Power to rectify or vary registration

Section 27 of the Trademarks Act, 1999 describes rectification and correction in the Register of Geographical indications. The registrar and Appellate Board has concurrent jurisdiction to entertain applications from person aggrieved for rectification, cancellation or varying registration of a geographical indication or authorized user on the basis of any contravention or absence to observe the condition entered on the register.

The registrar or the Appellate Board has also jurisdiction to entertain application for rectification by an aggrieved person on the following grounds:

(i) The register suffers from the absence or omission of an entry.

(ii) The entry made is without sufficient cause.

(iii) The entry made wrongly remains on the register.

(iv) There is an error or defect in any entry.

The tribunal, i.e. the Registrar or the Appellate Board, may fix and ask any question that may be mandatory or expedient to decide in connection with the rectification of the register.

The tribunal may, of its own decision, after giving notice to the parties concerned and after providing them an opportunity of being heard make any order cancelling or varying the registration of a geographical indication or authorized user or make order for making, expunging or varying the entry as it may think fit.

Any order of the Appellate Board rectifying the register will be served on the registrar who will rectify the register accordingly.

Correction of register-section 28

The Registrar may, on application made in the prescribed manner by the registered proprietor or the authorized user, may:

1. a) Rectify any mistake in the name, address or description of the registered proprietor or the authorized user, as the case may be, of a geographical indication or any other entry relating to geographical indication on the register.

(b) Include any alteration in the name, address or description of the association of persons or of producers or any organization or authority, as the case may be, who is registered as proprietor of the geographical indication on the register.

(c) Cancel the entry of a geographical indication.

(d) Strike out any goods for which the geographical indication is registered, and may make any consequential amendment or alteration in the certificate of registration. For the above purpose, he may require the certificate of registration to be produced to him.

Alteration of registered geographical indications-section 29

The registered proprietor may apply to the registrar to add to or alter the geographical indication in any manner not substantially affecting the identity thereof.

The Registrar may advertise the application for amendment of a geographical indication it it is considered expedient to do so. Any person may oppose the application. The registrar, may after hearing the parties if so required decide the matter. Where the amendment is allowed the geographical indication as amended will be advertised in the journal if it has not been already advertised.

Adaptation of entries in register to amend or substitute Classification of goods- section 30

Where the classification of goods has been changed amendment of the class or classes will have to be made to give effect to the new classification. Registrars of Trademarks will not entry any amendment of the register which will have the effect of adding any goods or classes of goods to those in respect of which the geographical indication is registered. When the registrar is satisfied that compliance with the new classification would involve complexity and that the addition on antedating would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person he will make the amendment. A proposal to amend the register will be brought to the notice of the registered proprietor and every authorized user affected and advertised in the journal. The proposed amendment may be opposed by any person aggrieved on the ground that the proposed amendment contravened the provisions of sub-section (1) of section 30.

Additional Protection of certain goods

The Central Government may provide additional protection to certain goods or classes of goods, by notification in the official Gazette. If a person who is not an authorized user of a registered geographical indication in respect of the goods for which it is registered, uses such registered geographical indication in relation to goods originating from a different place he is an infringer of the registered geographical indication. This is so even if he uses the true origin of such goods, or uses the other geographical indication or accompanied by expressions such as ‘kind’, ‘style ‘imitation’ or the like expression.

Rules 77 to 81 provide the procedure relating to additional protection for goods notified under section 22(2). An application for additional protection should be filed in Form G 1-9 accompanied by the fee in triplicate along with a -statement of case and a copy of the notification issued. The application should be made jointly by the registered proprietor of the geographical indication in India and by all the producers of the geographical indication whose name has been entered as authorized user in Part B.

The Registrar on receipt of the application will examine whether there are measurable attributes to the particular geographical indication in relation to the goods in question with special regard to the reputation of the goods on a global scale, which requires the additional protection envisaged under section 22(2) be conferred against usurpation or limitation of the geographical indication even where the true origin of the goods or classes of goods is indicated or if the registered geographical indication is used in translation form or is accompanied by terms such as ‘kind’, ‘type’, ‘style, “imitation” or other like expressions.

