CENTRAL UNIVERSITY OF SOUTH

BIHAR
GAYA

SCHOOL OF LAW & GOVERNANCE

Assignment
Other Forms Of IPR
TOPIC: Geographical Indication :An analysis

Submitted to: Submitted By- Gargi Upadhyaya

Dr. Pallavi Singh Course: B.A. LL.b(Hons)
Enrollment no.:CUSB1512135018

1
Table of Contents
Acknowledgement……………………….………………………………………………………..……3
Research Methodology…………………………………………………………………………..……..4

Abstract……………………..…………………………………………………………………..………5

Defining Geographical Indications....................................................................................................6

A. Elements and Features of GIs under the TRIPS........................................................................6
B. Economic and Cultural bases for Protection of GI....................................................................9
A. GIs Generally: Misleading the Public and Unfair Competition................................................10
B. Geographical Indications of Wine and Spirits: Enhanced Protection.......................................11
Need for Protection of Geographical Indication (GI).......................................................................11
Application for GI...........................................................................................................................12
Qualifications for GI........................................................................................................................12
Registration for GI...........................................................................................................................12
Suit and Relief for Infringement......................................................................................................14
Penalty for Offences........................................................................................................................15
Defenses against Infringement of Geographical Indications................................................................16
Criminal Remedies..........................................................................................................................16
Civil Remedies................................................................................................................................17
Case-Laws...........................................................................................................................................17
PochampalliIkat Case......................................................................................................................17
Tea Board, India vs. I.T.C. Limited.................................................................................................18
CONCLUSION...................................................................................................................................20
BIBLIOGRAPHY…………………………………………………………………………………..…21

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 ACKNOWLEDGEMENT
It is a great pleasure for me to present the final draft of the project topic. I am very much
obliged to my revered teacher Dr. Pallavi Singh of Central University of South Bihar,
Gaya who has given me a task to complete the project work. I am very much helped by
him regarding the formation of this final project.

I express my heartfelt indebtedness to Dr. Pallavi Singh who showed me the path and
helped me to understand the project topic. It was not possible for me to make the final
project if I was not being helped by him. He acted as my mentor and also a guide to help
me to understand the whole of the provision and provided me with the proper synopsis of
the project work.

I would like to express my gratitude towards my parents for their kind co-operation and
encouragement which help me in completion of this final draft.

My thanks and appreciations also go to my colleague in developing the project and

people who have willingly helped me out with their abilities.

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Research Methodology

Aims and Objectives:

The aim of the project is to present a detailed study of the topic “Geographical Indication
:An analysis” forming a concrete informative capsule of the same with an insight into its
relevance in the Indian Society.

Research Plan
The researchers have followed Doctrinal method.

Scope and Limitations:

In this project the researcher has tried to include different aspects pertaining to the concept of
Obtaining information, and basics of Procedure in Right to Information Act and many others
directional topics of that.
.
Sources of Data:
The following secondary sources of data have been used in the project-
 Case Study

 Websites

 Case Laws

 Books

Method of Writing and Mode of Citation:

The method of writing followed in the course of this research project is primarily analytical.
The researcher has followed Uniform method of citation throughout the course of this
research project.

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Abstract
Over the recent past, Geographical Indications (GI) have emerged as a significant form of
Intellectual Property Rights (IPR) issue in the Indian context. GI helps a community of
producers to differentiate their products from competing products in the market and build
goodwill around their products, often fetching a premium price. From consumer’s point of
view, GIs act as a signalling device, which helps them identify genuine quality-products and
also protect them against counterfeits. In view of their commercial potential, adequate legal
protection of GIs becomes necessary to prevent their misappropriation. Although India has
had in its possession a considerable number of products that could qualify for legal protection
as geographical designators, the initiatives to exploit this potential begun only recently when
the country established as sui generis system of GI protection with the enactment of ‘the
Geographical Indications of Goods (Registration and Protection) Act, 1999, coupled with the
‘Geographical Indications of Goods (Registration and Protection) Rules, 2002. The Act,
which became operational with effect from 15 September 2003, was drafted as part of the
exercise in the country to set in place national IPR laws as much in compliance with India’s
obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights
(TRIPs) of the World Trade Organisation (WTO) so as to take advantage of the ‘minimum’
standards of GI protection that the TRIPs sets out for the WTO members to comply with in
their respective national legislations.

