[*Slightly long post]
Background:
The Intellectual Property Appellate Board (“IPAB”), in its recent order in SubhashJewellery v. Payyannur Pavithra Ring Artisans (“Order”), decided on an appeal made against the order passed by the Registry on 14.07.2009 in opposition proceedings No. GIR/TOP 2/347/09 granting Geographical Indication registration of Payyannur ring to 1st respondent/ applicant, Payyannur Pavithra Ring Artisans & Development Society. The appellant had earlier filed writ petition in the Madras High Court for quashing the order of Registry and restraining the Registrar from proceeding further with the respondent’s application. The Division Bench of the Madras High Court dismissed the writ petition by order dated 07.04.2010 on the ground that the appellant could have exhausted its alternative remedy by filing an appeal before IPAB. [For more on the background of the dispute, see here.]While removing the name of the 1st respondent/applicant from the register and remanding the matter to the GI Registrar, the IPAB tried to iron out the creases and bring in clarity. The Order will have ramifications upon the pending applications, opposition proceedings and rectification proceedings. The Order is quite commendable considering the pragmatic approach adopted by IPAB in deciding the dispute. The Order appreciated that the Geographical Indications of Goods (Registration and Protection) Act, 1999 (“Act”) is still in its incipient stage and the group targeted under the Act may not be adequately equipped to protect their own interests. It is to be appreciated that IPAB was not tied down by procedural formalities and in fact, adopted a lenient approach considering the very nature of the dispute.
Highlights
The Order examined the ambit of Section 11 of the Act. The applicant under Section 11 may be any association of persons or producers or any organisation or authority established by or under any law for the time being in force which represents the interest of the producers of the concerned goods, who are desirous of registering a Geographical Indication in relation to such goods. Section 11(2) specifies the particulars to be furnished in the application under Section 11. Section 11 (2) (e) requires a statement “containing such particulars of the producers of the concerned goods, proposed to be initially registered with the registration of the Geographical Indication”. In the light of Objects and Reasons and Section 11 of the Act, it was held that the Act clearly requires the submission of the particulars of the producers. The application should show that the association represents the interest of the producers.
The Order examined “producers” under Section 2(k) of the Act. The definition is wide and includes any person “who trades or deals in such production, exploitation making or manufacturing” of the goods. Even though the definition can include businessmen, the vulnerable groups viz., artisans, actual craftsmen and growers who are the real interested persons cannot be left out. The main object of the Act is to protect those persons who are directly engaged in exploiting, creating or making or manufacturing the goods. If the creators or makers prove that the application has been made without their knowledge, the registration will have to be removed. The application shall adduce credible evidence to show that the producers are desirous of coming together to protect the Geographical Indication.
It was suggested that the Parliament may consider introducing a provision which requires each applicant to effect a publication akin to the publication of notice under Section 4 of the Land Acquisition Act, 1894. The artisans like weavers, goldsmiths and other craftsmen may not be affluent or literate in English language. Therefore, the publication shall be in the local language. The targeted group under the Act cannot be left unaware about the filing of any application which affects them.
The IPAB also looked into the constitution of Consultative Group. Rule 33 of Geographical Indications of Goods (Registration and Protection) Rules, 2002 inter alia states that a Consultative Group consisting of seven members “well versed in the varied intricacies of this law or field” shall be constituted for examining the application presented before the Registrar. In the light of the Rule, a person with expertise shall be a member of the Consultative Group. This will lend credibility to the proceedings. Further, the report of the Consultative Group shall be a complete document and therefore, fit to help the Registrar in arriving at his/her conclusion. It must contain all the details which are relevant for arriving at the conclusion.
Payyanur Ring dispute
It was held that the application filed by the 1st respondent/applicant did not adduce evidence to the effect that the association represented the interests of the producers of the ring who were desirous of the registration of Geographical Indication. A mere claim that the society is called Payyannur Pavithra Ring Artisans and Development Society would not suffice. It was observed that the applicant failed to set out the particulars such as names of producers, the nature of their involvement (whether they manufacture the ring or whether they trade/deal in the making or manufacture of rings), place of production being Payyannur etc. Considering the petition filed by the intervener and filing of affidavits by several persons stating their interest in the matter pursuant to the publication of instant proceedings in a prominent Malayalam newspaper, it was concluded that the actual interested persons were left unaware about the filing of the application. Further, it was noted that none in the Consultative Group constituted pursuant to Rule 33 of Geographical Indications of Goods (Registration and Protection) Rules, 2002 was familiar with the craftsmanship of gold/ jewellery.
It was observed that the disputes in IP matters are not just private disputes. They always carry public interest element. Noting the improper filing of application and the inherent shortcomings in the proceedings, IPAB set aside the impugned order and remanded the matter to the Registrar for consideration. It adopted a lenient stand on the ground that the impugned Geographical Indication is one of the earlier Geographical Indications. The Registrar was directed to pass the orders within six months from the date of receipt of the Order.
