UNIT III

TRADEMARKS & GEOGRAPHICAL

INDICATION
By Ridhi Singhal
Assistant Professor
Faculty of Law
Marwadi University
 OBJECTIVE OF TRADEMARK LAW

The object of trade mark law is to deal with

precise nature of the rights which a person
can acquire in respect of trade mark, the
mode of acquisition of such rights, the method
of transfer of those rights to others, the precise
nature of infringement of such rights, the
procedure for enforcement of those rights and
the remedies available in respect thereof.
 MEANING OF TRADE MARK

A trade mark is a symbol or word that characterizes your product or

service and distinguishes it from other products or services on the market. It
makes your customers recognize your product or service.
A trade mark is a type of intellectual property consisting of a
recognizable sign, design, or expression which identifies products or
services of a particular source from those of others although
trademarks used to identify services are usually called service
marks.
The trade mark owner can be an individual, business organization, or
any legal entity. A trade mark may be located on a package, a
label, a voucher, or on the product itself. For the sake of corporate
identity, trademarks are often displayed on company buildings. It is
legally recognized as a type of intellectual property
 TRADE MARK SYMBOLS

 The two symbols associated with trademarks, (the

trademark symbol) and ® (the registered trademark
symbol), represent a mark’s status and its level of
protection.

 While can be used with any common law usage of

a mark, ® may only be used by the owner of a mark
following registration with the relevant national
authority. The proper manner to display either symbol
is immediately following the mark in superscript style
SOME COMMON EXAMPLES OF TRADE
MARKS
 FUNCTIONS OF TRADE MARK
 A trade mark normally performs the following functions:
i. It identifies the goods of one trader and distinguishes them
from goods sold by other;
ii. It signifies that all goods bearing a particular trade mark
come from a single source
iii. It signifies that all goods bearing a particular trade mark are
of an equal level of quality
iv. It acts as a prime instrument in advertising and selling the
goods.
The main functions of a trade mark are, therefore identification,
source, quality and advertising.
 HISTORY OF TRADE MARKS IN INDIA
 In India proprietary protection for marks is ancient. Around the 10th century,
a mark synonymous as “merchants mark," appeared, and symbols among
traders and merchants increased significantly. These marks, which can be
considered one kind of "proprietary mark," essentially were used to prove
ownership rights of goods like marking cattle, potteries, trading emblems on
currencies, etc.

 In the 20 century prior to 1940 there was no official Trademark Law in India.
Numerous problems aroused on infringement, passing-off, etc. and these
were solved by application of section 54 of the Specific Relief Act 1877 and
the registration was adjudicated by obtaining a declaration for the
ownership of a trademark under Indian Registration Act 1908.
 To overcome the above difficulties the Indian Trademarks Act
was passed in 1940, this corresponded with the English
Trademarks Act. After this, trade and commerce continuously
grew, and there was an increasing need for more protection of
Trademarks. The replacement to this act was the Trademark and
Merchandise Act, of 1958.
 India became a party to the WTO at its very inception. One of
the agreements in that related to Intellectual Property Rights
(TRIPS). In December, 1998 India acceded to the Paris
Convention. Meanwhile, the modernization of Trade and
Merchandise Marks Act, 1958 had been taken up keeping in
view the current developments in trading and commercial
practices, increasing globalization of trade and industry, the
need to encourage investment flows and transfer of technology,
the need for simplification of trademark management system
and to give effect to important judicial decisions.
 To achieve these purposes, the Trademarks Bill was
introduced in 1994. The Bill pointed towards the changes
which were contemplated and were under
consideration of the Government of India, but it lapsed
in 1994.
 A comprehensive review was made of the existing laws
in view of the developments in trading and commercial
practices, and increasing globalization of trade and
industry. The Trademarks Bill of 1999 was passed the by
Parliament that received the assent of the President on
30 December, 1999 as Trade Marks Act, 1999 thereby
replacing the Trade and Merchandise Mark Act of 1958.
The Trade Marks Act, 1999 and the Trade Marks Rules,
2002 govern the law relating to Trade Marks in India
 STATUTORY DEFINITION OF TRADEMARK
 Section 2(1) (zb): defines “Trade Mark":
Trademark means a mark capable of being represented
graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include
shape of goods, their packaging and combination of colours;
and
I. In relation to Chapter XII (other than section 107), a registered
trade mark or mark used in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the
course of trade between the goods or services, as the case
may be, and some person having the right as proprietor to use
the mark; and
 II. In relation to other provisions of this Act, a mark used
or proposed to be used in relation to goods or services
for the purpose of indicating or so to indicate to a
connection in the course of trade between the goods or
services, as the case may be, and some person having
the right, either as proprietor or by way of permitted user,
to use the mark whether with or without any indication of
the identity of that person, and includes a certification
trade mark or collective mark.
 WHAT MARKS ARE REGISTRABLE?
The Trade Mark Act, 1999 does not define the
categories of marks registrable or the requisites for
registration of a mark. It defines what marks are not
registrable under two heading:

