Contents:
1) Part I: Background and Definition
2) Part II: Conditions, Procedure and Duration of Registration
3) Part III: Effect of Registration
4) Part IV: Offences, Penalty and Procedure for Seeking Relief
5) Websites
6) References
Part I: Background and Definition
Introduction
The Geographical Indications of Goods Registration and Protection Act, 1999, (the ‘Act’) which was recently enforced in India provides a statutory mechanism for registration and protection of Geographical Indications (GIs) for the first time in India. GIs as a form of intellectual property has now been subject matter of debate at international level, the basic reason being the value addition it gives to a product and therefore the importance of GIs as valuable commercial assets. The basic function of a GI is to protect the goodwill of a producer or a section of producers and imparting consumer information.
We all know products like ‘Bikaneri Bhujia’, ‘Alphonso Mango’, ‘Kolhapuri chappal’, ‘Darjeeling Tea’, ‘Champagne’, ‘Havana’, ‘Tequila’, ‘Scotch Whisky’, ‘Bordeaux’, ‘Burgogne’, ‘Irish Whisky’, ‘Porto’, ‘Cognac’, ‘Sherry’, ‘Camembert’, ‘Gouda’ and many others. Often we purchase these products simply for their qualitative properties attributing the same to their geographical origin. Not just today but from ancient times every region had its claim to fame for its products for example Arabia for horses, China for its silk, Dhaka for its muslin, Venice for glass, India for its spices and many others, painstakingly developed and handed over from one generation to the next for centuries. Gradually a specific link between the goods and the region/place evolves resulting in growth of what we term as today in legal sense (a part of the intellectual property laws bouquet) as “Geographical Indication’.
Intellectual properties are intangible assets that are developed over a period of time and involve considerable investment and GIs are no different and therefore laws national or international are harmonizing and tightening the protection regime. GIs as a form of intellectual property have been accorded protection in the now universally accepted Agreement on Trade – Related Aspects of Intellectual Property Rights popularly known as the TRIPS Agreement. Many countries like India, Singapore, Thailand, Trinidad, the European Union through its Council Regulations and others have enacted specific enactments to protect GIs.
Our discussion herein will basically revolve around the new Indian Act on the subject. We shall start with understanding the definition and concept of GIs touching in Part I, then look in to the procedure and duration of registration in Part II. In Part III we shall discuss the effects of registration of a GI and finally in Part IV discuss the remedies and reliefs as enumerated in the Act for infringement of GIs and any offences committed with respect to a GI.
Definition
According to Section 2(e) of the Act “geographical indication”, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.
Explanation: - For the purposes of this clause, any name which is not the name of a country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be;”
Therefore in general to qualify for protection an indication must:
- Identify the good and its area of geographical origin.
- Possess a given quality, reputation or other characteristics which
- Is essentially attributable to its area of geographic origin.
The definition as given in the Act is in consonance with the definition of GI as given in the TRIPS Agreement (Article 22(1)) and rather is more specific and exhaustive. The Indian definition explicitly extends the protection to GIs not only for agricultural products but also for manufactured goods. Though the use of GIs is predominantly with respect to agricultural products typically having qualities attributable to the specific geographical area, influenced by factors such as climate, soil etc. however, certain geographical locality or region may also highlight specific qualities of a product, due to human factors found in the place of origin of the products, such as specific manufacturing skills and tradition. Such a place of origin may be a village or town, a region or a country. For example ‘Switzerland’ or ‘Swiss’, which is often perceived as a GI for products like chocolate and watches made in Switzerland. Back home ‘Kolhapuri’ for a particular kind of ‘chappals’ made in Kolhapur district of Maharashtra, ‘Bikaneri’ for a specific kind of snack called Bhujia made in Bikaner district of Rajasthan, ‘Kanjeevaram’ for a specific kind of silk saris made in Kanjeepuram in South India can be such examples of manufactured goods. It should be understood that the function of a GI is that it points to a specific place or a region of production that determines the characteristic qualities of a product that originates form there. It is important that the product derives its qualities and reputation from that place. Since those qualities depend on the geographical place of production, a specific “link” exists between the products and their original place of production. In case of manufactured goods the link develops over a period of time. Though it is easy to imagine this concept of GI with respect to agricultural goods as the specific link can be easily seen, understood or perceived. For example ‘Darjeeling’ for tea known for its flavour and aroma grown in the Darjeeling area of Eastern India, ‘Basmati’ known for a kind of rice having long grain and sweet aroma grown in the sub Himalayan regions of India and Pakistan and many other examples of such GIs can be given.
Prior to specific provisions as to protection of GIs this form of collective goodwill was in many jurisdictions protected under the trademarks law namely by registration as ‘Certification Marks’, or ‘Collective Marks’. Even today countries like US, Australia and others, since they lack a specific legislation on this subject protects GIs through registration as ‘Certification or Collective Marks.’ A ‘Collective Mark’ as defined in the English Trade marks Act 1994, means “a mark that distinguishes the goods or services of members of the association which is the proprietor of the mark from those of other undertakings”. Therefore ‘Collective Marks’ are owned by associations whose members use them to identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects. While a ‘Certification Mark’ as defined in the English Trade Marks Act, 1994, means a “mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.” Therefore these marks are granted for compliance with definite standards, for example as to material or quality, but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards. ‘Woolmark’, the ‘Kite’ mark of the British Standards Institutes and the mark ‘Stilton’ for a particular variety of cheese produced in the area around the English village of Melton Mowbray are some of the very popular examples of this category of marks. The internationally accepted "ISO 9000" quality standard is also an example of such certification marks.
