30/01/2020 – Members Voice, India: GIs, A refreshing IP tool, by Latha Nair, K&S Partners

thumb KSPartnersMy first brush with geographical indications (GIs) was when I joined my firm, K&S Partners, in March 1998. My mentor in the profession, Rajendra Kumar, entrusted me with a trademark opposition to be filed in Colombia. The mark to be opposed contained “BASMATI” as part thereof for class 30 goods. My learning on GIs started from that assignment.

Interestingly, India did not have a sui generis GI law in 1998. Rajendra was entrusted by the Government of India to prepare a first draft of the GI law in 1996. However, GIs were protected through certification marks under the trademark statute and through the common law remedy of passing-off. But the firm had already been representing the interests of Basmati rice and Darjeeling tea in their domestic and global protection since 1995 and 1998 respectively. I learned my ropes in GI protection from working on these two portfolios. The firm is proudly continuing its representation of these two GIs till date.

Rajendra’s first draft of the GI law was turned around into the Geographical Indications of Goods (Registration & Protection) Act, 1999. In 2003, India notified the said Act into force. In the same year, Rajendra had the privilege to be part of the first oriGIn meeting in Geneva.

My interest in the subject and the fact that GI work was a refreshing and productive distraction from the routine IP work propelled me to start writing and publishing articles on the subject. During a conversation with a friend in the profession in late 2003, he asked me why I would not consider publishing a book on the subject, given the firm’s work and niche expertise in the subject. That gave me an impetus in early 2004 to start writing a book on GIs. In 2005, Lexis Nexis Butterworths published a book co-authored by Rajendra and me titled, “Geographical Indications: A search for identity”. That was the first book on GIs in India and perhaps among the first few books on GIs in the world.

Soon, we were contacted by the CIVC for protection of Champagne in India. In September 2008, we filed the GI application for Champagne in India. Cognac followed suit in 2010. The firm’s name as an expert player in this line of practice brought in a lot of clients in the last decade. Some of the prestigious names we represent today apart from the ones listed above are Scotch Whisky, Parma ham, Parmigiano Reggiano, Grana Padano, Prosecco, Irish Whiskey, Napa Valley Wines and Pisco.

In 2006, I took advantage of my membership of the Publications Committee of the International Trademark Association (INTA) to explore the possibility of an international searchable guide on GIs, Certification and Collective marks. Those efforts bore fruit in December 2015 when a searchable guide was launched by INTA at a conference (officially supported by oriGIn) on geographical names held in Rome.

Thanks to this, today, the firm prides itself in its GI expertise and has a team of highly experienced attorneys practicing this niche subject. 


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