The Government of Pakistan in March 2020 passed Act No. XVIII of 2020 to be called the Geographical Indications (Registration and Protection) Act, 2020 (the Act). The Act provides registration and protection of geographical indications of goods (GI), which is necessary to recognize and protect the geographical indications of the Islamic Republic of Pakistan for public interest and advancing the economic reform and development of the least developed areas of Pakistan. It also provides the legal means for interested parties to prevent the use of any means in the designation or representation of goods that indicate or suggest that the goods in question originate in a geographical area and constitute an act of unfair competition as per Article 22 of the TRIPS Agreement.
The Act provides for establishment of a Geographical Indications Registry (GI Registry) under the management and control of IPO Pakistan. Till such time a separate GI Registry is established, the Trade Marks Registry and its branches shall carry out the functions of the GI Registry and its branches. Furthermore, the IPO Pakistan within 360 days after commencement of the Act may appoint an officer as Registrar of Geographical Indications, until then the Registrar of Trade Mark shall perform the functions of GI Registrar.
The Act provides that the Federal Government shall be the holder and exclusive owner of all the GIs of the Islamic Republic of Pakistan and may allow any statutory body, public body, local or provincial administration, government enterprise or any government organization which is a juristic person having area of responsibility covering the GIs in the territory of Pakistan to apply for and register the product as a GI as a registrant in such form, which includes any words, letters or numerals, geographical name or other name, device or any figurative representation, label or any combination thereof indicating or referring or suggesting or conveying the geographical origin of the goods to which it is applied.
A foreign country’s GI can be registered in Pakistan as long as it is registered in accordance with the local legislation in its country of origin. The title and date of the legislative or administrative provisions or of judicial decisions regarding protection to the GI in the country of origin shall be considered for accepting foreign GI applications. However, a foreign GI which is not or has ceased to be protected in its country of origin or which has fallen into disuse in that country shall not be allowed for registration. Applications for registration of foreign GIs shall be made at the GI Registry by its legal representative in Pakistan.
Among other requirements, an applicant of GI is required to file book of specifications containing product standards or product specifications. The Act also requires notification for designation of a certification body to guarantee, inspect, test and monitor quality, reputation or other characteristics of products seeking registration of GIs and the designated certification body shall confirm the specifications identified in the book of specifications from accredited confirmatory assessment bodies or research institutes or impartial public authority or public organization or approved organization.
Upon filing of an application for GI registration it shall be examined to determine whether it fulfills the criteria and other requirements. Once an application for registration of a GI is accepted it shall be registered from the date of making of the said application which shall be deemed to be the date of registration. The duration of a registration of a GI is perpetual.
Any natural or juristic person or group of persons claiming to be an operator, producer or group of producers interested in the right to use registered GI may apply in writing to the Registrar subject to the formal assent of the registrant for registering him as an authorized user of such GI. The Registrar shall advertise application of such authorized user upon acceptance and such advertisement will be subject to opposition by any interested person. In case if there is no opposition or opposition is decided in favour of the authorized user the duration for registration of such user will be for an initial period of 10 years which is renewable for subsequent 10 year periods.
Registration of a GI gives the registrant and authorized user to get relief in case of infringement of the GI. Both civil and criminal remedies are available to the registrant and all suits for infringement are to be filed before the Intellectual Property Tribunal.