Tuesday, October 18, 2011

Does the TM Act need an amendment vis-a-vis GIs?

Certification marks per S. 2(c) of the Trade Marks Act, 1999, extensively defines its ambit to include a variety of goods and services that satisfy the standards set by the proprietor of the certification mark.

The legislation on Geographical Indications, namely The Geographical Indications of Goods {Registration and Protection} Act, (hereinafter the GI Act), to me, seems to be a branch out of the rationale behind certification marks, albeit to a niche segment of goods.

To put it somewhat crudely, the definition of “goods” that are protectable under the Act as a GI, appears to be a subset of the subject matter of certification marks. The provisions dealing in certification trademarks and the definition section of the GI Act, clarify that the scope of the certification trademark is broader than that of the GI Act, the latter focusing on agricultural goods, handicrafts and so on. However, the Trade Marks Act has not been amended to expressly exclude GIs, registered under the GI Act.

In fact, it is interesting to observe that the two Acts appear somewhat similar in nature. The most pertinent similarity, and in my opinion rightly so, is that the absolute grounds of refusal under S. 12(2) Trade Marks Act, 1999 are reiterated nearly verbatim, under S. 9 of the GI Act.

The overlap between the legislations, tends to create some unrest. If one were to consider the example of Darjeeling tea, which was earlier registered as a certification trademark, and was later registered as India’s first GI, the need for an express amendment appears somewhat clear.

The dispute on the international platform regarding the use of Darjeeling tea as a trademark received much attention, especially since jurisdictions including the United States grant registration to certification marks, but do not have an exclusive legislation governing the protection of GIs. However, little has been said about the overlap in the Indian trademark and GI legislation.

Needless to say, the Trade Marks Act, has in place a well instituted system of opposition. Further, the Act also under S. 25 allows the removal of trademarks, albeit having no mention of improper subject matter being registered.

While the grounds for relative grounds of refusal of a trademark under S. 11(3) disallows in general , registration of anything as a trademark that is liable to be prevented by virtue of any law, in particular the law of passing off and the law of copyright, the provision seems to have no mention of the law on Geographical Indications in particular.

To me, this appears rather strange, since the law on trademarks and GIs seem to be more closely related to trade and commerce, than most.

If one were to attack the jurisprudential roots, the law on GIs appears to bear roots in the pre-seventeenth Roman society and the right of commons. A Roman Cive had several rights, and these rights were vested in him, not as an individual but as pater familias or head of the family. The individual enjoyed rights because it was believed that only thus could the general ends of the community be realized. He had no claim in the rights and did not enjoy right as a matter of right but was conferred in him to attain the community’ common purpose. These rights were restrictive in nature, restricted in depth and scope.

Drawing an analogy to the concept of Geographical Indications as practiced and administered, the right in an “authorized user” seems to stem out of the fact that he is a member of a community producing a craft, textile, agricultural product or any other object qualifying as the subject matter of registration. 

The right to use the GI tag is vested upon him by the Endowment Board, association or any other body that acts on his behalf as the registrant and the authorized user, as a consequence of being so, enjoys the right to further the common cause of the community viz. Commercial exploitation of the product through the use of the GI tag. In this regard, he does not enjoy the right as a matter of right, but as a member of the community with due restrictions placed upon his scope of use of the same.

Compared to this view, trademarks and other IP seem to confine to the concept of property as evolved with the “Theory of individuation” whereby the individual is demarcated as the bearer of the right.

This difference to my eyes is clarified all the more, because of the manner in which the Statement of Objects of the Acts are framed and hence an amendment seeking the express exclusion of GIs even more necessitated.

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