86540
Lawyers Network
103860
Users
630
Cities Serving
114
Law Schools Network
59824
GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND PROTECTION) RULES, 2002
PART I
CHAPTER I: PRELIMINARY
1. Short title and commencement.-
(1) These rules may be called the Geographical Indications of Goods (Registration and Protection) Rules, 2002
(2) They shall come into force on the date on which the Act comes into force.
2. Definitions.-
(1) In these rules, unless the context otherwise requires, -
(a) "Act" means The Geographical Indications Of Goods (Registration & Protection) Act, 1999.
(b) "agent" means a person authorised under Section 76;
(c) "application for registration of a geographical indication” includes the geographical indication for goods contained in it;
(d) "appropriate office of the Geographical Indications Registry" means the relevant office of the Geographical Indications Registry as specified in rule 4;
(e) “business” includes the trading, dealing, production exploitation, making or manufacturing, as the case may be, of the goods to which geographical indication relates;
(f) “class fee” means the fee prescribed under entry no.1 of the First Schedule;
(g) "Convention Country" means a country notified as such under sub-section (1) of section 84;
(h) "Convention Application" means an application for the registration of a geographical indication made by virtue of Section 84;
(i) “divisional application” means a divided application made by the division of a single initial application for registration of a geographical indication for different classes of goods;
(j) “divisional fee” means the fee so prescribed under the First Schedule;
(k) "form" means a form set forth in either the Second or the Third Schedule;
(l) "graphical representation" means the representation of a geographical indication for goods in paper form;
(m) "journal" means the Geographical Indications Journal;
(n) "notified date" means the date on which the rules come into force;
(o) “opposition” includes an opposition to the registration of a geographical indication or authorised user as the case may be;
(p)"principal place of business in India" means the relevant place in India as specified in rule 3;
(q) "publish" means publish in the Geographical Indications Journal;
(r) "registered geographical indications agent" means a geographical indications agent whose name is actually on the Register of Geographical Indications Agent maintained under rule 102;
(s) “renewal” means and includes renewal of a geographical indication by the registered proprietor of geographical indication or of the authorised user of a geographical indication as the case may be;
(t) "Schedule" means a Schedule to the rules;
(u) "section" means a section of the Act;
(v) "Specification" means the designation of goods in respect of which a geographical indication is registered or proposed to be registered;
(w) All other words and expressions used but not defined in these rules and defined in the Act shall have the meaning assigned to them in the Act.
(2) In these rules, except as otherwise indicated, a reference to a section is a reference to that section in the Act, a reference to a rule is a reference to that rule in these rules, a reference to a Schedule is a reference to that schedule to these rules and a reference to a form is a reference to that form mentioned in the second or third schedule, as the case may be.
3. Principal place of business in India.-
"Principal place of business in India" meansi) where a person carries on business in the goods concerned bearing a geographical indication
(a) if the business is carried on in India at only one place, that place;
(b) if the business is carried on in India at more places than one, the place mentioned by him as the principal place of business in India;
(ii) where a person is not carrying on a business of the goods concerned bearing a geographical indication -
(a) if he is carrying on any other business in India at only one place, that place;
(b) if he is carrying on any other business in India at more places than one, the place mentioned by him as the principal place of business in India; and
(iii) where a person does not carry on any business in India but has a place of residence in India, then such place of residence in India.
4. Appropriate office of the Geographical Indications Registry.-
(1) The "appropriate office of the Geographical Indications Registry" for the purposes of making an application for registration of a geographical indication under section 11(1) or registration as an authorised user under section 17(1) or for giving notice of opposition under sub-section (1) of section 14 or sub-section (3)(e) of Section 17, as the case may be or for filing an application for rectification under section 27 or for any other proceedings under the Act and the rules shall be – in relation to a geographical indication for which an application for registration is made on or after the notified date, the office of the Geographical Indications Registry within whose territorial limits -
(i) the principal place of business in India of the applicant as disclosed in his application or, in the case of an association of persons or producers the principal place of business in India of the applicant whose name is first mentioned in the application, as having such place of business is situate;
(ii) 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 in India as specified in the application is situate.