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Introduction

A geographical indication is an indication or a sign which specifies the geographical origin of

the product and links it with the essential qualities that are present in the product due to that
place of the origin. It is mainly used to identify the agricultural, handicraft, manufacturing
goods from the particular territory which has developed a good will in the market due to the
special characteristics like temperature, humidity, soil etc. associated with the territory that
are unique, eg. Darjeeling tea. The geographical indication is generally owned by a
community which belongs to that particular location. A geographical indication can be a
mark defined by the words or numbers or may be combination of both. Goods or packages
used to indicate the place of origin of the goods. In international transaction, marks of origin
include marks of the country of origin and geographical indications.
Under the TRIPS Agreement, countries are under no obligation to extend protection to a
particular geographical indication unless that geographical indication is protected in the
country of its origin. India signed TRIPS agreement in 1995, in order to comply with the
TRIPS agreements India started giving protection for Geographical Indication from 15th
September 2003.

Defining Geographical Indications

‘Geographical indication is an identifier which associates a product to a particular region.‟ 1
For example, „Sarawak pepper‟ of Malaysia and „Thung Kula Rong-Hai Thai Hom Mali
Rice‟ of Thailand are GIs. The TRIPS defines GIs in the following terms: “...indications
which identify a good as originating in the territory of a Member, or a region or locality in
that territory, where a given quality, reputation or other characteristic of the good is
essentially attributable to its geographical origin.”2 In other words, GIs are badges of origin
that serve to identify the geographical source of goods, which grants a specifically
identifiable attribute to the goods. Thus, a „given quality‟, „reputation‟ or „other
characteristics‟ of a good can each be a sufficient condition, ceterius paribus, for protection
as a geographical indication.

1
WTO, Background and the Current Situation: Geographical Indications in General (Nov. 2008),
www.wto.org/english/tratop_e/trips_e/gi_background_e.htm.
2
TRIPS Agreement art. 22.1, supra note 2, at 1205.

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A. Elements and Features of GIs under the TRIPS

The unique characteristic features of GIs under Article 22 of the TRIPS Agreement are as
follows:

1. Inclusive of “appellations of origin” and “indications of source”: “Hai Hau Rice”; “Phu
Quoc Fish Sauce” The definition of GIs in TRIPS is broader in its scope than „appellations of
origin‟ but narrow as compared to “indications of source.” To illustrate, GIs may indicate any
of the aforementioned attributes in “goods” by means of words, phrases, symbols and the
like. However, “appellations of origin” are restricted to the geographical name of the
originating territory and relate only to the “quality” and “characteristics” of “products”. For
example, „Hai Hau Rice‟ and “Phu Quoc Fish Sauce‟ are appellations of origin from
Vietnam. On the other hand, “indications of source” extends to an indication referring
directly or indirectly to a country of origin and does not require the conditionalities as above. 3
In other words, an indication of source on a given product is merely subject to the condition
that this product originates from the place designated. 4 There is no quality or characteristic
linkage. Nevertheless, the point remains that these two traditional concepts were instrumental
in fashioning the scope of geographical indications under the TRIPS.

2. Expressing Direct and Indirect Indications: “Sabah Seaweed” and 'Longjing Tea' :-Since,
GIs are “indications which seek to identify” the source, they can be both direct, i.e., the
geographical names per se, and indirect, i.e., indications expressed via names or symbols. 5 An
example of the former would be “Sabah seaweed” from Malaysia and the Thai “Chaiya
salted eggs” where both Sabah and Chaiya are the geographical names directly referring to
the products. On the other hand, Longjing tea also known as Dragon Well tea, is a variety of
roasted green tea from Hangzhou, Zhejiang Province in China but the name by itself does not
provide any geographical reference.

3. Comparison with trademarks: Badge of Origin but signifying Collective Manufacturers

Though the critical function of both is to serve as a „badge of origin‟, a trademark only
identifies the manufacturer, not the geographical source. Article 15 of the TRIPS stipulates an

3
WIPO, Geographical Indications: Historical Background, Nature of Rights, Existing Systems for Protection
and Obtaining Protection in Other Countries, at 4, SCT/8/4 (2002).
4
Priyanka Sardana and Vijay Sardan, Geographical Indications: Natural Competitive Advantage, at
http://www.pfionline.com/index.php/columns/ipr/122-geographical-indications-natural-competitive-advantage.
5
Carlos M. Correa, Protection of Geographical Indications in CARICOM Countries, at
http://www.crnm.org/documents/studies/Geographical%20Indications%20-%20Correa.pdf.

