World Trade Organization Organisation Mondiale du Commerce Organización Mundial del Comercio

Reply: No such authentic figures are available.

Australia 35, 36, 37, 38, 39, 40, 41, 42, 43, 44:

REPORT BY WTO SECRETARIAT (WT/TPR/S/249): III TRADE POLICIES AND PRACTICES BY MEASURE:(4) MEASURES AFFECTING PRODUCTION AND TRADE: (vi) Intellectual Property Rights: (f) Geographical Indications (GI)

Paragraphs 284 287, pages 120 121 of the Secretariat report set out India's regime for the protection of Geographical Indications (GIs).

35. 
    Could India explain whether prior rights are taken into account in considering whether to protect a later GI? Will an application for a later GI be refused if there is a prior trade mark registration for the same or similar sign?
    

Reply: Yes. Prior rights are taken into account in considering whether to prevent the later GI. This is subsumed in section 26 of the GI Act. Regarding whether the later GI application will be refused if there is prior registration of the same or similar signs, it would all depends on facts of each case.

36. 
    Could India explain how the opposition process described in paragraph 285 works in practice? For instance, what is the duration of the opposition period? Is it extendible?
    

Reply: The opposition procedure under the GI Act is similar to Trade Marks Act. Any person may file an opposition within a maximum of four months. The Registrar will serve copy of the Notice of Opposition to the applicant who shall furnish his counterstatement within two months failing which the GI application shall be treated as abandoned. Where the applicant sends such counterstatement the Registrar sends a copy of the same to the person giving Notice of Opposition. Thereafter, both the opponents and the applicants have three months time each to file evidence in support of opposition and evidence in support of application respectively. The rebuttal evidence of the opponents should be filed within one month strictly in reply. Thereafter, the case becomes ripe for hearing before the Registrar of GI who gives speaking order after hearing the arguments on the merit of the application either dismissing the opposition and allowing the GI application to proceed to registration or vice versa. Since there are only a handful opposition pending in the GI office such cases are normally disposed of in less than a year at present.

In practice, if the GI applicant opposes the request for extension of time by opponent then the Registrar may in his discretion refuse to extend the time for filing evidence beyond three months where it is so requested by the opponents and fix the matter for main hearing.

37. 
    Can the Registrar of Geographical Indications refuse, ex officio, to register a term which is ordinarily and legitimately used by traders to describe or indicate their goods or products? Or can protection of such a term only be prohibited where a court has made a determination that the term is generic?
    

Reply: Yes. The determination that a GI has become generic or is an indication of the common name of such goods or serves as a designation for or indication of nature, type or other characteristic of goods can be raised ex officio by the Registrar even at the pre publication stage. The onus then shifts on the GI applicant to prove that the prima facie inference of such GI having become generic or the common name of such goods is misconceived and such application qualifies for GI protection. The grounds for ex officio refusal should be based on sound reasoning and preponderance of massive use of the purported GI throughout the country as the common name of such product. Where a potential GI applicant is confronted with ex officio objection, the same is appealable before IPAB also.

The law also permits the Registrar to make a determination under 9(f) whether the GI applied for has become the generic name of such product in opposition proceedings if so contested by the opponent.

38. 
    What is the period from the day when the Registrar first advertises a GI application to registration of the GI? May an interested party seek an extension of that time for the purposes of lodging an objection?