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Introduction
Geographical indications (hereinafter “GI”) in the broadest sense refer to a form of intellectual property (IP) granted to identify goods emanating from a definite area or region. They are aimed at conferring exclusive rights on associations or producers to use a distinctive sign indicating the origin of goods and protecting unauthorised usage of the same. Some popular examples of GI protection are Champagne used to identify sparkling wine from Champagne District of France, Swiss chocolates, Kashmiri carpets, etc.
In the international context, traces of GI protection are found in the Paris Agreement,[1] Madrid Convention[2], etc. However, the term “appellations of origin” was for the first time defined in the Lisbon Agreement[3] which defined GI as “geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.”[4] Furthermore, Article 22(1) of the TRIPS Agreement defines GI as any indication which “… identifies a good as originating … in … [a] territory when … a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”.[5]
It has been noted that GI protection under the Lisbon Agreement was dependent upon registration of GI in the originating country whereas the TRIPS Agreement gives a freehand to member countries to determine the manner of protection to be given to GI.[6]
Theoretically, India allows for GI protection through registration as well as the common law remedy of passing off. However, once a GI mark has been registered only the registered proprietor or the authorised user can bring an action for infringement of such a mark.[7]
Another important aspect which arises from the definition of GI under the two conventions is that the GI mark indicates a certain reputation and quality associated with a good or service. This implies that every good originating from a certain territory is not entitled to a GI mark unless until such good exhibits certain distinctive quality and reputation. Needless to say that such a requirement is also present in Indian Law.[8] To illustrate, chocolates originating from India are not granted GI protection but Swiss chocolates are entitled to GI protection simply because the latter have unique and distinctive characteristics like taste, texture, etc. which are not found in Indian chocolates or for that matter, any other chocolates around the world. Thus, the need to maintain sufficient quality of a good bearing GI mark becomes imperative which can only be done by implementing proper quality monitoring mechanisms.
In the light of the aforementioned background, this paper aims to analyse the position of an authorised user under the GI Act and comments on the adequacy of existing framework with respect to an authorised user. Furthermore, this paper also comments on the existing quality control mechanisms under the GI Act. Therefore, this paper attempts to examine the rights and obligations of an authorised user under the GI Act. For achieving this purpose, this paper embarks on a critical enquiry and doctrinal analysis of the provisions of the GI Act. Occasional references are made to foreign law; however, the same are made to contrast the provisions of the GI Act or to suggest improvements in the GI Act.
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Authorised user registration
In India, as per Section 11[9] of the GI Act any association of persons or organisation established under law representing the interest of the producers can apply for registration of GI mark. Furthermore, Section 17[10] of the GI Act allows any producer of a good with respect to which a GI mark has been granted to apply to be registered as an authorised user of such a mark. Interestingly, the Act gives only the authorised users the exclusive right to use a GI mark.[11] This invariably implies that the scheme of the Act is that though an organisation is capable of obtaining GI mark, such a mark is to be used by the authorised user only. This means that the intention of the Act is to improve the position of the authorised user wherein multiple users come together to form an association who can obtain the GI mark. However, the ground reality could not be farther from achieving this objective.
Commenting on the scheme of the Act, Basole has opined that the Indian GI regime completely ousts the role of the traditional craftsmen or the artisan whose interests are supposed to be protected by GI.[12] This is because an Indian craftsman does not have the money or the time or even the knowledge to file an application for registration or as “authorised user”. Therefore, in reality organisations employing such artisans actually gain commercial benefit of the registered GI mark whereas the actual artisans who have developed such knowledge amongst themselves are denied of the benefits of such a mark. Furthermore, scholars have argued that there are no specific provisions either in the GI Act or the GI Rules to determine whether the alleged proprietor or the alleged producer actually represent the interests of the producers or that the alleged producer is even a producer of the good or not.[13] In this respect, it is necessary to mention here that the GI Act enables a producer to oppose the application of the applicant on the ground that such a person does not represent the interest of the producers.[14] Once such an opposition is made by any other producer, the authorities under the Act, on careful consideration of evidence and surrounding circumstances have denied registration of GI mark if the applicant association does not represent the interests of the producers or if their sole motive is to derive commercial benefit.[15] However, aside from the delay in deciding such oppositions, the producers may not always be in the position to oppose each and every unauthorised registration. Moreover, if unauthorised registrations are not curbed, it may create difficulties in registration of authorised users. Therefore, it would be beneficial if the initial onus of proving that the applicant organisation is representing the interests of the producers is made more stringent to curb unauthorised registrations.