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illustrative list of signs, which may serve as trademarks such as „words including personal
names, letters, numerals, figurative elements and combination of colours.‟ When read in
conjunction with Art. 1(2) of the Paris Convention, it seems that though the geographical
name of a region may serve to be a part of the trademark, marks which „consist exclusively
of signs or indications, which may serve, in trade, to designate the...place of origin‟ have
been explicitly refused protection.6 This is a way to prevent the registration of geographical
names, which do not signify a source or have not developed a secondary meaning in the
minds of the consumers. For example, Section 7(2) of the Thai Trademark Act B.E. 2534
stipulates that a mark shall be deemed distinctive if it does not have any direct reference to
the character or quality of the goods and it has not been prescribed as a GI by the Minister of
Commerce.

Article 22(3) of TRIPS further posits a connection between trademarks and GIs; it is seen as a
logical complement to Article 22(2) (a) by stretching forth the protection of GIs to the area of
trademarks. It recognises a positive obligation on member countries to refuse or invalidate the
registration of a trademark, which consists or contains a GI, which has the effect of
misleading the public as to the true place of origin.

4. GIs as Intellectual Property: Does it fit the bill? :- Under the TRIPS, GIs form a subset of
the corpus of intellectual property rights, but, as the foregoing analyses of the constituent
elements indicates, the rights protected appear to belong to a very „unique public sphere‟
rather than in private. Thus, the beneficiary in the case of GIs is almost often an association
or group of manufacturers in the particular field rather than an individual producer. Further,
though other intellectual property branches are defined by the spatial and temporal factors,
GIs appear to be protected by uninhibited rights to exclude others perpetually. Thus, while
patents, copyright, trade marks and design rights have specific terms of protection, GIS are
not restricted by any such conditions. It is manifest that GIs are distinguishable from the
remaining branches of intellectual property like patents, copyright and trademarks. However,
even though the rationale for the incorporation of GIs into TRIPS remains hazy, „this right to
exclude use on non-GI products is sanctioned by the international community on general
policy grounds “to individual geographical areas so that they can sustain their products'
quality and local investments.”

6
Paris Convention art. 1(2),

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B. Economic and Cultural bases for Protection of GI
The raison detre for the protection of GI have roots in economic and cultural justifications.
As aptly stated by CARROS, “GIs serve as a tool for securing consumers” loyalty by
establishing the link between products attributes and the geographical origin. In economic
terms, a geographical indication essentially permits producers‟ to increase rents based on
product differentiation, that is, a form of monopolistic competition prevalent in the modern
economy where there are elements of both monopoly and perfect competition.”

Secondly, the consumer’s mental association between the indication, the place, the goods, the
qualities or characteristics of the goods, and the producers elevates a geographic sign to the
level of a “distinctive source identifier” in that it functions to distinguish one producing
source from another producing source when used on particular goods. Thus, as pointed out by
WIPO, false use of geographical indications by unauthorised parties is detrimental to
consumers and legitimate producers. While the consumers are induced with the belief that
they are buying goods of a particular attribute, they are in effect duped with an imitation. This
harms the business and reputation of the manufacturers.

Thirdly, the significance of protecting GIs is also furnished by the cultural element. The
uniqueness vests in „that the producer or manufacturer of the product is a collective, a group
that has some unifying inherent characteristic, trait or quality that it is trying to protect.
Likewise, protection of geographical indications considers the traditions and number of
generations associated with production of the food or beverage. Following such a notion,
Daphne Zografos, a leading commentator on the value and importance of Geographical
Indications in economic growth, argues that traditional cultural expressions in the form of
handicrafts may also be recognised under the ambit of GIs due to the symbolic connection
between the artisanal product and the influencing culture.

Having examined the ambit of GIs under Article 22(3), we may now turn to an examination
of the current standards of protection under the Agreement.

