Law relating to Geographical Indications of Goods: formula sheet

Key formulas

Meaning of GI

GI = indication + goods + territory/region/locality + quality, reputation or characteristic essentially attributable to origin

Section 2(1)(e). For manufactured goods, one of production, processing or preparation must occur in that place.

Who holds a GI

Registered proprietor = association of persons or producers, or an organisation; Authorised user = registered under section 17

Sections 2(1)(n) and 2(1)(b). It is a collective right, not an individual one.

Registration scope

GI registered for particular goods and a definite territory, region or locality

Section 8(1). The Registrar decides questions of class or area, and the decision is final under section 8(4).

Bars to registration

Not registrable if: deceptive or confusing; contrary to law; scandalous or obscene; hurts religious susceptibilities; not protectable in court; generic or unprotected in country of origin; falsely suggests another origin

Section 9(a) to (g).

TRIPS on GIs

Art. 22 = general protection; Art. 23 = additional protection for wines and spirits; Art. 24 = exceptions and negotiations

Recall the Article numbers with their one-line purpose.

Geographical indication - section 2(1)(e)

GI = indication + goods (agricultural / natural / manufactured) + origin in territory, region or locality + quality, reputation or characteristic essentially attributable to origin

For manufactured goods, one of production, processing or preparation must take place in that territory, region or locality.

Indication - section 2(1)(g)

Indication includes any name, geographical or figurative representation, or any combination of them, conveying or suggesting the geographical origin of goods

A picture or symbol can be an indication, not only a word.

Goods - section 2(1)(f)

Goods = any agricultural, natural or manufactured goods, or any goods of handicraft or of industry, and includes food stuff

Food stuff is expressly included.

Producer - section 2(1)(k)

Agricultural goods: produces, and includes the person who processes or packages. Natural goods: exploits. Handicraft or industrial goods: makes or manufactures. Includes any person who trades or deals in such production, exploitation, making or manufacturing

The meaning changes with the type of goods.

Authorised user - section 2(1)(b) and section 17

Authorised user = authorised user of a GI registered under section 17; applicant must claim to be a producer of the goods

Application is in writing to the Registrar, with statement, documents and fee.

Registered proprietor - section 2(1)(n)

Registered proprietor = any association of persons or of producers, or any organisation, entered in the register as proprietor

An individual cannot be the registered proprietor under this definition.

Deceptively similar - section 2(1)(c)

A GI is deceptively similar to another if it so nearly resembles it as to be likely to deceive or cause confusion

The test is likelihood, not actual deception.

Name - section 2(1)(h)

Name includes any abbreviation of a name

An abbreviated form can still be a name.

Use of a GI - section 2(3)

Use of a GI = use of a printed or other visual representation; use in relation to goods = upon, or in any physical or other relation whatsoever to, the goods

Very wide wording.

Who may apply for a GI (section 11(1))

Association of persons or producers, or organisation or authority established by or under any law, representing the producers

The application is in writing, in the prescribed form and manner, with the prescribed fee.

Contents of application (section 11(2))

Statement of how the GI designates the goods + class of goods + geographical map + appearance of the GI + particulars of initial producers + other prescribed particulars

Learn these six items as a checklist.

Filing office (section 11(4))

Registry within whose territorial limits the territory, region or locality of the GI is situated

If that territory is not in India, the Registry covering the address for service in India.

Registrar's decision (section 11(6) and (7))

Refuse, accept absolutely, or accept subject to amendments, conditions or limitations

For refusal or conditional acceptance, the Registrar must record in writing the grounds and the materials used.

Opposition period (section 14(1))

Three months from advertisement or readvertisement, extendable by not more than one month in aggregate

Extension needs an application and the prescribed fee. Any person may oppose.

Counter-statement (section 14(2))

Within two months from the applicant's receipt of the notice of opposition

Failure means the application is deemed abandoned.

Registration (section 16(1))

Accepted + (unopposed and time expired, or opposition decided for applicant)

Registered as of the date of making the application, and that date is deemed the date of registration, subject to section 84.

Abandonment (section 16(3))

Not completed within twelve months from application date due to applicant's default

The Registrar may treat it as abandoned after giving notice, unless completed within the time in the notice.

Authorised user (section 17)

Person claiming to be producer of goods of a registered GI applies in writing to the Registrar

Chapter provisions on examination, advertisement, opposition and registration apply in the same manner.

Section 9: prohibited GIs

Not registrable if: (a) likely to deceive or cause confusion; (b) contrary to law; (c) scandalous or obscene; (d) hurts religious susceptibilities of any class or section of citizens of India; (e) otherwise disentitled to protection in a court; (f) generic or not/no longer protected or fallen into disuse in country of origin; (g) literally true but falsely represents another origin

Seven grounds, (a) to (g). The section ends with: shall not be registered as a geographical indication.

