Geographical Indications.docx

Geographical Indications: Recent Developments In India

Table of content  Introduction  The Definition of a Geographical Indication  The Protection of Geographical Indications under the TRIPS Agreement  Scope of Protection  Significance of GI’s in Modern Economies  Who Is Entitled To Apply?  How to register  The Application document  Notice of Opposition  Verification of the Notice  Counterstatement  Evidence  Hearing and decision  The Framework of Protection Provided under Article 22 of the TRIPS Agreement  Issues for the Future  Reference

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Geographical Indications: Recent Developments In India

1. Introduction Over the past few decades, geographical indications have become major intellectual assets in relation to a variety of goods, acting not only as a tool for protecting consumer’s interests and reinforcing confidence in high-quality and local products, but also as a legal and economic tool for the development of rural areas and the preservation of cultural heritage. Geographical indications are also a global issue, regulated in international law by the WTO and attracting increasing attention world-wide. Indeed, geographical indications have been said to be “the Sleeping Beauty of the intellectual property world” as although they have been around for a long time, there has been a widespread awakening in recent years, as to their business value. In particular, many developing countries have recently jumped on the wagon of the geographical indication culture, by associating products with their places of origin and developing external markets for some of these local products. This paper examines the relevance of geographical indications for the economy of developing countries. In doing so, it will start by examining the standard of protection that should be granted to geographical indications by WTO Member States. It will then move on to analyse two issues that are relevant to developing countries. The first is the possibility of using geographical indications to protect indigenous knowledge and reward the holders of that knowledge. The second and related issue is the use of geographical indications as a development tool. In particular, it will question whether the assumption that the success story of geographical indications in Europe can be replicated in developing countries is realistic. Throughout the paper, these issues will be explored through reference to case studies drawn from developing countries.

The Definition of a Geographical Indication First and foremost, GIs are signs which provide information about products. They may include pictorial representations associated with places (such as the Taj Mahal or Eiffel Tower) but are most often words designating geographical regions. One need only think of Mysore silk, Kashmir pashminas, Malabar pepper or that perennial favourite, Scotch whisky. These signs not only indicate the geographical origin of such products, but also trigger certain expectations of quality based upon geographical origin. These consumer expectations may be based on the product's favourable reputation, acquired over time due to a longstanding cultural connection with a region due to the natural advantages of the region in question (such as soil quality and climatic conditions), or a combination of both. Thus, a GI is defined in Section 2(1)(e) of the Indian Geographical Indications of Goods (Registration and Protection) Act, 1999 as: an indication which identifies such goods as 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 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 2

Geographical Indications: Recent Developments In India production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be. Since GIs are signs which can communicate information about the origin and quality of a product as well as generate a commercially valuable reputation - Darjeeling sells at a premium and is a valuable "brand"1- several governments such as the US and Australia suggest that they should be protected as special categories of trade marks. The argument runs that since both GIs and trade marks (i) protect a producer's valuable commercial goodwill in a sign and (ii) prevent consumers from being confused about the origin or quality of the product, GIs should be absorbed within Trade Mark Law. There certainly is strategic value in protecting traditional products via both certification trade marks and registered GIs, simply because many countries do not have a sui generis registered GI system in place while most have registered trade mark regimes. Yet this argument downplays important differences. There at least two reasons to support an independent GI protection regime- (1) If GIs are registered as trade marks, they have to play by the rules of the trade mark system. This includes the rule of "First in Time, First in Right"2. So if the Indian Spice Board wishes to register "Malabar" Pepper as a Certification Trade Mark in the UK, it will be unpleasantly surprised to see that 'Malabar' has already been registered as an individual trade mark by a private entity. (2) Unlike standard trade marks which belong to a single (usually corporate) owner, all those who produce a GI have a collective stake in the use of the designation. To that extent, the sign is connected to a region and open to all who produce the product there, according to collectively determined product specifications. The right to use a GI cannot be bought, sold or licensed to "outsiders" i.e. producers from outside the designated region. Therefore unlike trade marks, GIs do not easily fit within the paradigm of private property. It is usually local communities which create and continue to innovate upon GI products. Furthermore, a GI such as "Darjeeling" also signifies that a product owes special qualities to its geographical origin which in this case includes the altitude or elevation of the tea gardens, moisture, quality of the soil, exposure to sunlight and other climatically and geologically contingent aspects. The archetype for such products has been the French wine appellation regime and the concept of terroir, where the distinctive quality of the end product depends on the natural and human inputs at the place of origin. Thus, in order to actively regulate and "manage" this collective interest as well as ensure the link between product and place is first established and then guaranteed, several countries including India have followed the European model and set up independent or sui generis GI registration systems. Given its cultural richness and varied historical influences, India has an abundance of traditional, collectively produced, regional artisanal goods or agricultural specialities and the Indian GI Act of 1999 has established the institutional machinery for their registration and protection. After an initially slow start, the Registry has now gathered momentum and several products have been registered while more are pending. What is of particular interest is that unlike European countries where the emphasis is on wines, cheese and agricultural produce, India applications are giving priority to the protection of metalwork, textiles, prints, toys,

