GI Mark Registration Process in India

STEP 1: Filing of application

Please check whether the indication comes within the ambit of the definition of a Gl under section 2(1)(e). The association of persons or producers or any organization or authority should represent the interest of producers of the concerned goods and should file an affidavit how the applicant claims to represent their interest.

Application must be made in triplicate.
The application shall be signed by the applicant or his agent and must be accompanied by a statement of case.
Details of the special characteristics and how those standards are maintained.
Three certified copies of the map of the region to which the GI relates.
Details of the inspection structure if any to regulate the use of the GI in the territory to which it relates.
Give details of all the applicant together with address. If there is a large number of producers a collective reference to all the producers of the goods may be made in the application and the G.I., If registered will be indicated accordingly in the register.

Please sent your application to the following address in India
Geographical Indications Registry
Intellectual Property Office Building
Industrial Estate, G.S.T Road
Guindy, Chennai – 600 032
Phone: 044 – 22502091-93 & 98
Fax: 044 – 22502090
E-mail: [email protected]
Website: ipindia.gov.in

The applicant must have an address for service in India. Generally, application can be filed by (1) a legal practitioner (2) a registered agent.

STEP 2 and 3: Preliminary scrutiny and examination

The Examiner will scrutinize the application for any deficiencies.
The applicant should within one month of the communication in this regard, remedy the same.
The content of statement of case is assessed by a consultative group of experts will versed on the subject.
The will ascertain the correctness of particulars furnished.
Thereafter an Examination Report would be issued.

STEP 4: Show cause notice

If the Registrar has any objection to the application, he will communicate such objection.
The applicant must respond within two months or apply for a hearing.
The decision will be duly communicated. If the applicant wishes to appeal, he may within one month make a request.
The Registrar is also empowered to withdraw an application, if it is accepted in error, after giving on opportunity of being heard.

STEP 5: Publication in the geographical indications Journal

Every application, within three months of acceptance shall be published in the Geographical Indications Journal.

STEP 6: Opposition to Registration

Any person can file a notice of opposition within three months (extendable by another month on request which has to be filed before three months) opposing the GI application published in the Journal.
The registrar shall serve a copy of the notice on the applicant.
Within two months the applicant shall sent a copy of the counter statement.
If he does not do this be shall be deemed to have abandoned his application. Where the counter-statement has been filed, the registrar shall serve a copy on the person giving the notice of opposition.
Thereafter, both sides will lead their respective evidences by way of affidavit and supporting documents.
A date for hearing of the case will be fixed thereafter.

STEP 7: Registration

Where an application for a GI has been accepted, the registrar shall register the geographical indication. If registered the date of filing of the application shall be deemed to be the date of registration.
The registrar shall issue to the applicant a certificate with the seal of the Geographical indications registry.

STEP 8: Renewal

A registered GI shall be valid for 10 years and can be renewed on payment of renewal fee.

STEP 9: Additional protection to notified goods

Additional protection for notified goods is provided in the Act.

STEP 10: Appeal

Any person aggrieved by an order or decision may prefer an appeal to the intellectual property appellate board (IPAB) within three months. The address of the IPAB is as follows:
Intellectual Property Appellate Board
Annexe 1, 2nd Floor, Guna Complex,
443, Anna Salai, Chennai – 600 018

What Indications are not registrable?

For registration, the indications must fall within the scope of section 2(1)e of GI Act, 1999. Being so, it has to also satisfy the provisions of section 9, which prohibits registration of a Geographical Indication

the use of which would be likely to deceive or cause confusion; or
the use of which would be contrary to any law for the time being in force; or
which comprises or contains scandalous or obscene matter; or
which comprises or contains any matter likely to hurt the time being in force; religious susceptibilities of any class or section of the citizens of India; or
which would otherwise be dismantled to protection in a court; or
which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in their country of origin or which have fallen into disuse in that country; or
which although literally true as to the territory region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality as the case may be.

Explanation 1 to section 9 says that for the purposes of this section, “generic names of indications” in relation to goods which although relates to the place of the region where the goods was originally produced or manufactured, has lost its original meaning and has become the common name of such goods and serves as a designation for an indication of the kind, nature, type of other property or characteristic of the goods.

Explanation 2 further says a that “in determining whether the name has become generic, account shall be taken of all factors including the existing situation in the region or place in which the name originates and the area of consumption of the goods.”

LEGAL FRAMEWORK

Geographical Indications in India are regulated by the Geographical Indications of Goods (Registration and Protection) Act, 1999 came in force with effect from September 2003. India had an obligation under TRIPS to pass a law for protection and regulation of geographical indications. Before this act, there was no protection in India for geographical indications. The present geographical indications regime in India is governed by the Geographical Indications of Goods (Registration & Protection) Act, 1999 and the Geographical Indication of Goods (Regulation and Protection) Rules, 2002.

In most cases, a geographical indication consists of the name of the place of origin of the goods. For example, Champagne, Cognac,, and Darjeeling Tea in India. These are geographical indications designating the specific geographical origin from which they originate. Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil.

A registered GI is a public property which belongs to the producers of the goods. It cannot be used for licensing, pledge, mortgage etc. After the demise of the authorized dealer, his right can be exercised by the successor. It is not without reason that the place of origin is prefixed before the product; GI tag surely makes us proud of the various products of our country.

Under the Act, the Controller-General of Patents, Designs and Trade Marks under Department of Industrial Policy and promotion, Ministry of Commerce and Industry is the 'Registrar of Geographical indications'. The Controller General of Patents, Designs & Trade Marks directs and supervises the functioning of the Geographical Indications Registry (GIR). The Geographical Indications Registry (GIR) is in Chennai, and it has All-India jurisdiction.

The holder of a registered GI has certain rights and privileges regarding the goods. By way of registration, the rights holder can prevent unauthorized use of the GI by others, and also boost the economic well-being of the producers and manufacturers of the goods produced in a particular region. One important thing to take note of is that even when the GI is not registered, legal action can be taken against the infringing parties in a suit of passing off.

Thus, geographical indication in India has both legislative and common law remedies. Registration of the geographical indication in India is not mandatory. But it is good to have registration nonetheless, as the certificate of registration also acts as prima facie evidence.

There are three broad requirements that a particular good should possess to qualify for GI protection:
1. Identification of the good and its particular area of geographical origin.
2. It should possess a given quality, reputation or other characteristics, which
3. Is essentially attributable to its area of geographic origin.