Generic name (Explanation 1 to section 9)

Generic = name relating to the place of original production that has lost its original meaning and become the common name, indicating kind, nature, type or other characteristic of the goods

Explanation 2: take account of all factors, including the situation in the place of origin and the area of consumption.

Section 10: homonymous GI

Registrable, subject to section 7, if the Registrar is satisfied that consumers will not be confused or misled

The Registrar considers (i) the practical conditions for differentiating the homonymous indications and (ii) equitable treatment of the producers concerned.

Duration of GI registration

Registration = 10 years; renewal = 10 years each time

Section 18(1) and (3). Renewal runs from the expiry of the original registration or last renewal.

Duration of authorised user's registration

10 years OR till the GI's registration expires, whichever is earlier

Section 18(2). The authorised user can never outlast the GI itself.

Who may apply for renewal

Registered proprietor or authorised user

Section 18(3). Application in the prescribed manner, within the prescribed period, with the prescribed fee.

Notice before expiry

Registrar sends notice at the prescribed time before expiry

Section 18(4). If conditions are not complied with, the Registrar may remove the GI or authorised user from the register.

Late renewal

Within 6 months from expiry + prescribed form, fee and surcharge = no removal; renewed for 10 years

Proviso to Section 18(4).

Restoration

After 6 months and within 1 year from expiry; prescribed form and fee; Registrar must be satisfied it is just

Section 18(5). Only where removal was for non-payment of the prescribed fee. Restoration may carry conditions or limitations.

Effect of removal on later applications

Removed GI treated as still on the register for 1 year after removal

Section 19. Applies to any application for another GI, unless no bona fide trade use in the two years before removal, or no deception or confusion would arise.

Rights conferred by registration

Proprietor + authorised user: relief for infringement. Authorised user: exclusive right to use

Section 21(1), if the registration is valid and subject to the Act.

Registration as authorised user

Any person claiming to be a producer of the goods may apply to the Registrar, with a statement, documents and fee

Section 17. Filing, examination, acceptance, advertisement, opposition and registration provisions apply as for a GI.

Unregistered GI

No infringement action for an unregistered GI (s 20(1)); passing off remedy remains (s 20(2))

Registration is needed for an infringement suit, not for passing off.

Infringement of registered GI

Non-authorised user + (misleading origin OR unfair competition/passing off OR literally true but falsely suggests origin) = infringement (s 22(1))

The person must not be an authorised user.

Additional protection

Notified goods (s 22(2)): use even with true origin, translation, or 'kind', 'style', 'imitation' = infringement (s 22(3))

Needs a Central Government notification.

Exception for lawfully acquired goods

Further dealing, including processing or packaging, is not infringement unless the condition of goods is impaired after being put in the market (s 22(4))

Applies where goods were lawfully acquired by a non-authorised user.

Falsifying (s 38(1))

Making the GI or a deceptively similar one without the authorised user's assent; or altering, adding to or effacing a genuine GI

Burden of proving assent lies on the accused (s 38(4)).

Penalty (s 39)

Imprisonment: 6 months to 3 years; fine: ₹50,000 to ₹2,00,000

Court may impose less for adequate and special reasons recorded in the judgment. The accused can escape by proving absence of intent to defraud.

Cognizance and trial (s 50)

Offences under ss 42, 43, 44: complaint in writing by Registrar or authorised officer. Trial: not below Metropolitan Magistrate or Judicial Magistrate of the first class. Offences under ss 39, 40, 41: cognizable.

Exception: for s 42(1)(b), a Registrar's certificate is enough for cognizance.

Police search and seizure (s 50(4)-(5))

Officer not below Deputy Superintendent of Police; without warrant; must first obtain and follow the Registrar's opinion; interested person may apply for restoration within 15 days

Seized articles go before the Magistrate as soon as practicable.

Five-year limit (s 26(4))

No action on a trade mark's use or registration after 5 years from when its infringing use became known to the registered proprietor or authorised user

Subject to the conditions in the section, including that the GI is not used or registered in bad faith.

Appeal against Registrar (Section 31)

Aggrieved person → High Court, within 3 months of communication of the order

Late appeal admitted only if sufficient cause is shown to the High Court.

Rectification (Section 27)

Application to High Court or Registrar by any person aggrieved; also on the forum's own motion after notice and hearing

Grounds: contravention or non-observance of a condition, missing entry, entry without sufficient cause, wrongly remaining entry, error or defect.

