Geographical indication
Encyclopedia : G : GE : GEO : Geographical indication
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A geographical indication (sometimes abbreviated to GI) is a name or sign used on certain products or which corresponds to a specific geographical location or origin (eg. a town, region, or country). The use of a GI may act as a certification that the product possesses certain qualities, or enjoys a certain reputation, due to its geographical origin.
History and legal effect
Governments have been protecting trade names and trademarks used in relation to food products identified with a particular region since at least the end of the nineteenth century, using laws against false trade descriptions or passing off, which generally protect against suggestions that a product has a certain origin, quality or association when it does not. In such cases the consumer protection benefit is generally considered to outweigh the limitation on competitive freedoms represented by the grant of a monopoly of use over a geographical indication.
In many countries the protection afforded to geographical indications by law is similar to the protection afforded to trademarks, and in particular, certification marks. Geographical indications law restricts the use of the GI for the purpose of identifying a particular type of product, unless the product or its constitute materials originate from a particular area and/or meet certain standards. Sometimes these laws also stipulate that the product must meet certain quality tests that are administered by an association that owns the exclusive right to the use of the indication. Although a GI is not strictly a type of trademark as it does not serve to exclusively identify a specific commercial enterprise, there are usually prohibitions against registration of a trademark which constitutes a geographical indication. In countries that do not specifically recognize GIs, regional trade associations may implement them in terms of certification marks.
Geographical indications are particularly important in Europe, where there has been a long tradition of associating certain food products with particular regions. Under European Union Law, the protected designation of origin system which came into effect in 1992 regulates the following geographical indications: Protected designation of origin (PDO) and protected geographical indication (PGI) and Traditional Speciality Guaranteed (TSG).
The system used in France from the early part of the twentieth century is known as the appellation d'origine contrôlée (AOC). Items that meet geographical origin and quality standards may be endorsed with a government-issued stamp which acts as official certification of the origins and standards of the product to the consumer. Examples of products that have such 'appellations of origin' include Tequila (spirits), Jaffa (oranges) and Bordeaux (wines).
The consumer-benefit purpose of the monopoly rights granted to the owner of a GI also applies to the trademark monopoly right. Geographical indications have other similarities with trademarks. For example, they must be registered in order to qualify for protection, and they must meet certain conditions in order to qualify for registration. One of the most important conditions that most governments have required before registering a name as a GI is that the name must not already be in widespread use as the generic name for a similar product. Of course, what is considered a very specific term for a well-known local specialty in one country may constitute a generic term or genericized trademark for that type of product. For example, parmigiano cheese in Italy is generically known as parmesan cheese in Australia and the United States.
Like trademarks, geographical indications are regulated locally by each country because conditions of registration such as differences in the generic use of terms vary from country to country. This is especially true of food and beverage names which frequently use geographical terms, but it may also be true of other products such as carpets (eg. 'Shiraz'), handicrafts, flowers and perfumes.
International trade made it important to try to harmonize the different approaches and standards that governments used to register GIs. The first attempts to do so were found in the Paris Convention on trademarks (1883), followed by a much more elaborate provision in the 1958 Lisbon Agreement on the Protection of Appellations of Origin and their Registration. Few countries joined the Lisbon agreement, however: by 1997 there were only 17 members (Algeria, Bulgaria, Burkina Faso, Congo, Cuba, Czech Republic, France, Gabon, Haiti, Hungary, Israel, Italy, Mexico, Portugal, Slovakia, Togo, Tunisia). About 170 geographical indications were registered by Lisbon Agreement members as of 1997.
Provisions of TRIPS
In 1994, when negotiations on the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") were concluded, governments of all WTO member countries (148 countries as of September 2003) had agreed to set certain basic standards for the protection of GIs in all member countries. There are, in effect, two basic obligations on WTO member governments relating to GIs in the TRIPS agreement:
- Article 22 of the TRIPS Agreement says that all governments must provide legal opportunities in their own laws for the owner of a GI registered in that country to prevent the use of marks that mislead the public as to the geographical origin of the good. This includes prevention of use of a geographical name which although literally true "falsely represents" that the product comes from somewhere else.
- Article 23 of the TRIPS Agreement says that all governments must provide the owners of GI the right, under their laws, to prevent the use of a geographical indication identifying wines not originating in the place indicated by the geographical indication. This applies even where the public is not being misled, where there is no unfair competition and where the true origin of the good is indicated or the geographical indication is accompanied by expressions such as "kind", "type", "style", "imitation" or the like. Similar protection must be given to geographical indications identifying spirits.
Article 24 of TRIPS provides a number of exceptions to the protection of geographical indications that are particularly relevant for geographical indications for wines and spirits (Article 23). For example, Members are not obliged to bring a geographical indication under protection where it has become a generic term for describing the product in question. Measures to implement these provisions should not prejudice prior trademark rights that have been acquired in good faith; and, under certain circumstances — including long-established use — continued use of a geographical indication for wines or spirits may be allowed on a scale and nature as before.