Though the phrase ‘Geographical Indications’ was for the first time used in the TRIPS and also given a broad interpretation, the concept however is very old and dates back to 14th century when a specific legislation was passed on ‘appellations of origin’ in relation to ‘Roquefort Cheese’ in France. In brief the concept of GIs essentially originated in Europe where it has been mainly related to agricultural products and foodstuffs, and eventually expanding to certain industrial products, for example, ‘Swiss watches’. Till TRIPS the terminology used was ‘indications of source’ and ‘appellations of origin’. Section 3 (Article 22 to 24) of the TRIPS Agreement contains provisions in relation to GIs and the section was essentially included due to powerful European influence while countries like USA, Australia, Canada, Japan and others were against its inclusion. (As one commentator has commented on the inclusion of Section 3 in the TRIPS Agreement that ultimately ‘important European movement to protect traditional foods from the galloping globalism that threatens the entire world of food and wine’ emerged triumphant in the fight to achieve a higher level of protection for geographical indications).
The Paris Convention for the Protection of Industrial Property, 1883 (hereinafter ‘Paris Convention’) was the first multilateral agreement, which provided protection for indications of source and appellations of origin. Article 1(2) lists the kinds of industrial property to be protected by the Convention and includes, among others, ‘indications of source’ and ‘appellations of origin’ and this means these properties would also benefit from the principle of national treatment pursuant to Article 2 of the Convention. Sanctions have also been prescribed for falsifying indications of source. However, the protection was considered rudimentary and weak and therefore countries entered in to the Madrid Agreement for the Repression of False or Deceptive indications of Source on Goods of 1891(hereinafter the ‘Madrid Agreement’), the 1958 Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration (hereinafter the ‘Lisbon Agreement’), and the bilateral agreements for the protection of GIs as concluded between the countries. It should be mentioned that all these agreements were entered within the broad ambit of the Paris Convention pursuant to Article 19.
The Madrid Agreement further obliges member countries to protect indications of source against false and misleading use and lays down that that such goods bearing false and misleading indications of use must be seized on importation by the contracting states.
The Lisbon Agreement was the first attempt to achieve effective and enforceable protection o GIs through an international registration system. Briefly for an appellation of origin to be protected, in accordance with the terms of this Agreement: (i) the appellation of origin should be protected in its country of origin, and (ii) the appellation of origin should be registered in the International Register of WIPO. However, the definition of appellation of origin as given in the Lisbon Agreement was narrow and limited registration of appellations with respect to agricultural goods and excluded industrial goods from the purview. Also the Agreement required that for an appellation of origin to be protected it should be first protected in its country of origin through a specific official Act (a legislative or administrative provision, or a judicial decision or a registration). However, till date only 19 counties have signed the agreement due to its narrow definition of appellation of origin basically designed to protect wines. Therefore countries entered in to bilateral agreements to achieve a higher level of protection, for example the European Union – Australia Wine Agreement, European Union- Mexico Agreement and the European Union - South Africa Agreement.
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The definition of GIs as in TRIPS Agreement is more comprehensive and includes industrial products. Apart from provisions as to special protection for wines and spirits, review, overlapping trade marks and others the Agreement pursuant to Article 24(9) clearly lays down that there is no obligation on any member country to protect a GI if the same is not or cease to be protected in the country of its origin or have fallen in disuse in its country of origin. Therefore given this provision in the TRIPS and the Basmati rice controversy in the US Patent and Trade Mark Office there was considerable pressure and lobbying in India to have an enactment to protect its GIs. Hence the Geographical Indications of Goods Registration and Protection Act, 1999, was enacted and now enforced. The Geographical Indications Registry exercising all India jurisdictions is currently operating form Chennai.
Before going in to the registration procedure it is pertinent to point at this stage the function of GIs, its difference with trademarks since both being overlapping subjects and its growing importance now.
Briefly, GIs essentially fulfills two main functions namely, protecting the goodwill of a producer or a section of producers and imparting consumer information. Often promotion of products having certain characteristics is of considerable benefit to the region or area where the products are manufactured and to the area where they are marketed. GIs protect producers of these regions or areas against unauthorized exploitation of the goodwill created by the quality of the products and the advertising appeal of the respective locality or region by competitors and their products. It should be pointed out that effective GI protection is very important to industries like that of wine making. In SMW Winzersekt GmbH v Land Rheinland – Pfalz [1995] 2 CMLR 718 the European Court of Justice dismissed the appeal of a German wine grower’s association challenging the validity of European Council Regulation that prohibited them from designating their sparkling wine as ‘Champagne’ or indicating that the wine was produced using the ‘Champagne Method’. The court in its opinion clearly indicated that GIs have a purpose beyond that of protecting the consumer against confusion about the origin of goods and that pertains to protection of the ‘goodwill investment’ of a region, which produces genuine goods against misappropriation by others who have not made the same investment in the goodwill. The court held that the words ‘Champagne’ or ‘Champagne Method’ has a value because of the investment of French sparkling wine producers in producing their product, and German wine producers cannot be allowed to have a free ride on this investment.
