SpicyIP is delighted to bring you a guest post from Latha R Nair, a leading IP practitioner in India. Ms Nair, who has written occasionally for the blog, is a partner with one of India’s top IP firms, K&S Partners, based in the Delhi/NCR area. Apart from handling matters relating to protection and enforcement of trademarks and copyrights, she advises clients on TRIPS related issues, protection of geographical indications in India and abroad, domain name disputes and intellectual property aspects of the entertainment industry and the Internet. In particular, she has been advising the Government of India in the protection of various geographical indications including Basmati and Darjeeling. She has also co-authored a seminal work on geographical indications, titled “Geographical Indications – A Search for Identity” published by Lexis Nexis Butterworths India, which is a first work of its kind on the subject. For a detailed profile, do visit an earlier post we have run by Ms Nair.
Today’s post is about the dispute around the GI application filed, and recently abandoned, by Reliance Industries Limited (RIL), which Ms Nair sheds some light on for readers here:
THE CURIOUS CASE OF JAMNAGAR PETROL GI
A report in the Mint recently states that Reliance Industries Limited (RIL) has abandoned its applications for registering ‘Jamnagar’ as a geographical indication (GI) for petrol, diesel, LPG etc. The report quotes P H Kurian, Controller of Patents Trademarks and Geographical indications as having stated that the applications were abandoned by the GI Registry for lack of prosecution on the part of RIL, the applicant. It is a relief to know that wisdom has eventually dawned upon RIL. Should we say, it is better late than never?! (Image from here: http://www.mapsofindia.com/maps/gujarat/districts/jamnagar.htm)
A perusal of the statement of case of GI application No. 38 for ‘Jamnagar’ filed by RIL which was advertised in Journal No.12 (download: 1.5 MB) would reveal the various errors in the application that survived acceptance and proceeded unhindered till the stage of advertisement.
To begin with, the applications filed by RIL were contrary to Section 11 (1) of the Geographical Indications of Goods (Registration & Protection) Act, 1999 [ ‘the GI Act’] which states as follows:
“Any association of persons or producers or any organization or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods, who are desirous of registering a geographical indication in relation to such goods shall apply in writing to the Registrar in such form and in such manner and accompanied by such fees as may be prescribed for the registration of the geographical indication.”
One of the puzzling questions in the Jamnagar applications was, who were these producers whose collective interest RIL was representing through these applications. For example, in the statement of case, against the column “List of association of persons/ Producers”, RIL had entered, “to be provided on request”. However, under the column, “Description of Goods”, RIL stated that it was the largest producer of petrol and that the Jamnagar manufacturing complex was the largest industrial project set up “at a cost of 142.5 billion” (presumably INR)! Did the mighty RIL really need to get a GI registration to boost the sales of its petrol and LPG?
Further, under the column, “Specification” RIL has listed the ISO standards met by its petrol, fuel, LPG and diesel. Under Section 11(2) of the GI Act, an application is to contain a statement as to how the GI serves to designate the goods as originating from the concerned region 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. Once again, under the column “Uniqueness”, the mention of the compliance with the ISO standards reappears. When one could have thought that this petrol could save all the energy problems of our planet, there is no mention of any unique properties possessed by the goods in the application by RIL except the compliance with ISO standards!
The legal innovation and creativity in the application did not end there. Under the column “Proof of origin [Historical records]” RIL states as follows:
“In 1991, the Government of India allowed the investments from the private sector, in this field. Heavy investment has been made in the less favoured remote area which has resulted in the improvement of local rural area and paved way for the retention of the rural population in this area and it helps in the rural development. The applicant in a record time of 15 days after the historic heavy cyclonic hit on 8th June 1998 repaired the extensive damage and brought back the normalcy”
While RIL certainly deserves more than a pat on the back for the heroic deeds of repairing the damage to the plant (which is, by the way, the private property of RIL) in a fortnight, one fails to see the historical records that are hidden in the said paragraph!
Mercifully, the advertisements in the GI journal led to two oppositions filed by two different opponents. One shudders to imagine how the world IP community would have viewed the Indian GI protection process, if these remained unopposed and proceeded to registration!
From the perspective of an IP practitioner, the fact that these applications were filed by a private entity to further its commercial monopolistic interests raises several concerns for the direction of the GI protection process in India, which is still in the nascent stages. Are we game to register anything that has a geographical name as a GI? At least, the minimum standards stipulated under the GI Act should not be overlooked by all concerned. While augmenting numbers may not be a bad thing, we must not lose sight of the broad objects of protecting a GI, namely, preserving the collective community interests of the producers and protecting consumers from deception. An objective and dispassionate soul searching is warranted to see if we are on the right track while filing applications in respect of anything that sounds like a geographical name to be protected as a GI. Failure to appreciate this could eventually harm and dilute the process of protection of GIs in India leaving the stake holders of the innumerable genuine GI products without an access to realize the economic potential in these products.