(2) Notwithstanding anything contained in sub-rule (1) all applications, communications, documents or fee authorised or required by the Act or the rules to be sent, served, left or paid shall be sent or paid at or to the Head Office of the Registry notified by the Central Government initially and subsequently at the appropriate office as and when notified,.
5. Jurisdiction of appropriate office not altered by change in the principal place of business or address for service.-
No change in the principal place of business in India or in the address for service in India, as the case may be, of an applicant or of any of the association of persons or producers for registration in relation to any geographical indication for which an application for registration is made on or after the notified date, made or effected subsequent to that date shall affect the jurisdiction of the appropriate office of the Geographical Indications Registry.
6. Entry of the appropriate office in the Register.-
Subject to sub-rule (2) of Rule 4, in respect of every geographical indication registered after the notified date, the Registrar shall cause to be entered in the register the appropriate office of the Geographical Indications Registry and the Registrar may, at any time, correct any error in the entry so made.
7. Leaving of documents, etc.-
Save as otherwise provided in sub-rule (2), of rule 4 all applications, notices, statements or other documents or any fee authorised or required by the Act or the rules to be made, served, left or sent or paid at or to the Geographical Indications Registry in relation to a geographical indication shall be made, served, left or sent or paid to the appropriate office of Geographical Indications Registry.
8. Documents etc. filed or left not at the appropriate office.-
Subject to the provisions of rule 7, in an exceptional case where any application, statement or other document or any fee authorised or required by the Act or the rules is made, served, left or sent or paid, at or to an office inadvertently which is not the appropriate office of the Geographical Indications Registry as and when such an office is notified under this Act by the Central Government under sub-rule 2 of rule 4, the Registrar may on a written request return such application, statement or document to the appropriate office if he is satisfied that it was a bonafide error on the part of the applicant in such cases:
Provided the period for which such application, or statement or document is retained by the office which is not the appropriate office shall be excluded for the purposes of computing the period of limitation where any of such application, statement or document is required to be presented within the prescribed period.
Provided before declining any such request the Registrar shall provide an opportunity of being heard.
9. Issue of notices, etc.-
Subject to sub-rule (2) of rule 4 any notice or communication relating to any application, matter or proceeding under the Act or the rules shall ordinarily be issued from the appropriate office of the Geographical Indications Registry but may, nevertheless, be issued by the Head of Office of any office of the Geographical Indications Registry.
10. Fees.-
(1) The fees to be paid in respect of applications, oppositions, registration, renewal or any other matters under the Act or the rules shall be those specified in the First Schedule, hereinafter referred to as the prescribed fees.
(2) Where in respect of any matter a fee is required to be paid under the rules, the form or the application or the request of the petition, therefor, shall be accompanied by the prescribed fee.
(3) Fees may be paid in cash or sent by money order addressed to the Registrar of Geographical Indications or by a bank draft issued by, or by a cheque drawn on by a scheduled bank at the place where the appropriate office of the Geographical Indications Registry is situated and if sent through posts shall be deemed to have been paid at the time when the money order or the properly addressed bank draft or cheque would be delivered in the ordinary course of post.
(4) Bank drafts and cheques shall be crossed and made payable to the Registrar at the appropriate office of the Geographical Indications Registry and they shall be drawn on a scheduled bank at the place where the appropriate office of the Geographical Indications Registry is situate.
(5) Where a fee is payable in respect of filing of document and either the document is filed without fee or with insufficient fee, such document shall be deemed to have not been filed for the purposes any proceedings under the rules.
(6) Where any fee paid by a party is ordered to be returned by the Registrar under any of the provisions of the Act or the rules the amount may be refunded by money order in which event money order commission shall be deductible from such amount.
(7) The Registrar may after notification in the Geographical Indications Journal make available electronic fee transfer facilities subject to such conditions as may be specified on that behalf.
