Geographical Indication and Basmati patent Manisha Phour 2012BS14D

GI What is a Geographical Indication? Why Geographical Indication (GI) need protection? What are the benefits of registration of Geographical Indications? Who can apply for GI? What does not qualify for GI? How to register for GI? How long is the registration of Geographical Indication valid? Can it be renewed? Trends on GI filling in India

What is a Geographical Indication? GIs have been defined under Article 22(1) of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement as: “Indications which identify a good as originating in the territory of a member, or a region or a locality in that territory, where a given quality, reputation or characteristic of the good is essentially attributable to its geographic origin.”

Why Geographical Indication (GI) need protection? Registering Geographical Indication is always beneficial as the owner can prevent others from unauthorized usage or from commercializing of the registered product. However the registration of GI is not mandatory in India, unregistered GI are protected under passing off cases, but it’s always advisable to register the geographical origin as no further proof is required.

What are the benefits of registration of Geographical Indications? It confers legal protection to Geographical Indications in India, It prevents unauthorized use of a registered Geographical Indication by others. It boosts exports of Indian Geographical indications by providing legal Protection. It enables seeking legal protection in other WTO member countries. It promotes economic Prosperity of Producers. It is widely believed that effective protection of a GI product, by way of preventing loss of value through copying or free riding, could go a long way in increasing the flow of cash income to the community involved in its production. Hence, GI is often cited as a tool that has the potential to contribute to rural development though indirectly through a reduction in income poverty.

Who can apply for GI? Any association of persons, producers, organization or authority established by under the law can apply. The applicant must represent the interest of the producers.

What does not qualify for GI? Things which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin, or which have fallen into disuse in that country Things which comprise or contain any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India Things which would otherwise be disentitled to protection in a court The use of which would be likely to deceive or cause confusion The use of which would be contrary to any law for the time being in force Things which comprise or contain scandalous or obscene matter Things which although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be.

How to register for GI? The application should be in writing in the prescribed form. The application should be addressed to the Registrar of Geographical Indications along with prescribed fee. GI registry is located in Chennai in India, applicant must file an application at the Chennai office. Along with it applicant must fulfill the various requirements and criteria defined in the GI rules.

Trends on GI filling in India

Examples of Geographical Indications in India: Some of the examples of Geographical Indications in India include Basmati Rice, Darjeeling Tea, Kancheepuram silk saree, Alphonso Mango, Nagpur Orange, Kolhapuri Chappal, Bikaneri Bhujia etc.

Geographical Indications Goods (As per Sec 2 (f) of GI Act 1999 ) State Darjeeling Tea (word & logo) Agricultural West Bengal Coorg Orange Karnataka Navara Rice, Palakkadan Matta Rice Kerala Laxman Bhog Mango Mango Malihabadi Dusseheri Uttar Pradesh Bhalia Wheat Gujarat Udupi Mattu Gulla Brinjal Baluchari Saree Handicraft Phulkari Punjab, Haryana & Rajasthan Nashik Valley Wine Manufactured Maharashtra

Key takeaways from study A total of 193 GIs has been registered as yet in India. Most of the GI has been registered in handicraft(128) followed by agriculture sector(46). Karnataka is leading in GI filler with 34 GI followed by Tamil Nadu(24), Andhra Pradesh(23), and Kerala(22). Goa, Nagaland and Punjab are at the bottom of the list having only a single GI. The filing trend for GI has been increasing since the year 2004 with maximum 45 application filed in the year APR 08-MARCH 09. There is requirement to create awareness about the geographical indication in India as there is a huge potential to have number of GI registered. India has, according to a survey, over 3,000 potential GIs, which need to be protected. Till now, only 463 applications have been filled for the purpose of registering, and, of them, 193 have so far been registered.

GI is also regarded as a potential means for protecting ‘Traditional Knowledge’ (TK).

Traditional Knowledge Digital Library India signed the TKDL (Traditional Knowledge Digital Library) Access Agreement (20th Apr. 2011) with the Japan Patent Office (JPO) . This TKDL Access Agreement would help prevent misappropriation of India’s traditional knowledge at JPO.   It also successfully concludes the arrangement of protection of India’s traditional knowledge with ‘trilateral offices’ like United States Patent & Trademark Office, European Patent Office and Japan Patent Office. This is considered significant as most of the international patent applications get filed at least in one of these trilateral offices.  TKDL expert group estimated that, annually, some 2,000 patents relating to Indian medicinal systems were being erroneously granted by patent offices around the world.

