Intellectual Property Registration and Protection of Geographical Indications in PakistanIntellectual Property Registration and Protection of Geographical Indications in Pakistan

Josh and Mak International can offer the following legal services to clients in Pakistan and abroad:

  1. Geographical Indications Registration and Protection: Josh and Mak International can assist clients in the registration and protection of geographical indications, ensuring that their unique products and services originating from specific regions are legally recognized and protected.

  2. Intellectual Property Law: The firm can provide legal advice and services related to intellectual property rights, including trademarks, patents, copyrights, and designs, helping clients protect their valuable intangible assets.

  3. Opposition Proceedings: Josh and Mak International can represent clients in opposition proceedings, both in Pakistan and abroad, if their geographical indication or other intellectual property rights are challenged by third parties.

  4. Dispute Resolution and Litigation: The firm can handle dispute resolution and litigation matters related to geographical indications and intellectual property rights, representing clients in court proceedings when necessary.

  5. Application for Restoration and Renewal: Josh and Mak International can assist clients in applying for the restoration and renewal of their geographical indication registrations and other intellectual property rights.

  6. Legal Compliance: The firm can provide guidance and assistance to clients in ensuring compliance with the relevant laws and regulations related to geographical indications and intellectual property.

  7. IP Advisory Services: Josh and Mak International can offer legal advice and consultancy on various matters, such as the best practices for geographical indication protection, licensing agreements, and international registration strategies.

  8. International Registration and Protection: The firm can guide clients on obtaining protection for their geographical indications and intellectual property rights in multiple countries through international treaties and agreements.

  9. Legal Representation: Josh and Mak International can represent clients in legal matters concerning geographical indications and intellectual property rights before relevant authorities, including the Registrar and the High Court.

  10. Geographical Indications Agent Registration: The firm can assist individuals who wish to become registered Geographical Indications Agents, ensuring compliance with the requirements and procedures set forth in the regulations.

Please note that the services offered by Josh and Mak International are not be limited to the areas mentioned above, and the firm may offer a broader range of legal services to its clients based on its expertise and capabilities. If you need more information on our IP protection services please email us at aemen@joshandmak.com

Geographical Indications Protection in Pakistan 

This article explores the significance of geographical indications in Pakistan’s trademark law and emphasizes the importance of a comprehensive market entry plan for businesses to protect their intellectual property rights (IPR) effectively.Geographical indications play a crucial role in highlighting the distinctive qualities and reputation of goods that originate from specific geographic regions or localities. By linking the product’s characteristics to its geographical origin, consumers can identify and appreciate unique attributes influenced by factors such as climate and soil. The identification of agricultural products, handicrafts, and other goods through geographical indications is vital in preserving their authenticity and quality. These indications act as valuable assets for local producers by promoting traditional knowledge, enhancing product reputation, and supporting local economies. By protecting geographical indications, Pakistan aims to foster fair competition, promote consumer awareness, and prevent unauthorized use of region-specific names on products.

The Geographical Indication (Registration and Protection) Act, 2020 was enacted in Pakistan to address the registration and protection of geographical indications (GI) of goods. The main objectives of the Act are to serve the public interest, promote economic development, especially in the least developed areas of the country, and prevent unfair competition in line with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The Act defines Geographical Indication (GI) in relation to goods as an indication that identifies agricultural goods, natural goods, or manufactured goods originating, manufactured, or produced in a specific territory, region, or locality within the country. This indication is attributed to the geographical origin of the goods, and it reflects specific qualities, reputation, or other characteristics associated with that origin. For manufactured goods, the Act specifies that at least one of the production, processing, or preparation activities must take place in the identified territory, region, or locality.

The Act also includes names that are not the names of territories, regions, or localities but are still considered geographical indications if they refer to or indicate the origin of goods from a specific geographical area within the country. Such names can be used in relation to particular goods originating from or within that country, territory, region, or locality.

The Geographical Indications (Registration and Protection) Act, 2020 aims to promote and protect the economic interests of producers and consumers by ensuring that only the products that meet the criteria of the registered geographical indications can be marketed under that name. The Geographical Indications (Registration and Protection) Act, 2020 provides a legal framework for the registration, protection, and enforcement of geographical indications in Pakistan. The law establishes a Geographical Indications Registry that is responsible for the administration of the registration process and the maintenance of the register of geographical indications in Pakistan. The Act provides for the protection of registered geographical indications against unauthorized use, imitation, or any other act that may mislead consumers as to the true origin of the goods. The law also provides for the establishment of a Geographical Indications Appellate Board that will hear appeals against the decisions of the Registry. The Geographical Indications (Registration and Protection) Act, 2020 is a significant step towards the protection of traditional knowledge and cultural heritage associated with the production of goods and services in specific regions or localities in Pakistan.

What are some examples of Geographical Indications (GI) in Pakistan?

Pakistan has a rich cultural heritage and diverse agricultural practices, which have resulted in a variety of unique products that are identified with specific regions and localities.

Here are some examples of Geographical Indications (GIs) in Pakistan:

1. Basmati Rice – Basmati Rice is a long-grain aromatic rice that is cultivated in specific regions of Pakistan and India. The name “Basmati” is a Geographical Indication that is registered in both countries. 2. Multani Halwa – Multani Halwa is a traditional dessert made of wheat flour, sugar, and ghee that is specific to the city of Multan in Punjab province. “Multani Halwa” is a registered Geographical Indication in Pakistan.

3. Hunza Apricot – Hunza Apricot is a type of apricot that is grown in the Hunza valley of Gilgit-Baltistan province. The name “Hunza Apricot” is a registered Geographical Indication in Pakistan.

4. Pashmina Shawl – Pashmina Shawl is a fine woolen shawl that is made from the wool of the Changthangi goat, which is found in the Himalayan region of Pakistan. “Pashmina” is a registered Geographical Indication in India, and “Pashmina Shawl” is a registered Geographical Indication in Pakistan.

5. Sindhi Ajrak – Sindhi Ajrak is a traditional block-printed shawl that is specific to the Sindh province of Pakistan. The name “Sindhi Ajrak” is a registered Geographical Indication in Pakistan. These are just a few examples of the Geographical Indications that are registered in Pakistan. There are many other unique products that are associated with specific regions and localities, which could potentially be registered as Geographical Indications in the future.

With the enactment of the Geographical Indication (Registration and Protection) Act, 2020, any geographical indication previously registered under the Trade Marks Ordinance, 2001 (XIX of 2001), shall automatically be repealed. To obtain protection under the new Act, interested parties need to initiate a fresh registration process.

The Act includes a non-exhaustive indicative list of prospective geographical indications for the Islamic Republic of Pakistan, which serves as a reference for the fresh registration process under the Act.

Overall, the Geographical Indication (Registration and Protection) Act, 2020 aims to safeguard the geographical indications of goods in Pakistan, promote the unique qualities and reputation of goods originating from specific regions, and contribute to the economic development of those areas.

Geographical Indications (GIs) are signs used to identify products that originate from a specific geographical area and possess certain qualities or reputation attributable to the natural and human factors of that place. These products can be agricultural, traditional, or industrial in nature and are often associated with the unique characteristics of their place of origin.In Pakistan, the Geographical Indications system is governed by the Geographical Indications (Registration & Protection) Act, 2020, which provides legal provisions for the registration and protection of GIs. The Act is supported by the Geographical Indications (Registration & Protection) Rules, 2020, which lay down the procedural guidelines for the registration and enforcement of GIs.

The main purpose of these laws is to protect the interests of producers and traders associated with specific geographical areas by granting them exclusive rights over the use of the geographical indication for their products. By doing so, the laws aim to promote the reputation of these products and prevent unauthorized use of the geographical indication by others, thus ensuring fair competition and safeguarding the distinctive qualities of products originating from particular regions.

With the enactment of the Geographical Indications (Registration & Protection) Act, 2020, Pakistan seeks to create a robust system for the registration, protection, and promotion of geographical indications, ultimately contributing to the economic development of the regions associated with such valuable products.

The Geographical Indications (GI) Act and Rules in Pakistan establish a comprehensive system for the registration and protection of geographical indications. Four key entities play vital roles in this system:

  • State (Federal Government): The ultimate owner of all geographical indications in Pakistan is the State, which refers to the Federal Government. The ownership of geographical indications lies with the Federal Government, and it is responsible for overseeing the registration and protection of GIs in the country.
  • Registrant: The Federal Government appoints a public body to act as the Registrant of a specific GI product. The Registrant serves as the custodian of the GI on behalf of the Federal Government. Their responsibilities include preparing the Book of Specification in consultation with stakeholders, registering it with the Intellectual Property Organization of Pakistan (IPO-Pakistan), applying for registration in foreign countries, recommending Authorized Users for registration with IPO-Pakistan, and ensuring the enforcement of the GI at both national and international levels.
  • Authorized Users: Authorized Users are individuals or entities involved in the production, processing, trading, exporting, and other aspects of the supply chain related to a specific GI product. They can get registered with IPO-Pakistan based on the recommendation of the Registrant. Once registered, they are permitted to use the GI logo of Pakistan on their products, provided they follow the Standard Operating Procedures (SOPs) outlined in the relevant Book of Specification.
  • Certification Body: The relevant Division of the Federal Government, currently the Commerce Division, can notify the certification body for each registered GI of Pakistan under section 13(1) of the GI Act, 2020. The certification body’s role is to certify the compliance of products with the Book of Specifications associated with the GI. This certification ensures that the products meet the required standards and can be traded and exported as genuine GI products.

