Infringement, Penalties and Remedies of GI
Infringement of GI
An individual who is not a registered owner or an authorized user who makes use of such information in the goods or suggests that such products originate in a geographical area other than the true place of origin of products which leads the public to mislead is violating a registered geographical indication. Any usage constituting an act of “unfair competition,” a word developed in explanations 1 and 2, also infringes on a geographical indication of a trademark. The purpose of this clause is to give effect to Article 22(2)(b) of the TRIPS Agreement, which requires that Members “provide stakeholders legal means for avoiding any use that constitutes unfair competition within the sense of Article 10 of the Paris Convention” (1967). A geographical indication is also breached by a person who, not being a registered owner, or an authorized user, uses a different geographical indication for goods that falsely represent to the public that the goods originate in the territory, region, or locality for which such a record is made, although literally true. Article 22(4) of the TRIPS Agreement states that, even if GI is ‘actually true of the territory, region or locale in which the merchandise originated in another territories,’ protection of geographical mark indication shall be applied.”
A person who is not an authorized user thereof violates a registered geographical indication:
- in designation or presentation of goods, using such geographical indications in any way which implies, or suggests to the public, that these goods originate in a geographic region other than the genuine place of origin of the goods;
- employ any geographical indicator, which represents, in respect of recorded geographical indications, an act of unfair competition, including passing, or
- Uses other geographical indications to the goods which falsely depict to the public the goods originating in the area, territory or location where such geographical indications pertain, even though literally true to the territory, location or region in which the goods originate.
Additional protection to the goods
By notice of certain items or classes of goods notified in the Official Gazette, the Central Government may give further protection. Once a further trade in such items has been legally acquired, geographical indicators are not offences unless the goods are deteriorated after they have been placed on the market.
The Paris Convention contains no similar provisions although the Treaty of Lisbon requires protection against usurpation or imitation of the GI, even though it indicates the true origin of the product or where it is applied in translation from or accompanied by terms as the type, type, styling, imitation and the like. The Paris Convention does not provide for a provision which is similar. This applies not only to wines and spirits, as provided for in TRIPS, but to all goods generally.
Remedies to infringement
The available remedies for the protection of geographical indications can generally be divided into two categories:
- Criminal Remedies
- Civil Remedies
(i) Criminal Remedies: The Geographical Indicators of Goods Act, 1999 contains punitive measures on infringement of several geographical indications provisions. The sanctions for the above crimes vary between six months and three years in prison and a fine of not less than fifty thousand rupees but may extend to two lakh rupees. The court can however impose less punishment in writing for sufficient and unique grounds.
(ii) Civil Remedies: For violations or dismissals, the Court may grant the following civil remedies:
- Account of profit.
1. Injunction: The injunction order may include, for any of the following items; (i) the exparte order for injunction; or (ii) the interlocutory order, namely:
a. Document discovery;
b. preservation or breach of goods, papers or other evidence connected to the subject-matter of the proceedings;
c. restricting the accused from disposing or dealing in a way that may adversely affect the ability of the plaintiff to recoup damages, fees or other remedies, which can ultimately be allocated to the plaintiff.
It is well-established law that three factors must be considered in the granting or not of an interim injunction: (i) the establishment of an initial case, (ii) the balancing of convenience between the parties, and (iii) the irreparability of an injury caused, where the interim injunction has not been issued.
If a complainant succeeds in establishing infringements of geographical indications, he will generally have a permanent injunction to restrict future infringements during the trial.
Court can grant nominal damages to the harmed party.
Account of Profit
In any event, the Court shall not provide compensation for profits by way of damages (save nominal damages) –
(a) Where the defendant in an infringement lawsuit satisfies the Court –
(i) He was ignorant and had no reasonable grounds to believe that the claimant’s geographical indications were on the register when he had begun to use the geographical indicators of which he was complaining in the case;
(ii) That the plaintiff immediately ceased to apply the geographical indicators with respect to the commodities for which it was registered, when he became aware of the existence and nature of its right in geographical indications.
(b) If the defendant satisfies the court in a lawsuit for passing-off:
(i) That he was not aware and had no reasonable grounds to believe that the geographical indicators about the complainant were being used at the time of its commencement;
(ii) He immediately ceased to utilize the complained geographical indicators when he became aware of the existence and nature of the geographic indications linked to the complainant.
In the absence of any enforced regulation to safeguard geographical indications, the Indian judiciary played an important role. It applied in the context of geographical indicators the common law theory of the passing-off as appropriate under Indian conditions. The courts have granted orders to restrict the defendant from advertising and selling or distributing goods (includes wines and spirits), where they allow colorful copying and unfair trade to be harvested by exploiting the goodwill of products that are essentially due to particular areas and that are used in connection with certain geographies, Therefore, even before it was established, the Indian Courts are using Articles 22 and 23 of the TRIPS Agreement.
Contributed by:– Nidhi Jha, Legal intern at LLL