Breaking News: IPAB Revokes GI on Payyanur Pavithram Ring

In an order dated November 14, 2012, the IPAB set aside the order dated July 14, 2009 by which a GI was granted on Payyanur Pavithram ring to Payyanur Pavithra Ring Artisans and Development Society (PPRADS).

On a cursory reading of the order, it appears that the grant of the GI was set aside on grounds that the application for GI filed by PPRADS was short on crucial particulars which established the right of the society to file the application on behalf of artisans manufacturing the ring.

Critically, it appears that the right of the Society to file the application was seriously circumspect with there being grave doubts if the artisans in the trade were even aware of the application for GI filed by the society. Following are the relevant observations of the IPAB:

“28.       We could have allowed the appeal on the sole ground that the application has not been properly filed.  But we thought that we should take a lenient view since this is one of the early GI’s.  There are many shortcomings in the proceedings. It is clear that the applicant/respondent has failed to furnish the crucial particulars.  The applicant ought to have shown that “the producers”” of the rings as defined in the Act had a desire to form the association. There should be evidence to show that the association represents the interest of the producers.   A mere claim that the society is called Payyannur Pavithra Ring Artisans and Development Society will not suffice.  There should be evidence to show that the producers are desirous of coming together to protect the Geographical Indication, that is clearly absent. Above all on their own admission, it is the Choovatta Valappil family which was entrusted with the technique of making the ring, but even the members of that Tharawad had no notice of the application.  Such an application will defeat the purpose of the Act.

 29.       The lawmakers may consider introducing a provision which requires each applicant to effect a publication akin to the Section 4 Notice in the Land Acquisition Act. The fact of the filing of the application must be published in a newspaper having good circulation in the locality and in the language of the territory, region or locality which is the geographical origin of the goods in question.   We are deliberately not using the word “vernacular” since that has such a patronizing colonial flavour, whichever language it may be it is an Indian language.  There must also be affixture of public notice in prominent places in the territory, region or locality as the case may be. Only then, the artisans will know that a Geographical Indication has been applied for in respect of the goods that they are creating.  We are aware that “a producer” includes the person who deals in this goods or selling those goods.        However the main object of the Act is to protect those persons who are directly engaged in exploiting, creating or making or manufacturing the goods.  They have the hands-on experience of the G.I. products.  When these creators or makers complain that the application has been made behind their back  we cannot allow the registration to remain.  The artisans like weavers, goldsmiths and other craftsmen may not be affluent or literate in English language, so the publication must be in the local language. The advertisement in S.13 is in the Trade Journal is of no use and will not serve the same purpose as a public notice akin to the S.4 Land Acquisition Act notice.  The appellant has also complained that the Consultative Group has not visited the place and the Quorum was not formed.”

The following observation in Para 32 is even more noteworthy:

“The averments in the appeal and opposition show how the craftsmanship of the ring has been handed down from generation to generation.  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.”

Accordingly, the matter has been remanded to the GI registrar for reconsideration of the application and disposal within 6 months.

This is one of the first clear pronouncements on the GI Act, with the observations in the verdict having important ramifications for pending GI applications and oppositions before the GI Registry. The most important take-away, in my opinion, is the abundantly clear recognition of the public interest angle of GI rights, and the need to ensure that stakeholders are made aware of the filing of GI applications so that they may object to or seek to be included as part of the application. 

Darjeeling Tea Steams in Dispute

Darjeeling Tea seems to be in the midst of a dispute, over its GI registration and related trade mark rights. The Tea Board of India, which holds rights to the GI (a device as shown here) and a Certification mark, moved against ITC Limited for naming a ‘section’ of its hotel ITC Sonar as “Darjeeling Lounge”. 

The Tea Board of India, has asserted exclusivity over "Darjeeling", and has moved an action for infringement and passing of both the Registered GI and certification mark, as well as dilution of the "Darjeeling" brand. 

Defending the Interlocutory Petition, ITC asserted that the rights under the Trade Marks Act and GI Act were meant to be restrain “use” only on goods and not services. They specifically asserted that the GI Act sought to protect indications with respect to goods only, on account of the quality, reputation or other characteristics attributable to their geographical origin. 

In giving due weight to the arguments, the Court examined the provisions of the GI Act as well as the Trade Marks Act. The Court, recognizing a cause of action in an unauthorized use of a good's certification mark by any service provider, felt that in view of the GI Act, infringement as under Section 22(1) of the GI Act was not available to Tea Board, since the use by ITC was not in connection with any designation or presentation of good. 

The Court, further ruled that against Tea Board on the passing off action, stating that by virtue of its registration as a GI or as a certification mark, they could not claim exclusive rights to “Darjeeling”. The Tea Board of India moved in appeal to this order. 

The Division Bench addressed the question of the scope of the Tea Board’s rights in view of its existing registrations. The Bench in view of Sections 28 and 29 (dealing in Rights conferred by registration and Infringement of registered Trademarks) and Sections 75 and 78 ( corresponding to rights in Certification trademarks). 

The Court particularly deliberated upon the infringement by use of a registered trademark by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered [sec 29 (5)] and observed that a corresponding provision is absent under Section 75. 

The Court opined that extrapolating the provisions in Section 29 to rights conferred under Section 75, is hence disallowed. With respect to the passing off action, the Court held that a prima facie case was not made out, since the Tea Board I of India neither traded in tea nor is in the service of rendering hospitality. The Court found that ITC in using the word DARJEELING did not falsely assert that it had the right to certify that the tea served in the lounge grows in Darjeeling. 

Further, the Court concluded that Tea Board's prima facie failure in proving violation of its registered certification trademark in terms of sec 75 of the TM Act, as it had not registered its name as holder of the mark DARJEELING in respect of hotel business but for the purpose of certification of tea as one grown in Darjeeling where benefit of Sections 28 and 29 of the TM Act is not available. 

The suit filed by Tea Board is pending before the High Court of Calcutta and the Intellectual Property Appellate Board (IPAB) is also set to hear this dispute, in respect of a challenge in opposition proceedings. Tea Board moved to IPAB challenging ITC’s application to register "Darjeeling Lounge" under class 42. This application had earlier been abandoned by the Registrar, since ITC had failed to file its counter-statement in time.

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.

Snippets: Draft GI Manual Published, Comments Invited

The Indian Patents, Designs and Trademarks Office has published the Draft Geographical Indications Manual. Comments and suggestions on the contents of the manual may be mailed to sukhdeep.ipo@nic.in by April 20, 2011.

Snippets: A Few GIs More

This is probably stale news, but reportedly, last November, the famed Surat Zari was granted a GI. The grant was subsequently notified in the GI Journal No. 31 (I could call it ‘GI Jo’) under Rule 41 of the GI Rules, which mandates publication to invite opposition to the grant of a GI.

Zari generally refers to metal embroidery on garments in combination with yarn and silk or cotton. The application was filed by 5 manufacturing associations representing Surat Zari. The craft has been practiced in Surat predominantly by the Rana Community. It is believed that 1.5 lakh people derive their livelihood directly or indirectly from this industry.

In addition to Zari, the famed Guntur Sannam Chilli too has been granted a GI. In all, the grant of 194 GIs was notified in the December GI Journal.