As per the World Intellectual Property Organization (WIPO), a geographical indication (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. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production.
Does Bangladesh have provisions to register GI?
The Parliament of Bangladesh enacted the Geographical Indication of Goods (Registration and Protection) Act, 2013 (“GI Act, 2013”) in 2013. This Act was formulated to make provisions for the registration and protection of geographical indication of goods. Section 2 (9) of the GI, Act 2013 provides the definition of the “geographical indication of goods.”
As per the definition provided in the Act, geographical indication of goods means a geographical indication of agricultural or natural or manufactured goods which identifies its originating country or territory, or a region or locality of that country or territory, where any specific quality, reputation or other characteristic of the goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods, one of the activities of either production or processing or preparation of the goods concerned conceivably takes place in such territory, region or locality as the case may be.
At present, the coexistence of GI certification for the Tangail sari in both India and Bangladesh poses a significant challenge
Who may apply for registration of GI?
Section 9 of the GI Act, 2013 deals with application for the registration of the geographical indication of goods. It states that any association, institution, government body or authority, which is established or registered under existing laws and represents the interest of persons producing geographical indication of goods, may apply in writing to the Director General in the prescribed form and manner along with the payment of prescribed fees for registration of geographical indication of goods.
What are homonymous geographical indications?
Homonymous geographical indications (GI) are those that are spelled or pronounced alike, but which identify products originating in different places, usually in different countries. In principle, these indications should coexist, but such coexistence may be subject to certain conditions. For example, it may be required that they be used only together with additional information as to the origin of the product in order to prevent consumers from being misled. A GI may be refused protection if, due to the existence of another homonymous indication, its use would be considered potentially misleading to consumers with regard to the product’s true origin.
The registration of Tangail sari as a Geographic Indication of India
Recently, news surfaced of India officially registering the Tangail Sari as a Geographic Indication of India. It has been further reported that in 2020, India initiated the GI registration process following an application by the West Bengal State Handloom Weavers Co-Operative Society Limited. The denomination “Tangail Sari of Bengal” was officially conferred in January 2024. India’s decision to grant West Bengal the geographical indication (GI) tag for Tangail saris has triggered considerable disquiet in Bangladesh as Bangladesh boasts a longstanding and esteemed tradition of weaving some of the world’s finest cotton fabrics, with the Tangail Sari being a notable example. Following the public outcry with regard to India’s registration of the Tangail sari as a Geographic Indication, Bangladesh also has also initiated the Tangail saris as its GI product in a hurry.
Can Bangladesh dispute the decision of India in registering the Tangail sari?
Now the question is whether Bangladesh can dispute the decision of India to register Tangail Sari as a Geographic Indication of India? Section 14 of the Indian GI Act, 1999 deals with opposition to registration. As per section 14, any person can file a notice of opposition within three months (extendable by another month on request which has to be filed before three months) opposing the GI application published in the Journal. The time for filing the said application for opposing the registration may have already elapsed.
However, section 31 of the Indian GI Act, 1999 relates to appeals to the Appellate Board. As per section 31, any person aggrieved by an order or decision of the Registrar under this Act, or the rules made thereunder, may prefer an appeal to the Appellate Board within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal. Hence, Bangladesh may resort to this provision to file an appeal against the registration decision.
At present, the coexistence of GI certification for the Tangail sari in both India and Bangladesh poses a significant challenge, fostering potential conflict and confusion between the two countries until the dispute is resolved.
However, as stated above, a GI may be refused protection if, due to the existence of another homonymous indication, its use would be considered potentially misleading to consumers with regard to the product’s true origin.
Moreover, among other actions, Bangladesh may also invoke protection of geographical indications stipulated under the TRIPS Agreement.
Bangladesh may have a compelling claim, given that the Indian GI specifically mentions “Tangail Sari,” a geographical location within Bangladesh. The assertion regarding the migration of skills and knowledge during partition lacks substantial merit within the context of GI regulations, which mandate a clear link between the designated product and its specific territory of origin.
However, as Bangladesh goes through its own registration, Bangladeshi law also allows the holders of the GI in India, the West Bengal State Handloom Weavers Co-Operative Society Limited to potentially challenge the registration in Bangladesh.
How to deal with future GI conflicts between nations?
GI practice is still in its infancy in some South Asian nations, which may lead to product-related disputes resulting from comparable geoclimatic conditions. In 2013 India designated Jamdani, the Fazli mango, and Nakshi katha as GIs, despite the fact that these items were also manufactured in Bangladesh and have cultural significance here. This compelled Bangladesh to pass GI legislation in 2013, lest it face the risk of losing additional products based on location. This has also happened in the case of Tangail saris. In a similar fashion, Pakistan and India continue to vie for the European Union basmati rice market along with Nepal
Two approaches are available for resolving this matter. One approach is to implement homonymous protection of GIs, which pertains to "geographic names that bear identical spelling and pronunciation, yet indicate the geographical provenance of goods originating from distinct nations." Alternatively stated, GIs may coexist in two nations provided that consumers are not misinformed.
GI practice is still in its infancy in some South Asian nations, which may lead to product-related disputes resulting from comparable geoclimatic conditions
The second aspect pertains to the potential significance of the South Asian Association for Regional Cooperation (SAARC) in facilitating forthcoming GI disputes. The South Asian Free Trade Agreement (SAFTA) was signed in 2004 with the intention of removing trade barriers, facilitating the movement of products across borders, fostering an environment conducive to fair competition, and establishing a structure for cooperation within the region. On IPRs, SAFTA does not explicitly require cooperation.
Nonetheless, a provision in the SAFTA annex stipulates that SAFTA members shall receive technical assistance concerning IPRs from LDC members. Considering the trade promotion and regional cooperation objectives of SAFTA, it is reasonable to anticipate the potential for collaboration regarding GIs. Exemplary regional cooperation practices include the SAARC Energy Centre, which was established in 2005, the SAARC Food Bank, which was established in 2007, and the SAARC Seed Bank, which was established in 2011. As a result, SAARC may be in a good position to initiate GI cooperation among its members and resolve conflicts between neighbours easily.
Rifat Rahman, Barrister-at-Law and Zareef Muhammad Zubair, Barrister-at-Law, are associates at the leading law firm Mahbub & Company.