11. Forms.-
(1) The forms set forth in the Second and the Third Schedules shall be used in all cases to which they are applicable and may be modified as directed by the Registrar to meet other cases.
(2) Any form, when filed at the Geographical Indications Registry shall be accompanied by the prescribed fee.
(3) A requirement under this rule to use a form as set forth in the schedules is satisfied by the use either of a replica of that form or of a form which is acceptable to the Registrar and contains the information required by the form as set forth in the schedule and complies with any direction as to the use of such a form.
(4) The Registrar may after notification in the Geographical Indications Journal specify such forms as are required to be submitted in machine readable forms. Thereafter, such forms shall be completed in such a manner as may be specified as to permit an automated input of the content into a computer such as by character recognition or scanning.
12. Size, etc of documents.-
(1) Subject to any other directions that may be given by the Registrar, all applications, notices, statements, or other documents except the geographical indication required by the Act or the rules to be made, served, left or sent, at or to the Geographical Indications Registry shall be typewritten, lithographed or printed in Hindi or in English in large and legible characters with deep permanent ink upon strong paper, and except in the case of affidavits, on one side only and of size of approximately 33 cms by 20 cms and shall have on the left hand part thereof a margin of not less than 4 centimetres.
(2) Duplicate documents including copies of geographical indications shall be filed at the Geographical Indications Registry if at any time so required by the Registrar.
(3) The Registrar may after notification in the Geographical Indications Journal alter the size of all applications, notices, statements or other document and forms required under the rules to make it compatible in machine readable form.
(4) The Registrar may after notification in the Geographical Indications Journal permit the filing of applications, statements, notices or other documents by electronic means subject to such conditions as he may specify either generally by published notice in the Journal or in any particular case by written notice to the persons desiring to file any such documents by such means.
13. Signing of documents.-
(1) An application for the registration of a geographical indication purporting to be filed by an association of persons or producers shall be signed by the authorised signatory thereof to sign such documents and a document purporting to be signed by a body corporate or any organisation or any authority established by or under any law for the time being in force shall be signed by the Chief Executive, or the Managing Director or the secretary or other principal officer of such organisation. A document purporting to be signed by a partnership shall be signed by at least one of the partners. The capacity in which an individual signs a document on behalf of an association of persons or a body corporate shall be stated below his signature.
(2) Signatures to an application and any other documents shall be accompanied by the name of the signatory in English or in Hindi and in capital letters.
14. Service of documents.-
(1) All applications, notices, statements, papers having representations affixed thereto, or other documents authorised or required by the Act or the rules to be made, served, left or sent, at or to the Geographical Indications Registry or with or to the Registrar or any other person may be sent through the post by a prepaid letter.
(2) Any application or any document so sent shall be deemed to have been made, served, left or sent at the time when the letter containing the same would be delivered in the ordinary course of post.
(3) In proving such sending it shall be sufficient to prove that the letter was properly addressed and put into the post.
15. Particulars of address etc. of applicants and other persons.-
(1) Names and addresses of the association of persons, producers, authorised users and other persons shall be given in full, together with their nationality, calling and such other particulars as are necessary for identification.
(2) In the case of a body corporate the full name and nationality of the Board of Directors thereof shall be stated.
(3) In the case of foreign applicants and persons having no principal place of business in India, their addresses in their home country shall be given in addition to their address for service in India.
(4) In the case of a body corporate or any organisation or authority established by or under any law for the time being in force, the country of incorporation or the nature of registration, if any, as the case may be, shall be given.
16. Statement of principal place of business in India in an application.-
(1) Every application for registration of a geographical indication or as an authorised user shall state the principal place of business in India, if any, of the applicant or the authorised user or in the case of association of persons or producers of goods such of them as have a principal place of business in India.
(2) Subject to the provisions of rules 17, 18, and 20, any written communication addressed to an applicant or his agent, or an authorised user or his agent or in the case of association of persons, the person authorised to act in the matter in connection with the registration of a geographical indication or their agent, at the address of his principal place of business in India given by him in the application shall be deemed to be properly addressed.