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Geographical Indications: Recent Developments In India leatherwork, regional paintings, furniture, wood carvings and craft products in general. As regards the application for registration, the following are some of the criteria to be considered: • Does the indication actually designate the goods as GIs (i.e. does it satisfy the definitional link criteria, based on either objective qualities due to the region or a historically substantiated reputation)? • For which products is the designation to be used? (e.g. Nakshi Kantha of Bengal has been applied for a wide variety of goods including pillows, cushions, bed spreads, quilts and linen) • The nature or appearance of the designation (e.g. the profile of a female tea picker as a figurative logo for Darjeeling tea, which is then used in advertising campaigns.) • The characteristic features of the product which can also act as a benchmark to separate genuine from imitation goods • Details of the link between product and place (usually consisting of a historical account of production in the region; the product's reputation and natural factors which influence the product's quality) • A map of the production region • Details of the applicant and how the applicant represents the interests of producers in the region (e.g. the Tea Board of India is the statutory body which has promoted the collective interest of Darjeeling producers) • Details of the inspection structure to ensure that the products live up to the specification Further, details on registration procedure are available from the GI Registry website as well as in Chapter III of the 1999 Act and in the GI Rules, 2002. This registration is renewable on a potentially indefinite basis, for 10 year periods.

The Protection of Geographical Indications under the TRIPS Agreement The TRIPS Agreement was the first multilateral text dealing with geographical indications. It is perhaps the most important international treaty in that field, due to its broad membership, the application of minimum standards and its detailed rules on enforcement through a strong dispute settlement mechanism. Indeed, even though some previous international treaties such as the Paris Convention, the Madrid Agreement and the Lisbon Agreement dealt with the protection of indications of source or appellations of origin, the protection provided was often inadequate because on the one hand, the provision of the Paris Convention was too general on this matter and on the other, the Madrid Agreement and Lisbon Agreement only had limited membership.

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Geographical Indications: Recent Developments In India

Scope of Protection Once registered, such designations are entitled to protection under sections 21 and 22 of the GI Act. Authorised users of the GI have the right to use the designation, while "outsiders" who use the sign will infringe these rights where: • The use is such that it "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"; or • The use constitutes an act of unfair competition (broadly speaking, false allegations or confusing usage contrary to honest practises in industrial or commercial matters) including passing off in respect of registered geographical indication. The test here will be whether buyers of the product are misled or confused into thinking it is the "real thing". • A mysterious layer of "additional" protection for certain products which are notified by the Central Government. It is not clear why such a complicated method was chosen for additional protection, or even what this means. This presumably replicates the standards in Article 23 of the WTO's Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), where protection is provided for wines and spirits without having to prove confusion i.e. if a product has place name "X" on its label but is not produced in "X", such use will be prohibited regardless of whether the relevant public is confused. This provision relates to the prevention of misappropriation of goodwill. Having identified the situations in which protection will be granted, at this stage two important qualifications must be flagged up. (1) The first concerns, the nature of protection. It is commonplace to read in newspaper reports that a GI registration grants exclusive monopoly rights over the product itself. While celebrating the registration of Orthodox Assam Tea as a GI, one report observes that "it will protect the product from being replicated anywhere else with the same qualities", while another suggests that a GI registration certificate is "equivalent to a patent". This is quite simply nonsense. All that a GI protects is the designation - in this case, the name - of the product. Competitors around the globe are free to produce an identical or very close substitute which tastes indistinguishable; they simply cannot call it Assam Tea. Thus Spanish Cava producers copied French Champagne making techniques to come up with a sparkling wine which today competes favourably in the global marketplace. However, they cannot call it Champagne. (2) The second important qualification regarding protection is that a national registration is no guarantee of international protection. Despite being the first registered GI in India, Darjeeling has in the past litigated extensively (and expensively!) in international markets to protect its name, since IP protection is 5

Geographical Indications: Recent Developments In India usually territorially determined. Therefore, India and several other like minded countries continue to argue before the WTO that (a) an international register for GIs should be established and (b) higher standards of protection should be afforded to all GI products (not just wines and spirits), which ensures that the expensive and uncertain exercise of proving that consumers are confused by a Texan producer selling "Texmati" rice can be avoided. It is also unfair to expect local communities of traditional producers in Africa, Latin America and Asia to police their names in global markets or lose all rights to those names. While national registration of a GI is a vital first step, it is no guarantee of international protection.

