GEOGRAPHICAL
INDICATIONS OF GOODS (REGISTRATION AND PROTECTION) ACT, 1999 (Amended Upto
2023)
[Act, No. 48 of 1999]
[30th December, 1999]
PREAMBLE
An Act to provide for the registration and
better protection of geographical indications relating to goods.
BE it enacted by Parliament in the Fiftieth Year of
the Republic of India as follows:
CHAPTER
I PRELIMINARY
Section 1 - Short title, extent and
commencement
(1)
This Act may be
called the Geographical Indications of Goods (Registration and Protection) Act,
1999.
(2)
It extends to
the whole of India.
(3)
It shall come
into force on such dateas
the Central Government may, by notification in the Official Gazette, appoint;
and different dates may be appointed for different provisions of this Act, and
any reference in any such provision to the commencement of this Act shall be
construed as a reference to the coming into force of that provision.
(1)
In this Act,
unless the context otherwise requires,
(a)
[***]
(b)
"authorised
user" means the authorised user of a geographical indication registered
under section 17;
(c)
"deceptively
similar" A geographical indication shall be deemed to be deceptively
similar to another geographical indication if it so nearly resembles that other
geographical indication as to be likely to deceive or cause confusion;
(d)
"district
court" has the meaning assigned to it in the Code of Civil Procedure, 1908
(5 of 1908);
(e)
"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 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.
Explanation. For the purposes of this clause, any
name which is not the name of country, region or locality of that country shall
also be considered as the geographical indication if it relates to a specific
geographical area and is used upon or in relation to particular goods
originating from that country, region or locality, as the case may be;
(f)
"goods"
means any agricultural, natural or manufactured goods or any goods of
handicraft or of industry and includes food stuff;
(g)
"indication"
includes any name, geographical or figurative representation or any combination
of them conveying or suggesting the geographical origin of goods to which it
applies;
(h)
"name"
includes any abbreviation of a name;
(i)
"package"
includes any case, box, container, covering, folder, receptacle, vessel,
casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid,
stopper and cork;
(j)
"prescribed"
means prescribed by rules made under this Act;
(k)
"producer"
in relation to goods, means any person who,
(i)
if such goods
are agricultural goods, produces the goods and includes the person who
processes or packages such goods;
(ii)
if such goods
are natural goods, exploits the goods;
(iii)
if such goods
are handicraft or industrial goods, makes or manufactures the goods, and
includes any person who trades or deals in such production, exploitation,
making or manufacturing, as the ease may be, of the goods;
(l)
"register"
means the Register of Geographical Indications referred to in section 6;
(m)
"registered"
(with its grammatical variations) means registered under this Act;
(n)
"registered
proprietor", in relation to a geographical indication, means any
association of persons or of producer or any organisation for the time being
entered in the register as proprietor of the geographical indication;
(o)
"Registrar"
means the Registrar of Geographical Indications referred to in section 3;
(p)
[***]
(2)
Words and
expressions used and not defined in this Act but defined in the Trade Marks
Act, 1999 shall have the meanings respectively assigned to them in that Act.
(3)
In this Act,
unless the context otherwise requires, any reference
(a)
to the use of a
geographical indication shall be construed as a reference to the use of printed
or other visual representation of the geographical indication;
(b)
to the use of a
geographical indication in relation to goods shall be construed as a reference
to the use of the geographical indication upon, or in any physical or in any
other relation whatsoever, to such goods;
(c)
to a registered
geographical indication shall be construed as including a reference to a
geographical indication registered in the register;
(d)
to the
Registrar shall be construed as including a reference to any officer when
discharging the functions of the Registrar in pursuance of sub-section (2) of
section 3;
(e) to the Geographical Indications Registry shall be
construed as including a reference to any office of the Geographical
Indications Registry.
CHAPTER
II THE REGISTER AND CONDITIONS FOR REGISTRATION
Section 3 - Registrar of
Geographical Indications
(1)
The
Controller-General of Patents, Designs and Trade Marks appointed under
sub-section (1) of section 3 of the Trade Marks Act, 1999,
shall be the Registrar of Geographical Indications.
(2)
The Central
Government may appoint such officers with such designations as it thinks fit
for the purpose of discharging, under the superintendence and direction of the
Registrar, such functions of the Registrar under this Act, as he may from time
to time authorise them to discharge.
Section 4 - Power of Registrar to withdraw or transfer cases, etc
Without prejudice to the generality of the
provisions of sub-section (2) of section 3, the Registrar may, by order in
writing and for reasons to be recorded therein, withdraw any mailer pending
before an officer appointed under the said sub-section (2) and deal with such
matter himself either de novo or from the stage it was so withdrawn or transfer
the same to another officer so appointed who may, subject to special directions
in the order of transfer, proceed with the matter either de novo or from the
stage it was so transferred.
Section 5 - Geographical Indications Registry and offices thereof
(1)
For the purpose
of this Act, there shall be established a Registry which shall be known as the
Geographical Indications Registry.
(2)
The head office
of the Geographical Indications registry shall be at such place as the Central
Government may, by notification in the Official Gazette, specify, and for the
purpose of facilitating the registrations of geographical indications, there
may be established at such places as the Central Government may think fit
branch offices of the Geographical Indications Registry.
(3)
The Central
Government may, by notification in the Official Gazette, define the territorial
limits within which an office of the Geographical Indications Registry may
exercise its functions.
(4)
There shall be
a seal of the Geographical Indications Registry.
Section 6 - Register of Geographical
Indications
(1)
For the
purposes of this Act, a record called the Register of Geographical Indications
shall be kept at the head office of the Geographical Indications Registry,
wherein shall be entered all registered geographical indications with the
names, addresses and descriptions of the proprietors, the names, addresses and
descriptions of authorised user and such other matters relating to registered
geographical indications as may be prescribed and such registers may be
maintained wholly or partly on computer.
(2)
Notwithstanding
anything contained in sub-section (1), it shall be lawful for the Registrar to
keep the records wholly or partly in computer floppies or diskettes or in any
other electronic form, subject to such safeguards as may be prescribed.
(3)
Where such
register is maintained wholly or partly in computer floppies or diskettes or in
any other electronic form under sub-section (1), any reference in this Act to
any entry in the register shall be construed as the reference to the entry as
maintained on computer floppies or diskettes or in the other electronic form,
or the case maybe.
(4)
No notice of
any trust, express or implied or constructive, shall be entered in the register
and no such notice shall be receivable by the Registrar.
(5)
Subject to the
superintendence and direction of the Central Government, the register shall be
keep under the control and management of the Registrar.
(6)
There shall be
kept at each branch office of the Geographical Indications Registry a copy of
the register and such other documents mentioned in section 78 as the Central
Government may, by notification in the Official Gazette, direct.
Section 7 - Part A and Part B of
the register
(1)
The register
referred to in section 6 shall be divided into two Parts called respectively
Part A and Part B.
(2)
The particulars
relating to the registration of the geographical indications shall be
incorporated and form part of Part A of the register in the prescribed manner.
(3)
The particulars
relating to the registration of the authorised users shall be incorporated and
form part of Part B of the register in the prescribed manner.
Section 8 - Registration to be
in respect of particular goods and area
(1)
A geographical
indication may be registered in respect of any or all of the goods, comprised
in such class of goods as may be classified by the Registrar and in respect of
a definite territory of a country, or a region or locality in that territory,
as the case may be.
(2)
The Registrar
shall classify the goods under sub-section (1), as far as may be, in accordance
with the International classification of goods for the purposes of registration
of Geographical indications.
(3)
The Registrar
may publish in the prescribed manner an alphabetical index of classification of
goods referred to in sub-section (2).
(4)
Any question
arising as to the class within which any goods fall or the definite area as
referred to in sub-section (1) in respect of which the geographical indication
is to be registered or where any goods are not specified in the alphabetical
index of goods published under sub-section (3) shall be determined by the
Registrar whose decision in the matter shall be final.
Section 9 - Prohibition of
registration of certain geographical indications
A geographical indication
(a)
the use of
which would be likely to deceive or cause confusion; 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 susceptibilities of any
class or section of the citizens of India; or
(e)
which would
otherwise be disentitled to protection in a court; or
(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, shall not be
registered as a geographical indication.
Explanation 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.
Explanation 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 - Registration of
homonymous geographical indications
Subject to the
provisions of section 7, a homonymous geographical indication may be registered
under this Act, if the Registrar is satisfied, after considering the practical
conditions under which the homonymous indication in question shall be
differentiated from other homonymous indication and the need to ensure
equitable treatment of the producers of the goods concerned, that the consumers
of such goods shall not be confused or misled in consequence of such
registration.
