Geographical Indications and Industrial Designs notes — Unit 5

While a Trademark is owned by a single company to distinguish its products, a Geographical Indication is a community right.

⇒What is a GI?

A GI is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. The soil, climate, or traditional manufacturing methods of that region give the product its unique character.

India enacted the Geographical Indications of Goods (Registration and Protection) Act, 1999, specifically to comply with its obligations under the TRIPS Agreement.

⇒The Need for the Act

Before this Act, foreign companies attempted to pirate Indian geographical names. The most famous example was a US company, RiceTec, trying to patent 'Basmati' rice lines in the US. A domestic GI registry allows India to officially document its heritage and defend it in international WTO disputes.

Who can apply for a GI? An individual farmer cannot.

⇒The Applicants

An application can be filed by any association of persons or producers or any organization/authority representing the interests of the producers of the concerned goods.

⇒Authorized Users

Once a GI is registered (e.g., Darjeeling Tea by the Tea Board of India), individual tea estates in Darjeeling can apply to become "Authorized Users." Only these authorized users can legally put the "Darjeeling Tea" logo on their packets.

A registered GI is infringed when a person who is not an authorized user uses the indication on goods:

• Which indicates that the goods originate in that geographical area, misleading the public (e.g., selling tea grown in Assam in a packet labeled 'Darjeeling Tea').
• Even if the true origin of the goods is indicated, or if the GI is used in translation or accompanied by words like "kind", "style", "imitation".

(Example: You cannot sell rice grown in Texas and call it 'Texas-style Basmati'. That is an infringement).

This is a major difference between GI and Trademarks.

⇒Community Right, Not Private Property

A trademark can be sold (assigned) or licensed to anyone. (Nike can license its logo to an Indian manufacturer).

However, Section 24 of the GI Act explicitly states that a registered GI cannot be assigned, transmitted, licensed, or mortgaged. It belongs to the producers of that specific region. The Tea Board of Darjeeling cannot "sell" the Darjeeling GI to a tea company in Sri Lanka. It is geographically locked.

We buy an Apple iPhone or a Vespa scooter not just for the engine/processor, but because they look beautiful. The Designs Act protects the aesthetic visual appeal of an article.

⇒Definition of Design (Sec 2(d))

Design means only the features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article (whether in 2D or 3D), which in the finished article appeal to and are judged solely by the eye.

The law strictly separates Aesthetics (Design) from Functionality (Patent) and Branding (Trademark).

⇒What is NOT a Design:

• Functional Features: Any mode or principle of construction, or anything which is in substance a mere mechanical device. (e.g., If the aerodynamic shape of a car wing makes it fly faster, that's a Patent, not a Design. Design is purely for looks).
• Trademarks: A design does not include a trademark.
• Artistic Works: A painting hanging on a wall is covered by Copyright. A painting printed on thousands of mass-produced bedsheets is covered by Design.

A design can be registered if it is:

• New or Original: It has not been disclosed to the public anywhere in India or any other country before the filing date.
• Significantly Distinguishable: It must be significantly different from known designs or a combination of known designs.
• Not Obscene: It must not contain scandalous or obscene matter.

⇒Term of Design Protection

Registration grants a copyright in the design for an initial period of 10 years, which can be extended by one further period of 5 years (Total maximum 15 years).

The Act uses the term "Piracy" rather than infringement.

⇒The Offence

During the existence of the copyright in a design, it is unlawful for any person (without license) to apply the design, or any fraudulent or obvious imitation of it, to any article in any class of goods in which the design is registered, for the purpose of sale.

⇒Remedies

The registered owner can file a civil suit for an injunction (to stop the sale) and recover statutory damages or actual damages from the pirate.

Section 15 of the Copyright Act deals with the tricky overlap between Artistic Copyright and Industrial Design.

⇒The Conflict

Suppose you draw a beautiful sketch of a chair (Copyright). Then you manufacture chairs based on that sketch.

⇒The Rule (Sec 15, Copyright Act)

• If a design is registered under the Designs Act, it loses its protection under the Copyright Act.
• If a design is capable of being registered under the Designs Act but has NOT been registered, its copyright will cease to exist as soon as the article is reproduced more than 50 times by an industrial process.

(This prevents creators from claiming a lifetime + 60 years copyright monopoly on mass-produced industrial goods, forcing them to use the 15-year Design monopoly).

• GI Concept: Protects products deriving quality/reputation from their geographical origin (soil/climate/traditional knowledge).
• GI Ownership: It is a community right owned by associations. It cannot be sold or licensed to outsiders (Sec 24).
• Industrial Design: Protects only the visual, aesthetic appeal (shape, pattern, color) of an article judged solely by the eye.
• Design Exclusions: Purely functional/mechanical features cannot be registered as designs (they belong in Patents).
• Section 15 Overlap: An artistic work loses copyright protection if mass-produced industrially more than 50 times without Design registration.

⇒Premium Advice for Top Marks

• GI vs Trademark: This is the most frequently asked comparison. Draw a table. Key differences: Trademarks are private property; GIs are community property. Trademarks can be sold/licensed; GIs cannot. Trademarks indicate a specific company (Nike); GIs indicate a specific region (Darjeeling).
• Aesthetics vs Functionality: When answering a question on Designs, explicitly state the "Judged solely by the eye" rule. Emphasize that if the shape of an object is dictated solely by the function it performs (like a standard screw or a gear), it is not eligible for design protection.
• The Rule of 50: Mentioning Section 15 of the Copyright Act (loss of copyright after 50 industrial reproductions) in an answer about Designs will show the examiner that you understand how the different IP acts interact with each other.