[*Long Post]
As you are aware of, rectification application can be filed under Section 27 of Geographical Indications of Goods (Registration and Protection) Act, 1999 (“GI Act”). I intend to examine whether the aforesaid provision allows filing of rectification application on the ground of public interest. I shall argue in affirmative relying on the Supreme Court judgment in Hardie Trading Ltd. and Anr. v. Addisons Paint and Chemicals Ltd. (“Hardie Trading Ltd”) and IPAB order in Payyannur ring [covered here]. Prashant had earlier inter alia covered this issue here.
As you are aware of, rectification application can be filed under Section 27 of Geographical Indications of Goods (Registration and Protection) Act, 1999 (“GI Act”). I intend to examine whether the aforesaid provision allows filing of rectification application on the ground of public interest. I shall argue in affirmative relying on the Supreme Court judgment in Hardie Trading Ltd. and Anr. v. Addisons Paint and Chemicals Ltd. (“Hardie Trading Ltd”) and IPAB order in Payyannur ring [covered here]. Prashant had earlier inter alia covered this issue here.
Section 27 of the GI Act empowers the Registrar to cancel or vary any registration and thereby rectify the register. The provision gets triggered when an “aggrieved person” applies to the Appellate Board or to the Registrar. Does “aggrieved person” include person acting on public interest? Or does it mean that an applicant is required to adduce evidence to the effect that he is directly harmed by the registration?
I. Hardie Trading Limited
The Supreme Court, in the instant case, examined “person aggrieved” in Sections 46 and 56 of Trade and Merchandise Marks Act, 1958 (“TM Act, 1958”). While Section 46 dealt with the removal of a registered trademark from the register on the ground of non-use, Section 56 dealt with situations where the initial registration should not have been or was incorrectly made.
The Court held that the phrase “person aggrieved” for the purposes of removal on the ground of non-use under Section 46 had a different connotation vis-a-vis the phrase used in Section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the Register. In the latter case, the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to have such wrongful entry removed. The Court relied on judgment delivered by House of Lords in the matter of Powell’s Trade Mark 1894 (11) RFC 4: “… although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct , and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the Register a mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation.
Wherever it can be shown, as here, that the Applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark, if remaining on the Register, would, or might, limit the legal rights of the Applicant, so that by reason of the existence of the entry on the Register he could not lawfully do that which, but for the existence of the mark upon the Register, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved.”
On the other hand, if the ground for rectification is merely based on non-use, it does not amount to public mischief by way of an incorrect entry. The non-user does not by itself render the entry incorrect. It gives an affected interested person the right to apply for its removal. An applicant must therefore show that “in some possible way he may be damaged or injured if the trade mark is allowed to stand; and by “possible” I mean possible in a practical sense, and not merely in a fantastic view. …. All cases of this kind, where the original registration is not illegal or improper, ought to be considered as questions of common sense, to a certain extent, at any rate; and I think the Applicants ought to show something approaching a sufficient or proper reason for applying to have the trade mark expunged. It certainly is not sufficient reason that they are at loggerheads with the Respondents or desire in someway to injure them.”
It is, thus, evident that the Court drew a clear distinction between Section 46 & 56 of Act. I understand that one may, relying on a part of the observation (which is highlighted), argue that the “person aggrieved” has to be in a similar trade. I do not agree with the aforesaid interpretation as the observation (which is highlighted) reflected the fact situation presented before House of Lords. Further, it was not an absolute observation as the earlier paragraph (which emphasized on the correctness of register) qualified the following paragraph.
As stated by House of Lords, “it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the Register a Mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation.” If the objective is to preclude public mischief and maintain the correctness of register, the ambit of “person aggrieved” cannot be limited to those who are in the same trade.
Section 56 of TM Act, 1958 and Section 27 of GI Act
As evident from the following table, Section 56 of TM Act, 1958 and Section 27 of GI Act are almost identical provisions. The judgment in Hardie Trading, therefore, acquires significance vis-à-vis GI Act.
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Section 56 of TM Act, 1958 – Power to cancel or vary registration and to rectify the register
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Section 27 of GI Act – Power to cancel or vary registration and to rectify the register
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On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
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On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a geographical indication or authorised user on the ground of any contravention, or failure to observe the condition entered on the register in relation thereto.