Scope of Protection against Infringement

A unique feature of GIs under the Agreement is that there is a distinction between the levels
of protection accorded to goods generally and to “wines and spirits.” As a starting point, there
is a minimum standard of protection which applies to all GIs regardless of the nature and type
of goods. It is left to the individual member countries of the WTO to determine the most

9
appropriate method of protection, the basic premise being that a GI should not mislead the
public as to its true origin. A higher level of protection is conferred on wines and spirits
generally and an extra-additional protection for wine GIs. The use of GIs identifying wines or
spirits not originating in the place indicated by the GI is prohibited, even where the true
origin of the wines and spirits is indicated, or the GI is accompanied by expressions such as
kind, type, style, imitation or the like. It is not a necessary to show that the consumers might
be misled or the use constitutes unfair competition. In respect of wines, TRIPS provides for
further protection for each GI for wines in the case of homonymous indications and
establishment of a multilateral registry for GIs for wines. Such a hierarchical system of
protection is evidence of the tussle between the “old world countries” who wanted higher
standards for all GIs and the “new world countries” who were not agreeable to the
proposition as the latter did not have any significant GIs to protect and therefore was not
ready to accept enhanced minimum standards.7

A. GIs Generally: Misleading the Public and Unfair Competition

Article 22 (2) provides a “negative right” of prevention rather than a “positive right” to use
the GI as is the case in trademark protection. The explication de texte may be the lack of any
registration system at the multilateral level. Member countries are empowered to envisage
legal means to allow interested parties to prevent (i) any use of a GI to mislead the public as
to the origin of the goods; and (ii) any use, which would be an act of unfair competition as
defined under Article 10 bis of the Paris Convention.

It is manifest that the provision did not purport to create an exclusive substantive right but left
it to the discretion of the member countries to implement in their national legislations. As a
result, countries provide the protection under different legal regimes, either operating alone or
in conjunction with each other, for example, laws under unfair competition, consumer
protection, protection of certification marks, sui generis laws ie, the Geographical Indications
of Goods (Registration and Protection) Act of 1999 provides for registration and protection of
GIs pertaining to India.

In the context of public confusion and unfair competition, TRIPS envisages safeguard
mechanisms in Articles 22(4) and 24(8). Consequently, the use of homonymous GIs is
prohibited even „though literally true as to the territory, region or locality in which the goods
originate, they falsely represent to the public that the goods originate in another territory.
7
Kasturi Das, SocioEconomic Implications of Protecting Geographical Indications in India, at
http://wtocentre.iift.ac.in/Papers/GI_Paper_CWS_August%2009_Revised.pdf.

10
Similarly, Article 24 (8) applies where a person’s name is similar to the geographical
indication in a manner, which has the effect of misleading the public.

Thus, the decisive factor in the protection of GIs is whether the public is being misled or
unfair competition is caused. This leads to different protection for the same GI in different
countries. For example, basmati rice and Parmesan cheese are registered GIs in Europe, but
are considered generic terms in the US.8

B. Geographical Indications of Wine and Spirits: Enhanced Protection

Article 23 (1), on the other hand, envisages a higher level of protection for wines and spirits
and prohibits the incorrect use of geographical indications and additionally prohibits the use
of a corrective‟ for example, like, “style” etc. Accordingly, it provides:

“Each Member shall provide the legal means for interested parties to prevent use of the
geographical indication identifying wines for wines not originating in the place indicated by
the geographical indication in question, even where the true origin of the goods is indicated
or the geographical indication is used in translation or accompanied by expressions such as
“kind”, “type”, “style”, “imitation” or the like.”9

Thus, it is a violation of Article 23 (1) if a wine is labelled as „Bordeaux wine produced in

Hong Kong. It is manifest that the intention is to fashion a protection, which is akin to the
dilution-style protection for trademarks that is absent in the case of other GIs. This
differential treatment has attracted the wrath of critics for untenable systemic biases against
equally qualified producers of other goods.

Need for Protection of Geographical Indication (GI)

Registering Geographical Indication is always beneficial as the owner can prevent others
from unauthorized usage or from commercializing of the registered product. However the
registration of GI is not mandatory in India, unregistered GI are protected under passing off
cases, but it’s always advisable to register the geographical origin as no further proof is
required.

8
Rajiv Seth, Geographical Indications for the Skeptical Europe, at
http://www.delhiwineclub.com/guest_column/Geographical_Indications.aspx?serialwise=966.
9
TRIPS Agreement art. 23.1.

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Application for GI
Geographical indication is generally owned by a community. Any organization or association
of people established under law can apply for geographical indication in prescribed format
indicating the interest of the producers of the concern goods.

Qualifications for GI
The following are the geographical indications that cannot be registered in India:10
1. Things which are determined to be generic names or indications of goods and are,
therefore, not or ceased to be protected in their country of origin, or which have fallen
into disuse in that country
2. Things which comprise or contain any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India
3. Things which would otherwise be disentitled to protection in a court
4. The use of which would be likely to deceive or cause confusion
5. The use of which would be contrary to any law for the time being in force
6. Things which comprise or contain scandalous or obscene matter
7. Things which although literally true as to the territory, region or locality in which the
goods originate, but falsely represent to the persons that the goods originate in another
territory, region or locality, as the case may be.