CHAPTER
III PROCEDURE FOR AND DURATION OF REGISTRATION
Section 11 - Application for registration
(1)
Any
association of persons or producers or any organisation or authority
established by or under any law for the time being in force representing the
interest of the producers of the concerned goods, who are desirous of
registering a geographical indication in relation to such goods shall apply in
writing to the Registrar in such form and in such manner and accompanied by
such fees as may be prescribed for the registration of the geographical
indication.
(2)
The application
under sub-section (1) shall contain
(a)
a statement as
to how the geographical indication serves to designate the goods as originating
from the concerned territory of the country or region or locality in the
country, as the case may be, in respect of specific quality, reputation or
other characteristics of which are due exclusively or essentially to the
geographical environment, with its inherent natural and human factors, and the
production, processing or preparation of which takes place in such territory,
region or locality, the case may be;
(b)
the class of
goods to which the geographical indication shall apply;
(c)
the
geographical map of the territory of the country or region or locality in the
country in which the goods originate or are being manufactured;
(d)
the particulars
regarding the appearance of the geographical indication as to whether it is
comprised of the words or figurative elements or both;
(e)
a statement
containing such particulars of the producers of the concerned goods, if any,
proposed to be initially registered with the registration of the geographical
indication as may be prescribed; and
(f)
such other
particulars as may be prescribed.
(3)
A single
application may be made for registration of a geographical indication for
different classes of goods and fee payable therefore shall be in respect of
each such class of goods.
(4)
Every
application under sub-section (1) shall be filed in the office of the
Geographical Indications Registry within whose territorial limits, the
territory of the country or the region or locality in the country to which the
geographical indication relates is situated:
Provided that where such territory, region or locality, as
the case may be is not situated in India, the application shall be filed in the
office of the Geographical Indications Registry within whose territorial limit
the place mentioned in the address for services in India as disclosed in the
application, is situated.
(5)
Every
applications under sub-section (1) shall, be examined by the Registrar in such
manner as may be prescribed.
(6)
Subject to the
provisions of this Act, the Registrar may refuse the application or may accept
it absolutely or subject to such amendments, modification, conditions or
limitations, if any, as he thinks fit.
(7)
In the case of
refusal or conditional acceptance of application, the Registrar shall record in
writing the grounds for such refusal or conditional acceptance and the
materials used by him in arriving at his decision.
Section 12 - Withdrawal of
acceptance
Where, after the acceptance of an application for registration of a
geographical indication but before its registration, the Registrar is
satisfied,
(a)
that the
application has been accepted in error, or
(b)
that in the
circumstances of the case the geographical indication should not be registered
or should be registered subject to conditions or limitations or to conditions
additional to or different from the conditions or limitations subject to which
the application has been accepted, the Registrar may, after hearing the
applicant if he so desires, withdraw the acceptance and proceed as if the
application had not been accepted.
Section 13 - Advertisement of
application
(1)
When an
application for registration of a geographical indication 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.
(2)
Where after
advertisement of an application
(a)
an error in the
application has been corrected; or
(b)
the application
has been permitted to be amended under section 15, the Registrar may in his
discretion cause the application to be advertised again or instead of causing
the application to be advertised again, notified in the prescribed manner, the
correction made in the application.
Section 14 - Opposition to
registration
(1)
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, as the Registrar, on application made to him in such
manner and on payment of such fee as may be prescribed allows, give notice in
writing in the prescribed manner to the Registrar, of opposition to the
registration.
(2)
The Registrar
shall serve a copy of the notice on the applicant for registration and, within
two months from the receipt by the applicant of such copy of the notice of
opposition, the applicant shall send to the Registrar in the prescribed manner
a counter-statement of the grounds on which he relies for his application, and
if he does not do so he shall be deemed to have abandoned his application.
(3)
If the
applicant sends such counter-statement, the Registrar shall serve a copy
thereof on the person giving notice of opposition.
(4)
Any evidence
upon which the opponent and the applicant may rely shall be submitted in such
manner and within the such time as may be prescribed to the Registrar, and the
Registrar shall give an opportunity to them to be heard, if they so desire.
(5)
The Registrar
shall, after hearing the parties, if so required, and considering the evidence,
decide whether and subject to what conditions or limitations, if any, the
registration is to be permitted, and may take into account a ground of
objection whether relied upon by the opponent or not.
(6)
Where a person
giving notice of opposition or an applicant sending a counter-statement after
receipt of a copy of such notice neither resides nor carries on business in
India, the Registrar may require him to give security for the costs of
proceeding in India, the Registrar may require him to give security for the
costs of proceeding before him, and in default of such security being duly
given, may treat the opposition or application, as the case may be, as
abandoned.
(7)
The Registrar
may, on request, permit correction of any error in, or any amendment of, a notice
of opposition or a counter-statement on such terms as he thinks just.
Section 15 - Correction and
amendment
The Registrar may, on such terms, as he thinks just, at any
time, whether before or after acceptance of an application for registration
under section 11, permit the correction of any error or in connection with the
application or permit an amendment of the application:
Provided that it an amendment is made to a single
application referred to in subsection (3) of section 11 involving division of such
application into two or more applications, the date of making of the initial
application shall be deemed to be the date of making of the divided
applications so divided.
Section 16 - Registration
(1)
Subject to the
provisions of section 12, when an application for registration of a
geographical indication has been accepted and either
(a)
the application
has not been opposed and the time for notice of opposition has expired; or
(b)
the application
has been opposed and the opposition has been decided in favour of the
applicant, the Registrar shall, unless the Central Government otherwise direct
register the said geographical indication and the authorised users, if any,
mentioned in the application and the geographical indication and the authorised
users when registered shall be registered as of the date of the making of the
said application and that date shall, subject to the provisions of section 83,
be deemed to be the date of registration.
(2)
On the
registration of a geographical indication, the Registrar shall issue each to
the applicant and the authorised users, if registered with the geographical
indication, a certificate in such form as may be prescribed of the registration
thereof, sealed with the seal of the Geographical Indications Registry.
(3)
the Registrar
may, after giving notice to the applicant in the prescribed manner, treat the
application as abandoned unless it is completed within the time specified in
that behalf in the notice.
(4)
The Registrar
may amend the register or a certificate of registration for the purpose of
correcting a clerical error or an obvious mistake.
Section 17 - Application for
registration as authorised user
(1)
Any person
claiming to be the producer of the goods in respect of which a geographical
indication has been registered under section 6 may apply in writing to the
Registrar in the prescribed manner for registering him as an authorised user of
such geographical indication.
(2)
The application
under sub-section (1) shall be accompanied by a statement and such documents of
facts as may be prescribed and required by the Registrar to determine as to
whether such person is the producer of the goods referred to in that
sub-section and such fee as may be prescribed.
(3)
The provisions
of this Chapter relating to
(a)
the filing and
examination of the application;
(b)
the refusal and
acceptance of registration;
(c)
withdrawal of
acceptance of application;
(d)
advertisement
of application;
(e)
opposition to
registration;
(f)
correction or
error in an amendment of the application; and
(g)
registration, shall
apply in respect of the application and registration of authorised users
referred to in sub-section (1) in the same manner as they apply for the
application for registration and registration of the geographical indication.
Section 18 - Duration, renewal,
removal and restoration of registration
(1)
The
registration of a geographical indication shall be for a period of ten years,
but may be renewed from time to time in accordance with the provisions of this
section.
(2)
The
registration of an authorised user shall be for a period of ten years or for
the period till the date on which the registration of the geographical
indication in respect of which the authorised user is registered expires,
whichever is earlier.
(3)
The Registrar
shall, on application made in the prescribed manner, by the registered
proprietor or by the authorised user and within the prescribed period and
subject to the payment of the prescribed fee, renew the registration of the
geographical indication or authorised user, as the case may be, for a period of
ten years from the date of expiration of the original registration or of the
last renewal of registration, as the case may be (which date is in this section
referred to as the expiration of the last registration).
(4)
At the
prescribed time before the expiration of the last registration of a
geographical indication or the authorised user, as the case may be, the
Registrar shall send notice in the prescribed manner to the registered
proprietor or the authorised user, as the case may be, of the date of
expiration and the conditions as to payment of fees and otherwise upon which a
renewal of registration may be obtained, and, if at the expiration of lime
prescribed in that behalf those conditions have not been duly complied with,
the Registrar may remove the geographical indication or the authorised user, as
the case may be, from the register:
Provided that the Registrar shall not remove
the geographical indication or the authorised user, as the case may be, from
the register, if an application is made in the prescribed form and the
prescribed fee and surcharge is paid within six months from the expiration of
the last registration of the geographical indication or the authorised user, as
the case may be, and shall renew the registration of geographical indication or
the authorised user, as the case may be, for a period of ten years under
sub-section (3).
