Reinforcing ‘Traditional Brands’: Registering Protected Geographical Indication In India

8th March, 2022 - 4:10 am Categories: Intellectual Property 0 Comments

Introduction

A GI is a sign used on products that have a specific Protected Geographical Indication origin and possess qualities or a reputation that are due to that origin. A few examples of GIs in India are Pashmina from Jammu & Kashmir, Banarasi Sarees from Uttar Pradesh, Darjeeling tea from West Bengal, and Feni from Goa.

The intellectual property rights of protected geographical indication (GIs) have emerged as a significant issue over recent years in India. The TRIPS Agreement, 1995, via its Article 22, paved the way for the enactment of sui-generis legislation called the protected Geographical Indication of Goods (Registration and Protection) Act, 1999 (the GI Act) which came into force in September 2003. Prior to the GI Act, the misuse of GIs had to be addressed through consumer protection acts, certification trademarks, or passing-off actions in courts.

Geographical Indication v. Trademark

Trademarks allow the consumers to identify a good or service as originating from a particular company. This indication gives a fair idea to the consumers about the reputation or specific quality of a good or service. On the other hand, protected geographical indications identify a good as originating from a particular place. The consumers can associate the goods with a particular characteristic, quality, or reputation based on the origin of the product.

A trademark generally comprises an arbitrary or a fanciful sign which can be licensed to anyone, anywhere in the world. Contrastingly, the sign denoting a GI usually corresponds to the name of the good’s place of origin or the name by which the good is known in that place. A GI can only be used by persons who produce the specific good in the area of origin according to specified standards.

Registration of GI in India

The GI registration provides an exclusive right to the registered proprietor and the authorised user which aids in creating a monopoly in the market by allowing price control. Furthermore, GI registration ensures better legal protection and preserves the collective reputation of the goods. The GI Act lays down the procedure for the registration of GI goods in India which has been summarised below:

• Filing an Application

For the GI registration, the application has to be made in triplicate. Further, it should be signed by the applicant or his agent along with the statement of the case and has to be submitted along with the prescribed form GI-1. All the parameters specified under Section 11(2) of the GI Act, 1999 need to be satisfied with regards to the contents of the application. The application should have details of all the applicants along with their addresses.

There is an additional requirement under the GI Act that one of the activities of either the processing, or the production, or preparation of the goods concerned has to be carried out in the place of its geographical origin. This criterion is stricter than the one set forth in TRIPS Article 22.1.

• Preliminary Scrutiny and Examination

Section 11 (5) of the GI Act, 1999 provides that every application under Section 11(1) shall be examined by the Registrar. The Registrar may either refuse or accept the application absolutely or subject to amendments. Any discrepancies are to be rectified by the applicant within a month of its communication. After the assessment of the correctness and authenticity of the application, the Registrar in consultation issues the examination report.

• Issue of Show Cause Notice

Section 12 of the GI Act, 1999 provides that 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 a hearing.

• Advertisement

As mentioned under Section 13(1) of the GI Act, 1999, the Registrar publishes every application in the protected Geographical Indications Journal within three months of its acceptance.

• Opposition to Registration

Section 14(1) of the GI Act, 1999 provides that an opposition can be filed by any person within 3 months to oppose the GI application published in the journal. Such opposition must be in triplicate along with the form GI-2.

A copy of the notice is served to the applicant by the Registrar. The applicant has to file a counter statement within two months failing which he shall be deemed to have abandoned the application. Once the counter-statement is filed, the Registrar serves a copy on the person who gave the notice of opposition. Thereafter, both sides lead their respective evidence by way of affidavits and supporting documents.

• Registration

Section 16 of the GI Act, 1999 provides that once the application of G.I has been accepted, that G.I product shall be registered by the Registrar and certificate of registration issued to the applicant with a seal of geographical indications registry.

• Duration, Renewal, And Restoration

Section 18 of the GI Act, 1999 provides that a registered protected Geographical Indication shall be valid for 10 years and can be renewed on payment of renewal fee.

In case the Registrar removes a GI on grounds of non-payment of the renewal fees, the same can be restored by filing an application in a prescribed manner and after payment of prescribed fees. Such an application can only be filed within a year from the expiration of the last registration of the GI. The successful renewal allows restoration of the GI for a period of 10 years from the expiration of the last registration.

• Appeal to the High Court

Earlier, an appeal could be preferred to the Intellectual Property Appellate Board (IPAB) by any person aggrieved by an order or decision of the Registrar. With the passing of The Tribunals Reforms (Rationalisation and Conditions Of Service) Ordinance 2021, the IPAB has been abolished, and the powers of the IPAB under the protected Geographical Indications of Goods (Registration and Protection) Act 1999, have been transferred to the Registrar of Geographical Indications and High Courts.

Appeals from the decision, order of the Registrar under the GI Act, 1999, or the rules made thereunder may be preferred to the High Court within three months from the date on which the order or decision sought to be appealed against is communicated to the person preferring the appeal. An Intellectual Property Rights Division has also been created in the Delhi High Court in this regard.

Conclusion

G.I. registration is a potent marketing tool that aids in securing a premium price in domestic as well as global markets. However, the benefits associated with the registered GIs can only be realised by their effective management in the future. Additionally, the stakeholders also have to overcome post-registration challenges such as foreign registration and enforcement challenges within and outside India. A coordinated approach post-registration can allow for the realisation of full commercial potential for the GI goods.

Author: Sarabjit Kaur – a student of  Lloyd Law College, (Greater Noida), in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.