India Inde Indien. Report Q191. in the name of the Indian Group by Tehemtan N. DARUWALLA and Manoj MENDA

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1 India Inde Indien Report Q191 in the name of the Indian Group by Tehemtan N. DARUWALLA and Manoj MENDA Relationship between trademarks and geographical indications India did not have any specific law governing geographical indications of goods to protect the interests of the producers of such goods. Under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), unless a geographical indication is protected in the country of its origin, there is no obligation for other countries to extend reciprocal protection. Accordingly, Parliament made a comprehensive separate legislation, viz. Geographical Indications of Goods (Registration and Protection) Act, 1999, hereinafter referred to as the GI Act for registration and for providing adequate protection for GIs. The law relating to GIs is being administered by a separate GI Registry established in Chennai (Madras). The GI Act, 1999 came into force on 15 th September It is a new Legislation. There is no reported case law on the GI Act. The first GI registered in India on 29 th October, 2004 was Darjeeling (word) for tea in Class 30. The total GIs registered in India till 30 th January, 2006 is 27 in number. The definition of a GI as per the GI Act is given in Section 2(1) (e) as follows: geographical indication, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manu factured goods as originating, or manufactured in the territory of 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. The generic use of GI shows that a product originates from a particular region. The example of Scotch Whisky is well known all over the world. The primary obligation is that all WTO members must provide means for interested parties to prevent use which mislead the public on geographical origin of goods. The second obligation is that the use should not amount to unfair competition. Article 23 of TRIPS provides for additional protection of GIs for wines and spirits. It is a legiti mate grievance of several nations that there are no valid or cogent reasons why the additional protection for GIs should only be restricted to wines and spirits. This grievance was raised when this question was debated in the AIPPI Congress in Rio de Janeiro. There is no reason why additional protection should not be given in TRIPS for other type of goods, for example, for Norwegian Sardines when one come across instances such as Norwegian Sardines made in Alaska or Basmati rice made in Texas, or Darjeeling tea made in Ceylon or Darjeeling tea made in Kenya. Recently the Tea Board, India have come across Divine Darjeeling applied for Tea, coffee & cocoa made in Japan! Will this never end? 1

2 It is submitted that some geographical names have by common usage, been accepted as being devoid of geographical significance and have become mere trade descriptions. Such GIs cannot be registered as trade marks even on evidence of distinctiveness. Illustrations of such words are given below: Roman candles; Plaster of Paris; Portland Cement; India Rubber; Chinese Lanterns; Amritsar Shawls; French Polish; Turkish Towels; Eau de Cologne. These GIs have become generic names or indications and have lost its original meaning and have become 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. Such GIs or words are prohibited from registration under the GI Act. See S. 9(f) read with Explanations 1 & 2. Questions I) Analysis of current legislation and case law 1) Do your country s laws have enactments or systems dealing specifically with GIs, e.g. a registration system for GIs? If so, what are the criteria of registrability? To which national authority must an application for protection be made? Does the applicant have the right to appeal against the refusal of the national authority to register a GI? If so, to which entity? See remarks on Introduction. The provisions relating to the registration and conditions for registration are given in Chapter II of the GI Act, Section 3 of the GI Act provides for the appointment of a Registrar of GIs and other subordinate officers. The Controller General of Patents, Designs and Trade Marks appointed under S. 3(1) of the Trade Marks Act, 1999 shall be the Registrar of GIs, who will be assisted by necessary additional officers and staff in the work relating to administration of this new legislation. Application for protection by way of registration should be made to the Registrar of GIs. Section 7 provides that the Register of GI should be divided into two parts namely, Part A (containing particulars relating to the registration of GI) and Part B (containing particulars relating to the registration of authorized users). Section 8 provides that a GI can be registered in respect of any or all the goods comprised in a prescribed class of goods and in respect of a definite territory of a country or a region or locality in that territory as the case may be. It is also provided that the classification shall, as far as possible, conform to the International Classification of Goods. Any question as to the class within which any goods fall or the definite area in respect of which the GI is to be registered shall be determined by the Registrar whose decision in the matter shall be final. Goods as defined in Section 2(1)(f) means any agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes food stuff. Section 9 prohibits the registration of certain GIs: a) the use of which is likely to deceive or cause confusion. This clause is framed to cover a wide range of acts which are likely to cause confusion or deception. (It is submitted that it may not be prudent to limit such likelihood of confusion or deception occurring only by means of visual or phonetic test ); 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 feelings of any class or section of citizens of India; or e) which would otherwise be disentitled to protection in a court; or 2