a. Absolute grounds for refusal(Section 9)

b. Relative grounds for refusal (Section 11)

and then proceeds to state the circumstances in which

they may be registered.
 BASIC CONDITIONS AS TO THE
REGISTRABILITY
i. A mark must be capable of distinguishing
goods and services of one person from that
of another;

ii. It must be capable of being graphically

represented.
SPECTRUM OF
DISTINCTIVENESS
 DISTINCTIVENESS AS THE REGISTRABILITY
CRITERIA
 Why: to exclude marks, which do not even perform the
distinguishing function.

 Imperial Tobacco Co. of India Ltd.v. Registrar of TradeMarks and

Anr., AIR 1968 Calcutta 582 defined the term ‘distinctiveness’ as
some quality in the trademark which marks the goods so marked as
distinct from the other products.

 The distinctiveness may be inherent or ‘acquired’.

 An ideal trade is one that is distinctive, non-descriptive, and non-

generic in nature. Eg: Yahoo for a search engine.
 Acquired distinctiveness or secondary Meaning may be assessed
based on the following factors:

 Customer perception, the exclusivity of use, the manner of use,

duration of goods marketed, advertisements, and consumer
surveys.

 What would be ‘inherent distinctiveness’?

 Justice Learned Hand in Abercrombie & Fitch Co .v. Hunting

World, Inc., 537 F.2d4 (2ndCir.1976), laid down as spectrum that
measures distinctiveness on the following categories:
 ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION
 Section 9. Absolute grounds for refusal of registration.—(1) The
trade marks
a. which are devoid of any distinctive character, that is to say, not
capable of distinguishing the goods or services of one person
from those of another person;
b. which consist exclusively of marks or indications which may serve
in trade to designate the kind, quality, quantity, intended purpose,
values, geographical origin or the time of production of the goods
or rendering of the service or other characteristics of the goods or
service;
c. which consist exclusively of marks or indications which have
become customary in the current language or in the bona fide
and established practices of the trade, shall not be registered:
 Provided that a trade mark shall not be refused
registration if before the date of application for registration it
has acquired a distinctive character as a result of the use
made of it or is a well-known trade mark.
(2) A mark shall not be registered as a trade mark if—
a. it is of such nature as to deceive the public or cause
confusion;
b. it contains or comprises of any matter likely to hurt the
religious susceptibilities of any class or section of the
citizens of India;
c. it comprises or contains scandalous or obscene matter;
d. its use is prohibited under the Emblems and Names
(Prevention of Improper Use) Act, 1950 (12 of 1950).
3) A mark shall not be registered as a trade mark if it
consists exclusively of—
a. the shape of goods which results from the nature
of the goods themselves; or
b. the shape of goods which is necessary to obtain
a technical result; or
c. the shape which gives substantial value to the
goods.
 RELATIVE GROUNDS FOR REFUSAL
FOR REGISTRATION

