Geographical Indication of Goods Act, 1999

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Chapter 1 deals with the definitions of the expressions used in the Act^[1]. Chapter 2 provides for the maintenance of the Register of Geographical Indications, conditions of registration and related matters^[2]. Chapter 3 sets out the procedure for such registration of geographical indications and the duration of registration^[3]. Chapter 4 declares the effect of registration, the rights conferred by registration, infringement of registered geographical indications, etc.^[4] Chapter 5 contains special provisions relating to trademarks and prior users of trademarks containing geographical indications^[5]. Chapter 6 provides for rectification and correction of the Register of Geographical Indications^[6]. Chapter 7 contains provisions enabling appeals against the orders of the Registrar of Geographical Indications to the Appellate Board designated under the Act, the procedure for making an appeal, and a bar of jurisdiction of courts over matters for which appeals are allowed under the Act to the Appellate Board^[7]. Chapter 8 declares what are offences under the Act, the penalties therefore and the procedure for dealing with those offences^[8]. Chapter 9, the last chapter contains miscellaneous provisions, the important ones being stating the powers of the Registrar and the implied warranty on sale of indicated goods^[9].

Though this Act is similar to the Trade Marks Act, 1999, and transposes certain principles of that Act, it should be noted that the basic difference lies in the nature of the Trademark and a Geographical Indication. The purpose of a trademark is to indicate the source of trade, as distinguished from the goods or services of another. It is the creation of the owner of the trademark. A geographical indication arises through public acknowledgement of certain qualities of goods emanating from a geographical region. And, rights in a geographical indication inhere only in an association of persons or organization registered as proprietors and an individual producer of any good in respect of which a geographical indication has been registered may only use it as an authorized user on being permitted by the Registrar, pursuant to an application to him.

What is a “Geographical Indication”? ; And a few pertinent sections

Section 2 (1) (e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999 states that:

“ ” 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 preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

Explanation.- For the purposes of this clause, any name which is not the name of a country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be;”

An understanding of the definition of a “Geographical Indication” is the key to comprehending the whole concept of an intellectual property right in a geographical indication. The components of this definition are: the indication should be in relation to goods; that indication identifies those goods; those goods may be agricultural goods; natural or manufactured goods; the indication is that the goods so indicated are indicated as originating or manufactured in the territory of a country, or a region or locality in the territory; a given quality, reputation or other characteristic of such goods is essentially attributable to that geographical origin; if the goods are manufactured goods, either the production or processing or preparation of goods, takes place in such territory, region or locality, as the case may be.

The aforementioned definition is much wider than the definition propounded by the TRIPS Agreement.

“TRIPS—Article 22—Protection of Geographical Indications

1. Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.

2. In respect of geographical indications, Members shall 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;

any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).

3. A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin.

4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory.”

The above given Article is to be read in context of Section 9 of the 1999 Act. The Section deals with the prohibition of certain kinds of registrations. It states the following:

“9. Prohibition of registration of certain geographical indications. –

A geographical indication-

(a) the use of which would be likely to deceive or cause confusion; or

(b) the use of which would be contrary to any law for the time being in force; or

(c) which comprises or contains scandalous or obscene matter; or

(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or

(e) which would otherwise be disentitled to protection in a court; or

(f) which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin, or which have fallen into disuse in that country; or

(g) which, although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be, shall not be registered as a geographical indication.

Explanation 1. – For the purposes of this section,” generic names or indications”, in relation to goods, means the name of a goods which, although relates to the place or the region where the goods was originally produced or manufactured, has lost its original meaning and has become the common name of such goods and serves as a designation for or indication of the kind, nature, type or other property or characteristic of the goods.

Explanation 2. – In determining whether the name has become generic, account shall be taken of all factors including the existing situation in the region or place in which the name originates and the area of consumption of the goods.”

On the other hand, Section 21 sets out the rights conferred by the registration of a geographical indication under the Act.

“21. Rights conferred by registration.-

(1) Subject to the other provisions of this Act, the registration of a geographical indication shall, if valid, give,-

(a) to the registered proprietor of the geographical indication and the authorised user or users thereof the right to obtain relief in respect of infringement of the geographical indication in the manner provided by this Act;

(b) to the authorised user thereof the exclusive right to the use of the geographical indication in relation to the goods in respect of which the geographical indication is registered.

(2) The exclusive right to the use of a geographical indication given under clause (b) of sub- section (1) shall be subject to any condition and limitation to which the registration is subject.

(3) Where two or more persons are authorised users of geographical indications, which are identical with or nearly resemble each other, the exclusive right to the use of any of those geographical indications shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by anyone of those persons as against any other of those persons merely by registration of the geographical indications, but each of those persons as otherwise the same rights as against other persons as he would have if he were the sole authorised user.”

Section 22 of the Act declares when an infringement of a geographical indication is committed Registration itself is prima facie evidence of the validity of the indication.

“22. Infringement or registered geographical indications.-

(1) A registered geographical indication is infringed by a person who, not being an authorised user thereof,-

(a) uses such geographical indication by any means in the designations or presentation of goods that indicates or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner goods; or which misleads the persons as to the geographical origin of such goods;

(b) uses any geographical indication in such manner which constitutes an act of unfair competition including passing off in respect of registered geographical indication.

Explanation 1.- For the purposes of this clause,” act of unfair competition” means any act of competition contrary to honest practices in industrial or commercial matters.

Explanation 2. – For the removal of doubts, it is hereby clarified that the following acts shall be deemed to be acts of unfair competition, namely:-

(i) all acts of such a nature as to create confusion by any means whatsoever with the establishment, the goods or the industrial or commercial activities, of a competitor;

(ii) 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;

(iii) geographical indications, the use of which in the course of trade is liable to mislead the persons as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods; (b) uses another geographical indication to the goods which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the persons that the goods originate in the territory, region or locality in aspect of which such registered geographical indication relates.

(2) The Central Government may, if it thinks necessary so to do for providing additional protection to certain goods or classes of goods under sub- section (3), by notification in the Official Gazette, specify such goods or class or classes of goods, for the purposes of such protection.

(3) Any person who is not an authorised user of a geographical indication registered under this Act in respect of the goods or any class or classes of goods notified under sub- section (2), uses any other geographical indication to such goods or class or lasses of goods not originating in the place indicated by such other geographical indication or uses such other geographical indication to such goods or class or classes of goods even indicating the true origin of such goods or uses such other geographic l indication to such goods or class or classes of goods in translation of the true place of origin or accompanied by expression such as” kind”,” style”,” imitation” or the like expression, shall infringe such registered geographical indication.

(4) Notwithstanding anything contained in this section, where the goods in respect of which a geographical indication has been registered are lawfully acquired by a person other than the authorised user of such geographical indication, further dealings in those goods by such person including processing or packaging, shall not constitute an infringement of such geographical indication, except where the condition of goods is impaired after they have been put in the market.”

[1]S. 2

[2]S. 3- S. 10

[3]S. 11- S.19

[4] S. 20- S. 24

[5] S. 25- S. 26

[6] S. 27- S. 30

[7] S. 31- S. 36

[8] S. 37- S. 54

[9] S. 55- S. 87

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