Introduction

Geographical indications (GIs) are marks, signs or symbols which indicate that the associated goods:

  • originate from a specific geographical area or country;
  • are produced using traditional knowledge or processes stemming from a specific geographical area of a country; and
  • bear distinctive characteristics, qualities and reputations that are attributable to a specific geographical area or country.

Many countries have adopted GI laws to protect indigenous products, including handicrafts and agricultural, natural, horticultural and industrial products originating from a specific region.

On 27 March 2020, after revisions and much deliberation, Parliament finally passed the Geographical Indications (Registration and Protection) Act 2020 in order to establish a system for the recognition, registration and protection of GI rights in Pakistan.

Geographical Indications (Registration and Protection) Act 2020

The act's salient features are as follows:

  • Its main purpose is to provide:
    • statutory protection to GIs in consideration of the public interest, economic reforms and Pakistan's least developed areas; and
    • legal means for interested parties to prevent third party use of a designation or presentation of goods that indicates or suggests that the goods in question originate from a geographical area or constitute an act of unfair competition under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).
  • Under the act, GIs can be registered by a natural or legal person, government organisation or statutory body, association or group of producers or producer organisation or operator with an interest in the registration.
  • The definition of 'geographical indication' covers agricultural goods, natural goods or manufactured or produced goods of a particular territory, region or locality of certain quality, reputation or other characteristic of the goods or ingredients or components essentially attributable to its geographical origin. Further, GIs for manufactured goods cover activities relating to the production, processing or preparation of the goods in a specific territory.
  • The act establishes the Geographical Indications Registry, which will be managed and controlled by the Intellectual Property Organisation of Pakistan (IPO). The IPO Trademarks Registry and its branches established under the Trademarks Ordinance 2001 will carry out functions of the Geographical Indications Registry and its branches until a separate GI registry is established.
  • GI registration for any or all goods in a definite geographical territory covers classes of goods listed under the international classification of goods for the purposes of GI registration.
  • GI registration is prohibited where a mark:
    • would contravene the definition of 'geographical indication' under the act;
    • would likely cause deception or confusion;
    • cannot be protected or protection has ceased or it is no longer used in the country of origin;
    • is considered a generic name or an indication; or
    • is unregistrable on moral or public policy grounds.
  • The act also considers homonymous GIs, which are spelled or pronounced similarly but which identify products originating from different places, usually in different countries. In principle, these indications should coexist, but such coexistence may be subject to certain conditions.
  • A homonymous GI can be registered provided that:
    • the registrar is satisfied that it is different from other homonymous GIs;
    • producers of the associated goods will be treated equally; and
    • consumers will not be confused or misled.
  • A foreign GI registered in the country of origin can be registered in Pakistan if it has not ceased to be protected in its country of origin.
  • The Federal Government will be the exclusive owner of all GIs in Pakistan and may allow other responsible statutory bodies, public bodies, local or provincial administrations, government enterprises or any governmental organisations to register a GI in their name. Further, registrants may allow producers and operators to use and apply to the registry for obtaining registration as authorised users.
  • GI registration applications must include:
    • the GI mark;
    • the class of goods and area to which the GI applies;
    • the country of origin;
    • producer or operator statements; and
    • details of the quality, specifications and characteristics of the associated goods.
  • GI registration is granted subject to confirmation of products seeking GI registration by the designated certification body and the registrar's examination and acceptance thereof.
  • A party may, with the registrant's consent, apply for registration as an authorised user of a GI. Subject to examination and public notification for opposition purposes and fulfilling certain conditions, an authorised user registration may be granted by the registrar.
  • A division for regulatory mechanism will monitor and inspect GI products to ensure compliance with the book of specifications (ie, a document completed by the applicant which specifies the GI goods' geographical area, production standards or product specifications and qualification process).
  • GI registrations which are ongoing and authorised generally last for 10 years and can be renewed.
  • Authorised users have the exclusive right to use a GI and prevent others from using it.
  • Use of a registered GI is subject to compliance with product specifications and includes applying the GI to products, packaging, advertising materials and any other document relating thereto.
  • The registry's GI certification comprises the National Geographical Indication logo along with the registered name of the GI product.
  • Registered GI infringement includes:
    • use of an identical or deceptively and confusingly similar mark;
    • falsely indicating a country of origin; or
    • non-compliance with the book of specification, as recorded in the registration.
  • Registered GI infringement does not include:
    • use in good faith or to indicate the intended purpose of goods;
    • use of a person's name or the name of a place of business or its predecessors that is unlikely to confuse or otherwise interfere with an existing GI; and
    • use in comparative advertising.
  • In an infringement action, all such relief by way of damages, injunctions, accounts or otherwise will be available to the holder or registrant and the authorised user of the GI as is available in respect of the infringement of any other property right. Further, the rights of action against any party for passing off goods as the goods of another party or the remedies in respect thereof remain unaffected.
  • Suit for infringement of a GI or any other GI right can be instituted only in the IP Tribunal.
  • Any interested party or group of producers or consumers that seeks to prevent infringement of a registered GI may institute proceedings before the IP Tribunal; however, no proceedings can be instituted for an unregistered mark to recover damages by any other party.
  • Use of a GI by a party either without the consent of the GIs registrant or an authorised user thereof or which falsely represents an unregistered GI as registered is punishable with imprisonment and a fine.
  • An authorised user's GI rights cannot be subject to assignment, transmission, licensing, pledge, mortgage, licensing or any similar agreement of the registered GI. However, if an authorised user dies, their GI right will devolve to their successor in title.
  • An application to rectify a GI registration may be filed by any party having interest in an error or omission in the register. The registrant may file an application to amend, correct or cancel the registration of an authorised user for failing to observe the applicable conditions and restrictions.
  • An appeal against any decision of the registrar will lie before the relevant high court with jurisdiction.

Comment

There are various indigenous GI products in Pakistan (eg, Peshawari chappals, Multani halwa, Ajrak print and Sindhri mangoes) and it is crucial to secure worldwide recognition of the same. When the Geographical Indications (Registration and Protection) Act 2020 is finally implemented, GI rights will be established and recognised in Pakistan. Further, the act will deter third parties from infringing GI marks not just domestically, but internationally.