Registration for GI
An application shall be made in the prescribed format with the Form GI-1.

1. A registration of GI for any product shall be included in any one class; or

2. An application to register a GI for a specification of goods included in any class from
a convention country; or
3. A single application is required for the registration of the GI from any class; or

GI registry is located in Chennai in India, applicant must file an application at the Chennai
office. Along with it applicant must fulfill the various requirements and criteria defined in the
GI rules.11

10
Section 9
11
Section 11, 16

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The Legal framework in India

As a party to the TRIPS Agreement, India is required to protect GI and hence in order to
fulfill that obligation, the Geographical Indications of Goods (Registration and Protection)
Act, 1999 was enacted. It may also be noted that India felt that some of its products have high
potential to benefit from GI registration and it was necessary to put in place a comprehensive
legislation for registration and for providing adequate protection for GI. For unless a
geographical indication is protected in the country of its origin, there is no requirement under
the TRIPS Agreement for other countries to extend reciprocal protection. The main benefits
which accrue from registration under the Act are as follows:

 Confers legal protection to GI in India;

 Prevents unauthorized use of a registered geographical indication by others;
 Enables seeking legal protection in other WTO member countries.

From the perspective of a developing country, one of the best features of the Indian Act is the
comprehensive definition given of GI, whereby agricultural, natural and manufactured goods
all come under the ambit of GI. This is especially important in the Indian context considering
the wide variety of goods that is deserving of protection ranging from agricultural products
like Basmati, Darjeeling tea to manufactured goods such as Banrasi sari, Kolhapure chappals,
Chanderi silk etc. Section 11 of the Act provides that any association of persons, producers,
organization or authority established by or under the law can apply for registration of a GI.
Another important aspect of the Act is the possibility of protecting a GI indefinitely by
renewing the registration when it expires after a period of ten years. In the domestic context,
the Indian Act has tried to extend the additional protection reserved for wines and spirits
mandated by TRIPS to include goods of national interest on a case to case basis. Section 22.2
of the Act endows the Central Government with the authority to give additional protection to
certain goods or classes of goods. This is especially important in the developing country
context considering that we may not have wines and spirits to protect like the West but other
exotic niche products like teas, rice etc.

The Act, by prohibiting the registration of a GI as a trademark, tries to prevent appropriation

of a public property in the nature of a geographical indication by an individual as a
trademark, leading to confusion in the market. 12 Also, according to the Act, a GI cannot be

12
Section 25

13
assigned or transmitted.13 The Act recognizes that a GI is a public property belonging to the
producers of the goods concerned; as such it cannot be the subject matter of assignment,
transmission, licensing, pledge, mortgage or any contract for transferring the ownership or
possession.

Infringement of Registered Geographical Indications and Appeals

A registered geographical indication is infringed by a person who, not being an authorised
user thereof uses such geographical indication by any means in the designations or
presentation of goods that indicates or suggests that such goods originate in a geographical
area other than the true place of origin of such goods in a manner which misleads the persons
as to the geographical origin of such goods. Hence the infringement of registered G.I. occurs
if a person:
 Uses the G.I. on the goods or suggests that such goods originate in a geographical
area other than the true place of origin of such goods in a manner which misleads the
public; or
 Uses the G.I. in a manner that constitutes an act of unfair competition; or
 Uses another G.I. to the goods in a manner, which falsely represents to the public that
the goods originate in the territory, region or locality in respect of which such
registered G.I. relates.14

Suit and Relief for Infringement

A suit for infringement of a registered G.I. is to be instituted in a District Court having
jurisdiction to try the suit. The court can grant to the plaintiff relief in the form of injunction
and, at the option of the plaintiff, either damages or account of profits together with any order
for destruction or erasure of infringing labels and indications, if necessary.
However, the court shall not grant relief by way of damages or account of profits, if the
defendant satisfies the court that he was unaware and had no reasonable ground to believe
that the GI complained of was on the register in the name of plaintiff and that when he
became aware of the existence and the nature of the plaintiff’s right in the geographical
indications, he forthwith ceased to use it.
Appeals against an order or decision of the Registrar or the rules framed under the Act lie to
the Appellate Board, established under the Trade Mark Act, 1999. The aggrieved person may
prefer an appeal to the Appellate Board normally within three months from the date on which

13
Section 24
14
Section 22

14
the order or decision is communicated. After this period, no appeal is admitted. A person will
be considered to have committed offence under the G.I. Act in the following circumstances:
i) falsely applying geographical indication;
ii) falsifying a geographical indication.
In a prosecution for falsifying or falsely applying a geographical indication to goods, the
burden of proving the assent of the proprietor lies with the accused.