(5)
Where a
geographical indication or authorised user, as the case may be, has been
removed from the register for non-payment of the prescribed fee the Registrar
shall, after six months and within one year from the expiration of the last
registration of the geographical indication or the authorised user, as the case
may be, on receipt of an application in the prescribed form and on payment of
the prescribed fee, if satisfied that it is just so to do, restore the
geographical indication or the authorised user, as the case may be, to the
register and renew registration of the geographical indication or authorised
user, as the case may be, either generally or subject to such condition or
limitation as he thinks fit to impose, for a period of ten years from the
expiration of the last registration.
Section 19 - Effect of removal
from register for failure to pay fee for renewal
Where a geographical indication has been removed from the register for
failure to pay the fee for renewal, it shall nevertheless, for the purpose of
any application for the registration of another geographical indication during
one year, next after the date of removal, be deemed to be a geographical
indication already on the register, unless the [Registrar or the
High Court, as the case may be,] is satisfied either
(a)
that there has
been no bond fide trade use of the geographical indication which has been removed
within the two years immediately preceding its removal; or
(b)
that no
deception or confusion would be likely to arise from the use of the
geographical indication which is the subject of the application for
registration by reason of any previous use of the geographical indication which
has been removed.
CHAPTER IV EFFECT OF
REGISTRATION
Section 20 - No action for infringement of
unregistered geographical indication
(1)
No person shall
be entitled to institute any proceeding to prevent, or to recover damages for,
the infringement of an unregistered geographical indication.
(2)
Nothing in this
Act shall be deemed to affect rights of action against any person for passing
off goods as the goods of another person or the remedies in respect thereof.
Section 21 - Rights conferred by
registration
(1)
Subject to the
other provisions of this Act, the registration of a geographical indication
shall, if valid, give.
(a)
to the
registered proprietor of the geographical indication and the authorised user or
users thereof to obtain relief in respect of infringement of the geographical
indication in the manner provided by this Act;
(b)
to the
authorised user thereof the exclusive right to the use of the geographical
indication in relation to the goods in respect of which the geographical
indication is registered.
(2)
The exclusive
right to the use of a geographical indication 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 authorised users of geographical indications, which are
identical with or nearly resemble each other, the exclusive right to the use of
any of those geographical indications 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 geographical
indications, but each of those persons has otherwise the same rights as against
other persons as he would have if he were the sole authorised user.
Section 22 - Infringement or
registered geographical indications
(1)
A
registered geographical indication is infringed by a person who, not being an
authorised user thereof,
(a)
uses such
geographical indication 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
geographical indication in such manner which constitutes an act of unfair
competition including passing off in respect of registered geographical
indication.
Explanation 1For the purposes of this clause, "act of
unfair competition" means any act of competition contrary to honest
practices in industrial or commercial matters.
Explanation 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 establishment, the
goods or the industrial or commercial activities, of a competitor;
(iii)
geographical
indications, 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
geographical indication 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 geographical indication relates.
(2)
The Central
Government may, if it thinks necessary so to do for providing additional
protection to certain goods or classes of goods under sub-section (3), by
notification in the Official Gazette, specify such goods or class or classes of
goods, for the purposes of such protection.
(3)
Any person who
is not an authorised user of a geographical indication registered under this
Act in respect of the goods or any class or classes of goods notified under
sub-section (2), uses any other geographical indication to such goods or class
or classes of goods not originating in the place indicated by such other
geographical indication or uses such other geographical indication to such
goods or class or classes of goods even indicating the true origin of such
goods or uses such other geographical indication to such goods or class or classes
of goods in translation of the true place of origin or accompanied by
expression such as "kind", "style", imitation" or the
like expression, shall infringe such registered geographical indication.
(4)
Notwithstanding
anything contained in this section, where the goods in respect of which a
geographical indication has been registered are lawfully acquired by a person
other than the authorised user of such geographical indication, further
dealings in those goods by such person including processing or packaging, shall
not constitute an infringement of such geographical indication, except where
the condition of goods is impaired after they have been put in the market.
Section 23 - Registration to be
prima facie evidence of validity
(1)
In all legal
proceedings relating to a geographical indication, the certificate of
registration granted in this regard by the Registrar under this Act, being a
copy of the entry in the register under the seal of the Geographical
Indications Registry, shall be prima facie evidence of the validity thereof and
be admissible in all courts [before whom]
without further proof or
production of the original.
(2)
Nothing in this
section shall be deemed to affect the right of action in respect of an
unregistered geographical indication.
Section 24 - Prohibition of
assignment or transmission, etc
Notwithstanding anything contained in any law for the time being in
force, any right to a registered geographical indication shall not be the
subject matter of assignment, transmission, licensing, pledge, mortgage or any
such other agreement:
Provided that on the death of an authorised
user his right in a registered geographical indication shall devolve on his
successor in title under the law for the time being in force.
CHAPTER
V SPECIAL, PROVISIONS RELATING TO TRADE MARK AND PRIOR USERS
Section 25 - Prohibition of registration of
geographical indication as trade mark
Notwithstanding anything contained in the Trade Marks Act, 1999, the Registrar
of Trade marks referred to in sections
3 of that Act, 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 geographical indication 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 geographical indication indicates, if use
of such geographical indications 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;
(b)
contains or
consists of a geographical indication identifying goods or class or classes of
goods notified under sub-section (2) of section 22.
Section 26 - Protection to
certain trade marks
(1)
Where a trade
mark contains or consists of a geographical indication 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 geographical indication
under this 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 geographical indication.
(2)
Nothing
contained in this Act shall apply in respect of a geographical indication with
respect to goods or class or classes of goods for which such geographical
indication 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 1st day of
January, 1995.
(3)
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 this 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 geographical
indication registered under this Act has become known to the registered proprietor or authorised user registered
in respect of such geographical indication under this 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 there under by that date, if such
date is earlier than the date on which such infringement became known to such
proprietor or authorised user and such geographical indication is not used or
registered in bad faith.
CHAPTER VI RECTIFICATION
AND CORRECTION OF THE REGISTER
Section 27 - Power to cancel or vary
registration and to rectify the register
(1)
On application
made in the prescribed manner to the [High Court]
or to the Registrar by any
person aggrieved, the [Registrar or the High Court, as the
case may be,]
may make such order as it
may think fit for cancelling or varying the registration of a geographical
indication or authorised user on the ground of any contravention, or failure to
observe the condition entered on the register in relation thereto.
(2)
Any person
aggrieved by the absence or omission from the register of any entry, or by any
entry made in the register without sufficient cause, or by any entry wrongly
remaining on the register, or by any error or defect in any entry in the
register, may apply in the prescribed manner to the [High Court]
or to the Registrar, and
the [Registrar or the High Court, as the case may be,]
may make such order for
making, expunging or varying the entry as it may think fit.
(3)
The [Registrar or the High Court, as the case may be,]
may in any proceeding under
this section decide any question that may be necessary or expedient to decide
in connection with the rectification of the register.
(4)
The [Registrar or the High Court, as the case may be,] of its own motion, may, after giving notice in the
prescribed manner to the parties concerned and after giving them an opportunity
of being heard, make any order referred to in sub-section (1) or sub-section
(2).
(5)
Any order of
the [High Court]
rectifying the register
shall direct that notice of the rectification shall be served upon the
Registrar in the prescribed manner who shall upon receipt of such notice
rectify the register accordingly.
Section 28 - Correction of
register
The Registrar may, on application made in the prescribed manner by the
registered proprietor or the authorised user,
(a)
correct any
error in the name, address or description of the registered proprietor or the
authorised user, as the case may be, of a geographical indication, or any other
entry relating to the geographical indication on the register;
(b)
enter any
change in the name, address or description of the association of persons or of
producers or any ogranisation or authority, as the case may be, who is
registered as proprietor of a geographical indication on the register;
(c)
cancel the
entry of a geographical indication on the register;
(d)
strike out any
goods or class or classes of goods from those in respect of which a geographical
indication is registered from the register, and may make any consequential
amendment or alteration in the certificate of registration, and for that
purpose, may require the certificate of registration to be produced to him.
Section 29 - Alternation of
registered geographical indications
(1)
The registered
proprietor of a geographical indication may apply in the prescribed manner to
the Registrar for leave to add to or alter the geographical indication in any
manner not substantially affecting the identity thereof, and the Registrar may
refuse leave or may grant it on such terms and subject to such limitations as
he may think fit;
(2)
The Registrar
may cause an application under this section to be advertised in the prescribed
manner in any case where it appears to him that it is expedient so to do, and
where he does so, if within the prescribed time from the date of the
advertisement any person gives notice to the Registrar in the prescribed manner
of the opposition to the application, the Registrar shall, after hearing the
parties if so required, decide the matter.
(3)
Where leave is
granted under this section, the geographical indication as altered shall be
advertised in the prescribed manner, unless the application has already been
advertised under sub-section (2).