3 f) which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin or which have fallen into 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. Explanation 1 to S.9 states as to what is meant by the expression generic names or indications in relation to goods under sub section (f) of S. 9: Expln. 1: For the purposes of this section, generic names or indications, in relation to goods, 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. Expln. 2: 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. Section 10 provides for the registration of homonymous GIs. The word homonymous comes from the word homonym which means the word of same spelling or sound of another but of different meaning. Such homonymous GI may be registered if the Registrar is satisfied after considering the practical conditions under which the homonymous indications in question shall be differentiated from other homonymous indications and need to ensure equitable treatment of the producers concerned and the consumers are not misled. Chapter III containing sections 11 to 19 provides the procedure for and duration of registration of GIs. Any association of persons or producers or any organisation or authority, established by or under the law, representing interest of producers of the concerned goods can apply to the Registrar for the registration of GI, in writing in such manner and form and accompanied by such fees prescribed for registration of the GI. Thus an Application for registration of GI can only be made by an association of persons or producers or any organisation or authority established by or under the law representing the interests of the producers of the concerned goods, and not by a single individual. Every Application shall be filed in the office of the GI Registry within whose territorial limits, the territory of GI is situated. Section 31(1) provides that any person aggrieved by an order or decision of the Registrar may prefer an appeal to the Appellate Board within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal. [Appellate Board has been established under Section 83 of the Trade Marks Act, 1999] 2) What is the status of a GI in your country? Does the registration of a GI confer a property right? Who would be the rightholder of a GI? Can GIs be the subject of dealings such as assignment, mortgage and licensing? Status: The Indian law extends protection of GIs used for goods as defined in Section 2(1)(f) of the GI Act. It would, therefore cover agricultural products, handicrafts such as toys & dolls, handloom fabrics, Sarees, Agarbattis, Soaps, Tea, Rice, Traditional paintings, and the like. Use of GI may be more predominant in respect of agricultural products, where such products typically have qualities attributable to the specific geographical area, influenced by factors such as climate, soil, water e.g., Darjeeling tea, Coorg Orange. 3

4 Certain geographical locality or region may also develop specific qualities of a product, due to human factors found in the place of origin of the products, such as specific manufacturing skills and traditions e.g. Chanderi Saree, Kullu Shawl. The GI Act permits the registration of geographical names if it satisfies certain conditions and enables such names to be protected by an action for infringement. Benefits are conferred by registration. The apex bodies dealing with particular goods, like the Coffee Board, Tea Board, Spices Board which look after the interests of the producers of such goods as also the trade concerned, would have to initiate the filing of application and registration of the GI. Registration gives statutory right and better protection to the GI, and would enable the proprietor to obtain relief in respect of infringement of GI as provided in the Act. Where the proprietor has already filed an action for passing off in exercise of his common law right before registration of the GI, then by reason of registration of the GI during the pendency of the suit, the proprietor would be able to enlarge the scope of the suit to include an action for infringement of the GI registered. Section 21 Rights conferred by registration: 1) Subject to the other provisions the GI Act, the registration of a GI shall, if valid, give a) to the registered proprietor of the GI and the authorized user or users thereof to obtain relief in respect of infringement of the GI in the manner provided by the GI Act; b) to the authorized user thereof the exclusive right to the use of the GI in relation to the goods in respect of which the GI is registered. 2) The exclusive right to the use of a GI given under section b) of sub section 1) shall be subject to any condition and limitation to which the registration is subject. 3) Where two or more persons are authorized users of GIs, which are identical with or nearly resemble each other, the exclusive right to the use of any of those GIs shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by anyone of those persons as against any other of those persons merely by registration of the GIs, but each of those persons has otherwise the same rights as against other persons as he would have if he were the sole authorized user. Assignment, Mortgage, Licensing: A GI is in the nature of public property belonging to the producers of the concerned goods. The GIs do not grant a single holder the right to benefit from the protection but rather limit the protection to a specific area. It shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or such other agree ments. However, on the death of an authorized user his right shall devolve on his successor in title. (Section 24). The right in respect of GI is an intellectual property right and is protected in the same manner as right in a trade mark. The principles laid down in a passing off action based on a right in a trade mark would be equally applicable in protecting an action based on a right in a GI. The GI is registrable under Section 11 only by any association of persons or producers or any organisation or authority representing the interest of the producers of the concerned goods. Having regard to the nature of the IPR in GI being vested in a collective body, representing the commonality of interests, as distinguished from a right in a trade mark, patent or copyright etc. where the right could be private and individual right, the GI Act explicitly forbids and disables the registered proprietor to assign, transmit, pledge, mortgage or do any such act to alienate the right in the common property. 4

