66. Suit for infringement, etc. to be instituted before district court.
66. Suit for infringement, etc. to be instituted before district court.—(1) No suit,—
(a) for the infringement of a registered geographical indication; or
(b) relating to any right in a registered geographical indication; or
(c) for passing of arising out of the use by the defendant of any geographical indication which is identical with or deceptively similar to the geographical indication relating to the plaintiff, whether registered or unregistered,
shall be instituted in any court inferior to a district court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a “district court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908, (5 of 1908), or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation.—For the purposes of sub-section (2), “person” includes the registered proprietor and the authorised user.
67. Relief in suit for infringement or for passing off.
67. Relief in suit for infringement or for passing off.—(1) The relief which a court may grant in any suit for infringement or for passing off referred to in Section 66 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or account of profits, together with or without any order for the delivery—up of the infringing labels and indications for destruction or erasure.
(2) The order of injunction under sub-section (1) may include an ex parte injunction or any interlocutory order for any of the following matters, namely:—
(a) for discovery of documents;
(b) preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit;
(c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiffs ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
(3) Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) on account of profits in any case—
(a) where in a suit for infringement the defendant satisfies the court—
(i) that at the time he commenced to use the geographical indication complained of in the suit he was unaware and had no reasonable ground for believing that the geographical indication of the plaintiff was on the register; and
(ii) that when he became aware of the existence and nature of the plaintiff’s right in the geographical indication, he forthwith ceased to use the geographical indication in relation to good in respect of which it was registered; or
(b) where in a suit for passing off, the defendant satisfies the court—
(i) that at the time he commenced to use the geographical indication complained of in the suit he was unaware and had no reasonable ground for believing that the geographical indication relating to the plaintiff was in use; and
(ii) that when he became aware of the existence and nature of the geographical indication relating to the plaintiff he forthwith ceased to use the geographical indication complained of.
68. Authorised user to be impleaded in certain proceedings.
68. Authorised user to be impleaded in certain proceedings.—(1) In every proceeding under Chapter VI or under Section 31, every authorised user of a geographical indication to which such proceeding relate, who is not himself an applicant in respect of any proceeding under that chapter or section, shall be made a party to the proceeding.
(2) Notwithstanding anything contained in any other law, an authorised user so made a party to the proceeding shall not be liable for any costs unless he enters an appearance and takes part in the proceeding.
69. Evidence of entries in register, etc. and things done by the Registrar.
69. Evidence of entries in register, etc. and things done by the Registrar.—(1) A copy of any entry in the register or of any document referred to in sub-section (1) of Section 78 purporting to be certified by the Registrar and sealed with the seal of the Geographical Indications Registry shall be admitted in evidence in all courts and in all proceedings without further proof or production of the original.
(2) A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Act or the rules to make or do shall be prima facie evidence of the entry having been made, and of the contents thereof, or of the matter or things having been done or not done.
70. Registrar and other officers not compellable to produce register, etc.
70. Registrar and other officers not compellable to produce register, etc.—The Registrar or any officer of the Geographical Indications Registry shall not, in any legal proceedings to which he is not a party, be compellable to produce the register or any other document in his custody, the contents of which can be proved by the production of a certified copy issued under this Act or to appear as a witness to prove the matters therein recorded unless by order of the court made for special cause.
71. Power to require goods to show indication of origin.
71. Power to require goods to show indication of origin.—(1) The Central Government may, by notification in the Official Gazette, require that goods of any class specified in the notification which are made or produced beyond the limits of India and imported into India, or, which are made or produced within the limits of India, shall, from such date as may be appointed by the notification not being less than three months from its issue, have applied to them an indication of the country or place in which they were made or produced, or of the name and address of the manufacturer or the person for whom the goods were manufactured.
(2) The notification may specify the manner in which such indication shall be applied, that is to say, whether to goods themselves or in any other manner, and the times or occasions on which the presence of the indication shall be necessary, that is to say, whether on importation only, or also at the time of sale, whether by wholesale or retail or both.
