[*Slightly long post]

Background:

The Intellectual Property Appellate Board (“IPAB”), in its recent order in  
SubhashJewellery v. Payyannur Pavithra Ring Artisans (“Order”), decided on  
an appeal made against the order passed by the Registry on 14.07.2009 in  
opposition proceedings No. GIR/TOP 2/347/09 granting Geographical  
Indication registration of Payyannur ring to 1 st respondent/ applicant,  
Payyannur Pavithra Ring Artisans & Development Society. The appellant had  
earlier filed writ petition in the Madras High Court for quashing the order  
of Registry and restraining the Registrar from proceeding further with the  
respondent's application. The Division Bench of the Madras High Court  
dismissed the writ petition by order dated 07.04.2010 on the ground that  
the appellant could have exhausted its alternative remedy by filing an  
appeal before IPAB. [For more on the background of the dispute, see here.]

While removing the name of the 1 st respondent/applicant from the register  
and remanding the matter to the GI Registrar, the IPAB tried to iron out  
the creases and bring in clarity. The Order will have ramifications upon  
the pending applications, opposition proceedings and rectification  
proceedings. The Order is quite commendable considering the pragmatic  
approach adopted by IPAB in deciding the dispute. The Order appreciated  
that the Geographical Indications of Goods (Registration and Protection)  
Act, 1999 (“Act”) is still in its incipient stage and the group targeted  
under the Act may not be adequately equipped to protect their own  
interests. It is to be appreciated that IPAB was not tied down by  
procedural formalities and in fact, adopted a lenient approach considering  
the very nature of the dispute.

Highlights

The Order examined the ambit of Section 11 of the Act. The applicant under  
Section 11 may be any association of persons or producers or any  
organisation or authority established by or under any law for the time  
being in force which represents the interest of the producers of the  
concerned goods, who are desirous of registering a Geographical Indication  
in relation to such goods. Section 11(2) specifies the particulars to be  
furnished in the application under Section 11. Section 11 (2) (e) requires  
a statement “containing such particulars of the producers of the concerned  
goods, proposed to be initially registered with the registration of the  
Geographical Indication”. In the light of Objects and Reasons and Section  
11 of the Act, it was held that the Act clearly requires the submission of  
the particulars of the producers. The application should show that the  
association represents the interest of the producers.

The Order examined “producers” under Section 2(k) of the Act. The  
definition is wide and includes any person “who trades or deals in such  
production, exploitation making or manufacturing” of the goods. Even though  
the definition can include businessmen, the vulnerable groups viz.,  
artisans, actual craftsmen and growers who are the real interested persons  
cannot be left out. The main object of the Act is to protect those persons  
who are directly engaged in exploiting, creating or making or manufacturing  
the goods. If the creators or makers prove that the application has been  
made without their knowledge, the registration will have to be removed. The  
application shall adduce credible evidence to show that the producers are  
desirous of coming together to protect the Geographical Indication.

It was suggested that the Parliament may consider introducing a provision  
which requires each applicant to effect a publication akin to the  
publication of notice under Section 4 of the Land Acquisition Act, 1894.  
The artisans like weavers, goldsmiths and other craftsmen may not be  
affluent or literate in English language. Therefore, the publication shall  
be in the local language. The targeted group under the Act cannot be left  
unaware about the filing of any application which affects them.

The IPAB also looked into the constitution of Consultative Group. Rule 33  
of Geographical Indications of Goods (Registration and Protection) Rules,  
2002 inter alia states that a Consultative Group consisting of seven  
members “well versed in the varied intricacies of this law or field” shall  
be constituted for examining the application presented before the  
Registrar. In the light of the Rule, a person with expertise shall be a  
member of the Consultative Group. This will lend credibility to the  
proceedings. Further, the report of the Consultative Group shall be a  
complete document and therefore, fit to help the Registrar in arriving at  
his/her conclusion. It must contain all the details which are relevant for  
arriving at the conclusion.

Payyanur Ring dispute

It was held that the application filed by the 1 st respondent/applicant did  
not adduce evidence to the effect that the association represented the  
interests of the producers of the ring who were desirous of the  
registration of Geographical Indication. A mere claim that the society is  
called Payyannur Pavithra Ring Artisans and Development Society would not  
suffice. It was observed that the applicant failed to set out the  
particulars such as names of producers, the nature of their involvement  
(whether they manufacture the ring or whether they trade/deal in the making  
or manufacture of rings), place of production being Payyannur etc.  
Considering the petition filed by the intervener and filing of affidavits  
by several persons stating their interest in the matter pursuant to the  
publication of instant proceedings in a prominent Malayalam newspaper, it  
was concluded that the actual interested persons were left unaware about  
the filing of the application. Further, it was noted that none in the  
Consultative Group constituted pursuant to Rule 33 of Geographical  
Indications of Goods (Registration and Protection) Rules, 2002 was familiar  
with the craftsmanship of gold/ jewellery.

It was observed that the disputes in IP matters are not just private  
disputes. They always carry public interest element. Noting the improper  
filing of application and the inherent shortcomings in the proceedings,  
IPAB set aside the impugned order and remanded the matter to the Registrar  
for consideration. It adopted a lenient stand on the ground that the  
impugned Geographical Indication is one of the earlier Geographical  
Indications. The Registrar was directed to pass the orders within six  
months from the date of receipt of the Order.

Significance of the Order

The Order is expected to influence the outcome of the rectification  
petition filed against the grant of Geographical Indication tag  
for 'Darjeeling Tea' in favour of the Tea Board. [Prashant had covered the  
issue here.] Tea Board is a statutory body set up under the Tea Act, 1953.  
It is a government body, controlled mostly by the government with only a  
few representatives from the tea estate owners and workers. In the light of  
the instant IPAB order which unequivocally states that the main object of  
the Act is to protect those persons who are directly engaged in exploiting,  
creating or making or manufacturing the goods, Tea Board may find itself to  
be in a difficult position. If it can be proved that the application has  
been made without the knowledge of those who are directly involved, the  
end-result is a foregone conclusion in the light of instant Order. Note  
that “producer” in relation to agricultural goods, inter alia means any  
person who “produces the goods and includes the person who processes or  
packages such goods”.

Prashant had also noted that more than 50% (fifty percent) of all GI  
registrations are secured by the Central and State Governments [here &  
here]. In the light of the instant IPAB order, such registrations may also  
come under the scanner.

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Posted By Mathews P. George to SPICY IP at 11/19/2012 12:21:00 AM