 Section 11 deals with the relative grounds for refusal of

registration. The absolute grounds of refusal prevent
registration prima facie, whereas relative grounds for
refusal deal with the mark in connection to other earlier
marks.
 For example the trademark for a spare-parts
manufacturer being deceptively similar to an earlier
trademark for an automobile manufacturer may mislead
or confuse the consumer as being associated with each
other owing to the common trade connection.
I. Identity with earlier trade mark and similarity of goods or
services
The Section provides that a mark can be refused because
of its identity and association with an earlier trademark
and similarity of goods or services covered by the
trademark or, its similarity to an earlier trademark and the
identity or similarity of the goods or services covered by
the trademark.
This helps in reducing the likelihood of confusion in the
public who would assume the newly registered mark is
somehow connected or associated to the previous
trademark.
II. Identity with or similarity to well known trade mark
 The section provides that a trade mark which is identical with or
similar to an earlier trade mark shall not be registered, if or to the
extent, the earlier trade mark is a well-known trade mark in India
and the use of the latter mark without due cause would take
unfair advantage of or be detrimental to the distinctive character
or repute of the earlier trade mark.
 According to Section 2(1) (zg) ‘Well-known marks’ means a mark
which has become so to the substantial segment of the public
which uses such goods or receives such services that the use of
such mark in relation to other goods or services would be likely
to be taken as indicating a connection in the course of trade or
rendering of services between those goods or services and a
person using the mark in relation to the first-mentioned goods or
services.
III. Registration prevented by other laws
According to this section a trade mark shall not be
registered if, or to the extent that, its use in India is
liable to be prevented –
a. by virtue of any law in particular the law of passing
off protecting an unregistered trade mark used in
the course of trade; or
b. by virtue of law of copyright.
However, a trade mark is not refused registration on
any of the aforesaid grounds unless objections by any
one or more of those grounds is raised in opposition
proceedings by the proprietor of the earlier trade mark.
 REGISTRATION IN THE CASE OF HONEST
CONCURRENT USE

 Section 12. Registration in the case of honest concurrent use,

etc.—In the case of honest concurrent use or of other special
circumstances which in the opinion of the Registrar, make it
proper so to do, he may permit the registration by more than
one proprietor of the trade marks which are identical or
similar (whether any such trade mark is already registered or
not) in respect of the same or similar goods or services,
subject to such conditions and limitations, if any, as the
Registrar may think fit to impose.
TRADE MARK REGISTRATION PROCESS
STEP:1 APPLICATION FOR REGISTRATION OF TRADE MARK
➢ Any person claiming to be the proprietor of a trade mark
used or proposed to be used by him, may apply in writing
to the Registrar in the prescribed manner for the
registration of his trade mark.
➢ A single application may be made for registration of a
trade mark for different classes of goods and services and
fee shall be payable in respect of each of such class of
goods or services.
➢ The application for registration of a trade mark is to be
filled in the office of the Trade Mark Registry within whose
territorial limits the business of applicant is situated.
STEP 2: TRADE MARK APPLICATION ALLOTEMENT
➢ Once the Trademark registration application is filed with the
Trademark Registrar, a trademark application allotment number
is provided within one or two working days. The trademark
application can also then be tracked online through the Online
Trademark Search facility.
STEP 3: TRADE MARK EXAMINATION REPORT
➢ Once the trademark registration application will be allotted, the
Trademark Officer would then review the trademark application
for correctness and issue a trademark examination report. The
Trademark Officer has the ability to accept the trademark
registration application and allow for trademark journal
publication or object the trademark registration application.
➢ If the trademark registration application is objected by the Trademark Officer,
the trademark applicant has the right to appear before the Trademark Officer
and address the objections. If the Trademark Officer is satisfied with the
justifications of the trademark applicant, the trademark would be allowed for
trademark journal publication. In case the Trademark Officer is not satisfied
with the justifications, the trademark applicant has the right to appeal the
decision of the Trademark Officer before the Intellectual Property Appellate
Board.

