Is Prada in Trouble for Using Kolhapuri Chappals’ GI

A public interest litigation (PIL) has been filed against the global fashion brand, Prada, for allegedly copying the Geographical Indication (GI) of Kolhapuri Chappals. They supposedly commercialized the Indian GI during an international fashion week, “Prada Men Collection 2026”.

The PIL seeks an apology from Prada. It also requests that the Italian MNC provide monetary compensation to the craftsperson and collaborate with Kolhapuri chappal manufacturers if they wish to sell their products in the global market.

In this blog, we’ll cover the importance of GI for Indian products, the limitations of the Geographical Indication Act, of 1999, the steps to enforce GI rights against global companies, and Landmark Indian case laws.

Importance of Geographical Indications for Indian Brands

The importance of geographical indications (GI) for Indian brands:

• A registered GI prevents the authorised use of the products.
• A GI provides legal security to its brand owners, including the right to sue and monetary compensation.
• A geographical indication law secures the national, regional, and local culture and traditions.
• With a registered GI, the owner can protect the livelihood of people in the rural areas, namely, development and sustainability. 
• A product with geographical indication registration can help its holders to leverage the consumer market against the unregistered brands, acquiring a competitive advantage. Registration of geographical indication is of utmost importance.

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Limitations of the Indian Geographical Indication Law

From expensive legal process to lack of protection for aesthetic features, there are various limitations of the Geographical Indications of Goods (Registration and Protection) Act, 1999, as described below:

1. Absence of Global Protection

GI protection in India under the geographical protection law doesn’t necessarily grant enforceability in international jurisdictions. The act only provides territorial security within the country.

2. No Security for General Terms

The law excludes common and general names from GI registration, which causes significant obstacles for traditional manufacturers. The name must be distinct and unique.

3. No Place for Aesthetic Elements

The Geographical Indication Act, 1999 protects the physical aspects of products, which is the case in the Prada vs Kolhapuri Chappals case. Even though the Italian MNC’s alleged open-toe sandals bear a striking resemblance, there’s no strong evidence as of now that it revokes any provisions of the act.

4. India’s Non-Ratification of the Lisbon Agreement

India’s not a party to the Lisbon Agreement for the Protection of Appellations of Origin and Geographical Indications, unlike Italy, which makes it even more susceptible to such alleged infringements by large multinational companies like Prada.

5. Lack of IP Knowledge

The manufacturers and producers in the rural regions of India are unaware of Intellectual Property (IP) laws and rights, causing them to suffer economic losses.

6. Legal Enforcement

The IP enforcement can be expensive for small and medium-sized manufacturers. Foreign companies with huge funding can pose a challenge for GI registration.

How to Obtain GI Protection Against Foreign Companies?

Explore the key options as below-mentioned to obtain GI protection against foreign companies:

• Register with the Geographical Indications (GI) Registry:

The first step is to secure your geographical indication with the GI Registry. If you don’t have a GI in your home country, then you can’t get international protection.

• Filing in Other Countries

GI holders must separately seek protection in relevant individual countries, applying for GIs through their national IP offices.

• Bilateral Agreements

The geographical indication owners can benefit from bilateral or multilateral agreements. India currently has IPAs with 15+ countries, including the USA’s USPTO and the EU Intellectual Property Office.

• Explore other Intellectual Properties (IP)

If the country where you’re seeking protection doesn’t have GI, then you must go for other IPs, including security via certification or collection marks as per your product’s specifics.

• Post-Registration Compliance

All GI owners must establish a strong post-enforcement system that continuously monitors their geographical indications to detect early infringement.

• Get Familiar with the Lisbon Database

If you are interested in protecting your GI, then you should be well aware of the World Intellectual Property Organization’s Lisbon database. This system can help you search for international GIs with a click of your phone.

How Can India Strengthen IP Laws for Geographical Indications?

Discover the following ways, which can help India strengthen IP laws for Geographical Indications (IP):

Bilateral or Multinational Agreements

India must sign and ratify more bilateral and multilateral Intellectual Property Agreements (IPAs) and Free Trade Agreements (FTAs), which could help enforce rights in case of infringements. 

Amend the Current Legislation

The Indian government must amend the Geographical Indications of Goods (Registration and Protection) Act, 1999, to include the aesthetic value of products. The amendment must include provisions for the physical appearance, shape, or design of the products.

Integrate the Industrial Design Law with GI

The Indian lawmakers must form a system that allows GI owners to automatically register under the Design Law, 2000. Design registration is something that GI owners can’t avoid.

Ratify International Protocols

India is yet to sign or ratify the WIPO’s Lisbon Agreement, which provides global recognition to GI holders, including tangible and intangible elements.

Strong Legal Enforcement Against Copycats

The country must draft a framework that provides strong enforcement rights against infringers who violate the visual aspects of the GIs.

An International Landmark Case on GI Infringement

The India-USA Basmati Rice Dispute (RiceTec Inc.)

Facts of the case:

The United States Patent and Trademark Office (USPTO) 1997 granted several patent claims under the name “Basmati Rice Lines and Grains” to RiceTec Inc.  

India challenged the patent, arguing the US company had committed biopiracy.

After three years of lengthy legal battle between India and the US, the USPTO cancelled 15 out of 20 patent claims by RiceTec Inc., stating:

• There was a lack of originality in the rice traits, including shape, aroma, grain size, and texture. The same qualities were already found in the traditional Indian basmati rice.
• The hybrid grains were just modified versions of the already existing basmati rice.

The office allowed the claims with rice strains that were developed by RiceTec, excluding the ones that were associated with or developed via the traditional basmati rice. 

What is Next for Prada and Kolhapuri Artisans’ Association?

The Maharashtra Chamber of Commerce, Industry, & Agriculture (MACCIA) has sent a letter to Prada to find common ground and explore ways to promote India’s 800-year-old legacy through a peaceful partnership.

Through these partnerships, MACCIA aims to:

• Develop a limited-edition collection rooted in India;
• Ensure fair trade that supports rural development and sustainability;
• Provide training sessions for rural artisans;
• Establish a program to foster collaboration between Indian and Italian craftsmen.

Conclusion

As per the Geographical Indication of Goods (Registration and Protection) Act, 1999, only the names of products that are associated with a specific region are protected, not the logo or design. Prada didn’t specifically use the word “Kolhapuri Chappals” to market or sell their product.

Even though the multinational brand recognized the significance and influence of Indian artisanship, it is still not enough evidence, given that geographical indicators are territorial and aren’t automatically secured in global jurisdictions unless the owner specifically registers it in the relevant country.

The current Geographic Indication legislation doesn’t secure the physical aspects of the products, meaning Indian brands with cultural heritage significance remain at risk in the global market.

This case is a wake-up call for all such Indian artisans and craftsperson who economically suffer due to such legislative loopholes, which are often exploited by global brands.

While it is impossible to ignore the uncanny resemblance between the two sandals, it is up to the Hon’ble High Court of Bombay to decide whether or not it creates potential customer confusion.

It is therefore important to ascertain whether or not your product should be registered as a trademark, design, or GI.

Contact Corpbiz to get expert guidance in IP protection.

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