Geographical Indications: formula sheet

Key formulas

Test for a GI

Goods + definite territory + quality, reputation or characteristic essentially due to that origin

All three elements must be present. Use this as the definition in any answer.

Basic protection (TRIPS Article 22 / GI Act s.22(1))

Misleading use as to true origin OR unfair competition (including passing off) = infringement by a non-authorised user

Applies to all goods. The use must mislead the public as to geographical origin, or amount to unfair competition.

Additional protection (TRIPS Article 23 / GI Act s.22(2)-(3))

Protection even if true origin is stated, translation is used, or words such as 'kind', 'style', 'imitation' are added

Under TRIPS it is for wines and spirits. Under the Indian Act it applies to goods or classes the Central Government notifies under s.22(2).

Refusal of registration (GI Act s.9)

Deceptive use, illegal, scandalous or obscene matter, hurts religious susceptibilities, generic names, or falsely represents another place = not registered

Sub-clauses (a) to (g). A name that has become generic, as explained in the Act, cannot be registered.

Lawful resale (GI Act s.22(4))

Lawfully acquired goods: further dealings, including processing or packaging, are not infringement unless the condition of goods is impaired after being put in the market

This is the exhaustion-type exception. Do not forget the impairment condition.

GI vs trademark

GI: place-linked, collective, not assignable | Trademark: source-linked, individual, assignable

Use these three contrasts as the skeleton of a comparison answer.

Geographical indication [s 2(1)(e)]

GI = indication + goods (agricultural / natural / manufactured) + origin in a country, region or locality + quality, reputation or other characteristic essentially attributable to origin + (for manufactured goods) one of production, processing or preparation in that place

Explanation: a name that is not a place name can still be a GI if it relates to a specific geographical area and is used on goods from there.

Producer [s 2(1)(k)]

Agricultural goods: produces, and includes one who processes or packages | Natural goods: exploits | Handicraft or industrial goods: makes or manufactures | Also includes one who trades or deals in such production, exploitation, making or manufacturing

The meaning changes with the type of goods.

Registered proprietor [s 2(1)(n)]

Any association of persons or of producers, or any organisation, for the time being entered in the register as proprietor

A collective body, not an individual.

Authorised user [s 2(1)(b), s 17]

Authorised user = person registered under section 17 as a user of a registered GI

Under section 17(1), a person claiming to be the producer of the goods may apply to the Registrar.

Indication, name, goods [s 2(1)(g), (h), (f)]

Indication includes name, geographical or figurative representation, or a combination conveying or suggesting geographical origin | Name includes an abbreviation | Goods includes agricultural, natural, manufactured, handicraft or industrial goods and foodstuff

Figurative representations, such as a picture, can also be an indication.

Deceptively similar [s 2(1)(c)]

One 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.

Who is the Registrar

Registrar of GIs = Controller-General of Patents, Designs and Trade Marks (Trade Marks Act, 1999, s 3(1))

Section 3(1). Other officers may be appointed and act under the Registrar's superintendence and direction (s 3(2)).

Registry and offices

One Registry; head office and branch offices by Central Government notification; Registry has a seal

Section 5. The Central Government can also define the territorial limits of each office.

Register and its parts

Register (s 6) = Part A (GI particulars) + Part B (authorised user particulars) (s 7)

Kept at the head office. A copy of the register is kept at each branch office (s 6(6)).

Form of the Register

May be kept wholly or partly on computer or in other electronic form, with prescribed safeguards

Section 6(1)-(3). An entry then means the entry as held in electronic form.

No notice of trust

No notice of any trust, express, implied or constructive, is entered or received

Section 6(4).

Control of the Register

Register is under the Registrar's control and management, subject to the Central Government's superintendence and direction

Section 6(5).

Powers of Registrar in proceedings

Civil court powers + orders as to costs + review of own decision

Section 60: receive evidence, administer oaths, enforce attendance, compel discovery and production, issue commissions. Costs orders are executable as a civil court decree. Review is on application in the prescribed manner.

Evidence

Certified, sealed copy of an entry = admissible without further proof; Registrar's certificate = prima facie evidence

Section 69. Under section 70 the Registrar and officers are not compellable to produce the register or to appear as witness unless the court orders for special cause.

Who may apply (Section 11(1))

Association of persons or producers OR organisation/authority established by or under law representing producers

Applies in writing, in prescribed form and manner, with prescribed fees. Not an individual producer.

Contents of application (Section 11(2))

Statement of origin and quality link + class of goods + map + appearance of GI + producer particulars + other prescribed particulars

Six items, (a) to (f). The quality link must be due exclusively or essentially to the geographical environment with natural and human factors.

Multiple classes (Section 11(3))

One application, many classes; fee per class

Fee is payable for each class of goods.

