[*Long post]
We reported that a rectification application had been filed under Section 27 of Geographical Indications of Goods (Registration and Protection) Act, 1999 (“GI Act”) for removal of ‘Darjeeling Tea’ GI. The Assistant Registrar vide Order dated 28.09.2012 (“Darjeeling TeaOrder”) rejected the application inter alia on the ground of absence of locus standi. I shall argue that the Darjeeling Tea Order is legally incorrect vis-à-vis the ground of locus standi. I shall analyse other issues in a later post. [For Hindu report on Darjeeling Tea Order, see here.]
[As you are aware of, 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.]
In ‘Filing rectification application under the GI Act, 1999’, I noted that Mr. Praveen Raj, representing public interest, filed the rectification application for removal of ‘Tirupati Laddu’ GI tag. [For background, see here.] The Assistant Registrar, vide his Order dated 30.07.2012 (“Tirupati Laddu 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.” (paragraph 6) 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 Anr. v. Addisons Paint and Chemicals Ltd. (“Hardie Trading Ltd”) and IPAB order on Payyannur ring [covered here], I argued that Section 27 of GI Act allows filing of rectification application on the ground of public interest and therefore, the Tirupati Laddu Order was dubious vis-à-vis its merits on the issue of locus standi.
GI Registrar’s Order on Darjeeling Tea (“Darjeeling Tea Order”) [For background, see here and here.]
Applicant did not enjoy locus standi
The applicant contended that he was a public spirited citizen. As registered GIs are enforceable against each and every citizen, it was contended that the applicant was an aggrieved person and therefore, within his right to file and initiate present proceedings.
The Assistant Registrar negated the contention and held that the “grievance of an applicant in rectification/cancellation petition must be legal and not sentimental and that common informers or persons who are interfering from merely sentimental notions are not persons aggrieved. Beyond a mere averment that the Applicant is a mere user of various kinds of tea, the Applicant has not shown the larger public that would be served and the mischief that would be remedied by the relief sought by him.” (paragraph 7)
According to the Darjeeling Tea Order, the averments of the rectification applicant “show that the Applicant is a mere common informer without any real interest in the Register being corrected.” A person cannot bring a rectification application challenging the registration unless the rectification applicant exhibits that he is harmed by the registration. Further, “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. The Applicant has miserably failed to prove his locus standi as a person aggrieved. The first issue of locus standi was decided against the rectification applicant.”(paragraphs 10 & 11)
Analysis
The Supreme Court, in Hardie Trading Ltd, dealt with Section 46 & Section 56 of the Trade And Merchandise Marks Act, 1958 (“TM Act, 1958”). On drawing a comparison table, I pointed out that Section 56 of TM Act, 1958 and Section 27 of GI Act are almost identical provisions and therefore, the judgment in Hardie Trading was relevant vis-à-vis GI Act.
The Darjeeeling Tea Order cited Hardie Trading Ltd. It went a step further and cited the Supreme Court judgments in Kabushiki Kaisha Toshiba v. Tosiba Appliances Company & Ors. (“Kabushiki judgment”) and Infosys Technologies Ltd. v. Jupiter Infosys Ltd & Another (“Infosys judgment”) which affirmed Hardie Trading Limited. The Infosys judgment, citing paragraph 42 of Kabushiki judgment, categorically noted that Section 46 & Section 56 of TM Act, 1958 engrain private interest and public interest respectively.
The Darjeeling Tea Order seemed to lack clarity while setting out the ambit of “person aggrieved”under the GI Act. According to the Darjeeling Tea Order, the concept of “person aggrieved”under the GI Act is similar to that of Section 46 & Section 56 of TM Act, 1958. (paragraph 9). Further, “transplanted in the context of the GI Act, the expression “person aggrieved” must borrow its specific rationale and meaning from the express objective of the GI Act.”(paragraph 10). On one hand, the aforesaid order stated that the concept is similar to that of Section 46 & Section 56 of TM Act, 1958. On the other hand, it stated that the expression “must borrow its specific rationale and meaning from the express objective of the GI Act.” Read as a whole, it is evident that the Darjeeling Tea Order examined private interest rather than public interest for discerning the scope of “person aggrieved” under Section 27 of GI Act.
I disagree with the Darjeeling Tea Order.
Firstly, as pointed out earlier, Section 56 of TM Act, 1958 and Section 27 of GI Act are almost identical provisions. Both the provisions are titled ‘Power to cancel or vary registration and to rectify the register’. Section 46 of TM Act, 1958 is an altogether different provision titled ‘Removal from register and imposition of limitations on ground of non- use’. Section 27 of GI Act and Section 56 of TM Act, 1958 (not Section 46 of TM Act, 1958) are similar provisions.
Secondly, Section 27 of GI Act engrains the same ethos as that of Section 56 of TM Act, 1958. The objective of the GI Act “is to provide for the registration and better protection of geographical indications relating to goods.” As stated by House of Lords in the matter of Powell’s Trade Mark 1894 (11) RFC 4 (which is cited in Hardie Trading Limited), “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, maintain the correctness of register and thereby protect geographical indications relating to goods, the ambit of “person aggrieved” cannot be limited to those who are in the same trade. It should engrain public interest. Therefore, Section 27 of GI Act and Section 56 of TM Act, 1958 cannot be treated differently.
According to the Darjeeling Tea Order, “Beyond a mere averment that the Applicant is a mere user of various kinds of tea, the Applicant has not shown the larger public that would be served and the mischief that would be remedied by the relief sought by him.” (paragraph 7) I do not agree. It was averred that the Tea Board did not have the locus standi to file the application for ‘Darjeeling Tea’ GI for the reason that a mere representation as a representative of stakeholders of Darjeeling Tea would not be enough. It is to be noted that maintaining the purity of the register by itself engrains public interest. A registration in favour of the wrong representative does affect the purity of the register. Thus the aforesaid averment engrained the element of public interest. I am, however, disinclined to opine further as the extent of assertion made by the applicant vis-à-vis the public interest component involved in removal of GI tag is not clear. Irrespective of the aforesaid position, the Darjeeling Tea Order is legally incorrect as it emphasized on pegging the private interest component rather than the public interest component. [On a related note, Prashant argued [here and here] that more than 50% of all G.I. registrations are secured by the government/governmental bodies none of whom comply with the definition of ‘producers’ under the G.I. Act, 1999.]
Conclusion
Even though the Darjeeling Tea Order cited the relevant Supreme Court judgments, it adopted an approach oblivious of the principles set out by the aforesaid judgments. It evidently negated the aforesaid judgments when it held “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.” (paragraph 11) In other words, the Order emphasized on pegging the private interest rather than public interest and thereby, negated the relevant Supreme Court judgments. Irrespective of the extent of assertion made by the applicant vis-à-vis the public interest component involved in removal of GI tag, the Darjeeling Tea Order is legally incorrect as it emphasized on pegging the private interest component rather than the public interest component.
As evident from the above discussion, both the Tirupati Laddu Order and Darjeeling Tea Order are legally incorrect orders. While the Tirupati Laddu Order completely overlooked the relevant Supreme Court judgments, the Darjeeling Tea Order cited the same! It may be a sheer coincidence that the conclusions in both the orders are couched in identical terms.. (See the highlighted portions of this post.)
It may be a sheer coincidence that the conclusions in both the orders are couched in identical terms.