17. Address for service.-
(1) An address for service in India shall be given.-
(a) by every applicant for registration of a geographical indication or by an authorised user of a geographical indication who has no principal place of business in India;
(b) in the case of an association of persons or producers for registration of a geographical indication if none of them has a principal place of business in India;
(c) by the applicant for a geographical indication who had his principal place of business in India at the date of making the application for registration but has subsequently ceased to have such place, and
(d) by every applicant or authorised user in any proceeding under the Act or the rules and every person filing a notice of opposition, who do not have a principal place of business is India.
(e) by every person granted leave to intervene under Rule 67 (the intervener)
(f) Every proprietor of a registered geographical indication which is the subject of an application to the Registrar for the invalidation or rectification of the registered geographical indication.
(g) by every applicant for cancelling, expunging and varying any entry on the register relating to a Geographical Indication or of an authorised user under sub-section (1) and (2) of Section 27
(2) Any written communication addressed to a person as aforesaid at an address for service in India given by him shall be deemed to be properly addressed.
(3) Unless an address for service in India as required in sub-rule (1) is given, the Registrar shall be under no obligation to send any notice that may be required by the Act or the rules and no subsequent order or decision in the proceedings shall be called in question on the ground of any lack or non-service of notice.
18. Address for service in application and opposition proceedings.-
An applicant for registration of a geographical indication or as an authorised user or an opponent filing a notice of opposition may notwithstanding that he has a principal place of business in India, if he so desires, may furnish to the Registrar with an address in India to which communications in relation to the application or opposition proceedings only may be sent. Such address of the applicant or the authorised user or the opponent shall be deemed, unless subsequently cancelled, to be the actual address of the applicant or the authorised user or the opponent, as the case may be, and all communications and documents in relation to the application, or notice of opposition may be served by leaving them at, or sending them by post to such address of the applicant or the authorised user or the opponent, as the case may be.
19. Non-availability of an address for service.-
The Registrar may, at any time when a doubt arises as to the continued availability of an address for service in India entered in the register, request the person for whom it is entered by letter directed to any other address entered in the register or if no such address is entered in the register to the address at which the Registrar considers that the letter would reach him to confirm the address for service in India and if within two months of making such a request the Registrar receives no such confirmation, he may strike the entry in the register of the address for service in India and require such person to furnish a fresh address for service in India or his address at the principal place of business in India, if he has any at that time.
20. Agency.-
(1) The authorisation of an agent for the purpose of Section 76 shall be executed on Form GI-10 or in such other written form as the Registrar may deem sufficient and proper.
(2) In the case of such authorisation, service upon the agent of any document relating to the proceeding or matter shall be deemed to be service upon the person so authorising him; all communications directed to be made to such person in respect of the proceeding or matter may be addressed to such agent, and all appearances before Registrar relating thereto may be made by or through such agent.
(3) In any particular case the Registrar may require the personal signature or presence of an applicant, opponent, proprietor, authorised user or other person.
21. Classification of goods.-
(1) For the purposes of the registration of a geographical indication or as an authorised user, goods shall be classified in the manner specified in the Fourth Schedule.
(2) The goods mentioned in the Fourth Schedule only provide a means by which the general content of 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. For determining the classification of particular goods and for full disclosure of the content of international classification, reference may be made to the alphabetical index of goods if any, published by the Registrar under sub-section (3) of section 8 or the current edition of International Classification of Goods for the purpose of registration of trade marks published by the World Intellectual Property Organisation or any subsequent edition as may be available.
(3) Where goods of more than one class are set out in an application for which only one application fee has been paid, the Registrar shall require the applicant to amend the application in order to restrict the goods to a single class.
22. Request to Registrar for search.-
(1) Any person may request the Registrar on form GI-5 to cause a search to be made in respect of specified goods classified in any one class in the Fourth Schedule in order to ascertain whether any geographical indication is on record which resembles a trade mark or geographical indication of which two representations accompany the form. The Registrar shall cause a search to be made and inform the applicant of the result of such search.
