Competition in the national and global markets has intensified bringing issues of identification and positioning to the forefront. Every product in the market tries to carve a niche` for itself, relying on the strong customer base it builds, the onus lying on brand value, name or identification that the product has. When it comes to internationally marketed products named after the region, area, or nation where they are produced, the major battle involves protecting the integrity of the products from manufacturers who would tend to misuse the identity.

In such a scenario, legal protection extended to geographical indications gains prominence. Geographical indications intend to designate product quality, highlight brand identity, and preserve cultural tradition. Protection of geographical indications at the international level can be traced to a number of treaties administered by the World Intellectual Property Organization (WIPO), most notably the Paris Convention for the Protection of Industrial Property of 1883, and the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. In addition, Articles 22 to 24 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) also deal with the international protection of geographical indications within the framework of the World Trade Organization (WTO).

The legal definition of a Geographical Indication as under the TRIPS Agreement is incorporated in Article 22.1. This defines geographical indications as “indications which identify a good as originating in the territory of a member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.” Further, Article 22 also mandates protection to be extended by member countries for specific geographical indications.

The Paris Convention does not define “geographical indications”; in fact, it uses different terms, viz, “indications of source” and appellations of origin”, (Article 1(2)), which are also left as such. The Lisbon Agreement, on the other hand defines appellations of origin as the “geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors” (Article 2(1)), and states that the country of origin is the “country whose name, or the country in which is situated the region or locality whose name, constitutes the appellation of origin which has given the product its reputation.” (Article 2(2)).

The TRIPS Agreement goes a step further to describe the term ‘geographical indications’ to be inclusive of both ‘appellations of origin’ and ‘indication of source’, thus extending geographical indications to two levels of protection. Accordingly, all GIs are to be protected against a use that would mislead the public or constitute an act of unfair competition. To meet with these obligations, most countries permit such GIs to be registered as collective marks or certification marks and/or allows passing-off actions to be instituted in civil courts. Civil law jurisdictions mostly accord such protection to GIs under unfair trade or competition laws.

At national levels, Geographical indications are protected under a wide range of concepts, such as laws against unfair competition, consumer protection laws, laws for the protection of certification marks or special laws for the protection of geographical indications or appellations of origin.

In India, protection is extended to GIs through the Geographical Indications of Goods (Registration and protection) Act 1999. The Act was passed with a view to provide for the registration and better protection of GIs relating to goods. Considering the economic benefit, GIs act as an authenticity/quality mark. This is a factor in enhancing export markets and revenues.

Section 2(e) of The Geographical Indications of Goods Act, 1999 reads:

“geographical indication”, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

Explanation:- For the purposes of this clause, any name which is not the name of a country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be;”

Article 22.1 of TRIPS Agreement defines ‘geographical indications’ as “indications which identify a good as originating in the territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”. Further, Article 22 mandates protection to be extended by member countries for specific geographical indications.

In addition to this, Article 23 of the TRIPS Agreement obliges the protection of GIs on wines and spirits per se without requiring any test of confusion or likelihood of deception to be met. With specific reference to wines and spirits, Art. 23.1 prohibits the use of translations of GIs or attachment of expressions such as ‘kind’, ‘type’, ‘style’, ‘imitation’ to products not originating from the place indicated, even where the true origin is clearly indicated. Prior to TRIPS, only the European Union had provided for such protection.

Further, the Courts in India have also actively contributed towards prevention of misuse and misrepresentation by dishonest commercial operators, protecting the interests of the consumers and legitimate producers. Scotch Whisky Association & Ors. V. Golden Bottling Ltd., 2006 (32) PTC 656 (Del.) is one of the recent cases wherein the concern has been effectively tackled. The issue here in concerned the manufacture and sale of whisky under the name “Red Scot” by the defendants, against which injunction was sought by the plaintiffs.

The plaintiffs were a registered company in the United Kingdom incorporated with the object of protecting and promoting the interests of Scotch whisky trade both in the U.K and abroad. The injunction was sought so as to restrain the defendants from using the name “Red Scot” or any other name containing “Scot” or any word similar thereto, to prevent the defendant from passing off its whisky as ‘Scotch’ whisky. The Scotch Whisky Act of 1988 and the Scotch Whisky Order was also placed on record by the plaintiffs to prove that even in Scotland all whiskys produced did not necessarily fall in the category of “Scotch Whisky”.

It was further contended by the plaintiffs that the words “Scot” or “Scotch” were geographical indications in the purview of Article 22.1 of the TRIPS Agreement thus, identifying it as whisky produced in Scotland. To substantiate their stand, they brought forth sample advertisements apart from sales figures worldwide.

The Court upheld the contentions of the plaintiffs and granted injunction based on the regulations prescribed in various articles of the TRIPS as well as the provisions made for in the Act. Punitive damages were also awarded for committing the offence of passing off. The court also emphasized the necessity of preventing violations of the intellectual property rights of the parties before it.

The judgment of the Court upholding the legal protection guaranteed to the specific GI, herein Scotch Whisky, construing along the lines of the Indian GI Act of 1999 reveals a trend of protection and concern for extending legal protection to GIs by Indian courts and hence acquires the status of a landmark decision. This aspect is further highlighted by the recent move by the Union Government to identify the products that needs to be registered as GI’s so as to protect the country’s trade interest.