5 3) Is the application for or registration of a GI made public in your country? Is it possible to oppose such application or registration or cancel such registration of a GI? If so, by whom and on what (absolute or relative) grounds (e.g. generic or descriptive term or prior trademark)? Yes. Section 13 of the GI Act, 1999 provides for the advertisement of the Application in the Geographical Indications Journal. When an Application for registration of a GI has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the Application as accepted together with the condition or limitations, if any, subject to which it has been accepted to be advertised in such manner as may be prescribed. Where there is any error or amendment in the Application after the advertisement, the Registrar may in his discretion cause the application to be advertised again or notify in the prescribed manner the correction made in the application. In addition to advertisement in the Journal, the Registrar may put the published GI on the Internet, Website or other electronic media. The Journal may be made available on CD Rom for sale. Opposition to registration: S. 14 of the GI Act provides that any person may, within three months from the date of advertisement or re advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, file a notice of opposition in writing to the Registrar. The Registrar shall serve a copy of the notice so received on the applicant and if within two months from the receipt by the applicant does not file a counter statement of the grounds on which he relies in support of the application, the application shall be deemed to have been abandoned. If the applicant sends a counter statement, the Registrar shall serve a copy of it on the person giving notice of opposition. Thereafter, the Registrar would dispose of the matter providing an opportunity of hearing to the parties and considering the materials on record and evidences. Who may oppose? According to the Act, any person can oppose an application for registration, whether he has or he has not a personal interest in the matter. The law in this respect is to be distinguished from proceedings in respect of rectification of register and cancellation of registration, where an application can be filed in the prescribed manner only by any aggrieved person. No such requirement exists in the case of opposition. Similar provision exists in the Trade Marks Act, Grounds of Opposition: Neither the Act nor the Rules prescribe explicitly as to the grounds on which the registration of a GI may be opposed. It would seem, therefore, that the Opponent may take any ground which would prohibit the registration for example, under any of the provisions contained in Section 9 or that the Application does not fulfill the general requirements of the Act or the Rule 32 of the Geographical Indications of Goods (Registration and Protection) Rules, 2002 (provisions relating to the contents of Application). 4) Must use requirements be satisfied in order to maintain GI protection? If so, is there any definition of what constitutes use? Are the legal rules established for appraising the maintenance of a trademark registration applicable to the appraising of the maintenance of GI protection? There is no provision as to the use requirements to be satisfied in order to maintain GI protection (e.g., such as removal of GI from Register on account of non use) Sec. 2 (3) of the Act provides for the definition of use which is as follows: In the GI Act (unless the context otherwise requires), any reference to: a) the use of a GI shall be construed as reference to the use of a printed or other visual representation of the GI b) the use of a GI in relation to goods, shall be construed as reference to the use of the GI upon, or any physical or any other relation whatsoever to such goods. 5

6 Rules have been framed [Geographical Indications of Goods (Registration & Protection) Rules, 2002] for appraising the maintenance of GI protection they are almost along the same lines as those under the Trade Marks Rules, The legal Rules established for appraising the maintenance of trade mark registration would be applicable for appraising the maintenance of GI protection. 