By involving these four bodies in the GI registration and protection system, Pakistan aims to promote and safeguard its unique geographical indications, contributing to the development and recognition of products originating from specific regions of the country.

The registration process of a Geographical Indication (GI) product in Pakistan involves the following steps:

Step 1: Registration of GI Product

  • The registrant body, appointed by the Federal Government, submits a filed-in GI-01 form along with the Book of Specification (BoS) and the notification of the Federal Government to the Registrar of GI at the IPO-Pakistan’s GI Registry.
  • There is no fee for the registrant, and there is no opposition process against the registrant’s application.
  • The Registrar of GI examines the application and if found appropriate, registers the GI product.

Step 2: Registration of Authorized Users

  • The interested parties, who are producers, processors, traders, exporters, or other players in the supply chain of the GI product, make a request to the registrant for an assent.
  • The registrant shares the Book of Specification (BoS) with the applicant. The applicant ensures that their product complies with the BoS and submits an affidavit of compliance to the registrant.
  • Upon verification of compliance, the registrant issues a written assent to the applicant.
  • The applicant then submits their application for authorized user on the GI-01 form to the Registrar of GI, along with the registrant’s assent and the official fee 
  • The Registrar of GI examines the application and publishes it in the GI Journal to invite any opposition.
  • If no opposition is received within two months of publication, the Registrar issues the certificate of Authorized User to the applicant.

The registration of a GI product in Pakistan, as per the GI Act, 2020 and its rules, helps protect the uniqueness and reputation of the product associated with a specific geographical area, providing recognition and economic benefits to the stakeholders involved.

Registration of Foreign Geographical Indications in Pakistan:

To register a geographical indication of a foreign country in Pakistan, the indication must be registered as a logo in its country of origin according to the local legislation. The application for registration in Pakistan should include the title and date of legislative or administrative provisions or judicial decisions regarding the protection of the geographical indication in the country of origin. This information is considered for accepting the foreign GI application in Pakistan.

Registration of Pakistani Geographical Indications in Foreign Countries:

The registrant of a GI product in Pakistan is responsible for filing an application for GI registration in foreign countries. The process for GI registration in foreign countries may vary according to their own GI systems. There are two ways to register a Pakistani GI product in foreign countries:

  • Direct Application: The registrant can apply directly in the countries of interest by submitting multiple applications to each country.
  • Lisbon Agreement (Geneva Act), 2015: Alternatively, Pakistan can become a member of the Lisbon Agreement (Geneva Act), 2015, under the World Intellectual Property Organization (WIPO). By filing a single application with WIPO, it will be forwarded to all the member countries for registration of the GI product, streamlining the application process.

Pakistan is in the process of signing the Lisbon Agreement (Geneva Act), 2015. Once signed, the application process for registering Pakistani GI products in foreign countries will become more convenient, both technically and financially. This agreement will facilitate the protection and promotion of Pakistani geographical indications internationally.

The registration of Geographical Indications (GIs) holds significant importance for various stakeholders involved in the production and trade of goods with specific geographical origins. Some of the key significance of GI registration are as follows:

  • Protection of Cultural Heritage: GI registration protects and preserves the unique cultural heritage and traditional knowledge associated with a specific region. It helps in safeguarding the traditional practices and expertise of local communities that have been passed down through generations.
  • Assurance of Quality and Authenticity: The GI logo on a product provides consumers with assurance about the origin, quality, and authenticity of the product. It helps consumers make informed choices and prevents them from being deceived by imitations or counterfeit goods.
  • Economic Benefit: GI registration can lead to increased economic opportunities for the producers and communities of the region. It enhances the marketability of the products, opens new avenues for trade, and provides a competitive edge in both domestic and international markets.
  • Rural Development and Poverty Alleviation: GI registration can contribute to the socio-economic development of rural areas by promoting local products and creating employment opportunities for the local population. It can also help in reducing rural-urban migration and poverty alleviation.
  • Brand Promotion: Geographical Indications serve as a powerful marketing tool for promoting products at a national and international level. GI products gain recognition and reputation, attracting consumers who seek unique and authentic products from specific regions.
  • Protection Against Misuse: GI registration provides legal protection against the unauthorized use and misuse of the geographical indication by others. It allows for legal recourse against infringement and unfair competition, ensuring the rights of genuine producers.
  • Fostering Trade Relations: GI registration can foster trade relations between countries as it facilitates mutual recognition and protection of geographical indications in international markets. It encourages cooperation and harmonization of GI systems worldwide.
  • Sustainable Development: By promoting and preserving traditional production methods and environmentally friendly practices, GI registration supports sustainable development and conservation of natural resources.
    Geographical Indications registration plays a pivotal role in promoting unique products from specific regions, preserving cultural heritage, and enhancing economic opportunities for the local communities. It fosters a sense of pride and identity in regional products, creating a valuable asset for the country’s economy and international trade.

The Act aims to provide for the registration and protection of geographical indications of goods in Pakistan.

The Act recognizes and protects the geographical indications of the Islamic Republic of Pakistan for public interest and advancing economic reform and development in underdeveloped areas of the country.

The Act provides legal means to prevent the use of any means that indicates or suggests the origin of goods in a specific geographical area and prevents acts of unfair competition as per the TRIPS agreement.

The Act defines various terms related to geographical indications, such as applicant, authorized user, book of specifications, certification body, geographical indication, geographical origin, foreign geographical indication, and more.

The Act establishes a Registry for the registration of geographical indications.

The Act allows for the registration of foreign geographical indications in Pakistan, provided they are registered in their country of origin.

The Act also allows for the registration of Pakistani geographical indications in foreign countries, either through direct applications or through membership in international agreements like the Lisbon Agreement (Geneva Act).

The Act emphasizes the importance of geographical indications in promoting the identity, quality, and authenticity of products originating from specific regions.

The Act is applicable throughout Pakistan and will come into force on a date notified by the Federal Government.

Overall, the Geographical Indications (Registration and Protection) Act, 2020 aims to protect the identity and quality of products associated with specific geographical areas, promote local products, and contribute to the economic development of the country.

  • Geographical Indications Registry: The Act establishes a Geographical Indications Registry under the management and control of IPO Pakistan (Intellectual Property Organization of Pakistan). Initially, the Trade Marks Registry and its branches will carry out the functions of the Geographical Indications Registry until a separate GI Registry is established.
  • Register of Geographical Indications: The GI Registry will maintain a register of record called the “register of geographical indications.” This register will contain all registered geographical indications along with the names, addresses, and descriptions of the registrants and authorized users.
  • Deputy Registrars and Assistant Registrars: The IPO Pakistan, with the prior approval of the Policy Board, may appoint one or more deputy registrars and assistant registrars to assist the Registrar in performing functions under this Act.
  • Delegation of Authority: The Registrar may delegate some of its powers to the deputy registrars and assistant registrars as directed by IPO Pakistan. The Act considers references to the Registrar to include deputy and assistant registrars when discharging delegated functions.
  • Division of Register: The register shall be divided into two parts, Part A and Part B. Part A will contain particulars related to the registration of registrants of geographical indications, and Part B will contain details of authorized users.
  • Inspection of Register: The register shall be open for public inspection at all convenient times, and anyone can obtain extracts from the register in the prescribed manner.

The establishment of the Geographical Indications Registry and the maintenance of the register aim to facilitate the registration and protection of geographical indications of goods in Pakistan, promoting their origin and protecting the rights of registrants and authorized users.

Registration of Geographical Indications

  • Registration of Proprietor of Geographical Indication: The registration of the proprietor of a geographical indication will comprise goods classified by the Registrar in accordance with the international classification of goods for geographical indication registration.
  • Prohibition of Registration: Geographical indications that do not meet the definition of geographical indication, those likely to deceive or cause confusion, not protected or fallen into disuse in their country of origin, determined as generic names or indications, or opposed to morality or public policy shall not be registered.
  • Registration of Homonymous Geographical Indications: Homonymous geographical indications (GIs) that identify products originating in different places but spelled or pronounced alike can be considered for registration, subject to certain conditions to prevent confusion and misleading consumers.
  • Registration of Foreign Geographical Indications: Geographical indications of foreign countries can be registered in Pakistan if they are already registered in their country of origin. The application for foreign GI registration shall be made at the Registry by the legal representative in Pakistan, and relevant information related to registration in the country of origin may be required.

