World Trade Organization Organisation Mondiale du Commerce Organización Mundial del Comercio

Reply: The above information can be obtained from National Crime Records Bureau of Ministry of Home Affairs, Government of India.

US 91:

Report by the Secretariat (WT/TPR/S/249): III. TRADE POLICIES AND PRACTICES BY MEASURE: (3) Measures Directly Affecting Exports: (4) Measures Affecting Production and Trade: (vi) Intellectual property rights: Page 120, paragraph 285:

The Secretariat Report indicates that the "Geographical Indications of Goods (Registration and Protection) Act 1999" stipulates the grounds for refusing registration of Geographical Indications. Can India confirm that the grounds include that the proposed geographical indication is likely to cause confusion with an earlier established right, whether established via a prior registration or through prior use? Also, can India confirm that an additional ground for refusing registration of a geographical indication is if there is evidence that the proposed geographical indication is the common name (the generic term) for a good in India?

Reply: Yes. It is confirmed that grounds for refusing registration of geographical indications include that the proposed geographical indication is likely to cause confusion with an earlier established right, whether established via a prior registration or through prior use.It is provided under section 9(a) of India's GI Act that "a geographical indication the use of which would be likely to deceive or cause confusion shall not be registered as a geographical indication". However, the expression "earlier established right" has not been used in the GI Act. But Section 26 of the Act protects a trade mark which contains or consists of a GI which has been applied for or registered in good faith or where such trade mark has been used in good faith before the date of filing of an application for a GI in India. Hence, such 'earlier established rights' are subsumed in the Act.

Section 9 (f) of the GI Act provides that "a geographical indication which are determined to be generic names or indications of goods and are, therefore, not or ceased to be protected in the country of origin, or which have fallen into disuse of that country shall not be registered as a geographical indication". Explanation 1 to section 9 further provides "For the purpose of this section, generic names or indications, in relation to goods, means the name of a goods which, although relates to the place or the region where the goods was originally produced of manufactured, has lost its original meaning and has become the common name of such goods or serves as a designation for an indication of the kind, nature, type or other property or characteristic of the goods.