But then the question arises as to the difference of GIs from trademarks as both perform the function of identifying good; both are industrial property and perform overlapping functions. GIs act as source identifiers - In effect GIs act as source identifiers – they identify goods as originating in a particular territory, or a region or locality in that territory. Also they act as indicators of quality as they let consumers know that the goods come from an area where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographic origin. In addition GIs are business interests as they help to promote the goods of a particular area. While a trademark serves as a ‘badge of origin’, i.e. a sign or combinations of signs, such as words, numerals, figurative elements, etc., capable of distinguishing goods or services of one undertaking from those of others. Further, a single person legal or natural is entitled to use a trademark, the right being accorded in accordance to the principle of ‘first in time, first in right’ and the first user or first registrant will generally take precedence. While in case of a GI all producers belonging to the particular region or locality are entitled to use it. There is no precedence. Therefore the notion of trademarks implies individual production of goods while the notion of GIs implies collective production of goods coming from the same geographical region and having the same quality, reputation or characteristic attributable to its geographic origin. Trademarks are easier to protect internationally though it requires active role of the owner who acquires this right through registration with a competent domestic authority, while in case of GIs the state or an association of producers has to play a prominent role in its protection. Also a trademark is a personal property, which can be transferred by way of assignment, licensing or any other means, while a GI by its very nature cannot be subject matter of licensing or assignment. For example, the know-how for producing Champagne or Cognac may be, in principle, transferred to a person producing sparkling wine or brandy outside the region of Champagne or Cognac, but the right to label the licensed product as Champagne or Cognac cannot be transferred.
And lastly question as to the sudden realization of GIs as form of intellectual property too has to be answered satisfactorily. In the last quarter of the twentieth century international trade has grown tremendously thereby affecting intellectual property rights in all aspects. Nations, communities and individual manufacturers have realized that GIs, intended to designate product quality, highlight brand identity, and preserve cultural tradition, allows producers to obtain market recognition and often a premium price. For example French GI cheeses are sold at a premium of two euro, Italian ‘Toscano’ wine is sold at a premium of 20% since its registration as a GI in 1998. Further, the EU, the biggest producer of wines and spirits, annually exports wine to a total value of EUR0 250 billion and spirits to EUR0 660 billion (all based on 1997 as the reference year). French wines like ‘Bordeaux’ and ‘Burgundy’ are well known world over and off course Champagne that has become a symbol of victory and celebration. Therefore these huge stakes were the basic reason to force EC to enter in to bilateral agreement with Australia in 1994 to prevent it from using GIs such as ‘Burgundy’ or ‘Chablis.’ It is stated that in case of wines and in general GIs and the country where a product originates makes a big difference to sales. Australian wine industry thereafter devised their own regional names for wine like ‘coonawarra’ or ‘Barossa’ and stressed grape varieties like ‘Chardonnay’ and ‘Shiraz’ and built one of the most dynamic wine industry ready to outsell the French both in Britain and United States this year. As of date 85% of French wine exports use GIs and 80% of EU exported spirits use GIs. GIs are the lifeline for 138000 farms in France and 300000 Italian employees. Apart from wines and spirits GIs are also very important to the food products like cheese, tea, coffee, rice and many others. The recent ‘Basmati’ rice controversy in US, which would be referred to in detail in later parts of this paper, save for mentioning herein that at stake are exports worth $600 million from India and Pakistan, only further carried the debate on GI. Further the US - EU WTO dispute as to protection of GI involving issues of reciprocity and trademarks has drawn considerable attention.
Therefore given the stakes involved nations whether developed or developing are negotiating on further providing enhanced protection to GIs within the TRIPS and not just limiting it to wines and spirits.
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Websites
Part II: Conditions, Procedure and Duration of Registration
As mentioned earlier that unless a GI is protected in the country of its origin there is no obligation under the TRIPS Agreement for other member states to extend reciprocal protection and therefore to protect its GIs India enacted the Geographical Indications of Goods (Registration and Protection) Act, 1999 (hereinafter ‘the Act’). The Act provides a mechanism for registration of GIs and establishes a GI registry, a statutory body to give effect to the provisions of the Act. It should be also noted that prior to this Act, the producers of these kinds of goods were protected under the common law, the English precedents and under the trademarks law. Also the subject overlaps with trademarks and hence incase of any confusion or discrepancy the Trade and Merchandise Marks Act, 1958 and the newly enforced Trade Marks Act, 1999 should be looked in to.
Infrastructure
The Act is divided in to 9 chapters, containing 87 sections. Chapter I, the preliminary section gives a short title, the area of operation, date of commencement and definitions of expressions like Intellectual Property Appellate Board, authorized user, deceptive similarity, Geographical Indication, goods, indication, producers etc. Chapter II deals with Registrar and the conditions of Registration. Chapter III provides for registration of Homonymous GIs. Chapter IV deals with the procedure for registration, Chapter V deals with special provisions relating to trade marks and prior users, Chapter VI with rectification and correction of the register, Chapter VII with appeals and the appellate Board, Chapter VIII with offences and penalties and finally Chapter IX contains miscellaneous provisions like powers of central government to make rules and others.
Coming to Chapter II, pursuant to Section 3 of the Act the Controller General of Patents, Designs and Trademarks has been appointed the Registrar of GIs who will discharge his functions through his officers as appointed therein. At the moment the GIs Registry has been established in Chennai with all India jurisdiction. A Register of GIs will also be kept at the GI registry under the superintendence and control of the Registrar of GIs (Section 6) in which details of all registered GIs with names, addresses and descriptions of the proprietors, the names, addresses and descriptions of authorized users and such other details would be entered. This register is divided in to two parts namely, Part A in which details as to the registration of the GIs has to be entered and Part B will contain particulars as to the registration of authorized users (Section 7).
