Rights conferred by registration of a geographical indication
Rights Conferred by registration
This section sets out the rights conferred by registration of a geographical indication. Once registered, a geographical indication shall, if valid give both to the registered proprietor and all authorized users whose names have been entered in Part a and Part B of the register, the right to obtain relief in respect of infringement of the Geographical Indication in the manner provided in the Act. However, the authorized users alone will have the exclusive right to use the GI in relation to the goods in respect of which it is registered. However this exclusive right of the authorized users would be subject to the conditions and limitations to which the registration is subject and also where there are two or more authorized users, the rights would be co-equal.
The ingredients of the section are:
- Registration, if valid, gives to the registered proprietor and the authorized users exclusive right to the use of the GI in relation to the goods in respect of which it is registered.
- Exclusive right is subject to any conditions and limitations entered in the register.
- Where two or more authorized users are registered for identical or nearly resembling GI, the exclusive right does not operate against each other.
- The rights are subject to other provisions of the Act.
Exclusive rights to use of a Geographical Indication – Limited to specific goods
The exclusive right to the use of a GI is limited to the goods in respect of which the GI is registered, falling in one or more of the classes in the Fourth Schedule. The goods mentioned in the Fourth Schedule only provide the means by which the general content of the numbered international classes can be quickly identified. They correspond to the major content of each class and are not intended to be exhaustive in accordance with the international classification of goods. As observed by Farwell J., the various classes in which the various articles are divided by the Trademarks Act are, in, many cases extraordinary wide. There are included in one class all kinds of articles which in themselves differ widely from each other, but which are included because they have common source, are made from the same kind of material or some such reason as that is a person chooses to register a mark in a class which is a wide one, without limiting it an any way at all, he may find that he does not get protection for the whole class, as he may not have the monopoly of the mark in connection with some of the goods or articles which come within that class. In cases where the mark is fact been used by the registered owner in connection with some of the goods and no others, that protection may not extend to prevent other persons using the mark in connection with the articles in the same class, so long as they are clearly different articles, easily distinguishable from one another. On the question of registrability of marks for specific goods, not particularly mentioned in the Fourth Schedule to the Rules, it has also been held by the Supreme Court: “The class mentioned in the Fourth Schedule may subsume or comprise a number of goods or services which are separately identifiable and which are not goods (or services) of the same description as commonly understood in trade or in common parlance… there are number of distinctly identifiable goods (or services) which are marketed separately and also used differently. In our view it is not only permissible but it will be only just and proper to register one or more articles under a class or genus if in reality registration only in respect of such articles are intended, by specifically mentioning the names of such articles and by indicating the class under which such article or articles are to be comprised”. Registration of mark for a class as a whole, unless the proprietor intends to use the mark in respect of all the goods or services falling in the class, is discouraged by the Registrar.
The words “if valid” circumscribe the rights of the proprietor. It is to be noted that section 23 explicitly enacts that in all legal proceedings relating to GI registered under this Act, the fact of registration of GI shall be prima facie evidence of the validity thereof. At the same time under section 67 in any suit for infringement of a GI, the defendant may plead that the registration of the plaintiff’s GI is invalid. In that case the proceedings in the matter will be governed by section 57 and 58 of the Act. In other words, the validity of registration of a GI is to be considered only in rectification proceedings.
Conditions and limitations of registration
Where a registration is subject to any conditions or limitations as advertised in the journal and as subsequently entered in the register, the exclusive right arising out of the registered GI will be naturally subject to those conditions and limitations. The conditions or limitations may be as follows:
- Variation condition, where the proprietor has agreed that the name and description of goods appearing on the mark will be varied when the GI is used in relation to goods covered by the specification, other than those mentioned in the label.
- Condition that the registered GI shall not be used in respect of certain specific goods.
- Blank space condition requiring that any blank space in the label shall be occupied only by matter of a non-distinctive nature.
- Limitation condition as to the area within which the registration is to operate. For example, limitation is imposed as “goods for sale in the State of…”.
Reliefs in respect of infringement of GI
Section 67 of the Act provides for the reliefs which a court may grant in any suit for infringement or passing off, which includes injunction and at the option of the plaintiff, either damages or account of profits, together with or without any order for the delivery of the infringing labels and indications for destruction or erasure. Injunction is an order of the Court to restrain the defendant from doing or to do a particular act or thing. In granting or refusing injunction, the court generally takes into account where the plaintiff has made out a prima facie case and the party in whose favor lies the balance of convenience.
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