Conceptualising Geographical Indications for All Geographies: The Prada Kolhapuri Sandal Scandal and the Chinks in the Lisbon System’s Armour

Introduction

The nascent field of Fashion Law owes a sizeable proportion of its burgeoning body of scholarly writing and interest to its intersection with intellectual property law and related areas. More specifically, the issue of cultural appropriation wherein multinational fashion houses and brands incorporate designs and elements of traditional items of clothing or accessories associated with communities and cultures in third-world countries into their own lines or products without so much as an acknowledgement, let alone fair compensation or sharing of profits, has assumed front-row importance in contemporary fashion law-intellectual property discourse. It is this intersection which makes possible headlines wherein a small city in South-Western Maharashtra gets to share the limelight with the global fashion powerhouse of Milan in Italy, i.e. the Prada-Kolhapuri Sandal controversy which erupted in late June of this year. 

The gist of this cause célèbre of the fashion world is that in the Milan Fashion Week 2025 for the upcoming spring/summer collection, Prada displayed as part of its lineup an eye-catching leather sandal with a distinctive loop for the big toe and a T-strap to hold the foot and sandal in place. This is nothing but the ‘Kolhapuri-Chappals’ which are well-renowned in India as originating from the namesake city of Kolhapur in Maharashtra, and for being a versatile piece of footwear preferred by both the upper-class gentry who never have to step out of their air-conditioned offices and the working-class who toil in the blazing sun and hard soil. In fact, such is the sway of the reputation of the skill and dexterity of the traditional Kolhapuri artisans who have been manufacturing these sandals for centuries that these have been granted a Geographical Indication [‘GI’] Tag by the Government of India under its Geographical Indications of Goods (Registration and Protection) Act, 1999 [‘GI Act’] in 2009. 

In other words, the quality of these Kolhapuri Sandals as being manufactured in Kolhapur is considered the intellectual property of the Kolhapuri artisans who have always been making them. Since it is this perceived reputation and quality of the sandals which lend them their marketability and popularity with consumers, allowing anyone other than an actual Kolhapuri artisan to market or sell these sandals with the name of Kolhapur would be an act of misleading and deceiving consumers, as well as detraction from the hard-earned reputation of true Kolhapuri artisans. Such is the importance of having a GI Tag in India with respect to a particular product, and this is clarified by Sections 21 and 22 of the GI Act, which empower the organisation or association owning the GI Tag in question, or any producer who is authorised to use the same, to take legal action against the infringement of their GI Tag. Infringement, as defined under Section 22, can take many forms, but for the Kolhapuri Sandal controversy, Section 22(1)(b) is relevant, which talks about acts of unfair competition “contrary to honest practices in industrial or commercial matters.” Moreover, the explanation thereto clarifies that unfair competition includes acts liable to mislead the persons as to, inter alia, the nature, the manufacturing process, and the characteristics of the GI Tagged product. 

Inadequacies of the Extant Domestic and International GI Framework

It is quite clear that the present case satisfies the criteria for the infringement of a registered GI Tag under the GI Act. However, as this blog will bring out, there is a structural impediment in artisans and their associations protecting their intellectual property rights in traditional GI Tagged products when the violations occur beyond the borders of the country of origin, particularly when the infringers are in first world countries with robust legal systems and the victims are in third world countries with lackadaisical systems in place for protection and enforcement of intellectual property rights. Indeed, this aspect was ignored even by the Bombay High Court when the Kolhapuri Sandal Scandal was brought to its notice and dismissed on a procedural ground, with the court directing the registered proprietors to take action directly instead of a Public Interest Litigation suit. The lack of locus standi notwithstanding, the registered proprietors are deprived of any effective legal redress under the present GI Act, which is limited in its scope when it comes to extraterritorial protection. 

One might naturally suggest the seeming absurdity of extending a territorial intellectual property right granted by a national statute, territorial in its extent of application beyond the borders of the country of origin and point out that this is not a GI-specific problem, but all forms of Intellectual Property Rights, like Patents and Trademarks, are territorial in nature. Thus, someone desirous of having their intellectual property protected in other countries must necessarily have it registered under the law there also, or if the number of countries makes this option impractical, have recourse to the number of international treaties and conventions which confer worldwide Intellectual Property Rights protection, like the Madrid System for Trademarks and the Patent Cooperation Treaty [‘PCT’]. Since the vast majority of artisans claiming a GI over their traditional products are being exploited and challenged by global fashion houses which operate and market their products in various countries, the latter would naturally appear favourable to them.

At this juncture, an embattled craftsman or artisan will seek professional legal advice, which if even minimally competent, would automatically involve a cursory search of the World Intellectual Property Organisation’s [‘WIPO’] online database on various treaties, conventions, and services to register and protect intellectual property rights. Such a search will reveal that there is currently only a quasi-international system for the registration and protection of GIs beyond borders, the exact inadequacy of which will be dealt with later, and a couple of other alternatives which are also very limited in scope. For instance, WIPO suggests that some countries offer protection for GIs not registered under their law, provided they are registered in the country of origin. This is a very limited option insofar as this is seen only in multi-country unions for other countries within the union, like the European Union. Most third-world countries are not a part of unions of such a nature with first-world countries, where protection is sought. The suggestion of bilateral agreements, such as the one for the protection of Darjeeling Tea between India and the EU, is also limited, as these are only applicable to certain enumerated sectors, and moreover, it is impractical for a third-world country to conclude a bilateral agreement with every country where GIs originating in the former are sought to be protected.