Like trademarks the Act pursuant to Section 8 registration of a GI shall be with respect to any or all of the goods comprised in such class of goods as may be classified by the Registrar and in respect of a definite territory of a country, or a region or locality in that territory of a country, or a region or a locality in that territory as the case maybe. This implies that the application for registration will have to indicate precisely the goods to which the GI shall apply. The goods are divided in to 34 classes and are mentioned in the Fourth Schedule to the Geographical Indications of Goods (Registration and Protection) Rules, 2002 (hereinafter ‘the Rules’). It should also be noted that if the goods for which registration has been applied for fall in more than 1 class and for which only one application fees has been paid, the applicant may have either to restrict the specification of goods included in one class or pay the appropriate additional class fee. The decision of the Registrar as to which class any goods fall in to shall be final. It should be further noted that like the classification of goods under the Trade Marks Act 1999, the classification as given under the Act in the Fourth Schedule, is based on the International Classification system established under the Nice Agreement of June 15th, 1957.
Registrability
For Registrability the GI must fall within the scope of the definition of the expression ‘Geographical Indication’. In addition such a GI should not fall within the purview of prohibitions as contained in Section 9 and they are: -
(a) the use of which would be likely to deceive or cause confusion; or
(b) the use of which would be contrary to any law for the time being in force; or
(c) which comprises or contains scandalous or obscene matter; or
(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
(e) which would otherwise be disentitled to protection in a court; or
(f) which are determined to generic names or indications of goods and are, therefore, not or ceases to be protected in their country of origin, or which have fallen in to disuse in that country; or
(g) which, although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be.
(a) the use of which would be likely to deceive or cause confusion; or
Deception or confusion need not be actual. It may be probable. As under trademarks law protection of public interest is the primary consideration before the Registrar. (As mentioned earlier since this branch of law is new and overlapping with the trademarks law reference shall be made of trademark cases wherever required.)
What the Registrar has to see is whether looking at the circumstances of the case a particular trademark (in our case GI) is likely to deceive or cause confusion (National Sewing Thread Company Ltd. V James Chadwick & Co. Ltd and others Air 1953 SC 357, pg 364). The court must be satisfied that there is a real tangible danger of confusion if the mark, which is sought to register, is put on the Register (William Bailley (Burmingham) Ltd.’s Application (1935) 52 RPC 136, pg. 153). However, the Registrar ought not to refuse to register a mark as calculated to deceive where there is no evidence, intrinsic or extrinsic, of a design to pass off goods as those of another man’s where the marks are distinct, and where registration would be permitted, but for the mere possibility o confusion by inexperienced people (Reddaway & Co. Ltd.’s Application (1925) 42 RPC 397, Pg. 401: Ch. 393.
Therefore in general the Registrar of GIs as the registrar of trademarks has to see each case on its own facts and circumstances with the overriding consideration being public interest.
(b) the use of which would be contrary to any law for the time being in force; or
The Trade Marks Act, 1999 prohibits registration of marks that are prohibited under the Emblems and Names (prevention of Improper Use) Act, 1950, the law relating to copyright and the common law tort of Passing –off. Similarly in case of GIs registration of such GIs is prohibited under these laws with the Trade Marks Act, 1999 in addition.
(c) which comprises or contains scandalous or obscene matter; or
The same is the law relating to trademarks. Whether a GI that has been applied for registration is scandalous or obscene has to be decided by the tribunal in the facts and circumstances of each case. The onus is on the applicant to show that the GI applied for registration is not scandalous or obscene.
(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
Again as in trademarks in case of GIs too each case has to be seen in its own peculiar facts and circumstances. Use of pictures of Gods, Goddesses and other religious heads as trademarks or GIs per se is not objectionable. However, some sign or word or particular usage may hurt the religious and moral susceptibilities and hence such trademark or GI falls under his prohibition.
For example the use of Hindu Gods in respect of beef or meat products or such use of Muslim Saints for pork products would offend the religious susceptibilities of the respective sections of public and therefore registration of such GIs would fall under the purview of Section 9 (d). Registration of the mark ‘HALLELUJAH’ in respect of articles of clothing for women was refused as offending against morality and religious susceptibilities of certain people (Hallelujah TM (1976) RPC 605).
(e) which would otherwise be disentitled to protection in a court; or
The established principle of law is that the protection is not to be extended “ to persons whose case is not founded in truth” (Eno v Dunn 7 RPC 311, pg. 318).
Apart from equity as mentioned earlier a trademark or GI will not be registered if it violates laws relating to copyright, tort of passing off, Emblems and names and other laws.
(f) which are determined to generic names or indications of goods and are, therefore, not or ceases to be protected in their country of origin, or which have fallen in to disuse in that country; or
The sub clause, i.e. Section 9 (f) has to be read in conjunction with Explanation 1 and 2 as given. According to Explanation 1 ‘generic names or indications’ means the name of a goods which, although relates to the place or the region where the goods was originally produced or manufactured, has lost its original meaning and has become the common name of such goods and serves as a designation for or indication of the kind, nature, type or other property or characteristic of the goods. In other words the name has ceased to be distinctive of a particular source and has become common to the trade. This provision corresponds to Article 24(9) of the TRIPS Agreement, which declares “there shall be no obligation under this agreement to protect GIs which are not or cease to be protected in their country of origin, or which have fallen in to disuse in that country”. Article 6 of the Lisbon Agreement clearly states that an appellation of origin will not be deemed to have become generic as long as the same is protected in its country of origin.
According to Explanation 2 which states that in determining whether the name has become generic, account shall be taken of all factors including the existing situation in the region o place in which the name originates and the area of consumption of the goods.
