geographical
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This article has been written by Nehal Wagle.

A geographical indication (GI) is a sign that is used in relation to products or goods that possess specific qualities, characteristics or reputation, that is attributable to place of its geographical origin. Since the nature of the underlying product is dependent on the location of production, there is a strong correlation between the product and its geographical place of origin.

The general standards of protection for Geographical Indication can be traced down to the Paris Convention for protection of Industrial Property,1883, which includes in its wide connotation, protection to- patents, trademarks, industrial designs, utility models, trade names and service mark, in addition to geographical indications. These were followed by the Madrid Agreement for repression of False or Deceptive Indications of Source of Goods 1891.

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This was followed by treaties and conventions which focussed on the registration process for geographical indications. The Madrid Agreement concerning the International Registration of Marks signed in 1891, the Lisbon Agreement for the Protection of Appellations of Origins and their International Registration, 1958 and the Protocol Relating to the Madrid Agreement Concerning the international registration of marks, which came into being in 1989 have played important role in the development of a framework for the process of international registration of marks.

However, the seeds for the development of laws on Geographical Indications in India were sown through the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement which came into force on 1st January 1995. This agreement is considered to be the most comprehensive document on Intellectual Property Rights. Post coming into force of the TRIPS agreement the Parliament of India enacted the Geographical Indication of Goods (Registration and Protection) Act, 1999. This Act aimed at providing for the registration and better protection of geographical Indications of goods.

According to section 2 (e) of the Geographical Indications of Goods (Registration and Protection) Act,1999, 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 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 and in case where such goods one of the activities of either the production or of processing or preparation of goods concerned takes place in such territory, region or locality as the case may be”

India has registered over 361 geographical Indications till date. The first GI to be registered was for Darjeeling Tea in the state of West Bengal, which was registered in the year 2004. Handicrafts make up the largest type of goods which have been registered as GIs, followed by Agricultural products.

Let us now dive into the procedure and manner in which the Geographical Indication for a place in India can be registered as per provisions enlisted under the Geographical Indications of Goods (Registration and Protection) Act,1999:

Who can file for Geographical Indications?

Section 11(1)

An application for registration of the Geographical Indication can be made by an association of persons or producers or any organisations or authority established by or under any law for time being in force; who must be representing the interest of the producers of the concerned goods; and desirous of registering a geographical indication in relation to such goods.”

Authorised User

An authorised user is a person who has been registered as such under Section 17 of the Geographical Indications of Goods (Registration and Protection) Act,1999 act. A producer of the goods in respect of which geographical indication has been registered is eligible to register himself as an authorised user.

In order to register oneself as an authorised user, the producer needs to provide a statement and other documents of facts which would allow the registrar to ascertain the veracity of their claims. The registration of an authorised user is valid for 10 years, or till the date on which the registration of the related geographical indication expires.

Steps applicable for registration as authorised user are-

  1. Filing of an application
  2. Preliminary Scrutiny and exam
  3. Issue of Show cause notice
  4. Advertisement
  5. Opposition for registration
  6. Registration

Prohibition on registration of certain Geographical Indications (Section 9)

There are certain Geographical Indications, the registration of which is prohibited by law. These include such indications:

  • The use of which is likely to deceive or cause confusion
  • The use of which is contrary to the law for time being in force
  • Which comprises of or contains any scandalous or obscene matter
  • Which comprises or contains any matter that is likely to hurt the religious sentiments of any class or section of people
  • Which would be disentitled to protection of law
  • Which are determined to be the generic names or indications of goods and therefore ceased or not protected in the country of origin
  • Which, although literary true as to the territory, region or the locality in which the goods have originated, but falsely represent that the goods originate in a different territory or locality or region of a country

Explanation 1 of the captioned section elucidates the meaning of  “generic names of indications” to be in relation to goods which although relates to the place of 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 an indication of the kind, nature, type of other property or characteristic of the goods.

Explanation 2 of the same section further clarifies that “in determining whether the name has become generic, account shall be taken of all factors including the existing situation in the region or place in which the name originates and the area of consumption of the goods.”

Step by step procedure for registration of Geographical Indication

Step 1-Filing of the Application

  • The application for the registration of Geographical Indication shall be made in triplicate.
  • The application then must be signed by the applicant or his agent along with the statement of case and has to be submitted along with the prescribed form GI-1
  • A single application can be filed for different classes of goods and fees payable shall be in respect of each of such class of goods.
  • An affidavit is required to accompanying the forms has to be submitted by the association of persons, producers, organisations or authority representing the interest of the producers over certain goods and how the applicant claims to represent their interest

What should be the contents of the application?

Section 11 (2)

  • Firstly, it should state how the geographical indication serves to designate the goods as originating from the concerned territory of the country or region or localities as the case may be, in respect to quality specifications, reputation, characteristics which are exclusively due to certain environmental conditions with inherit natural or human factors relating to the territory.
  • It should also state the class of goods to which the geographical Indication shall apply
  • The geographical map of the territory of the country or region or the locality of the country in which the goods are produced or manufactured should be included.
  • Particulars regarding the appearance of the geographical indications as to whether it is comprised of words or figurative elements or both.
  • Statement containing the details of the applicant including the names, addresses and other such details as may be specified from time to time

Forms for registration of GI are available on the website of Geographical Indications Registry (http://www.ipindia.nic.in/forms-gi.htm)

Step 2 and 3 – Preliminary Scrutiny and Examination

Section 11 (5) to (7)

  • The application will be scrutinized by the examiner for any deficiencies and discrepancies.
  • In case of any deficiencies and discrepancies, the applicant is required to rectify the same with a period one month of its communication.
  • The correctness and authenticity of the content of statement furnished by the applicant shall then be assessed by the Registrar in consultation with a group of experts consisting of not more than 7 representatives who are well versed on the subject.
  • Only after proper scrutiny and examination that the examination report will be issued

Step 4 – Issue of Show Cause Notice

(Section 12)

  • If the Registrar has any objection with regards to the application then the same shall be communicated to the applicant.
  • The applicant must respond within a period of two months from the receiving of the notice or he can apply for hearing
  • The Registrar has been entrusted with the power to withdraw the application after giving the applicant a reasonable opportunity of being heard, if he is of opinion that there has been an error on the part of the applicant and the same has been conveyed to him
  • If aggrieved, an appeal can be made within period of one month of the Registrar’s decision.