(2) If within three months from date of communication of the result of the search aforesaid an application is made for the registration of the trade mark or geographical indication in question and the Registrar takes objection on the ground that the mark or the geographical indication resembles a geographical indication, which was not disclosed in the search, but was on record on the last of the date on which the search was made the applicant shall be entitled, after withdrawal of the application for the registration of the said trade mark or the geographical indication, to have repaid to him the fee paid for search in Form GI-5.
CHAPTER II: PROCEDURE FOR REGISTRATION OF GEOGRAPHICAL INDICATIONS
23. Form and signing of application.-
(1) Every application for the registration of a geographical indication shall be made in the prescribed form and shall be signed by the applicant or his agent and must be made in triplicate alongwith three copies of a Statement of Case.
(2) An application to register a geographical indication for a specification of goods included in any one class shall be made in Form GI-1;
(3) An application to register a geographical indication under section 84(1) for a specification of goods included in any one class from a convention country shall be made in Form GI- 1;.
(4) A single application for the registration of a geographical indication for different classes of goods from a convention country under section 84(1) shall be made in Form GI-1;
(5) A single application for the registration of a geographical indications for different classes of goods shall be made in Form GI-1;
(6) Every application for the registration of a geographical indication for goods must satisfy the following conditions:
(a) The geographical indication must be defined with sufficient precision so that the right to obtain relief in respect of infringement of geographical indication can be determined;
(b) The graphical representation must be able to stand in place of the geographical indication without the need for supporting samples;
(c) It must be reasonably practicable for persons inspecting the Register or reading the Geographical Indications Journals to understand from the graphical representation what the geographical indications is
(d) An application for the registration of a three dimensional geographical indication shall not be acted upon as such unless the application for registration contains a statement to that effect;
(e) Where a colour combination is claimed as an element of a geographical indication in an application for the registration, it shall not be acted upon as such unless the application contains a statement to that effect and specifies the colours;
(7) An amendment to divide an application under proviso to section 15 shall be made in Form GI-5;
(8) Every application shall be in respect of one geographical indications only for as many class or classes of goods as may be made.
(9) The Registrar may require a more concise description of a geographical indications if relates to colour combination, a three-dimensional geographical indication, design which are symbols of definite concepts, a configuration of goods or packaging to evaluate the substantive rights in the geographical indications.
(10) Where an applicant files a single application for one or more classes and the Registrar determines that the goods applied for fall in class or classes in addition to those applied for, the applicant may restrict the specification of goods to the class applied for or amend the application to add additional class or classes on payment of the appropriate class fee and the divisional fee. The new class created through a division retains the benefit of original filing date or in the case of an application from a convention country, the convention application date under sub-section (1) of section 84 provided the claim was otherwise properly asserted in the original application.
24. Application under convention arrangement.-
(1) Where an application for registration of a geographical indications is filed by an applicant from a convention country under section 84, a certificate by the Registry or competent authority of the Geographical Indications Office of the convention country shall be included in the application for registration under sub-rule (3) or (4) of Rule 23, as the case may be, and it shall include the particulars of the geographical indication, the country and the date or dates of filing of the first application in the convention country and such other particulars as may be required by the Registrar.
(2) Unless such certificate has been filed at the time of the filing of the application for registration, there shall be filed, within two months of the filing of the application under sub-rule (3) or (4) of rule 23, as the case may be, certifying or verifying to the satisfaction of the Registrar the date of the filing of the application, the country, the representation of geographical indication, the class and goods covered by the application.
(3) The application relied under sub-rule (1) must be the applicants’ first application in a convention country for the same geographical indications and for all or some of the goods under that application. The application must include a statement indicating the filing date of the foreign application relied upon, the convention country where it was filed, the serial number, if available and a statement indicating the convention application date as claimed.