Penalty for Offences

Under Section 67 of the GI Act, the civil remedies include injunctions (ex parte or any other
interlocutory order) as well as damages or an account of profits, at the option of the plaintiff.
This may be coupled with an order for the delivery-up of the infringing labels and indications
for their destruction or erasure. In 2006, the Delhi High Court in the case of the Scotch
Whisky Association v. Golden Bottling Limited,15 granted the plaintiff a permanent injunction
as well as damages of Rs. 5,00,000/- under Sec. 67 of the GI Act. It also asked the defendant
to bear the expenses of the litigation which was Rs. 3,10,000/-. In this case, Scotch Whisky
had a GI tag and the plaintiffs contended that the defendants were infringing on their GI tag
by selling its whisky under the name ‘Red Scot’. The Court held that the plaintiffs intellectual
property rights had been infringed upon and granted them relief under the GI Act.
Sections 39 and 40 of the GI Act, state that the penalty for applying false geographical
indications and for selling goods to which false geographical indications are applied is
imprisonment which may be between six months to three years and fine which may be
between fifty thousand to two lakh rupees.
Moreover, there are other remedies available to the rights holder under the Intellectual
Property Rights (Imported Goods) Enforcement Rules, 2007. 16 These rules recognize
geographical indication as intellectual property and the GI Act as intellectual property laws.
Under these rules, the rights holder can record its registered GI with the Customs authorities.
Once the procedure under these guidelines are complied, the Customs authorities have the
power to seize imported goods at the border, if there is prima facie evidence or reasonable
grounds to suspect that they are infringing on the geographical indication of the rights holder,
without obtaining any orders from the Court.

15
Scotch Whisky Association v. Golden Bottling Limited , 2006 (32) PTC 656 Del.

16
http://www.wipo.int/wipolex/en/text.jsp?file_id=201652

15
Defenses against Infringement of Geographical Indications
The remedies available for protection of geographical indications may broadly be classified
into Criminal remedies & Civil remedies.

Criminal Remedies
The Geographical Indications of Goods (Registration and Protection) Act, 1999 contains
penal provision for violation of various provisions relating to geographical indications given
below:

(i) Falsifying and falsely applying geographical indications to goods.17

(ii) Selling goods to which false geographical indications is applied.18
(iii) Falsely representing a geographical indication as registered.19
(iv) Improperly describing a place of business as connected with the geographical indications
registry.

(v) Falsification of entries in the register.

The punishment prescribed for the aforesaid offences varies from six months to three years
imprisonment and a fine of not less than Rupees fifty thousand but may extend to Rupees two
lakh. However, the court for adequate and special reasons in writing may impose lesser
punishment The Act20 also prescribes for enhanced penalty for second or subsequent
conviction.
The Act 21 empowers the Court to direct the forfeiture to Government of all the goods and
things by means of or in relation to which certain offences mentioned therein have been
committed. The Act empowers the Deputy Superintendent of Police to take cognizance of
geographical indications offences and may search and seize things and articles involved
therein

Civil Remedies
The suit for infringement has to be filed in court not inferior to that of a district court having
jurisdiction. In any suit for infringement of geographical indications the defendant pleads that

17
Sections 38 and 39
18
Section 40
19
Section 42
20
Section 41
21
Section 46

16
registration of the geographical indications relating to plaintiff is invalid, the court trying the
suit shall:

(i) if any proceedings for rectification of the register to the geographical indications relating
to plaintiff or defendant are pending before the Registrar or the Appellate Board, stay the suit
pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the
invalidity of the registration of the geographical indications relating to plaintiff or defendant
isprima facie tenable, raise an issue regarding the same and adjourn the case for a period of
three months from the date of the framing of the issue in order to enable the party concerned
to apply to the Appellate Board for rectification of the register.22