5) What is the scope of protection of a GI? Is it only protected against use of the name or also against use of elements of the specification of the GI (e.g. slicing, grating) or any other practice liable to mislead the public as to the origin of the product (e.g. use of same trade dress)? Are the legal rules established for determining the scope of trademark protection applicable to determining the scope of GI protection (e.g. in relation to reputed or well known GIs, likelihood of confusion, infringing and non infringing acts)? May rights in a GI be enforced even where a product which allegedly infringes those rights has been made purely for export? The Indian law extends protection of GIs used for goods as defined in Section 2(1)(f) of the GI Act. It would, therefore cover agricultural products, handicrafts such as toys & dolls, handloom fabrics, Sarees, Agarbattis, Soaps, Tea, Rice, Traditional paintings, and the like. Use of GI may be more predominant in respect of agricultural products, where such products typically have qualities attributable to the specific geographical area, influenced by factors such as climate, soil, water e.g., Darjeeling tea, Coorg Orange. S.22 Infringement of registered GI 22(1) A registered GI is infringed by a person who, not being an authorized user thereof a) uses such GI by any means in the designations or presentation of goods that indicates or suggests that such goods originate in a geographical area other than the true place of origin of such goods in a manner which misleads the persons as to the geographical origin of such goods; or b) uses any GI in such manner which constitutes an act of unfair competition including passing off in respect of registered GI. There are two Explanations to clause b) which read as follows: Expln. 1: For the purposes of this clause, act of unfair competition means any act of competition contrary to honest practices in industrial or commercial matters. Expln. 2: For the removal of doubts, it is hereby clarified that the following acts shall be deemed to be acts of unfair competition namely: i) all acts of such a nature as to create confusion by any means whatsoever with the establishment, the goods or the industrial or commercial activities, of a competitor; ii) false allegations in the course of trade of such a nature as to discredit the establish ment, the goods or the industrial or commercial activities, of a competitor; iii) GIs, the use of which in the course of trade is liable to mislead the persons as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity of the goods; c) uses another GI to the goods which although literally true as to the territory, region or locality in which the goods originate, falsely represents to the persons that the goods originate in the territory, region or locality in respect of which such registered GI relates. The GI protection is available against use of the names as well as against use of the elements of the specification of goods or any other practice liable to mislead the public as to the origin of the product. 6

7 Sub section (2) of S. 22 also provides that the Central Government may by notification in the Official Gazette provide for additional protection for certain goods which are notified. It further provides that once a GI is lawfully acquired further dealing in such goods shall not constitute infringement unless the goods are impaired after they have been put in the market. It is submitted that the rights in GI can be enforced even where a product which allegedly infringes those rights has been made purely for exports. 6) Can a GI be registered as individual trademark? If so, under what conditions? Yes. A GI can be registered as an individual trade mark but only if it meets with the criteria laid down under the Trade Marks Act, Furthermore, Section 25 of the GI Act sets out the criteria and circumstances in which registration of a GI as a trade mark is prohibited. The Registrar of Trade Marks shall suo moto or at the request of an interested party, refuse or invalidate the registration of a trade mark which contains or consists of a GI with respect to the goods or class or classes of goods not originating in the territory of a country or a region or locality in that territory which such GI indicates, if use of such GIs in the trade mark for such goods, is of such a nature as to confuse or mislead the persons as to the true place of origin of such goods or class or classes of goods or which contains or consists of a GI identifying goods or class/classes of goods notified u/s. 22(2). Section 26, however, protects a trademark which contains or consists of a GI which has been applied for or registered in good faith under the law of trademarks for the time being in force or where such trade marks have been used in good faith before the commencement of the GI Act or before the date of filing of an application for registration of a GI. It also provides that the GI Act shall not apply to GIs with respect to goods or class of goods which have become the common name of such goods in India on or before 1 st January, 1995 (date on which the TRIPS Agreement came into force). It protects the right of any person to use his name or the name of his predecessor in business except where such name is liable to cause confusion or mislead the public. It further provides that no action in connection with the use of registration of a trade mark shall be taken after five years from the date from which such use or registration which infringes any GI registered under the GI Act has become known to the registered proprietor or the authorized user. 7) Do your country s laws provide for collective or certification marks? If so, under what conditions can a GI be registered as a collective mark or a certification mark? Yes. India provides for the registration of collective or certification marks. This is under the Trade Marks Act, A collective mark as defined under Section 2(1)(g) of the Trade Marks Act, 1999, means a trade mark distinguishing the goods or services of members of an association of persons [not being a partnership within the meaning of the Indian Partnership Act, 1932 (9 of 1932)] which is the proprietor of the mark from those of others. A certification trade mark as defined under Section 2(1)(e) of the Trade Marks Act, 1999, means a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which 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 from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trade mark, of that person. The certification trade mark is not owned by an association or group of producers or persons as in the case of a collective mark, but owned by a certifying agency or authority, which does not itself trade in those goods. e.g. I.S.I., AGMARK, WOOLMARK. 7

