Infringement of Geographical Indications

Section 22- Infringement of Registered Geographical Indications

A registered Geographical Indication is infringed by a person who, not being the registered proprietor or authorized user, uses such indication on the goods or suggests that such goods originate in some other geographical area other than the true place of origin of the goods which misleads the public. A geographical indication of trademark is also infringed by any use that constitutes an act of “unfair competition” which term is elaborated in explanations 1 and 2. This provision seeks to give effect to article 22(2)(b)of TRIPS Agreement which requires that members shall “provide the legal means for interested parties to prevent any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris convention (1967). A geographical indication is also infringed by a person who, not being the registered proprietor or an authorized user uses another geographical indication to the goods which although literally true as to the territory, region or locality in which the goods originate , falsely represent to the public that the goods originate in the region, territory or a locality in respect of which such registered Geographical Indication relates. Article 22(4) of TRIPS Agreement mandates that the protection of geographical indication of trademark must be applied even when GI is “literally true as to the territory, region or locality in which the goods originate in another territory”.

Additional protection to certain goods

Sub-section (2) empowers the Central Government to notify such goods or classes of goods where a higher level of protection is to be provided. In terms of Article 23 of the agreement on Trade related Aspects of Intellectual property (TRIPS), India is obliged to prevent the use of Geographical indication of trademark that identifies wines or spirits not originating in the place in indicated by the GI, even where the true place of origin of goods is indicated or where the GI is used in translation or accompanied by expressions such as “Kind”, “type”, “style”, “imitation” or the like. The Paris Convention contains no similar provision, though the Lisbon agreement for Protection of Appellations of origin requires that the protection must be ensured against usurpation or imitation of the GI even if the true origin of the product is indicated or if the Appellation is used in translated from or is accompanied by terms such as kind, type, style, imitation or the like. This seems to apply not only to wines and spirits, as in TRIPS agreement, but generally to all goods. Though the Article 23 of TRIPS is confined to giving addition protection to “wines & spirits”, sub-section (3) of the Indian GI Act seeks to extend the above consent not merely to wines but also to goods of national interest on a case to case basis. Probably this has been done on the basis of the Article 24 of the TRIPS Agreement, which mandates the member states ” to enter into negotiations aimed at increasing the protection of individual indications”. It is not clear whether such negotiations have been entered into at all. At the same time it is to be noted that under Article 24.4 of the TRIPS Agreement, it is not obligatory on a member state to prevent continued and similar use of particular Geographical Indications of trademark another member in connection with wines and spirits by nationals who have used that GI in a continuous manner with regard to the same or related goods in the territory of the member . Apparently, on this basis , in the United States which provides higher level of protection for wines under a system of “certificates of label approval” under Federal Alcohol Administrative Act, well known GIs of European origin .

Sub-section(4)

The sub-section enacts, by way of an exception, that where the goods in respect of which a geographical indication is registered, are lawfully acquired, further dealing in such goods shall not constitute an infringement, unless the condition of the goods are impaired after they have been put in the market.

Registered Geographical Indication

Trademark Registration gives a statutory right and remedy for the infringement of GI. Section 20(1) makes it clear that no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered although it is open to him to institute an action for passing off under the common law. Therefore, for the purpose of instituting infringement proceedings in terms of Section 20, the Geographical Indication should be a registered GI. Section 22(1) uses the phrase ” a registered geographical indication is infringed”. The mere presence of a Geographical Indication in the register would not mean that the GI is in force; For the purpose, the Geographical Indication has to be renewed within the prescribed time in accordance with section 18. Trademark Registration not renewed and lapsed , but not removed physically owing to administrative delay in the process would not enable the Geographical Indication to be considered to be a registered Geographical Indication. It is a requirement of law that atrademark registration is to be periodically renewed under section 18 in order to kept in force. Under the Act, the trademark registration and renewal is for a period of ten years. If the trademark registration is not renewed for failure to pay the fee for renewal within the prescribed period or within the grace period also, and consequently the registration has expired , the registration cannot be said to be in force or be considered as a registered Geographical Indication for purpose of section 22. The Geographical Indication will be considered , as enacted under the Trade Marks Act, to “remain in force” only if on the date the suit for infringement is filed, the provisions of section 25 are complied with by payment of renewal fee, if any, and the Geographical Indication stands duly removed.

In relation to the goods in respect of which the GI is registered

The exclusive right to the use of the Geographical Indication is in relation to the goods in respect of which the geographical indication is registered. It will follow that if the defendant’s use of the Geographical Indication is not in respect of some or any of the goods covered by the trademark registration, an infringement action may not lie. In such cases, the option for the plaintiff is a passing off action. Section 2(3)(b) enacts that unless the context otherwise requires, any reference ” to the use of a geographical indication in relation to goods shall be construed as a reference to the use of the geographical indication upon, on in any physical or in any other relation whatsoever, to such goods.