Significance of GI’s in Modern Economies There are multitudinous reasons that strongly mandate the protection of GI’s. In modern free trade economies, GIs have enormous economic value as the consumers are willing to pay high prices for goods bearing a particular quality. It is important to protect the consumers from spurious products and producers from unfair competition. Besides the commercial aspect, the GIs also protect the usurpation of the national heritage of a country by associating a product worldwide with a particular country. As the quality of product is not only attributable to the climate, topography but also to the know-how of the producers of the region, the GIs are also important tools for protecting the traditional knowledge of the producers.

Who Is Entitled To Apply? Any association of persons, producers, organization or authority established by or under the law can apply for registration of GIs. The applicant must represent the interest of the producers. Producers are persons dealing with the following three categories of goods: a. Agricultural Goods includes the production, processing, trading or dealing; b. Natural Goods includes exploiting, trading or dealing; and c. Handicrafts or Industrial goods include making, manufacturing, trading or dealing

How to register a. Prescribed Form  An application for registration of a GI for a specification of goods included in any one class; or  an application to register a GI for a specification of goods included in any class from a convention country;or  a single application for the registration of a GI for different classes of goods from a convention country;or  a single application for the registration of a geographical indication for different classes of goods shall be made in Form GI-1. 6

Geographical Indications: Recent Developments In India

The Application document The application must be filed at the Office of the GI Registry located in Chennai. The application must conform to the various requirements and criteria prescribed under the GI Rules. The Applicant must furnish the following information/documents with the GI Registry: 1. Geographical Signification of the Indication vis a vis the goods thus explaining how the indication serves to designate the goods as a Geographical Indication; 2. Class of goods; 3. Geographical Area; 4. Details of the appearance; 5. Particulars of the producers; 6. Affidavit deposing the Applicant’s right to become the Registrant; any person can oppose the registration of geographical indication by giving a notice in writing of opposition to the registrar within a period of three months from the date of advertisement of the application in the Journal.

Notice of Opposition The Notice of Opposition has to be given in triplicate setting out the grounds of opposition. Where notice is given with respect to a single application, it shall bear the fee with respect to each class of the application. Where opposition is made with respect to a particular class for classes, the application shall not proceed for registration unless the applicant makes request for division of the application. In respect of the remaining classes, the application shall proceed for registration.

Verification of the Notice Verification of the notice by the opponent is a must. The opponent is required to state as to what is verified by his knowledge and what is verified upon information received and believed to be true. Such a verification shall be signed by the opponent and shall also contain the date and place of verification.

Counterstatement The registrar shall serve a copy of the notice to the applicant. The applicant has to send a counter statement to the registrar within two months from the date of receipt, stating the grounds that he relies on for making the application. If the applicant does not do so, he shall be deemed to have abandoned his application. Like the notice of opposition, the counterstatement also has to be made in triplicate and has to be verified by the applicant. The Registrar shall serve a copy of the counterstatement to the opponent within a period of two months from the date of receipt of the counterstatement.

Evidence Within a period of two months (extendible to three months) from the date of receipt of the counterstatement, the opponent shall submit the evidence in support of his application. Alternatively, he can intimate the registrar in writing that he does not intend to adduce any 7

Geographical Indications: Recent Developments In India evidence but only desires to rely on the facts alleged in the notice. The opponent is required to deliver the copies of the evidence that he has submitted with the registrar to the applicant. If the opponent does not do so, he shall be deemed to have abandoned his notice. The applicant within the period of two months (extendible to three) form the date of the receipt of the affidavit of the opponent or the intimation that he does not desire to adduce the evidence, shall adduce the evidence in support of his application with the registrar and also deliver the copies of the evidence to the opponent. In case the applicant does not desire to adduce any evidence but seeks to rely on the facts in the counterstatement, he shall accordingly intimate the registrar as well as the opponent. In case the applicant relies on any evidence already left by him with the registrar, he shall deliver a copy of the same with the opponent. Within one month (extendible to two) from the date of receipt of the evidence of the applicant, the opponent may submit further evidence strictly in reply to the matters raised in the application and deliver the copies of it to the applicant. Unless the registrar grants a leave, no further evidence shall be left by either of the parties.