8 A GI can be registered as a Collective mark or a Certification trade mark only if it meets the criteria prescribed under the Trade Marks Act, 1999 as mentioned in Answer to Q.6. A GI identifies the particular goods as originating in a certain country, region or locality, where a given quality, reputation or other characteristics of the goods is essentially attributable to its geographical origin comprising natural environment and human factors. The Tea Board, India has registered the Darjeeling Logo and also the word Darjeeling as Certification trade marks under the Trade & Merchandise Marks Act, 1958 in India. The Tea Board, India has also obtained registration of these two marks as Certification Trade Marks in U.S.A., Canada, Japan, Egypt & U.K. 8) Does inclusion of a protected GI as part of a trademark qualify as legal bar to the registration of such trademark? Yes. Inclusion of a protected GI as a part of a trade mark qualifies as legal bar to the registration of such mark as per S.9 of the Trade Marks Act, 1999 which provides for the absolute grounds for refusal of registration of a trade mark. S. 9(1)(b) implies that the trade marks which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service shall not be registered. It also provides that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well known trade mark. Section 25 of the GI Act provides for prohibition of registration of GI as a Trade Mark. Section 26 of the GI Act however, provides protection to certain trade marks. 9) Do your country s laws, e.g. trade or merchandise legislation, require the application of correct designations of origin/source on agricultural products and food stuffs? Yes. The Notification under Section 117 of the Trade & Merchandise Marks Act, 1958 issued by the Central Government requires the goods to show the Indications of Origin. The Trade Marks Act, 1999 and the GI Act makes it an offence to apply false trade descriptions or GIs respectively to the goods. The GI Act also empowers the Central Govt. to require by a notification in the Official Gazette the application of correct designation of origin or source on goods. S. 39 of the GI Act provides penalty for applying false GI. Whereas S. 40 provides penalty for selling goods to which false GI is applied. 10) How are conflicts between trademarks and GIs resolved under your country s laws? Do they co exist or does either the trademark or GI prevail? Is there a rule for determining whether the trademark or GI should prevail, and what are the criteria to take into account (e.g. the first in time, first in right rule, the reputation of the geographic region or the reputation of the trademark, the length of time that the name has been used to indicate the geographic region and the extent of such usage, the length of time that the trademark has been used and the extent of such usage)? As to what amounts to infringement of a registered GI is covered in the answer to Question 5. In answer to Question 6 above the circumstances in which registration of a GI as a trade mark is prohibited are set out. S. 25 categorically states that notwithstanding anything contained in the Trade Marks Act, 1999 the Registrar of Trade Marks shall suo moto or at the request of an interested party refuse or invalidate the registration of a trade mark which a) contains or consists of a GI with respect to goods or class or classes of goods not originating in the territory of a country, or a region or locality in that territory which such GI indicates, if use of such GI in the trade mark for such goods, is of such a nature as to confuse or mislead the persons as to the true place of origin of such goods or class or classes of goods; 8

9 b) contains or consists of a GI identifying goods or class or classes of goods notified under sub section (2) of S. 22 by the Central Government. S.26 to some extent could be said to deal with co existence of a trade mark and GI. As mentioned in answer to Question 6, S. 26 of the Gi Act gives protection to certain trade marks which contains or consists of a GI and has been applied for or registered in good faith under the law relating to trade marks, or where rights to such trade marks have been acquired through use in good faith. S. 26 of the GI Act reads as follows: S. 26 Protection of certain trade marks: 1) where a trade mark contains or consists of a GI and has been applied for or registered in good faith under the law relating to trade marks for the time being in force, or where rights to such trade mark have been acquired through use in good faith either a) before the commencement of this Act; or b) before the date of filing the application for registration of such GI under the GI Act, nothing contained in this Act shall prejudice the registrability or the validity of the registration of such trade mark under the law relating to the trade marks for the time being in force, or the right to use such trade mark, on the ground that such trade mark is identical with or similar to such GI. 2) Nothing contained in this Act shall apply in respect of a GI with respect to goods or class or classes of goods for which such GI is identical with the term customary in common languages as the common name of such goods in any part of India on or before the 1 st day of January, ) Nothing contained in this Act shall in any way prejudice the right of any person to use,in the course of trade, that person s name or the name of that person s predecessor in business, except where such name is used in such a manner as to confuse or mislead the people. 