Infringement of Registered Geographical Indications

This section lays down the law relating to infringement of registered Geographical indications. The expressions “registered” and “Geographical Indication” are defined respectively in section 2 (1)(m) and 2(1)(e) of the Act.

Circumstances when a GI is infringed

 infringement

A registered Geographical Indication is infringed by a person who, not being the registered proprietor or authorized user, uses such indication on the goods or suggests that such goods originate in some other geographical area other than the true place of origin of the goods which misleads the public. A geographical indication is also infringed by any use that constitutes an act of “unfair competition” which term is elaborated in explanations 1 and 2. This provision seeks to give effect to Article 22(2) (b) of TRIPS Agreement which requires that the members shall “provide the legal means for interested parties to prevent any use which comprises an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967). A geographical Indication is also infringed by a person who, not being the registered proprietor or an authorized user uses another Geographical indication to the goods which although literally true as to the territory, region or locality in which the goods originate, falsely represent to the public that the goods originate, falsely represent to the public that the goods originate in the region, territory or a locality in respect of which such registered Geographical Indication relates. Article 22(4) of TRIPS Agreement mandates that the production of geographical indication must be applied even when the GI id “literally true as to the territory, region or locality in which the goods originate in another territory”. Section 22(1) (c) gives effect to this mandate.

Additional protection to certain goods

Sub-section (2) empowers the Central Government to notify such goods or classes of goods where a higher level of protection is to be provided. In terms of Article 23(1) of the agreement on Trade Related Aspects of Intellectual Property (TRIPS), India is obliged to prevent the use of Geographical Indication that identifies wines or spirits not originating in the place indicated by the GI, even where the true place of origin of goods is indicated or where the GI is used in converted from with respect to the terms such as “kind”, “type”, “style”, “imitation” or the like. The Paris Convention contains no similar provision, though the Lisbon Agreement for Protection of Appellations of Origin requires that the protection must be ensured against usurpation or imitation of the GI even if the true origin of the product is indicated or if the appellation is used in converted from with respect to the terms such as “kind”, “type”, “imitation” or the like. This seems to apply not only to wines and spirits, as in TRIPS Agreement, but generally to all goods. Though Article 23 of TRIPS is confined to giving additional protection to “wines & spirits”, sub-section (3) of the Indian GI Act seeks to extend the above concept not merely to wines but also to goods of national interest on a case to case basis. Probably this has been done on the basis of Article 24 of TRIPS Agreement, which mandates the member states “to enter into negotiations aimed at increasing the protection of individual indications”. It is not clear whether such negotiations have been entered into at all. Nevertheless, it seems to be an open question whether the terminology “increasing the protection” used in TRIPS text is to be understood to mean increasing the level of protection to “wines & spirits” referred to in Article 23 or expanding the scope of protection to include goods other than wines & spirits. The latter view would perhaps be in consonance with the Lisbon Agreement. At the same time it is to be noted that under Article 24(4) of TRIPS agreement, it is not obligatory on a member state to prevent continued and similar use of a particular GI of another member in connection with wines and spirits by nationals who have used that GI in a continuous manner with regard to the same or related goods in the territory of that member either (a) for at least 10 years preceding 15 April, 1994 or (b) in good faith preceding that date. Apparently, on this basis, in the United States which provides higher level of protection for wines under a system of “certificate of label approved” under Federal Alcohol Administrative Act, well known as GIs o European origin, including “Burgundy”, “Champagne”, “Port”, “Sherry” etc., which are classified as “semi-generic names” have been authorized for use in the United States, if “the correct place of origin is directly conjoined to the name”.

Sub-section (4)

The sub-section enacts, by way of an exception, that where the goods in respect of which a geographical indication is registered, are lawfully acquired, further dealing in such goods shall not constitute an infringement, unless the condition of the goods are impaired after they have been put in the market. The above law corresponds in principle to the provisions contained in sub-section (3) and (4) of section 30 of the Trademarks Act, 1999.

Registered Geographical Indications

Registration gives a statutory right and remedy for the infringement of the GI. Section 20(1) makes it clear that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered GI, although it is open to him to institute an action for passing off under the common law. Therefore, for the purpose of instituting infringement proceedings in terms of Section 20, the GI should be a registered GI. Section 22(1) uses the phrase “a registered geographical indication is infringed”. The expressions “registered” and “geographical indication” are defined in sections 2(1) (m) and 2(1) (e) respectively. The expression “registered geographical indication” should be interpreted in the same manner as the expression “registered trademark” is defined in the Trademarks Act, 1999, to mean “a trademark which is actually on the register and remaining in force”. The mere presence of a GI in the register would not mean that the GI is in force; for that purpose, the GI has to be renewed within the prescribed time in accordance with section 18. Registration not renewed and lapsed, but not removed physically owing to administrative delay in the process would not enable the GI to the considered to be a registered GI. It is a requirement of law that a registration is to be periodically renewed under Section 18 in order to be kept in force. Under the Act, the registration and renewal is for a period of ten years. If the registration is not renewed for failure to pay the fee for renewal within the prescribed period or within the grace period also, and consequently the registration has expired, the registration cannot be said to be in force or be considered as a “registered GI” for purpose of section 22. The GI will be considered, as enacted under the Trademarks Act, to “remain in force” only if on the date the suit for infringement is filed, the provisions of section 25 are complied with by payment of renewal fee, if any, and the GI stands duly renewed.