[The author is a partner with the Gurgaon based IP law firm K&S Partners. The views are personal.]
I would like to supplement to Ms Latha’s post
1. There were four (4) oppositions filed against each of the applications, three (3) by lawyers and one (1) by an UK based legal acadamic. One should appreciate them for this.
2. Further, the Reliance Industries Ltd has never used the GI ‘Jamnagar’ in respect of any of its products from its Jamnagar refinery. Considering that the GI of goods is basically the recognition granted to an appellation which has already been in use to recognize the goods in relation to a specific geographical area, an ‘invented GI’ is beyond the scope of registration under the Geographical Indications Act.
3. Reliance had applied for the Krishna Godavari Gas as well, even before the gas production from the basin was started! This also has been treated as abandoned due to the non-compliance of requirements.
my only comment on ril attempt – its blatant misuse of law. also, it reflects poorly upon ril’s ip advisors, too. altho i dont advocate for penal powers in the hands of ip authorities, but as an exception, this instance deserves some penal action against it (just a wishful thinking)
Thank you for writing this piece on GI. It is indeed a a sad reflection on our examination procedures that such applications are published in the first place and not straight away rejected. To have a robust IP system, the first step is transperancy and honesty in the system. Are we anywhere near it?
Anju Khanna
The first thing that comes into our mind is that at first instance, how this application filed by RIL was initially accepted for registration, least forget about the prosecution part. As per the law, associations or community has to make application for GI registration. How come RIL can make a statement that “to be provided on request”. Even the representing attorney could not identify this error.
Under the specification, one has to provide details of goods to be designated as GI by providing details of environment from which the goods originate.
One needs to be extremely cautious while making GI application.
Dear Anonymous, mnbvcxzaq1, Anju and Manish – thank you for your comments and the additional clarifications – I am grateful. As for the comment on penal aciton, it is indeed wishful thinking. I am hoping that with an officer like Mr. Kurian at the helm of affairs, things would turn around for the better at our IP offices.
I would like to thank Ms Latha Nair for a short and sharp article on GI.
Where one can not expect a better practical procedural process in Trade Marks Registries, how the same can be expected from the GI Registry. Both are having examiners without training. Like Examiners on contract basis in Trade Marks Registries, GI is also having such examiners. Those were transferred from T.M. to G.I. But, examiners were given training neither in Trade Marks nor in G.I.
Why i am again and again taking it into fore is, had the examiners been given better training on G.I. the RIL’s GI Application could have been rejected even at the examination level itself. The application lacks credible & relevant facts and legal requirement as under GI Act.
It was earlier discussed in spicyip regarding filing of Power of Attorney/T.M.48/Authorisation Letter along with Trade Marks Application/later stage . Taking this cue into advantage (filing at later stage) RIL has now replied that they would file status of Applicant (Association of Persons) when it was required.
Under Rule 31 of GI Act, 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. (The practice of Issuing such notice is neither being followed in GI Registry as well as under Rule 36 by Trade Mark Registries also)
An application which still requires legal compliance can also be accepted for advertisement. But, it is subject to the condition that it shall be deemed to have been abandoned unless the requirements as above are met by the applicant within the specified period. Surprisingly, how the registrar and examiners failed to realise the deficiencies and discrepancies in the applications even during making the order of advertisement.
Since RIL’s case is totally contradicting the Section 38(1) (a)(b) of GI Act, devoid of minimum standard to be followed and it is a fit case to impose penalty.
SNIPPET:- A multi class Trade Mark Application was allotted to me a month back. After turning the file cover of that application i throbbed as the Trade Mark Application did not have Mark what the applicant needs to be registered. Definitely it is waste of money and time for that applicant as well as registry . Instead of keeping an examiner, who is having well knowledge in class, description of goods and other things, casual labourers are allowed to receive the application, verify and allowing it to pay fee. They acknowledge it without going deeply into the application. If it is continued it would really be a misguiding to applicants/general public, sometimes even to attorneys who are novice in filing T.M. application.
EXAMINER OF TRADE MARKS,
NEW DELHI
Considering the Ambani brothers have been bickering over natural gas as if they own it, the GI for Jamnagar Petrol doesn’t surprise me. This definitely reflects poorly on RIL’s IP advisors and the GI registry personnel.
A basic compulsory training on the various IP concepts (something similar to regular judicial training imparted to Judges)should be given to each of the Registries – Copyright, Trademark, Patent and GI. In fact, I am positive that faculty and students of law schools in the region where the Registries are establish would be more than happy to help conduct these workshops!