It need not be mentioned that the value of a GI diminishes if the product has no longer the exclusive meaning and its origin loses relevance. The GI no longer indicates to the market place the source of the product and instead it is considered the common general name of the product. Intellectual properties are valuable assets and owners make great efforts to prevent their trademarks and GIs from becoming generic. Example can be given of Basmati rice, which has become generic in USA and is a common term used for all long grain aromatic rice. The Indian government is fighting a legal battle to restore the same as a GI
(g) which, although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be,
Geographical indication, which falsely represents to the persons that the goods originate in a locality other than of its origin, though literally true as to the locality of origin, cannot be registered. Therefore this provision intends preventing deception and falsification of GIs. Falsity of representation, in absence of any fraud, does not depend upon the meaning which the maker intended or believed it to have or upon the construction which the court itself puts upon it, but upon the way in which it could be reasonably understood by the person to whom it is addressed. In Parker Knoll Ltd v. Knoll International Ltd. [1962] RPC 265, it was observed, “It is literally truthful for the appellants to say that their furniture is manufactured by Knoll International, but if that statement conveys to a member of the public that the furniture is manufactured by Parker –Knoll, it is a false representation”.
Further, Section 10 of the Act provides for registration of homonymous, i.e. similar GIs subject to the satisfaction of the Registrar. The Registrar after considering the practical conditions under which the homonymous indications will be differentiated form other such homonymous indication, the need to ensure equitable treatment of the producers of the goods concerned and after satisfying that the consumers of such goods will not be confused or misled should permit registration of such homonymous GIs. The onus is on the applicant to show that the consumers of such goods are not confused or misled due to registration of such homonymous GIs. This section is in consonance with Article 23(3) of the TRIPS Agreement, which permits each member to “to determine the practical conditions under which the homonymous indications in question will be differentiated from each other taking in to account the need to ensure equitable treatment of the producers concerned and that consumers are not misled”.
The example of homonymous indications are Rioja, - wines produced in Argentina and Spain and Basmati – rice produced form India and Pakistan.
Procedure for Registration
The procedure for registration of a GI is prescribed in Chapter III of the Act read with Chapter II of the Rules. Section 11 of the Act deals with application for registration, its contents, making and filing, acceptance or refusal. It should be noted that unlike an application for registration of a trade mark where an application may be made by any person, an application for registration of a GI pursuant to Section 11(1) can be made only by an “association of persons or producers or any organization or authority established by or under any law for the time being in force representing the interests of the producers of the concerned goods, who are desirous of registering a GI in relation to such goods”. Bodies like the Tea Board, Coffee Board, and the Spices Board are some such examples of such associations or organization.
Pursuant to Section 11(2) read with Rule 32 an application for registration of GI has to be filed on Form GI-1 in triplicate alongwith 5 representations of the said GI and the official fees prescribed in the First Schedule is Rs.5000/- only. The application should also contain a statement of case showing as to how the concerned GI serves to designate the goods as originating from the concerned territory of the country or region or locality in the country as the case may be, the class of goods to which it relates, the geographical map of the territory of the country or region or locality in the country in which the goods originate or are being manufactured, particulars of the producers of the goods and other related details. The rules further prescribes that the applicant has to file an affidavit alongwith the application clearly stating as to how the applicant claim to represent the interest of the producers, association of persons or producers or organization. Also the application should clearly state the standards benchmark for the use of GI or the industry standard as regards production, exploitation, making or manufacture of the goods having specific quality, reputation or other characteristic of such goods that is essentially attributable to its geographical origin, the particular human skill involved, the uniqueness of the geographical environment or other inherent characteristics associated with the GI to which the application relates, of course the name and address of the applicants and all other related details.
It should be noted that a single application can be made with respect to different classes of goods though the applicants have to pay fees with respect to each such class. The application can be filed in the office of GI registry within whose territorial jurisdiction the place mentioned in the address of service in India as disclosed in the application is situated. As mentioned above that so far the GI Registry has been established in Chennai with all India jurisdiction.
On receipt of the application the Registration shall cause the application to be examined as to whether the said application meets the requirements of the law. For purposes of examination the Registrar under his chairmanship constitute a consultative group of not more than seven persons well versed in that particular field. Thereafter the Registrar will communicate his objections to the applicant who within a stipulated time has to meet these objections and if necessary request for hearing for satisfying the Registrar as to the merits of the application. Incase no response is received to the objections or the applicant fails to attend hearing the application will be dismissed. Thereafter the Registrar may propose to accept the application subject to conditions, amendments, modifications, or any other limitations as he deems fit and direct the same to be advertised in the GI Journal (Gazette Publication).
As seen in trademarks section the procedure of registration of a GI is similar to that of a trademark. After the GI proposed to be registered has been advertised any person within three months and within a further period not exceeding one month give his or her opposition in writing to the Registrar, of opposition to the said registration pursuant to section 14 of the Act. Thereafter the procedure is similar as followed in case of registration of the trademarks. The Registrar shall cause the Notice of Opposition to be served on the Applicant and within a stipulated time the Applicant has to file his counter statement to this Notice. Thereafter within a certain time frame as enumerated in the Act the parties have to file their evidences and after that the Registrar shall hear the parties if required. The Registrar then on basis of these documents and hearings take a decision as to whether the registration is to be permitted or not and if yes than subject to what conditions or limitations. The application, if accepted, than proceed to registration and a Registration Certificate will be issued pursuant to section 16 of the Act.
Registration of ‘Authorised User’
As mentioned previously the Act make provisions for two parts namely Part A and Part B in the GI Register. Registration details of ‘Authorized Users’ have to be recorded in Part B of the Register. The Act defines Authorised User in Section 2(1) (a) as a person who is the authorised user of a GI registered under section 17 of the Act. Section 17 states that any person who claims to be the producer of goods in respect of which a GI has been registered under section 6, may apply in writing to the Registrar for registering him as an authorized user of such a GI. The registration procedure of an ‘Authorized User’ is broadly similar to the procedure for registration of a GI as discussed above. The application should be on Form GI-3 alongwith prescribed fees and has to be accompanied by the following documents, namely:
1. Statement of case of how the applicant claims to be the producer of the registered GI alongwith an affidavit which should include inter alia since when he has been a producer, the turnover, the extent of cultivation of agriculture land where applicable, the volume of processing, packaging, exploitation, production or manufacture of the gods, as the case may be, the extent of export, the regulation governing cultivation or the accepted method of cultivation, production, exploitation, manufacture or the making of the goods may also be relevant.
