Geographical Indication Practice
YEARS OF EXPERIENCE
Defending Geographical Indications (GIs)
Apart from prosecuting GI applications, the firm also has extensive experience in defending the rights of GIs for its clients in India. The firm has been handling hundreds of oppositions and rectification actions for some of the most prominent GI bodies from around the world.
Featured Industry Expertise
Wines & Spirits
Representing the interests of the Government of India in the protection of the Basmati name both domestically and internationally for the last 25-plus years
Assisted the Government of India in preparing the first draft of the Indian GI statute
Representing the interests of world-renowned consortia that handle the interests of GIs such as Scotch Whisky, Champagne, and Cognac in India.
Services Offered in GI Practice
Drafting and filing of GI applications and supporting statements of case
Reviewing and responding to examination reports
Attending hearings in connection therewith and appearing before committees constituted by the GI office
Renewal of GIs
Advisory & contentious
Advising on GI issues related to bilateral negotiations, TRIPs agreement, long-term strategy for GI protection and conducting workshops on GIs for stakeholders.
Providing opinions on chances of success in opposing trademarks incorporating GIs for similar and dissimilar goods, on the protection of unregistered GIs in India and offering creative solutions and on how to tread the Indian legal landscape for long term GI protection.
Advising overseas clients on the registrability and protection of GIs in India including strategy and protection steps through litigation.
Filing oppositions and rectifications against trademarks incorporating GIs
Defending oppositions filed against GI applications
Coordinating with watch agencies for global watch of instances of GI violation
Advising clients on strategy for legal action against violations
Market watch in India for GI violations, both online and offline
Border enforcement of GIs through custom recordation
AWARDS & RECOGNITIONS
Frequently Asked Questions
Geographical indications are defined by the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs) as indications that identify goods as originating 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 are essentially attributable to its geographical origin.
The Indian Geographical Indications of Goods (Registration & Protection) Act, 1999 (“the GI Act”) has defined geographical indications closely in terms of the TRIPs definition as follows:
“geographical indication”, in relation to goods, means 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 production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be”.
Although not defined in the GI Act or under the TRIPs Agreement, there are essentially two types of geographical indications, namely, geographical indications that are geographical names and those that are non-geographical, traditional names.
Examples of geographical indications that are geographical names are DARJEELING tea, SCOTCH WHISKY and KANJEEVARAM Sarees. Examples of geographical indications that are non-geographical traditional names are BASMATI rice, PASHMINA Shawls and FETA Cheese.
A geographical indication essentially protects the property and goodwill in the name that indicates the goods associated with it. Since most geographical indications are produced through traditional processes that involve least or no industrialization, there is a premium associated with most of these products. The property in a geographical indication that needs protection is this premium which is nothing but the collective goodwill enjoyed by the products as unique high quality products produced only in that specific region by employing traditional methods of production.
A geographical indication needs to be protected for two reasons. First, to protect the rights holders from those third parties who misuse the geographical indication. Secondly, to protect the consumer from getting defrauded by fakes in the market.
When the rights in a geographical indication get whittled away due to lack of protection, it becomes a generic name for a type of that product. To illustrate, ‘Epsom Salt’ was a salt once associated with Epsom, UK as it originated there. Today, Epsom Salt refers to any Sulphate of Magnesium.
If a geographical indication becomes generic, then the producers may no longer expect a premium for their products. Gradually, the consuming public also would cease to associate the geographical indication with the region or the qualities, characteristics or reputation.
Currently, geographical indications are protected in India under the GI Act through registration.
However, it is also possible to protect geographical indications through a Certification Trade Mark registration under the Trade Marks Act, 1999. A Certification Trade Mark certifies the goods traded thereunder to be of a certain quality, standard, mode of manufacture or origin. Unlike a geographical indication, a Certification Trade Mark involves licensing by the proprietor thereof who does not himself trade in the goods so certified.
While the GI Act as well as the TRIPs agreement refer only to protection of goods under this law, there are jurisdictions where services are protected as geographical indications.
A GI is protected for a period of 10 years and may be renewed thereafter for 10-year terms indefinitely.