BE

ADDRESSED TO :- THE REGISTRAR OF GEOGRAPHICAL

INDICATION GEOGRAPHICAL INDICATIONS REGISTRY IPR OFFICE BUILDING, GST ROAD, GUINDY, CHENNAI – 600 032. E-MAIL : girindia@vsnl.net Web site : girindia.in

Preliminary Scrutiny A SCRUITINY OF THE APPLICATION WILL

BE DONE AFTER THE RECEIPT OF THE APPLICATION AND A REPORT WILL BE SENT TO THE APPLICANT. ONE MONTH TIME WILL BE GIVEN TO REMEDY THE DEFICIENCIES IF ANY.

Consultative Group A CONSULTATIVE GROUP OF A

MAXIMUM OF SEVEN MEMBERS UNDER THE CAHIRMANSHIP OF THE REGISTRAR OF GEOGRAPHICAL INDICATIONS SHALL BE FORMED TO ASCERTAIN THE CORRECTNESS OF THE PARTICULARS FURNISHED IN THE STATEMENT OF CASE BY THE APPLICANT.

Examination Report AN EXAMINATION REPORT SHALL BE

ISSUED TO THE APPLICANT UPON THE RECOMMENDATIONS OF THE CONSULATIVE GROUP.

Advertisement IF THE APPLICATION IS ACCEPTED THE

SAME WILL BE ADVERTISED IN THE GEOGRAPHICAL INDICATIONS JOURNAL, THE OFFICIAL JOURNAL OF THE GEOGRAPHICAL INDICATIONS REGISTRY.

Notice of Opposition IF ANY BODY WANTS TO OPPOSE THE

REGISTRATION OF A GEOGRAPHICAL INDICATION; HE HAS TO FILE THE NOTICE OF OPPOSITION WITHIN THREE MONTHS OR WITHIN SUCH FURTHER PERIOD NOT EXCEEDING ONE MONTH IN THE AGGREGATE FROM THE DATE ON WHICH THE JOURNAL WAS MADE AVAILABLE TO THE PUBLIC.

Registration IF NO NOTICE OF OPPOSITION OR

APPLICATION FOR EXTENSION OF TIME FOR FILING NOTICE OF OPPOSITION IS RECEIVED WITH IN THE THREE MONTHS PERIOD, THE REGISTRAION CERTIFICATE WILL BE ISSUED. REGISTRATION IS VALID FOR 10 YEARS WHICH IS LIABLE TO BE RENEWED AFTER EVERY 10 YEARS.

Registration When an application for registration of a

GI has been accepted and either The application -not opposed and the time for

opposition - expired The application - opposed and the opposition -

decided - favour of applicant The registrar –register the said GI and

authorized users if any mentioned in application; date of making application – date of registration

On registration – issue a certificate sealed with the seal of GI Registry

Where registration – not completed within 12 months, notice to the applicant – treat the application as abandoned

Who is a registered Proprietor ?

Any association of persons, producers, organization or authority established by or under the law – a registered proprietor

Their name should be entered – the Register – as registered proprietor – the Geographical Indication applied for.

Who is an authorized User? (sec 17)

A producer of goods – apply for registration – as an authorized user

Apply in writing in the prescribed form – with prescribed fee

The provision relating to filing; examination; refusal and acceptance, advertisement; opposition; correction and registration shall apply – application and registration of authorized user

Who is a Producer ? A producer – a person dealing with

three categories of goods Agricultural goods including the

production, processing, trading or dealing Natural Goods including exploiting,

trading or dealing Handicrafts or Industrial goods including

making, manufacturing, trading or dealing

Duration of Registration (sec 18)

The registration – for a period of 10 years

Renewal possible – further periods of 10 years each

Not renewed – liable to be removed from the register

Effect of Registration (sec 20)

No person – entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered GI

Though not compulsory, registration affords - legal protection – facilitate an action for infringement

Nothing – deemed to affect the right of action – any person – passing off goods – goods of another person

Rights conferred by Registration (sec 21)

The registered proprietor – authorized users – initiate infringement action

Authorized users – exclusive right – use the Geographical Indication

Rights – subject to the conditions and limitations – which registration is subject

Two or more authorized users – have co-equal rights

Who can use Registered GI ?

Only an authorized user – exclusive right – use the GI – relation to goods – in respect of which - registered

Infringement – When ? (sec 22)

When unauthorized use indicates – such goods originate – a geographical area other than – true place of origin – such goods – in a manner – misleads public as to their GO

When use – results in unfair competition including passing off

When the use of another GI – results in false representation – public – goods originates in a territory – GI relates

Who can Initiate action ?

The registered proprietor Authorized users

Prohibition of Assignment or Transmission etc (sec 24)

Any right to a registered geographical indication – not the subject matter – assignment, transmission, licensing, pledge, mortgage or any such agreement

On the death of an authorized user – his right – devolve on his successor in title

Offences :Falsely applying GI (sec 38)

A person – deemed to falsely apply to goods a GI who – without the assent of authorized user

Apply such GI or a deceptively similar GI to goods or any package containing goods

Uses any package bearing a GI- identical/deceptively similar – GI of authorized user – packaging, filling or wrapping therein any goods other than genuine goods of authorized user of GI

Penalty (sec 40)

Imprisonment of not less than 6 months – extend to 3 years and with fine – not less than Rs. 50,000/- - extend to Rs. 2,00,000/-

Court may award - punishment lesser than minimum punishment – adequate and special reasons – to be mentioned in the judgment.

Enhanced Penalty (sec 41)

For second or subsequent conviction :

Imprisonment not less than 1 year – extend upto 3 years and fine – not less than Rs. 1,00,000/- - extend upto Rs. 2,00,000/-

Discretion vested with court – awarding lesser punishment.

Penalty for representing a GI as Registered (sec 42)

No person – representation W.r.t. a GI - not being a registered GI

– as a registered GI a registered GI – registered – respect

of any good – not in fact registered Imprisonment of a term –may

extend to 3 years or with fine or with both

Penalty for improperly describing a place of business connected with GI Registry (sec 43)

Uses his place of business/ any documents issued by him/ words – lead to belief – his place of business – officially connected with GI Registry – punishable with imprisonment – term – may extend to 2 years or with fine or with both

Penalty for Falsification of Entries in the Register (sec

44) Any person makes or causes to make –

false entry Or a writing falsely purporting to be

copy of an entry Or produces or tenders or cause – in

evidence any writing – knowing the entry or writing – false

Punishable with imprisonment for a term – may extend to 2 years or with fine or with both

Offences by Companies (sec 49)

Where a person – offence – company, the company and every person responsible – conduct of its business is liable

Where accused proves – offence without his knowledge – will not liable

Where proved – offence – consent or connivance – attributable to the neglect- director, manager, secretary or any other officer – deemed to be guilty

Relief (sec 67)

In any suit for infringement or for passing off Injunction and

At the option of the plaintiff Either damages or accounts of profits

Suit for Infringement (sec 66)

No suit for infringement shall be instituted – any court inferior to a district court having jurisdiction to try the suit

II Case Studies of Registered GIs

POCHAMPALLYIKAT

CHANDERI SAREE

KOTA DORIA

ROSE WOOD INLAY OF MYSORE

KANGRA TEA

CHENNA PATTNA TOYS

KULLU SHAWL