Procedure for Registration of Registrant of GI

  • Right to Own and Register Geographical Indication: The Federal Government is the holder and exclusive owner of all geographical indications of Pakistan. Statutory bodies, public bodies, government organizations, etc., responsible for covering geographical indications’ territory can apply for registration as a registrant with the prescribed form, manner, and fees.
  • Authorized Users: Producers or operators whose practices comply with the book of specifications for the registered geographical indication have the right to use the geographical indication as authorized users. They can apply to the Registry for registration as authorized users with the formal assent of the Registrant.
  • Role of Concerned Division: The concerned Division is responsible for conciliating conflicts, advocating during book of specification drafting in pre-registration phase, and regulating cooperation agreements with organizations for pre-registration processes and consultations with producers and operators.

Chapter III of the Geographical Indications (Registration and Protection) Act, 2020, covers the registration process for geographical indications in Pakistan. Here is the content of the application for registration of a geographical indication:

Content of Application for Registration of Geographical Indication:

(1) The application for registration of a geographical indication by the Applicant shall contain the following documents for registration:

(i) Name and address of the applicant filing the application.

(ii) Geographical indication for which registration is sought.

(iii) Class of goods to which the geographical indication shall apply.

(iv) Geographical area to which the geographical indication applies and a map of that area.

(v) Title and date of the legislative or administrative provisions or of judicial decisions regarding the protection to the geographical indication in the qualifying country of origin.

(vi) Statement of particulars in relation to the producers or operators of the concerned goods, if any.

(vii) Goods for which the geographical indication applies.

(viii) Quality, reputation, or other characteristics of the goods, geographical origin, and other details as may be prescribed for which the geographical indication is used.

(ix) Book of specifications containing product standards or product specifications.

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(x) Such other particulars as may be prescribed and subject to the payment of the prescribed fee.

(2) The reputation of products may also be determined based on their being widely known to and selected by consumers.

(3) The quality and characteristics of products of geographical indication shall be defined by one or several qualitative, quantitative, or physically, chemically, microbiologically perceptible criteria that can be tested by technical means or experts with appropriate testing methods as may be prescribed.

Conformity of Geographical Indication with Book of Specification:

(1) The concerned Division, through a notification in the official Gazette, shall designate a certification body responsible for guaranteeing, inspecting, testing, and monitoring the quality, reputation, or other characteristics of products seeking registration of geographical indications. This designation will be done in a prescribed manner.

(2) The designated certification body shall confirm the specifications identified in the book of specifications by obtaining confirmation from accredited confirmatory assessment bodies, research institutes, impartial public authorities, public organizations, or organizations approved by the concerned Division for this purpose.

(3) If there is non-compliance with the book of specifications by the producers or operators as authorized users of the registered geographical indication, the certification body may take the following measures:

(i) Serve a notice to the authorized user for non-compliance.

(ii) Issue a warning to the producer, operator, or authorized user.

(iii) If no remedial action is taken within a reasonable time, temporarily disqualify the rights to use the geographical indication by the producer, operator, or authorized user by making an application to the Registrar.

(iv) Apply to the Registrar for the suspension or cancellation of the rights to use the geographical indication by the non-compliant authorized user.

(4) The Registrar may approve the suspension after investigation and scrutiny as deemed fit.

(5) The cost of confirming compliance with the book of specifications shall be borne by the authorized users, and the registrant may contribute to these costs as well, as the case may be.

Technical Assistance of Experts:

The Registrar may seek assistance from experts in various fields, such as geology or meteorology, involved in any case to consider or make a decision or ascertain the correctness of the particulars furnished in the application.

Examination for Registration:

(1) The Registrar shall examine the application to determine whether it fulfills the criteria and other requirements.

(2) During the examination, the Registrar may call the applicant or any person concerned to provide explanations or furnish additional evidence. If necessary, the Registrar may seek the opinion of an expert in the relevant field and send the matter to the expert for consideration and opinion in the prescribed manner.

Grant of Registration of Registrant:

(1) Once an application for registration of a geographical indication is accepted, the Registrar shall register the registrant of the product bearing the geographical indication mentioned in the application. The geographical indication shall be deemed registered from the date of making the application, and that date shall be considered the date of registration.

(2) Upon registration of a geographical indication, the Registrar shall issue a certificate to the registrant in the prescribed form, sealed with the seal of the Registry.

(3) The Registrar may accept an application with or without amendments, modifications, conditions, or limitations as deemed appropriate.

(4) If the application is conditionally accepted, the Registrar shall record in writing the grounds for such conditional acceptance and the reasons for arriving at such a decision.

(5) The Registrar has the authority to amend the register or a certificate of registration for the purpose of correcting clerical errors or obvious mistakes.

Application for Registration of Authorized User:

(1) Any individual or juristic person or group of persons who claim to be an operator, producer, or group of producers interested in the right to use a registered geographical indication may apply in writing to the Registrar for registration as an authorized user of that geographical indication. This application is subject to the formal assent of the registrant and must be made in the prescribed manner.

(2) The application under sub-section (1) should be accompanied by a statement confirming compliance with the book of specifications and other prescribed documents and information required by the Registrar. The applicant must also pay the prescribed fee.

(3) The Registrar shall examine the application to ensure it fulfills the required criteria and other requirements.

(4) During the examination, the Registrar may request the applicant or any concerned party to provide explanations or additional evidence.

(5) If the registration of a geographical indication as an authorized user is not completed within twelve months from the application date due to the applicant’s default, the Registrar may treat the application as abandoned unless it is completed within the specified time after receiving notice.

Withdrawal of Acceptance:

(1) If, after the acceptance of an application for registration of an authorized user of a geographical indication but before its actual registration, the Registrar becomes satisfied that:

(i) The application has been accepted in error,

(ii) The application should not be registered in the given circumstances,

(iii) The application should be registered subject to conditions or limitations, or

(iv) The application should be registered subject to additional or different conditions than the ones originally accepted,

The Registrar, after providing the applicant with an opportunity to be heard, may withdraw the acceptance and proceed as if the application had not been accepted.

Advertisement:

(1) Once an application for registration of an authorized user of a product bearing a geographical indication has been accepted, whether with or without conditions or limitations, the Registrar shall advertise the application immediately in the prescribed manner.

(2) If any error in the application has been corrected or any amendments have been permitted after the advertisement, the Registrar may, at his discretion, either advertise the application again as amended or notify the corrections that have been made in the application in the prescribed manner.

Opposition to Registration:

(1) Within three months from the date of advertisement or re-advertisement of the application for registration of an authorized user of a product bearing a geographical indication, any interested person may give written notice of opposition to the Registrar in the prescribed manner to oppose the registration.

(2) The notice of opposition must be made in the prescribed manner and upon payment of the prescribed fee.

(3) The Registrar shall serve a copy of the notice of opposition to the applicant for registration as an authorized user. Within two months from the receipt of the notice of opposition, the applicant shall send a counter-statement to the Registrar in the prescribed manner, stating the grounds on which he relies for his application. If the applicant fails to submit a counter-statement within this time, it will be deemed that he has abandoned the application.

(4) Within two months from the receipt of the copy of the notice of opposition, the applicant may send a counter-statement to the Registrar in the prescribed manner.

(5) If the applicant fails to submit the counter-statement within the prescribed time, it will be deemed that he has abandoned the application.

(6) If the applicant sends a counter-statement, the Registrar shall serve a copy of it to the person who gave notice of opposition.

(7) Both the opponent and the applicant can submit evidence in support of their claims in the manner and within the time prescribed by the Registrar. The Registrar will provide them with an opportunity to be heard if they wish.

(8) After considering the evidence and grounds of objection, whether relied upon by the opponent or not, the Registrar will decide whether to permit the registration absolutely or subject to conditions or limitations, or reject it altogether.

(9) If any party fails to appear for the hearing, the Registrar may decide on the notice of opposition on merits based on the evidence available on record.

(10) If a person giving notice of opposition or an applicant sending a counter-statement does not reside or carry on business in Pakistan, the Registrar may require them to provide security for the costs of the proceeding.

(11) The Registrar may, upon request, permit the correction of any errors or amendments in a notice of opposition or a counter-statement in the prescribed manner.

Extension of Time:

(1) If the Registrar is satisfied that there is sufficient cause for extending the time for any act (except the time expressly provided in this Act), whether the specified time has expired or not, he may, upon application made to him in the prescribed manner and accompanied by the prescribed fee, extend the time subject to any conditions he deems fit to impose. He will inform the parties accordingly.

(2) The Registrar is not required to hear the parties before disposing of an application for an extension of time, and no appeal shall lie from any order of the Registrar under this section.

Correction and Amendment:

(1) The Registrar has the authority to permit the correction of any errors or allow amendments to be made to the application at any time, whether before or after its acceptance.