TKDL, a collaborative project between CSIR and Department of AYUSH, is a maiden Indian effort to help prevent misappropriation of traditional knowledge belonging to India at International Patent Offices. It  has scientifically converted and structured  the India’s traditional knowledge available in 150 ancient books on Indian Systems of Medicine, into five international languages, namely, English, Japanese, French, German and Spanish (34 million A4 size pages), and a novel classification system, namely, Traditional Knowledge Resource Classification (TKRC). Today, India through TKDL is capable of protecting about 2 lakh (0.226 million) medical formulations similar to those of neem and turmeric. On an average, it takes five to seven years for opposing a granted patent at international level which may cost Rs 1-3 crore (0.2-0.6 million US$). One could only imagine the cost of protecting 2 lakh (0.2 million US$) medicinal formulations in the absence of TKDL.

India is the only country in the world which has set up an institutional mechanism (TKDL) and is able to prevent grant of wrong patents in only a few weeks through an e-mail and at zero cost, whereas other countries need to fight for 10-12 years and have to spend millions of US dollars to meet legal and other expenses even for opposing a single patent. Phenolics, LLC, US has amended the claims  for "Efficient method for producing compositions enriched in total phenols" based on the TKDL evidences. Moleac Pte Ltd., Singapore have withdrawn their application for "Therapy for promoting cell growth" based on the TKDL evidences.

A STUDY OF THE BASMATI CASE (INDIA-US BASMATI RICE DISPUTE): GEOGRAPHICAL INDICATION PERSPECTIVE

The Facts Originally from India and Pakistan, Basmati became a controversial ‘issue’ after RiceTec, a Texas-based company, in 1997. RiceTec Inc, had been trying to enter the international Basmati market with brands like “Kasmati” and “Texmati”. Ultimately, the company claimed to have developed a new strain of aromatic rice by interbreeding basmati with another variety. They sought to call new variety as Texmati or American Basmati. RiceTec Inc, was issued the Patent number 5663484 on Basmati rice lines and grains on September 2, 1997 on the basis of 20 claims made by the company. In these claims RiceTec included a claim to 90 percent of rice’s germplasm as well as traditional varieties like Bas 370, Taraori, and Basmati Karnal cultivated in India.

This poses a serious threat to the 480,000 tons of Indian basmati exported every year as it could lose market share in the premium rice category in the U.S. and EU to the RiceTec product. This was objected to by two Indian nongovernmental organizations (NGOs) — Centre for Food Safety, an international NGO that campaigns against biopiracy, and the Research Foundation for Science, Technology and Ecology, an Indian environmental. The Centre for Scientific and Industrial Research also objected to it. In April 2000, officials of the Indian Agricultural and Processed Food Products Export Development Authority (APEDA), a body established for development of agricultural commodities and furthering their exports, filed an application with the USPTSO to reexamine the Basmati patent, specifically claims 15 through 17. It took APEDA over two years to gather the data to challenge the claim due to the intricacies of RiceTec’s claims.

Claims 1-14 of the patent pertained to the general characteristics of rice grown in North America, South America, Central America and the Caribbean. Claims 15 to 17 were for rice grains without any limit to geographical indication. Claims 18 to 20 pertained to the specific methods used by RiceTec to develop the rice lines.

Soon after APEDA’s challenge, RiceTec gave up the right to claim 4 and claims 15 through 17. Even with this concession, however, the USPTO found that the 16 remainder claims were also questionable. Subsequently, RiceTec was issued notice by USPTO on March 27, 2001 that its patent was in jeopardy. RiceTec then withdrew the remainder claims except claims 8, 9, 11, 12 and 13 which pertained to new cross bred lines developed by RiceTec that are not similar to any of the varieties grown in India, although Rice Tec claims that the new rice varieties produce grains “similar or superior to those of good quality Basmati rice” The revised patent does not prohibit RiceTec from marketing its rice as similar to Basmati.

Thus RiceTec now has a narrow patent on three specific rice varieties developed through the company’s own research. However, because it no longer has a patent on Basmati lines, it is now prohibited from used the term “Basmati” in marketing its rice. Though India was successful in winning the legal battle against RiceTec in the US, it still faces legal battles in about 25 countries for 40 different cases since TRIPS places the onus on the importing nation, not the exporting nation, of deciding whether another nation’s geographical indication of its traditional goods is valid. Countries where legal battles are currently waged are Brazil,, Greece, Britain, South Africa, Jordan, Spain, Turkey, Kuwait and Taiwan.

In France a food company “Establissments Haudecoeur La Courneuve” was given two trademarks by the French government to use the name “Basmati”, specifically, “Riz Long Basmati” and “Riz Long Basmati Riz du Monde” (The Economic Times, 1998). The Indian government has opposed the trademarks and is awaiting a decision from the French Trademark Office. In Brazil, India has been able to overturn an application for using Basmati as a trademark for sweets and condiments.

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