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Protection through “Geographical Indications” and Protection through “Certification trademark”, national and international trends

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Introduction to Geographical Indication (GI)

I am sure you have heard of “Darjeeling Tea”, if you are not aware let me tell you. Darjeeling is famous for its tea, if anyone is visiting Darjeeling they ought to try the “Tea”. Like this famous Darjeeling tea there are other goods or products which belong to a specific area or location and are unique to that location. I’ll give you one more example “Banaras silk” from Banaras or “Kanjivaram silk” from South India. These products are one-of-a-kind in the place where they are made, and they are well-known around the world. It becomes crucial to protect such goods and products. Here, the GI comes into play. GI is an indication mark given to the goods or products which are unique to a specific location. Such tags help in order to prevent any unauthorized use of these unique goods or product. GIs are not only given to a product unique to a particular location but also to the goods and product which are high in quality, and which have acquired geographical significance for eg. “Roquefort Cheese” which is from Roquefort, France.

Development of GI Act, 1999

Earlier there was no legislation in place to protect GIs, but there was a provision in TRIPs Agreement that no country is obliged to protect another country’s GI if the GI is not protected in its home country. Therefore, to protect their GI, India came up with the GI act, 1999 which came into force on 15th Sept 2003. After this act, natural, artificial as well as agricultural goods which were known for their quality or unique characteristics were identified under the GI Act. This act also protected such goods and products to be manufactured by anyone except authorized manufacturers to avoid the likelihood of confusion in the mind of the consumers.

Article 22, 23, 24 of TRIPS agreement, to which India is a party as well, refers to protection of GI. It is not mandatory for the parties to confine themselves to the articles mentioned in the TRIPS agreement; they can introduce any laws to protect their GI given that it does not come in conflict with the existing laws under the agreement.

CERTIFICATION TRADEMARK (CTM)

Section 2 (1) (e) of The Trademarks Act, 1999 defines Certification Trademark as a “mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which is certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified

This differs from a typical trademark whose function is to distinguish the goods/services that originate from one company. A certification is employed by various merchants to point that their products and services have certain characteristics like a specific level of product quality or a specific geographic location. The certification on any trademark is a sign that the product has gone through various specified tests for quality and safety assurance and has proved to be of a certain standard set by the proprietor to receive that mark. Certification of a mark proves helpful when establishing a trustworthy relation with the consumers, as they are more likely to trust and invest in the certified products. Some common certification marks are, ISI which certifies industrial products to meet the set of standards laid by the Bureau of Indian Standard; FPO is used on manufactured food to ensure it meets the hygienic requirements. Agmark is used on agricultural products to certify that they have met the standard approved by the government. S 78 and 75 of the Trademark Act, 1999 confers exclusive right to use the mark and right against infringement of the certified mark.

How is GI different from CTM?

  1. GI is mainly to give special importance to the place where the product has originated rather than the product itself. Whatever quality, reputation of the goods are considered, they are essentially attributable to where the product has originated from. Whereas during a Materials of construction, method or mode of producing or provision, quality assurance, correctness of the products or services, or any definable attribute of the products or services are samples of what a CTM application factors apart from origin or area. It certifies that members of a union or other organization meet particular requirements when manufacturing or providing services.Therefore, CTM has broader scope than GI.
  2. If any good or services are certified it becomes clear that they have gone through the standards laid down the certifying agency which ensures the quality. Whereas no such standards have been laid down for registering any GIs. GI is used to protect the special products from particular regions, which have earned a reputation for themselves.
  3. CTM can only be registered in the name of the person who does not carry on the trade in goods. While GI protects the producers of the product. While GIs are only used for goods or products, CTM is applicable for both goods and services.

Position in different countries related to CTM and GI

  1. United States of America –US doesn’t have a separate law in place to protect its GIs. It uses trademark structures which are already in place to protect the GIs and if anyone wants to oppose the registration, it provides opportunity for them to do so as well.

Any other geographical signs which might to be descriptive and is unable to be registered as a trademark or collective trademark as it doesn’t show a sign of acquired distinctiveness can be registered as certified trademark.

2. European Union- EU protects products based GI on two designations: (a) Protection of Designations of Origin (PDO) and Protection of Geographical Indication (PGI).

Chapter VIII, Section 2: Articles 83 to 93 of the EUTMR govern the registration of certified trademark.

3. Apart from the international conventions, the GIs are protected by the Civil and Common Law systems. Countries such as the United Kingdom, the United States of America, New Zealand, India, and others follow the Common Law jurisprudence system. This system provides a remedy by pursuing legal action against a party who has been wronged.Russia, France, and the majority of European countries follow civil law jurisprudence, in which case law plays no part in judicial or administrative processes and codified law is the only source of enforcement of rights and remedies.

Conclusion

There seems to be a lot of confusion on how GI serves a different purpose than CTM. Although, it is quite clear that GI can be registered as CTM but not vice versa. The goal of this article was to clear some of that confusion and to highlight how different countries around the world govern their GIs and trademarks. Some clarification from government is also required as some provision related to CTM (S 75 which purports blanket immunity to the proprietor) is also needed.

Bibliography

  1. https://spicyip.com/2007/11/geographical-indications-and.html
  2. https://www.mondaq.com/india/trademark/295156/certification-marks-an-indian-perspective

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Contributed by Nidhi Jha, Law Intern at LLL

 Certification trademarkGeographical IndicationsGI tags

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