Acquiring and Protecting Geographical Indication (GI) Rights in Bangladesh

INTRODUCTION:

A geographical indication (GI), which is a type of intellectual property right, is a sign used on goods that have a specific quality, reputation, or other characteristic attributable to its geographic origin. Goods designated with a geographical indication must be produced, processed, or prepared in the defined geographical area using recognized techniques. This type of property right has been developed to boost a country’s local and root level entrepreneurs by giving them both vertical (i.e. ensuring trans-boundary protection) and horizontal (i.e. ensuring that the bona fide producers are being benefited) protection. Geographical indications are typically used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.

To qualify for a geographical indication, a product must have:

• A known quality – arising from specific geographic locations that yield product qualities that cannot be replicated elsewhere;
• Specific characteristics – the clear and unique link between the quality of the product and its geographical origin; or
• An established reputation – where the product’s recognition and value is essentially attributable to the region or locality from which it originates.

GIs draw attention to product quality, local identity, and cultural traditions. Notable examples include, Parmesan Cheese (named after the producing areas near Parma, Italy), Champagne (produced from grapes grown in the Champagne region of France), Scotch Whisky (malt whisky or grain whisky made in Scotland), Tequila (made from the blue agave plant, primarily from the city of Tequila, Mexico), Bangladeshi Jamdani Sari, Turkish Carpets, and India’s Darjeeling (tea). These examples shed light on the human effort, resources, and specific environmental conditions required to achieve GI status.

Understanding how a geographical indication is determined, allows for an exploration of the rights GI provides, protecting GI, how GI can be acquired and implemented through International and Bangladeshi laws, the registered GIs of Bangladesh, and whether Bangladesh’s GI rights are being protected.

NECESSITY OF PROTECTION OF GIs:

A Geographical Indication protects the rights of the holder by preventing third parties from using the name for products that do not meet the applicable standards or originate from the designated region. This protection is particularly important for safeguarding cultural goods, which are often misused and misappropriated. However, a GI does not give the holder the right to stop others from making similar products using the same techniques. For instance, Rajshahi Silk from Bangladesh is a registered GI product. The producers of Rajshahi Silk can prevent the term “Rajshahi Silk” from being used to describe sarees that are not made in the Rajshahi region or do not comply with the standards outlined in the GI code of practice. However, they cannot prevent others from producing high-quality silk or sarees using the same techniques and methologies.

For consumers, GI helps to verify the origin and quality of products. Typically, products granted GI are coveted. If they are not properly protected, these products are susceptible to misrepresentation by third parties looking to capitalize on sales. For example, if every silk saree is presented as being Rajshahi Silk, which is actually not, then consumers risk being deceived and bona fide business owners suffer losses. As such, it is necessary to protect GIs – which in turn, protects consumers and legitimate producers.

How can be GI goods be protected?

There are three main ways to protect a product with a geographical indication:

• The so-called sui generis systems (i.e. special regimes of protection);
• Using collective or certification marks;
• Methods focusing on business practices, including administrative product approval schemes.

PROTECTION OF GIs: INTERNATIONAL APPROACH:

Geographical Indications may be protected at the national level and international level. Examples of international instruments include:

PARIS CONVENTION, 1883

This is the first international agreement concerning the protection of Geographical Indications (GIs). Articles 10 and 10bis (3) require member states to prohibit the use of false indications regarding the origin of goods or the identity of their producer, manufacturer, or trader. 

Under these provisions, any interested party – including producers, manufacturers, or merchants, whether natural or legal persons – can challenge the false indication of goods in the locality, region, or country where such goods are made or used.

Under the Paris Convention, falsely indicated goods will either be seized, suffer an importation prohibition,  or be dealt with according to the country’s national law.

MADRID AGREEMENT, 1891

The Madrid Agreement aims to repress not only false GIs, but also limit deceptive indications of source. Article 1 provides that falsely or deceptively indicated goods must be seized on importation or such importation must be prohibited by member state. Goods will be seized by the customs authorities, and the interested party must be informed. Public prosecutor or competent authority can also seize goods if requested by the injured party.

This Agreement also stipulates that it is the duty of member states to prohibit the use of falsely indicated goods for sale or display or offering of sale.

LISBON AGREEMENT, 1958

The Lisbon Agreement provides protection of appellations of origin i.e. the geographical designation of a country, area, or location used to identify a product whose quality or nature are basically related to the geographic situation, including natural and human factors.

Under the Agreement, imitation products are prohibited and terms such as “kind,” “type,” “make,” “imitation,” or the like are not allowed to be used (and may not be deemed to have become generic in a Member State as long as it continues to be protected in the country of origin.