STEP 4: TRADE MARK JOURNAL PUBLICATION

➢ Once the trademark registration application is accepted by the Trademark
Registrar, the proposed trademark is published in the Trademark Journal. The
trademark journal is published weekly and contains all the trademarks that have
been accepted by the Trademark Registrar.
➢ Once the trademark is published in the trademark journal, the public have an
opportunity to object the trademark registration, if they believe they will be
damaged by that registration. If there are no objections filed within 90 days of
that publication, the mark will typically be registered within 12 weeks –
months time.
➢ If the trademark registration application is opposed by a third-party, hearing
will be called for by the Trademark Hearing Officer. Both the trademark
applicant and the opposing party have the chance to appear at the hearing
and provide justifications for registration or rejection of the trademark
application. Based on the hearings and the evidence presented, the
Trademark Hearing Officer will determine if the trademark registration
application should be accepted or rejected. The decision of the Trademark
Hearing Officer can also be challenged by escalating to the Intellectual
Property Appellate Board.
STEP 5: TRADE MARK REGISTRATION
➢ Once there are no objections or oppositions for the
trademark registration application, the trademark
manuscript and trademark registration certificate will
be prepared and sent to the trademark application.
Once the trademark registration certificate is issued,
the trademark is considered to be a registered
trademark of the owner, granting the trademark
owner exclusive use of the mark. The ® symbol can
now be placed next to the logo or trademark.
 DURATION, RENEWAL, REMOVAL AND
RESTORATION OF REGISTRATION
 Section 25. Duration, renewal, removal and restoration of registration.—

(1) The registration of a trade mark, after the commencement of this Act, shall be

for a period of ten years, but may be renewed from time to time in accordance

with the provisions of this section.

(2) The Registrar shall, on application made by the registered proprietor of a trade

mark in the prescribed manner and within the prescribed period and subject to

payment of the prescribed fee, renew the registration of the trade mark for a

period of ten years from the date of expiration of the original registration or of

the last renewal of registration, as the case may be (which date is in this section

referred to as the expiration of the last registration).

(3) At the prescribed time before the expiration of the last registration of a trade mark

the Registrar shall send notice in the prescribed manner to the registered proprietor of

the date of expiration and the conditions as to payment of fees and otherwise upon

which a renewal of registration may be obtained, and, if at the expiration of the time

prescribed in that behalf those conditions have not been duly complied with the

Registrar may remove the trade mark from the register:

Provided that the Registrar shall not remove the trade mark from the register if an

application is made in the prescribed form and the prescribed fee and surcharge is

paid within six months from the expiration of the last registration of the trade mark and

shall renew the registration of the trade mark for a period of ten years under sub-section

(2).
(4) Where a trade mark has been removed from the register for non-payment of the
prescribed fee, the Registrar shall, after six months and within one year from the
expiration of the last registration of the trade mark, on receipt of an application in
the prescribed form and on payment of the prescribed fee, if satisfied that it is just so
to do, restore the trade mark to the register and renew the registration of the trade
mark either generally or subject to such conditions or limitations as he thinks fit to
impose, for a period of ten years from the expiration of the last registration.
RIGHTS CONFERRED BY REGISTRATION

 According to Section 28 of the Trade Marks Act, 1999 the registration of a

trade mark shall, if valid, give to the registered proprietor of the trade mark
the exclusive right to the use of the trade mark in relation to the goods or
services in respect of which the trade mark is registered and to obtain relief
in respect of infringement of the trade mark in the manner provided by this
Act.

 However, the exclusive right to the use of a trade mark shall be subject to
any conditions and limitations to which the registration is subject.
NO ACTION FOR INFRINGEMENT OF
UNREGISTERED TRADE MARK

 According to Section 27 (1) of the Trade Marks Act, 1999, No person shall
be entitled to institute any proceeding to prevent, or to recover damages
for, the infringement of an unregistered trade mark.