(3) No notification under this section shall be issued, unless application is made for its issue by persons or associations substantially representing the interests of dealers in, or manufacturers, producers, or users of, the goods concerned, or unless the Central Government is otherwise convinced that it is necessary in the public interest to issue the notification, with or without such inquiry, as the Central Government may consider necessary.
(4) The provisions of Section 23 of the General Clauses Act, 1897 (10 of 1897) shall apply to the issue of a notification under this section as they apply to the making of a rule or bye-law the making of which is subject to the condition of previous publication.
(5) A notification under this section shall not apply to goods made or produced beyond the limits of India and imported into India, if in respect of those goods, the Commissioner of Customs is satisfied at the time of importation that they are intended for exportation whether after transhipment in or transit through India or otherwise.
72. Certificate of validity.
72. Certificate of validity.—If in any legal proceedings for rectification of the register before the Appellate Board a decision is on contest given in favour of the registered proprietor or, as the case may be, authorised user of the geographical indication on the issue as to the validity of the registration of the geographical indication or the authorised user, the Appellate Board may grant a certificate to that effect, and if such a certificate is granted, then, in any subsequent legal proceeding in which the said validity comes into question the said proprietor or the authorised user, as the case may be, on obtaining a final order or judgment in his favour affirming validity of the registration of the geographical indication or the authorised user, as the case may be, shall unless the said final order or judgment for sufficient reason directs otherwise, be entitled to his full cost charges and expenses as between legal practitioner and client.
73. Groundless threats of legal proceedings.
73. Groundless threats of legal proceedings.—(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a geographical indication which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the authorised user of the geographical indication, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the geographical indication is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the geographical indication.
(2) The last preceding sub-section does not apply if the registered proprietor of the geographical indication or an authorised user thereof with due diligence commences and prosecutes an action against the person threatened for infringement of the geographical indication.
(3) Nothing in this section shall render a legal practitioner or a registered geographical indications agent liable to an action under this section in respect of an act done by him in his professional capacity on behalf of a client.
(4) A suit under sub-section (1) shall not be instituted in any court inferior to a district court.
74. Address for service.
74. Address for service.—An address for service stated in an application or notice of opposition shall, for the purposes of the application or notice of opposition be deemed to be the address of the applicant or opponent, as the case may be, and all documents in relation to the application or notice of opposition may be served by leaving them at or sending them by post to the address for service of the applicant or opponent, as the case may be.
75. Trade usages, etc. to be taken into consideration.
75. Trade usages, etc. to be taken into consideration.—In any proceeding relating to a geographical indication, the tribunal shall admit evidence of the usages of the trade concerned and of any relevant geographical indication legitimately used by other persons.
76. Agents.
76. Agents.—Where, by or under this Act, any act, other than the making of an affidavit, is required to be done before the Registrar by any person, the act may, subject to the rules made in this behalf, be done instead of by that person himself, by a person duly authorised in the prescribed manner, who is,—
(a) a legal practitioner, or
(b) a person registered in the prescribed manner as a geographical indications agent, or
(c) a person in the sole and regular employment of the principal.
77. Indexes.
77. Indexes.—There shall be kept under the directions and supervision of the Registrar,—
(a) an index of registered geographical indications,
(b) an index of geographical indications in respect of which applications for registration are pending,
(c) an index of the names of the proprietors of registered geographical indications, and
(d) an index of the names of authorised users.
78. Documents open to public inspection.
78. Documents open to public inspection.—(1) The following documents, subject to such conditions as may be prescribed, be open to public inspection at the Geographical Indications Registry, namely:—
(a) the register and any document upon which any entry in the register is based;
(b) every notice of opposition to the registration of a geographical indication, application for rectification before the Registrar, counter-statement thereto, and any affidavit or document filed by the parties in any proceedings before the Registrar;
(c) the indexes mentioned in Section 77; and
(d) such other documents as the Central Government may, by notification in the Official Gazette, specify:
Provided that where such register is maintained wholly or partly on computer, the inspection of such register under this section shall be made by inspecting the computer print out of the relevant entry in the register so maintained on computer.
