GI Act 1999: Background, Key Definitions, Duration, Rectification and Remedies

1. Background of the enactment

Before 1999 India had no GI statute. A regional name could be protected only by passing off, which needs proof of goodwill and misrepresentation in each case (Scotch Whisky Association v. Pravara Sahakar Shakar Karkhana, Bombay High Court, 1992), or by registering a certification trade mark, as the Tea Board did for the Darjeeling logo. The Statement of Objects and Reasons gives three reasons for the Act:

• to stop unauthorised persons from misusing GIs, which protects consumers from deception and adds to the prosperity of producers;
• to promote goods bearing Indian GIs in export markets; and
• TRIPS: unless a GI is protected in its country of origin, other members are under no obligation to protect it (Article 24(9)), while India would still have to protect foreign GIs.

The basmati controversy, when a US company obtained a patent on rice lines in 1997, gave the Bill political urgency. The Act was passed in December 1999 and brought into force on 15 September 2003, with the GI Registry at Chennai.

2. The key definitions (section 2(1))

• Geographical indication (clause (e)): see the first GI note. The Explanation extends it to a name that is not itself a place name but relates to a specific area and is used for goods from it, so “Basmati” or “Alphonso” can qualify.
• Goods (clause (f)): agricultural, natural or manufactured goods, goods of handicraft or of industry, including food stuff. Services are not included.
• Indication (clause (g)): any name, geographical or figurative representation or combination of them conveying or suggesting the geographical origin of goods.
• Producer (clause (k)): for agricultural goods, a person who produces them, including one who processes or packages them; for natural goods, one who exploits them; for handicraft or industrial goods, one who makes or manufactures them; and in every case, “any person who trades or deals in” such production or manufacture.
• Registered proprietor (clause (n)): an association of persons or of producers, or an organisation, entered in the register as proprietor. An individual cannot be a registered proprietor.
• Authorised user (clause (b)): the authorised user of a registered GI registered under section 17. Any person claiming to be a producer of the goods may apply.
• Deceptively similar (clause (c)): a GI that so nearly resembles another as to be likely to deceive or cause confusion.

3. Duration, renewal and restoration (sections 18 and 19)

• Registration of a GI is for ten years, renewable for further periods of ten years without limit (section 18(1), (3)).
• Registration of an authorised user runs for ten years or until the GI’s own registration expires, whichever is earlier (section 18(2)).
• The Registrar sends notice before expiry. If the fee is not paid, the GI or authorised user may be removed, but renewal is still allowed within six months of expiry on payment of a surcharge (proviso to section 18(4)).
• After removal, the Registrar may restore it on application made after six months and within one year of expiry, if it is just to do so (section 18(5)).
• For one year after removal, the removed GI is still treated as on the register when a later application is examined, unless there was no bona fide trade use in the previous two years or no confusion is likely (section 19).

4. Rectification and correction of the register

Rectification (section 27)

Any person aggrieved may apply to the High Court or to the Registrar:

• to cancel or vary the registration of a GI or authorised user for contravention of, or failure to observe, a condition entered on the register (section 27(1)); or
• to make, expunge or vary an entry where an entry is absent or omitted, made without sufficient cause, wrongly remaining, or has an error or defect (section 27(2)).

The Registrar or High Court may decide any question needed for rectification (section 27(3)), may act on its own motion after notice and hearing (section 27(4)), and a High Court order is sent to the Registrar to give effect to it (section 27(5)). Where the validity of a registration is challenged in an infringement suit, the issue is decided only on a rectification application to the High Court, not the Registrar (section 58(1)); the Registrar may also refer a pending application to the High Court (section 58(2)). Authorised users must be made parties (section 68).

Correction (section 28)

Correction is a lesser, administrative power used on the application of the proprietor or an authorised user: to correct errors in names, addresses or descriptions; to record a change in the name or address of the proprietor; to cancel the entry of a GI; or to strike out goods or classes. Section 29 separately allows the proprietor to apply to alter a registered GI in a way that does not substantially affect its identity.

Appeals (section 31)

Any person aggrieved by an order or decision of the Registrar may appeal to the High Court within three months of its communication, with condonation for sufficient cause. Before the Tribunals Reforms Act, 2021 these matters went to the IPAB.

5. Civil remedies

• Who may sue. The registered proprietor and the authorised users (section 21). No infringement suit lies for an unregistered GI, but passing off is saved (section 20).
• Forum (section 66): not below a District Court. For infringement and rights in a registered GI, the plaintiff may also sue where he resides, carries on business or works for gain; “person” includes the proprietor and authorised user.
• Relief (section 67(1)): injunction and, at the plaintiff’s option, damages or an account of profits, with or without delivery up of infringing labels and indications for destruction or erasure.
• Interim orders (section 67(2)): ex parte injunctions and interlocutory orders for discovery, preservation of infringing goods and evidence, and restraint on the defendant dealing with assets (the Mareva form of relief, written into the statute).
• Innocent defendant (section 67(3)): no damages (other than nominal) or account of profits if the defendant shows he did not know of the registration (or, in passing off, of the plaintiff’s use) and stopped once he knew.
• Groundless threats (section 73): declaration, injunction and damages against a person who threatens infringement proceedings without cause.

6. Criminal remedies (Chapter VIII)

• The burden of proving the authorised user’s assent lies on the accused (section 38(4)), and sections 39 and 40 give defences of no intent to defraud, reasonable precautions and disclosure of the supplier.
• The court may impose less than the minimum for adequate and special reasons recorded in the judgment.
• Decriminalisation. The Jan Vishwas (Amendment of Provisions) Act, 2023, with effect from 1 August 2024, replaced imprisonment under section 42 with a penalty of one-half per cent of turnover or gross receipts or five lakh rupees, whichever is less, imposed by an adjudicating officer (section 37A) with an appeal to an officer of higher rank (section 37B). It omitted sections 43 and 44 (describing a business as connected with the Registry, and falsifying the register).
• Procedure (section 50): offences under sections 39 to 41 are cognizable; a police officer not below the rank of Deputy Superintendent may search and seize without warrant, but must first obtain and follow the Registrar’s opinion. Trial is before a Judicial Magistrate of the first class or Metropolitan Magistrate.
• Limitation (section 52): three years from the offence or two years from its discovery, whichever is earlier.
• Forfeiture of goods (section 46), protection of employees acting innocently (section 47), stay where invalidity is pleaded (section 48), and liability of companies and their officers (section 49).

7. Assessment

The Act copies the structure of the Trade Marks Act, 1999, which is why its remedies look like trade mark remedies. The weaknesses are practical: many GIs have few authorised users, inspection bodies are weak, police rarely use their powers, and the Registrar’s opinion requirement in section 50(4) slows raids. For goods sold abroad, the domestic remedies do little; protection depends on bilateral agreements, foreign registration and certification marks.

How this is examined

A short note on “authorised user” or “registered proprietor” needs the definition, who may apply, the term and the rights under section 21. “Infringement and remedies under the GI Act” needs section 22 from the first note, then the civil remedies in sections 66 and 67 and the offences table, ending with the 2023 changes. For “rectification and correction”, contrast section 27 (adversarial, on grounds) with section 28 (administrative, on the owner’s request).