 However sub-section(2) states that nothing in this Act shall be deemed to

affect rights of action against any person for passing off goods or services
as the goods of another person or as services provided by another person,
or the remedies in respect thereof.
Registration of Trademarks

 Registration enables a registered proprietor that is, the one

who has been entered in the Register of Trademarks as
proprietor of the trademark for the time being to sue for
infringement of registered trademark irrespective of the fact
whether it is used or not used. No action for infringement lies
in case of unregistered trademark. According to section 27 of
the Act, it is clearly provided that no person is entitled to
institute any proceeding to prevent, or to recover damages,
for, the infringement of an unregistered trademark, but
recognizes the common law rights of the trademark owner to
take action against any person for passing off goods as the
goods of another person or as services provided by another
person or the remedies thereof.
 Registration of a mark confers upon the user a monopoly
right over the use of the mark. Registration will ensure
that the owner has exclusive rights over the mark.
Registration provides rights to the registered proprietor of
the trademark to use the trademark in relation to the
goods or services in respect of which the trademark has
been registered. Registration also enables the proprietor
to obtain relief in case of infringement or unscrupulous
use of the trademark.
 In NR Dongre v Whirlpool Corporation 1995, the Delhi
High Court observed that according to section 28(1) of
the TradeMarks Act, 1999, registration of a trademark
gives exclusive right to use the same in relation to the
goods in respect of which it has been registered.
 The Delhi High Court in Rana Steels v Ran India Steels
Pvt Ltd 2008- stated that registration of a trademark
gives to the registered proprietor of the trademark the
exclusive right to the use of the trademark „in relation
to goods and services in respect of which the mark has
been registered‟ and to obtain relief in case of
infringement of the trademark in the manner provided
in the Act. Registration of Trademark under the
Trademarks Act, 1999 gives statutory rights and
infringement of it can invite an action for Infringement.
However, even the unregistered marks are also
protected as the Act itself provides that an action of
passing off remedy is available for unregistered
trademark.
Infringement of Registered Trademark

 An infringement action is based on invasion of the statutory

rights. Infringement can be said to occur whenever any
person other than the registered proprietor uses such a mark
with intent to defraud in the course of his trade. The infringing
mark may be identical with or deceptively similar to the
registered mark and in relation to the goods or services in
respect of which the mark is registered.
 Consequently, if the use of the mark in a manner not likely to
indicate the trade origin, it may not attract the cause of
action for infringement, which was held in the Ox-cart case
[Edward Young & Co. Ld v. Grierson Oldham & Co. Ltd.,
(1924)]
Under section 28 of the Trademark Act, 1999, it is
provided that, the proprietor of a registered
trademark is the exclusive owner of the same
and is entitled to obtain relief in case of
infringement. Trademark infringement generally
contains the issues of
a) Likelihood of confusion
b) Deceptive marks
c) Identical marks
d) Dilution of marks
Likelihood of Causing Confusion

 Whenever two marks are identical, there is a prima facie

case of infringement due to confusion. But there are
situations where the marks are not identical but are
nearly similar. In those cases, the plaintiff has to establish
that the mark is identical enough to cause confusion in
the minds of the buyer and hence would be misleading.
There needs to be an element of resemblance, so strong
to cause a deception in the minds of the buyers. The
ultimate judge of similarity is the consumers who would
be mislead into distinguishing between two marks and
hence failing to compare the two.
Judicial Perspective