Section 30 - Adaptation of
entries in register to amend or substitute classification of goods
(1) The Registrar shall not make any amendment of the
register which would have the effect of adding any goods or classes of goods to
those in respect of which a geographical indication is registered (whether in
one or more classes) immediately before the amendment is to be made or
antedating the registration or a geographical indication in respect of any
goods:
Provided that this sub-section, shall not apply when
the Registrar is satisfied that compliance therewith would involve complexity
and that the addition or antedating, as the case may be, would not affect any
substantial quantity of goods and would not substantially prejudice the rights
of any person.
(2)
A proposal so
to amend the register shall be brought to the notice of the registered
proprietor and every authorised user of the geographical indication affected
and advertised in the prescribed manner, and may be opposed before the
Registrar by any person aggrieved on the ground that the proposed amendment
contravenes the provisions of sub-section (1).
CHAPTER VII [APPEALS]
Section 31 - Appeals to the Appellate Board
(1)
Any person
aggrieved by an order or decision of the Registrar under this Act, or the rules
made there under, may prefer an appeal to the [High Court]
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.
(2)
No appeal shall
be admitted if it is preferred after the expiry of the period specified under
sub-section (1):
Provided that an appeal may be admitted after the
expiry of the period specified therefor, if the appellant satisfies the [High Court]
that he had sufficient
cause for not preferring the appeal within the specified period.
(3) [***]
Section 32
[***]
Section 33
[***]
Section 34 - Procedure for
application for notification, etc., before [High Court][21]
(1)
An application for
rectification of the register made to the [High Court]
under section 27 shall be
in such form as may be prescribed.
(2)
A certified
copy of every order or judgment of the [High Court]
relating to a registered
geographical indication under this Act shall be communicated to the Registrar
by the [High Court]
and the Registrar shall
give effect to the order of the Board and shall, when so directed, amend the
entries in, or rectify, the register in accordance with such order.
Section 35 - Appearance of
Registrar in legal proceedings
(1)
The Registrar
shall have the right to appear and be heard
(a)
in any legal
proceedings before the [High Court]
in which the relief sought
includes alteration or rectification of the register or in which any question
relating to the practice of the Geographical Indications Registry is raised;
(b)
in any appeal
to the Board from an order of the Registrar on an application for registration
of a geographical indication or authorised user
(i)
which is not
opposed, and the application is either refused by the Registrar or is accepted
by him subject to any amendments, modifications, conditions or limitations, or
(ii)
which has been
opposed and the Registrar considers that his appearance is necessary in the
public interest, and the Registrar shall appear in any case if so directed
by the Board.
(2)
Unless the [High Court]
otherwise directs, the
Registrar may, in lieu of appearing, submit a statement in writing signed by
him, given such particulars as he thinks proper of the proceedings before him
relating to the matter in issue or of the grounds of any decision given by him
affecting it, or of the practice of the Geographical Indications Registry in
like cases, or of other matters relevant to the issues and within his knowledge
as Registrar, and such statement shall be evidence in the proceeding.
Section 36
[***]
CHAPTER
VIII OFFENCES, PENALTIES AND PROCEDURE
Section 37 - Meaning of applying geographical
indications
(1)
A person shall
he deemed to apply a geographical indication to goods who
(a)
applies it to
the goods themselves; or
(b)
applies it to
any package in or with which the goods are sold, or exposed for sale, or had in
possession for sale or for any purpose of trade or manufacture; or
(c)
places,
encloses or annexes any goods which are sold, or exposed for sale, or had in
possession for sale or for any purpose of trade or manufacture, in or with any
package or other thing to which a geographical indication has been applied: or
(d)
use a geographical
indication in any manner reasonably likely to lead to the belief that the goods
in connection with which it is used are designated or described by that
geographical indication or
(e)
in relation to
the goods uses a geographical indication in any sign, advertisement, invoice,
catalogue, business letter, business paper, price list or other commercial
documents and goods are delivered to a person in pursuance of a request or
order made by reference to the geographical indication as to use.
(2)
A geographical
indication shall be deemed to be applied to goods whether it is woven in,
impressed on, or otherwise worked into, or annexed or affixed to, the goods or
to any package or other thing.
Section 37A. [Adjudication of penalties.
The
Registrar may, by an order, authorise an officer referred to in section 3, to
be adjudicating officer for holding an inquiry and imposing penalty under the
provisions of this Act, in the manner as may be prescribed, after giving a
reasonable opportunity of being heard.
Section 37B. Appeal.
(1)
Whoever aggrieved by an order of the
adjudicating officer under section 37A may prefer an appeal to the appellate
authority, who shall be an officer at least one rank above the adjudicating
officer, within a period of sixty days from the date of receipt of the order,
as the Central Government may by notification authorise in this behalf.
(2)
Every appeal under this section shall be
preferred in such form and manner as may be prescribed.
(3)
An appeal may be admitted after the expiry of
the period of sixty days if the appellant satisfies the appellate authority
that he had sufficient cause for not preferring the appeal within that period.
(4)
No appeal shall be disposed of unless the
appellant has been given a reasonable opportunity of being heard.
(5)
The appellate authority referred to in
sub-section (1) shall dispose of the appeal within sixty days from the date of
filing.
(6)
Notwithstanding anything contained in this
Act, if the person fails to comply with the order of the adjudicating officer
under section 37A or the order of the appellate authority under this section,
as the case may be, within ninety days of such order, he shall, in addition to
the penalty, be punishable with fine of one lakh rupees or imprisonment for a
term which may extend to one year, or with both.]
Section 38 - Falsifying and
falsely applying geographical indications
(1)
A person shall
be deemed to falsify a geographical indication who, either,
(a)
without the
assent of the authorised user of the geographical indication makes that
geographical indication or deceptively similar geographical indication; or
(b)
falsifies any
genuine geographical indication, whether by alteration, addition, effacement or
otherwise.
(2)
A person shall
be deemed to falsely apply to goods a geographical indication who, without the
assent of the authorised user of the geographical indication,
(a)
applies such
geographical indication or a deceptively similar geographical indication to
goods or any package containing goods;
(b)
uses any
package bearing a geographical indication which is identical with or
deceptively similar to the geographical indication of such authorised user, for
the purpose of packing, filling or wrapping therein any goods other than the genuine
goods of the authorised user of the geographical indication.
(3)
Any
geographical indication falsified as mentioned in sub-section (1) or falsely
applied as mentioned in sub-section (2), is in this Act referred to as a false
geographical indication.
(4)
In any
prosecution for falsifying a geographical indication or falsely applying a
geographical indication to goods, the burden of proving the assent of
proprietor shall lie on the accused.
Section 39 - Penalty for
applying false geographical indications
Any person who,
(a)
falsifies any
geographical indication; or
(b)
falsely applies
to goods any geographical indication; or
(c)
makes, disposes
of, or has in his possession, any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a
geographical indication; or
(d)
applies to any
goods to which an indication of the country or place in which they were made or
produced or the name and the address of the manufacturer or person for whom the
goods are manufactured is required to be applied under section 71, a false
indication of such country, place, name or address or
(e)
tampers with,
alters or effaces an indication of origin which has been applied to any goods
to which it is required to be applied under section 71; or
(f)
causes any of
the things above-mentioned in this section to be done, shall, unless he proves
that he acted, without intent to defraud, be punishable with imprisonment for a
term which shall not be less than six months but with may extend to three years
and with fine which shall not be less than fifty thousand rupees but which may
extend to two lakh rupees:
Provided that the court may, for adequate and special
reasons to be mentioned in the judgment, impose a sentence of imprisonment for
a term of less than six months or a fine of less than fifty thousand rupees.
Section 40 - Penalty for selling
goods to which false geographical indication is applied
Any person who sells, lets for hire or exposes for sale, or hires or has
in his possession for sale, goods or things to which any false geographical
indication is applied or which, being required under section 71 to have applied
to them an indication of the country or place in which they were made or
produced or the name and address of the manufacturer, or person for whom the
goods are manufactured or without the indications so required, shall, unless he
proves,
(a)
that, having
taken all reasonable precautions against committing an offence against this
section, he had at the time of commission of the alleged offence no reason to
suspect the genuineness of the geographical indication or that any offence had
been committed in respect of the goods; or
(b)
that, on demand
by or on behalf of the prosecutor, he gave all the information in this power
with respect to the person from whom he obtained such goods or things; or
(c)
that otherwise
he had acted innocently, be punishable with imprisonment for a term which shall
not be less than six months but which may extend to three years and with fine
which shall not be less than fifty thousand rupees but which may extend to two
lakh rupees:
Provided that the court may, for adequate and special
reasons to be mentioned in the judgment, impose a sentence of imprisonment for
a term of less than six months or a fine of less than fifty thousand rupees.