Grant of Registration of an Authorized User:

(1) If the Registrar finds that the conditions provided in this Act are fulfilled and either:

(i) The registration of an authorized user has not been opposed within the prescribed time limit; or

(ii) The authorized user has provided a statement affirming compliance with the book of specifications; or

(iii) The registration of the authorized user was opposed, but the opposition has been decided in favor of the applicant; or

(iv) No appeal has been filed against the Registrar’s decision for registration as an authorized user,

then the Registrar shall, unless the concerned Division directs otherwise, register the said authorized user as mentioned in the application.

(2) The registered authorized users shall be deemed registered from the date of filing of the application.

(3) The Registrar shall issue a certificate of registration to the authorized users bearing the seal of the Registry, and he shall also publish a reference to the said registration in the prescribed manner.

(4) The Registrar may amend the register to make additions, corrections, or omissions of entries relating to authorized users.

(5) If any aggrieved person, legal person, organization, designated certification body, or registrant believes that an authorized user is dealing with a registered geographical indication in a manner detrimental to the public interest or in non-compliance with the book of specifications, they may apply to the Registrar for rectification of the register or cancellation of the registration. The Registrar will make a legally fit decision on such applications. The Registrar’s decision shall be binding on all parties, and an appeal against the decision shall lie to the High Court.

Regulatory Mechanism for Registered Geographical Indication:

(1) The concerned Division shall prepare the procedure for inspection and monitoring for the regulatory mechanism, including scope, frequency, and procedures of monitoring activities, as well as penalties to ensure compliance with the book of specifications for geographical indication products.

(2) The use of registered geographical indications by authorized users shall be subject to compliance with the book of specifications.

(3) IPO Pakistan shall facilitate the promotion, marketing, and effective use of products bearing geographical indications.

(4) The designated certification body, which confirms product specifications and product standards of geographical indication goods, shall present an annual report to the concerned Division at the end of each calendar year. The report shall include a list of authorized users, goods, quantity, and quality acknowledged, as well as actions taken against non-compliance with the book of specifications.

(5) The concerned Division shall oversee the efficiency of the designated certification body or bodies.

Duration, Renewal, Removal, and Restoration of Registration:

(1) The registration of a registrant of a geographical indication shall be perpetual, meaning it does not expire.

(2) The registration of an authorized user shall be valid for a period of ten years.

(3) The Registrar shall, upon application made in the prescribed manner by the authorized user within the prescribed period and subject to the payment of the prescribed fee, renew the registration of the authorized user for another ten years from the date of expiration of the original registration or the last renewal of registration, as the case may be.

(4) Before the expiration of the last registration of the authorized user, the Registrar shall send a notice in the prescribed manner to the authorized user regarding the date of expiration and the conditions for renewal. If the authorized user fails to comply with the conditions within the specified time, the Registrar may remove the authorized user from the register. However, if an application is made within six months from the expiration of the last registration and the prescribed fee and surcharge are paid, the Registrar shall renew the registration for another ten years.

(5) If an authorized user has been removed from the register for non-payment of the prescribed fee, the Registrar may restore the authorized user to the register and renew the registration, either generally or subject to conditions or limitations, if it is deemed just to do so, after six months and within one year from the expiration of the last registration.

Chapter V: Rights Conferred by Registration of Geographical Indication

Rights conferred by registration:

(1) The registration of a geographical indication confers the following rights:

(i) The registrant of the geographical indication and the authorized user have the right to seek relief in case of infringement of the registered geographical indication.

(ii) The authorized user has the exclusive right to use the geographical indication in relation to the goods for which it is registered.

(iii) The right to take action against an infringer or counterfeiter.

(iv) The right to prevent any person from using the registered geographical indication in any manner related to the concerned products to which the geographical indication pertains.

Use of Geographical Indication:

(1) Once a geographical indication has been registered for a specific product, the producers or operators of that product, who are entered in the Register as authorized users, are entitled to use the registered geographical indication for their goods, subject to compliance with the product specifications.

(2) The use of the registered geographical indication includes applying it on products, packaging, advertising materials, and any other documents related to the registered geographical indication products.

National Logo for Certifying Geographical Indication Products:

(1) The Geographical Indications Registry shall establish a National Geographical Indication logo to certify all geographical indication products registered in Pakistan.

(2) The National Geographical Indication logo, along with the registered name of the product and any other relevant marks and details, shall appear on the label of marketed products in the manner prescribed.

Registration to be Prima Facie Evidence of Validity:

(1) In all legal proceedings relating to a geographical indication, the certificate of registration granted under this Act, which is a copy of the entry in the register, sealed with the Geographical Indications Registry’s seal, shall be considered prima facie evidence of the validity of the registration. This certificate shall be admissible in all courts without further proof or production of the original.

(2) This section does not affect the right of action in respect of an unregistered geographical indication.

Chapter VI: Infringement of Registered Geographical Indication

Infringement of Geographical Indication:

(1) A person shall infringe a registered geographical indication if they use a geographical indication that is identical to the registered geographical indication.

(2) A person shall also infringe a registered geographical indication if they use it in the course of trade based on the following grounds:

(i) The use of a geographical indication in relation to goods of the same or similar description, but not originating in the country indicated by the geographical indication or the true place of origin of the goods is falsely indicated, or the geographical indication is used in translation or accompanied by expressions that mislead people about the geographical origin of such goods.

(ii) Any use of a geographical indication that, even if it identifies goods truly originating in the place designated by that geographical indication, designates products that do not comply with the relevant book of specifications recorded on the register shall be considered an infringement.

(iii) The mark is deceptively similar to the geographical indication, and there exists a likelihood of confusion on the part of the public, including the likelihood of association with the geographical indication.

When a Geographical Indication is Not Infringed:

(1) A person shall not infringe a registered geographical indication when they:

(i) Use it in good faith.

(ii) Use their name or the name of their place of business, provided that such use does not result in a likelihood of confusion or otherwise interfere with an existing geographical indication.

(iii) Use the name of their predecessor in business or the name of their predecessor’s place of business.

(iv) Use the geographical indication in good faith to indicate the intended purpose of goods, particularly as accessories or spare parts, or services.

(v) Use the geographical indication for the purposes of comparative advertising.

Chapter VII: Infringement Proceedings

Action for Infringement:

(1) An infringement of a registered geographical indication shall be actionable by the holder or registrant and the authorized user of the geographical indication unless otherwise provided in this Act.

(2) In an action for infringement, the holder or registrant and the authorized user shall be entitled to seek relief in the form of damages, injunctions, accounts, or any other relief available for the infringement of any other property right.

(3) The Act does not affect the right of action against any person for passing off goods as the goods of another person or the remedies available for such passing off.

Infringement of Unregistered Geographical Indications:

(1) No proceedings to prevent or recover damages for the infringement of an unregistered geographical indication shall be instituted by any person.

(2) The Act does not affect the rights of action against any person for passing off goods as the goods of another person or the remedies available in such cases.

Infringement Proceedings:

(1) No person shall be entitled to institute any proceeding to recover damages for an unregistered geographical indication.

(2) Any interested person or group of producers or consumers may institute proceedings in the IP Tribunal to prevent infringement in respect of a registered geographical indication.

(3) The following uses of a registered geographical indication shall constitute infringement:

(i) Use in the designation or presentation of goods that indicates or suggests that the goods originate in a geographical area other than the true place of origin, in a manner that misleads the public as to the geographical origin of the goods.

(ii) Use that constitutes an act of unfair competition within the meaning of Article 10 bis of the Paris Convention.

(iii) Use of a geographical indication in respect of goods of the same or similar description but not originating in the place indicated by the geographical indication, even if the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as “kind,” “type,” “style,” “imitation,” or the like.

(iv) Use of a geographical indication that, even if it identifies goods truly originating in the place designated by that geographical indication, designates goods that do not comply with the relevant specification as recorded on the register.

(4) The relief that a court may grant in any suit for infringement under this section may include:

(i) An injunction and confiscation of the infringing products.

(ii) Damages or a share in the profits at the option of the plaintiff.

Suits for Infringement to be Instituted before IP Tribunals:

(1) No suit relating to infringement of a geographical indication or any other right in a geographical indication shall be instituted in any other court except an IP Tribunal.

Order for Erasure of Offending Mark:

(1) If a person is found to have infringed a registered geographical indication, the High Court or an IP Tribunal may make an order requiring them:

(i) To cause the offending geographical indication to be erased, removed, or obliterated from any infringing goods, material, or articles in their possession, custody, or control.

(ii) To secure the destruction of the infringing goods, material, or articles if it is not reasonably practicable for the offending geographical indication to be erased, removed, or obliterated.

(2) If an order under sub-section (1) is not complied with or it appears that such an order may not be complied with, the High Court or IP Tribunal may order that the infringing goods, material, or articles be delivered to such a person and may further direct for erasure, removal, or obliteration of the mark or for destruction, as the case may be.

Infringing Goods, Material, or Articles:

(1) Goods shall be considered infringement goods in relation to a geographical indication if they or their packaging bear a mark identical or deceptively similar to that mark, and:

(i) The application of the mark to the goods or their packaging was an infringement of the registered geographical indication.