A Member State’s responsible authority requests the International Bureau of World Intellectual Property Organization (WIPO) to register appellations of origin. The International Bureau on satisfaction registers it, notifies other Member nations, and publishes it in the official bulletin.

A Contracting State might declare that it cannot protect a registered appellation within one year of receiving the notification of registration. A declaration denying protection must state reasons. WIPO will notify the country of origin of any refusal by another country’s authority as soon as possible. When notified by his national Authority of the refusal, the interested party may use that country’s judicial and administrative remedies.

If an appellation that has been granted protection in a given country pursuant to its international registration has already been used by third parties in that country from a date prior to such notification, the competent Authority of that country shall have the right to grant such third parties a period not exceeding two years to terminate such use, provided that it advises the International Bureau accordingly during the three months following the expiration.

Trade Related Aspects of Intellectual Property Rights (TRIPS), 1995 

TRIPS provided a detailed definition of GI. As per Article 22.1, GIs are signs that identify the origin of goods in the country, area, or locality of a Member State and also where particular quality, reputation, or other characteristics of goods are attributable to that origin.

Article 22.2 prohibits use of GIs that could mislead consumers or constitute unfair competition.

Article 22.3 prohibits the registration of trademarks which contains GI for goods if the use of it would be misleading to the public as to the true place of origin of the goods.

Article 22.4 provides protection for such GIs that are literally true yet deceives the public into believing that the goods on which they are used are from a different origin.

Article 23 provides special protection for wines and spirits. It provides that even if the public is not misled it is prohibited to use GI on wines and spirits which do not originate from the place indicated by GI.

Article 24 is the exception to the protection of GI. It provides that it is not necessary to protect such goods whose name became the generic term and if trademark is obtained on such name. Members are expected to negotiate on how the exceptions will apply to individual GIs

PROTECTION OF GIs IN BANGLADESH:

As a member of international agreements such as the Paris Convention of 1883 and the TRIPS Agreement of 1995, Bangladesh has incorporated many of their provisions into its national laws. The Geographical Indication of Goods (Registration and Protection) Act, 2013 (hereinafter referred to as the GI Act, 2013) was recently enacted in Bangladesh. Section 2(9) of the GI Act, 2013, aligns with the TRIPS definition of Geographical Indications (GIs), stating that GIs identify products whose quality, reputation, or other characteristics are inherently linked to their origin. While this primarily applies to agricultural and natural products, where unique qualities are influenced by soil and climate, the GI Act goes beyond the TRIPS definition by also extending protections to manufactured goods.

How are Gis protected in Bangladesh and who can claim that something is GI?

For GIs to be protected in Bangladesh, they must be registered properly. Producers of goods or relevant organizations, institutions, government agencies, or authorities representing producers can applying for GI status by registering said goods (Sec 9). Authorized users of goods and items registered under the Act may include anybody involved in their manufacture, collection, preparation, or processing of the item (Sec 10). The term for protection is 5 years and can be renewed (Sec 16). It should be noted that even unregistered items can attain protection if their true origin is indicated (Sec 6).

Registration Requirements:

As mentioned previously, geographical indication can be registered if the product’s quality, reputation, or other notable traits are mostly due to its geographic origin. In Bangladesh, the application must be made using the appropriate form and must include the necessary fee (Sec 16). Required details are as follows: (a) the applicant’s name, address, nationality, and capacity; (b) the geographical indication for which registration is requested; (c) the geographical locations to which the GI applies; (d) the products for which it applies; and (e) the quality, reputation, or other attribute of the goods.

When is a request for GI designation denied? 

A request to register a product as GI may be denied in the following scenarios: 

1. Where the presentation implies that the goods originated elsewhere;
2. Where use causes unfair competition;
3. Where the products did not originate in the territory indicated by GI, even if the true origin is stated or GI is used is accompanied by terms like “kind”, “type”, “style”, “limitation”;
4. When good is not within the definition provided by Sec 2; 
5. When the good is against public order or morality, public interest, health, national security etc.;
6. When protection ceases in country of origin;
7. When the indicator misleads the public about the product’s characteristics, nature, quality, origin, production method, or usage;
8. When the name contradicts with a plant variety or animal breed and may mislead consumers about the product’s origin;
9. When a name, which is given for a trademark’s repute and longevity, may deceive consumers about the product’s genuine identity; 
10. When the given name becomes generic.

Limitation of Rights:

There are certain limitations to the Rights of the Holder (Sec 19). For example, the Holder is not allowed to make any contract to assign, transfer, license, pledge, or mortgage a registered GI of goods. In case of death, the rights will be passed to the legitimate heirs. Additionally, if the authorized institution is liquidated or abolished then registration will cease to have effect.

