Intellectual Property Act Proposed to Be Amended to Include Geographical Indications

Intellectual Property Act Proposed to Be Amended to Include Geographical Indications

Proposed Bill to amend the Intellectual Property Act with a registration system on Geographical Indications in Sri Lanka

The Bill to amend the Intellectual Property Act No 36 of 2003, to introduce a system to register Geographical Indications (“GI”) has been presented to Parliament in Sri Lanka. The intention behind the proposed amendment is primarily to protect and promote the interests of local exporters.

GI refers to any indications in the form of a name or sign used on marketing of goods, either by producers or manufacturers which signifies that the goods have a special quality or characteristic attributable to the specific place that such good originated from. In the local context, this includes phrases such as “Ceylon Tea”, “Ceylon Cinnamon”, “Ceylon Sapphire” etc.

Goods have been defined in the Bill to include, “any manufactured or naturally available agricultural products, food, wines, spirits or any item of handicraft or industry”.

When GI are registered and protected it essentially supports producers and manufacturers in commercializing the goods when exporting their products into the international market. Registering a GI will create a form of assurance and brand recognition for the product. Of-course it goes without a say that the misuse and misrepresentation of GI can cause severe detriment to producers as well as consumers.

Keeping all of this in mind, the Bill has been drafted comprehensively defining and providing a legal framework for the registration of GI in Sri Lanka.

To avoid confusion the Bill also specifies what will not be recognized as a GI, including;

  1. anything that does not fall within the definition of a GI as per the Act

  2. any indication that is contrary to law, morality, customs or public order

  3. any such indication which is not protected or ceases to be protected in the country of origin or fallen into disuse in such country

  4. misleading or deceives the public as to the characteristics, nature, quality, place of origin and production process of the good or its use

  5. which constitutes the name of a plant variety or an animal breed

As per the provisions of the Bill, any association of persons or producers or any organization or authority established by any law for the time being representing the interest of producers of any relevant good can make an application to the National Intellectual Property Office (“NIPO”) to register a good as a GI.

In brief, the registration process introduced is as follows:

  1. An application in the prescribed form can be made to the NIPO by an applicant that falls within the category described above and payment of the prescribed fee.

  2. Where it appears to the Director General of NIPO that the application is in contravention to the provisions of the Act, such application shall be refused.

  3. If the applicant is not in agreement with the grounds of refusal, they can make submissions within 03 months from the date of such refusal.

  4. Accepted applications shall be published in the Gazette upon the payment of the prescribed fees and such published application shall have a period of 03 months from the date of such publication for the opposition of such application being registered.

  5. Where there is no opposition recorded the application will be registered and such registration shall be valid for a period of 10 years with the possibility of being renewed at the expiry of each 10-year period. Upon registration of the GI a certificate will be issued to the applicant and such applicant will be the owner of the GI.

  6. Failure to renew at the lapse of such period will render the application to be removed from the register.

The Registered Owner of a GI will be entitled to prevent:

  1. the direct or indirect use, misuse, imitation or evocation of a GI, in respect of goods of the same kind as those of the registered owner, where such goods do not originate from the place specified in the GI or not complying with any other applicable requirement for using the GI;

  2. The direct or indirect use, misuse, imitation or evocation of a GI which constitutes an act of unfair competition within the meaning of 160 of the Act;

  3. Any practice which is likely to mislead the consumers with regard to the true origin of a good.

The same rights are available to a Registered Owner, for goods which are not the same kind as of the registered owner, where such use of GI would indicate or suggest a connection with the registered owner’s goods, thus rendering it to damage their interest or take undue advantage of their reputation or where use of which can be considered to mislead the consumers as to the true origin of the goods.

Foreign GI too can be registered in Sri Lanka under the provisions of the Act, so long as such GI is registered and protected in its country of origin as a GI or certification mark.

The passing of the Bill will secure the interests of producers and manufacturers, more specifically in the international market and will provide them the backing they require for their exports. This will also create the platform to further motivate to expand their businesses at a global level.