Example GI From Rest Of India

Example GI From Rest Of Maharashtra

Why to protect?

Numerous studies reveal that consumers are willing to pay more for origin guaranteed products.
Imitators deceive consumers and lead them to believe that they are buying a genuine product with specific qualities and characteristics, whereas they are given an imitation.
Use of GIs by unauthorized parties is detrimental to legitimate producers and consumers. Producers suffer damage because valuable business is taken away from them, and the established reputation of their products is affected.
Producers may even be prevented from using the indication themselves, for instance if it is registered as a trademark by a company/individual.
Protecting a GI enables authorized users to take measures against others who use it without permission and benefit from its reputation free of charge (“free-riders”).
Protecting a GI also mitigates the risk of the indication of becoming a generic term.
Thus, products with a GI tag:
• Enable producers to charge a price premium.
• Put restriction of proliferation of “fakes”/”imitations”.
• Inform the consumers for better decision making.

Can GIs only be used for agricultural products?

Typically, the agricultural products have qualities that derive from their place of production and are influenced by specific local, geographical factors such as climate and soil. That is why majority of the GIs throughout the world are applied to agricultural products, foodstuffs, wine and spirit drinks. However, the use of GIs is not limited to agricultural products. A GI may also highlight specific qualities of a product that are due to human factors found in the product’s place of origin, such as specific manufacturing skills and traditions. Hence, for handicrafts, which are generally handmade using local natural resources and usually embedded in the traditions of local communities.

Nature of goods

A majority of GIs throughout the world are applied to agricultural products, foodstuffs, wine, and spirit drinks.
However, a GI may also highlight specific qualities of a product that are due to human factors found in the product’s place of origin, such as specific manufacturing skills and traditions in the case of Handicrafts.
GI Act, 1999, Section (2) (1) (f): Agricultural, Natural or Manufactured goods or any goods of Handicrafts or of Industry and includes Food Stuff.

International Legal Framework

TRIPS Agreement contains a special section on GIs. Since the adoption of the GI section in 1994 of the TRIPS Agreement, this form of IP has attracted increasing attention from policymakers and trade negotiators, as well as producers (mostly of agricultural products), professionals from legal & economic forums across the world.
Paris Convention for the Protection of Industrial Property of 1883 refers to “indications of source” and “appellations of origin” as objects of industrial property.
Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods of 1891.
Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 1958.

Indian sui generis system

Unless a geographical indication is protected in the country of its origin, there is no obligation under the TRIPS Agreement for other countries to extend reciprocal protection.
A member, on the other hand, is required to extend protection to goods imported from other countries which provide for such protection.
Thus, India, as a member of WTO, enacted the Geographical Indications of Goods (Registration & Protection)Act, 1999 and The Geographical Indications of Goods (Registration & Protection) Rules, 2002 w.e.f. 15th September 2003.

Who can apply for registration

Any association of persons or producers or any organization or authority established by or under law representing the interest of producers of the concerned goods.
Application for registration of a GI should be in the prescribed form (GI-1A to 1D). Accompanied by the prescribed fee – Rs.5000/- Per Class.
It must be made in triplicate along with three copies of a statement of case accompanied by five copies of Additional Representations, Three certified copies of Map, and documents in support of origin.

1. Purely voluntary registration system.
2. GI registration provides the registered proprietor and the authorized user the exclusive right to protect the registered GI on the specified goods.
3. Exclusion of unauthorized persons from misusing GI would serve to protect consumers from deception, add to the economic prosperity of the producers of such goods and also promote goods bearing Indian geographical indications in the export market.
4. Monopolization of the market enables the producers to control prices, i.e., can charge premium prices, thereby enhancing profits.

What is the difference between a GI & a TM?

GIs and trademarks are distinctive signs used to distinguish goods or services in the marketplace. Both types of intellectual properties convey information about the origin of a good or service, and enable consumers to associate a particular quality with a good or service.
Trademarks inform consumers about the source of a good or service. They identify a good or service as originating from a particular company. They help consumers associate a good or service with a specific quality or reputation, based on information about the company responsible for producing or offering it.
GIs identify a good as originating from a particular place. Based on its place of origin, consumers may associate a good with a particular quality, characteristic, or reputation. A TM often consists of a fanciful or arbitrary sign that may be used by its owner or another person authorized to do so. A TM can be assigned or licensed to anyone, anywhere in the world because it is linked to a specific company and not to a particular place.
In contrast, the sign used to denote a GI usually corresponds o the name of the place of the origin of the good, or to the name by which the good known in that place. A GI may be used by all persons who, in the area of origin, produce the good according to specified standards. However, because of its link with the place of origin, a GI cannot be assigned or licensed to someone outside that place or not belonging to the group of authorized producers.

What is the difference between a GI & an appellations of origin?