Section 41 - Enhanced penalty on
second or subsequent conviction
Whoever having already been convicted of an offence under section 39 or
section 40 is again convicted of any such offence shall be punishable for the
second and for every subsequent offence, with imprisonment for a term which
shall not be less than one year but which may extend to three years and with
fine which shall not be less than one lakh rupees but which may extend to two
lakh rupees:
Provided that the court may, for adequate and special
reason to be mentioned in the judgment, impose a sentence of imprisonment for a
term of less than one year or a fine of less than one lakh rupees:
Provided further that for the purposes of this section, no cognizance
shall be taken of any conviction made before the commencement of this Act.
Section 42 - Penalty for falsely
representing a geographical indication as registered
(1)
No person shall make any
representation
(a)
with respect to a
geographical indication, not being a registered geographical indication, the
effect that it is a registered geographical indication; or
(b)
to the effect that a
registered geographical indication is registered in respect of any goods in
respect of which it is not in fact registered; or
(c)
to the effect that
registration of a geographical indication gives an exclusive right to the use
thereof in any circumstances in which having regard to limitation entered on
the register, the registration does not in fact give that right.
(2)
If any person contravenes
any of the provisions of sub-section (1), he shall be [liable to penalty of a sum equal to one-half per
cent. of the total sales or turnover, as the case may be, in business or of the
gross receipts in profession as computed in the audited accounts of such
person, or a sum equal to five lakh rupees, whichever is less]
(3)
For the purposes of this
section the use in India in relation to a geographical indication of the words
"registered" geographical indication or any other expression, symbol
or sign like "R.G.I." referring whether expressly or impliedly to
registration, shall be deemed to import a reference to registration in the
register, except
(a)
where that word or other
expression, symbol or sign is used in direct association with other words
delineated in characters at least as large as those in which that word or other
expression, symbol or sign is delineated and indicating that the reference to
registration as a geographical indication under the law of a country outside
India being a country under the law of which the registration referred to is in
fact in force; or
(b)
where that other
expression, symbol or sign is of itself such as to indicate that the reference
is to such registration as mentioned in section (a); or
(c)
where that word is used in
relation to a geographical indication registered under the law of a country
outside India and in relation solely to goods to be exported to that country
for use in that country.
Section 43
[***]
Section 44
[***]
Section 45 - No offence in certain
cases
The
provisions of sections 39, 40 and 41 shall in relation to a registered
geographical indication or authorised user of such geographical indication, be
subject to the rights created or recognised by this Act and no act or omission
shall be deemed to be an offence under the aforesaid sections if.
(a)
the alleged offence relates
to registered geographical indication and the act or omission is permitted
under this Act and
(b)
the alleged offence relates
to a registered geographical indication and the act or omission is permitted
under any other law for the time being in force.
Section 46 - Forfeiture of goods
(1)
Where a person is convicted
of an offence under section 39 or section 40 or section 41 or is acquitted of
an offence under section 39 or section 40 on proof that he acted without intend
or defraud, or under section 40 on proof of the matters specified in section
(a) or section (b) or section (c) or that section, the court convicting or
acquitting him may direct the forfeiture to Government of all goods and things
by means of, or in relation to, which the offence has been committed, or but
for such proof as aforesaid would have been committed.
(2)
When a forfeiture is
directed on a conviction and an appeal lies against the conviction, an appeal
shall lie against the forfeiture also.
(3)
When, a forfeiture is
directed on acquittal and the goods or things to which the direction relates
are of value exceeding fifty rupees, an appeal against the forfeiture may be
preferred within thirty days from the date of the direction, to the court to
which in appealable cases appeal lie from sentences of the court which directed
the forfeiture.
(4)
When a forfeiture is
directed on a conviction, the court, before whom the person is convicted, may order
any forfeited articles to be destroyed or otherwise disposed of as the court
thinks fit.
Section 47 - Exemption of
certain persons employed in ordinary course of business
Where a
person accused of an offence under section 39 proves,
(a)
chat in the ordinary course
of his business he is employed on behalf of other persons to apply geographical
indications, or as the case may be, to make dies, blocks, machines, plates, or
other instruments for making, or being used in making, geographical
indications;
(b)
that in the case which is
the subject of the charge he was so employed, and was not interested in the
goods or other thing by way of profit or commission depend on the sale of such
goods;
(c)
that, having taken all
reasonable precautions against committing the offence charged, he had, at the
time of the commission of the alleged offence, no reason to suspect the
genuineness of the geographical indication; and
(d)
that, on demand made by or
on behalf of the prosecutor, he gave all the information in his power with respect
to the persons on whose behalf the geographical indication was applied, he
shall be acquitted.
Section 48 - Procedure where
invalidity of registration is pleaded by the accused
(1)
Where the offence charged
under section 39 or section 40 or section 41 is in relation to a register
geographical indication and the accused pleads that the registration of the
geographical indication is invalid, the following procedure shall be followed:
(a)
if the court is satisfied
that such defence is prima facie tenable, it shall not proceed with the charge
but shall adjourn the proceeding for three months from the date on which the
plea of the accused is recorded to enable the accused to file an application
before the [High Court] under this Act, for the rectification of the register on the ground that
the registration is invalid;
(b)
if the accused proves to
the court that he has made such application within the time so limited or
within such further time as the court may for sufficient cause allow, the
further proceedings in the prosecution shall stand stayed till the disposal of
such application for rectification;
(c)
if within a period of three
months or within such extended time as may be allowed by the court the accused
fails to apply to the [High Court] for rectification of the register, the court shall proceed with the case
as if the registration were invalid.
(2)
Where before the
institution of a complaint of an offence referred to in subsection (1), any
application for the rectification of the register concerning the geographical
indication in question on the ground of invalidity of the registration thereof
has already been properly made to and is pending before the [Registrar
or the High Court, as the case may be,] the court shall stay the further proceedings in the prosecution pending
the disposal of the application aforesaid and shall determine the charge
against the accused in conformity with the result of the application for
rectification in so far as the complainant relies upon the registration of his
geographical indication.
Section 49 - Offences by
companies
(1) If the person committing an offence under this Act is a company, the
company as well as every person in charge of, and responsible to, the company
for the conduct of its business at the time of the commission of the offence
shall be deemed to be guilty of the offence and shall be liable to be proceeded
against and punished accordingly;
Provided
that nothing contained in this sub-section shall render any such person liable
to any punishment if he proves that the offence was committed without his
knowledge or that he exercised all due diligence to prevent the commission of
such offence.
(2) Notwithstanding anything contained in sub-section (1), where an offence
under this Act has been committed by a company and it is proved that the
offence has been committed with the consent or connivance of, or that the
commission of the offence is attributable to any neglect on the part of, any
director, manager, secretary or other officer of the company, such director,
manager, secretary or other officer shall also be deemed to be guilty of that
offence and shall be liable to be proceeded against and punished accordingly.
Explanation.
For the purposes of this section
(a)
"company" means
any body corporate and includes a firm or other association of individuals; and
(b)
"director", in
relation to a firm, means a partner in the firm.
Section 50 - Cognizance of
certain offences and the powers of police officer for search and seizure
(1) No court shall take cognizance of an offence under section 42 or section
43 or section 44 except on complaint in writing made by the Registrar or any
officer authorised by him in writing:
Provided
that in relation to section (b) of sub-section (1) of section 42, a court shall
take a cognizance of an offence on the basis of a certificate issued by the
Registrar to the effect that a registered geographical indication has been
represented as registered in respect of any goods in respect of which it is not
in fact registered.
(2)
No court inferior to that
of a Metropolitan magistrate or Judicial Magistrate of the first class shall
try an offence under this Act.
(3)
The offences under section
39 or section 40 or section 41 shall be cognizable.
(4)
Any police officer not
below the rank of deputy superintendent of police or equivalent, may, if he
satisfied that any of the offences referred to in sub-section (3) has been, is
being, or is likely to be, committed, search and seizure without warrant the
goods, die, block, "machine, plate, other instruments or things involved
in committing the offence, wherever found, and all the articles so seized
shall, as soon as practicable, be produced before the Judicial Magistrate of
the first class or Metropolitan Magistrate, as the case may be:
Provided
that the police officer, before making any search and seizure, shall obtain the
opinion of the registrar on the facts involved in the offence relating to
geographical indication and shall abide by the opinion so obtained.
(5) Any person having an interest in any article sized under sub-section
(4), may, within fifteen days of such seizure, make an application to the
Judicial Magistrate of the First class or Metropolitan Magistrate, as the case
may be, for such article being restored to him and the Magistrate, after
hearing the application and the prosecution, shall make such order on the
application as he may deem fit.
Section 51 - Costs of defence of
prosecution
In any prosecution under
this Act, the court may order such costs to be paid by the accused to the
complainant, or by the Complainant to the accused, as the court deemed
reasonable having regard to all the circumstances of the case and the conduct
of the parties and the costs so awarded shall be recoverable as if they were a
fine.