In the Doha Development Round of WTO negotiations, launched in December 2002, WTO member governments are negotiating on the creation of a 'multilateral register' of geographical indications.
Some governments participating in the negotiations (especially the European Communities) wish to go further and negotiate the inclusion of GIs on products other than wines and spirits under Article 23 of TRIPS. These governments argue that extending Article 23 will increase the protection of these marks in international trade. This is a controversial proposal, however, that is opposed by other governments including the United States who question the need to extend the stronger protection of Article 23 to other products. They are concerned that Article 23 protection is greater than required, in most cases, to deliver the consumer benefit that is the fundamental objective of GIs laws.
See also
External links
- [TIME magazine article from August, 31 2003 on geographical indications]
- [WIPO page on GIs]
- [Geographic Indications Resource Website]
Indian statutory provisions
GEOGRAPHICAL INDICATIONS
The Agreement contains a general obligation that parties shall provide the legal means for interested parties to prevent the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good. There is no obligation under the Agreement to protect geographical indications which are not protected in their country or origin or which have fall en into disuse in that country.
A new law for the protection of geographical indications, viz. the Geographical Indications of Goods (Registration and the Protection) Act, 1999 has also been passed by the Parliament and notified on 30.12.1999 and the rules made there under notified on 8-3-2002. Geographical indication in relation to goods means an indication, which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the that territories where a given quality reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods. Examples- Basmati Rice, Silk, Scotch, Kanchipuram Silk are well known geographical indication.Application for Registration Section11
Any association of persons or procedure or any organisation or authority established by law representing the interest of the procedures of the concerned goods, who are desirous of registering a geographical indication in relation to such goods shall apply in writing to the registrar in such form and in such manner and accompanied by such fees as may be prescribed for registration given as follows:-
Ø On application for registration of a geographical indication for goods included in one class from a convention under Sec 11(1) in the manner Form GI-1 and prescribed fees of 5000/- Ø On application for the registration of a geographical indication for goods included in one class from a convention country under Section 11(1) in the manner Form GI-1 and prescribed fees of 5000/- Ø On application for registration of a geographical indication for goods in different classes 11(3) in the manner Form GI-1 and prescribed fees of 5000/- for each class.
Where to file an application
Every application shall be filed in office of the Geographical Indication Registry within whose territorial limits, the territory of the country or the region or locality in the country to which the geographical indication relates is situated
Examination of the Application Section 11(5)
The Registrar in such manner as may be prescribed shall examine every application. After that if it is properly made then the Registrar shall give acceptance of registration.
Withdrawal of acceptance Section 12
The registrar may at any time but before the registration be able to withdraw its acceptance after hearing the parties.
Advertisement of application Section 13
Where an application has been accepted for registration of geographical indication whether absolutely or subject to condition or limitation, the Registrar shall as soon as possible cause the application advertise in such a manner as may be prescribe.
Opposition of Registration Section 14
Any person within three month from the date of advertisement or for extension of period of one month shall make an opposition by filing an application before the Registrar in such a manner as given and on payment of such fee as may be prescribed. Form GI-2 and fees 1,000/- for each class. For filing of opposition Form GI-2 and Fees 300 for extension of time for filing of opposition i.e. 1 month.
The Registrar then shall serve a copy of the notice on the application for notice on the application for registration and within two months from the receipt by the applicant of such notice of opposition. The applicant then sends a copy of counter statement and the Registrar shall serve a copy thereof on the person giving notice of opposition. Form GI-2 and fees 1,000/-
Correction and Amendment Section 15
The Registrar may before or after the acceptance of the application for registration under section 11 permit the correction of any error or in connection with the application or permit an amendment of the application.
Registration Section 16
When an application for registration of a geographical indication has been accepted either without opposing by anyone or that the opposition decided in favour of the applicant, the Registrar direct to register the said Geographical Indication and shall issue each of the applicant and authorised user a certificate in such a form as may be prescribed of the registration thereof, sealed with a seal of the Geographical Indications Registry.
There will be two registers called Part A and Part B register will contain particulars of the registered proprietor of particular indication, including the goods for which it is registered and other particular prescribed under the rules. Part B register will consist of particulars of the users of the registered indication as may be prescribed under the rules.
Application for Registration as authorised user Section 17.
Any person claiming to be the producer of the goods in respect of which a geographical indication has been registered under section 6 may apply in writing to the Registrar in the manner prescribed for registering him as an authorised user.
Application under this shall accompanied with all the essential document required by the Registrar to determine as to whether that person is producer of the goods. Form GI-3 and fees 500/-The provision regarding- a) filing and examination of the application; b) refusal and acceptance of the application; c) withdrawal of acceptance of application; d) advertisement of application e) opposition of registration f) correction or error in an amendment of application; and g) registration. Shall apply in the same manner as they apply for application for registration under section 16.
Duration of the Registration Section 18.