Proposed Solutions

Thus, confronted with an impasse, this blog proposes two solutions to the current framework in place for the protection of GI rights. The first proposition is that countries could amend their respective GI legislations to have extra-territorial application, such that the law itself would undertake to protect the rights of registered GI holders even beyond the borders of the country. Such a system is already in place for criminal statutes in India like the Bharatiya Nyaya Sanhita, 2023, which applies even beyond the borders of India when Indian citizens commit crimes on foreign soil. Moreover, such a move can also be supported by a purposive interpretation of India and other countries’ treaty obligations under the 1994 TRIPS Agreement, to which almost every country in the world is a party. Article 22(2) of the said agreement mandates member states to enact laws which prevent use of GIs in ways which constitute unfair competition. Unfair competition is defined within the meaning assigned to it in the Paris Convention of 1967 as any “act of competition contrary to honest practices in industrial or commercial matters.” Furthermore, the particular acts prohibited as unfair competition also include acts which mislead the public regarding the nature or true origin of the goods, which as discussed above has also been adopted by India in its GI Act within the definition of infringement. 

The Paris Convention simply mandates members to assure to their nationals “effective protection” against acts of unfair competition, and it can be convincingly argued that protection can only be truly effective if it extends beyond the borders of the country. Similarly, the TRIPS Agreement mandates members to provide “legal means” for interested parties to “prevent” acts of unfair competition, and legal means should ideally include those which help in preventing even international violation of rights of interested parties. That being said, this proposal appears attractive and simple enough on paper, but is bound to run into practical difficulties when implemented. Enforcement of extraterritorial laws is mostly only seen in the criminal sphere, and is able to work based on the nexus of citizens and a network of extradition treaties. It is unlikely that countries will be able to elicit cooperation from other countries to prevent and compensate for acts of GI rights violation by the nationals of the latter. Furthermore, this enforcement impediment is further crystallised when it comes to the asymmetrical relationship between first world and third world countries. 

Therefore, the second proposition comes into play, which is simply the need for a new, comprehensive international agreement for a system of international registration and protection for GIs. This is because the existing system, i.e. the Lisbon System, is inadequate to provide a robust international framework for protection of GIs originating in third world countries, and additionally, all the other countries. Firstly, the Lisbon System allows members to refuse registration and protection of an international application for a GI on any grounds existing in the national/regional framework, which although is a feature present in other treaties like the Madrid Treaty and PCT, is much broader and open to misuse by countries. Coupled with the fact that only 73 countries are covered by the Lisbon System, in contrast to 158 states under the PCT and 131 under the Madrid System for Trademarks, the scope and effectiveness of an international GI under the Lisbon System is severely limited. On the other end of the spectrum, the Lisbon System is too rigid and strong for GIs which do somehow receive international registration but subsequently become generic and do not warrant exclusive protection anymore, thus promoting commercial protectionism and deterring fair competition in international trade. 

The proposed international agreement can be modelled after the existing domestic legislation, insofar as the GI will be registered by the association of producers in their name, and individual producers will get themselves registered as authorised users. However, when it comes to cross-border violations of GIs registered by domestic associations, the simple mechanism of the registered proprietors suing for infringement might not suffice, especially those from third-world countries who find themselves pitted against multinational corporations or national behemoths from first-world countries. This imbalance of bargaining power and legal standing can be remedied by fashioning ‘International Producer Cooperatives’ which have individual associations, being registered proprietors of GIs, as their members. These cooperatives can be formed on a regional basis, for example, one for South-East Asia, and can represent their members in legal disputes, with the added benefit of receiving support from all members in the cooperative and not simply the one whose GI has been infringed. Members would be incentivised to enter into such cooperatives simply because of the added security of representative, collective legal action as opposed to legal action taken by individual members, in the event of a cross-border GI infringement under the international agreement.

Conclusion

In conclusion, the extant framework for international GIs under the Lisbon System is a far cry from the success seen with Patents and Trademarks under the PCT and Madrid System, respectively. Therefore, in order to provide a bulwark against the so-called “modern-day fashion colonisation” of Indian and third world cultures, designs, and processes by global fashion houses based in first world countries, there is a strong need for countries in the global community to commence negotiations towards a better and more inclusive international agreement, as well as for producers to organise themselves into international cooperatives for their collective greater good. If timely action is not taken, the seemingly innocuous cultural misappropriation of sandals will metamorphose into more blatant infringements of culture and identity. 

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This winning entry is authored by Shiraz Ahmed Khan and Ananya Navin Dipali, third-year students at National Law University, Jodhpur. It is a part of the RSRR's Blog Series on 'Ideas in Motion: Contemporary Frontiers in Intellectual Property Law’, in collaboration with Ahlawat & Associates.