(ii) The goods are proposed to be imported into Pakistan, and the application of the mark in Pakistan to those goods or their packaging would be an infringement of the registered geographical indication.

(iii) The mark has otherwise been used in relation to the goods in a way that infringes the registered geographical indication.

(2) Nothing in sub-section (1) shall be construed as affecting the importation of goods that may be lawfully imported into Pakistan.

(3) Material shall be considered infringing material in relation to a registered geographical indication if it bears a mark identical or deceptively similar to that mark and either:

(i) It is used for labeling or packaging goods, as business papers, or for advertising goods in a way that infringes the registered geographical indication.

(ii) It is intended to be so used, and such use would infringe the registered geographical indication.

(4) Infringing articles in relation to a registered geographical indication means articles that:

(i) Are specifically designed or adapted for making copies of a mark identical or similar to that mark.

(ii) A person has in their possession, custody, or control, knowing or having reason to believe that they have been or are to be used to produce infringing goods or material.

Order as to Disposal of Infringing Goods, Material, or Articles:

(1) Where infringing goods, material, or articles have been confiscated, an application may be made to the High Court or IP Tribunal for an order that they be destroyed or forfeited or for a decision that no such order may be made.

(2) In considering what order, if any, should be made, the IP Tribunal shall consider whether other remedies available in an action for infringement of the registered geographical indication may be adequate to compensate the aggrieved party and protect their interests.

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(3) Where more than one person is interested in the goods, materials, or articles, the IP Tribunal shall make such order as it thinks just.

(4) If the IP Tribunal decides that no order should be made under this section, then the person in possession of the goods shall be entitled to retain them.

Chapter VIII: Penalties and Procedures

Meaning of Applying Geographical Indications:

(1) A person shall be deemed to apply a geographical indication to goods if they:

(i) Apply it to the goods themselves or use it in relation to the goods.

(ii) Apply it to any package in which the goods are sold or exposed for sale or in their possession for sale or for any purpose of trade or manufacture.

(iii) Place, enclose, or annex any goods, which are sold or exposed for sale or in their possession for sale or for any purpose of trade or manufacture, in or with any package or other thing to which a trade description has been applied.

(iv) Use a geographical indication in any manner reasonably likely to lead to the belief that the goods in connection with which it is used are designed or described by that geographical indication.

(v) Use a geographical indication in any sign, advertisement, invoice, catalogue, business letter, price list, or other commercial

False Application of Geographical Indication:

(1) A person shall falsely apply a geographical indication if they use, in the course of trade, a geographical indication that:

(i) Is used without the consent of the registrant or authorized user of the geographical indication and is identical or deceptively similar to the geographical indication.

(ii) Falsifies any genuine geographical indication, whether by alteration, addition, effacement, or otherwise.

(iii) In the case of a well-known geographical indication or one with a reputation in Pakistan, the use of the geographical indication is without due cause and takes unfair advantage of or is detrimental to the distinctive character or reputation of the geographical indication.

(iv) Uses such a registered geographical indication as their trade name or part of their trade name.

(v) Uses such a registered geographical indication as their domain name or part of their domain name or obtains such domain name without the consent of the proprietor of the registered geographical indication with the intention of selling it to another, including the proprietor of the registered geographical indication.

(vi) Uses any package bearing a geographical indication that is identical with or deceptively similar to the geographical indication of the registrant or authorized user for the purpose of packing, filling, or wrapping any goods other than the genuine goods of the authorized user of the geographical indication.

(2) Any geographical indication falsely applied as mentioned in subsection (1) is referred to as a false geographical indication.

CHAPTER-IX PROHIBITION ON ASSIGNMENT AND TRANSMISSION:

Prohibition on Transfer, etc.:

Notwithstanding anything contained in any law for the time being in force, any right to a registered geographical indication shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage, or any other agreement by the authorized user. However, it is provided that on the death of an authorized user, his right in a registered geographical indication shall devolve on his successor in title under the law for the time being in force.

Power to Vary a Registration and Rectify or Correct the Register:

(1) Any person having a sufficient interest may apply for the rectification of an error or omission in the Register. However, an application for rectification may not be made in respect of a matter affecting the validity of registration of a geographical indication.

(2) The effect of rectification of the register shall be that the error or omission in question shall be deemed never to have been made.

(3) The Registrar may, on an application made in the prescribed manner by the registrant or an authorized user, enter any change in his name or address as recorded in the register.

(4) The Registrar may, if he considers it necessary, implement any amended or substituted classification of goods for purposes of registration of a geographical indication as may be prescribed.

(5) The existing entries on the register may be amended to record any new classification as may be prescribed.

Power to Vary or Cancel Registration as an Authorized User:

(1) The registration of a person as an authorized user may be amended, corrected, or canceled by the Registrar:

(i) On the application by the registrant of the geographical indication or a certification body or organization in the prescribed manner for failure to observe such conditions and restrictions which were prerequisites of registration as an authorized user.

(ii) On the application in writing in the prescribed manner by an authorized user of the geographical indication.

(iii) As envisaged under clauses (i) and (ii).

(2) The registration of an authorized user may be varied or canceled by the IP Tribunal in case of infringement of a registered geographical indication. It may also be varied or canceled by the High Court in case an appeal is filed against a decision of the registrar or an appeal filed against the order of the IP Tribunal, in the prescribed manner by any person aggrieved or organization on the grounds that the authorized user has used the geographical indication in violation of the provisions of this Act.

Rectification of Registration of a Trademark:

The Registrar of the Trade Marks Registry may, on his own motion or on the application of an interested party, refuse or rectify the registration of a trademark that consists of a geographical indication with respect to goods not originating in the territory indicated if the use of the indication in the trademark for such goods is of such a nature so as to mislead the public with regard to the actual place of origin.

Power of Registrar to Withdraw or Transfer Cases:

The Registrar may, by order in writing and for reasons to be recorded therein, withdraw any matter pending before an officer appointed under section 5 and deal with such matter himself either de novo or from the stage it was so withdrawn or transfer the same to another officer so appointed who may, subject to special directions in the order of transfer, proceed with the matter either de novo or from the stage it was so transferred.

Conflicting Marks:

The Registrar shall, ex officio or at the request of an interested person, refuse or invalidate the registration of an authorized user that contains or consists of a geographical indication to be used with respect to goods of the same or similar description as those designated by that geographical indication.

Procedure before the Registrar:

(1) In all proceedings before the Registrar under this Act:

(i) The Registrar shall have all the powers of a civil court for the purposes of receiving evidence, administering oaths, enforcing attendance of witnesses, compelling discovery and production of documents, issuing commissions for the examination of witnesses, and granting a certificate of contested validity.

(ii) Evidence shall be given by affidavit; however, the Registrar may, if he thinks fit, take oral evidence in lieu of or in addition to such evidence by affidavit.

(2) The Registrar shall not exercise any powers vested in him under this Act or the rules made thereunder adversely to any party duly appearing before him, without giving such party an opportunity of being heard.

Appeal Against Decision of the Registrar:

(1) An appeal shall lie, within the prescribed period, against any decision of the Registrar under this Act or rules made thereunder to the High Court having jurisdiction. If any suit or other proceedings concerning the geographical indication in question are pending before an IP Tribunal, the appeal shall lie to the High Court within the jurisdiction where that IP Tribunal is situated.

(2) Subject to the provisions of this Act and the rules made thereunder, the provisions of the Code of Civil Procedure, 1908 (Act V of 1908), shall apply to appeals before the High Court.

Application of Certain Provisions of the Trade Marks Ordinance 2001 (XIX of 2001):

The provisions of sections 52 to 68, 101, 104, 113, 119, 126 of the Trade Marks Ordinance 2001 (XIX of 2001) shall have effect in proceedings under this Act, in relation to all such matters referred to and provided therein as they have effect in relation to similar matters under the said Ordinance with respect to goods. However, references to the Ordinance, trademark, Trademarks Registry, and district court shall be deemed to be references to this Act, geographical indication, Geographical Indications Registry, and IP Tribunal, respectively.

Adaptation of Classification of Goods:

For the purposes of this Act, the Registrar shall use prescribed classifications, as revised or amended from time to time.

Revocation:

Any interested person may request the Registrar within twelve months of registration of an authorized user of a geographical indication, or the High Court at any time after registration of an authorized user, to revoke the registration of a geographical indication on the grounds provided under section 8. If any suit or other proceedings concerning the same geographical indication are pending before an IP Tribunal, the application shall be made to the High Court within the jurisdiction where that IP Tribunal is located.

Power of Fee Setting and Collection:

The concerned Division shall prescribe a schedule of fee and charges for services rendered to the applicants and the public or as otherwise required under this Act. Any fee collected under this Act or the rules shall be deposited in the name of Director General IPO as a demand draft or as may be prescribed.

Power to Make Rules:

The concerned Division shall make rules, by notification in the official Gazette.

Registrar and Other Officers Not Compellable to Produce Register:

The Registrar or any officer of the 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 the Act or to appear as a witness to prove the matters therein recorded unless by order of the IP Tribunal made for a special cause.

