A GI is a sign used on products which have a specific Protected Geographical Indication origin and possess qualities or a reputation which are due to this origin. Some examples of GIs in India are Pashmina from Jammu and Kashmir, Banarasi Sarees from Uttar Pradesh, Darjeeling tea from West Bengal and Feni from Goa.
Intellectual property rights of protected geographical indications (GIs) have become a significant issue in recent years in India. The 1995 TRIPS Agreement, through its Article 22, paved the way for the enactment of sui generis legislation known as 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, misuse of GIs had to be dealt with through consumer protection laws, certification marks, or deceit actions in court .
Geographical indication c. Mark
Trademarks allow consumers to identify a good or service as coming from a particular company. This indication gives consumers an accurate idea of the specific reputation or quality of a good or service. On the other hand, protected geographical indications identify a product as coming from a particular place. Consumers may associate goods with a particular characteristic, quality or reputation based on the origin of the product.
A trademark generally includes an arbitrary or fanciful sign that can be licensed to anyone, anywhere in the world. Conversely, the sign designating a GI generally corresponds to the name of the place of origin of the product or to the name by which the product is known in that place. A GI can only be used by people who produce the specific product in the area of origin according to specified standards.
GI registration in India
The registration of the GI confers an exclusive right to the registered owner and the authorized user, which helps to create a monopoly in the market by allowing price control. In addition, the registration of GIs provides better legal protection and preserves the collective reputation of products. The GI Act defines the procedure for registering GI products in India, which is summarized below:
For registration of the GI, the application must be made in triplicate. In addition, it must be signed by the applicant or his agent together with the statement of the case and must be submitted with the prescribed form GI-1. All the parameters specified under section 11(2) of the GIs Act 1999 must be met with respect to the content of the application. The application should contain details of all applicants and their addresses.
There is an additional requirement under the GI Law that any of the activities of processing, production or preparation of the goods concerned must be carried out at the place of their geographical origin. This test is stricter than that set out in Article 22.1 of the TRIPS Agreement.
- Preliminary verification and review
Section 11(5) of the GIs Act 1999 provides that any application under section 11(1) must be considered by the Registrar. The registrar can either refuse or accept the request absolutely or subject to modifications. Any anomaly must be rectified by the applicant within one month of its communication. After assessing the regularity and authenticity of the request, the Registrar in consultation issues the examination report.
- Issuance of a show cause notice
Section 12 of the GIs Act 1999 provides that if the Registrar has an objection to the application, this must be communicated to the applicant. The applicant must respond within two months of receiving the notice or may request a hearing.
As mentioned in Section 13(1) of the Geographical Indications Act 1999, the Registrar publishes each application in the Protected Geographical Indications Journal within three months of its acceptance.
- Opposition to registration
Section 14(1) of the GIs Act 1999 provides that an objection may be filed by any person within 3 months to object to the GI application published in the newspaper. This opposition must be in three copies accompanied by the GI-2 form.
A copy of the notice is served on the applicant by the Registrar. The applicant must file a counter-statement within two months, failing which he is deemed to have waived the application. After the counter statement is filed, the Registrar serves a copy on the person who filed the notice of opposition. Subsequently, the two parties present their respective evidence by means of affidavits and supporting documents.
Section 16 of the GIs Act 1999 provides that once the application for a GI has been accepted, that GI product must be registered by the Registrar and a certificate of registration issued to the applicant with a seal from the Geographical Indications Register .
- Duration, renewal and restoration
Section 18 of the GIs Act 1999 provides that a registered protected geographical indication is valid for 10 years and may be renewed upon payment of a renewal fee.
If the Registrar removes a GI for non-payment of renewal fees, it may be reinstated by filing an application in the prescribed manner and upon payment of the prescribed fees. Such an application can only be filed within one year from the expiry of the last registration of the GI. Successful renewal allows the restoration of the IG for a period of 10 years from the expiration of the last registration.
Previously, an appeal could be brought to the Intellectual Property Appeals Board (IPAB) by anyone aggrieved by an order or decision of the Registrar. With the passage of the Courts Reforms (Streamlining and Conditions of Service) Order 2021, the IPAB was abolished and the powers of the IPAB under the Protected Geographical Indications of Goods Act 1999 (Registration and Protection) have been transferred to the Registrar of Geographical Indications and High Courts.
Appeals against the decision, Registrar’s Order under the GI Act 1999 or rules made thereunder may be brought to the High Court within three months from the date on which the order or decision appealed from is communicated to the person. preferring the call. An Intellectual Property Rights Division has also been established within the Delhi High Court in this regard.
GI registration is a powerful marketing tool that helps secure a premium price in national and global markets. However, the benefits associated with registered GIs can only be realized through their effective management in the future. Moreover, stakeholders also have to overcome post-registration challenges such as overseas registration and enforcement challenges inside and outside India. A coordinated approach after registration can enable the full commercial potential of GI products to be realized.
Strengthening “Traditional Marks”: Registration of a Protected Geographical Indication in India
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.