2. The applicant should also furnish any copy of agreement between the registered proprietor and the proposed authorised user or a copy of the letter of consent from the registered proprietor of the GI. (Where such consent letter is not appended then a copy of the application has to be endorsed to the registered proprietor for information and the applicant has to intimate the Registrar as to service of the application on the proprietor of the registered GI.
Section 17(3) makes it clear that the provisions of Chapter III of the Act relating to-
(a) the filing and examination of the application;
(b) the refusal and acceptance of registration;
(c) withdrawal of acceptance of application;
(d) advertisement of application;
(e) opposition to registration;
(f) correction or error in an amendment of the application and;
(g) registration
shall apply in respect of the application and registration of authorised users in the same manner as they apply for the application for registration of the GI.
Duration
Section 18(1) of the Act provides that registration of a GI shall remain valid for a period of 10 years, which may be renewed from time to time. Pursuant to Section 18(2) registration of authorized user too shall valid for 10 years or for the period till the date on which the registration of the GI in respect of which the authorised user is registered expires, whichever is earlier. Therefore registration of the authorised user depends on the registration of the GI and is co-terminus with the same.
An application for renewal of registration of a GI or an authorized user of a GI the application has to be made in the prescribed manner alongwith the prescribed fees i.e. on Form GI-3 or Form GI-4 as the case may be and may be made at any time not more than six months before the expiration of the last registration. The renewal shall be for a further period of ten years. The person who is proprietor of the registered GI failing which by any of the authorised users on record as the case may be must file such an application for renewal. (Section 18(3) Rule 60 (1) & (2)). In case no request on Form GI-3 or Form GI-4 is received within 3 months of the date of expiration then the Registrar shall issue a notice to the registered proprietor or the authorised user as the case may be about the date of the registration and the conditions upon which the renewal of the registration must be obtained. If no such request for renewal is obtained from the registered proprietor or the authorised user the registrar shall remove the registration or the name of the authorised user from the register provided that the Registrar shall not take recourse to such a drastic action if such an application alongwith the surcharge for renewal is received within six months from the expiration date. Similarly even on expiry of this grace period of six months and within one year from the date of expiration the Registrar on receipt of an application for renewal alongwith prescribed fees and subject to his satisfaction may renew the same. Every restoration or renewal of a GI will be advertised in the journal.
Section 19 of the Act highlights the effects of removal form the register of a GI due to non-payment of renewal fees. Where the GI has been removed from the register for failure to pay the prescribed renewal fee, it shall nevertheless, for the purpose of any application for the registration of another GI during one year after the date of removal be deemed to be a GI already on the register. Therefore for the purposes of Section 9(a) it will continue to be conflicting registration for any new application for registration of any identical or similar GI. However, there are exceptions to this general rule when the Registrar is satisfied either
(a) that there has been no bonafide use of the GI which has been removed within the two years immediately preceding its removal, or
(b) that no deception or confusion would be likely to arise from the use of the GI which is the subject of the application for registration of any previous use of the GI which has been removed.
It should be mentioned that the Registrar’s satisfaction would be based on evidence brought before him by an applicant whose registration is blocked by the registration, which has been removed from the register.
Links
Part III: Effect of Registration
Chapter IV (Sections 20 to 24) of the Act deals with the effect of registration of GIs. Before going in to effects of registration it should be noted that unlike a trademark a GI cannot be assigned, transmitted, licensed, pledged mortgaged or transferred in any manner. The reason being is that it is a collective goodwill over which a group of producers or an association or an organization of such producers or any authority has proprietary rights and not just one single individual. Pursuant to Section 11 a GI is registered in name of such association or organization and therefore having regard to such communality of interests the Act vide section 24 expressly forbids and disables the registered proprietor to assign, transmit, license, pledge, mortgage or do any such act to alienate the right in the common property. However, the proviso to Section 24 makes it clear that on the death of an authorised user his right in a registered GI shall devolve on his successor in title under the time being in force, so that he could be brought on record as the subsequent user in respect of the GI.
In the case of an unregistered GI section 20(1) clearly states that no person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered GI. Subsection (2) however clearly states that nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. In other words, while no infringement action will lay in respect of an unregistered GI, the common law rights of the owner of the collective goodwill to take civil and criminal action against any person for passing off goods of another person or the remedies thereof.
Passing Off
The expression ‘passing off’ has not been defined in the Act or in the Trade Marks Act, 1999 though it has been used at various places. As propounded by James L.J. in Singer Manufacturing Co. v Loog (1880) 18 Ch. D.395, p 412 an action for passing off is based on common law of tort and is founded on the principle that “ no man is entitled to represent his goods as being the goods of another man; and no man is permitted to use any mark, sign or symbol, device or means, whereby without making a direct representation himself to a purchaser who purchases from him, he enables such a purchaser to tell a lie or to make a false representation to somebody else who is the ultimate purchaser”. In Kerly’s law of trademarks and trade names it is stated, “the law of passing off can be summarized in one short general proposition – no man may pass off his goods as those of another. More specifically it may be expressed in terms of the elements, which the plaintiff in such action has to prove in order to succeed. These are 3 in number:
Firstly, he must establish a goodwill or reputation attached to the goods or services which he supplies, in the mind of the purchasing public by association with the identifying get – up (whether it consists of a brand name or a trade description, or the individual features of labeling or packaging) under which his particular goods or services are offered to the public, such that the get up is recognized by the public as distinctive specifically of the plaintiff’s goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether intentional or not) leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the plaintiff. And thirdly he must demonstrate that he suffers or in quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or service is the same as the source of those offered by the plaintiff.”