The registration for a geographical indication shall be for a period of Ten years but may be renewed from time to time. The registration of a authorised user shall be for a period of ten years. The application for renewal of the registration shall be made by registered proprietor or registered user Form GI-3 and fees 1000/-
Sr. No. Content Registration of a Geographical Indication by Indian applicant Convention application by an applicant from convention country. Application for goods falling in different classes by an Indian applicant Application for registration of goods falling in different classes from a convention country
1. Section 11(1) Rule 23(2) 11(1),84(1), Rule 23(3) 11 (3) Rule 23(5). 11(3),84(1), Rule 23(4) 2. Who may file an application -Association of a person -Producers-Organisation-Authority establish by law -Do- -Do- -Do-3. Particulars of application i) How the indication serves to designate the goods as a Geographical Indication?ii) The Class of goods; iii)The territory ;iv)The particulars of appearancev) Particulars of producers;(vi)An affidavit of how the applicant claim to represent the interest;(vii)The standard bench mark or other characteristics of the geographical indication;(viii) The particulars of special characteristics; to the application; (ix) Textual description of the proposed boundary;(x) The growth attributes in relation to the G.I. pertinent Along withi) to xiv) applicant from a convention country u/s 84, a certificate by the registry or competent authority of GIO of convention country. Along withi) to xiv)Applicant must have to establish a continuous valid basis for the convention application date in all classes. xi) Certified copies of the map of the territoryxii) Special human skill involved, if any;xiii) Number of producers;xiv) Particulars of Inspection structures, if any, to regulate the use of geographical indication.It shall be registered in PART – A of the Register.
4. Fees 5,000/- 5,000/- 5,000/- 5,000/- 5. Form GI-1 GI-1 GI-1 GI-16. Place of filing of the application Geographical Indication Registry Office within whose territorial jurisdiction the principal place of the business is situate or his address of service is situate
7. Examination of the Application U/s 11 (5) Upon Receipt Registrar shall examine and accompanying Statement of Case Required Rule 32(1). It shall ordinarily be finalized within 3 Month. Thereupon, the Registrar shall issue Examination Report. 8. Acceptance and Refusal of application U/s 11 (6) Registrar may accept or refuse the application after examination with such amendment, modification, condition or limitation.9. Withdrawal of AcceptanceU/s 12. In case if the application has been accepted in error or in the given situation it should not be registered then it shall be withdrawn. 10. Correction Amendment of application u/s 15. Form GI-5Fees- 300/- Registrar is empowered to permit the correction of any error in the application or for amendment of application.Amendment to divide an application shall also made under section 15. 11. Acceptance and Advertisement U/s 13 If the applicant satisfied all the conditions then the application shall be advertise in Geographical Indication Journal. 12. Opposition u/s14.Form-GI-2Fees –1,000/- Within three (3) months from the date of advertisement before the Registrar opposition if any has to be filed. 1.Notice of claim to be given 2. Counter claim GI-2 3. Evidence 4.Hearing and decision 13. Registration Where an application has been advertised as accepted and has not been opposed or if opposed it has been decided in favour of the applicant. Then the GI will be registered. Registrar shall then issue Certificate of Registration.
14. Application for Renewal of u/s 18(1)Form – GI-4Fees 3000/- The registration of the Geographical Indication is for the period of 10 years but it may be renewed from time to time by making an application in prescribed form .This renewal shall be granted for next 10 years.15. Application for Restoration of the GI u/s 18(5)From GI-4Fees 3,500/- along with renewal fees. Application for restoration and renewal after shall be made after six month and within one year from the expiration of the last registration of the Geographical Indication. 16. Application for the registration of an Authorised user of a registered GI.U/s17(1)Form GI-3Fees –500/- An application to the Registrar for the registration as an authorised user shall be made by the registered user of the registered user.It shall be registered in Part B of the register.
Infringement of Geographical Indication of Goods Mark
Unregistered Geographical Indication Section 20(1):- No action for infringement shall be filed against unregistered Geographical Indication.
Section 20 (2) :-
Passing off an action can be brought even though the Geographical indication is unregistered.Registered Geographical Indication Section 22 (1): - By any person not being authorised user if – Ø Uses such GI by any means in the designations or representation of the goods, which misleads the public as to the geographical origin of such goods. Ø Uses any geographical indication in such manner, which constitutes an act of unfair competition including passing off in respect of registered GI. Section 22(3): - Any person who is not an authorised user of the GI registered under this Act in respect of goods or any class or classes of goods, uses any other GI to Such goods or classes of goods not originating in the place indicated by such other GI.
Where it is Deceptively Similar under Section 2(c) i.e. causing confusion.
Deference between GI and Trademark
Sr. No. Geographical Indication Trade Mark
1. Geographical indication is an indication used to identify goods having special characteristics originating from a definite geographical territory. A trademark is a sign, which is used in the course of trade, and it distinguishes goods or services of one enterprise from those of other enterprises.
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