Section 52 - Limitation of
prosecution
No prosecution for an offence under this Act
shall be commenced after the expiration of three years next after the
commission of the offence charged or two years after the discovery thereof by
the prosecutor, whichever expiration first happens.
Section 53 - Information as to
commission of offence
An officer of the
Government whose duty it is to take pan in the enforcement of the provisions of
this Chapter shall not be compelled in any court to say whence he got any
information as to the commission of any offence against this Act.
Section 54 - Punishment for
abetment in India of acts done out of India
If any person, being within
India, abets the commission, without India, of any act which, if committed in
India, would, under this Act, be an offence, he may be tried for such abatement
in any place in India in which he may be found, and be punished therefore with
the punishment to which he would be liable if he had himself committed in that
place the act which he abetted.
CHAPTER
IX MISCELLANEOUS
Section 55 - Protection of action taken in
good faith
No suit or other legal
proceedings shall lie against any person in respect of anything which is in
good faith done or intended to be done in pursuance of this Act.
Section 56 - Certain persons to
be public servants
Every person appointed
under this Act shall be deemed to be a public servant within the meaning
of section 21 of the Indian Penal Code (45 of 1860).
Section 57 - Stay of proceedings
where the validity of registration of the geographical indication is
questioned, etc
(1)
Where in any suit for
infringement of a geographical indication the defendant pleads that
registration of the geographical indication relating to plaintiff is invalid,
the court trying the suit (hereinafter referred to as the court), shall,
(a)
if any proceedings for
rectification of the register to the geographical indication relating to
plaintiff or defendant are pending before the Registrar or the [High
Court], stay the suit pending the final disposal of such proceedings;
(b)
if no such proceedings are
pending and the court is satisfied that the plea regarding the invalidity of
the registration of the geographical indication relating to plaintiff or
defendant is prima facie tenable, raise an issue regarding the same and adjourn
the case for a period of three months from the date of the framing of the issue
in order to enable the party concerned to apply to the [High
Court]
for rectification of the register.
(2)
If the party concerned
proves to the court that he has made any such application as is referred to in
section (b) of sub-section (1) within the time specified therein or within such
extended time as the court may for sufficient cause allow, the trial of the
suit shall stand stayed until the final disposal of the rectification
proceedings.
(3)
If no such application as
aforesaid has been made within the time so specified or within such extended
time as the court may allow, the issue as to the validity of the registration
of the geographical indication concerned shall be deemed to have been abandoned
and the court shall proceed with the suit in regard to the other issues in the
case.
(4)
The final order made in any
rectification proceedings referred to in sub-section (1) or sub-section (2)
shall be binding upon the parties and the court shall dispose of the suit
conformably to such order in so far as it relates to the issue as to the
validity of the registration of the geographical indication.
(5)
The stay of a suit for the
infringement of a geographical indication under this section shall not preclude
the court from making any interlocutory order (including any order granting an
injunction, directing account to be kept, appointing a receiver or attaching
any properly), during the period of the stay of the suit.
Section 58 - Application for
rectification of register to be made to [High Court][37]
in certain cases
(1)
Where in a suit for
infringement of a registered geographical indication the validity of the
registration of the geographical indication relating to plaintiff is questioned
by the defendant or where in any such suit the plaintiff questions the validity
of the registration of the geographical indication relating to defendant, the
issue as to the validity of the registration of the geographical indication
concerned shall be determined only on an application for the rectification of
the register and, notwithstanding anything contained in section 27, such
application shall be made to the [High
Court]
and not to the Registrar.
(2)
Subject to the provisions
of sub-section (1), where an application for rectification of the register is
made to the Registrar under section 27, the Registrar may, if he thinks fit,
refer the application at any stage of the proceedings to the [High
Court].
Section 59 - Implied warranty on
sale of indicated goods
Where a geographical
indication has been applied to the goods on sale or in the contract for sale of
any goods, the seller shall be deemed to warrant that the geographical
indication is a genuine geographical indication and not falsely applied, unless
the contrary is expressed in writing signed by or on behalf of the seller and
delivered at the time of the sale of goods on contract to and accepted by the
buyer.
Section 60 - Powers of Registrar
In all
proceedings under this Act before the Registrar,
(a)
the Registrar shall have
all the powers of a civil court for the purposes of receiving evidence,
administering oaths, enforcing the attendance of witnesses, compelling the
discovery and production of documents and issuing commissions for the
examination of witnesses;
(b)
the Registrar may, subject
to any rules made in this behalf under section 87, make such orders as to costs
as he considers reasonable, and any such order shall be executable as a decree
of a civil court;
(c)
the Registrar may, on an
application made in the prescribed manner, review his own decision.
Section 61 - Exercise of
discretionary power by Registrar
Subject to the provisions
of section 64, the Registrar shall not exercise any discretionary or other
power vested in him by this Act or the rules made thereunder adversely to a
person applying for the exercise of that power without (if so required by that
person within the prescribed time) giving to the person an opportunity of being
heard.
Section 62 - Evidence before
Registrar
In any
proceeding under this Act before the Registrar, evidence shall be given by
affidavit:
Provided
that the Registrar may, if he think fit, take oral evidence in lieu of, or in
addition to, such evidence by affidavit.
Section 63 - Death of party to a
proceeding
If a person who is a party
to a proceeding under this Act (not being a proceeding ***
or a court) dies pending the proceeding, the Registrar may, on request, and on
proof to his satisfaction of the transmission of the interest of the deceased
person, substitute in the proceeding his successor in interest in his place,
or, if the Registrar is of opinion that the interest of the deceased person is
sufficiently represented by the surviving parties, permit the proceeding to
continue without the substitution of his successor in interest.
Section 64 - Extension of time
(1)
If the Registrar is
satisfied, on application made to him in the prescribed manner and accompanied
by the prescribed fee, that there is sufficient cause for extending the time
for doing any act (not being a time expressly provided in the Act), whether the
time so specified has expired or not, he may, subject to such conditions as he
may think fit to impose, extend the time and inform the parties accordingly.
(2)
Nothing in sub-section (1)
shall be deemed to require the Registrar to hear the parties before disposing
of an application for extension of time, and no appeal shall lie from any order
of the Registrar under this section.
Section 65 - Abandonment
Where, in the opinion of
the Registrar, an applicant is in default in the prosecution of an application
filed under this Act, the Registrar may, by notice require the applicant to
remedy the default within a time specified and after giving him, if so,
desired, an opportunity of being heard, treat the application as abandoned,
unless the default is remedied within the time specified in the notice.
Section 66 - Suit for
infringement, etc., to be instituted before district court
(1)
No suit,
(a)
for the infringement of a
registered geographical indication; or
(b)
relating to any right in a
registered geographical indication; or
(c)
for passing of arising out
of the use by the defendant of any geographical indication which is identical
with or deceptively similar to the geographical indication relating to the
plaintiff, whether registered or unregistered, shall be instituted in any court
inferior to a district court having jurisdiction to try the suit.
(2)
For the purpose of clauses
(a) and (b) of sub-section (1), a "district Court having
jurisdiction" shall, notwithstanding anything contained in the Code of
Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force,
include a District Court within the local limits of whose jurisdiction, at the
time of the institution of the suit or other proceeding, the person instituting
the suit or proceeding, or, where there are more than one such persons any of
them, actually and voluntarily resides or carries on business or personally
works for gain.
Explanation.
for the purposes of sub-section (2), "person" includes the registered
proprietor and the authorised user.
Section 67 - Relief in suit for
infringement or for passing off
(1)
The relief which a court
may grant in any suit for infringement or for passing off referred to in
section 66 includes injunction (subject to such terms, if any, as the court
thinks fit) and at the option of the plaintiff, either damages or account of
profits, together with or without any order for the delivery-up of the
infringing labels and indications for destruction or erasure.
(2)
The order of injunction
under sub-section (1) may include an ex parte injunction or any interlocutory
order for any of the following matters, namely:
(a)
for discovery of documents;
(b)
preserving of infringing
goods, documents or other evidence which are related to the subject-matter of
the suit;
(c)
restraining the defendant
from disposing of or dealing with his assets in a manner which may adversely
affect plaintiffs ability to recover damages, costs or other pecuniary remedies
which may he finally awarded to the plaintiff.