Another problem that was faced by authorised users was that an application for authorised user had to be filed jointly with the registered proprietor and a “no-objection certificate” was required from such proprietor.[16] However, this difficulty has now been resolved to some extent by the newly enacted GI Amendment Rules, 2020.[17] As per the new rules, now an application for authorised user can be made without a “no-objection certificate” from the proprietor and the only requirement is now to serve a copy of the application on the registered proprietor.[18] Moreover, the registration fee has been almost completely waived off.[19] Thus, some respite has been provided by the statute for registration as authorised users.
On a practical note, various initiatives and programmes have been taken by governmental and non-governmental bodies to spread awareness against the producers to register themselves as authorised users. Such efforts will surely help in more producers coming forward to register themselves as “authorised users”.
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Quality monitoring
Once the producer or the association, as the case may be, has been granted the right to use a GI mark, the next question that arises is of quality monitoring. Unlike other forms of IPRs, GI protects collective interests; therefore, it becomes necessary that no one person compromises upon the quality of a good originating from a particular territory simply because such harm to reputation also harms the commercial interests of other producers. On the other hand, if appropriate quality monitoring mechanisms are not established then it may harm the consumer interests as the consumers pay a premium for a good bearing a GI mark because of the assurance of a particular quality which such good would possess.
Quality monitoring mechanisms can be of two broad kinds, namely, self-imposed quality monitoring mechanisms and Government imposed control mechanisms. One example of self-imposed mechanism can be found in case of Thanh Ha Litchi originating from Vietnam. Under this mechanism the producer association has itself formulated a set of guidelines which creates an internal quality control mechanism. In addition to this there are periodic control tests conducted by external quality monitoring agencies.[20] The problem with self-imposed control mechanism is that such a system can be easily manipulated to suit the needs of the producers i.e. the users may adopt a less stringent control mechanism. Now, one may argue that by adopting a less stringent mechanism and thereby compromising upon the quality, the producers may harm their own interests. Whilst such an argument cannot be dismissed however, the criticism noted here should be viewed from a wider angle, namely, from the perspective of the State. Many countries including India enjoy high reputation for some of its goods bearing GI marks. Now, imagine that because of certain circumstances (e.g. COVID-19), the producers are unable to maintain their quality standards. In a self-imposed quality monitoring mechanism without any State intervention, the producers could simply lower the threshold and pass off inferior goods under a particular GI mark. Consequently, such inferior goods can seriously damage the reputation of the State in the international market in the long run. Another concern is that self-imposed control mechanisms may not be viable in all circumstances. The success of such a mechanism would be highly dependent upon the coordination amongst various users of the GI mark and the general consensus amongst the users to adopt a self-imposed control mechanism.
In contrast to self-imposed quality control, Government imposed quality control has been implemented where self-imposed quality control has become futile. For instance, in the early 21st century, India faced a huge problem due to export of inferior quality of rice under the GI of Basmati. Fearing that such fraudulent practices may tarnish the reputation of genuine Basmati rice in the global market, the Government enacted the Export of Basmati Rice (Quality Control and Inspection) Rules, 2003[21] which inter alia provided for declaration of quality control by exporters, inspection by authorities, etc. In other cases, the Indian Law does not provide for inspection by government authorities but rather publishes the application and any person can challenge such registration on numerous grounds which inter alia include not having sufficient quality monitoring mechanisms in place.[22] Similarly, a GI registered mark can also be challenged if it fails to meet the necessary quality standards.[23] Therefore, it can be said that Indian law employs a system of public vigilance wherein it is assumed that genuine producers or producer associations or even consumers, as the case may be, would be vigilant to ensure that no authorised user compromises on the quality of goods with respect to which GI mark has been granted. Some authors have opined that India should increase government involvement in quality monitoring across all GI products.[24] The problem with such an approach is that it not only places an additional burden on the public exchequer but Indian administration has an ill repute for red tapism, corruption, administrative delays, etc. Therefore, increasing government intervention would only add to the woes of the artisans and poor farmers.
