SpicyIP brings our readers a sponsored post by the International Trademark Association, in conversation with Latha Nair of K&S Partners, on Geographical Indications in India. [Long Post]
Geographical Indications in India and Beyond
As the global association of trademark owners and professionals dedicated to supporting trademarks and related intellectual property, the International Trademark Association (INTA) has been increasingly involved in the global developments concerning Geographical Indications (GIs). Below, Latha Nair (K&S Partners—India), who serves as Vice Chair for INTA’s Legal Practice Resources Committee and is co-editing INTA’s new online searchable publication on Geographical Indications, Certification Marks and Collective Marks, provides her insights on GIs in India and how India’s GI procedures compare with those of other countries:
India has many GIs, such as Darjeeling Tea and Kanjeevaram Silk. What is the Indian government doing to help GI owners protect their GIs?
Latha Nair: India’s Geographical Indications of Goods (Registration and Protection) Act, 1999, has been in effect since September 2003. To date, there are 236 GIs registered under the Act. The GI Registry is conducting regular awareness-creation workshops in various parts of India to educate stakeholders about the availability of such protection for the various GIs in relevant regions.
However, India is rather inexperienced in the area of GI protection in comparison with many European countries. Therefore, it is important for India to study the time-tested models of GI protection found in certain European countries such as France. Section 11 of the Indian GI Act permits government bodies (authorities established under law), such as the Tea Board of India, to register and protect GIs, so long as these bodies represent the interests of the producers of the relevant goods. France followed this practice until very recently, with government bodies in charge of GI protection. However, now that the GI protection in France has been streamlined, the responsibility of protection is slowly shifting from government to producers.
As a developing country, India is in the nascent stages of GI protection, and because of this the government must play a more active role in the protection process. With the provisions of the GI Act permitting government bodies to become applicants, it is easier for the Indian government to support producers of GIs by protecting GIs and helping producers gain market access for their goods.
Furthermore, the European models of protection emphasize quality control, supply chain integrity and enforcement by way of continuous policing of the market. India should seriously consider adopting such mechanisms into its GI protection process. The European model also functions via several layers of inspection, both internal and external, which ensure that the GI specifications are strictly enforced. Adoption of these mechanisms will enhance the value and credibility of those products branded as GIs in India.
Is there an understanding within India’s business community that this type of GI protection exists and is available?
LN: As I’ve mentioned, the GI Registry has been conducting regular awareness workshops in various parts of India that produce products that can be potentially branded as GIs. While there is an awareness among stakeholders about the availability of GI protection in India, there is less awareness about how to keep the protection process in existence and how to reap the economic benefits of a GI through protection.
In my opinion, every potential applicant must have a pre- and post-registration strategy to effectively protect a GI. For instance, as part of a pre-registration strategy, an applicant must understand what should be protected and how to make the protection process financially viable and sustainable for the producers, whether there is consensus among the stakeholders of GIs as to the method of production and area of production—essentially, an applicant must recognize and follow those procedures that would benefit all GI stakeholders. Post-registration, it is important to keep track of violations and keep a constant market check to ensure quality control.
In other words, there must be a clear pre- and post-registration strategy devised before one runs to the GI Registry with an application. Without this strategy, any GI registration will remain a mere paper tiger.
And finally, can you elaborate a little on the complicated relationship between GIs and trademarks and share INTA’s position on how these complications should be addressed?
LN: There is a philosophical conflict between the protection of GIs and trademarks. Proponents of GIs view these designations as absolute, i.e., once created they should be entitled to exclusivity even if this means extinguishing valid, pre-existing trademark rights. Proponents of trademarks generally believe that conflicts between geographical indications and trademarks should be resolved by the traditional principle of “first in time, first in right”.
This tension between GIs and trademarks has practical implications, for example, trademarks can include terms that may also refer to a geographic location and country code top level domains (ccTLDs) and new gTLDs can incorporate geographic locations. Moreover, this lack of harmonization mean extra cost and burden to proponents of both views.
INTA supports the protection of GIs as an intellectual property (IP) right so long as such protection does not prejudice other existing IP rights, including trademarks. Therefore, INTA is advocating for an equitable system where conflicts between these rights are resolved in accordance with to the well-established IP principles of territoriality, exclusivity and priority.
GIs are a hot issue right now. They are a central topic of debate in current international trade agreement talks, including the Transatlantic Trade and Investment Partnership (TTIP) and Trans-Pacific Partnership (TPP) agreements. The World Intellectual Property Office (WIPO) also recently hosted a Diplomatic Conference for the Adoption of a New Act of the Lisbon Agreement in Geneva in mid-May 21, 2015. Negotiators taking part in the conference approved the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, which allows the international registration of GIs.
INTA’s Representative in Geneva, Bruno Machado, participated in the Diplomatic Conference and delivered an opening statement on behalf of the Association. As the statement explained, INTA supports all forms of branding, including GIs, and believes that GIs and other IP rights should coexist harmoniously. However, there is still concern over a number of the new Act’s provisions that could negatively impact trademark owners’ rights, especially the rights of those owners whose companies operate in countries with trademark-based protection systems.
Looking ahead, INTA will host its Geographic Names Conference in Rome, Italy, from December 10 through 11, 2015. This conference will focus on important policy choices in Europe, the international trade agreement talks, how to protect names of products with links to specific geographic origins and more. In attendance will be experts from around the world, including representatives from the EU Commission, the Hungarian Intellectual Property Office, the Office for Harmonization in the Internal Market (OHIM), the Mexican Institute of Industrial Property, WIPO and the World Trade Organization (WTO). Registration will launch on Monday, September 14, 2015.