GI

GEOGRAPHICAL
INDICATIONS
By
Dr. Tabrez Ahmad
Associate Professor
of Law

Paithani weaving Banarsi Sarhi
Dr. Tabrez Ahmad,
Saturday, September 18, 2010 Blog: http://iplexindia.blogspot.com, www 1

Agenda
1. What is GI?
2. IP GATT, WTO
3. TRIPS
4. Certification Trademarks and GI
5. Collective Marks and GI
6. TRIPS and GI
7. Protection of GI
8. Case Study

Dr. Tabrez Ahmad
Saturday, September 18, 2010 Blog: http://iplexindia.blogspot.com 2

Why include IP in GATT?
Reasons for Including IP on the GATT Agenda:
1. Growth in world trading.
2. Increased importance of global IP protection.
3. Existing provisions of international law were perceived
insufficient.
4. Absence of enforcement of rights before national judicial
authorities.
5. Lack of a dispute settlement mechanism between States.
6. Standards were outdated.

Dr. Tabrez Ahmad

The Agreement on Trade-Related Aspects
of Intellectual Property Rights (TRIPs)

The most detailed and
comprehensive
multilateral agreement
on intellectual property
yet negotiated.

The Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPs)

• TRIPS introduced intellectual property rules into the
multilateral trading system for the first time.
• Membership in WTO requires a country to agree to
adopt the minimum standards for intellectual
property regulation.
• IP laws are established and enforced by each
individual Member Country.

Dr. Tabrez Ahmad

The Agreement on Trade-Related Aspects
of Intellectual Property Rights (TRIPs)
• How basic principles of the trading system and other
international intellectual property agreements should be
applied?
• How to give adequate IP protection?

• How to enforce IP rights?

• How to settle disputes on IP between members of the
WTO?
• Special transitional arrangement.

Dr. Tabrez Ahmad

TRIPS Art. 41-61: Enforcement

Part III Enforcement of
Intellectual Property
Rights
1. General Obligations
2. Civil and Administrative
Procedures and Remedies
3. Provisional Measures
4. Special Requirements Related
to Border Measures
5. Criminal Procedures

TRIPs Art. 41: General Principles

• “Members shall ensure that enforcement procedures
… are available under the law to permit effective
action against infringement of intellectual property
rights…”
• “expeditious remedies”
• “constitute a deterrent”

Dr. Tabrez Ahmad

TRIPs Plus: Improving TRIPs
Standards
• Pre-established damages available at election of
rightholder.
• Seizure of documentary evidence related to
infringement.
• Goods found to be infringing and the materials and
implements used to create them shall be destroyed.

Dr. Tabrez Ahmad

Standards
• Require infringer to provide information regarding
others involved in infringement, means of production
and channels of distribution.
• Enforcement procedures for technical protection
measures and rights management information.
• “Ex officio” authority for criminal and border
measures.

Dr. Tabrez Ahmad

Standards
• Criminal procedures even where no motive of
financial gain.
• Seizure and forfeiture of goods, assets, means to
produce and evidence.
• Criminal procedures for trafficking in counterfeit
labels.
• Internet Service Provider liability.

Dr. Tabrez Ahmad

Names & Places
as Marks
Additional Cases:
To Review The Scottish Whiskey Association v.
The Case,
Click Here
United States Distilled Products

To Review
The Case, Kraft Gen. Foods, Inc. v. BC-USA, Inc.
Click Here

Dr. Tabrez Ahmad

Geographical Indications as Certification
Marks

• Geographical indications can be protected through a
trademark system:

• As collective marks. or;

• As certification marks

Dr. Tabrez Ahmad

Geographical Indications and
Collective Marks

• Sections 61-68 of Trade Marks Act 1999.
• Indicate membership in a group or organization.

• Can also identify group members.

• Proprietors of collective marks
can exclude or allow
people from using the
mark.
Dr. Tabrez Ahmad

Geographical Indications and
Certification Marks
• Sections 69-78 of Trade Marks Act 1999

• GIs are a subset of trademarks because they are
source-identifiers, guarantees of quality, and business
interests.

Dr. Tabrez Ahmad

Certification Marks
A certification mark is a type of trademark
which indicates to consumers:
1) geographic origin of a product;
2) materials used, quality, method of manufacture, and
accuracy; or
3) products made under the auspices of, or by
members of, a specific trade union or organization.

Dr. Tabrez Ahmad

What is GI?
 Many goods possess their peculiar properties due
to their geographical origin.
 GI is the best method to indicate the
geographical origin of goods and services.
 Many agricultural products (tea, rice); dairy
products (cheese), wines and spirits
(Champagne) owe their special quality and
reputation to their geographical place of growth
or processing.
Dr. Tabrez Ahmad,

TRIPs Art. 22: Geographical
Indications
• “[I]ndications 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 geographic origin.”
• Examples: Idaho potatoes, Napa Valley wine,
Washington State apples, Darjeeling Tea, Haldi,
Neem, Basmati Rice, Kolhapuri Hawai Chappal
etc.
Dr. Tabrez Ahmad

Protection of GI
 GI is not owned by a single owner
 Any producer in the region can use the GI on the
product provided it is prepared by the norms set
out for the use of that GI.
 GI is registered in the national register and is
similar to the certification mark identifying the
origin of the good.
 Govt. can register GI in the international register
maintained by WIPO for world wide protection.
 It is an offence to use false GI on goods.

Dr. Tabrez Ahmad,

Protection of GI Conti…
U.S., Australia, Canada and others:
• Private rights to be enforced by right holder.
• Subject to priority rules (a later-in-time GI cannot
trump an earlier established trademark).

European view:
• Monitored and enforced by the government.
• Trump pre-existing trademarks containing the terms.
(would repatriate generic terms).

Dr. Tabrez Ahmad

“COLOMBIAN”
 U.S. Registration No.
1,160,492 (registered July 7,
1981)
 For “coffee”
 “The mark certifies that the coffee
was grown in the Republic of
Colombia and that such coffee has
been subjected to standards
inspection authorized by applicant
and … passing recognized current
minimum quality standards required
for such export as set and enforced
by said Federation….”
Registrant: Republic of Colombia

“DARJEELING”
 U.S. Registration No.
2,685,923
 For “Tea”
 “The certification mark, as used by
authorized persons, certifies that the
tea contains at least one hundred
percent (100%) tea originating in the
Darjeeling region of India and that
the blend meets other specifications
established by the certifier.”

Registrant: Tea Board of India

Dr. Tabrez Ahmad

“Egyptian Cotton”

 Application Serial No. 76-
229673
 For (a variety of products
made wholly or substantially
of Egyptian cotton)
 “The certification mark, intended
to be used by authorized persons,
is intended to certify that the
products identified above contain
100% Egyptian Barbadense
cotton.”
Applicants: Alexandria Cotton Exporters
Association and the Egyptian Ministry of
Economy and Foreign Trade

“Parmigiano Reggiano”
 U.S. Trademark Registration
Nos. 1,754,410; 1,892,496;
1,896,683; 2,320,595
 For “Cheese”
 “The certification mark, as used by
person authorized by the certifier,
certifies that the goods originate in
the Parma-Reggio region of Italy,
specifically the zone comprising the
territory of the provinces of Parma,
Reggio Emilia, Modena and Mantua
on the right bank of the river Po and
Bolgona on the left Bank of the river
Reno.”

Dr. Tabrez Ahmad

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