Place of filing (Section 11(4))

File at GI Registry covering the territory of the GI; if outside India, the Registry covering the India address for service

Do not say the head office is always used.

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

Refuse / accept absolutely / accept subject to amendments, modifications, conditions or limitations; grounds recorded in writing for refusal or conditional acceptance

Reasons and materials used must be recorded.

Prohibited GIs (Section 9)

(a) deceive or confuse; (b) contrary to law; (c) scandalous or obscene; (d) hurts religious susceptibilities; (e) disentitled to protection in a court; (f) generic or not protected, or fallen into disuse, in country of origin; (g) literally true but falsely represents another origin

Seven grounds, (a) to (g). Learn them as DLSRCGF-style cues: deceive, law, scandal, religion, court, generic, false origin.

Homonymous GI (Section 10)

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

Registrar considers practical conditions of differentiation and equitable treatment of the producers concerned.

Authorised user (Section 17)

Producer applies in writing with statement and documents; Chapter rules on examination, advertisement, opposition and registration apply

Available for goods whose GI is already registered under Section 16.

Who may apply as authorised user

Any person claiming to be the producer of the goods of a registered GI, by written application to the Registrar (s.17(1))

The GI must already be registered under section 16.

Term of registration

GI: 10 years, renewable. Authorised user: 10 years or till the GI expires, whichever is earlier (s.18(1), (2))

Renewal is for 10 years from expiry of the last registration (s.18(3)).

Renewal application

Registered proprietor or authorised user applies in the prescribed manner, within the prescribed period, with the prescribed fee (s.18(3))

The Registrar sends a notice of expiry before the date (s.18(4)).

Grace period

Application + fee + surcharge within 6 months from expiry: no removal, renewal for 10 years (proviso to s.18(4))

Surcharge is payable in addition to the fee.

Restoration

After 6 months and within 1 year from expiry: application in prescribed form + fee; Registrar restores if satisfied it is just (s.18(5))

Restoration may be general or subject to conditions or limitations.

Effect of removal

For 1 year after removal, the GI is deemed to be on the register for other applications, unless s.19(a) or (b) is satisfied

(a) no bona fide trade use in the 2 years before removal; (b) no deception or confusion likely.

Rights on registration

Proprietor and authorised users: right to relief for infringement. Authorised user: exclusive right to use (s.21(1))

Subject to conditions and limitations (s.21(2)).

Similar GIs, several users

Registration alone gives none of them exclusive rights against the others (s.21(3))

Each has the same rights against outsiders as a sole authorised user.

Bar on suing for unregistered GI

Unregistered GI → no infringement action (s.20(1)); passing off remedy preserved (s.20(2))

State both limbs. Many answers miss s.20(2).

Rights from valid registration

Proprietor + authorised user → right to relief; authorised user → exclusive right to use (s.21(1))

Exclusive use belongs to the authorised user, not the proprietor as such. It is subject to conditions on the register (s.21(2)).

Falsifying a GI

Without assent of authorised user: make the GI or a deceptively similar one; or alter, add to or efface a genuine GI (s.38(1))

In prosecution, the accused must prove the proprietor's assent (s.38(4)).

Falsely applying a GI

Without assent: apply GI or deceptively similar GI to goods or package; or use such a package for other goods (s.38(2))

Both falsifying and false application make a 'false geographical indication' (s.38(3)).

Penalty for falsifying or falsely applying

Imprisonment 6 months to 3 years + fine ₹50,000 to ₹2,00,000 (s.39)

Court may go lower for adequate and special reasons recorded in the judgment. Not punishable if accused proves absence of intent to defraud.

Penalty for false claim of registration

Lower of 0.5% of total sales, turnover or gross receipts (audited accounts) and ₹5,00,000 (s.42(2))

Applies from 1-8-2024 by amendment. Covers claiming registration for an unregistered GI, for goods not covered, or claiming exclusivity the register does not give.

Civil relief

Injunction + damages or account of profits (plaintiff's option) ± delivery-up (s.67(1))

Ex parte or interlocutory orders: discovery, preservation of evidence, restraint on dealing with assets (s.67(2)).

Innocent defendant protection

No damages or profits (except nominal) if unaware and ceased forthwith on learning (s.67(3))

Both conditions must be met. Injunction is still available.

Rectification application

Section 27(1) and (2): any person aggrieved → application to High Court or Registrar → order to cancel, vary, make or expunge an entry

Grounds: contravention or failure to observe a condition on the register; absence, omission, wrong entry, wrongly remaining entry, or error or defect in an entry.

Own motion power

Section 27(4): notice in the prescribed manner + opportunity of hearing → order

The Registrar or High Court can act without an application, but only after notice and hearing.

Appeal to High Court

Section 31(1): appeal within 3 months from the date the order or decision is communicated

Time runs from communication, not from the date of the order. The High Court may admit a late appeal for sufficient cause (Section 31(2) proviso).