If on consideration of the application or any other matter which the applicant may or may be required to furnish the Registrar of trademark has any objections to the acceptance of the application or proposes to accept subject to conditions the Registrar will communicate the same to the applicant and offer him an opportunity of being heard.

The decision of the Registrar after a hearing or without hearing if the applicant does not want it, will be communicated to the applicant in writing and if the applicant intends to appeal he may within two months request the Registrar requiring to state in writing the grounds and the materials used by him in arriving at his decision.

Where the Registrar decides to allow the geographical indication in respect of which addition protection is to be granted as envisaged in section 22(2) he shall enter in the register, a summary of the grounds and the materials used by him in arriving at his decision to accord additional protection to the notified goods in respect of the relevant geographical indication application.

The entry is Part A of the Register should contain the date of application for additional protection, the name, description and principal place of business in India of the registered proprietor and if they do not carry on a business in India their address for service in India.

Goods bearing registered geographical indication lawfully acquired. Section 22(4)

Where the goods bearing a registered geographical indication are lawfully acquired by a person other than an authorized user further dealings in those goods by such person including processing or packaging, will not constitute an infringement of registered geographical indication, except where the condition of goods is impaired after they have been put in the market.

Appeals to the Appellate Board-section 32, rule 98

Any person aggrieved by an order or decision of the Registrar under the Act or the rules may prefer an appeal to the Appellate Board within three months from the date of communication from the Registrar of trademark of the order or decision. An appeal filed beyond the three months may be admitted if the applicant satisfies the Appellate Board that he had sufficient cause for not preferring the appeal within the specified period.

An appeal should be in prescribed form verified in the prescribed manner. It should be accompanied by a copy of the order or decision and the prescribed fees. A copy of every application to the Appellate Board should be served on the Registrar, Rule 98(2).

Bar of jurisdiction of courts- section 32

No court or other authority will have jurisdiction to entertain appeals from the Registrar’s order or decision.

Procedure before the Appellate Board-section 33

Since the Appellate Board constituted under the Trade Marks Act 1999 is also the appellate board for the purpose of geographical indication the procedure laid down in section 84(2) to (6), sections 87,92, 95 and s. 96 of the Trademarks Act will apply to the Appellate Board in discharging its function under the Geographical Indications of Goods (Registration and Protection) Act as they apply to it in the discharge of its function under the Trade Marks Act 1999.

These provisions are:

Section 84(2)-Constitution of a Bench and the place where it will sit as notified by the Central Government in the official gazette. Section 84(3)(a) Chairman’s power to discharge the functions of any other member of a bench.

(b) Chairman’s power to transfer a member from one bench to another bench.

(c) Chairman’s power to authorize any other member appointed to one bench to discharge also the functions of any other member of any other bench.

Section 84(4) – In this section any bench are constituted the Central Government may, from time to time by notification, make provisions as to the distribution of the business of the appellate board between the benches and specially mentions the matters which may be dealt with by each bench.

Section 84(5) – If any question arises as to whether any matter falls within the purview of the business allocated to a bench the decision of the chairman will be final.

The expression ‘matter’ includes an appeal under section 91 (i.e. appeal from the decision of the Registrar).

Section 84(6)-If the members of a bench differ in opinion on any point, they shall make a reference to the chairman, who will either hear the case himself or refer the case for hearing by one or more of the other members and the question will be decided by the majority of the members who have heard the case, including those who heard it first.

Section 87-Circumstances in which the Vice-Chairman or senior most member will act as Chairman or discharge his functions.

Section 92 – Procedure and powers of the Appellate Board.

Section 95 – Conditions as to making interim orders.

Section 96 – Power of Chairman to transfer cases from one bench to another.

Procedure before Appellate Board in respect of application etc., before Appellate Board-section 34, Rule 65

An application for rectification of the register made to the Appellate Board under section 27 must be made in the prescribed form. A certified copy of every order or judgment of the Appellate Board relating to a registered geographical indication will be communicated to the registrar by the Appellate Board and the Registrar will give effect to the order of the Board and will, when so directed, amend the entries in, or rectify, the register in accordance with such order. For more clarification about Trademark Registration in Cochin, kindly visit our website and feel free to contact us. We Solubilis assisting you in a right way. Thanks for reading!!!