Rights of the Holder:

Once a product has been successfully registered, the Holder of the Registration has the right to obtain relief for infringement and the right to use GI obtained (Sec 18). Suits for infringement can be filed by any interested person, and the Court may issue an injunction, award damages, and grant other civil remedies or relief.

Punishment for Fraudulent Acts:

Any person who falsifies a GI or falsely applies a GI to goods is considered to have committed an offense and shall be sentenced to imprisonment for a term of up to three years, but no less than six months, or a fine up to two lakh taka, but no less than fifty thousand taka, or  both. (Sec 29 and 30)

Bangladesh;s Registered GI Products: 

Bangladesh has several registered GI products. These include: Jamdani Saree, Bangladesh Hilsa, Chapai Nawabganj Khirsapati Mango, Bijoypur White Clay, Dinajpur Katari Bhog Rice, Bangladeshi Kalijira Rice, Rangpur Shataranji, Rajshahi Silk, Dhaka Muslin, Rajshahi-Chapai Nawabganj Fazli Mango, Bangladeshi Bagda Shrimp, Bangladeshi Shital Pati, Bogura Doi, Sherpur Tulshimala Rice, Chapai Nawabganj Langra Mango, Chapai Nawabganj Ashwina Mango, Natore Kancha Golla, Bangladeshi Black Bengal Goat, Tangail Pora Bari Chomchom, Comilla Rasmalai, Kushtia Til-er Khaja, Tangail Saree, Narsingdi Sagar Banana, Gopalganj Rosogolla, Rangpur Haribhanga Mango, Moulvibazar Agar, Moulvibazar Agar Ator, Muktagacha Monda, Jashore Date Jaggery, Rajshahi Sweet Betel Leaf, and Jamalpur Nakshi Kantha.

Are GI Rights really protected in Bangladesh?

On February 1, 2024, the Government of West Bengal in India secured the Geographical Indication (GI) rights for the Tangail Saree, which originally comes from the Tangail region of Bangladesh. This announcement from India’s Ministry of Culture sparked strong reactions from Bangladeshis, who see the saree as a key part of their cultural heritage. The saree’s origins date back to the late 18th century when weavers from Dhaka moved to Tangail to develop new textiles. Although many weavers relocated to West Bengal after the partition of India in 1947, the saree’s roots remain in Bangladesh.

India’s GI claim on the Tangail Saree could lead to Bangladesh losing recognition, intellectual property rights, and profits tied to this traditional product. Bangladesh’s lack of awareness and legislation has already allowed India to secure the GI rights for about 66 items, including Nakshi Kantha, Fazli Mango, and Rashgolla. Cultural exchange and a complex history between the two nations have caused confusion over the origins of some products, further complicating the issue.

To protect its heritage, the Bangladeshi Government must quickly identify and register its GI products. Failure to act swiftly could lead to more of the country’s cultural assets being claimed by others. Immediate action is needed to safeguard Bangladesh’s intellectual property and cultural heritage.

CONCLUSION: 

The Geographical Indication (GI) rights issue surrounding products like the Tangail Saree underscores the urgent need for Bangladesh to bolster protections for its unique cultural assets. India’s recent claim to these rights exemplifies the risks of losing intellectual property and heritage due to insufficient legislative frameworks. Additionally, ongoing cultural exchanges between the two nations have blurred the lines of origin for various products, highlighting the necessity for proactive measures.

The GI Act, 2013 in Bangladesh offers national protection for traditional items and potential international recognition through registration in other countries. This legislation marks a critical first step in recognizing, commercializing, and managing Bangladeshi GIs and GI-denominated products, with many sections aligning with international agreements such as TRIPS, Paris, Lisbon, and Madrid. However, the current framework remains inadequate; stronger laws are essential for effectively safeguarding cultural traditions. By promptly identifying and registering its GI products, the Bangladeshi government can ensure that the benefits are retained by local producers. Protecting GI rights is crucial for preserving local identities and fostering economic growth, ultimately contributing to the country’s broader socio-economic development.

Bibliography:

1. https://www.wipo.int/geo_indications/en/
2. PARIS CONVENTION, 1883
3. MADRID AGREEMENT, 1891
4. LISBON AGREEMENT, 1958
5. Trade Related Aspects of Intellectual Property Rights, 1995
6. Geographical Indication of Goods (Registration and Protection) Act, 2013
7. https://www.thedailystar.net/opinion/views/news/bring-back-our-sarees-3535841
8. https://bdnews24.com/business/tbtam1q3xp

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