Power to Remove Difficulties:

If any difficulty arises in giving effect to the provisions of this Act, the Federal Government may, by notification 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.

Repeal and Savings:

(1) Clause (xix) of section 2 of the Trade Marks Ordinance, 2001 (XIX of 2001), is hereby repealed.

(2) On the commencement of this Act, any geographical indication registered under the Trade Marks Ordinance, 2001 (XIX of 2001), shall automatically stand repealed, and a fresh registration process under this Act shall require to be initiated. A non-exhaustive indicative list of prospective geographical indications of the Islamic Republic of Pakistan is provided for the fresh registration process in the Schedule of the Act.

Summary of the Geographical Indications of Goods (Registration and Protection) Rules, 2020. 

2020 S.R.O. 1398(I)/2020.—In exercise of the powers conferred by section 55 of the Geographical Indications (Registration and Protection) Act, 2020 (XVIII of 2020), the Division concerned is pleased to make the following rules; 1. Short title and commencement.—(1) These rules shall be called the Geographical Indications of Goods (Registration and Protection) Rules, 2020.

“Act” means the Geographical Indications of Goods (Registration and Protection) Act, 2020;

“Application for registration of a geographical indication” includes the geographical indication for goods contained in it;

“Book of specifications” includes a document elaborated by the applicant, specifying the geographical area of goods, product specifications, and qualification process for Geographical Indication goods;

“Business” includes the trading, dealing, production exploitation, making or manufacturing, as the case may be, of the goods to which the geographical indication relates;

“Class fee” means the fee prescribed under the first Schedule;

“Foreign application” means an application for the registration of a geographical indication made by virtue of section 10;

“Form” means a form set forth in the second Schedule;

“Graphical representation” means the representation of a geographical indication for goods in paper or digital form;

“Journal” means the Geographical Indications Journal published electronically on IPO-Pakistan website;

“Notified date” means the date on which the rules come into force;

“Opposition” includes an opposition to the registration of an authorized user or as the case may be;

“Principal place of business in Pakistan” means the relevant place in Pakistan;

“Publish” means the publication of the application in the Geographical Indications Journal;

“Registered geographical indications agent” means a geographical indications agent whose name is actually on the register of Geographical Indications Agent;

“Renewal” includes renewal of a geographical indication by the authorized user of a geographical indication or as the case may be;

“Schedule” means a Schedule to the rules;

“Specification” means the designation of goods in respect of which a geographical indication is registered or proposed to be registered.

Fees.—(1) The fees mentioned in the first Schedule which is payable to the Director General IPO-Pakistan in respect of oppositions, registration, renewal.

(2) Whereas, a fee is due to pay, in respect of a matter as specified in the first Schedule, the fee shall pay—

(a) at the same time as the filing of the form corresponding to the matter; or

(b) if the fee is not paid, the form or request is treated as not filed or made.

(3) Specified fees are payable in the form of Bank drafts, pay orders, or through electronic banking service payable to the Director General of the IPO-Pakistan.

(4) The Registrar may, after notification in the Geographical Indications Journal, make available electronic fee transfer facilities as per the prevailing facility of the Government.

Filing of documents.—(1) The registrar may refuse to accept any document filed before the registry which is not as per the specified format under the Act and rules made thereunder.

(2) Every document filed at the Registry—

(a) may be in English; or

(b) where the document is in Urdu, a copy of the same shall be submitted in the English translation format.

(3) Every document filed at the Registry—

(a) must be filed using durable paper; and

(b) must be in writing that is legible and permanent.

(4) Where the Registrar refuses to accept any document that does not comply with sub-rules (2) or (3), the Registrar shall return the document by stating the reasons that the said document does not comply with sub-rules (2) or (3).

(5) Where any document filed at the Registry is a copy, the Registrar may—

(a) decide whether to accept or process the document; or

(b) require the original to be filed with the Registry.

Forms.—(1) The Registrar shall publish on the IPO-Pakistan’s website, the forms to be used for any purpose relating to the registration of a geographical indication or any other proceedings before the Registrar under the Act.

(2) Any reference in these Rules to a numbered form is a reference to the current version of the form bearing the corresponding number as described in the Second Schedule and published on the website mentioned in sub-rule (1).

Size of the document.—Subject to any directions that may be given by the Registrar, every form, notice, or other document required or authorized by the Act to be given or sent to, filed with, or served on the Registrar shall be on standard paper or legal paper as the case may be. It shall be written or printed in the English language in large and legible characters with deep permanent ink on durable paper and except in the case of affidavits, on one side only, of a size approximately thirteen inches by eight inches, and have on the left hand part thereof a margin of not less than one inch and a half.

Signature on documents.—(1) Documents pertaining to the application for the registration of a geographical indication to be registered as a registrant under the Act shall be signed

Representation of geographical indication.—An applicant for the registration of a geographical indication as Registrant or authorized user must provide a clear and durable representation of the geographical indication in the application form, as specified by the Registrar.

Transliteration and translation.—If the representation of a geographical indication contains non-Roman characters, the applicant must provide a transliteration in English or Urdu to the satisfaction of the Registrar, along with the language to which the word or words belong. If the representation contains words in a language other than English, the Registrar may request an exact translation in English along with the name of the language.

Deficiencies in application.—If an application for registration of a geographical indication does not meet the requirements under the Act, the Registrar will notify the applicant of the deficiencies and request them to remedy the issues within a specified period.

CHAPTER – II Registration of Registrant of Geographical Indication

Content of application for registration of geographical indication.—Every application for the registration of Registrant for a geographical indication shall include:

Name and address of the applicant filing the application.

Geographical indication for which registration is sought.

Class of goods to which the geographical indication applies.

Geographical area to which the geographical indication applies and a map of that area.

Statement of particulars related to the producers or operators of the concerned goods, if any.

Goods for which the geographical indication applies.

Book of specifications containing product standards or product specifications.

Registration of foreign geographical indication.—For foreign applications, the applicants must also submit proof issued by the competent agency of their government, showing that the subject of the application is a registered or protected geographical indication in their own country and that there is no pending cross-border dispute on the geographical indication with another state, as per Schedule.

Acknowledgement of receipt of application.—Upon receiving an application for the registration of geographical indication as a registrant in respect of any goods, the Registrar shall acknowledge the receipt of the application.

Examination of application.—Upon receiving the application, the Registrar shall examine its content and verify the documents provided by the applicant under the Act. The Registrar may seek the assistance of an expert in a particular technical area if required, and the remuneration for the expert shall be determined by IPO-Pakistan.

Decision of Registrar.—The Registrar shall communicate the decision of the registration of the geographical indication to the applicant in writing.

Correction and amendment of application.—An applicant for registration of a geographical indication may apply for the correction of any error or amendment of the application before or after its acceptance, but the amendment should not substantially alter or substitute the original application.

Entry in the Register.—Upon acceptance of the application, the Registrar shall enter the geographical indication in Part-A of the register, specifying all the necessary details as required by the Act.

Certificate of registration as Registrant of Geographical Indication.—The Registrar shall issue a certificate of registration of the geographical indication to the registrant in accordance with the provided schedule.

CHAPTER – III Authorised User

Content of application for registration of GI as an authorised user.—An application for registration as an authorised user of a registered geographical indication shall be made with the assent of the registrant and accompanied by the necessary documents as specified in the provided schedule.

Examination report.—Upon receipt of the application for registration as an authorised user, the Registrar shall cause it to be examined and issue a report accordingly.

Conformity of GI with book of specification.—The certification body designated by the concerned Division shall be responsible for laboratory analysis, certification of product standards, and inspection of products bearing the geographical indication as specified in the book of specifications. In case of non-compliance, the certification body may take measures such as notice, warning, temporary disqualification, or application for suspension/cancellation of the rights to use the geographical indication.

Acknowledgement of receipt of application.—Upon receiving an application for the registration of geographical indication as an authorised user in respect of any goods, the Registrar shall acknowledge the receipt of the application.

Examination of application.—The Registrar shall examine the content of the application upon receipt and issue an examination report to the applicant.

Objection to acceptance of application.—Upon considering the application and any evidence provided by the applicant, if the Registrar has any objections to the acceptance of the application or proposes to accept it with certain conditions or modifications, the Registrar shall communicate such objections or proposals in writing to the applicant. The applicant has two months, which may be extended by one more month as per the schedule, to amend the application accordingly or submit observations to the Registrar. Failure to do so will result in the dismissal of the application.

Decision of Registrar.—The decision of the Registrar, whether after a hearing or without one, shall be communicated to the applicant in writing. If the applicant intends to appeal from the decision, they may request the Registrar to provide in writing the grounds and materials used in arriving at the decision within one month from the date of receipt of the communication.

Correction and amendment of application.—An applicant for registration as an authorised user of a product bearing a geographical indication may apply for the correction of any error or amendment to the application before or after its acceptance, provided that the proposed amendment does not substantially alter or substitute the original application.

