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Dear Reader,
The Legal Department at UJA is delighted to impart certain legal knowledge, as construed under the Legal Chronicle, to keep readers aware of recent updates and developments in various aspects of the law. Our goal is to help our readers become familiar with the complexities of both Indian and international law.
In this edition of the Legal Chronicle, we provide an overview of Geographical Indications (GIs) in India. We also analyze a few case studies and legal precedents that highlight the importance of having a law in this domain.
We hope this edition generates enthusiasm among our readers and successfully delivers a wealth of legal knowledge as intended. If you have any feedback or would like us to include additional information to make this issue more informative, please feel free to write to us at legal@uja.in.
Geographical Indications (GIs) contribute significantly to intellectual property (IP) law and hold great importance for many countries. Typically, a GI includes the name of a specific place that defines the origin of certain goods. The protection of GIs can be seen as joint exclusive rights granted to producers in a geographical area eligible for protection. These rights aim to safeguard their interests and help combat unfair competition. Additionally, GIs enhance the value of products and reduce the potential for “consumer deception.”
India, being rich in natural and agricultural products, needed effective protection for GIs, as there was previously no legislation providing adequate safeguards. To address this, India became a member of the TRIPS Agreement under the WTO, and in compliance with it, the Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act, 1999) was enacted. This legislation ensures adequate protection for all goods registered under it.
Before 1999, there was no law in India to protect Geographical Indications. Therefore, the Geographical Indications of Goods (Registration and Protection) Act, 1999 was enacted and came into effect on September 15, 2003. Several rules and amendments followed:
The Geographical Indications of Goods (Registration and Protection) Act, 1999 is the current legislation governing GIs in India. The objectives of the Act include:
India has an undeniable GI system that empowers local artisan groups and fosters Indian culture. India has thus taken important steps that can ensure there is legal protection for all the products of GI. Furthermore, there are various institutions and agencies that develop successful methods of marketing that popularize GI tagged items. Therefore, GI tagged items are expected to face a huge rise in the future, this is due to the constant backing that is being provided by the government. Also, with the rise of consumer sentiments towards having high quality expectations, along with traditional products, and increased market share within the international markets and higher exports play a huge role in the increase of the use of GI in the future.
These two case studies point out the importance of registration of a GI, wherein if no such registration is done then there cannot be any remedy against any infringement.
Case Name: Tea Board vs ITC Limited on 20 April 2011 (GA No. 3137 of 2010; CS No. 250 of 2010)
Plaintiff: Tea Board of India
Defendant: ITC Limited
Date: 20 April 2011
Brief Facts:
A suit for trademark infringement was filed by The Tea Board of India against ITC Limited. This was done due to the use of the name “Darjeeling” as its refreshment lounges. Wherein it was named “Darjeeling Lounge” as the hotel located in Kolkata. The suit was filed by the plaintiff before the court of the Calcutta High Court and was rejected by the single judge. The Division Bench of the Court further upheld the decision. The plaintiff appealed before the Supreme Court, wherein the court directed the suit to be returned before the Calcutta High Court.
Issues:
Whether the plaintiff, in lieu of trademark registration, had acquired the right to tea that originated from the tea gardens that were registered in Darjeeling. Also, if they could use the logo and name “Darjeeling.” Furthermore, when it comes to defendants, whether they have falsely suggested the goods and services owe their origin to Darjeeling. Also, if they have falsely operated under a license of the plaintiff.
Decision:
The court pointed out that the plaintiff didn’t obtain registration under Sections 18 and 23 of the Trademark Act, 1999. The registration was done under Chapter VIII of the Trade and Merchandise Marks Act, 1958. The court also interpreted the definition of both these legislations and stated that the protection of the certification mark under the Trademark Act, 1999, will only extend for goods and not services. In addition to this, the court even investigated the copy of the entry at the registry done for trademarks and held that the certification trademark was only for goods and not the services of the plaintiff.
The court stated that the rights under the trademark certification are limited when compared with the regular trademark. In addition to this, the court even observed that the only right that has been granted by the registration of a trademark is to certify tea as “Darjeeling Tea.” The plaintiff was also not able to substantiate the allegations that were brought before the court. Furthermore, the plaintiff was also not able to provide an argument or prove if there was any dilution of the trademark or the geographical indication.
The attempted registration by the defendant for the trademark “Darjeeling” was done in bad faith, and as both parties were in different industries, the allegation of unfair competition was also repealed. Hence, the court concluded by stating that this suit was frivolous and dismissed the suit with a cost of Rs. one lakh.
In conclusion, GI laws are very important for producers and consumers, and it is a law that provides protection to all products of GI. Also, as there is constant evolvement with the aspects of GI, there is a need to have even more rigid provisions under the legislation that can protect any infringement of a GI product. There are still some sellers that fraudulently sell imitated goods for profit. Hence, for a diverse country like India there needs to be better preservation of products, and protection from any infringements.
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