News and Analysis • Volume 13 • Number 3 • September 2009

21. Protection of Geographical Indications: The Indian Experience

by T.C James

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From time immemorial, like most peoples of the ancient world, Indians have referred to products by the names of their places of origin. They have always known that goods from certain regions have distinct qualities and characteristics, but formal protection for such products is relatively recent.

Traditionally, buyers of silver carp have preferred those from Padma river in the Eastern part of the Indian sub-continent. People constructing a house or a building would ask for the Rajasthan marbles. Association of place names with certain qualities of a product has been particularly prevalent in the case of textiles and dress materials. Saris , for instance, always used to be referred to by their places of manufacture. In fact, they became so closely associated that the place name sometimes substituted totally for the product or generic name. A Kancheepuram without any product name is understood by the discerning customer as referring to Kancheepuram sari only. However, efforts to extend legal protection for those names are of recent origin in India.

Consequent on its membership of the World Trade Organisation and the attendant Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), India explored avenues for extending proper legal protection to geographical indications. While TRIPS Article 24.9 provides that WTO Members have no obligation to protect GIs that are not protected in the country of origin, they must extend protection to goods imported from other countries that do provide such protection. This fact weighed heavily in the government’s efforts to extend legal means to protect Indian geographical indications (GIs).

The Trade and Merchandise Marks Act, 1958 had provided some protection through certification marks. However, this provision did not extend direct legal protection to all producers since owners of such marks could resort to monopolisation through cartellisation.

Taking recourse to the provisions on ‘passing off’ under the same law was another means to protect GIs, but this was a slow and cumbersome process. It required proving that the infringer had deliberately tried to poach on the reputation of a particular product. Besides, success was not always guaranteed, as happened in the case of the Scotch Whisky Association, which had won a case at the state level High Court but lost at the Supreme Court.1

After having considered various options and reviewing the protection available for geographical indications in different jurisdictions of the world, the government of India finally opted for a sui generis legislation to protect its geographical indications.

The Geographical Indications of Goods (Registration and Protection) Bill, which entered into force in September 2003, sets up a Geographical Indications Registry and an Intellectual Property Appellate Board to hear appeals over the decisions of the Registrar of Geographical Indications. According to the legislation’s broad definition, a 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 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.”

The Act further clarifies that

“any name which is not the name of 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 not used upon or in relation to particular goods originating from that country, region or locality, as the case may be.”

It is interesting to note that in order to remove all doubts about the scope of goods, the Act states that any handicrafts or of industrial products, including food stuffs, fall within the meaning of ‘goods’.

The Act provides for a registration system through application. However, unlike with other intellectual property rights, the application must be made by an association of persons or producers or any organisation or authority established by or under a law for in force that represents the interests of the producers of the goods concerned. The reason behind this is that geographical indications are not built up by one individual but by a community of persons in a particular locality or region. This concept has also influenced the provision which prohibits assignments, transmissions, licensing, pledges and mortgages of any right arising out of registration of a geographical indication. The period of protection is for ten years which can be renewed indefinitely.

The first application received by the Geographical Indications Registry was for Darjeeling tea. Dated 27 October 2003, it was filed by the Tea Board of India, an authority established by the government. The history of Darjeeling tea goes back to the 18th century, when tea was planted in the salubrious climate of the Darjeeling hills of Eastern India. Due to the special weather and soil conditions in the region, Darjeeling tea has a unique taste. The application was examined by a consultative group comprising legal and technical experts, as well as the Registrar of Geographical Indications. It was also advertised inviting oppositions, if any.

After completion of all formalities, Darjeeling tea became the first registered geographical indication of India on 29 October 2004. This was soon followed by the registration of Pochampalli ikat (fabric) and Chanderi sari (textiles) on 31 December 2004 and 28 January 2005, respectively.

Awareness-raising Is Key

The initiative to obtain geographical indications protection for Pochampalli ikat came out of the efforts by industry associations and the state government to revive the cluster of the textile industry in a group of villages near Hyderabad, Andhra Pradesh. This involved organising the weavers into two associations, depending on the raw material they were using and introducing various standards before moving the application for registration. Similar steps had to be undertaken in the case of Chanderi sari. The crucial issue was creation of awareness among stakeholders.