 In the case of Montblanc Simplo-GMBH v New Delhi Stationery Mart 2008,

Delhi High Court held that since both the marks are used in respect to
identical goods, this court, then needs to determine whether the defendants
adoption is likely to cause confusion in the minds of the public. It is not
necessary to prove actual confusion or damage, it is sufficient if likelihood
of confusion is established
 In the case of SBL Ltd. v. Himalaya Drug Co. 1998, The court quoted
Halsbury’s Laws of England, on establishing likelihood of confusion of
deception. In this case, two factual elements were laid down:
a) That a name, mark or other distinctive feature used by the plaintiff has
acquired a reputation among a relevant class of persons
b) That members of that class will mistakenly infer from the defendant's use of a
name, mark or other feature which is the same or sufficiently similar that the
defendant's goods or business are from the same source or are connected.
 Deceptive Marks
 The most important deciding factor while taking “Deceptive Marks” into
account is that the general public with average intelligence is confused so
as to the source of the product. The most important test is to look for an
overall similarity. The expression „likely to deceive‟ is a question largely
one of first impression. It is not necessary to prove intention. It is sufficient if
the Court comes to the conclusion it is likely to deceive and that conclusion
must be based partly on evidence and partly upon the appeal to the eye of
the judge. [H.C Dixon & Sons Ltd. v. Geo Rihardson & Co. Ltd 50 RPC 36, p
374.]
 Deception can arise with regard to[Vikram Stores v. S.N. Perfumery Works,
2008]:
a) Deception as to goods
b) Deception as to trade origin
c) Deception as to trade connection
 Dilution of Trademark
 Dilution of trademark is basically weakening the trademark by
decreasing the value of the same. If another user adopts a near
similar mark in respect to the same good, it will end up hurting or
debasing the actual value of the trademark.
 In Catterpillar Inc v. Mehtab Ahmed and Others 2002 it was held
by Delhi High Court that, in case of doctrine of dilution, there is
presumption that the relevant customer starts associating the
mark or trademark with a new and different source. This affects
the link between the mark of the prior user and its goods. That is,
the link between the mark and the good is blurred. This is not a
fair practice that is expected in trade and commerce.
 It is different from traditional infringement. Infringement laws are
designed to protect consumers whereas dilution statutes protect
owners. A dilution claim is not based on infringement or
deception. It is based on value of trademark to its owner, which
has been termed the mark's „commercial magnetism‟.
PASSING OFF

 “nobody has any right to represent his goods as

the goods of somebody else” [Reddy v. Banham
(1896)]
 The Indian Trademarks Act, 1999 under section 27
recognizes the common law rights of the
trademark owner to take action against any
person for passing off his goods as the goods of
another person or as services provided by another
person or the remedies thereof.
In the case of Erven Warnink BV v. J Townend &
Sons (Hull) Lts 1980, Lord Diplock stated essential
characteristics of a passing off action in the
following words: (a) Misrepresentation, (b) Made
by a person in the course of trade, (c) To
prospective customers of his or ultimate
consumers of goods or services supplied by him,
(d) Which is calculated to injure the business or
goodwill of another trader?, (e) Which causes
actual damage to a business or goodwill of the
trader by whom the action is brought or (in a
quiatimet action) will probably do so.
 The registration of trademark is irrelevant in case of passing off
action. Priority is given more to adoption and use of the
trademark and not on the registration. Generally, protection
against passing off is granted where the parties are engaged in
the trade of the same or similar products or closely related
products and services. [Rob Mathys v. Synthes, 1997]
 In an action for passing off, the motive of the defendant is not
important. Once the plaintiffs establish reputation, no further
proof of fraudulent intention on the part of the defendants is
required to be proved or established. Misrepresentation and
loss or damage of goodwill is also essential elements for a
successful passing off action.
 The relief available in suits for passing off includes an injunction
restraining further use of the mark, damages, an account of
profits, or an order for delivery of the infringing labels and marks
for destruction or erasure
 JURISDICTION
 Section 134 of the Trade Marks Act, 1999 provides the jurisdiction for filing an
infringement/passing off suit.

