The Geographical Indications of Goods (Registration and Protection) Act, 1999

1. Background

Before 1999 India had no specific law; Darjeeling tea was protected through certification marks and passing off. The Basmati controversy (a US patent granted to RiceTec in 1997 on rice lines and grains, and the use of “basmati” for rice grown in the US) showed the gap. TRIPS Article 22 required members to provide legal means to prevent misleading use of GIs. Parliament passed the Act in 1999; it came into force on 15 September 2003 with the Geographical Indications of Goods (Registration and Protection) Rules, 2002. Darjeeling tea was the first registered GI (2004).

2. Definition

Under s.2(1)(e), a “geographical indication” in relation to goods means an indication that identifies agricultural goods, natural goods or manufactured goods as originating or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to its geographical origin; and, for manufactured goods, one of the activities of production, processing or preparation must take place in that territory. “Goods” includes foodstuffs and goods of handicraft. A name need not be a place name: “Basmati” and “Feni” are not places but identify origin.

TRIPS Article 22(1) defines GIs in similar terms. The difference from an appellation of origin (Lisbon Agreement, 1958) is that an appellation requires quality due exclusively or essentially to the geographical environment, including natural and human factors, while a GI may rest on reputation alone.

3. GI and trade mark compared

4. Salient features

1. Registry. The Controller General of Patents, Designs and Trade Marks is the Registrar of Geographical Indications, and the Geographical Indications Registry is at Chennai. The register has two parts: Part A for GIs and Part B for authorised users.
2. Classification. Goods are registered by class and by area.
3. Who may apply. Any association of persons, producers, organisation or authority established by or under law representing the interest of the producers of the goods. An individual producer cannot own a GI. The application must state how the geographical environment gives the goods their quality, the area of production with a map, the particulars of the producers, and inspection arrangements.
4. Prohibited GIs. A GI shall not be registered if its use would deceive or cause confusion, contravene any law, contain scandalous or obscene matter, hurt religious susceptibilities, is disentitled to protection in a court, is a generic name, or, though literally true as to the place, falsely represents that the goods originate elsewhere (s.9). Generic names (such as “Basmati” was argued to be by RiceTec) are the most litigated ground.
5. Procedure. Application, preliminary scrutiny and examination (with a consultative group of experts), show cause and hearing, acceptance and advertisement in the GI Journal, opposition within the prescribed period, and registration.
6. Authorised users. Any producer of the goods in the area may apply to be registered as an authorised user. Only the registered proprietor and authorised users may use the GI.
7. Term. Registration lasts ten years and is renewable for ten years at a time, indefinitely; an authorised user's registration also runs for ten years, or until the GI itself expires.
8. Rights. Registration gives the proprietor and authorised users the right to obtain relief for infringement, and gives authorised users the exclusive right to use the GI for the goods registered. Registration is prima facie evidence of validity.
9. Infringement. Use of the GI by an unauthorised person in a way that indicates or suggests that the goods originate elsewhere than the true place, so as to mislead the public; use that amounts to unfair competition, including passing off; and, for goods notified for additional protection, use even with an indication of true origin, or in translation, or with words such as “kind”, “type”, “style” or “imitation”. The Act allows the Central Government to notify goods for this higher, wines-and-spirits level of protection.
10. Non-assignability. A GI is public property of the producers of the region, so it cannot be the subject of assignment, transmission, licensing, pledge or mortgage. An authorised user's right passes to his successor on death only.
11. Relation to trade marks. The Registrar of Trade Marks must refuse or invalidate a trade mark that contains or consists of a registered GI for goods not originating in that territory, where use would mislead the public; good-faith marks registered or used before the Act are protected.
12. Offences. Falsifying and falsely applying GIs, and selling goods with false GIs, are punishable with imprisonment and fine; infringement suits lie in a court not below a District Court.

5. TRIPS and the extension debate

TRIPS Article 22 gives a basic standard for all GIs: protection against use that misleads the public or amounts to unfair competition. Article 23 gives wines and spirits an absolute level of protection, without any need to show confusion, even where the true origin is shown or the term is used in translation or with “kind”, “type” or “imitation”. Article 24 contains exceptions for prior good-faith use and generic terms, and commits members to negotiate. India, with the EU and many developing countries, has argued in the Doha Round for extending Article 23-level protection to all products (Darjeeling, Basmati, Alphonso, Pochampally), so that “Darjeeling-type tea” made elsewhere would be barred. The US, Australia and others resist, arguing that many such terms are generic in their markets. The negotiations have not concluded. Indian law already allows this level of protection by notification, but it binds only Indian courts.

6. Cases and examples

• Tea Board, India v. ITC Ltd. (Calcutta High Court, 2011): the Tea Board failed to stop ITC's “Darjeeling Lounge”, the court finding no infringement of the GI or certification mark by use for a hotel lounge.
• Scotch Whisky Association v. Golden Bottling Ltd. (Delhi High Court, 2006): an injunction against “Red Scot” whisky made in India, in a passing off action protecting “Scotch”.
• Karnataka GIs include Mysore Silk, Mysore Sandalwood Oil and Mysore Sandal Soap, Channapatna toys, Coorg orange, Bidriware and Ilkal sarees, which make good examples in a KSLU answer.

How this is examined

Q6 of 2024. Write: background (Basmati, TRIPS), definition with its elements, the GI-trade mark table, the twelve features, then TRIPS Articles 22–24 and the extension debate. Two Karnataka examples and one case are enough.