4) Notwithstanding anything contained in the Trade Marks Act, 1999 or in the GI Act no action in connection with the use or registration of a trade mark shall be taken after the expiry of five years from the date on which such use or registration infringes any GI registered under the GI Act has become known to the registered proprietor or authorized user registered in respect of such GI under the GI Act or after the date of registration of the trade mark under the said Trade Marks Act subject to the condition that the trade mark has been published under the provisions of the said Trade Marks Act, 1999 or the rules made thereunder by that date, if such date is earlier than the date on which such infringement became known to such proprietor or authorized user and such GI is not used or registered in bad faith. The theory of Exhaustion of GI rights if it can be called so is set out in Sub section 4 of S. 22 which reads as follows: S.22(4) Notwithstanding anything contained in this section, where the goods in respect of which a GI has been registered are lawfully acquired by a person other than the authorized user of such GI, further dealings in those goods by such person including processing or packaging, shall not constitute an infringement of such GI, except where the condition of goods is impaired after they have been put in the market. Attention is invited to S. 30 of the Trade Marks Act, 1999 which sets out the limits on effect of registered trade mark. Sub section 2(a) of the said S. 30 of the Trade Marks Act, 1999 states that a registered trade mark is not infringed where the use in relation to goods or services indicates the kind, quality, intended purposes, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; 9

10 II) Sub section (1) of S. 26 of the GI Act clearly protects certain trade marks. S. 26(1) reads as follows: S. 26(1) where a trade mark contains or consists of a GI and has been applied for or registered in good faith under the law relating to trade marks for the time being in force, or where rights to such trade mark have been acquired through use in good faith either a) before the commencement of this Act; or b) before the date of filing the application for registration of such GI under the GI Act, nothing contained in this Act shall prejudice the registrability or the validity of the registration of such trade mark under the law relating to the trade marks for the time being in force, or the right to use such trade mark, on the ground that such trade mark is identical with or similar to such GI. Sub section (1) of S. 26 is along the lines of article 24.5 of TRIPS which provides that Where a trade mark has been applied for or registered in good faith or where rights to such trade mark have been acquired through use in good faith either a) before the date of application of these provisions in that Member as defined in Part VI; or b) before the GI is protected in its country of origin; measures adopted to implement this section shall not eligibility for or the validity of the registration of the trade mark, or the right to use a trade mark is identical with, similar to, a GI. These legal provisions suggest that a subsequent GI cannot trump a prior trade mark which has been registered in good faith under the law of trade marks or where rights to such trade marks have been acquired through use in good faith even though such trade mark is identical with or similar to such GI under the GI Act. Proposals for adoption of uniform rules The Groups are invited to put forward any proposals for adoption of uniform rules regarding the relationship between trademarks and GIs. More specifically, the Groups are invited to respond to the following questions: 11) Should countries provide for registration systems dealing specifically with GIs? If so, what should the key features of such system be? Should a multilateral system of registration of GIs be established? If so, what should the key features of such multilateral system be? Specifically, which international body should be tasked with establishing such system? How should the application for or registration of a GI be notified/made public (either in your country or at a multilateral level) in order to avoid that a trademark may conflict with a GI previously unknown to the trademark owner? Yes, countries should provide for registration systems dealing specifically with GIs. This has been done in India by enacting the Geographical Indications of Goods (Registration & Protection) Act, The key features of the registration system should be as follows: 1) Compulsory advertisement of all accepted GI applications and for inviting objections; 2) Clear cut provisions as to prohibition of registration of certain GIs; 3) Prohibition of registration of GI as a trade mark; 4) Renewal, rectification, and restoration of GIs; 5) Provision for appeal against the Registrar s decision; 6) Proper maintenance of the Register of GIs; 7) Provision as to what constitutes infringement of GIs and offences relating to GIs. 10

11 The application for or registration of a GI should be published in a Geographical Indications Journal so that any person can oppose/file Opposition Proceedings prior to registration. It would be advisable if a reputed body like WIPO is tasked with establishing the system of registration dealing specifically with GIs. 12) Do you have any suggestions as to the acquisition, maintenance, scope and enforcement of GI protection? What should the scope of protection of a GI be? Should the legal rules established for appraising the acquisition, maintenance, scope and enforcement of trademark protection apply to the appraising of the acquisition, maintenance, scope and enforcement of GI protection? Yes, indeed. The acquisition, maintenance and scope of enforcement of GI protection has been adequately provided for by the GI Act in India. Rules and principles which are applied in respect trade marks, certification marks and collective marks could be usefully applied in respect of acquisition, maintenance and scope of enforcement of GI protection. 