Withdrawal of acceptance by the Registrar.—If, after the acceptance of an application but before the registration of the authorised user of a geographical indication, the Registrar has any objections or proposes to register the authorised user subject to certain conditions, the Registrar shall communicate such objections in writing to the applicant. The applicant has thirty days to amend the application or request a hearing. Failure to do so will result in the withdrawal of acceptance by the Registrar, and the application will proceed as if it had not been accepted. If the applicant desires to be heard, the Registrar shall provide a notice of the hearing date at least fifteen days in advance. The applicant may choose not to attend the hearing and instead submit written submissions. After considering the applicant’s arguments, the Registrar will pass appropriate orders.

Advertisement of application.—An application for the registration of an authorised user for a product bearing a geographical indication, along with its content, required or permitted to be advertised under the Act, shall be ordinarily advertised immediately in the Electronic Journal on the IPO-Pakistan website upon acceptance of the application for advertisement. In the case of an application under subsection (2) of section 19, the Registrar may decide to advertise the application again or make an amendment by inserting a notification in the Journal, stating the application number, the class in which it was made, the name and address of the applicant’s principal place of business in Pakistan (if any), or where there is no principal place of business, the address for service in Pakistan, the number of the Journal in which it was advertised, and any correction or amendment made in the application.

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Notice of opposition.—Any person having legitimate interest to the registration of an authorised user of a geographical indication may file a notice of opposition in triplicate within one month from the date when the Journal was published and made available to the public. The notice must include a statement of the grounds upon which the opponent objects to the registration. If no notice of opposition is filed within the specified time in any class, the application for registration in that class shall proceed.

Counter-statement.—The applicant, within two months from the receipt of the copy of the notice of opposition from the Registrar, must submit a counter-statement in triplicate, setting out which facts alleged in the notice of opposition are admitted by the applicant. A copy of the counter-statement shall be served to the opponent immediately upon receipt.

Evidence in support of opposition by the opponents.—The opponent, within one month from the receipt of the counter-statement, must provide evidence by way of an affidavit in support of their opposition or inform the Registrar and the applicant in writing that they do not wish to adduce any evidence and intend to rely on the facts stated in the notice of opposition. If the opponent does not take any action within the specified time, they will be deemed to have abandoned their opposition.

Evidence in support of the application by the applicant.—The applicant, within one month from the receipt of copies of the affidavits in support of opposition or intimation that the opponent does not wish to adduce evidence, must submit their evidence by way of an affidavit. The applicant may also choose not to adduce any evidence and rely on the facts stated in the counter-statement or the evidence already left in connection with the application.

Evidence in reply by opponent.—Within one month from the receipt of the applicant’s affidavit, the opponent may leave evidence by way of an affidavit in reply, confined to matters strictly in reply.

Further evidence.—No further evidence shall be allowed to be left by either party unless the Registrar grants leave to do so.

Exhibits.—Exhibits to affidavits filed in an opposition shall be sent to the other party upon request and at their expense, or the originals may be left at the Registry for inspection. The originals shall be produced at the hearing unless the Registrar directs otherwise.

Translation of documents.—Any document in a language other than Urdu or English referred to in the notice of opposition or any other proceedings before the Registrar must be accompanied by an attested translation in English or Urdu.

Hearing and decision.—After completion of the evidence (if any), the Registrar shall give notice to the parties of a date for hearing the arguments. Any party intending to appear must notify the Registrar within fourteen days from the receipt of the first notice. The Registrar may allow up to two requests for adjournment, each for one month, by either the opponent or the applicant. Failure to appear may result in dismissal of the application or opposition. The Registrar shall fix a day for further hearing and may limit time for oral arguments. The decision of the Registrar shall be notified to the parties in writing.

Procedure for giving notice.—The Registrar shall send notices under the Act as per the prescribed schedule to the applicant at their principal place of business in Pakistan or, if they have no principal place of business in Pakistan, at the address for service in Pakistan as stated in the application. If the applicant has authorized an agent for the application, the notice shall be sent to the agent and a duplicate to the applicant. The notice shall specify twenty-one days or such further time as the Registrar may allow, from the date of the notice, for completion of the registration.

Deficiencies and Abandonment.—If an application for registration of an authorized user of a registered geographical indication does not meet the requirements of the Act, the Registrar shall send a notice to the applicant to remedy the deficiencies or default in payment. If the applicant fails to remedy the deficiencies or make the required payment within two months from the date of the notice, the application may be deemed never to have been made or treated as abandoned. However, an application treated as abandoned may be restored to the file if sufficient cause is shown to the satisfaction of the Registrar, and an application for restoration is made within two months from the date of abandonment.

Death of applicant before registration.—In the event of the death of an applicant for the registration of an authorized user of a geographical indication after the date of the application but before the geographical indication is entered in the register, the Registrar may, upon proof of the applicant’s death and proof of the transmission of the interest of the deceased person, substitute the name of the deceased applicant with their successor in interest in the application. The application may then proceed as amended.

Registration of an authorized user entry in the Register.—If no notice of opposition is filed or if an opposition is filed and subsequently dismissed, the Registrar shall enter the authorized user in Part B of the register upon receiving a request for the issuance of the registration certificate along with the prescribed fee. The entry in the register will specify the date of filing the application for registration as an authorized user, the actual date of registration, the goods and class or classes for which it is registered, and other required particulars under the Act.

Certificate of registration.—The certificate of registration of an authorized user of a product bearing a geographical indication, issued by the Registrar, shall be in a prescribed form with modifications as required. The certificate will be accompanied by an un-mounted representation of the registered geographical indication as shown in the application for registration. Duplicate or further copies of the certificate may be issued by the Registrar upon request, accompanied by the prescribed fee and the required representation.

CHAPTER V Renewal of registration and restoration

Renewal of registration.—An application for the renewal of the registration of an authorized user of a registered geographical indication must be made as per the schedule and may be submitted not more than six months before the expiration of the last registration of the authorized user. The application for renewal must be filed with the formal consent of the Registrant of the registered geographical indication. The Registrar may accept renewal applications from managing trustees, executors, administrators, or others, supported by court orders or evidence of their authority to act on behalf of the present authorized user. The renewal of the authorized user shall be effected by any of the authorized users whose names have been entered in Part B of the register on the due date of renewal. Before issuing a renewal certificate, the Registrar may request the Registrant to file an affidavit concerning the use of the registered geographical indication in Pakistan, especially if there are concerns about the non-use of the geographical indication in the market.

Notice before removal of authorized user of GI from the register.—The Registrar shall send a notification in writing to the authorized user or, in the case of an association of persons or producers of a registered geographical indication, to each of the associations of persons or producers registered as the person authorized to act on their behalf (if any), not less than one month and not more than three months before the expiration of the last registration of the authorized user, or if no application for renewal of the registration has been received, regarding the approaching expiration. If the registration of an authorized user becomes due for renewal and is registered within six months before the date on which renewal is due, the registration may be renewed by paying the renewal fee within six months after the actual date of registration. If the renewal fee is not paid within that period, the Registrar shall remove the authorized user from the register.

Advertisement of removal of authorized user from the register.—If the renewal fees have not been paid by the expiration of the last registration of an authorized user, the Registrar may remove the authorized user from the register and advertise this fact in the Journal. However, the Registrar shall not remove the authorized user from the register if an application for renewal of the registration of the geographical indication or the authorized user is made within six months from the expiration of the last registration, accompanied by the prescribed fees and an appropriate surcharge.

Restoration and renewal of registration.—An application for the restoration of an authorized user to the register and renewal of its registration shall be made within one year from the expiration of the last registration of the geographical indication of the authorized user, accompanied by the prescribed fee and a statement of the case in the appropriate form as per the Schedule.

Notice and advertisement of renewal and restoration.—Upon the renewal or restoration and renewal of registration, a notice to that effect shall be sent to the concerned authorized user, and the renewal or restoration and renewal shall be advertised in the Journal.

CHAPTER VI Rectification, Alteration, and Correction of Register

Application to rectify or remove an authorized user of GI from the register.—An application to the Registrar under the Act for canceling, expunging, or varying any entry relating to the authorized user of a geographical indication for non-compliance with the book of specifications or any other violation in relation to a registered geographical indication shall be made on the appropriate form as per the Schedule. The application shall be accompanied by a statement setting out fully the nature of the applicant’s interest, the facts upon which the case is based, and the relief sought. If the application is made by a person who is not the Registrant of the geographical indication, a copy of the application and the statement shall be transmitted by the Registrar to the Registrant and to any other person who appears to have an interest in the geographical indication.

Further procedure.—Within two months or such further period not exceeding two months, from the receipt of the copy of the application from the Registrar, the authorized user shall send a counter-statement in triplicate to the Registrar and to the person making the application, setting out the grounds on which the application for cancellation is contested. The Registrar shall serve a copy of the counter-statement on the person making the application within one month of receipt. The provisions of rules 36 to 45 shall apply mutatis mutandis to the further proceedings on the application. The Registrar shall not rectify the register or remove any authorized user from the register solely because the authorized user has not filed a counter-statement unless the delay in filing the counter-statement is willful and unjustified. In cases of doubt, any party may apply to the Registrar for directions.