Because the legislation was new, the government took the lead in sensitising the people about the various provisions of the Act, the advantages of protecting various geographical indications of India through registration under the Act, and the procedure for registration. It was instrumental in organising 107 awareness programmes in different parts of the country. Most of these sensitisation workshops were held in small towns and even villages. Stakeholders, namely producers, were involved in these programmes. This has had its impact. During the past five years, the Geographical Indications Registry has received 176 applications of which 106 have so far got registration. Most of the applications received have been for handicrafts (107 out of 176), followed by agricultural goods numbering 44. The process has been very meticulous and judicial. So far, only two appeals have been filed against the decisions of the Registrar with the Intellectual Property Appellate Board.

India, which is still primarily an agricultural country with social, cultural, ethnic, food diversities, must have thousands of products that would qualify for a geographical indication. The variety in handicrafts, including handloom textiles and food items alone, will be substantial.

Benefits of GI Registration

Most of the 106 registered geographical indications have been for handloom textiles and handicrafts, two areas predominated by the small scale sector. So far at least, the experience of a couple of textile products, including the Chanderi sari and Pochampalli ikat, has been that the protection provided by registration as geographical indications helped the producers to boost their economic returns significantly. India, therefore, must continue to make efforts to get all products with a geographical indication tag on the register.

Getting products on the GI registry is only the first step towards realising their economic potential. Even this itself has been a major problem. Most of the people engaged in the production of such products are small households or small units, although in the same area. Convincing them to organise into associations to move the application for registration was a Herculean task in many instances. It is also necessary to draw up standards and inspection mechanisms to ensure quality. These, however, are just teething troubles; once the system gets organised it should be able to take care of it self.

The second step will be the development of appropriate marketing strategies, particularly with regard to exports. This would involve obtaining legal protection for Indian GIs in the major markets of the world. Here again, small players are at a disadvantage since they do not have the wherewithal to engage attorneys to study the systems available in the countries that are best suited for their products. They also lack the economic strength to get into high-end marketing to generate demand for their goods as desirable premium products. This is unlike the case of wines and spirits industries in the developed world.

India Seeks Strong GI Protection for All Products at the WTO

Since its strength is in products other than wines and spirits, India has been arguing in the TRIPS Council for that the higher level of protection provided under TRIPS Article 23.1 for GIs denoting wines and spirits should be extended to all products. Two levels of protection for one form of intellectual property is in itself not logical, and this kind of distinction has not been made in the other intellectual property rights. If a wine’s reputation and market can be hurt by the claim of another wine that it is some kind of a variation of the former, so can a handloom silk get hurt by a claim by a product from a different region.

Negotiations are also underway on the establishment of a multilateral register for wine and spirit GIs. There is no rationale for limiting an international register to wines and spirits only when there are geographical indications in so many different fields, such as agriculture and manufacture, as well as the natural goods sector. A geographical indication is a marketing tool, besides protecting consumer interests. The tool ought to be equally available for all products as in the case of patents and trademarks. India has been consistently arguing in the TRIPS Council for an extension of the multi-lateral register to all products. Having such a register for wines and spirits alone will be of no use to countries like India, whose traditional strengths are in handicrafts, handloom textiles and food products.

Not only in India, but also in most other developing countries legal protection for geographical indications is of comparatively recent origin. These countries need to look into their products which bear geographical indication tags and urge the international community to make the necessary amendments to the TRIPS Agreement so that their domestic producers gain economically. For the large number of artisans engaged in the production of such products this will also be a social boost, a recognition for their skill which has local roots. Further, the protection afforded by GIs for handicrafts, handlooms and food stuffs, help to some extent the preservation of local culture and traditional knowledge, as these are tangible expressions of culture. Artisans may, perhaps, need help from governments in developing their marketing strategies. But any investment in the sector is likely to boost the rural economy, where the majority developing country populations still live.

