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Effects of Registration of Geographical Indication


In our previous post, we discussed the systematic procedure and the Forms to be submitted for registering a Geographical Indication (“GI”). Registration of GI confers a number of rights to the registered proprietor and its authorized users. Part IV of the Geographical Indication Act, 1999 (the "Act") deals with the ‘Effects of registration of GI’.


  • The exclusive right to use the GI

The exclusive right to use the GI shall only be granted to the authorized users of the GI.[1] The list of authorized users is provided on the official website. For example, there are two authorized users of the Nagpur orange. Thus, the authentic Nagpur orange can be produced only by those users who are listed on the official website. Any person other than the authorized user claiming to produce the orange within the described geographical location shall infringe the right of the authorized users. However, this exclusive right is subject to any conditions and limitations.[2]


  • Passing off Geographical Indication

A suit for infringement of GI can be initiated only by the registered proprietor or authorized user of the registered GI.[3] In the case of an unregistered GI, the action of passing off can be initiated by the user whose rights have been violated.[4] This remedy is available for unregistered users and shall protect the goodwill, and reputation of the users against any unfair trade practices.


The case of Scotch Whisky Association v. Golden Bottling Ltd[5] is an example for passing off where the Delhi High Court had held that ‘Scotch whisky’ is a GI originating from Scotland and the Scotch Whisky Association had Thus, they have the right to initiate passing off proceedings against Golden Bottling Ltd for violating their rights.


  • Infringement of Geographical Indication

It is the right of the registered proprietor and authorized users of the GI to receive relief if their registered GI has been infringed.[6] A GI tag is infringed by an unauthorized user in the following circumstances:

  • The GI has been used to represent particular goods such that the goods are produced somewhere other than their original place.[7] For example, Kolhapur chappals have a GI tag. When an unauthorized user in the streets of Janpath in Delhi sells similar footwear, falsely using Kolhapur chappal GI, it constitutes infringement.

  • The GI is used by any unauthorized user such that the act constitutes unfair competition.[8] An act of unfair competition is when the act is contrary to the honest practices set in the industry. These acts may include causing confusion or falsely accusing in the course of trade regarding the goods or establishment or commercial practices of a competitor, or misleading the public about the characteristics, manufacturing process, quantity, quality, etc. of GIs. For example, the word ‘champagne’ denotes that wine has been produced in France. When another wine company from Spain produces and sells its wine under the name ‘Spanish Champagne’ it can cause confusion among the public.[9]

  • A false GI is used to represent those goods with respect to their territory, region, or locality, even though those goods possess original characteristics. For example, Mysore silk and Kanjeevaram silk are two different GIs. If a Mysore silk saree that has original characteristics is sold as a Kanjeevaram silk saree, then it shall be an infringement.


In special circumstances, the Central Government may also grant additional protection.[10] The circumstances under which the protection is granted shall include:

  • a false representation of GI tag on goods that do not belong to that particular geographical area,

  • where the GI tag is used to mislead the consumers regarding the origin of such goods,

  • when the GI tag is accompanied by expressions like ‘kind’, ‘style’, or like expression by an unauthorized user.[11]

These circumstances are considered an infringement of GI. The request for additional protection shall be made by submitting Form GI-9(A).


An exception to the acts of infringement is when a registered GI is used by an unauthorized user but the right to use such GI has been lawfully acquired by that user.[12] Any act of infringement or passing off shall be brought before the District Court having jurisdiction.[13]


  • Prima Facie Evidence

The certificate of registration of GI shall act as prima facie evidence validating the GI for all the purposes before the appropriate court. Thus, the GI does not need additional evidence to prove its authenticity.[14] However, the rights conferred upon an unregistered GI shall not be affected by the non-availability of a certificate of registration.[15]


  • Protection of GI from third-party agreement

Another effect is that the registered GI cannot be a part of any third-party agreement like assignment, transmission, licensing, pledge, mortgage, etc.[16] The only option available by the authorized user to involve any third party is on the occasion of the death of the authorized user. In such cases, the rights are passed on to the successors of the deceased authorized users.


  • Conclusion

The Act, 1999 not only provides protection to the registered GI holders but also to the unregistered GI holders, thus covering a wide variety of users of GI. Irrespective of the registration status of any GI, anybody who tries to misuse or mislead such GI shall be held liable under the Act.



 

References: [1] Section 21 (1)(b) of the Act. [2] Section 21(2) of the Act. [3] Section 20 (1) of the Act. [4] Section 20 (2) of the Act. [5] 2006 (32) PTC 656 Del. [6] Section 21 (1)(a) of the Act. [7] Section 22 (1)(a) of the Act. [8] Section 22 (1)(b) of the Act. [9] J Bollinger v. Costa Brava Wine Co. Ltd., 1959 (3) All ER 800. [10] Section 21 (2) of the Act. [11] Section 21 (2) of the Act. [12] Section 22 (4) of the Act. [13] Section 66 of the Act. [14] Section 23 (1) of the Act. [15] Section 23 (2) of the Act. [16] Section 24 of the Act.

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