It should be mentioned that the subjects trademarks and GIs are overlapping and therefore principles laid down in a passing off action based on a right in a trademark would be equally applicable in protecting an action based on a right in a GI and therefore as above we often refer to principles as enunciated in the trademarks law. In Baltimore v Moses 59 US PQ 409 Para. 16.02 it was observed that the law in respect of trademarks and GIs both in letter and spirit is laid upon the premise that while it encourages fair trade in every way and aims to foster and not to hamper competition, no one especially a trader, is justified in damaging or jeopardizing another’s business by fraud, deceit, trickery or unfair method s of any sort. This necessarily precludes the trading by one dealer upon the good name and reputation built up by another.
Passing off versus Infringement
Before going further it is pertinent to outline the conceptual difference between passing off and infringement. As discussed earlier passing off action is based on well-established common law principle that no one has any right to represent his goods as somebody else’s, while an action for infringements is based on the right acquired by the registration under the statute. An action for infringement is statutory right. In Durga Dutt v/s Navratna Pharmaceuticals Laboratory AIR 1965 SC 980, Pg 990, the Supreme Court has observed as follows “ while an action of passing off is an common law remedy being in substance an action for deceit, that is passing off by a person of his own goods as goods of another, that is not the gist of an action for infringement. The action for infringement is statutory remedy conferred on the registered proprietor of a registered Trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. The use by the defendant of the trade mark of the Plaintiff is not essential in action for passing off but is that Sine qua non in the case of an action for infringement”. Since as discussed earlier the subjects of GI and Trade Marks are overlapping the same observation would apply in an action for passing off or infringement in case of GIs.
Coming back to the Act Section 21 outlines the rights conferred by registration of the GI. Subclause (1) (b) states that a GI once registered and if valid gives both the registered proprietor and all the authorized users thereof exclusive right to the use of the GI in relation to the goods in respect to which it is registered. Subclause (1) (a) lays down that the registered proprietor of the GI and the authorised user or users thereof can initiate an action for infringement in respect of the GI in the manner provided by in this Act. However, it should note that the rights are subject to other provision of the Act. Further pursuant to sub clause (3) when two or more authorized users are registered for identical or nearly resembling GI, the exclusive right to the use of GI does not operate against each other.
It should be mentioned that the words “if valid” circumscribe the rights of the proprietor. Section 23 clearly states that in all legal proceedings related to GI the certificate of registration shall be the prima facie evidence of the validity thereof and be admissible in all courts and before the Appellate court without proof or production of the original. Therefore the words “ if valid” imply the fact of registration of a GI and existing on the register.
Section 22 outlines the circumstances when a registered GI is infringed. Subclause (1) (a) states that a registered GI is infringed by a person who not being an authorised person user uses such indication on the goods or suggests that such goods originate in some other geographical area other than the true place of origin of the goods which misleads the public. This clause is in consonance with Article 22(2)(a) of the TRIPS Agreement, which lays an obligation on members to provide legal means to prevent persons to use GIs that are false and misleading as to the true place of origin of the goods with respect to which they are used.
Subclause (1)(b) states that a GI is also infringed when a person who is not an authorised user thereof uses the GI in such manner which constitutes an act of unfair competition including passing off in respect of registered GI. Explanation I as contained in this section defines “act of unfair competition’ as any act of competition contrary to honest practices in industrial or commercial matters. Further, Explanation II lists certain acts which can be termed as acts of unfair competition, namely:- all acts which are calculated to create confusion with the establishment, the goods or the industrial or commercial activities of a competitor, false allegations in the course of trade of such a nature so as to discredit the establishment, the goods or the industrial or the commercial activities of a competitor, the use of GIs with respect to goods in the course of trade in such a manner so as to mislead the public as to their nature, their manufacturing process, characteristics, suitability of their purpose or their quantity. This provision is designed to give effect to Article 22 (1) (b) of the TRIPS Agreement, which states that members should provide legal means for interested parties to prevent any use of an GI which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (The acts of unfair competition as listed in the Act are similar to ones as listed Article 10bis in the Paris Convention).
Further, pursuant to subclause (1) (c) a GI is also infringed by a person, who not being the registered proprietor or an authorized user uses another GI to the goods which although literally true as to the territory, region, or locality in which the good originate, falsely represent to the public that the goods originate in the region, territory or a locality in respect of which such registered GI relates. This provision is designed to give effect to Article 22 (4) of the TRIPS Agreement which mandates that the legal provisions for the protection of GIs will also apply in case of a GI which although literally true as to the territory, region it locality in which the goods originate, falsely represents to the public that the goods originate in another territory.
Article 23 of the TRIPS Agreement obliges members to provide the legal means to prevent the use of GIs identifying wines or spirits not originating in the place indicated by the GI in question even when the true origin of the wines and spirits concerned is indicated or the GI is used in translation or is accompanied by expressions such as “kind”, “type”, “style”, “imitation”, or the like. Thus ‘Champagne style sparkling wine, Made in the USA’ would be prohibited even though this is clearly not deceptive (We can also refer to the European Court’s decision in SMW Winzersekt GmbH v Land Rheinland – Pfalz [1995] 2 CMLR 718, as discussed in preceding part). In short Article 23 outlines additional and enhanced protection for wines and sprits. This provision shows the strong European influence during negotiations of the Agreement though as of today it has become a highly controversial issue as developing countries like India are lobbying for enhanced protection for other products as well. Section 22 (2) empowers the Central Government, if it thinks necessary, may notify in the Official Gazette the goods or class of goods to which such kind of additional protection may be extended. Pursuant to subsection (3) such additional protection as outlined in Article 23 of the TRIPS Agreement extends to goods as notified.