In relation to the goods in respect of which the GI is registered

The exclusive right to the use of the GI is in relation to the goods in respect of which the GI is registered. It will follow that if the defendant’s use of the GI is not in dependence of someone any of the goods carried by the GI registration, an infringement action may not lie. In such cases, the potion for the plaintiff is a passing off action. Section 2(3) (b) enacts that unless the context otherwise requires, any reference “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, on in any physical or in any other relation whatsoever, to such goods.

Uses a geographical Indication-Interpretation

For the purpose of section 22, the use of an geographical indication contemplated, as defined in section 2(3)(1) and (b) of the Act, would cover  the use of a printed or other visual representation of the geographical indication and the use of the GI upon, or in any other relation whatsoever, to such goods. The principles evolved in trademark cases could apply suitably in dealing with infringement relating to geographical Indications. Registration does not qualify the use of a mark. If it is to be the notification to the purchaser’s view, it must be either impressed upon the goods or so accompany the goods as to produce that effect upon the purchaser, e.g., packing case.

Use of a trademark” means, not what the person who uses has in own mind about it, not what he has registered in a foreign country but what the public would understand when the trademark or so called trademark is impressed upon the goods or upon some wrapper or case consisting the goods, to be the trademark. Not mere use of it, but use of it in a particular way and with a specific result.  You do not use a trademark by advertising it in the newspaper. It is only putting it on your goods, so that when your goods are sold in the market, there is the distinguishing mark. Use in a circular only was not use upon or in connection with goods within the meaning of the Act. Words used to describe contents of a packet cannot become trademark for goods. By definition of a trademark in the Act, it has to be used or proposed to be used upon or in connection with the goods or services and this does not, generally, speaking, include a newspaper advertisement. The use of a mark in advertising media must be concurrent with the placing of the goods on the market if it is to be regarded as a trademark within the meaning of this section. Advertisement distinguished from trade is nothing. If you have the trade, advertisement associates the trade, but to say that a man can, by advertising alone, make his name known in connection with particular goods so as to advise him a monopoly of the goods seems to be untenable as a proposition. Mere use of a trademark in a catalog was not use of the trademark. Serious of advertisements benefiting the mark as part of an introductory campaign prior to putting the goods on the market under the mark would be considered to be use of the mark in the course of trade, not upon the goods or in physical relation thereto but it would be in “other relation thereto”. The point being that it would be used in the course of trade in those goods albeit in advertisements.

Plaintiff’s action must be prompt

It is essential that the registered proprietor or the authorized user of a registered GI should be prompt in taking infringement action, wherever required in order to protect and enforce his industrial property right. The very life of a trademark (or GI) depends upon the promptitude with which it is vindicated. It is not necessary to plead the use of the registered trademark (or GI). Merely threading a person in cases of this kind, without taking proceedings, is not sufficient if the plaintiff really does stand by and allow a man to carry on business in the manner complained of to acquire reputation and expend money, he cannot then after a long lapse of time turn round and say that the business ought to be stopped. Delhi high Court has considered at length the question of delay and has held that delay will not defeat statutory rights.

Defense of Estoppel

The doctrine of estoppel can only be invoked to promote fair dealings. Where the infringement is deliberate and willful and the defendant acts fraudulently with knowledge that he is violating plaintiff’s rights, essential elements of estoppel are lacking and in such a case, the protection of plaintiff’s rights by injunction relief never is properly denied. Where the plaintiff, however, is guilty of acquiescence, different consideration may apply. Acquiescence may mean an encouragement by the plaintiff to the defendant to use the infringing mark. It is as if the plaintiff wants the defendant to be under the belief that the plaintiff does not regard the action of the defendant as being violates of the plaintiff’s rights. Furthermore, there should be a tacit or an express ascent by the plaintiff to the defendants using the mark and in a way encouraging the defendants to continue with the business. In such a case, the infringer acts upon an honest mistaken belief that he is not infringing the trademark of the plaintiff, and if, after a period of time, when the infringer has established the business reputation, the plaintiff turns round and brings an action for injunction, the defendant would be entitled to raise the defense of acquiescence. Acquiescence cannot be inferred merely by reason of that fact that the plaintiff has not taken any action against the infringement of its rights.

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