(2) Any person may, on an application to the Registrar and on payment of such fee as may be prescribed, obtain a certified copy of any entry in the register or any document referred to in sub-section (1).
|
Other Contents of Geographical Indications of Goods (Registration and Protection) Act, 1999 |
|
Sections 1 to 10 |
79. Reports of Registrar to be placed before Parliament.
79. Reports of Registrar to be placed before Parliament.—The Central Government shall cause to be placed before both the Houses of Parliament once a year a report respecting the execution by or under this Act.
80. Fees and surcharge.
80. Fees and surcharge.—(1) There shall be paid in respect of applications and registrations and other matters under this Act such fees and surcharge as may be prescribed by the Central Government.
(2) Where a fee is payable in respect of the doing of an act by the Registrar, the Registrar shall not do that act until the fee has been paid.
(3) Where a fee is payable in respect of the filing of a document at the Geographical Indications Registry, the document shall be deemed not to have been filed at the registry until the fee has been paid.
81. Savings in respect of certain matters in Chapter VIII.
81. Savings in respect of certain matters in Chapter VIII.—Nothing in Chapter VIII shall—
(a) exempt any person from any suit or other proceeding which might, but for anything in that Chapter, be brought against him, or
(b) be construed so as to render liable to any prosecution or punishment any servant of a master resident in India who in good faith acts in obedience to the instructions of such master, and, on demand made by or on behalf of the prosecutor, has given full information as to his master and as to the instructions which he has received from his master.
82. Declarations as to title of geographical indication not registrable under the Registration Act, 1908.
82. Declarations as to title of geographical indication not registrable under the Registration Act, 1908.—Notwithstanding anything contained in the Registration Act, 1908 (16 of 1908), no document declaring or purporting to declare any title of a person to a geographical indication other than a registered geographical indication shall be registered under that Act.
83. Government to be bound.
83. Government to be bound.—The provisions of this Act shall be binding on the Government.
84. Special provisions relating to applications for registration from citizens of convention countries.
84. Special provisions relating to applications for registration from citizens of convention countries.—(1) With a view to the fulfilment of a treaty, convention or arrangement with any country or a country which is a member of a group of countries or union of countries or Inter-Governmental Organisations outside India which affords to citizens of India similar privileges as granted to its own citizens, the Central Government may, by notification in the Official Gazette, declare such country or group of countries or union of countries or Inter-Governmental Organisations to be a convention country or convention countries for the purposes of this Act.
(2) Nothing contained in this Act or the Trade Marks Act, 1999 shall prevent a continued and similar use of geographical indication relating to a country or a country which is a member of a group of countries or union of countries or any Inter-Governmental Organisations, as the case may be, notified under sub-section (1) identifying wines or spirits in connection with goods by any citizen or domiciliary of such country who has used that geographical indication in continuous manner with regard to such goods or any goods relating to such goods, as the case may be, in any part of the territory of that country either—
(a) for at least ten years preceding the 15th day of April, 1994; or
(b) in good faith preceding the date referred to in clause (a).
85. Provision as to reciprocity.
85. Provision as to reciprocity.—Where any country or a country which is a member of a group of countries or union of countries or any Inter-Governmental Organisation specified by the Central Government in this behalf by notification in the Official Gazette does not accord to citizens of India the same rights in respect of the registration and protection of geographical indications as it accords to its own nationals, no nationals of such country or a country which is a member of a group of countries or union or countries or Inter-Governmental Organisations, as the case may be, shall be entitled—
(a) to apply for the registration of, or be registered as the proprietor of geographical indication;
(b) to apply for registration or be registered as an authorised user of a geographical indication.
86. Powers of Central Government to remove difficulties.
86. Powers of Central Government to remove difficulties.—(1) If any difficulty arises in giving effect to the provisions of this Act, the Central Government may, by order published in the Official Gazette, make such provisions not inconsistent with the provisions of this Act as may appear to be necessary for removing the difficulty:
Provided that no order shall be made under this section after the expiry of five years from the commencement of this Act.