13) Should a protection of GIs by individual and/or collective or certification marks be possible? Yes. GIs can be protected as individual trade marks or collective marks or certification marks. Please also refer to the criteria and observations made in answers to Question No.6 & 7. 14) How should conflicts between trademarks and GIs be resolved? Please propose a specific rule for determining whether trademark or GI should prevail, which is likely to be broadly accepted. If co existence is contemplated, should such co existence be limited to the country of origin or relate to the relevant markets? When conflict arises between trademark and GI, consideration can be given to the fact that which of the two has priority over the other. The conflict between a GI and a trade mark can be resolved by using the first in time first in right principle. At the same time it is submitted that the first in time first in right need not be the sole basis in deciding or resolving such conflicts. This principle should be determined according to the jurisdiction or territory where the dispute actually takes place. Also a trade mark and a GI can co exist within a specific jurisdiction, possibly with an obligation to add clarifying information to be used in connection with the trade mark (e.g., by way of a disclaimer ).. Administrative and judicial bodies such as Courts of law which decides trade mark disputes can decide conflicts between trade marks & GIs. It may not be feasible to propose a specific rule for determining whether trade mark or GI should prevail. Each case must be decided on its own facts and circumstances. There can be co existence between a GI and a trade mark but it should preferably limited to the country of origin. Summary India did not have any specific law governing Geographical Indications of goods. However, in view of TRIPS the Geographical Indications of Goods (Registration & Protection) Act, 1999 was passed and came into force on 15th September, It is a new legislation. There are no reported case laws on the GI Act. The total number of GIs registered in India till 30th January, 2006 is 27 and is mainly in respect of agricultural and manufactured goods. The definition of Geographical Indications is given under the GI Act. Some geographical names have by common usage been accepted as being devoid of geographical significance and have become mere trade descriptions. Such GIs cannot be registered as trade marks even on evidence of distinctiveness. The GI Act provides for registration 11

12 and conditions for registration. Criteria for registrability is brought out in Section 9 of the Act. The procedure for registration and duration of registrations and the persons who can apply to the Registrar for registration of GI, are provided for under the Act. Section 10 of the GI Act provides for registration of homonymous GIs. Application for registration of GI can only be made by an association of persons or producers or any organization or authority established by or under the law representing the interests of the producers of the concerned goods, and not by a single individual. Any person aggrieved by an order or decision of the Registrar, can prefer an appeal to the Appellate Board. Registration gives statutory right and better protection to the GI, and would enable the proprietor to obtain reliefs in respect of infringement of GI, as provided for in the GI Act. Section 21 confers rights of registration of GI to the registered proprietor and the authorised user to obtain relief in respect of infringement of the GI and it also gives to the authorised user the exclusive right to the use of the GI in relation to the goods in respect of which the GI is registered. GI is public property belonging to the producers of the concerned goods. GIs do not grant a single holder the right to benefit from protection but rather limit the protection to a specific area. GI shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or such other agreements. However, on the death of an authorised user, his right in the registered GI shall devolve on his successor in title under the law for the time being in force. Section 13 of the GI Act, provides for the advertisement of the application in the Geographical Indications Journal. Provision for opposition to registration and the persons who can oppose and the grounds of opposition are set out in the GI Act. There is no provision as to use requirement which has to be satisfied in order to main GI protection. Infringement of a registered GI by a person, who, not being an authorized user thereof under Section 22 of the GI Act which is discussed in answer to Question no. 5. A GI can be registered as an individual trade mark, collective mark or certification trade mark, if it meets with criteria laid down under the Trade Marks Act, Section 25 of the GI Act sets out criteria and circumstances in which registration of GI as a trade mark is prohibited. Section 26 however, protects a trademark which contains or consists of a GI which has been applied for or registered in good faith under the Trade Mark law or where such trade marks have been used in good faith before the commencement of the GI Act or before the date of filing of an application for registration of GI. Inclusion of a protected GI as a part of trade mark qualifies as a legal bar to the registration of such mark as per S. 9 of the Trade Marks Act, 1999 which provides for the absolute grounds for refusal of registration of a trade mark. India s laws provide for correct designation of origin or source on agricultural products and food stuffs. It is submitted that countries should provide for registration systems dealing specifically with GIs. The suggestions are incorporated in the answer to the proposal for adoption of uniform rules. 12