India improves its protection of GIs
The Geographical Indications (GI) of Goods (Registration and Protection) Act 1999 has come into force. The act is a welcome step towards the fulfilment of India's obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).
Under the new law, the Indian government has set up a GI registry in Chennai, Tamil Nadu. An association of persons or producers, or any organization or authority representing the interests of such producers may apply to register a GI, provided they submit the following:
- a statement of case indicating the connection between the GI and the goods in terms of quality, reputation or any characteristic associated with that region/territory;
- the class of goods for which registration is sought;
- a map of the country/region/territory of origin;
- an indication as to whether the GI comprises words, figurative elements or both; and
- a statement containing particulars of the producers of the goods concerned, if any.
After examination, the registrar will advertise all the applications accepted in the GI Journal. Any person may, within three months of the date of publication, oppose the application in writing (the deadline may be extended by one month). If unopposed, the GI will be registered for an initial period of 10 years, after which it may be renewed for further periods of 10 years. The proprietor can use the acronym 'RGI' (meaning 'registered GI') in superscript after the GI. If the applicant fails to complete the registration within 12 months, the registrar has a discretionary power to treat the application as abandoned, unless it is completed by a new deadline specified by the registrar.
The act also provides the following:
- The registrar is empowered to refuse or invalidate, on his or her own initiative, registration of a trademark that comprises or contains a GI in relation to the same goods or classes of goods.
- No prejudice is caused to the registrability or the validity of a trademark that contains a GI if (i) application was sought or the mark was registered in good faith before the commencement of the new GI act, or (ii) rights have been acquired through use before an application to register the GI was filed. This is in line with the guidelines formulated under the TRIPS agreement for harmonizing GIs with trademarks.
- Assignment, transmission, licensing or mortgage of a registered GI is prohibited.
- The registered proprietor or the authorized user of a GI is at liberty to obtain relief for any infringement or unauthorized use in the form of injunction and delivery up of the infringing labels for destruction or erasure. Injunction includes:
o discovery of documents;
o preservation of infringing goods/documents; and
o restraining defendants from disposing of/dealing with assets that would adversely affect the plaintiff's ability to recover damages and costs, among other things.
The act also provides criminal remedies. First, the intentional falsification of a genuine GI will bear a prison sentence of at least six months. This may be extended to three years and be accompanied by a fine. This punishment can only be reduced by a court in special circumstances.
Second, the police may conduct search and seizure operations without any warrant. The goods seized shall be produced before the first class magistrate or metropolitan magistrate. However, before conducting a raid, the police must obtain the opinion of the registrar and abide by that opinion. This may prove to be a cumbersome and time consuming exercise defeating the objective of providing faster relief to the holders of registered GIs.
In summary, GIs - like trademarks - are increasingly recognized as valuable marketing tools in the global economy. India, by enacting a comprehensive law, has taken a step forward to be fully compliant with the requirements of the TRIPS agreement and attract foreign investment.
Rajiv Suri, Rouse & Co International, Dubai
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