Case-Laws
The Indian judiciary has played a significant role, particularly in the absence of any enforced
legislation, in protecting GIs. They have entertained petitions in cases of infringement of GIs
that misleads the consumer as to the place of origin or constitutes unfair competition. India
has  also taken  legislative  measures  by  enacting  the  Geographical  Indications  of  Goods
(Registration and Protection) Act,  1999  along with  the Geographical  Indications of Goods
(Registration and Protection) Rules, 2002 which on implementation would go a long way to
protect GIs and provide a model for other countries to follow.23

PochampalliIkat Case24
Pochampally is a small town in Nalgonda district of Andhra Pradesh, a handloom cluster is
known for its very unique Ikat design for centuries. It has about 5000 weavers who weave the
handloom with traditional design called Ikat. With the objective of converting this uniqueness
into commercial value, the Textiles Committee launched a cluster initiative under its Cluster
Development Programme to facilitate the local associations “Pochampally Handloom
Weavers’ Co Op. Society Ltd”, an autonomous society registered under the society Act 1860
and “Pochampally Handloom Tie & Dye Silk Sarees Manufactures Association” an
association established under the law are the two bodies that are responsible for production
and marketing of Pochampally Ikat.
22
Sections 57 and 66
23
Suresh C. Srivastava, “Geographical Indications and Legal Framework in India,” Economic and Political
Weekly, September 20, 2003.
24
  http://www.aiacaonline.org/pdf/policy-briefs-geographical-indication-pochampally-ikat.pdf,visied

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The Directorate (Handlooms & Textiles) Government of Andhra Pradesh, Weavers Service
Centre (WSC), APTDC, NABARD have been involved in the process of GI registration. The
services of APTDC were used for filling before GI registry and NABARD has provided
funds under its DRIP to cover the costs involved. The famous Pochampally ikat tie-and-dye
sari has won Intellectual Property Rights protection, more than a year after its first applied. It
is the first traditional Indian craft to receive this status of geographical branding. The design
won protection in the Geographical Indications category. This will protect the Pochampally
handloom sari from unfair competition and counterfeit. An estimated one hundred thousand
weavers in Andhra Pradesh may benefit from the granting of Intellectual Property Rights to
the traditional tie-and-dye fabric, which has seen falling demand due to competition from
cheaper fabrics copying from their design.
There was a law suit filed under GI Act on infringement of GI of POCHAMPALLI IKAT.  In
this case plaintiffs are manufacturing POCHAMPALLI IKAT fabric made of natural
materials such as cotton or silk or a combination of both, having designs that are evocative of
the diffused diamond or chowka design. But the defendant was selling some sarees by using
false GI HYCO POCHAMPALLI. To protect their legal rights the plaintiffs filed a suit
against defendants’ for injunction restraining infringement of GI, passing off, unfair,
competition.  After hearing contentions from both the parties the court said ‘ the adoption of
the mark HYCO POCHAMPALLI by the defendant is blatantly dishonest
and malafide attempt to derive unfair advantage by creating the impression that the
Defendants products have some connection, nexus, association, affiliation with or
endorsement by the plaintiffs. Eventually, the verdict was not delivered and the case was
settled out of court after the errant party pleaded innocence on the account of his ignorance
about the Act. Finally the suit was decreed in favour of plaintiff.

Tea Board, India vs. I.T.C. Limited25

The dispute is on “DARJEELING” between Tea Board of India and ITC Limited. The Tea
Board asserts exclusivity over “Darjeeling” and ITC maintains that there is more to
“Darjeeling” than the tea that is grown there. Tea Board, India (registered proprietor of the GI
“Darjeeling”) took ITC Limited to court for the use of the mark ‘Darjeeling’ for its Lounge at
the hotel in Calcutta. Under the application for interlocutory injunction, concerned with the
existence of a prima facie case of the Tea Board against ITC based on the Trade Marks Act,
1999 (TM Act) and The Geographical Indications of Goods (Registration & Protection Act,

25
http://spicyipindia.blogspot.com/2011/04/breaking-news-darjeeling-still-lounges.html  

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1999 (GI Act), ITC sought to cut the claim contending that grievances with respect to rights
breached under the GI Act is only restricted to goods and not against any services. ITC
wanted the GI Act to be understood as providing protection only to goods against goods and
not having room enough to allow a complaint by a registered proprietor of a GI against any
service. The argument put forth was that the GI Act seeks to protect indications with respect
to goods only, identified on account of quality or reputation or other characteristics
attributable to their geographical origin and cannot be extended to any services.
The Court concluded the Tea Board’s prima facie failure in proving violation of its registered
certification trademark in terms of sec 75 of the TM Act as it had not registered its name as
holder of the mark DARJEELING in respect of hotel business but for the purpose of
certification of tea as one grown in Darjeeling where benefit of Sections 28 and 29 of the TM
Act is not available.

