Application procedure for registration
Unlike an application for registration of trademark, where any person may apply for registration, an application for registration of Geographical indication can be made only by an “association of persons or producers or any organisation or authority accepted by or established under any law for the required time duration being enforce to producing the interest of the producers of the concerned goods, who are honestly wants to registering a geographical indication by using the procedure by the use of related goods”. The apex bodies dealing with particular goods like the Coffee Board, Tea Board, Spices Board etc., which look after the interests of the producers of such goods as also the trademark concerned would have to initiate the procedure for filing an application and registration of the geographical indication.
Section 11(1) enacts that “Any association who are really wants to registering a GI in relating to such kind of appropriate goods shall apply in notify to the Registrar in such form and accompanied by such fees and procedure and duration of registration as may be prescribed for registration of the Geographical indication”.
The following documents are to be filed : (Section 11(2), read with Rule 32)
- Prescribed Form GI-1 in triplicate (with 5 additional representation of GI)
- Official fee of Rs.5000/-
- Statement of case showing ” as the geographical indication provides to delegate or nominate the appropriate goods as integrating from the concerned territory of the country or region or the particular 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 territory, region or locality, as the case may be.
- the class of goods to which the GI relates shall apply.
- The geographical location map of the territory of the country or region or locality in the country in which the goods or services are being manufactured under the procedure of registration.
- The procedure regarding the appearance of the Geographical Indication as to whether it is compromised of the words or figurative elements or both. One representation is to be fixed in the space provided in the application form and five identical representations of GI, indicating the specification and class of goods for which trademark registration is sought, the name and address of the applicant, his agent, if any, the period of use and signed by the applicant or agent.
- A statement containing such kind of particulars of the producers of the appropriate goods, if any, proposed to be initially registered with the registration of the Geographical indication as mentioned in the procedure.
Single application for more than one class
As in the new Trademarks Act, 1999, the Geographical indications Act also allows the filing of a single application for registration of the same particular geographical indication for different classes of goods. However, the fees payable therefor shall be in respect of each such class of goods. The prescribed fee may be paid by cash/ cheque/ demand draft made payable to the Registrar at the appropriate office as mentioned in the procedure.
Where the application to be filed
Sub-section (4) of section 11 enacts that the application for trademark registration shall be filed ” in the office of the Geographical Indication 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”. However, “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 GI Registry within whose territorial limit the place mentioned in the address for service in India as disclosed in the application, is situated, as per the procedure”. In other words, in a case where neither the applicant nor any of the association of persons or producers, as the case may be, has a principal place of business in India, the place mentioned in the address for service will determine the appropriate office with reference to the procedure.
Further procedure – Acknowledgement and Numbering
The receipt of e every application shall be acknowledged by way of return of one of the additional representations of GI filed by the applicant , with his application as per the procedure followed. such additional representation will be stamped with the date of filing and the official number allotted, which will become the registration number as and when the GI is registered. In accordance with the prevailing international practice, it may be expected that the application number will be in sequential order and run as follows, giving indication as to the country, the nature of trademark registration, year in which it is filed and a five digit sequential number like IN/GI/02/00001.
Procedure for Examination
Sub-section (5) enacts that “every application under sub-section (1) shall be examined by the registrar in such manner as may be prescribed in the procedure“. Rule 33 in this respect provides that ” the registrar shall examine the application and the accompanying statement of case as required under rule 32(1) as to whether it meets the requirements of the Act and the rules and for this purpose, if required, he may constitute a Group of not more than seven representatives chaired by him from organisation or authority or persons well versed in the varied intricacies of this law or filed, to ascertain the correctness of the particulars furnished in the procedure of Rule 32(1).
Generally, as per the Trademarks Registry, the examination of an application for registration of GI would consist of:
- A proper form has been used, viz., prescribed form GI-1.
- Fee has been paid, as prescribed.
- The representative of the GI and the additional representations filed are clear and of proper size and fulfill the requirements of Rules 27&28( the prescribed size is approximately 33*20 cm).
- It contains a statement as to the principle place of business in India under the Rule 16 of the procedure.
- It contains as address for service, wherever necessary in accordance with Rule 17.
- Where the applicant is being represented by an agent, whether necessary power of attorney has been executed in the prescribed format as mentioned in the procedure.
- The goods in respect of which trademark registration is sought and the appropriate class or classes as per the nice classification have been indicated. Where a single application has been filed for the goods falling in more than one class, the applicant is to be required to either restrict the specification of goods to one class or amend the application to add additional class or classes on payment of the appropriate class fee and the divisional fee, where appropriate. The amendment involving corrected classification of goods will restrain the benefit of original filing date as mentioned in the procedure for registration.
- In case of a Convention application filed under section 84, whether a certificate from the competent authority of the convention country has been filed and the necessary requirements under Rule 245 have been given. Where the priority is claimed on the basis of an earlier application filed in the applicant’s own country.
