Withdraw the application of Geographical Indications before Registration
Withdraw the application of Geographical Indications before Registration
Subject to the provisions of section 12 which empower the Registrar to withdraw acceptance of an application before the registration of the GI when an application for registration has been accepted and the same has not been opposed within the prescribed time or the application was opposed but the opposition was dismissed by the Registrar, the Registrar is bound to register the GI, unless the Central Government otherwise directs and subject of course to the compliance of any official requirements of the Registrar in respect of payment of fees or filing of representations of the GI, etc.,
Date of registration
In terms of section 16(1), when a GI is registered, it will be registered as of the date of making of the application and that date shall, subject to the provision of section 85, be deemed to be the date of registration before it withdraw. In Tavener Rutledge Ltd. Versus V. Spector’s Ltd., case, it was held that since the date of registration related back to the date of application, the infringement action commenced by the proprietor was in order even though the formal registration was affected after the commencement of the proceedings by the plaintiff.
Issue of registration certificate
Sub-section (2) provides that on the registration of a GI, the Registrar shall issue to the applicant and the authorized users, if registered, a certificate in the prescribed form of the registration thereof, scaled with the seal of the Geographical Indications Registry. Depending upon the GI and its size, either the GI is affixed or printed on the certificate itself or annexed to the certificate of trademark registration. In accordance with the practice of the Registry and so enacted in Rule 55(3), the certificate contains a remark that it is not for use in legal proceedings or for obtaining registration abroad. For this purpose, the registered must obtain a separate legal certificate on an application made on Form GI-7, on payment of prescribed fees. Since the registration certification does not contain details regarding conditions and limitations governing the registration, renewal of registration, changes or corrections made in the register, etc. the rules do not permit the registration certificate itself to be used in legal proceedings. The certificate merely serves as an official record of registration of GI.
In case the registered proprietor desires, he may file a request on Form GI-7 together with the prescribed fees for issue of a duplicate or for further copy of the certificate of trademark registration. An uncounted representation of a geographical indication exactly as shown in the form of application for registration thereof at the time of registration shall accompany such request.
Non-completion of registration within 12 months
Sub-section (3) which corresponds in identical terms to the provision contained in sub-section (3) of section 23 of the Trademarks Act, 1999, provides that if registration is not completed within 12 months from the date of application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant, treat the application as abandoned unless it is completed within the time specified in the notice. In practical terms, the trademark registration is never completed in 12 months. Therefore, the question of abandonment of the application generally arises only in the event of default on the part of the applicant to comply with official requirements. In such cases, the Registrar is required to issue a notice (on Form O-1) calling upon the applicant to remedy any deficiency or default and giving him 21 days’ notice before which the applicant should comply with the official requirements or otherwise the application would be liable to be treated as abandoned. Such notices are sent under Certificate of Posting and will be sent to the applicant’s designated address or to the applicant’s designated address or to the applicant’s agent, with a copy thereof to the applicant. If the applicant requires more time, it id open to him to seek an extension of time by filing a request on Form GI-9 together with the prescribed fees. Failure to comply either the official requirements or respond to the O-1 notice, without seeking an extension of time will result in the abandonment of the application. In such cases, only a fresh application will have to be made for registration of GI. It is to be noted that under section 64 of the Act, the Registrar is empowered to extend the time for doing any act, not being a time expressly provided in the Act, subject to such condition as he may think fit to impose. The Registrar, if satisfied, that the circumstances are such as to justify the extension of the time applied for, may extend the time and notify the parties accordingly.
Abandonment- withdraw of Registrar’s decision
If the applicant is serious in prosecuting his application and with no intention to abandon it, as an alternative to filing of a fresh application, it is open to him to file an application on Form GI-7 for review of the Registrar’s decision abandoning the application, setting out the grounds in detail in a statement to be annexed to the request. The GI application for review has to be filed within a period of one month from the date of the decision or within such period not exceeding one month thereafter as the Registrar may, upon request, allow.
Death of application before GI is registered
In case of death of any applicant for registration of a GI after an application is filed and before the mark is registered, on proof of applicant’s death and on proof of the transmission of the interest of the deceased person, the Registrar may substitute or withdraw in the application his successor in interest in place of the name of such deceased applicant. The application will proceed thereafter as per law.
Entry in the Register
The entry in respect of a registered geographical indication in the register shall contain inter alia the following particulars:
- Registration number and date of application and date of actual registration
- Name of the registered proprietor
- Address or the principal place of business together with an address for service in India
- Trade or business or other description of the proprietor
- Class nor classes in which registered
- Goods and services according to which the GI is registered
- Conditions and limitations of registration before withdraw.
- Appropriate office of the GI Registry
- Graphic representation of the registered GI and any subsequent alterations effected thereto being separately shown
- Summary of particulars furnished under rule 32
- Entries pertaining to rectification or cancellation or correction of any entry in the register.
- Any other matters concerning the registration.
Amendment of the Register or registration certificate
Sub-section (4) empowers the Registrar to amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake. There is no specific procedure prescribed for this purpose. However, the registered proprietor may file a request on Form GI-5 or simply write a pointing out the errors to be corrected, and requesting Registrar to carry out such corrections in the register or the certificate of registration, or both. The Registrar may require the return of the certificate for the purpose. The Registrar may also take sue moto action in this regard. Section 28(a) empowers the Registrar, on application made on Form GI-5, by the registered proprietor or the authorized user, to correct any error in the name, address or description of the registered proprietor or the authorized user, as the case may be, or any other entry relating to the geographical indication on the register.
Registration gives statutory right
Registration gives statutory right and better protection to the Geographical indication, and would enable the proprietor to obtain withdraw in respect of infringement of the GI, as provided in the Act. Where the proprietor has already filed an action for passing off, the exercise of his common law right before registration, by reason of registration of GI during the pendency of the suit, he would be able to enlarge the scope of the suit to include an action for infringement.
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