At this juncture, it is pertinent to mention here that as per the GI Rules, the association applying for registration has the liberty to specify the quality monitoring mechanisms to ensure quality of a particular good.[25] In this respect, it has been opined that a government agency or State-owned Board could file an application for registration to set high standards for quality monitoring and thereafter transfer the GI mark to users.[26] Such a mechanism seems to be the most suitable as it saves cost by not imposing periodic inspections by State authorities. Furthermore, this can also help curb the menace wherein the registered association is exploiting the benefits of GI mark at the cost of artisans and poor farmers. However, it is suggested that such authority undertakes actual field study to specify realistic quality monitoring mechanisms rather than unachievable and ambitious mechanisms.
One general concern arising out of quality monitoring is that it may hamper innovation. To elaborate, consider that a GI mark is granted for a particular clothing item for a particular quality and design. Now, suppose that over a period of time, there has been an enhancement in quality of the product due to certain improvements in the production technique or perhaps due to availability of superior quality of raw material. Now, it may so happen that such improved product may not pass the test of the registered quality of the good against which the GI was granted. In other words, just because a superior good does not confirm to the notion of what it ought to be would perhaps imply that such a good is not eligible for GI protection altogether. In this respect, the Japanese Law allows producer associations to register any change (including enhancement of quality) in quality standards of the goods.[27] Thus, such a dynamic quality monitoring model could promote further innovation in GI protected goods provided that all producers are able to achieve such superior quality. In this respect the GI Act and the GI Rules enable the registered proprietor to add or alter any registered GI mark which could include any enhancement or change in quality monitoring mechanism.[28] Nevertheless, on a note of caution, it is possible that the alteration route is adopted to liberalise the quality control mechanisms. In this respect, Section 29 of the GI Act leaves the end discretion in the hands of Registrar to allow or disallow such an alteration. Therefore, this discretion can be used as a filter to allow only alteration of quality enhancing mechanisms and not quality reducing except of course in exceptional circumstances.
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Conclusion
The potential impact and benefits of GI law continues to remain underrated even today. This undervaluation partly exists due to lack of academic discussion on unexplored intricacies of the GI Act. This paper is only an attempt to unravel some of the less talked concepts existing in the GI law.
The discussion has shown that though the heart of legislature was in the right place while enacting the GI law, it has failed to achieve the desirable objectives. However, the Act has slowly recognised the socio-economic conditions of the producers and has made an attempt to increase the registration of genuine authorised users. The recently adopted twin model consisting of easing the registration process and creating awareness amongst the producers seems to be promising and can go a long way in improving the position of an authorised user. However, such awareness programmes need to become more intensive so as to not only promote registration of authorised users in the existing GI registered products but to also motivate producers to make efforts, either by forming associations or through government authorities, to register more and more goods under GI tags.
As regards quality monitoring mechanisms, the GI Act contains an appreciable model of self-imposed quality monitoring mechanism which is enforced by a system of public vigilance, except for a few cases like Basmati rice. This paper has suggested that realistic quality monitoring mechanisms can be established by State entities while applying for registration on behalf of the producers. Such mechanisms can then be suitably altered by the producers with the primary benefit of enhancing the quality of GI marked goods.
Lastly, this paper has examined various intricacies and practical issues pertaining to registration and quality monitoring under the GI Act but none of them point to any deficiency in the legislative framework except for some minor procedural modifications. The need of the hour is to create awareness so that the producers can enjoy the benefits arising from selling GI marked goods and at the same time create a name for the nation in the international market. The novel model of applying the GI Act as suggested in this paper can go a long in achieving this objective.