Procedure under Substantive examination
The substantive examination will be,
- Whether the GI is free from conflict with any other mark or GI.
- Whether the application and the accompanying statement of case filed under rule 32(1) meets the requirements of the Act and the Rules.
- particularly whether the trademark registration would offend against the provisions of Section 9 of the Act.
- Consideration by the Consultative group of not more than seven representatives under the procedure of Rule 33.
Under Rule 33, for a proper appraisal of the case, the case enables the registrar to constitute a Consultative Group of not more than 7 representatives chaired by him from organisation or authority or persons well versed in the varied intricacies of this law or field to ascertain the correctness of the particulars furnished in the statement of case. The group will examine and finalize the case ordinarily within 3 months from the date of constitution of the Committee as mentioned in the registration procedure.
Objection and conditional acceptance
Under sub-section(6) of Section 11, read with rule 34, the Registrar may refuse the application or accept it absolutely or subject to such amendments, modification, condition or limitations, if any, as he thinks fit. In case of objections to the acceptance of the application or the conditional acceptance, the grounds of objection or for refusal or conditional acceptance and the materials used by him in arriving at the decision shall be recorded in writing. If on consideration of the trademark application on merits and of any evidence of use or of a given quality, reputation or other characteristics of such goods essentially attributable to its geographical origin or any other matter relevant which the applicant may be require to furnish , the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, modifications or limitations as he may think right to impose, the Registrar shall communicate such objection or proposal in writing to the applicant.
Duration for applicant’s response
Procedure of Rule 34(2) provides a period of 2 months from the date of communication for the applicant to amend his application or submit his observations in writing. If he does not so or apply for a hearing of fails to attend the hearing, the application shall be “Dismissed”.
Unlike the law under the Trade and Merchandise marks Act, 1958, under which the application would be abandoned, in such circumstances Rule 34(2) directs that the “application shall be dismissed”. Therefore the Registrar will have to pass a specific order, since the rule is not self-executing as under the old Trademarks Law. The principle of nature justice would require the Registrar give such opportunity of being heard, before “dismissing” the application, pursuant to Rule 34(2).
Decision of the Registrar
After a hearing or without a hearing, if the applicant has duly communicated his observations in writing and has stated that he does not desire to be heard, as the case may be, the decision of the Registrar is to be communicated in writing to the applicant. If the Applicant intends to appeal against such decision, he is required to applied the Registrar within the one month from the date of such communication, requiring him to state in writing the grounds of his discussion and the materials used by him in arriving at such decision. In case where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therein before the Registrar issues a decision/statement in writing under sub-rule (1)of rule 35. The date when the statement in writing/decision under sub-rule (1) is sent shall be deemed to be the date of the Registrar’s decision for purpose of appeal as mentioned in the procedure of Registration.
Procedure for Amendments and Modifications
Amendments or modifications generally arise in respect of the specification of goods so as to be in conformity with the international classification system. It is in the interest of the applicant to apply for registration to the actual goods in respect of which the GI is to be used and not in respect of goods in the designated class. The claim of use for such board or general heading may entail not only office objection, but also open to attack by rectification proceedings at a later stage. Amendment/modification may also consists of Amendment of the representation of GI, by deletion of signs such as “registered/regd./ letter R in the circle” or other matters which may offend the provisions of any of the sections of the Act. Since the use of the word or expression “registered” or other symbol or sign to show the GI to be registered, when in fact it is not so, is an offence under the Act, and carries with it the possibility of the application being refused for such misrepresentation, the representations filed for registration should not have such objectionable features. Rule 30 provides that “where the name or description of any goods appears on a GI, the Registrar may refused to register such GI”. The presence of the word “may” would seem to give a discretion to the Registrar accordingly, instead of refusing the application , he may require necessary amendment either in the specification of goods or in the representation containing the GI, to remove the objectionable procedure.
Conditions and limitations
The Registrar may impose conditions governing the use of the GI, especially requiring it to be used only in the manner registered or imposing a suitable variation condition, such as where the GI is registered for a variety of goods, that in actual use of the GI in respect of some particular goods, the goods in reference to the goods in the in the representation should be varied by indicating only the name of the goods on which the GI is actually used. Though the term “limitation” has not been defined in the GI Act, in the light of sub-section (2) of section 2 , it is to be constructed to have the same meaning as assigned to it the Trademarks Act, 1999, where the expression is defined as ” any limitation of the exclusive right to the use of a trademark given by registration of a person as proprietor thereof, including limitations of that right as to mode or area of use within India or outside India”.
Procedure for Correction and amendment of application
Any time before or after acceptance – but before trademark registration – the applicant shall suppose to apply on Form GI-5, with the prescribed appropriate fee, for correction of error in or in connection with his application or any amendment or correction of his application. No amendment of GI, or in the description of goods or the territory, region or locality that would have the effect of substantially altering or substituting the original application, will be allowed as mentioned in the procedure.
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