Hearing and decision Ordinarily, within three months from the date of completion of the evidence, the registrar shall give both the parties one-month notice of hearing. Within 14 days from the date of the receipt of the notice the party who intends to make an appearance shall intimate to the registrar. The party that does not notify within that period shall be considered as not desiring to be heard and the registrar shall proceed ex-parte. A request for not more than two adjournments for a period of one month each can be made by either of the parties by showing sufficient cause. But if the applicant is not present at the adjourned date of hearing of the application, the registrar shall treat the application as dismissed. Similarly, if the opponent is not present on the date of the hearing and has not notified his intention to appear at the hearing, the opposition shall be deemed to have been abandoned and the application shall proceed for registration. After hearing the parties and considering the evidence the registrar shall consider whether or subject to what limitations the registration shall be granted. The registrar while considering the applicant can also take into accounts the grounds that have not been agitated by the opponent. If the opponent after giving the notice and the applicant after sending a counter statement does not reside or carry business in India, the registrar may require such party to give security for the cost of the proceedings being carried on before him.

The Framework of Protection Provided under Article 22 of the TRIPS Agreement The TRIPS provisions on geographical indications reflect the delicate compromise reached on one of the most sensitive areas of negotiations during the Uruguay Round, which led to 8

Geographical Indications: Recent Developments In India the TRIPS Agreement. The sensitivity of the matter was due a variety of factors, including: (i) the fact that geographical indications were a relatively new area of intellectual property for a great majority of countries, while being well anchored in the systems of many European countries; (ii) the diversity of systems used to protect them; (iii) the divergence of views regarding the most appropriate system of protection; (iv) the economic and trade stakes; and (v) the fact that some delegations in the Uruguay Round considered the protection of geographical indications as a trade-off with concessions they would have to make in the area of agriculture. Article 22(2) of the TRIPS Agreement establishes the general standard of protection that must be available for all geographical indications. It provides that “legal means” must be provided to interested parties to prevent the use of geographical indications which mislead the public as to the geographical origin of the goods. It also requires that legal means must be provided to prevent use which constitutes an “act of unfair competition” within the meaning of Article 10bis of the Paris Convention. However, while it is mandatory for Member States to provide protection to geographical indications, they are free to determine the appropriate method of protection, when implementing the provisions of the Agreement within their own legal system and practice. Over the past decade, a variety of different legal concepts have been used to protect geographical indications at the national and regional levels. These include, in particular, laws of unfair competition and passing off, protected appellations of origin and registered geographical indications, collective and certification marks and administrative schemes of protection. The choice of a protection mechanism or a combination of systems of protection will usually depend on the legal tradition and historical and economic conditions of the jurisdiction concerned. However, the differences between these systems will have a bearing on important questions, such as conditions of protection, entitlement to use and scope of protection. In addition to the protection available in Article 22(2), Article 22(3) provides protection against misleading trademarks, and Article 22(4) protects against true but misleading geographical indications. Misleading Indications (Article 22(2)(a)) Article 22(2)(a) requires WTO Member States to 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. Article 22(2)(a) provides a negative right, that is, a right to prevent, rather than a positive right, such as the right to authorise use. Therefore, the burden of proof rests on the owner of the geographical indication, who must show that the public has been misled. The question to know under what circumstances a designation will be understood to “mislead the public” raises a couple of interesting issues. Firstly, to whom does “the public” refer? It could refer to ordinary consumers with limited knowledge, to a more specialised group of consumers, who regularly purchase the product in question, or to members of the trade or experts. Secondly, how strong does the association need to be to establish that the 9

Geographical Indications: Recent Developments In India public has been misled? Finally what degree of error is needed for the public to be misled? It has been argued that even though consumers may be unaware of the characteristics or even the existence of the genuine product, they may still be misled. In addition, will the public still be considered to be misled if there is information about the true origin of the product on the labelling or packaging? Most often, discretion is in the hands of national authorities to determine how the “public” should be defined and how strong an association there must be for the public to be misled. Act of Unfair Competition (Article 22(2)(b)) Article 22(2)(b) requires WTO Member States to provide the legal means for interested parties to prevent “any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967)”, with respect to geographical indications. Under the Paris Convention, an act of unfair competition is defined as “any act of competition contrary to honest practices in industrial or commercial matters”. Besides the general mandate of Article 10bis, that the countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition, the following acts are, in particular, prohibited under that article: (1) all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, or a competitor; (2) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor, and finally (3) indications or allegations the use of which, in the course of trade, is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods. This last category of acts especially applies to geographical origin.