As per the provisions, a suit for infringement or passing off can be instituted before a
District Court within the local limits of whose jurisdiction, at the time of the institution of
the suit or other proceeding, the person instituting the suit or proceeding, or, where
there are more than one such persons any of them, actually and voluntarily resides or
carries on business or personally works for gain.
 REMEDIES UNDER INFRIGEMENT &
PASSING OFF ACTION
I. CIVIL REMEDIES

 Section 135(1) lists the reliefs, which may be granted to the plaintiff who
established his case by the court in case of infringement and passing off are:

i. An injunction restraining further use of trade mark;

ii. Damages or an account of profits

II. CRIMINAL REMEDIES

• Any person who uses a particular trademark without permission of the proprietor and makes that
trademark deceptively similar shall be deemed to falsify a trade mark under section 102 of Trade
Mark Act, 1999. Penalty for the same is given under Section 103 of the same act.

• Penalty under Section 103:- Any person falsifies any trademark or falsely applies to goods or services
any trade mark shall be punishable with imprisonment for a term which shall not be less than 6
months but which may extend to 3 years and with fine which shall not be less than Rs50,000 but
which may extend to Rs 2,00,000.

• According to section 104 if any person who helped the accused by selling, providing or hiring
services of the such good, possessing such goods for sale or any other possible way will be punished
with imprisonment for a term which shall not be less than 6 months but which may extend to 6 years
and with fine which shall not be less than Rs 50,000 but which may extend to Rs 2,00,000.
GEOGRAPHICAL
INDICATIONS
INTRODUCTION
 Italian Parmigiano, Mexican Tequila, French Roquefort, Bikaneri Bhujia, Kolhapuri

Chappals, Mysore Silk are all some examples of Geographical Indications and

appellations of everyday life. The Geographical Indications of Goods (Registration

and Protection) Act, 1999 (GI Act), in Section 2(e), defines the term “geographical

indication” as –

 “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 or preparation of the goods concerned

takes place in such territory, region or locality, as the case may be.”
 In simpler terms, GI is a status accorded to a good which is unique to a particular

region or area, and are originated from there. These goods have a reputation for

their quality. They are associated with a sense of legitimacy and trust simply

because they have the tag of belonging to that region.

 For example, Basmati rice is known for its unique aroma and long grains. It is

unique to the Indo-Gangetic plains. Seven states of India, after a long drawn legal

battle have been accorded with the status of Geographical Indication (GI) in

2016.
DIFFERENCE BETWEEN TRADEMARK & GI

 The difference between Trademarks and Geographical Indications is pretty

simple. Trademarks differentiate the products made by different producers, and

geographical indications differentiate one group of products from others that

don’t come from the region it protects. This property of a Geographical Indication

makes it a Collective Mark.

 Another difference is that trademarks arise from the creative genius of man, while

geographical indications are not created; they are there, in nature due to the

existence of human and natural factors.

 The third difference between them is that unlike the case of trademark, social

recognition must already be recognized before the idea and need for their

protection arise
PROHIBITION OF REGISTRATION OF CERTAIN
GEOGRAPHICAL INDICATIONS
 Section 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

PROCEDURE FOR REGISTRATION
I. FILLING AN APPLICATION

 Who can file for Geographical Indications [Section 11(1)]

An application for registration of the Geographical Indication can be made by

an association of persons or producers or any organisations or authority established
by or under any law for time being in force; who must be representing the interest of
the producers of the concerned goods; and desirous of registering a geographical
indication in relation to such goods.”
II. WITHDRAWAL OF ACCEPTANCE [SECTION 12]

Where, after the acceptance of an application for registration of a geographical

indication but before its registration, the Registrar is satisfied,—

(a) that the application has been accepted in error, or

(b) that in the circumstances of the case the geographical indication should not be

registered or should be registered subject to conditions or limitations or to

conditions additional to or different from the conditions or limitations subject to

which the application has been accepted,

the Registrar may, after hearing the applicant if he so desires, withdraw the

acceptance and proceed as if the application had not been accepted.

III. ADVERTISEMENT OF APPLICATION.

(1) When an application for registration of a geographical indication has been

accepted, whether absolutely or subject to conditions or limitations, the
Registrar shall, as soon as may be after acceptance, cause the application as
accepted together with the conditions or limitations, if any, subject to which it
has been accepted, to be advertised in such manner as may be prescribed.