Appellations of origin are a special kind of GI.
The term is used in the Paris Convention and defined in the Lisbon Agreement which suggests that appellations of origin consist of the name of the product’s place of origin. However, it is interesting to note that several traditional indications that are not place names, but refer to a product in connection with a place, are protected as appellations of origin under the Lisbon Agreement.
Sometimes, it is argued that products with a certain reputation, but no other quality due to their place of origin are not considered appellations of origin under the Lisbon Agreement. However, this interpretation is not universally accepted.
Nevertheless, appellations of origin and GIs both require a qualitative link between the product to which they refer and its place of origin. Both inform consumers about a product’s geographical origin and a quality or characteristic of the product linked to its place of origin. The basic difference between the two terms is that the link with the place of origin must be stronger in the case of an appellation of origin.
The quality or characteristic of a product as appellation of origin must result exclusively or essentially from its geographical origin. This generally means that the raw materials should be sourced in the place of origin and that the processing of the product should also happen there.
In the case of GIs, a single criterion attributable to geographical origin is sufficient, be it a quality or other characteristic of the product, or only its reputation. Moreover, the production of the raw materials and the development or processing of a GI product do not necessarily take place entirely in the defined geographical area.
The term appellation of origin is often used in-laws that establish a specific right and system of protection for GIs, what is called sui generis systems of protection. Thus, GI is a more general concept that does not determine a specific mode of protection.

Developing a GI – Why?

1. GIs as diffentiation tools in marketing strategies: from mere source indicators to brands
2. GIs as a factor of rural development
3. GIs as a means to preserve traditional knowledge & traditional cultural expressions

Developing a GI – What is involved?

1. What are the costs?
2. How long does it take?

Protecting GIs – a step in developing a GI

1. Why protect a GI?
2. Deterring free riding
3. Forestalling registration of the GI as a trademark by a third party
4. Limiting the risk of the GI becoming a generic term
5. What does a protected GI enable you to do?
6. What does a protected GI enable you to do? What does it not enable you to do?
7. How to obtain protection for a GI?
8. Sui generis systems of protection
9. Collective marks & certification marks
10. Laws focussing on business practices
11. How long does it take to protect a GI through registration?
12. What are the potential obstacles to protecting a GI?
13. Conflict with a prior mark
14. Generic character
15. Homonymous GI

Statement of Case

How the geographical indication serves to designate the goods as originating from the concerned Geographical area, in respect of specific quality, reputation or other characteristics which are due exclusively or essentially to the geographical environment
Three certified copies of the map of the territory, or region. The particulars of human skills involved or uniqueness of the Geographical environment or other inherent characteristics of the GI.
The particulars of the mechanism to ensure that the standards, quality, integrity, and consistency, or other special characteristic are maintained by the producers, or manufacturers of the goods; An affidavit as to how the applicant claim to represent the interest of the concerned persons, producers, authority, or organizations.

Procedure of Registration for foreign cases

1. No discrimination
   2.Applicant has to give an address for services in India
   3.Details of Home country GI Application
   4.Same protection under the Law
   5.Same procedure for registration
   6.Same remedies in case of violation

Protecting GI abroad

1. Why protect your GI abroad?
2. How are GI protected abroad?
3. Bilateral agreements
4. Direct protection
5. Lisbon Agreement
6. Madrid system

Registration

If no notice of opposition or application for extension of time for filing notice of opposition is received within three months from the date on which the journal was made available to the public and within extension period of One Month

Validity

Registration is valid for 10 Years from the date of Application.
Registration is renewable for another 10 years and so on
GI: Authorised User & Registration Procedure

Who can apply?

An application for the registration as an authorised user of the registered geographical indication shall be made by a producer and jointly by the registered proprietor of the said GI

How to Apply

Application for registration of a GI Authorized User should be in the prescribed form (GI-3A). Accompanied by the prescribed fee for filing a GI Authorised User Application Rs. 500/-. Statement of case accompanied with an affidavit. A copy of the consent letter from the registered proprietor or If consent letter is not available, a copy of Application may be endorsed to Registered proprietor for information. Fees may be paid by Cash, or Money order, Bank drafts and cheques, It shall be addressed to the Registrar of Geographical Indications, Payable at Chennai.

Civil & Criminal remedies

Relief in suit before the District Court for infringement or for passing off: injunction, either damages or account of profits, together with or without any order for the delivery-up of the infringing labels and indications for destruction or erasure.

Criminal Remedy before Metropolitan Magistrate or Judicial Magistrate of First Class against “falsifying or falsely applying” the GI or “selling goods” under false GI: imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees:

The offences under section 39 or section 40 or section 41 shall be cognizable.

Prohibition of Registration of GI as TM

According to Section 25 of GI Act provides for  refusal or invalidation for the registration of a trade mark (by the Registrar of Trade Marks) which contains or consists of a GI if use of such GI in the trade mark for such goods, is of such a nature as to confuse or mislead the persons as to the true place of origin of such goods or class or classes of goods; Or, contains or consists of a GI identifying goods or class or classes of goods notified under sub-section (2) of section 22 (Additional Protection).
According to Section 9(1)(b) of the Trade Marks Act: trademarks exclusively consisting of marks or indications which may serve in trade to designate “geographical origin” shall not be registered unless proved distinctiveness or is a well-known mark.