Issues for the Future So far we have looked at what GIs are, how they are protected and the scope of this protection. I conclude by turning to issues of interest for the future of GI protection in India. High level support- There are encouraging signs that GI protection is being taken seriously by both Central and State Governments. The Commerce Ministry has initiated an exercise to identify promising local products which would benefit from GI protection, as have public bodies such as the Spice Board and academic institutions such as the National Institute of Design, which has been following up potential handicraft registrations. On the issue of Basmati, talks have resumed between India and Pakistan. Several of the products identified are now pending before the GI registry. Darjeeling is a world class Indian GI and a role model towards which other Indian GIs should aspire, so this trend is to be welcomed. However, a GI product is only as successful as the marketing which accompanies it - these products must be supported by the Indian state through high visibility exposure in domestic and international markets. As a recent follow up study on Kullu shawls demonstrates, GI 10

Geographical Indications: Recent Developments In India registration by itself is no guarantee of a better quality of life for the producers of such products, and must form part of a broader implementation strategy and marketing campaign. Not every regional product is or should be a GI- Dr. Dwijen Rangnekar has recently highlighted the incongruities in the controversial "Tirupati laddu" application. Is the name already generic or commonly used for a category of products? Who constitutes the "expert panel" which approved this and on what basis did they do so? And should an already wealthy spiritual institution be applying to gain the monopolistic rights to a name? While there is an interest in preserving product quality, granting a single entity the rights to a name already used by hundred of independent producers is not the appropriate response. If a product name is already generic and widely used outside the region of origin, the GI application can be challenged and invalidated. Registration related uncertainties- In light of some of the applications received by the registry thus far, there are question marks as to whether the applicant for the GI is best placed to represent the interest of all producers of the traditional product. The Tea Board of India is an exemplary Applicant capable of fairly balancing interests but some others are far more questionable and potentially partisan. Furthermore, the inspection structures to police the use of the sign on appropriate products while restricting use by unauthorised producers is an aspect on which there has been little follow up work. If the registrant is toothless or ineffective in stopping outsiders from using the product within India, the registration is effectively useless. Finally, GIs have been established to benefit local producer communities and care must be taken to ensure that it is not the middlemen who benefit the most - the rewards must flow to those who deserve them. Cultural products- Unlike Europe, which has a history of GI protection for wines that depend to a greater degree on rooted geographical features, several Indian registrations concern handicrafts. What happens if traditional producers decide to relocate along with their traditional skills and tools of the trade to other states in India? Should they be entitled to carry on using the GI when they are no longer located within the region of origin? In an era of increased mobility and economic pressures to migrate with skills, what would "anchor" such cultural products to the region of origin? Despite these concerns, the portents are good and GI protection looks set to continue to expand in India. Several countries are looking to the Indian experiment when setting up their own registration systems, while traditional producer communities could be revitalized through the increased exposure and aura of certified authenticity that a GI can provide. Therefore, a transparent registration system, genuinely sympathetic to the needs of local producers, with expert panels making objective and reasoned assessments will serve as an example. After over a century of waiting in the wings, it looks like GIs are finally set to take centre stage and India has a leading role in this unfolding drama.

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Geographical Indications: Recent Developments In India

Reference1. www.wipo.int/export/sites/www/sme/en/.../india_nift.../gi_gupta.ppt 2. www.patentoffice.nic.in/ipr/gi/geo_ind.htm 3. www.rkdewan.com/articles-geographical-indication.jsp 4. india.indymedia.org/en/2005/03/210197.shtml 5. www.iprcommission.org/papers/pdfs/final_report/Ch4final.pdf 6. www.ris.org.in/Pbno7.pdf 7. www.altacit.com/pdf/The%20Protection%20of%20Geographical%20Indication%20in%2... 8. www.ipindia.nic.in/girindia/GI_Rules.pdf 9. www.marsandpartners.com/Geographical%20Indications%20under%20Indian%20Laws.pdf 10. www.iprsonline.org/unctadictsd/docs/GI%20paper.pdf 11. law.marquette.edu/ip/Calboli2.pdf 12. www.leonardos.com.br/Textos/pdf/EctaComplete_.pdf 13. www.iqsensato.org/wp.../iqsensato-wp-3-zografos-dec-2008.pdf

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