(2) Where after advertisement of an application—

(a) an error in the application has been corrected; or

(b) the application has been permitted to be amended under section 15,

the Registrar may, in his discretion cause the application to be advertised again or
instead of causing the application to be advertised again, notify in the prescribed
manner, the correction made in the application
IV. Opposition to registration [SECTION 14]

Any person may, within three months from the date of advertisement or
readvertisement of an application for registration or within such further period, not
exceeding one month, as the Registrar, on application made to him in such manner
and on payment of such fee as may be prescribed allows, give notice in writing in
the prescribed manner to the Registrar, of opposition to the registration.
V. Registration [SECTION 16]

(1) Subject to the provisions of section 12, when an application for registration of a
geographical indication has been accepted and either—

(a) the application has not been opposed and the time for notice of opposition has
expired; or

(b) the application has been opposed and the opposition has been decided in favour of
the applicant,

the Registrar shall, unless the Central Government otherwise directs, register the said
geographical indication and the authorised users, if any, mentioned in the application and
the geographical indication and the authorised users when registered shall be registered as
of the date of the making of the said application and that date shall, subject to the
provisions of section 84, be deemed to be the date of registration.
(2) On the registration of a geographical indication, the Registrar shall issue each to

the applicant and the authorised users, if registered with the geographical

indication, a certificate in such form as may be prescribed of the registration thereof,

sealed with the seal of the Geographical Indications Registry.

(3) Where registration of a geographical indication is not completed within twelve

months from the date of the application by reason of default on the part of the

applicant, the Registrar may, after giving notice to the applicant in the prescribed

manner, treat the application as abandoned unless it is completed within the time

specified in that behalf in the notice.

(4) The Registrar may amend the register or a certificate of registration for the

purpose of correcting a clerical error or an obvious mistake.

DURATION, AND REMOVAL OF REGISTRATION

 The registration of a geographical indication shall be for a period of ten years, but

may be renewed from time to time in accordance with the provisions of this

section.

 The Registrar shall, on application made in the prescribed manner, by the

registered proprietor or by the authorised user and within the prescribed period

and subject to the payment of the prescribed fee, renew the registration of the

geographical indication for a period of ten years from the date of expiration of

the original registration or of the last renewal of registration, as the case may be

which date is in this section referred to as the expiration of the last registration.
 At the prescribed time before the expiration of the last registration of a geographical
indication, the Registrar shall send notice in the prescribed manner to the registered
proprietor or the authorised user, as the case may be, of the date of expiration and the
conditions as to payment of fees and otherwise upon which a renewal of registration
may be obtained, and, if at the expiration of time prescribed in that behalf those
conditions have not been duly complied with, the Registrar may remove the
geographical indication or the authorised user, as the case may be, from the register:

Provided that the Registrar shall not remove the geographical indication or the
authorised user, as the case may be, from the register, if an application is made in the
prescribed form and the prescribed fee and surcharge is paid within six months from the
expiration of the last registration of the geographical indication or the authorised user, as
the case may be, and shall renew the registration of geographical indication or the
authorised user, as the case may be, for a period of ten years under sub-section (3).
SECTION 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 authorized 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.
Penalty for Applying False Geographical Indications (Section 39)

When a person does the following things then he will get punishment or penalty which are six

months to three years of jail or fine of fifty thousand rupees to two lakh rupees.

i. If he makes a duplicate copy of some geographical indication

ii. If he falsely applies geographical indication to some other product

iii. If he is making, disposing of or have anything like dice, block, machine or instrument

which tells us that he is falsifying a geographical indication

iv. If he uses any product to make a fake geographical indication of a
country, territory or some manufactures’ name

v. If he interferes with a geographical indication of origin he uses any

goods.

However, he will not be punished or fined if he proves that he did not

have any intention to falsify the geographical indication. The fine can
be lessened if there is some special case.