(4) Where a single application under sub section (3) of section 11 from a convention country is received in respect of a geographical indications for one or more classes of goods, the applicant must establish a continuous valid basis for the convention application date in all classes.
25. Statement of user in applications.-
An application to register a geographical indication or as an authorised user shall, contain a statement of the period during which, and the person by whom it has been used in respect of the goods mentioned in the application. The applicant shall file an affidavit testifying to such user with exhibits showing the geographical indication as used, the volume of sales under that geographical indication, the definite territory of the country, region or locality in the country to which geographical indication relates and such other particulars as the Registrar on perusal of the application may call for from the applicants.
26. Representation of Geographical Indication.-
Every application for the registration of a geographical indication and where additional copies of the application are required every such copy, shall contain a representation of the geographical indication in the space provided on the application form for that purpose provided the size of such representation shall not exceed 33 centimetres by 20 centimetres with a margin of 4 cm. on the left hand side.
27. Additional representations.-
(1) Every application for the registration of a geographical indication shall, except as hereinafter provided, be made in triplicate and shall be accompanied by five additional representations of the geographical indication. The representations of the geographical indication on the application and each of its copies and the additional representations shall correspond exactly with one another. The additional representations shall in all cases be noted with the specification and class of goods for which registration is sought, the name and address of the applicant, together with the name and address of his agent, if any, the period of use, and such other particulars as required under sub-rule 1 to rule 32 by the Registrar and shall be signed by the applicant or his agent.
(2) Where an application contains a statement to the effect that the applicant wishes to claim combination of colours as a distinctive feature of the geographical indication , the application shall be accompanied with three reproduction of the geographical indication in black and white and five reproduction of the geographical indication in colour.
(3) (i) Where an application for the registration of a geographical indication consist of shape of goods or its packaging, the reproduction furnished shall consist of at least three different view of the geographical indication and a description by word of the geographical indication.
(ii) If the Registrar considers the different views and description of the geographical indication in sub-para (i) still does not sufficiently show the particulars of the shape of goods or its packaging he may call upon the applicant to furnish a specimen of the goods or packaging, as the case may be, as sold in respect of the geographical indication.
28. Representations to be durable and satisfactory.-
(1) All representations in respect of a geographical indication shall be of a durable nature, and each additional representation required to be filed with an application for registration shall be mounted on a sheet of strong paper of the size of approx. 33 cm by 20 cm leaving a margin of not less than 4 centimetres on the left hand part of the sheet.
(2) If the Registrar is not satisfied with any representation of a geographical indication he may at any time require another representation satisfactory to him to be substituted before proceedings with the application.
29. Transliteration and translation.-
(1) Where a geographical indication contains a word or words in characters other than Devnagari or Roman, there shall be endorsed on the application form and the additional representation thereof, a sufficient transliteration and translation to the satisfaction of the Registrar of each of such words, and every such endorsement shall state the language to which the word belongs and shall be signed by the applicant or his agent failing which the Registrar shall be under no obligation to take any action on the application.
(2) Where an application for a geographical indication or authorised user contains a word or words in a language other than Hindi or English, the Registrar may ask for an exact translation thereof together with the name of the language, and such translation and name, if he so requires, shall be endorsed and signed as aforesaid.
30. Name or description of goods on a Geographical Indication.-
Where the name or description of any goods appears on a geographical indication, the Registrar may refuse to register such geographical indication.
31. Deficiencies.-
Subject to sub-rule (2) of rule 10, where an application for registration of a geographical indication does not satisfy requirements under section 11 or rule 23, the Registrar shall send notice thereof to the Applicants to remedy the deficiencies and if within one month from the date of receipt of the notice, the applicants fails to remedy any deficiency so notified by him the application may be treated as abandoned.
PROCEDURE ON RECEIPT OF APPLICATION FOR REGISTRATION OF A GEOGRAPHICAL INDICATION
32. Content of application.-
(1) Every application for the registration of a geographical indication shall be made in the prescribed forms and shall contain the following:
86540
103860
630
114
59824