Finally Section 22 (4) enacts by way of an exception that where the goods in respect of which a GI has been registered are lawfully acquired by a person other than the authorised user of such GI, further dealings in those goods by such person including processing or packaging, shall not constitute an infringement, unless the condition of the goods are impaired after they have been put in the market.
Therefore in short the Indian GI Act outlines a comprehensive protection mechanism to prevent infringement both of registered and unregistered GIs in consonance with the TRIPS Agreement and in addition empowers the Central Government to notify goods for which additional or higher level of protection can be given apart from wines and spirits, which it is obliged to give.
Important links:
Part IV: Offences, Penalty and Procedure for Seeking Relief
As discussed in the preceding part that although the registered proprietor of a GI cannot alienate the GI by way of assignment, mortgage, licensing or any other means, the proprietor and the authorised user can certainly institute a suit for infringement to protect the collective goodwill and in case of unregistered GI a suit for passing off. The Act like the Trade Marks Act, 1999 and the Copyright Act, 1957 contains specific provisions as to the place, procedure and also the relief that can be craved form the courts in such a suit for infringement and passing off. The Act also provides for criminal prosecution of persons who indulge in falsification of GIs. Firstly, we shall discuss the remedy of suits and passing off and thereafter discuss the provisions as to criminal prosecution with a reference to rectification proceedings when required.
Suit for infringement and passing off
A suit for infringement or relating to any other right in a registered GI pursuant to Section 66 of the Act is to be instituted before a court not inferior to a District Court. Similarly a passing off action too has to be initiated before the District Court. Subsection (2) clearly states that the ‘District Court having jurisdiction’ shall mean a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceedings, the person instituting the suit or proceeding, i.e. the plaintiff voluntarily resides or works for gain. This is in contrast to Section 20 of the Civil Procedure Code, 1908 (CPC) which lays down that a suit shall be instituted in a Court within the local limits of whose jurisdiction the defendant at the time of the commencement of the suit actually or voluntarily resides or works for gain. Therefore this jurisdictional clause is a departure form the normal law as contained in the CPC and is based on Section 62 of the Copyright Act, 1957 and section 134 of the Trade Marks Act, 1999. With this clear provision the combination of the three causes of action, viz infringement of GI, passing off and copyright infringement has now become easy. It should also be noted that the jurisdiction for filing a suit for infringement or passing off is not based on or linked with the operative jurisdiction of the GI Registry whether head office or branch office as held in P.M. Diesels Ltd v Patel Field Marshal Industries (1998) PTC 260 Del (DB). Also the place where the cause of action arose will determine the jurisdiction of the court. This implies that the Court in a district where spurious goods were sent for sale on a commercial scale has jurisdiction to entertain the suit.
The period of limitation for filing a suit for infringement and passing off is three years from the date of the impugned act under the Limitation Act, 1963. However, the Supreme Court in Bengal Waterproof v Bombay Waterproof AIR 1997 SC 1398 held that as an act of passing off is an act of deceit and tort and every time when such tortuous act or deceit is committed by the defendant the plaintiff gets a fresh cause of action to come to the Court by appropriate proceedings. Similarly infringement of a registered trademark would also be a continuing wrong so long as the infringement continues. Therefore, whether the earlier infringement has continued or a new infringement has taken place cause of action for filing a fresh suit would obviously arise in favour of the plaintiff who is aggrieved by such infringements of trademark or passing off actions alleged against the defendant.
Section 67 outlines the relief, which a Court may give to the plaintiff in such a suit for infringement and passing off. Such relief may include an order for injunction (subject to such terms which the court may think is fit in the facts and circumstances of the case) and at the option of the plaintiff either damages or accounts of profits, together with or without any order for the delivery – up of the infringing labels and indications for destruction or erasure. Subclause (2) clearly states that the order for injunction may be made ex parte and may include interlocutory orders on the following matters namely: -
(a) for discovery of documents;
(b) preserving of infringing goods, documents or other evidence which are related to the subject matter of the suit;
(c) restraining the defendant from disposing of or dealing with his assets in a manner, which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
Clearly no distinction is made as to kind of relief granted in a suit for infringement or a passing off. Also it is pertinent to note that the explicit provision as to the exparte relief are in nature of Anton Pillar Orders or Mareva Injunction as granted in U.K and other common law countries.
Subsection (3)(a) lists the defences, which the defendant may plead to avoid paying damages (other than nominal damages) or an account of profits in a suit for infringement and they are: -
Where the defendant satisfies the Court-
(i) that at the time he commenced to use the GI complained of in the suit he was unaware and had no reasonable ground for believing that the GI of the plaintiff was on the register; and
(ii) that when he became aware of the existence and nature of the plaintiff’s right in the GI, he forthwith ceased to use the GI in relation to good in respect of which it was registered.
Similarly as per subclause (b) such defence can be pleaded in a suit for passing off.
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21) WIPO Intellectual Property Handbook: Policy, Law and Use, 2001 WIPO Publication no. 489(E).
* Please note that all articles in the blog extracted from Indian Law Institute publications for your reference and reading. We have no purpose to commercialize in our name.