† LLM (Business Laws) candidate, NLSIU, Bangalore.
[1] Paris Convention for the Protection of Industrial Property, 20-3-1883, Art. 1(2), 828 U.N.T.S. 305.
[2] Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Art. 1.1, 14-4-1891, 828 U.N.T.S. 163.
[3] Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, 31-10-1958, 923 U.N.T.S. 205 (hereinafter “Lisbon Agreement”).
[4] Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Art. 2(1), 31-10-1958, 923 U.N.T.S. 205.
[5]Agreement on Trade-Related Aspects of Intellectual Property Rights, 15-4-1994, 1869 U.N.T.S. 299 (hereinafter “TRIPS Agreement”).
[6]Bernard O’Connor, Sui Generis Protection of Geographical Indications, 9 Drake Journal of Agricultural Law 359, 362 (2004).
[7] The Geographical Indications of Goods (Registration and Protection) Act, 1999, Ss. 20 and 21 (hereinafter “the GI Act”).
[8] The Geographical Indications of Goods (Registration and Protection) Act, 1999, S. 2(1)(e).
[9] Section 11, GI Act, 1999.
[10] Section 17, GI Act, 1999.
[11] The Geographical Indications of Goods (Registration and Protection) Act, 1999, S. 21(1)(b).
[12] See Amit Basole, Authenticity, Innovation, and the Geographical Indication in an Artisanal Industry: The Case of the Banarasi Sari, 18 Journal of World Intellectual Property 127 (2015).
[13] N.S. Gopalakrishnan, Protection of Traditional Knowledge: The Need for a Sui Generis Law in India, 5 Journal of World Intellectual Property 725, 736 (2002).
[15] See e.g. Subhash Jewellery v. Payyannur Pavithra Ring Artisans & Development Society, 2012 SCC OnLine IPAB 171 : (2013) 55 PTC 197.
[16] The Geographical Indications of Goods (Registration and Protection) Rules, 2002, Gazette of India, Part II S. 3(i), R. 56(1) (8-3-2002) (hereinafter “the GI Rules”).
[17] The Geographical Indications of Goods (Registration and Protection) (Amendment) Rules, 2020, Gazette of India, Part II S. 3(i) (26-8-2020) (hereinafter “the GI Amendment Rules, 2020”).
[18] The Geographical Indications of Goods (Registration and Protection) (Amendment) Rules, 2020, Gazette of India, Part II S. 3(i) (26-8-2020), Rr. 2-3.
[19] The Geographical Indications of Goods (Registration and Protection) (Amendment) Rules, 2020, Gazette of India, Part II S. 3(i) (26-8-2020), R. 6.
[20]Dao The Anh, et al., Models of Geographical Indication Protection in Vietnam : Facts, Difficulties and Prospects (2009). <https://www.malica.org/content/download/4452/33230/version/1/file/2009+GI+Vietnam_Dao+et+al.+2009_IAAE+Beijing.pdf>
[21] The Export of Basmati Rice (Quality Control and Inspection) Rules, 2003, Gazette of India, Part II S. 3(ii) (23-1-2003).
[22] The GI Act, S. 14.
[24] See Tania Singla, Post-Registration Quality Control Measures for Geographical Indications in India: The Way Forward, 7 Indian Journal of Intellectual Property Law 103, 117-20 (2015).
[25] The GI Rules, R. 32(1)(6).
[26] Delphine Marie-Vivien, The Role of the State in the Protection of Geographical Indications: From Disengagement in France/Europe to Significant Involvement in India, 13 Journal of World Intellectual Property 121, 141 (2010).
[27] Tokutei Norin Suisan Butsu to no Meisho no Hogo Ni Kansuru Horitsu (Act for the Protection of the Names of Designated Agricultural, Forestry and Fishery Products and Foodstuffs), Law No. 84 of 2014, Arts. 15-16 (Japan).