The decision raised interesting ramifications on the GI marketplace in India, as the Calcutta
High Court held that the word “Darjeeling” is not the exclusive right of the Tea Board, and
decided the case in favour of the Kolkata hotel ITC Sonar and its Darjeeling Lounge.
Although the situation of GI protection at the domestic level is somewhat manageable, the
same is not true in regards to protection of GI at the international level. 26 For example, on an
average around 4 crorekgs of tea per annum is being sold globally as ‘Darjeeling tea, ’
whereas the production of authentic Darjeeling tea is around 90 lakh kgs only.
Very recently master craftsmen from Varanasi are being lured to China to produce these
imitations with cheaper Chinese silk due to which imitations of the world renowned
‘Banarasi’ sarees are flooding the Indian market over the past several years, particularly in
the Surat region of the Indian state of Gujarat. These imitations cost only one‐tenth of the
price of an original ‘Banarasi’ saree, and therefore posing a threat to the competition in
India.27 It is for this reason that large section of weavers in Varanasi are now forced to look
for other means of livelihood.

CONCLUSION
Intellectual property is an integral part of international trade. Since an intelligent and
effective use of knowledge always contributes in the national economic prosperity. Given its
commercial potential, the legal protection of GI assumes enormous significance. Without
26
“Geographical Indications in the Indian Context: A Case Study of Darjeeling Tea,” ICRIER Working Paper
No 11, September 2003.
27
http://www.bwcindia.org/Web/Awareness/LearnAbout/Silk.html

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such protection, competitors not having legitimate right on a GI might ride free on its
reputation. Such unfair business practices result in loss of revenue for the genuine right
holders of the GI and also misleads the consumers. Moreover, such practices may eventually
hamper the goodwill and reputation associated with the GI. In order to rule out its misuse and
to tap the potential economic and socio economic benefits emanating from this IP, it is
essential to ensure an appropriate legal protection for GIs at the national as well as the
international level. Infringement of GIs is an issue which is still generating controversies and
the outcome of such controversies are extremely important from the point of view of a
developing country like India, which has in its possession of number of world famous
Geographical Indications. Finally the need of the hour is that the Government of India should
create awareness to rural producers regarding registration of GIs so that their products will be
marketed globally it will generate huge foreign exchange to exchequer.

BIBLIOGRAPHY

A. Articles

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 1. WTO, Background and the Current Situation: Geographical Indications in General
(Nov. 2008), www.wto.org/english/tratop_e/trips_e/gi_background_e.htm.
2. WIPO, Geographical Indications: Historical Background, Nature of Rights, Existing
Systems for Protection and Obtaining Protection in Other Countries, at 4, SCT/8/4
(2002).
3. Priyanka Sardana and Vijay Sardan, Geographical Indications: Natural Competitive
Advantage, at http://www.pfionline.com/index.php/columns/ipr/122-geographical-
indications-natural-competitive-advantage.
4. Carlos M. Correa, Protection of Geographical Indications in CARICOM Countries, at
http://www.crnm.org/documents/studies/Geographical%20Indications%20-
%20Correa.pdf.
5. Kasturi Das, SocioEconomic Implications of Protecting Geographical Indications in
India, at http://wtocentre.iift.ac.in/Papers/GI_Paper_CWS_August
%2009_Revised.pdf.
6. Rajiv Seth, Geographical Indications for the Skeptical Europe, at
http://www.delhiwineclub.com/guest_column/Geographical_Indications.aspx?
serialwise=966.
7. Suresh C. Srivastava, “Geographical Indications and Legal Framework in
India,” Economic and Political Weekly, September 20, 2003.
8. Geographical Indications in the Indian Context: A Case Study of Darjeeling
Tea,” ICRIER Working Paper No 11, September 2003.

B. Websites
1. http://www.wipo.int/wipolex/en/text.jsp?file_id=201652
2. http://www.aiacaonline.org/pdf/policy-briefs-geographical-indication-pochampally-
ikat.pdf,visied
3. http://spicyipindia.blogspot.com/2011/04/breaking-news-darjeeling-still-lounges.html  
4. http://www.bwcindia.org/Web/Awareness/LearnAbout/Silk.html

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