Invalidity pleaded in infringement suit (Section 58(1))

Validity decided only on rectification application to the High Court, not the Registrar

Section 58(2): the Registrar may refer a pending application to the High Court at any stage.

Stay of suit (Section 57)

Rectification pending → stay suit; none pending but plea prima facie tenable → frame issue, adjourn 3 months

If no application is made in time, the issue is deemed abandoned. Interlocutory orders such as injunctions are still possible during a stay.

Criminal case (Section 48)

Plea of invalidity prima facie tenable → adjourn 3 months for the accused to apply to the High Court

If the application is made, the prosecution stays; if not, the court proceeds as if the registration were valid.

Giving effect to orders (Sections 27(5) and 34(2))

High Court order communicated or served on Registrar → Registrar rectifies the register

Section 34(1): the rectification application to the High Court is in the prescribed form.

Appeal against adjudicating officer (Section 37B)

Appeal to appellate authority (officer at least one rank above) within 60 days; disposal within 60 days of filing

Non-compliance within 90 days of the order attracts, in addition to the penalty, a fine of ₹1,00,000 or imprisonment up to one year, or both.

Quick revision

• Registration of a GI lasts ten years and can be renewed for further periods of ten years (section 18).
• An authorised user's registration lasts ten years or until the GI registration expires, whichever is earlier.
• If renewal is missed, the Registrar cannot remove the GI if the form, fee and surcharge are filed within six months of expiry.
• After removal for non-payment, restoration may be sought after six months and within one year from expiry, if the Registrar is satisfied it is just.
• For one year after removal for non-renewal, the GI is deemed to be on the register for later applications, with two exceptions in section 19.
• Section 9 bars registration where use would deceive or cause confusion, is contrary to law, is scandalous or obscene, or hurts religious susceptibilities.
• Section 9 also bars generic names and indications that are literally true but falsely suggest another origin.
• A homonymous GI may be registered under section 10 if consumers will not be confused or misled, after considering equitable treatment of producers.
• Section 25 directs the Registrar of Trade Marks to refuse or invalidate trade marks that mislead about the true origin of goods.
• Where a defendant pleads invalidity in an infringement suit, section 57 stays the suit if rectification is pending, or gives three months to apply.
• Rectification applications now go to the High Court under section 34, which replaced the Appellate Board from 4 April 2021.
• The Registrar may appear in High Court proceedings on rectification or on Registry practice (section 35).

Common mistakes

• Saying a GI can be owned by one trader like a trademark. Fix: Remember that the registered proprietor is an association, producers or an organisation under section 2(1)(n). Individuals use it as authorised users.
• Leaving out 'essentially attributable to geographical origin' from the definition. Fix: State that the quality, reputation or characteristic must be essentially attributable to origin. A place name alone is not enough.
• Defining GI as just a name of a place Fix: Always include that a quality, reputation or characteristic must be essentially attributable to the geographical origin.
• Forgetting the extra condition for manufactured goods Fix: State that one of production, processing or preparation must take place in the territory, region or locality.
• Saying any individual producer can apply to register a GI. Fix: Section 11(1) allows only associations of persons or producers, or a statutory organisation. An individual producer applies under section 17 as an authorised user.
• Stating the opposition period as one month or two months. Fix: Opposition is three months from advertisement or readvertisement, extendable by no more than one month in aggregate. The counter-statement is two months.
• Saying a homonymous GI can never be registered Fix: Section 10 allows registration if the Registrar is satisfied that consumers will not be confused or misled, subject to section 7.
• Dropping the factors the Registrar must consider under section 10 Fix: Also state the practical conditions for differentiating the indications and the need for equitable treatment of producers.
• Saying the proprietor has the exclusive right to use the GI. Fix: Under Section 21(1)(b), the exclusive right to use belongs to the authorised user. The proprietor and authorised users can both seek relief for infringement.
• Giving an authorised user a flat ten-year term. Fix: Add the limit: ten years or until the GI's registration expires, whichever is earlier (Section 18(2)).

Exam tips

• Always quote section 2(1)(e) in the first lines of any definition answer. ICSI answers start with the provision.
• For 'distinguish' questions, write three to five clear points. Use both sides in each point.
• Give TRIPS Article numbers with their purpose. Do not guess details beyond the general, wines and spirits, and exceptions split.
• Use Indian examples such as Darjeeling tea or Kanchipuram silk for illustration only. Do not state registration dates or details you are unsure of.
• Link back to section 9 when the question mentions generic names or misleading indications.
• Quote the definitions in statutory words. Examiners reward the exact elements of section 2(1)(e).
• Mention the section number only where you are sure. Section 2(1) and section 17 are safe.
• In fact-based questions, tick off each element of the definition against the facts before concluding.