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Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
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Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
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The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
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The tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
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The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub- section (1) or sub- section (2).
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The tribunal, of its own motion , may , after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2)
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Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.
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Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.
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The power to rectify the register conferred by this section shall include the power to remove a trade mark registered in Part A of the register to Part B of the register.
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II. IPAB Order on Payyanur Ring
IPAB was quite unequivocal in SubhashJewellery v. Payyannur Pavithra Ring Artisans when it held that “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.” (paragraph 32)
GI Registrar’s Order on Tirupati Laddu [Sai Vinod had earlier blogged on the GI Registrar’s Order here.]
Mr. Praveen Raj filed the rectification application as a person who represented public interest. The Assistant Registrar, vide his Order, rejected Mr. Praveen Raj’s petititon inter alia on the ground of absence of locus standi. According to the Order, “the rectification applicant never elucidates how he was wounded by the registration of the product. On the other hand, it is the duty of the rectification applicant to set out fully the nature of the applicant’s interest in the registered product. The rectification applicant was unsuccessful to satisfy this Tribunal on this issue of his interest towards the registered GI.”Further, it was held that the applicant was not involved in similar trade or manufacturing a similar GI product and therefore, had no locus standi.
In the light of Supreme Court judgment in Hardie Trading Ltd and IPAB order on Payyannur ring, the Order is dubious vis-à-vis its merits on the issue of locus standi. If an intellectual property right dispute engrains the issue of public interest (as held by IPAB in its Order on Payyannur Ring), why cannot a “person aggrieved” be a public spirited citizen? If the Registrar and the Board are expected to protect public interest (as held by IPAB in its Order on Payyannur Ring), how can they reject an application filed on the ground of public interest?
I have just enrolled into an LLB course and I am interested to pursue IP, specifically GI because I come from the land of Alphonso mango, Konkan, which has applied for GI and is pending for a long time. I had some queries, the answers of which I could not get from the GI Act.
I see that the act mandates a producer body to be the applicant. For clarity and ease of this discussion, let’s assume that Alphonso mango has been granted GI. Now in most cases, specifically in Konkan, where co-operation is not the norm…
1. What are the rights of the GI protection of farmers who are from Konkan, but not members of the applicant organisation?
2. Can the applicant stop farmers in Konkan from selling substandard Konkan mangoes under the GI name?
3. Farmers who are not members of the applicant organisation and also do not want to be members, if they oppose GI citing they are aggrieved parties, what happens?
4. If such farmers come together, set up another organisation and oppose GI granted to the applicant organisation, what will happen?
5. Can the applicant organisation mandate and enforce quality parameters of mangoes that will be sold on the GI name??
6. Does grant of the GI also grant protection and control over the mis-spellings of the name?
7. Under the Act, can advertising vehicles like news papers, advt agencies, blogs, websites, or Google and Facebook, be held liable if they carry advts of unauthorised parties selling a GI status products. Means if Sai Bandhu Flowerwale is not an authorised seller, and places an advt in Times of India saying Madurai Malli available, can Times of India be held liable? As a corollary, will a Court give a blanket order to all advt vehicles that they should not accept advts selling Madurai Malli, if the advt release order is not accompanied by an authorisation letter from the applicant organisation?
8. Many fruits have gotten GI status. Is there any concrete example of any applicant organisation strictly enforcing its GI rights?
9. Fruits, vegetables and flowers are heavily sold through the Mandis or APMCs as they are called, through traders or agents. While there is talk of producers in the Act, there does not seem to clear guidelines on sellers. How can the applicant organisation enforce its rights in these mandis? Can Sai Bandhu Flowerwale be made the authorised seller for Madurai Malli? Does he have to pay fees? Can he be mandated to keep records?
10. Can the applicant organisation charge a royalty on sale of the GI grated product?
11. Packaging is of prime importance. Does the law make packaging producers liable for manufacturing say boxes carrying the GI status name and selling those boxes to unauthorised parties? Can a royalty be charged for manufacturing/printing boxes on the GI status name?
Regards,
Divya