(3)
Notwithstanding anything
contained in sub-section (1), the court shall not grant relief by way of
damages (other than nominal damages) on account of profits in any case
(a)
where in a suit for
infringement the defendant satisfies the court
(i)
that at the time he
commenced to use the geographical indication complained of in the suit he was
unaware and had no reasonable ground for believing that the geographical
indication of the plaintiff was on the register; and
(ii)
that when he became aware
of the existence and nature of the plaintiffs right in the geographical
indication, he forthwith ceased to use the geographical indication in relation
to goods in respect of which it was registered; or
(b)
where in a suit for passing
off, the defendant satisfies the court
(i)
that at the time he
commenced to use the geographical indication complained of in the suit he was
unaware and had no reasonable ground for believing that the geographical
indication relating to the plaintiff was in use; and
(ii)
that when he became aware
of the existence and nature of the geographical indication relating to the
plaintiff he forth with ceased to use the geographical indication complained
of.
Section 68 - Authorised user to
be impleaded in certain proceedings
(1)
In every proceeding under
Chapter VI or under section 31, every authorised user of a geographical
indication to which such proceedings relate, who is not himself an applicant in
respect of any proceeding under that Chapter or section, shall be made a party
to the proceeding.
(2)
Notwithstanding anything
contained in any other law, an authorised user no made a party to the
proceeding shall not be liable for any costs unless he enters an appearance and
lakes part in the proceeding.
Section 69 - Evidence of entries
to register, etc., and things done by the Registrar
(1)
A copy of any entry in the
register or of any document referred to in sub-section (1) of section 78
purporting to be certified by the Registrar and sealed with the seal of the
Geographical Indications Registry shall be admitted in evidence in all courts
and in all proceedings without further proof or production of the original.
(2)
A certificate purporting to
be under the hand of the Registrar as to any entry, matter or thing that he is
authorised by this Act or the rules to make or do shall be prima facie evidence
of the entry having been made, and of the contents thereof, or of the matter or
things having been done or not done.
Section 70 - Registrar and other
officers not compellable to produce register, etc
The Registrar or any
officer of the Geographical Indications Registry shall not, in any legal
proceedings to which he is not a party, be compellable to produce the register
or any other document in his custody, the contents of which can be proved by
the production of a certified copy issued under this Act or to appear as a
witness to prove the matters therein recorded unless by order of the court made
for special cause.
Section 71 - Power to require
goods to show indication of origin
(1)
The Central Government may,
by notification in the Official Gazette, require that goods of any class
specified in the notification which are made or produced beyond limits of India
and imported into India, or, which are made or produced within the limits of
India, shall, from such date as may be appointed by the notification not being
less than three months from its issue, have applied to them an indication of
the country or place in which they were made or produced, or of the name and
address of the manufacturer or the person for whom the goods were manufactured.
(2)
The notification may
specify the manner in which such indication shall be applied, that is to say,
whether to goods themselves or in any other manner, and the times or occasions
on which the presence of the indication shall be necessary, that is to say,
whether on importation only, or also at the time of sale, whether by wholesale
or retail or both.
(3)
No notification under this
section shall be issued, unless application is made for its issue by persons or
associations substantially representing the interests of dealers in, or
manufacturers, producers, or users of, the goods concerned, or unless the
Central Government is otherwise convinced that it is necessary in the public
interest to issue the notification, with or without such inquiry, as the
Central Government may consider necessary.
(4)
The provisions
of section 23 of the General Clauses Act, 1897 (10 of 1897), shall
apply to the issue of a notification under this section as they apply to the
making of a rule or bye-taw the making of which is subject to the condition of
previous publication.
(5)
A notification under this
section shall not apply to goods made or produced beyond the limits of India
and imported into India, if in respect of those goods, the Commissioner of
Customs is satisfied at the time of importation that they are intended for
exportation whether after transshipment in or transit through India or
otherwise.
Section 72 - Certificate of
validity
If in any legal proceedings
for rectification of the register before the [High Court]
a decision is on contest given in favour of
the registered proprietor, or, as the case may be, authorised user of the
geographical indication on the issue as to the validity of the registration of
the geographical indication or the authorised user, the [High
Court]
may grant a certificate to that effect, and
if such a certificate is granted, then, in any subsequent legal proceeding in
which the said validity comes into question the said proprietor or the
authorised user, as the case may be, on obtaining a final order or judgment in
his favour affirming validity of the registration of the geographical
indication or the authorised user, as the case may be, shall unless the said
final order or judgment for sufficient reason directs otherwise, be entitled to
his full cost charges and expenses as between legal practitioner and client.
Section 73 - Groundless threats
of legal proceedings
(1)
Where a person, by means of
circulars, advertisements or otherwise, threatens a person with an action or
proceedings for infringement of a geographical indication which is registered,
or alleged by the first-mentioned person to be registered, or with some other
like proceeding, a person aggrieved may, whether the person making the threats
is or is not the registered proprietor or the authorised user of the
geographical indication, bring, a suit against the first-mentioned person and
may obtain a declaration to the effect that the threats arc unjustifiable, and
an injunction against the continuance of the threats and may recover such
damages (if any) as he has sustained, unless the first mentioned person
satisfies the court that the geographical indication is registered and that the
acts in respect of which the proceedings where threatened, constituted, or, if
done, would constitute, an infringement of the geographical indication.
(2)
The last preceding
sub-section does not apply if the registered proprietor of the geographical
indication or an authorised user thereof with due diligence commences and
prosecutes an action against the person threatened for infringement of the
geographical indication.
(3)
Nothing in this section
shall render a legal practitioner or a registered geographical indications
agent liable to an action under this section in respect of an act done by him
in his professional capacity on behalf of a client.
(4)
A suit under sub-section
(1) shall not be instituted in any court inferior to a district court.
Section 74 - Address for service
An address for service
stated in an application or notice of opposition shall, for the purposes of the
application or notice of opposition be deemed to be the address of the
applicant or opponent, as the case may be, and all documents in relation to the
application or notice of opposition may be served by leaving them at or sending
them by post to the address for service of the applicant or opponent, as the
case may be.
Section 75 - Trade usages, etc.,
to be taken into consideration
In any proceeding relating
to a geographical indication, the [Registrar or the High Court, as the case may be,]
shall admit evidence of the usages of the
trade concerned and of any relevant geographical indication legitimately used
by other persons.
Section 76 - Agents
Where, by
or under this Act, any act, other than the making of an affidavit, is required
to be done before the Registrar by any person, the act may, subject to the
rules made in this behalf, be done instead of by that person himself, by a
person duly authorised in the prescribed manner, who is.
(a)
a legal practitioner, or
(b)
a person registered in the
prescribed manner as a geographical indications agent, or
(c)
a person in the sole and
regular employment of the principal.
Section 77 - Indexes
There shall
be kept under the directions and supervision of the Registrar,-
(a)
an index of registered
geographical indications,
(b)
an index of geographical
indications in respect of which applications for registrations are pending.
(c)
an index of the names of
the proprietors of registered geographical indications, and
(d)
an index of the names of
authorised users.
Section 78 - Documents open to
public inspection
(1)
The following documents,
subject to such conditions as may be prescribed, be open to public inspection
at the Geographical Indications Registry, namely:
(a)
the register and any
document upon which any entry in the register is based;
(b)
every notice of opposition
to the registration of a geographical indication, application for rectification
before the Registrar, counter-statement thereto, and any affidavit or document
filed by the parties in any proceedings before the Registrar;
(c)
the indexes mentioned in
section 77; and
(d)
such other documents as the
Central Government may, by notification in the Official Gazette, specify:
Provided
that where such register is maintained wholly or partly on computer, the
inspection of such register under this section shall be made by inspecting the
computer print out of the relevant entry in the register so maintained on
computer.
(2) Any person may, on an application to the Registrar and on payment of
such fee as may be prescribed, obtain a certified copy of any entry in the
register or any document referred to in sub-section (1).
Section 79 - Reports of
Registrar to be placed before Parliament
The Central Government
shall cause to be placed before both Houses of Parliament once a year a report
respecting the execution by or under this Act.
Section 80 - Fees and surcharge
(1)
There shall be paid in
respect of applications and registrations and other matters under this Act such
fees and surcharge as may be prescribed by the Central Government.
(2)
Where a fee is payable in
respect of the doing of an act by the Registrar, the Registrar shall not do
that act until the fee has been paid.
(3)
Where a fee is payable in
respect of the filing of a document at the Geographical Indications Registry,
the document shall be deemed not to have been filed at the registry until the
fee has been paid.
Section 81 - Savings in respect
of certain matters in Chapter VIII
Nothing
in Chapter VIII shall
(a)
exempt any person from any
suit or other proceeding which might, but for anything in that Chapter, be
brought against him, or
(b)
be construed so as to
render liable to any prosecution or punishment any servant of a master resident
in India who in good faith acts in obedience to the instructions of such
master, and, on demand made by or on behalf of the prosecutor, has given full
information as to his master and as to the instructions which he has received
from his master.
Section 82 - Declarations as to
title of geographical indication not registrable under the Registration Act,
1908
Notwithstanding anything
contained in the Registration Act, 1908 (16 of 1908), no document declaring or
purporting to declare any title of a person to a geographical indication other
than a registered geographical indication shall be registered under that Act.