Rectification of the register by the Registrar of his own motion.—The Registrar, when proposing to rectify the register pertaining to a registered authorized user, shall send a notice in writing to the Registrant and any other person who appears to have an interest in the registered geographical indication, stating the grounds on which the Registrar proposes to rectify the register. The notice shall specify the time within which an application for a hearing may be made. If the person notified fails to respond or apply for a hearing within the specified time, the Registrar may proceed accordingly.

Alteration of address in the register.—If the address of the principal place of business in Pakistan or the address for service in Pakistan of a Registrant or authorized user is changed so that the entry in the register becomes incorrect, the Registrant or authorized user shall request the Registrar, on the appropriate form as per the Schedule, to make the necessary alteration in the register. The Registrar shall make the alteration if satisfied with the request. The same procedure applies if the address for service in Pakistan is changed, and the entry in the register becomes incorrect.

Correction of Register.—If an application has been made for the alteration of the register by correction, change, cancellation, or striking out of the entry of a memorandum, the Registrar may require the applicant to furnish evidence, such as an affidavit, as to the circumstances in which the application is made. The application shall be made on the appropriate form as per the Schedule, and a copy of the application and the amended or altered geographical indication shall be served on every authorized user on the record, or a public notice may be issued in at least two leading local newspapers under the registration of the geographical indication in question and to any other person who appears to have an interest in the geographical indication.

Alteration of registered GI.—If the Registrant of a geographical indication applies under the Act for leave to add to or alter the registered geographical indication, they shall make the application in writing on the appropriate form as per the Schedule. Five copies of the geographical indication, as it will appear when added to or altered, shall be furnished. A copy of the application and the amended or altered geographical indication shall be served on every authorized user on the record, or a public notice may be issued in at least two leading local newspapers under the registration of the geographical indication in question and to any other person who appears to have an interest in the geographical indication.

Chapter – VII Special Provisions relating to Trade Marks

Refusal or Invalidation of Registration of Trade Marks.—If the Registrar of Trade Marks decides to refuse the registration of a trade mark or invalidate a registered trade mark as per the requirements of the Act, the applicant or the registered proprietor of the trade mark, as the case may be, shall be notified in writing, stating the reasons for the decision. After providing an opportunity for the applicant or registered proprietor to be heard, the Registrar shall decide the matter.

Extension of time.—An application for an extension of time (not expressly provided in the Act or the rules) shall be made on the appropriate form as per the Schedule. The Registrar may grant the extension of time, subject to conditions, if satisfied that the circumstances justify it, even if the time for the action has already expired.

Notification of decision.—The Registrar’s decision in the exercise of any discretionary power given by the Act or the rules shall be notified to the person affected.

Amendments and correction of irregularity in procedure.—Any document, communication, or representation respecting a Registrant or an authorized user may be amended, and any irregularity in procedure may be corrected if the Registrar deems it fit and proper, as long as it does not detrimentally affect any person’s interests.

Directions not otherwise prescribed.—If the Registrar deems it necessary for the proper prosecution or completion of any proceedings under the Act or rules, the Registrar may, by written notice, require a person to perform an act, file a document, or produce evidence, even if it is not explicitly provided for in the Act or the rules.

Hearings.—In relation to a hearing for which an application for registration of authorized user for a geographical indication is made, the hearing and any proceeding under the Act and rules shall be heard at the Geographical Indications Registry where the application was made or at a place within its territorial jurisdiction as deemed proper by the Registrar. If an officer exercising the powers of the Registrar who has reserved orders in a matter is transferred to another office of the Registry before passing the order or rendering a decision, the officer may pass the order or decision if directed by the Registrar.

Costs in uncontested cases.—If an opposition duly instituted under the rules is not contested by the applicant, the Registrar, in deciding whether to award costs to the opponent, shall consider whether the proceedings could have been avoided if reasonable notice had been given by the opponent to the applicant before filing the notice of opposition.

Application for review of Registrar’s decision.—An application for the review of the Registrar’s decision on the registration of an authorized user of a geographical indication shall be made on the appropriate form as per the Schedule, within one month from the date of the decision, or within one month from the date of the Registrar’s permission for an extension, if requested. The application shall be accompanied by a statement setting forth the grounds on which the review is sought. If the decision concerns any other person in addition to the applicant, a copy of the application and statement shall be provided to the other person concerned.

Form of Affidavit.—The Affidavit required by the Act and the rules shall be drawn up in the first person, divided into consecutively numbered paragraphs, and each paragraph shall be confined to one subject. Affidavits may be taken in Pakistan before any court, person with authority to receive evidence, or officer empowered by such court to administer oaths or take affidavits. Affidavits taken outside Pakistan may be before a diplomatic or consular officer, notary public, judge, or magistrate of that country or place. Alterations and interlineations in affidavits shall be authenticated before being sworn or affirmed. Every affidavit filed before the Registrar shall be duly stamped.

Inspection of documents by Public.—The documents mentioned in the Act shall be available for inspection at the head office of the Geographical Indications Registry. Certified copies of any entry in the register or documents, decisions, or orders of the Registrar may be provided upon application on the appropriate form as per the Schedule and payment of the prescribed fee. A copy of the register and other mentioned documents shall also be available for inspection at each branch office of the Geographical Indications Registry.

Certificates-certified copies of documents.—The Registrar may furnish certified copies of any entry in the register or certified copies of any documents or decisions of the Registrar, or provide a certificate upon application accompanied by the prescribed fee. The Registrar may not include a copy of any geographical indication in the certificate or certified copy unless furnished with a suitable copy by the applicant.

Certificate for proprietorship in obtaining registration abroad.—If a certificate relating to the registration of a geographical indication is required for use in obtaining registration in a foreign territory, the Registrar shall issue the certificate and include a copy of the geographical indication in the certificate. If the geographical indication is registered without a limitation of color, the copy in the certificate may be in the color it appears on the register or in any other color. The certificate may include relevant details about the application or registration of the geographical indication and specify any terms, conditions, or limitations appearing on the register.

Time for appeal in the High Court.—An appeal to the High Court from any decision of the Registrar under the Act or the rules must be made within three months from the date of receipt of such decision. A copy of the appeal application must be served on the Registrar.

Registration of Geographical Indications Agent.—The Registrar of Geographical Indications shall maintain a Register of Geographical Indications Agents, containing the name, address of the place of residence, address of the principal place of business, nationality, qualifications, and date of registration of every registered Geographical Indications Agent.

Registration of Geographical Indications Agent.—A person can be registered as a Geographical Indications Agent if they are at least twenty-one years old, a legal practitioner, and considered a fit and proper person by the Registrar to be registered as such.

Persons debarred from registration.—Certain individuals are not eligible for registration as Geographical Indications Agents, such as those adjudged to be of unsound mind, undercharged insolvents, those who have been held guilty of professional misconduct by a competent court, or who have been held guilty of negligence or misconduct by a High Court.

Manner of making application.—All applications under this part shall be made in triplicate and sent to or left at the office of the GI Registry within the territorial limits where the applicant’s principal place of business is situated.

Application for registration as a geographical indications agent.—Every person desiring to be registered as a Geographical Indications Agent shall make an application on the appropriate form. The applicant shall provide any further information required by the Registrar.

Procedure on application and qualifying requirements.—Upon receiving an application for the registration of a person as a geographical indications agent, the Registrar will schedule an interview with the candidate to assess their knowledge and qualifications related to geographical indications.

Certificate of registration.—If the candidate is deemed eligible and qualified by the Registrar, they will receive a certificate of registration as a Geographical Indications Agent after paying the prescribed fee.

Continuance of a name in the Register of Geographical Indications Agents.—The registration of a Geographical Indications Agent will continue as long as they pay the prescribed fees.

Removal of agent’s name from the Register of GI agent.—The Registrar may remove the name of a registered Geographical Indications Agent from the register upon request or if the annual fee is not paid within three months from the due date.

Alteration in the Register of GI agent.—A registered Geographical Indications Agent may apply for an alteration in their name, address of residence, address of the principal place of business, or qualifications in the Register of Geographical Indications Agent. The Registrar will make the necessary alterations and notify them in the Journal.

Publication of the Register of GI agents.—The Register of Geographical Indications Agents will be published from time to time, and a complete list will be published at least once every two years in the Geographical Indications Journal, and copies will be made available for sale.

Appeal.—An appeal may be filed with the High Court from any order or decision of the Registrar regarding the registration of Geographical Indications Agents.

National Logo for certifying geographical indication products.—The Registry will establish a National Geographical Indication Logo to certify all geographical indication products registered in Pakistan. The National Geographical Indication Logo, along with the registered name of the product and other marks and details, will appear on the label of marketed products.

 

 

By The Josh and Mak Team

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