Validity in an infringement suit

Section 58(1): validity decided only on rectification application, made to the High Court, not the Registrar

Applies where either party questions the other's registration in a suit for infringement.

Stay of civil suit

Section 57: rectification pending → stay the suit; none pending but plea prima facie tenable → issue framed, adjourn 3 months

If no application is made in time, the validity issue is deemed abandoned. Interlocutory orders, such as injunctions, can still be made during a stay (Section 57(5)).

Criminal prosecution

Section 48: accused pleads invalidity and plea prima facie tenable → adjourn 3 months to apply to 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 is communicated to the Registrar, who amends or rectifies the register

The Registrar must give effect to the order.

Certificate of validity

Section 72: decision on contest upholding validity → High Court may grant a certificate → full costs as between legal practitioner and client in later proceedings

Costs follow only if the proprietor or authorised user gets a final order or judgment affirming validity, unless the court directs otherwise.

Appeal against adjudicating officer

Section 37B: appeal to appellate authority (an officer at least one rank above) within 60 days of receipt; disposal within 60 days of filing

Inserted by Act 18 of 2023, effective 1-8-2024. Failure to comply within 90 days of the order attracts a fine of ₹1 lakh or imprisonment up to one year, or both, in addition to the penalty.

Quick revision

• A GI registration lasts ten years and can be renewed for ten years at a time (Section 18).
• An authorised user's registration lasts ten years or until the GI registration expires, whichever is earlier.
• Late renewal: if the application, fee and surcharge come within six months after expiry, the Registrar must not remove the GI.
• Restoration: after removal, the Registrar may restore on application after six months and within one year from expiry, if satisfied it is just to do so.
• Registration is dated from the date of the application, and that date is deemed the date of registration (Section 16).
• If registration is not completed within twelve months because of the applicant's default, the Registrar may treat the application as abandoned after notice.
• The Register is kept at the head office of the Registry and may be kept in electronic form (Section 6).
• No notice of any trust, express, implied or constructive, is entered in the Register.
• Exclusive right to use belongs to the authorised user; the proprietor and authorised user can both seek relief for infringement (Section 21).
• In an infringement suit where invalidity is pleaded, the court stays the suit if rectification proceedings are pending (Section 57).
• If no rectification application is made within three months of the issue being framed, the invalidity plea is deemed abandoned.
• The Registrar may appear before the High Court in rectification matters or submit a signed written statement instead (Section 35).

Common mistakes

• Saying a GI is owned by one producer and can be assigned like a trademark. Fix: Write that a GI is a collective right linked to the territory. Individual producers register as authorised users.
• Saying Article 23 of TRIPS applies to all goods. Fix: Article 22 covers all goods. Article 23 gives higher protection to wines and spirits.
• Treating any product-origin label as a GI. Fix: Always test the attribution element. A place name alone is not enough.
• Ignoring the manufacturing-activity rule for manufactured goods. Fix: For manufactured goods, check that at least one of production, processing or preparation happens in the territory, region or locality.
• Saying the Registrar is a separate officer appointed only for GIs. Fix: Remember section 3(1): the Controller-General of Patents, Designs and Trade Marks under the Trade Marks Act, 1999 is the Registrar.
• Putting authorised users in Part A of the Register. Fix: Part A is for registered geographical indications. Part B is for registered authorised users (section 7).
• Saying any individual producer can apply for GI registration. Fix: Section 11(1) allows associations of persons or producers and authorities representing producers. An individual producer applies as an authorised user under Section 17 after the GI is registered.
• Treating homonymous GIs as barred because names are the same. Fix: Section 10 allows registration if the Registrar is satisfied consumers will not be misled, after considering how the GIs can be differentiated and equitable treatment of producers.
• Saying the registered proprietor has the exclusive right to use the GI. Fix: Under section 21(1)(b) the exclusive right to use is given to the authorised user. The proprietor gets the right to relief for infringement.
• Giving an authorised user a full ten years regardless of the GI. Fix: Section 18(2): ten years or till the GI expires, whichever is earlier.

Exam tips

• Always give the three-part definition first. Examiners look for place, quality link and goods.
• Memorise the split: Article 22 for all goods, Article 23 for wines and spirits. Mention the Indian counterpart, section 22.
• In comparison questions, use a point-wise layout with at least four contrasts and one example for each side.
• In case problems, state whether the goods are notified before applying additional protection.
• Cite section numbers only for provisions you know, such as sections 9, 22 and 25, and write the rest in plain words.
• Open every answer with the clause reference and the statutory words. Examiners reward accurate quotation.
• For fact-based questions, structure your answer as provision, analysis of facts, conclusion.
• Learn the three-way meaning of producer and the proprietor versus authorised user distinction. These are frequent comparison points.