Traditional knowledge and geographical indications: Fighting back

The concept of traditional knowledge (TK) and geographical indications (GI) has been discussed at length at various national and international platforms and has, over a period of time, gained tremendous sensitivity. It is pertinent to focus on the evolution and the developing need to secure protection for rightful owners and users of TK and GI and steps taken by Indian Government here.

TK, or indigenous knowledge, is a long-standing tradition or culture of a particular region, community or class of people. They inherit this knowledge, innovation and teaching from their ancestors and pass it on from generation to generation, and often rely on it for their survival and identity. In developing and under-developed countries, the TK base in preparing medicines provides the only affordable means of treatment for underprivileged sections of society. TK of the healing properties of plant extracts has also been an important part of evolution in the invention of modern techniques of treatment and medicines.

Unfortunately, due to globalisation and the development of new technology, TK holders have witnessed exploitation through the unauthorised acquisition of their rights by third parties. Today, it is possible to create new products or discover a new use of existing products based on TK by utilising technological developments in the field of biotechnology, particularly in medicine and agriculture. Patents have been granted for TK-related inventions that did not fulfil the requirements of novelty and inventive step when compared with the relevant prior art. This has resulted in biopiracy, a term used to describe the misappropriation of knowledge and/or biological materials from traditional communities and that threatens not only the cultural survival of communities but also the very survival of TK. A system to protect TK, especially in developing and under-developed countries, must be created in which the focus should be to afford due recognition to the rights of TK holders and prevent unauthorised acquisition of TK by third parties. Concern has been raised to have TK recognised as prior art so that the same may be made available to the public as well as to the concerned authorities before filing any patent applications.

India is rich in TK of ways and means to treat diseases and such knowledge is scripted in ancient and classical literature in Sanskrit, which is generally not accessible to all. Lack of a proper protection system has seen widespread biopiracy leading to the lack of benefits being granted to holders of original TK and thereby to the loss of sustainable development. In the recent past, India has, through the cases of neem and haldi (turmeric), witnessed instances where patents in foreign countries were granted to inventions relating to Indian TK that were already in the public domain. However, due to the Indian Government's aggressive stand and establishment of TK as a prior art, such patents obtained by foreign countries were revoked.

Haldi (turmeric) is a tropical plant and perennial herb, which has been domestically cultivated in India since ancient times. As early as 3000 BC, turmeric plants were cultivated by Harappan civilisation. The preparation of turmeric powder has been one of the oldest TK bases in India and has been used in India for centuries as a wound healing agent.

The University of Mississippi Medical Centre, applied for and obtained a patent in March 1995 for the use of haldi as a wound healing agent. The Indian Council for Scientific and Industrial Research (CSIR) challenged this patent and asked USPTO for reexamination for complete cancellation of all six claims in the patent application on the grounds of existing prior art. CSIR argued that haldi has been used for thousands of years for healing wounds and rashes and therefore its medicinal use was not a novel invention. Their claim was supported by documentary evidence of TK, including ancient Sanskrit text and a paper published in 1953 in the Journal of Indian Medical Association. Based on this documentary evidence, all six claims in the US patent, as granted, were rejected by USPTO and the patent grant was revoked in the order dated August 13 1997 after ascertaining lack of novelty.

The haldi case was a landmark judgment as it is the first case where the use of TK from a third world country has been successfully challenged before the USPTO, leading to the complete cancellation of a patent. This case also demonstrated that CSIR and other Indian institutions are gaining capabilities in challenging complex technical-legal issues of IP under the WTO regime, which sends strong signals in favour of preventing biopiracy.

In 1994, the US-based corporation WR Grace was granted a patent for a "method for controlling fungi on plants by the aid of hydrophobic extracted neem oil". In 1995, the representatives of some international NGOs and Indian farmers filed an opposition against the patent contending that neem is a tree from India and other parts of South and South-East Asia and neem extracts had been used for several decades against hundreds of pests and fungal diseases that attack food crops; the oil extracted from its seeds is used to treat colds and flu and mixed in soaps, it offers relief from malaria and other skin diseases. Documentary evidence for this was also produced. In 1999, on the basis of the evidentiary documents produced, the EPO determined that all the features of the claims were already in the public domain before the patent application was filed and, therefore, the claim could not be considered to be novel. Accordingly, in 2000 the patent, as granted, was revoked.

Going by the hard rules of biopiracy, the Indian government realised that biopiracy was being committed primarily for the reason that TK in the formulation of medicines, which have been preserved in ancient literature in the Hindi and Sanskrit languages, have not been made accessible to the world. Therefore, documentation of this knowledge, which is already in the public domain, in various systems of medicine has become imperative to safeguard this existing knowledge and to protect it from being misappropriated in the form of patents being granted to others for innovations and claims which are not novel. It is with this vision that the Indian Government started the Traditional Knowledge Digital Library (TKDL) project in the year 2001, a collaborative project between the Council of Scientific and Industrial Research (CSIR), the Ministry of Science and Technology and the Department of AYUSH, the Ministry of Health and Family Welfare.

TKDL provides information on TK existing in the country and involves documenting TK available in the public domain in the form of existing literature related to Ayurveda, Unani, Siddha and Yoga, in digitised format in English, German, French, Japanese and Spanish. Traditional Knowledge Resource Classification (TKRC), an innovative structured classification system for the purpose of systematic arrangement, dissemination and retrieval has evolved for about 25,000 subgroups from a few subgroups that were available in an earlier version of the International Patent Classification (IPC), related to categories such as medicinal plants, minerals, animal resources, effects and diseases, methods of preparations, mode of administration (see the website www.tkdl.res.in for more details).