Uses a geographical indication

For the purposes of section 22, the use of the geographical indication contemplated, as defined in section 2(3)(a) and (b) of the Act, would cover the use of a printed or other visual representation of the indication and the use of the Geographical Indication upon, or in any physical or in any other relation whatsoever, to such goods. The principle evolved intrademark cases could be applied suitably in dealing with infringement relating to geographical indications.

Registration does not prove the use of the mark. If it is to be an indication to the purchaser’s eye, it must be either impressed upon the goods or so accompany the goods as to produce that effect upon the purchaser , e.g., packing case. Use of a trademark means, not what the person who uses has in his own mind about it, not what he has registered in a foreign country but what the public would understand when the trademark or so called trademark is impressed upon the goods or upon some wrapper or case containing the goods, to be the trademark. Not mere use of it, but use of it in a particular way and with a particular result. Use in a circular only was not use upon or in connection with goods within the meaning of the Act. Words used to describe contents of a packet cannot become trademark for goods. By the definition of a trademark in the Act, it has to be used or proposed to be used upon or in connection with the goods are services and does not, generally, speaking, include a newspaper advertisement. The use of a trademark in advertising media must be concurrent with the placing of the goods on the market if it is to be regarded as a trademark within the meaning of this section. Advertisement distinguished from trade is nothing. If you have the trade, advertisement assists the trade, but to say that a man can, by advertising alone, make his name known in connection with the particular goods so as to assist him a monopoly of the goods seems to be untenable as a proposition. Mere use of a trademark in a catalog was not use of the trademark. Serious of advertisements featuring the mark as part of an introductory campaign prior to putting the good on the market under the mark would be considered to be use of the mark in the course of the trade, not upon the goods or in physical relation thereto but it would be in “other relation thereto”.

Plaintiff’s Action must be prompt

It is essential that the registered proprietor or the authorized user of a registered Geographical Indication should be prompt in taking infringement action, wherever required in order to protect and enforce his industrial property right. The very life of a trademark (or GI) depends upon the promptitude with which it is vindicated. It is not necessary to plead the use of the registered trademark (or GI).

Merely threatening a person in cases of this kind, without taking proceedings, is not sufficient is the plaintiff really does stand by and allow a man to carry on business in the matter complained of to acquire reputation and expend money, he cannot then after a long lapse of time turn round and say that the business ought to be stopped.

Defense of Estoppel

The doctrine of estoppel can only be invoked to promote fair dealings. Where the infringement is deliberate and willful and the defendant acts fraudulently with knowledge that he is violating plaintiff’s rights, essential elements of estoppel are lacking and in such a case , the protection of plaintiff’s rights by injunctive relief never is properly denied. Where the plaintiff, however, is guilty of acquiescence, different considerations may apply. Acquiescence may mean an encouragement by the plaintiff to the defendant to use the infringing mark. It is as if the plaintiff wants the defendant to be under the belief that the plaintiff does not regard the action of the defendant to be under the plaintiff’s rights. Furthermore, there should be a tacit or an express ascent by the plaintiff to the defendant using the mark and in a way encouraging the defendants to continue with the business. In such a case, the infringer acts upon an honest mistaken belief that he is not infringing the trademark of the plaintiff, and if, after a period of time, when the infringer has established the business reputation, the plaintiff turns round and brings an action for injunction, the defendant would be entitled to raise the defence acquiescence. Acquiescence cannot be inferred merely by reason of the fact that the plaintiff has not taken any action against the infringement of its rights.

Use any geographical indication in such manner which constitutes an act of unfair competition

Sub-clause(b) of section 22(1) enacts that the registered geographical indication is infringed by a person who, not being an authorized user thereof, “uses any geographical indication in such manner which constitutes an act of unfair competition including passing off in respect of registered geographical indication”. There are two explanations to sub-clause (b) about the expression ” unfair competition”. The explanation 1 broadly enacts that for the purpose of this clause, “act of unfair competition” means any act of competition contrary to honest practices in industrial or commercial matters.

The Explanation 2 clarifies that the following acts shall be deemed to be acts of unfair competition:-

• All acts of such a nature as to create confusion by any means whatsoever with the establishment , the goods or the industrial or commercial activities, of a competitor.
• False allegation in the course of trade of such a nature as to discredit the establishment, the goods or the industrial or the commercial activities, of a competitor.
• Geographical Indications of trademark , the use of which in the course of trade is liable to mislead the persons as to the nature, the suitability for their purpose, or the quantity of the goods.

Geographical Indications, the use of which is liable to mislead

The law provides that the geographical indication, the use of which in the course of trade is liable to mislead the persons as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods, is deemed to be an act of unfair competition for purpose of section 22. Commenting on the identical provision in Article 10 bis(3), the WIPO document says “misleading can roughly be defined as creating a false impression of a competition, and it is by no means harmless. On the contrary, misleading can have quite serious consequences — the customer, relying on incorrect information, may suffer financial prejudice. The honest competitor loses clients. The transparency of the market diminishes, with adverse consequences for the economy as a whole and economic welfare. Since truthfulness is rightly considered to be one of the main principle of honest trade practice, it is generally agreed that the prohibition of deception is essential to the concept of fairness in competition.

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