Significance of the Order
The Order is expected to influence the outcome of the rectification petition filed against the grant of Geographical Indication tag for ‘Darjeeling Tea’ in favour of the Tea Board. [Prashant had covered the issue here.] Tea Board is a statutory body set up under the Tea Act, 1953. It is a government body, controlled mostly by the government with only a few representatives from the tea estate owners and workers. In the light of the instant IPAB order which unequivocally states that the main object of the Act is to protect those persons who are directly engaged in exploiting, creating or making or manufacturing the goods, Tea Board may find itself to be in a difficult position. If it can be proved that the application has been made without the knowledge of those who are directly involved, the end-result is a foregone conclusion in the light of instant Order. Note that “producer” in relation to agricultural goods, inter alia means any person who “produces the goods and includes the person who processes or packages such goods”.
It is nice of IPAB that the interest of the persons concerned has been taken care of. Prashant had rightly pointed out in his earlier blogs to which I agree. I believe some thing concrete should be done for the rectification of the wrongly registered GIs. The suggestion of the IPAB about the publication of the notice in newspapers akin to the publication of notice under Section 4 of the Land Acquisition Act, 1894 is also well thought of.
Para 32 of the IPAB order says ” …………………….. In Intellectual Property Right related matters be it G.I., Patents or Trademarks the dispute is really not inter-partes alone, there is always the issue of public interest. The Geographical Indication Registrar and this Board must protect this public interest. The history of the Payyannur Pavithra Ring, as seen from the statements of all the parties before us shows that though there may be other Rings in the market called Pavithra Ring, this particular design and the manner in which the Ring is made is special to this area. But the application has not been properly filed and there are other shortcomings in the proceedings as well. Hence while removing the name of the respondent from the register, we send it back to the Geographical Indication Registrar”
No let us wait for the Decision of GI Registrar. Proper Interpretation of Section 11(1) is the key in the whole matter
I don’t understand what in law prevents any state instrumentality from being the proprietor of a geographical indication. Have’nt you heard of the parens patriae doctrine. Will this be sufficient for the state to claim as representing producers interest in a more effective manner. The Act has already diluted the ‘GI right’ concept by widely defining the word ‘producer’, to include even a processor and packager. And now if you want to disarm state from exercising control over GI’s, that will in certain, detrimentally impact farmers’ interests
With reference to the sub title “Significance of the order” in this article, let me post below the contents of a news report from “THE HINDU” dated “October 1, 2012”
‘No illegality in granting Darjeeling Tea tag’
The Geographical Indications (GI) Registry has ruled that “there is no illegality in granting the tag for the prestigious product, Darjeeling Tea,” while dismissing a rectification petition seeking to remove the mark.
In its order, the GI Registry said: “Unless a geographical indication is protected in the country of its origin, there is no obligation for other countries to extend reciprocal protection. There is no illegality in granting the GI tag for the prestigious agricultural product, Darjeeling Tea.”
The geographical indication for Darjeeling Tea was registered in October, 2004. The GI registry has published the matter in its journal as per the procedure; the present petition for rectification was filed by Rajeev Saraf of New Delhi five years after the registration.
Seeking the removal of the Darjeeling Tea tag in the Register of the Geographical Indications, Mr. Saraf claimed that he was a user of various kinds of tea and faulted the examining process of the registration. He alleged that the Tea Board had no locus standi to file the application. Being a representative of stakeholders in Darjeeling tea export was not a qualification to become the proprietor of the registration and the registration contravened Section 11 of the Trademark Act. Further, the rectification applicant stated that the Tea Board was a commercial incorporation, not a non-profit body and the board did not have the authority to set the Act in motion.
However, the Tea Board vehemently opposed his application contending that the applicant had not given any reason as to why the rectification petition was filed after almost five years of registration.
The board said the extensive steps it had taken, including obtaining statutory protection for the ‘Darjeeling’ mark, have been central to the continued recognition, preservation and repute of ‘Darjeeling’ as a geographical indication within the country and abroad.
Upholding the registration, Chinnaraja G. Naidu, Assistant Registrar of Geographical Indications Registry, said the applicant was granted sufficient opportunity at the hearing, but he did not even turn up for the hearing and wasted the precious time of the tribunal by filing a playful application to harass the registered proprietor — the Tea Board.
Dismissing the application as a gross misuse of process of law, Mr. Naidu said the applicant was not entitled to gain relief and directed Mr. Saraf to pay Rs. 10,000 toward cost within a month.
He added that Geographical Indications was in the nature of collective community rights and the protection of a geographical indication has significant economic and social implications for a developing country like India, while at the same time protecting the cultural heritage represented by India’s wealth of well-known geographical indications.