Section 83 - Government to be
bound
The
provisions of this Act shall be binding on the Government.
Section 84 - Special provisions relating
to applications for registration from citizens of convention countries
(1)
With a view to
the fulfillment of a treaty, convention or arrangement with any country or a
country which is a member of a group of countries or union of countries or
inter-Governmental organisations outside India which affords to citizens of
India similar privileges as granted to its own citizens, the Central Government
may, by notification in the Official Gazette, declare such country or group of
countries or union of countries or inter-Governmental organisations to he a
convention country or convention countries for the purposes of this Act.
(2)
Nothing
contained in this Act or the Trade Marks Act, 1999 shall prevent a continued
and similar use of geographical indication relating to a country or a country
which is a member of a group of countries or union of countries or any
Inter-Governmental organisations, as the case may be, notified under
sub-section (1) identifying wines or spirits in connection with goods by any
citizen or domiciliary of such country who has used that geographical
indication in continuous manner with regard to such goods or any goods relating
to such goods, as the case may be, in any part of the territory of that country
either
(a)
for at least
ten years preceding the 15th day of April, 1994; or
(b)
in good faith
preceding the date referred to in section (a).
Section 85 - Provision as to
reciprocity
Where any country or a country which is a member of a group of countries
or union of countries or any Inter-Governmental organisation specified by the
Central Government in this behalf by notification in the Official Gazette does
not accord to citizens of India the same rights in respect of the registration
and protection of geographical indications as it accords to its own nationals,
no nationals of such country or a country which is a member of the group of
countries or union or countries or Inter-Govern mental organisation, as the
case may be, shall be entitled
(a)
to apply for
the registration of, or be registered as the proprietor of geographical
indication;
(b)
to apply for
registration or be registered as an authorised user of a geographical
indication.
Section 86 - Powers of Central
Government to remove difficulties
(1) If any difficulty arises in giving effect to the provisions
of this Act, the Central Government may, by order published in the Official
Gazette, make such provisions not inconsistent with the provisions of this Act
as may appear to the necessary for removing the difficulty:
Provided that no order shall be made under this section
after the expiry of five years from the commencement of this Act.
(2)
Every order
made under this section shall, as soon as may be after it is made, be laid
before each House of Parliament.
Section 87 - Power to make rules
(1)
The
Central Government may, by notification in the Official Gazette and subject to
the condition of previous publication, make rules to carry out the provisions
of this Act.
(2)
In particular,
and without prejudice to the generality of the foregoing power, such rules may
provide for all or any of the following matters, namely:
(a)
the matters to
be included in the Register of Geographical Indications under sub-section (1),
and the safeguards to be observed in the maintenance of such register in
computer floppies or diskettes under sub-section (2) of section 6;
(b)
the manner of
incorporation of particulars relating to registration of geographical
indications in Part A under sub-section (2) and the manner of incorporation of
particulars relating to the registration of the authorised users under
sub-section (3) of section 7;
(c)
the
classification of goods and the manner of publication of the alphabetical index
of classification of the goods and the definite territory or locality or region
for the purpose of registration of geographical indications under sub-section
(1) of section 8;
(d)
the form in
which and the manner in which an application for registration of a geographical
indication may be made and the fees which may accompany the application under
sub-section (I) and the particulars to be made in the statement of producers of
goods who proposes to be initially registered with the registration under
section (0 of sub-section (2) of section 11;
(e)
the manner of
publication of advertisement of accepted application, for registration of geographical
indications, etc., under sub-section (1), and the manner of notifying the
corrections or amendments made in the application under sub-section (2) of
section 13;
(f)
the manner in
which and the fee which may accompany an application and the manner of giving
notice under sub-section (1) and the manner of sending counter statement under
sub-section (2) and the manner of submission of evidence and the time therefore
under sub-section (4) of section 14;
(g)
the form of
certificate of registration under sub-section (2) and the manner of giving
notice to the applicant under sub-section (3) of section 16;
(h)
the manner of
applying for registration as an authorised user under subsection (1) and the
manner of submitting statements and documents along with such application and
the fee which may accompany such application under sub-section (2) of section
17;
(i)
the manner of
making application, the time within which such application is to be made and
the fee payable with each application, under sub-section (3) and the time
within which the Registrar shall send notice and the manner of such notice
under sub-section (4) and the form in which and the fee which may accompany an
application for renewal to be made under sub-section (5) of section 18;
(j)
the manner of
making applications under sub-sections (1) and (2) the manner or giving notice
under sub-section (4) and the manner of service of notice of rectification
under sub-section (5) of section 27;
(k)
the manner of
making an application for correction, etc., under section 28;
(l)
the manner of
making an application under sub-section (I), the manner of advertising an
application under sub-section (1), the time and manner of notice by which an
application may be opposed under sub-sections (2) and (3) of section 29;
(m)
the manner of advertisement
under sub-section (2) of section 30;
(n)
*** Clause (n) omitted by The Tribunals Reforms Act, 2021 No. 33 of 2021, s.
22 (w.e.f. 4-4-2021)
(o)
the form in
which an application for rectification shall be made, under sub-section (1) of
section 34;
[(oa) the manner of holding inquiry and imposing penalty
under section 37A;
(ob) the form and
manner of preferring appeal under sub-section (2) of section 37B;].
(p)
the manner of
making an application for review under clause (c) of section 60;
(q)
the time within
which an application is to be made to the Registrar for exercising his
discretionary power under section 61;
(r)
the manner of
making an application and the fee payable therefore under sub-section (1) of
section 64;
(s)
the manner of
authorising any person to act and the manner of registration of a geographical
indications agent under section 76;
(t)
the fee and
surcharge payable for applications and registrations and other matters under
sub-section (1) of section 80;
(u)
any other
matter which is required to be, or may be, prescribed.
(3)
Every rule made
by the Central Government under this Act shall be laid, as soon as may be after
it is made, before each House of Parliament, while it is in session for a total
period of thirty days which may be comprised in one session or in two or more
successive sessions; and if, before the expiry of the session immediately
following the session or the successive sessions aforesaid, both Houses agree
in making any modification in the rule or both Houses agree that the rule should
not be made, the rule shall thereafter have effect only in such modified form
or be of no effect, as the case may be; so, however, that any such modification
or annulment shall be without prejudice to the validity of anything previously
done under that rule.
STATEMENT OF OBJECTS AND REASONS
(1)
At present
there is no specific law governing geographical indications of goods in the
country which could adequately protect the interests of producers of such
goods. Exclusion of unauthorized persons from misusing geographical indications
would serve to protect consumers from deception, add to the economic prosperity
of the producers of such goods and also promote goods bearing Indian
geographical indications in the export market. Unless a geographical indication
is protected in the country of its origin, there is no obligation under the
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) for
other countries to extend reciprocal protection. India would, on the other
hand, be required to extend protection to goods imported from other countries
which provide for such protection. In view of the above circumstances, it is
considered necessary to have a comprehensive legislation for registration and for
providing adequate protection for geographical indications. Hence the Bill.
(2)
The Bill has
the following salient features:-
(a)
definitions of
several important terms like "geographical indication",
"goods", "producers", "package", "registered
proprietor", "authorized user", etc.,
(b)
provision for
the establishment of a Geographical Indications Registry;
(c)
provisions for
the maintenance of a Register of Geographical Indications in two Parts-Part A
and Part B and use of computers, etc., for maintenance of such registers. While
Part A will contain all registered geographical indications, Part B will
contain particulars of registered authorized users;
(d)
registration of
geographical indications of goods in specified classes;
(e)
prohibition of
registration of certain geographical indications;
(f)
provisions for
framing of rules by Central Government for filing of application, its contents
and matters relating to substantive examination of geographical indication
applications;
(g)
compulsory
advertisement of all accepted geographical indication applications and for
inviting objections;
(h)
registration of
authorized users of registered geographical indications and providing
infringement action either by a registered proprietor or an authorized user;
(i)
provisions for
the renewal, rectification and restoration of geographical indications and
authorized user;
(j)
provisions for
higher level of protection for notified goods;
(k)
prohibition of
assignment, etc., of a geographical indication as it is a public property;
(l)
prohibition of
registration of geographical indication as a trade mark;
(m)
appeal against
Registrar's decisions would lie to the Intellectual Property Appellate Board
established under the Trade Marks legislation;
(n)
provision
relating to offences and penalties;
(o)
provision
detailing the effects of registration and the rights conferred by registration;
(p)
provisions for
reciprocity, powers of the Registrar, maintenance of index, protection of
homonymous geographical indications, etc.
(3)
The Bill seeks
to achieve the above objects. The notes on clauses explain the various
provisions of the Bill.