Step 5: Advertisement

(Section 13)

  • Every application for registration of geographical indication that has been accepted absolutely or with subject to conditions or limitations shall within three months of acceptance shall be published in the Geographical Indications Journal.

Step 6: Opposition to Registration

Section 14

  • Any person can file a notice of opposition within three months (extendable by another month on request which has to be filed before three months) opposing the Geographical Indication application published in the Journal in triplicate along with the form GI-2
  • The registrar shall serve a copy of the notice on the applicant for registration and the applicant shall within period of two months from the date of the receipt of such notice send to the Registrar the copy of the counter statement stating the grounds on which he relies on his application, failure to do so will result in abandonment of his application.
  • On receiving the counter statement from the applicant, the Registrar shall serve a copy of the of the same to the person giving the notice of opposition.
  • The applicant and the opponent have to submit to the registrar any evidence on which they rely, in manner and time as may be prescribed from time to time by the registrar.
  • Registrar shall give adequate time to both the parties to be heard
  • The registrar after hearing both the parties and considering all the evidence shall decide whether to accept the application with or without limitations or conditions
  • If it comes to the notice of the registrar that either the applicant or person giving the notice of opposition neither resides nor carries on the business in India, the registrar may require him to give the security for the cost of proceedings before him and in case of any default of such security duly given, may treat the application or opposition as the case may be, as abandoned.
  • On request the Registrar may permit to make any correction or amendment of an error in the notice of opposition or counterstatement.

 Step 7Corrections and amendments-

Section 15

The Registrar may from time to time with subject to certain terms and conditions permit either before or after the acceptance of the application, the correction of any error or an amendment of the application.

Step 8 : Registration

Section 16

  • On acceptance of the application, the registrar shall register the geographical indication for the same.
  • If registered the date of filing of the application shall be deemed to be the date of registration.
  • The registrar shall then issue to the applicant a certificate with the seal of the Geographical indication’s registry in Form-02 as per Rule 55 0f The Geographical Indications of Goods (Registration and Protection) Rules, 2002

Step 9: Duration, Renewal And Restoration

Section 18

  • A registered Geographical Indication shall be valid for 10 years and can be renewed on payment of renewal fee.
  • At the time before the expiration of last registration of geographical indication, the Registrar shall send the notice to the registered proprietor or the authorised user as the case may be, about the date of expiration and the conditions as to payment of fees and upon renewal of which registration shall be obtained.
  • Failure to do so may result in removal of geographical indication
  • Where a geographical indication has been removed by the Registrar on grounds of non-payment of the renewal fees may after six months and within period of one year from the expiration of last registration of geographical indication may, on an application in a prescribed manner and after payment of prescribed fees may restore the geographical indication for period of 10 years from the expiration of last registration

Step 10: Appeal to the Appellate Boards

Section 31

  • Any person aggrieved by an order or decision of the Registrar under the act or under the rules made thereunder, may prefer an appeal to the Intellectual Property Appellate Board (IPAB) within three months from the date on which the order or decision sought to be appealed is communicated.

Rights conferred by Registration

Under section 21 of the act, the authorised user and proprietor of the geographical indication is allowed certain rights in terms of the indication. These include:

  1. An exclusive right to make use of the indication in relation to goods to which the indication has been obtained.
  2. In case of infringement, to seek relief in a manner provided in the act.

However, it needs to be remembered that these rights conferred by registration are not absolute and are subject to conditions which restrict the powers allowed to the user, including:

  • Variation Condition: This includes cases where the proprietor agrees to have variations in the mark assigned to goods, other than those mentioned in the label.
  • Restraining Conditions: The geographical indication shall not be used for the purpose of certain specific goods
  • Blank Space condition: This condition requires all blank spaces in the label to only be occupied by matter that is non-distinctive in nature.
  • Limitation Condition: This condition restricts the area within which the registration is allowed to operate.

An interesting point to note regarding the powers over geographical indications comes to light when there are more than one authorised users of geographical indications which may be identical or bear near resemblance with each other. In such cases, the exclusive right to the use of these conditions are not deemed to have been acquired by any one of those persons against any other, but each of these persons have the same rights as a sole authorized user against other persons.

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References

Statutes

The Geographical Indication of Goods (Registration and Protection) Act, 1999

Books

B.L.Wadhera, Law Relating to Intellectual Property, page no.457-465 (5th edition 2017)

Websites

  1. Geographical Indications-available at https://www.wipo.int/geo_indications/en/
  • ,last seen on 12th October 2019
  1. International Treaties- Geographical Indication available at https://www.wipo.int/geo_indications/en/treaties.html, last seen on 12th October 2019
  2. Overview- TRIPS Agreement available on https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm#geographical last seen on 12th October 2019
  3. Geographical Indication Registry, The Registration Process available at ipindia.nic.in/the-registration-process-gi.htm, last seen on 14th October 2019
  4. Geographical Indication Registry, The Geographical Indications of Goods (Registration and Protection) Rules, 2002 available at ipindia.nic.in/rules-2002.htm last seen on 14th October 2019

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