Vitiation of IPAB and Beyond – Geographical Indications

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The President of India on fourth of April 2021 promulgated “The Tribunals Reforms (Rationalization and Conditions of Service) Ordinance 2021”. This Ordinance abolishes the various tribunals set up under the following acts:

  • THE CINEMATOGRAPH ACT, 1952
  • THE COPYRIGHT ACT, 1957
  • THE CUSTOMS ACT, 1962
  • THE PATENTS ACT, 1970
  • THE AIRPORT AUTHORITY OF INDIA ACT, 1994
  • THE TRADE MARKS ACT, 1999
  • THE GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND PROTECTION) ACT, 1999
  • THE PROTECTION OF PLANT VARIETIES AND FARMERS’ RIGHTS ACT, 2001
  • THE CONTROL OF NATIONAL HIGHWAYS (LAND AND TRAFFIC) ACT, 2002
  • THE FINANCE ACT, 2017

Intellectual Property Appellate Board (IPAB) was constituted by a gazette notification of the Central government on 15 September 2003 to hear appeals against the decisions of Registrar under The Trademarks Act, 1999 and The Geographical Indications of Goods (Registration and Protection) Act, 1999. The 2007 notifications issued by the Ministry of Commerce & Industry with respect to The Patents Act, 1970 transferred the Appellate power from High Courts to the IPAB. Later in 2017, The Finance Act as per sec 160(a) & 160(c) conferred on the IPAB the Appellate jurisdiction over the matters covered under The Copyright Act, 1957. Similar transitional provision was also invoked under sec 59 of The Protection of Plant Varieties and Farmers Act 2001, conferring the IPAB to exercise jurisdiction on appeals as per section 56 of the Act.

Changes Brought out by the The Tribunals Reforms (Rationalization and Conditions of Service) Ordinance 2021 to the Geographical Indications of Goods (Registration and Protection) Act, 1999

As per omitted Section 2 (1) (a) of the Geographical Indications of Goods (Registration and Protection) Act 1999, Appellate Board for the purposes of this act means the Intellectual Property Appellate Board (IPAB) established under Section 83 of the Trade Marks Act 1999. With the passing of The Tribunals Reforms (Rationalization and Conditions Of Service) Ordinance 2021, the IPAB stands abolished, and the powers of the IPAB under the Geographical Indications of Goods (Registration and Protection) Act 1999, have been transferred to the Registrar of Geographical Indications and High Courts.

 

Powers Conferred to the Registrar of Geographical Indications and the High Court

  • The Registrar or the High Court may deem a geographical indication to be on the register, even after removal of the geographical indication from the register for failure to pay the renewal fee.
  • To vary registration and rectify the register on an application by any person aggrieved.
  • To admit evidence in any proceedings, of the usages of the trade concerned and any relevant geographical indication used by other persons.

1. Effect of removal from register for failure to pay fee for renewal to the satisfaction of the Registrar or the High Court

In the cases where a Geographical Indication has been removed from the register for failure to pay the renewal fee, it shall nevertheless, for the purpose of any application for the registration of another Geographical Indication during one year next after the date of the removal, be deemed to a Geographical Indication already on the register. the Registrar or the High Court may not deem such geographical indication as already on the register if it is satisfied that there has been no bona fide trade use of the existing Geographical Indication for preceding two years, or there would be no deception caused with the use of the new Geographical Indication applied for. (section 19)

2. Power of the Registrar and the High Court to vary registration and rectify the register

The Registrar or the High Court may on an application made to it in the prescribed manner, by any person aggrieved, make such order as it may think fit for cancelling or varying the registration of a Geographical Indication on the ground of any contravention, or failure to observe a condition entered on the registered in relation thereto. And the Registrar or the High Court may order making of any entry wrongly omitted, expunging any wrong entry or varying any error or defect in the register, on an application by any aggrieved person. According to old section 27 this power was vested with Registrar alone.

3. Admission of evidence by the Registrar and the High Court in certain proceedings

In any proceeding relating to a geographical indication, the Registrar or the High Court, as the case may be shall admit evidence of the usages of the geographical indication and of any relevant geographical indication legitimately used by other persons. (section 75).

 

Powers Conferred to the High Court

  • To Hear appeals from the decision, order of the Registrar.
  • To communicate to the registrar about every order or judgement of the High Court.
  • To stay the proceedings when invalidity of registration is pleaded by the accused.
  • When invalidity of registration is pleaded by the infringing party in an infringement suit, he may be allowed to file an application for rectification only before the High Court.
  • To issue Certificate of validity of registration to the registered proprietor or the authorized user of the geographical indication.

1. Appeals shall lie to the High Court.

Appeals from the decision, order of the Registrar under this act or the rules made thereunder may be preferred to the High Court within three months from the date on which the order or decision sought to be appealed against is communicated to the person preferring the appeal. (section 31)

2. Power in Rectification of the register

A certified copy of every order or judgement of the High Court relating to a registered Geographical Indication shall be communicated to the Registrar by the High Court and the Registrar shall give effect to the order of the High Court and shall, when so directed, amend the entries in, or rectify the register in accordance with such order. (section 34)

3. Power of the High Court in procedures where invalidity of registration is pleaded by the accused

When a person is accused of applying false Geographical Indications, or of selling goods to which false Geographical Indications is applied, or is convicted for subsequent commission of the above said acts, and he pleads in his defence the invalidity of the registration of the Geographical Indications, he may be enabled to file an application before the High Court within 3 months for rectification of register on the ground that the registration is invalid, and the court shall stay the proceedings till the disposal of the rectification application. And if the accused had already filed such application before his conviction of the said offences, and such proceedings is pending before the Registrar or the High Court, as the case may be, the court shall stay the further proceedings pending the disposal of the rectification application. (section 48)

4. Power of the High Court in procedures where invalidity of registration is pleaded by the infringing party.

Where in an infringement suit, the defendant pleads that the registration of the plaintiff’s geographical indication is invalid, he may be enabled to file an application only before the High Court for rectification of register on the ground that the registration is invalid. And if such application is filed prior to the suit of infringement, before the Registrar or the High Court, as the case may be, the court shall stay the further proceedings pending the disposal of the rectification application. (section 57 & 58)

5. Power of High Court to issue Certificate of validity of registration.

In a proceeding for rectification of the register before the High Court, a decision is in favor of the registered proprietor or the authorized user of the geographical indication on the issue as to the validity of the registration, or of the authorized use of the geographical indication, the High Court may grant a certificate to that effect. This certificate can be used to obtain a favorable order in further proceedings where the validity of the registration is challenged. (section 72)


Authored by Sayyid Qutub

Related Post: Tribunal Reforms Ordinance and changes to the Geographical Indications Act, 1999

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