(2) Every order made under this section shall, as soon as may be after it is made, be laid before each House of Parliament.
87. Power to make rules.
87. Power to make rules.—(1) The Central Government may, by notification in the Official Gazette and subject to the condition of previous publication, make rules to carry out the provisions of this Act.
(2) In particular, and without prejudice to the generality of the foregoing power, such rules may provide for all or any of the following matters, namely:—
(a) the matters to be included in the Register of Geographical Indications under sub-section (1), and the safeguards to be observed in the maintenance of such register in computer floppies or diskettes under sub-section (2) of Section 6;
(b) the manner of incorporation of particulars relating to registration of geographical indications in Part-A under sub-section (2) and the manner of incorporation of particulars relating to the registration of the authorised users under sub-section (3) of Section 7;
(c) the classification of goods and the manner of publication of the alphabetical index of classification of goods and the definite territory or locality or region for the purpose of registration of geographical indications under sub-section (1) of Section 8;
(d) the form in which and the manner in which an application for registration of a geographical indication may be made and the fees which may accompany the application under sub-section (1) and the particulars to be made in the statement of producers of goods who proposes to be initially registered with the registration under clause (f) of sub-section (2) of Section 11;
(e) the manner of publication of advertisement of accepted application, for registration of geographical indications, etc. under sub-section (1), and the manner of notifying the corrections or amendments made in the application under sub-section (2) of Section 13;
(f) the manner in which and the fee which may accompany an application and the manner of giving notice under sub-section (1) and the manner of sending counter statement under sub-section (2) and the manner of submission of evidence and the time therefor under sub-section (4) of Section 14;
(g) the form of certificate of registration under sub-section (2) and the manner of giving notice to the applicant under sub-section (3) of Section 16;
(h) the manner of applying for registration as an authorised user under sub-section (1) and the manner of submitting statements and documents along with such application and the fee which may accompany such application under sub-section (2) of Section 17;
(i) the manner of making application, the time within which such application is to be made and the fee payable with each application, under sub-section (3) and the time within which the Registrar shall send notice and the manner of such notice under sub-section (4) and the form in which and the fee which may accompany an application for renewal to be made under sub-section (5) of Section 18;
(j) the manner of making applications under sub-sections (1) and (2), the manner of giving notice under sub-section (4) and the manner of service of notice of rectification under sub-section (5) of Section 27;
(k) the manner of making an application for correction, etc. under Section 28;
(l) the manner of making an application under sub-section (1), the manner of advertising an application under sub-section (1), the time and manner of notice by which an application may be opposed under sub-sections (2) and (3) of Section 29;
(m) the manner of advertisement under sub-section (2) of Section 30;
(n) the form of making an appeal, the manner of verification and the fee payable under sub-section (3) of Section 31;
(o) the form in which an application for rectification shall be made, under sub-section (1) of Section 34;
(p) the manner of making an application for review under clause (c) of Section 60;
(q) the time within which an application is to be made to the Registrar for exercising his discretionary power under Section 61;
(r) the manner of making an application and the fee payable therefore under sub-section (1) of Section 64;
(s) the manner of authorising any person to act and the manner of registration of a geographical indications agent under Section 76;
(t) the fee and surcharge payable for applications and registrations and other matters under sub-section (1) of Section 80;
(u) any other matter which is required to be, or may be, prescribed.
(3) Every rule made by the Central Government under this Act shall be laid, as soon as may be after it is made, before each House of Parliament, while it is in session, for a total period of thirty days which may be comprised in one session or in two or more successive sessions, and if, before the expiry of the session immediately following the session or the successive sessions aforesaid, both Houses agree in making any modification in the rule or both Houses agree that the rule should not be made, the rule shall thereafter have effect only in such modified form or be of no effect, as the case may be; so, however, that any such modification or annulment shall be without prejudice to the validity of anything previously done under that rule.
[disclaimer]