T.C. James is former Director, Intellectual Property Rights Division, Department of Industrial Policy & Promotion, Ministry of Commerce & Industry, Government of India. The article is based on documents and information available to the public. The views are personal and not of the Government of India.

endnote

1. Khoday Distilleries Ltd. v. Scotch Whisky Association & another. Two other such cases are Dyer Meakin Breweries v Scotch Whisky Association, and Scotch Whisky Association & another v Parvara Sahakar Shakar Karkhana Ltd.

One response to “21. Protection of Geographical Indications: The Indian Experience”

Prof. J. george 30th September 2009 at 12:06
T C James needs to be complimented and ICTSD’s efforts in publishing the “Indian Experience of Protecting the Geographical Indications certainly is commendable. Not only the authoritative and analytical piece updates the readers, the state of play in as much as geographical indication (GI) is concerned comes out very clearly. The socio economic rationale as the driver for registering GIs has been well brought out in the reasoned examination by James. Here we must also recognise that since GI is a late entrant into IPR protection to the artisan class in India, there have been a number of successful civil society initiatives , of course in addition to the state government actions, to check the exploitation of producers. In fact it is indeed providential as well instructive to point out here that a roundtable at the European Parliament PDO and PGI representatives coincidental reiterated the need for protection against usurpations and demanded modification in the European legislation to allow better management of production protocols.

The success stories emanating from the handloom sector do suggest that marketing practices within an artisanal mode of dispersed production required many adaptations and yet quality of the product was not compromised. The integration of non-market informal elements in the handloom sector indicate that innovation and creative pursuit with commitment towards the artisanal group do provide economic gain opportunities, albeit without resorting to GI type IPR protection regime.
However, the business practices that brought success to the initiative was derived from the Trade Mark type of protective cover already available in India in dispersed spaces and locations.
Indeed, the territorial ingenuity is available in an oral tradition form. The attempt at documenting them by the national level design and development centre is a move in the right direction. The challenge certainly is in converting these oral knowledge bases into documentary evidence. The handloom and artisan based activities have demonstrated economies of small scale production. The production landscape is in parallel complimentary to the agricultural production for two basic reasons. Traditionally, the symbiotic relationship between the two is reinforced through input supply, such as vegetable dyes, raw material, etc, route. The second path is the utility of these activities in generating supplementary employment opportunities.

GI protection though similar to the Trade Marks protection has two unique dimensions in indication of geographical location and appellation of origin that indicates not only the specific location but also the characteristics of qualities brought about by a combination of geographical environment. Since India is a signatory to the Paris Convention for the protection of industrial property but not to the Lisbon Agreement for the protection of appellations of origin and their international registration, one wonders if it is the machinations to leverage India to sign the Lisbon Agreement or, for that matter, the WIPO administered Madrid Agreement and Madrid Protocol on system of international registration of marks.

There is absolutely no doubt that the Doha Ministerial Declaration under paragraphs 12 and 18 mandating provision for a higher level of GI protection to products other than “Wines and Spirits” has to come to fruition on economic merits alone.

For illustration, it is reported that the Pepper exports had to suffer heavily in the absence of GI protection, whereas the “Darjeeling Tea” incurred legal and registration expenditure of over Rs. 9.4 millions. Enforcement expenditure will be additional and given the transaction cost involving legal systems in the developed countries, many developing countries can ill afford such huge recurring expenditure.
Although, the Tea Board’s action to safeguard the “Darjeeling” logo and “Darjeeling Tea” as a Certification Trade Mark in US (indeed before getting the GI protection in India) and many other market is certainly an exception, the moot point is how many of GI right holders could afford this huge legal expenses alone. There would indeed be other additional preparatory expenses required before legal remedies are sought.

The Tea Board or similar commodity board route to gaining GI registration, though commendable is too expensive to be followed by other commodity boards or potential GI right holder groups. The farmer self-help groups in association with local bodies like the Panchayati Raj Institutions (PRIs) are alternatives waiting to be tapped in a most cost-effective manner. A proactive affirmative action, albeit, in a decentralised yet coordinated framework in providing GI protection in the days to come will be the right step and give out the required signals to other developing countries and least developed country members of WTO. [For details see http://hipa.nic.in/SocioEconomic%20issues%20for%20Geographical%20Indications%20In%20India-.pdf.