With the implementation of TKDL, the Indian government has taken a step forward in providing information on India's TK to patent offices across the world to ensure that unscrupulous inventors are not able to wrongfully acquire patents with claims based on the Indian traditional systems of medicines.

After access to TKDL was granted to international patent offices such as the USPTO, the EPO, the German Patent and Trademark Office, the Indian Patent Office, the United Kingdom IPO, the Canadian IP Office and IP Australia, there have been around 40 patent applications, initially filed in foreign countries, which have been withdrawn by the applicants, two orders have been passed setting aside decisions to grant patents or the cancellation of intent to grant a patent and four cases have been declared dead by the Canadian IP Office. Citation of TKDL references as prior art have led to significant strides towards the goal of preventing the misappropriation of Indian TK and preserving and protecting invaluable Indian heritage.

With the introduction of TKDL and the aggressive stand and initiative being taken by CSIR and other Indian Government agencies, there is a ray of hope that Indian TK is in safe hands and that it will be duly protected against all odds.

GI refers to an indication that identifies agricultural, natural or manufactured goods originating or manufactured in a territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristics of such goods is essentially attributable to its geographical origin. A name which is not geographical shall also be considered a GI if it has acquired geographical significance.

Until September 2003, GI protection in India was available through certification and collective trade marks. Darjeeling for tea and Champagne for wines from France have been registered as certification trade marks for example. India, as a member of WTO, enacted the Geographical Indication of Goods (Registration & Protection) Act, 1999 and Rules, 2002, with effect from September 15 2003.

Since enactment of a sui generis system of legislature facilitating right-holders to register their GIs, out of around 240 applications filed by various associations, societies and communities, more than 150 have been granted registration. Products, when sold and marketed subsequent to GI protection, are a major source of revenue for their producers and associations, and for the country as a whole.

Some of the GIs registered in India include: agricultural goods (darjeeling tea, kangra tea, and Coorg Orange); manufactured goods (Mysore Agarbathi incense sticks, Mysore Sandalwood oil, and Nashik Valley wine); handicraft goods(Banaras brocades and sarees, Kashmir pashminas and Blue Pottery of Jaipur).

The first GI to be registered in India under the certification trade mark regime was

Darjeeling tea, which is now a registered GI, being India's treasured GI, and forming an important part of Indian heritage and culture. Due to the unique and complex combination of agro-climatic conditions prevailing in the region comprising 87 gardens in the district of Darjeeling, tea produced in the region has a distinctive and naturally occurring organoleptic characteristics of taste, aroma and mouth feel, and has for a long time been known in trade and the public in India and abroad as Darjeeling Tea; as such it has acquired substantial domestic and international reputation.

The GI has been the subject of litigation. The defendant, ITC Limited, named a section of its luxurious ITC Sonar Hotel in Kolkata as the Darjeeling Lounge. The plaintiff, Tea Board of India, proprietor of the GI filed an infringement action against them.

The court, while dismissing the interim application in April 2011, inter alia, held that the focus of the GI Act is on goods and not on services and the defendant's use of Darjeeling was not in connection with goods. The defendant's Darjeeling lounge is a place where high-end customers and accompanying visitors may frequent, and even sip Darjeeling tea or any other beverage or drink, but there is scarcely any likelihood of deception or confusion. The name Darjeeling has been extensively used in trading and commercial circles for decades before the GI Act was enacted and continues to be widely used as a business name. The plaintiff's recent registration would not entitle it to enjoy the kind of exclusivity that it asserts.

Effectively, the court limited the scope of passing-off and infringement of GIs to cases confined to goods only, not any further to services. Though it may be too early to understand the repercussions this decision may have on future litigation relating to GIs, there will surely be complexities involved at this stage in taking steps forward to seek interim injunctions.

Prietika Siingh

Prietika has practised in India for more than 27 years. Before joining the legal profession, Prietika worked at Hindustan Unilever Ltd, which is India’s largest fast moving consumer goods company and a 51% owned subsidiary of Anglo-Dutch corporation Unilever. In 2007, she spent two years as a retainer for HUL and Reliance Hsez, two of the largest business houses. In 2007 she has became a senior associate at Inttl Advocare , Intellectual Property Attorneys, where she is now senior partner. With over 27 years’ experience, she now leads a large team of lawyers both in-house and externally and interacts with senior management to provide IP advice and strategies to businesses. Prietika has rich experience in handling IP prosecution and enforcement matters. She heads the prosecution team at Inttl Advocare and is a member of INTA, APAA and the Bar Council of Delhi and Delhi High Court Bar Association.

Dheeraj Seth

Dheeraj Seth is a Senior Associate at Inttl Advocare. With over 10 years of experience in trade marks, copyright and design prosecution, Dheeraj is actively engaged in prosecuting and contesting trade mark applications, oppositions, rectifications, assignments and licensing and is also responsible for international trade mark filings. Dheeraj also provides clients with advice and opinions on various complex IP issues, and has also been involved in criminal and civil enforcements involving infringing and counterfeit goods. He is a member of the Bar Council of Delhi.